[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2004]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR401.15]

[Page 694-695]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER IV--ASSISTANT SECRETARY FOR TECHNOLOGY POLICY, DEPARTMENT OF 
                                COMMERCE
 
PART 401_RIGHTS TO INVENTIONS MADE BY NONPROFIT ORGANIZATIONS AND SMALL 
 
Sec. 401.15  Deferred determinations.

    (a) This section applies to requests for greater rights in subject 
inventions made by contractors when deferred determination provisions 
were included in the funding agreement because one

[[Page 695]]

of the exceptions at Sec. 401.3(a) was applied, except that the 
Department of Energy is authorized to process deferred determinations 
either in accordance with its waiver regulations or this section. A 
contractor requesting greater rights should include with its request 
information on its plans and intentions to bring the invention to 
practical application. Within 90 days after receiving a request and 
supporting information, or sooner if a statutory bar to patenting is 
imminent, the agency should seek to make a determination. In any event, 
if a bar to patenting is imminent, unless the agency plans to file on 
its own, it shall authorize the contractor to file a patent application 
pending a determination by the agency. Such a filing shall normally be 
at the contractor's own risk and expense. However, if the agency 
subsequently refuses to allow the contractor to retain title and elects 
to proceed with the patent application under government ownership, it 
shall reimburse the contractor for the cost of preparing and filing the 
patent application.
    (b) If the circumstances of concerns which originally led the agency 
to invoke an exception under Sec. 401.3(a) are not applicable to the 
actual subject invention or are no longer valid because of subsequent 
events, the agency should allow the contractor to retain title to the 
invention on the same conditions as would have applied if the standard 
clause at Sec. 401.14(a) had been used originally, unless it has been 
licensed.
    (c) If paragraph (b) is not applicable the agency shall make its 
determination based on an assessment whether its own plans regarding the 
invention will better promote the policies and objectives of 35 U.S.C. 
200 than will contractor ownership of the invention. Moreover, if the 
agency is concerned only about specific uses or applications of the 
invention, it shall consider leaving title in the contractor with 
additional conditions imposed upon the contractor's use of the invention 
for such applications or with expanded government license rights in such 
applications.
    (d) A determination not to allow the contractor to retain title to a 
subject invention or to restrict or condition its title with conditions 
differing from those in the clause at Sec. 401.14(a), unless made by 
the head of the agency, shall be appealable by the contractor to an 
agency official at a level above the person who made the determination. 
This appeal shall be subject to the procedures applicable to appeals 
under Sec. 401.11 of this part.