MEMO ROUTING SLIP 

ORGANIZATION AND 1.0CATION 

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2 

3 

4 

REMARKS 

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DD FORM 9 5 FRc.>places D! .. AGO Form 8116, 1 Apr 48, and .A.FB.Q • 1G-..atar-A 8 ,.0 ..._ 

I FEB 50 orm 12, lO Nov 4.7, whlch~~'DlB'8~11e~U8cid.~---------·x-
'f ...... REF ID:A104§.1.0 

GOVERNMENT PATENTS BOARD • 

OFFICE OF THE CHAIRMAN 

DEPARTMENT OF COMMERCE BUILDING, WASHINGTON 25, D. C. 

Interpretations and Opinions Noo 4 =GF 

March 11,, 1954 

INTERPRETATION OF 11 SUBJECT TO LAWtt 

In response to an inquiry from one of the agencies With respect to the 

meaning of the phrase nsubject to law11 as used in paragraph l(d) of Executive 

Order3:-0096aod:i."l Section 6(b) (4) of Adminif!!trative Order No .. 5, the following 

interpretation was given by the Chairman of the Government Pa.tents Board: 

Paragraph l(d) of Executive Order 10096 provides that the entire right, 

title and interest in and to an invention shall be left in the inventor, subjec,1 

to law, in an:y case where the agency has determined and the Chairman has decided 

the Govein.ment is not entitled to either an assignment or a license under subparagraph (a)_, (b) or (c) of paragraph 1 of the Order. 

The phrase "subject to law" means that the Government is not entitled to 

and does not claim any righ·ts in and to the invention under the provisions of 

the Executive Order, but may nevertheless acquire certain rights in and to the 

invention by reason of the provisions of existing law or under other general 

principles of law applicable thereto .. 

Various statutes may: 'When applicable, give the Government certain rights 

in and to an invention entirely independent of Executive Order 10096, such as 

35 U~S.C. 266 (the so~oalled 1883 non-fee Act), 42 U.S.C. 1811 (the Atomic 

Energy Act), 16 u.s.c. 83ld (the Tennessee Valley Authority Act), and statutes 

which relate to incentives, awards and rewards. 

The Govemment may also acquire certain rights in and to an invention by 

contract, agreement, purchase; voluntary grant or gift, even though the Government may not otherwise be entitled to such rights. 

Similarly~ the determination of rights in and to an invention u.~der 

Executive Order 10096 is subject to the provisions of such statutes as 28 U.SoC. 

1498 ani 35 U.S.C" 4 as they relate to in:ventions made °b'"J Government employees. 

Archie M. Palmer 

Chairman 
REF ID:A104610 

GOVERNMENT PATENTS BOARD 

OFFICE. OF THE CHAIRMAN 

TITLE 37-PATENTS, TRADEMARKS, AND COPYRIGHTS 

Chapter Ill-Government Patents 

Board 

(Administrative Order 6] 

PART 301-ACQUISITION AND PROTECTION 

OF FOREIGN RIGHTS IN INVENTIONS 

Sec. 

301.l 

301.2 

301.3 

301.4 

301.5 

301.6 

301.7 

301.8 

301.9 

301.10 

301.11 

Purpose. 

Authority. 

Scope. 

JUNE 24, 1954. 

Option to be obtained. 

Action by Agency concerned. 

Action by the Department of Com- merce. Publication In lieu of patenting. 

Foreign filing by inventor. 

Administration of foreign patents. 

Reports and records. 

Dissemination of this part. 

AUTHORITY: § § 301.1 to 301.11 issued under 

E. O. 9865, 12 F. R. 3907, 3 CFR, 1947 Supp., 

E. O. 10096, 15 F. R. 389, 3 CFR, 1950 Supp. 

§ 301.1 Purpose. The purpose of this 

part is to provide for the administration 

of a uniform policy for the Government 

with respect to the acquisition and protection of foreign rights in and to certain 

inventions. 

§ 301.2 Authority. Authority for the 

issuance of this part is provided in Executive Order 9865, dated June 14, 1947 

02 F. R. 3907), as amended by paragraph 5 of Executive Order 10096, dated 

January 23, 1950 <15 F. R. 389). 

§ 301.3 Scope. This part is restricted 

to inventions to which the Government 

is entitled to acquire, or may acquire, title or the right to file foreign patent 

applications or otherwise to seek protection abroad thereon. Exempted from the 

provisions of this part are <a> inventions 

within the jurisdiction of the Atomic 

Energy Commission, except in such cases as the said Commission specifically au- thorizes the inclusion of an invention, 

and <b> inventions omcially classified 

for reasons of the national security, until 

such inventions become declassified. 

§ 301.4 Option to be obtained. <a> 

When the Government is entitled to ac- quire foreign rights in and to an invention made by a Government employee, 

including the right to file foreign patent 

applications or otherwise to seek protection abroad on the invention, the Government agency concerned shall obtain an option to acquire such rights. 

