[Code of Federal Regulations]

[Title 37, Volume 1]

[Revised as of July 1, 2006]

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

[CITE: 37CFR401.15]



[Page 712-713]

 

              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 

BUSINESS FIRMS UNDER GOVERNMENT GRANTS, CONTRACTS, AND COOPERATIVE 

AGREEMENTS--Table of Contents

 

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 713]]



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actual subject invention or are no longer valid because of subsequent 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.