H. R. 2196

One Hundred Fourth Congress

of the

United States of America

AT THE SECOND SESSION

Begun and held at the City of Washington on Wednesday,

the third day of January, one thousand nine hundred and ninety-six

An Act

To amend the Stevenson-Wydler Technology Innovation Act of 1980 with respect

to inventions made under cooperative research and development agreements,

and for other purposes.

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

This Act may be cited as the ‘‘National Technology Transfer and Advancement Act of 1995’’.

SEC. 2. FINDINGS.

The Congress finds the following: (1) Bringing technology and industrial innovation to the marketplace is central to the economic, environmental, and

social well-being of the people of the United States. (2) The Federal Government can help United States business to speed the development of new products and processes

by entering into cooperative research and development agreements which make available the assistance of Federal laboratories to the private sector, but the commercialization of technology and industrial innovation in the United States depends

upon actions by business. (3) The commercialization of technology and industrial innovation in the United States will be enhanced if companies,

in return for reasonable compensation to the Federal Government, can more easily obtain exclusive licenses to inventions

which develop as a result of cooperative research with scientists

employed by Federal laboratories.

SEC. 3. USE OF FEDERAL TECHNOLOGY.

Subparagraph (B) of section 11(e)(7) of the Stevenson-Wydler

Technology Innovation Act of 1980 (15 U.S.C. 3710(e)(7)(B)) is

amended to read as follows:

‘‘(B) A transfer shall be made by any Federal agency under

subparagraph (A), for any fiscal year, only if the amount so transferred by that agency (as determined under such subparagraph)

would exceed $10,000.’’.

SEC. 4. TITLE TO INTELLECTUAL PROPERTY ARISING FROM COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENTS.

Subsection (b) of section 12 of the Stevenson-Wydler Technology

Innovation Act of 1980 (15 U.S.C. 3710a(b)) is amended to read

as follows:

‘‘(b) ENUMERATED AUTHORITY.—(1) Under an agreement entered

into pursuant to subsection (a)(1), the laboratory may grant, or
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agree to grant in advance, to a collaborating party patent licenses

or assignments, or options thereto, in any invention made in whole

or in part by a laboratory employee under the agreement, for

reasonable compensation when appropriate. The laboratory shall

ensure, through such agreement, that the collaborating party has

the option to choose an exclusive license for a pre-negotiated field

of use for any such invention under the agreement or, if there

is more than one collaborating party, that the collaborating parties

are offered the option to hold licensing rights that collectively

encompass the rights that would be held under such an exclusive

license by one party. In consideration for the Government’s contribution under the agreement, grants under this paragraph shall be

subject to the following explicit conditions:

‘‘(A) A nonexclusive, nontransferable, irrevocable, paid-up

license from the collaborating party to the laboratory to practice

the invention or have the invention practiced throughout the

world by or on behalf of the Government. In the exercise

of such license, the Government shall not publicly disclose

trade secrets or commercial or financial information that is

privileged or confidential within the meaning of section

552(b)(4) of title 5, United States Code, or which would be

considered as such if it had been obtained from a non-Federal

party.

‘‘(B) If a laboratory assigns title or grants an exclusive

license to such an invention, the Government shall retain the

right—

‘‘(i) to require the collaborating party to grant to a

responsible applicant a nonexclusive, partially exclusive,

or exclusive license to use the invention in the applicant’s

licensed field of use, on terms that are reasonable under

the circumstances; or

‘‘(ii) if the collaborating party fails to grant such a

license, to grant the license itself.

‘‘(C) The Government may exercise its right retained under subparagraph (B) only in exceptional circumstances and only

if the Government determines that—

‘‘(i) the action is necessary to meet health or safety

needs that are not reasonably satisfied by the collaborating

party; ‘‘(ii) the action is necessary to meet requirements for

public use specified by Federal regulations, and such

requirements are not reasonably satisfied by the collaborating party; or ‘‘(iii) the collaborating party has failed to comply with

an agreement containing provisions described in subsection

(c)(4)(B).

