[Code of Federal Regulations]

[Title 45, Volume 3]

[Revised as of October 1, 2005]

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

[CITE: 45CFR650.13]



[Page 206-207]

 

                        TITLE 45--PUBLIC WELFARE

 

                 CHAPTER VI--NATIONAL SCIENCE FOUNDATION

 

PART 650_PATENTS--Table of Contents

 

Sec. 650.13  Exercise of march-in rights.



    (a) The procedures established by this section supplement those 

prescribed by Sec. 401.6 of the implementing regulation for the Bayh-

Dole Act (37 CFR Sec. 401.6) and apply to all march-in rights held by 

NSF including those resulting from funding agreements not covered by the 

Bayh-Dole Act.

    (b) Petitions requesting that the NSF exercise a march-in right 

should be addressed to the NSF Patent Assistant. Such petitions should:



[[Page 207]]



    (1) Identify the patent or patent application involved and the 

relevant fields of use of the invention;

    (2) State the grounds for the proposed march-in;

    (3) Supply evidence that one or more of the four conditions creating 

a march-in right (lack of practical application, unsatisfied health or 

safety needs, unmet requirements for public use, or failure to prefer 

United States industry) is present; and

    (4) Explain what action by the Foundation is necessary to correct 

that condition.

    (c) If evidence received from a petitioner or from the Foundation's 

administration of the Patent Rights clause indicates that one or more of 

the four conditions creating a march-in right might exist, the NSF 

Patent Assistant will informally review the matter as provided in Sec. 

401.6(b) of the implementing regulation. If that informal review 

indicates that one or more of the four conditions creating a march-in 

right probably exists, the Patent Assistant will initiate a formal 

march-in proceeding by issuing a written notice to the patent holder. 

That notice will provide all the information required by Sec. 401.6(c) 

of the implementing regulation. The patent holder may submit information 

and argument in opposition to the proposed march-in in person, in 

writing, or through a representative.

    (d) If the NSF Patent Assistant determines that a genuine dispute 

over material facts exists, he or she will identify the disputed facts 

and notify the NSF General Counsel. The General Counsel will create a 

cross-directorate fact-finding panel, which will establish its own fact-

finding procedures within the requirements of Sec. 401.6(e) of the 

implementing regulation based on the dimensions of the particular 

dispute. The Patent Assistant will serve as secretary to the panel, but 

will not take part in its deliberations. Written findings of facts will 

be submitted to the General Counsel, sent by certified mail to the 

patent holder, and made available to all other interested parties.

    (e) The NSF General Counsel will determine whether and how the 

Foundation should exercise a march-in right as provided in Sec. 

401.6(g) of the implementing regulation.