(bl When the Government is entitled 

to acquire foreign rights in and to an invention made pursuant to contract, 

including the right to file foreign patent 

applications or otherwise to seek protec-

[Reprin.ted from Federal Register of June 29, 1954] 

tion abroad on the invention, the Government agency concerned shall, when 

the agency deems it desirable, obtain an option to acquire such rights. 

§ 301.5 Action by agency concerned. 

Subject to the approval of the Chairman 

of the Government Patents Board on all 

matters of policy, the Government 

agency concerned shall, with respect to 

each invention on which the option specified in § 301.4 is obtained or on which 

the foreign rights have been acquired, 

determine whether or not and in what 

foreign jurisdictions patent protection 

should be sought in the public interest. 

Upon determining that foreign patent 

protection is desirable, the agency shall: 

<a> To the extent of available funds 

within its own appropriation, take or cause to be taken all action necessary to secure such foreign patent protection of 

the invention, consistent with existing 

law and the requirements of the Government; 

(b) If sumcient funds are not available within its own appropriation or the 

agency does not see fit to use funds when 

available, furnish the Secretary of Com- merce as soon as practicable, preferably 

not later than two months after the 

filing of the application for United States 

patent on the invention, through the use of Foreign Patent Protection Reporting 

Form TS-12, sumcient information con- cerning the invention and the reasons for its determination with respect to the 

desirability of foreign patent protection, 

to enable the Secretary of Commerce to 

seek the financial support of other interested Government agencies and/or of industry in securing foreign patent protection of the invention. 

§ 301.6 Action by the Department of 

Commerce. Subject to the approval of 

the Chairman of the Government Patents Board on all matters of policy, the 

Secretary of Commerce shall, immediately upon receipt of a Foreign Patent 

Protection Reporting Form TS-12 on an invention, pursuant to § 301.5 (b) : (a) Consult with Government agencies and with United States industry and 

commerce, familiar with the technical, 

scientific, industrial, commercial or other 

economic or social factors affecting 

the invention involved, to ascertain possible interest in foreign patent protection of the invention and willingness to 

finance such protection; and 

<b> After such consultation and con- sideration of such factors as the availability of valid patent protection in the 

countries selected and to the extent of 

funds made available by Government 

agencies and/or industry, take or cause to be taken all action necessary to secure 

AO 6 

JUNE 24, 1954 

such protection of the invention, con- sistent with existing law and the re- quirements of the Government. 

§ 301.7 Publication in lieu of patenting, When the foreign rights of the 

Government with respect to an invention may be adequately protected 

through prompt disclosure of the invention in lieu of patenting, ·the Government agency concerned, or the Secretary of Commerce in cooperation with 

the Government agency concerned, may, 

with the approval of the Chairman of 

the Government Patents Board, cause the invention to be disclosed by publication thereof. 

§ 301.8 Foreign filing by inventor. 

When the foreign rights in and to an Invention are not assigned to the Government but the Government may, at its 

option or on request, acquire such rights 

and determines not to cause an application to be filed in any particular foreign country or otherwise to seek protection of the invention, or fails to take 

such action, (a) within six months of 

the filing of an application for United 

States patent on the invention, cir· (b) 

within six months of declassification of an invention previously under a security 

classification, or <c> within six months 

after disclosure of an invention to the 

Government pursuant to contract, 

whichever is later, such determination or such failure to act shall constitute a decision by the Government to leave such 

rights to the inventor subject, to the ex- tent practicable, to a nonexclusive, irrevocable, royalty-free license to the Government in any patent which may issue 

thereon in any foreign countr~', including the power to issue sublicenses for use in behalf of the Government and/or in 

furtherance of the foreign policies of the 

Government. 

§ 301.9 Administration of foreign 

patents. The functions and duties of the 

Chairman of the Government Patents 

Board under paragraphs 4 and 5 of Executive Order 9865, as amended by paragraph 5 of Executive Order 10096, are, 

until further notice, hereby delegated 

to the Secretary of Coinmerce: Provided, 

however, That all matters of policy arising under this delegation shall be subject 

to the approval of the Chairman of the 

Government Patents Board. 

§ 301.10 Reports and records. (a) 

Each Government agency shall report 

promptly to the Secretary of Commerce, 

with a copy to the Chairman of the 

Government Patents Board, all actions 

by the agency taken pursuant to §§ 301.5 

and 301.7, as well as disclosures by publication by the agency made pursuant to 

GPO-GPB 6-p. 1 
paragraph 2 (a) of Executive Order 

10096. 

Cb) The Secretary of Commerce shall 

maintain adequate records and other 

necessary files, to provide readily available information on all inventions in-' 

eluded under the provisions of §§ 301.5, 

301.6, 301.7, and paragraph (a) of this 

section, and shall submit to the Chair- · man of the Government Patents Board 

REF ID:A104610 a written report quarterly, or otherw·ise as the Chairman may request, on all 

operations of this program during the 

preceding calendar quarter or other 

period designated. 

§ 301.11 Dissemination of this part. 

Each Government agency shall make 

appropriate dissemination of. the provisions of this part. · 

'·, 

~~evocation. Administrative Order No. 

2, dated September 6, 1950 <15 F. R. 