This determination is subject to administrative appeal and

judicial review under section 203(2) of title 35, United States

Code.

‘‘(2) Under agreements entered into pursuant to subsection

(a)(1), the laboratory shall ensure that a collaborating party may

retain title to any invention made solely by its employee in exchange

for normally granting the Government a nonexclusive,

nontransferable, irrevocable, paid-up license to practice the invention or have the invention practiced throughout the world by or

on behalf of the Government for research or other Government

purposes.
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‘‘(3) Under an agreement entered into pursuant to subsection

(a)(1), a laboratory may—

‘‘(A) accept, retain, and use funds, personnel, services, and

property from a collaborating party and provide personnel,

services, and property to a collaborating party;

‘‘(B) use funds received from a collaborating party in accordance with subparagraph (A) to hire personnel to carry out

the agreement who will not be subject to full-time-equivalent

restrictions of the agency;

‘‘(C) to the extent consistent with any applicable agency

requirements or standards of conduct, permit an employee or

former employee of the laboratory to participate in an effort

to commercialize an invention made by the employee or former

employee while in the employment or service of the Government; and

‘‘(D) waive, subject to reservation by the Government of

a nonexclusive, irrevocable, paid-up license to practice the

invention or have the invention practiced throughout the world

by or on behalf of the Government, in advance, in whole or

in part, any right of ownership which the Federal Government

may have to any subject invention made under the agreement

by a collaborating party or employee of a collaborating party.

‘‘(4) A collaborating party in an exclusive license in any invention made under an agreement entered into pursuant to subsection

(a)(1) shall have the right of enforcement under chapter 29 of

title 35, United States Code.

‘‘(5) A Government-owned, contractor-operated laboratory that

enters into a cooperative research and development agreement

pursuant to subsection (a)(1) may use or obligate royalties or other

income accruing to the laboratory under such agreement with

respect to any invention only— ‘‘(A) for payments to inventors;

‘‘(B) for purposes described in clauses (i), (ii), (iii), and

(iv) of section 14(a)(1)(B); and

‘‘(C) for scientific research and development consistent with

the research and development missions and objectives of the

laboratory.’’.

SEC. 5. DISTRIBUTION OF INCOME FROM INTELLECTUAL PROPERTY

RECEIVED BY FEDERAL LABORATORIES.

Section 14 of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710c) is amended—

(1) by amending subsection (a)(1) to read as follows: ‘‘(1) Except as provided in paragraphs (2) and (4), any royalties

or other payments received by a Federal agency from the licensing

and assignment of inventions under agreements entered into by

Federal laboratories under section 12, and from the licensing of

inventions of Federal laboratories under section 207 of title 35,

United States Code, or under any other provision of law, shall

be retained by the laboratory which produced the invention and

shall be disposed of as follows:

‘‘(A)(i) The head of the agency or laboratory, or such individual’s designee, shall pay each year the first $2,000, and thereafter at least 15 percent, of the royalties or other payments

to the inventor or coinventors.

‘‘(ii) An agency or laboratory may provide appropriate

incentives, from royalties, or other payments, to laboratory
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employees who are not an inventor of such inventions but

who substantially increased the technical value of such inventions.

‘‘(iii) The agency or laboratory shall retain the royalties

and other payments received from an invention until the agency

or laboratory makes payments to employees of a laboratory

under clause (i) or (ii).

‘‘(B) The balance of the royalties or other payments shall

be transferred by the agency to its laboratories, with the majority share of the royalties or other payments from any invention

going to the laboratory where the invention occurred. The royalties or other payments so transferred to any laboratory may

be used or obligated by that laboratory during the fiscal year

in which they are received or during the succeeding fiscal

year—

‘‘(i) to reward scientific, engineering, and technical

employees of the laboratory, including developers of sensitive or classified technology, regardless of whether the

technology has commercial applications;

‘‘(ii) to further scientific exchange among the laboratories of the agency;

‘‘(iii) for education and training of employees consistent

with the research and development missions and objectives

of the agency or laboratory, and for other activities that

increase the potential for transfer of the technology of

the laboratories of the agency;

‘‘(iv) for payment of expenses incidental to the administration and licensing of intellectual property by the agency

or laboratory with respect to inventions made at that laboratory, including the fees or other costs for the services

of other agencies, persons, or organizations for intellectual

property management and licensing services; or

‘‘(v) for scientific research and development consistent

with the research and development missions and objectives

of the laboratory.

