[Code of Federal Regulations]

[Title 37, Volume 1]

[Revised as of July 1, 2005]

From the U.S. Government Printing Office via GPO Access

[CITE: 37CFR401.12]



[Page 701]

 

              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. 401.12  Licensing of background patent rights to third parties.



    (a) A funding agreement with a small business firm or a domestic 

nonprofit organization will not contain a provision allowing a Federal 

agency to require the licensing to third parties of inventions owned by 

the contractor that are not subject inventions unless such provision has 

been approved by the agency head and a written justification has been 

signed by the agency head. Any such provision will clearly state whether 

the licensing may be required in connection with the practice of a 

subject invention, a specifically identified work object, or both. The 

agency head may not delegate the authority to approve such provisions or 

to sign the justification required for such provisions.

    (b) A Federal agency will not require the licensing of third parties 

under any such provision unless the agency head determines that the use 

of the invention by others is necessary for the practice of a subject 

invention or for the use of a work object of the funding agreement and 

that such action is necessary to achieve practical application of the 

subject invention or work object. Any such determination will be on the 

record after an opportunity for an agency hearing. The contractor shall 

be given prompt notification of the determination by certified or 

registered mail. Any action commenced for judicial review of such 

determination shall be brought within sixty days after notification of 

such determination.