[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: 37CFR404.7]



[Page 716-717]

 

              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS

 

  CHAPTER IV--ASSISTANT SECRETARY FOR TECHNOLOGY POLICY, DEPARTMENT OF 

                                COMMERCE

 

PART 404_LICENSING OF GOVERNMENT OWNED INVENTIONS--Table of Contents

 

Sec.  404.7  Exclusive, co-exclusive and partially exclusive licenses.



    (a)(1) Exclusive, co-exclusive or partially exclusive domestic 

licenses may be granted on Government owned inventions, only if;

    (i) Notice of a prospective license, identifying the invention and 

the prospective licensee, has been published in the Federal Register, 

providing opportunity for filing written objections within at least a 

15-day period;

    (ii) After expiration of the period in Sec.  404.7(a)(1)(i) and 

consideration of any written objections received during the period, the 

Federal agency has determined that;

    (A) The public will be served by the granting of the license, in 

view of the applicant's intentions, plans and ability to bring the 

invention to the point of practical application or otherwise promote the 

invention's utilization by the public.

    (B) Exclusive, co-exclusive or partially exclusive licensing is a 

reasonable and necessary incentive to call forth the investment capital 

and expenditures needed to bring the invention to practical application 

or otherwise promote the invention's utilization by the public; and

    (C) The proposed scope of exclusivity is not greater than reasonably 

necessary to provide the incentive for bringing the invention to 

practical application, as proposed by the applicant, or otherwise to 

promote the invention's utilization by the public;

    (iii) The Federal agency has not determined that the grant of such a 

license will tend substantially to lessen competition or create or 

maintain a violation of the Federal antitrust laws; and

    (iv) The Federal agency has given first preference to any small 

business firms submitting plans that are determined by the agency to be 

within the capability of the firms and as having equal or greater 

likelihood as those from other applicants to bring the invention to 

practical application within a reasonable time.

    (2) In addition to the provisions of Sec.  404.5, the following 

terms and conditions apply to domestic exclusive, co-exclusive and 

partially exclusive licenses:

    (i) The license shall be subject to the irrevocable, royalty-free 

right of the Government of the United States to practice or have 

practiced the invention on behalf of the United States and on behalf of 

any foreign government or international organization pursuant to any 

existing or future treaty or agreement with the United States.

    (ii) The license shall reserve to the Federal agency the right to 

require the licensee to grant sublicenses to responsible applicants, on 

reasonable terms, when necessary to fulfill health or safety needs.

    (iii) The license shall be subject to any licenses in force at the 

time of the grant of the exclusive, co-exclusive or partially exclusive 

license.

    (b)(1) Exclusive, co-exclusive or partially exclusive foreign 

licenses may be granted on a Government owned invention provided that;

    (i) Notice of the prospective license, identifying the invention and 

prospective licensee, has been published in the



[[Page 717]]



Federal Register, providing opportunity for filing written objections 

within at least a 15-day period and following consideration of such 

objections received during the period;

    (ii) The agency has considered whether the interests of the Federal 

Government or United States industry in foreign commerce will be 

enhanced; and

    (iii) The Federal agency has not determined that the grant of such a 

license will tend substantially to lessen competition or create or 

maintain a violation of the Federal antitrust laws.

    (2) In addition to the provisions of Sec.  404.5, the following 

terms and conditions apply to foreign exclusive, co-exclusive and 

partially exclusive licenses:

    (i) The license shall be subject to the irrevocable, royalty-free 

right of the Government of the United States to practice and have 

practiced the invention on behalf of the United States and on behalf of 

any foreign government or international organization pursuant to any 

existing or future treaty or agreement with the United States.

    (ii) The license shall be subject to any licenses in force at the 

time of the grant of the exclusive, co-exclusive or partially exclusive 

license.

    (iii) The license may grant the licensee the right to take any 

suitable and necessary actions to protect the licensed property, on 

behalf of the Federal Government.

    (c) Federal agencies shall maintain a record of determinations to 

grant exclusive, co-exclusive or partially exclusive licenses.



[71 FR 11513, Mar. 8, 2006]