‘‘(C) All royalties or other payments retained by the agency

or laboratory after payments have been made pursuant to subparagraphs (A) and (B) that is unobligated and unexpended

at the end of the second fiscal year succeeding the fiscal year

in which the royalties and other payments were received shall

be paid into the Treasury.’’;

(2) in subsection (a)(2)—

(A) by inserting ‘‘or other payments’’ after ‘‘royalties’’;

and

(B) by striking ‘‘for the purposes described in clauses

(i) through (iv) of paragraph (1)(B) during that fiscal year

or the succeeding fiscal year’’ and inserting in lieu thereof

‘‘under paragraph (1)(B)’’;

(3) in subsection (a)(3), by striking ‘‘$100,000’’ both places

it appears and inserting ‘‘$150,000’’;

(4) in subsection (a)(4)—

(A) by striking ‘‘income’’ each place it appears and

inserting in lieu thereof ‘‘payments’’;

(B) by striking ‘‘the payment of royalties to inventors’’

in the first sentence thereof and inserting in lieu thereof

‘‘payments to inventors’’;
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(C) by striking ‘‘clause (i) of paragraph (1)(B)’’ and

inserting in lieu thereof ‘‘clause (iv) of paragraph (1)(B)’’;

(D) by striking ‘‘payment of the royalties,’’ in the second

sentence thereof and inserting in lieu thereof ‘‘offsetting

the payments to inventors,’’; and

(E) by striking ‘‘clauses (i) through (iv) of’’; and

(5) by amending paragraph (1) of subsection (b) to read

as follows:

‘‘(1) by a contractor, grantee, or participant, or an employee

of a contractor, grantee, or participant, in an agreement or

other arrangement with the agency, or’’.

SEC. 6. EMPLOYEE ACTIVITIES.

Section 15(a) of the Stevenson-Wydler Technology Innovation

Act of 1980 (15 U.S.C. 3710d(a)) is amended—

(1) by striking ‘‘the right of ownership to an invention

under this Act’’ and inserting in lieu thereof ‘‘ownership of

or the right of ownership to an invention made by a Federal

employee’’; and

(2) by inserting ‘‘obtain or’’ after ‘‘the Government, to’’.

SEC. 7. AMENDMENT TO BAYH–DOLE ACT.

Section 210(e) of title 35, United States Code, is amended

by striking ‘‘, as amended by the Federal Technology Transfer

Act of 1986,’’.

SEC. 8. NATIONAL INSTITUTE OF STANDARDS AND TECHNOLOGY ACT

AMENDMENTS.

The National Institute of Standards and Technology Act (15

U.S.C. 271 et seq.) is amended—

(1) in section 10(a)—

(A) by striking ‘‘nine’’ and inserting in lieu thereof

‘‘15’’; and

(B) by striking ‘‘five’’ and inserting in lieu thereof ‘‘10’’;

(2) in section 15—

(A) by striking ‘‘Pay Act of 1945; and’’ and inserting

in lieu thereof ‘‘Pay Act of 1945;’’; and

(B) by inserting ‘‘; and (h) the provision of transportation services for employees of the Institute between the

facilities of the Institute and nearby public transportation,

notwithstanding section 1344 of title 31, United States

Code’’ after ‘‘interests of the Government’’; and

(3) in section 19—

(A) by inserting ‘‘, subject to the availability of appropriations,’’ after ‘‘post-doctoral fellowship program’’; and (B) by striking ‘‘nor more than forty’’ and inserting

in lieu thereof ‘‘nor more than 60’’.

