[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2003]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR501.9]

[Page 654]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
    CHAPTER V--UNDER SECRETARY FOR TECHNOLOGY, DEPARTMENT OF COMMERCE
 
PART 501--UNIFORM PATENT POLICY FOR RIGHTS IN INVENTIONS MADE BY GOVERNMENT 
EMPLOYEES--Table of Contents
 
Sec. 501.9  Patent protection.

    (a) A Government agency, upon determining that an invention coming 
within the scope of Sec.Sec. 501.6(a)(1) or (a)(2) has been made, shall 
promptly determine whether patent protection will be sought in the 
United States by or on behalf of the agency for such invention. A 
controversy over the respective rights of the Government and of the 
employee shall not unnecessarily delay the filing of a patent 
application by the agency to avoid the loss of patent rights. In cases 
coming within the scope of Sec. 501.6(a)(2), the filing of a patent 
application shall be contingent upon the consent of the employee.
    (b) Where there is an appealed dispute as to whether Sec.Sec. 501.6 
(a)(1) or (a)(2) applies in determining the respective rights of the 
Government and of an employee in and to any invention, the agency may 
determine whether patent protection will be sought in the United States 
pending the Secretary's decision on the dispute. If the agency decides 
that an application for patent should be filed, the agency will take 
such rights as are specified in Sec. 501.6(a)(2), but this shall be 
without prejudice to acquiring the rights specified in paragraph (a)(1) 
of that section should the Secretary so decide.
    (c) Where an agency has determined to leave title to an invention 
with an employee under Sec. 501.6(a)(2), the agency will, upon the 
filing of an application for patent, take the rights specified in that 
paragraph without prejudice to the subsequent acquisition by the 
Government of the rights specified in paragraph (a)(1) of that section 
should the Secretary so decide.
    (d) Where an agency has filed a patent application in the United 
States, the agency will, within 8 months from the filing date of the 
U.S. application, determine if any foreign patent applications should 
also be filed. If the agency chooses not to file an application in any 
foreign country, the employee may request rights in that country subject 
to the conditions stated in Sec. 501.7(b) that may be imposed by the 
agency. Alternatively, the agency may permit the employee to retain 
foreign rights by including in any assignment to the Government of an 
unclassified U.S. patent application on the invention an option for the 
Government to acquire title in any foreign country within 8 months from 
the filing date of the U.S. application.

[61 FR 41000, Aug. 7, 1996]