SEC. 9. RESEARCH EQUIPMENT.

Section 11(i) of the Stevenson-Wydler Technology Innovation

Act of 1980 (15 U.S.C. 3710(i)) is amended by inserting ‘‘loan,

lease, or’’ before ‘‘give’’.

SEC. 10. PERSONNEL.

The personnel management demonstration project established

under section 10 of the National Bureau of Standards Authorization

Act for Fiscal Year 1987 (15 U.S.C. 275 note) is extended indefinitely.
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SEC. 11. FASTENER QUALITY ACT AMENDMENTS.

(a) SECTION 2 AMENDMENTS.—Section 2 of the Fastener Quality

Act (15 U.S.C. 5401) is amended—

(1) by striking subsection (a)(4), and redesignating paragraphs (5) through (9) as paragraphs (4) through (8), respectively;

(2) in subsection (a)(7), as so redesignated by paragraph

(1) of this subsection, by striking ‘‘by lot number’’; and

(3) in subsection (b), by striking ‘‘used in critical applications’’ and inserting in lieu thereof ‘‘in commerce’’.

(b) SECTION 3 AMENDMENTS.—Section 3 of the Fastener Quality

Act (15 U.S.C. 5402) is amended—

(1) in paragraph (1)(B) by striking ‘‘having a minimum

tensile strength of 150,000 pounds per square inch’’;

(2) in paragraph (2), by inserting ‘‘consensus’’ after ‘‘or

any other’’;

(3) in paragraph (5)—

(A) by inserting ‘‘or’’ after ‘‘standard or specification,’’

in subparagraph (B);

(B) by striking ‘‘or’’ at the end of subparagraph (C);

(C) by striking subparagraph (D); and

(D) by inserting ‘‘or produced in accordance with ASTM

F 432’’ after ‘‘307 Grade A’’;

(4) in paragraph (6) by striking ‘‘other person’’ and inserting

in lieu thereof ‘‘government agency’’;

(5) in paragraph (8) by striking ‘‘Standard’’ and inserting

in lieu thereof ‘‘Standards’’;

(6) by striking paragraph (11) and redesignating paragraphs (12) through (15) as paragraphs (11) through (14),

respectively;

(7) in paragraph (13), as so redesignated by paragraph

(6) of this subsection, by striking ‘‘, a government agency’’

and all that follows through ‘‘markings of any fastener’’ and

inserting in lieu thereof ‘‘or a government agency’’; and

(8) in paragraph (14), as so redesignated by paragraph

(6) of this subsection, by inserting ‘‘for the purpose of achieving

a uniform hardness’’ after ‘‘quenching and tempering’’.

(c) SECTION 4 REPEAL.—Section 4 of the Fastener Quality Act

(15 U.S.C. 5403) is repealed.

(d) SECTION 5 AMENDMENTS.—Section 5 of the Fastener Quality

Act (15 U.S.C. 5404) is amended—

(1) in subsection (a)(1)(B) and (2)(A)(i) by striking ‘‘subsections (b) and (c)’’ and inserting in lieu thereof ‘‘subsections

(b), (c), and (d)’’;

(2) in subsection (c)(2) by striking ‘‘or, where applicable’’

and all that follows through ‘‘section 7(c)(1)’’;

(3) in subsection (c)(3) by striking ‘‘, such as the chemical,

dimensional, physical, mechanical, and any other’’;

(4) in subsection (c)(4) by inserting ‘‘except as provided

in subsection (d),’’ before ‘‘state whether’’; and

(5) by adding at the end the following new subsection:

‘‘(d) ALTERNATIVE PROCEDURE FOR CHEMICAL CHARACTERISTICS.—Notwithstanding the requirements of subsections (b) and

(c), a manufacturer shall be deemed to have demonstrated, for

purposes of subsection (a)(1), that the chemical characteristics of

a lot conform to the standards and specifications to which the
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manufacturer represents such lot has been manufactured if the

following requirements are met:

‘‘(1) The coil or heat number of metal from which such

lot was fabricated has been inspected and tested with respect

to its chemical characteristics by a laboratory accredited in

accordance with the procedures and conditions specified by

the Secretary under section 6.

‘‘(2) Such laboratory has provided to the manufacturer,

either directly or through the metal manufacturer, a written

inspection and testing report, which shall be in a form prescribed by the Secretary by regulation, listing the chemical

characteristics of such coil or heat number.

‘‘(3) The report described in paragraph (2) indicates that

the chemical characteristics of such coil or heat number conform

to those required by the standards and specifications to which

the manufacturer represents such lot has been manufactured.

‘‘(4) The manufacturer demonstrates that such lot has been

fabricated from the coil or heat number of metal to which

the report described in paragraphs (2) and (3) relates.

In prescribing the form of report required by subsection (c), the

Secretary shall provide for an alternative to the statement required

by subsection (c)(4), insofar as such statement pertains to chemical

characteristics, for cases in which a manufacturer elects to use

the procedure permitted by this subsection.’’.

(e) SECTION 6 AMENDMENT.—Section 6(a)(1) of the Fastener

Quality Act (15 U.S.C. 5405(a)(1)) is amended by striking ‘‘Within

180 days after the date of enactment of this Act, the’’ and inserting

in lieu thereof ‘‘The’’.

(f) SECTION 7 AMENDMENTS.—Section 7 of the Fastener Quality Act (15 U.S.C. 5406) is amended—

(1) by amending subsection (a) to read as follows: ‘‘(a) DOMESTICALLY PRODUCED FASTENERS.—It shall be unlawful

for a manufacturer to sell any shipment of fasteners covered by

this Act which are manufactured in the United States unless the

fasteners—

‘‘(1) have been manufactured according to the requirements

of the applicable standards and specifications and have been

inspected and tested by a laboratory accredited in accordance

with the procedures and conditions specified by the Secretary

under section 6; and

‘‘(2) an original laboratory testing report described in sec- tion 5(c) and a manufacturer’s certificate of conformance are

on file with the manufacturer, or under such custody as may

be prescribed by the Secretary, and available for inspection.’’; (2) in subsection (c)(2) by inserting ‘‘to the same’’ after

‘‘in the same manner and’’;

(3) in subsection (d)(1) by striking ‘‘certificate’’ and inserting

in lieu thereof ‘‘test report’’; and

(4) by striking subsections (e), (f), and (g) and inserting

in lieu thereof the following:

‘‘(e) COMMINGLING.—It shall be unlawful for any manufacturer,

importer, or private label distributor to commingle like fasteners

from different lots in the same container, except that such manufacturer, importer, or private label distributor may commingle like

fasteners of the same type, grade, and dimension from not more

than two tested and certified lots in the same container during

repackaging and plating operations. Any container which contains
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fasteners from two lots shall be conspicuously marked with the

lot identification numbers of both lots.

‘‘(f) SUBSEQUENT PURCHASER.—If a person who purchases fasteners for any purpose so requests either prior to the sale or

at the time of sale, the seller shall conspicuously mark the container

of the fasteners with the lot number from which such fasteners

were taken.’’.

(g) SECTION 9 AMENDMENT.—Section 9 of the Fastener Quality

Act (15 U.S.C. 5408) is amended by adding at the end the following

new subsection:

‘‘(d) ENFORCEMENT.—The Secretary may designate officers or

employees of the Department of Commerce to conduct investigations

pursuant to this Act. In conducting such investigations, those officers or employees may, to the extent necessary or appropriate

to the enforcement of this Act, exercise such authorities as are

conferred upon them by other laws of the United States, subject

to policies and procedures approved by the Attorney General.’’.

(h) SECTION 10 AMENDMENTS.—Section 10 of the Fastener Quality Act (15 U.S.C. 5409) is amended—

(1) in subsections (a) and (b), by striking ‘‘10 years’’ and

inserting in lieu thereof ‘‘5 years’’; and

(2) in subsection (b), by striking ‘‘any subsequent’’ and

inserting in lieu thereof ‘‘the subsequent’’.

(i) SECTION 13 AMENDMENT.—Section 13 of the Fastener Quality

Act (15 U.S.C. 5412) is amended by striking ‘‘within 180 days

after the date of enactment of this Act’’.

(j) SECTION 14 REPEAL.—Section 14 of the Fastener Quality

Act (15 U.S.C. 5413) is repealed.

SEC. 12. STANDARDS CONFORMITY.

(a) USE OF STANDARDS.—Section 2(b) of the National Institute

of Standards and Technology Act (15 U.S.C. 272(b)) is amended— (1) in paragraph (2), by striking ‘‘, including comparing

standards’’ and all that follows through ‘‘Federal Government’’; (2) by redesignating paragraphs (3) through (11) as para- graphs (4) through (12), respectively; and (3) by inserting after paragraph (2) the following new paragraph: ‘‘(3) to compare standards used in scientific investigations,

engineering, manufacturing, commerce, industry, and educational institutions with the standards adopted or recognized

by the Federal Government and to coordinate the use by Federal agencies of private sector standards, emphasizing where

possible the use of standards developed by private, consensus

organizations;’’.

(b) CONFORMITY ASSESSMENT ACTIVITIES.—Section 2(b) of the

National Institute of Standards and Technology Act (15 U.S.C.

272(b)) is amended—

(1) by striking ‘‘and’’ at the end of paragraph (11), as

so redesignated by subsection (a)(2) of this section;

(2) by striking the period at the end of paragraph (12),

as so redesignated by subsection (a)(2) of this section, and

inserting in lieu thereof ‘‘; and’’; and

(3) by adding at the end the following new paragraph:

‘‘(13) to coordinate Federal, State, and local technical standards activities and conformity assessment activities, with private sector technical standards activities and conformity assess-
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ment activities, with the goal of eliminating unnecessary

duplication and complexity in the development and promulgation of conformity assessment requirements and measures.’’.

(c) TRANSMITTAL OF PLAN TO CONGRESS.—The National

Institute of Standards and Technology shall, within 90 days after

the date of enactment of this Act, transmit to the Congress a

plan for implementing the amendments made by this section.

(d) UTILIZATION OF CONSENSUS TECHNICAL STANDARDS BY FEDERAL AGENCIES; REPORTS.—

(1) IN GENERAL.—Except as provided in paragraph (3) of

this subsection, all Federal agencies and departments shall

use technical standards that are developed or adopted by voluntary consensus standards bodies, using such technical standards as a means to carry out policy objectives or activities

determined by the agencies and departments.

(2) CONSULTATION; PARTICIPATION.—In carrying out paragraph (1) of this subsection, Federal agencies and departments

shall consult with voluntary, private sector, consensus standards bodies and shall, when such participation is in the public

interest and is compatible with agency and departmental missions, authorities, priorities, and budget resources, participate

with such bodies in the development of technical standards.

(3) EXCEPTION.—If compliance with paragraph (1) of this

subsection is inconsistent with applicable law or otherwise

impractical, a Federal agency or department may elect to use

technical standards that are not developed or adopted by voluntary consensus standards bodies if the head of each such

agency or department transmits to the Office of Management

and Budget an explanation of the reasons for using such standards. Each year, beginning with fiscal year 1997, the Office

of Management and Budget shall transmit to Congress and

its committees a report summarizing all explanations received

in the preceding year under this paragraph.

(4) DEFINITION OF TECHNICAL STANDARDS.—As used in this

subsection, the term ‘‘technical standards’’ means performancebased or design-specific technical specifications and related

management systems practices.

SEC. 13. SENSE OF CONGRESS.

It is the sense of the Congress that the Malcolm Baldrige

National Quality Award program offers substantial benefits to
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United States industry, and that all funds appropriated for such

program should be spent in support of the goals of the program.

Speaker of the House of Representatives.

Vice President of the United States and

President of the Senate.