6131), and Administrative Order No. 4, 

dated March 12, 1951 <16 F. R. 2507), 

are superseded by the provisions of this 

part, which shall remain in effect until 

further notice. 

ARCHIE M. PALMER, 

Chairman. 

GPO-GPB 6-p. 2 
\. 

REF .ID:A104610 AO 7 

JUNE 24, 1954 

GOVERNMENT PATENTS BOARD 

OFFICE OF THE CHAIRMAN 

[Administrative Order 7) 

PART 302-LICENSING OF FOREIGN PATENTS 

ACQUIRED BY THE GOVERNMENT 

Sec. 

302.1 Purpose. 

302.2 Authority. 

302.3 Scope. 

JUNE 24, 1954. 

302.4 The Department of State. 

302.5 Licenses under foreign patents. 

302.6 Reports and records. 

AUTHORITY: § § 302.1 to 302.6 issued under 

E. 0. 9865, 12 F. R. 3907, 3 CFR, 1947 Supp., 

E. 0. 10096, 15 F. R. 389, 3 CFR, 1950 Supp. 

§ 302.l Purpose. The purpose of this 

part is to provide for the administration 

of a uniform policy for the Government 

with respect to the licensing of foreign 

patents acquired by the Government. 

§ 302.2 Authority. Authority for the 

issuance of this part is provided in Executive Order 9865, dated June 14, 1947 

02 F. R. 3907), as amended by paragraph 5 of Executive Order 10096, dated 

January 23, 1950 05 F. R. 389). 

§ 302.3 Scope. This part is to implement and supplement § 301.9 of this 

chapter,' with respect to inventions on which the Government has acquired 

foreign patents, except inventions within the jurisdiction of the Atomic Energy Commission which are not specifi1 See Part 301 of this chapter (A. 0. 6). 

[ Reprln ted from Federnl Register of June 29, 1954] 

cally authorized by said Commission for 

inclusion within the terms of this part. 

§ 302.4 The Department of State. 

Pursuant to Executive Orders 9865 and 

10096, it is the responsibility of the Department of State, in consultation with 

the Chairman of the Government Patents Board and the Secretary of Commerce, to seek arrangements among 

governments under which each government and its nationals shall have access to the foreign patents of the other participating governments. 

§ 302.5 Licenses under foreign patents. (a) Licenses under foreign patents acquired by the United States 

Government shall be granted by the 

Secretary of Commerce to nationals of 

the United States on a nonexclusive. 

revocable, royalty-free basis, except in 

such cases as the Secretary of Commerce, with the approval of the Chair- man of the Government Patents Board, 

shall determine it ·to be inconsistent 

with the public interest to issue such 

licenses on a nonexclusive, royalty-freP. 

basis. 

(b) Licenses under foreign patents acquired by the United States Government 

may be gTanted by the Secretary of Com- merce to a foreign government or its nationals pursuant to any arrangements 

which may come into force with such 

foreign government as provided in 

§ 302.4, or, in the absence of such arrangements, on such terms as the Secretary of Commerce, with the approval of 

the Chairman of the Government 

Patents Board and of the Secretary of 

State, shall determine, in accordance 

with law, to be in the public interest, subject to outstanding licenses. 

<c) With respect to foreign patents re- lating to matters of public health, li- censes under such patents issued to the 

United States Government may be 

granted by the Secretary of Commerce 

to a foreign government or its nationals on a nonexclusive, revocable, royaltyfree basis unless the Chairman of the 

Government Patents Board, on the rec- ommendation of the Secretary of State, 

shall determine otherwise, regardless of 

whether such foreign government is a party to the arrangements specified In 

§ 302.4. 

§ 302.6 Reports and records. The 

Secretary of Commerce shall maintain 

adequate records and other necessary 

files, to provide readily available information on all licenses granted under 

§ 302.5, and shall submit to the Chair- man of the Government Patents Board a written report, with a copy to the Secretary of State, quarterly or otherwise as the Chairman may request, on all operations of the licensing program during 

the preceding calendar quarter or other 

period designated. 

ARCHIE M. PALMER, 

Chairman. 

GPO-GPB 7-p. 1 
··( 

:l 1. 

'I 

REF ID:A104610 

ADMINISTRATIVE ORDER4 NOS a 6 A..t.JD 7 .I 

Historical Background. Executive Order 9865, issued by the President under date 

of June 14, 1947, to" implement recommendations .submitted to the Secretary of 

'Sta.ta by the Executive Committee on Economic Foreign PQlicy after an extended 

study, initiated a program for the protection abroad of inventions resulting 

from Government-financed research and the acquisition and administration by the 

Government or foreign patent rights in such inventionso · 

"'ll1.e program was designed originally (1) to insure that access by United 

States nationals to foreign markets for products based on Government-financed 

inventions might not be blocked by foreign-owned patents; (2) to counteract 

a tendency of the increasing ownership of United States patents by foreign 

eovernments to lead to control by them of important segments of American 

production and trade; and (.3) to provide the Government with bargaining power 

to obtain for its nationals the use of foreign patents held by other governments. 

Exedlltive Order 9865 placed certain administrative responsibilities on the 

Secretary of Commerce, the Department or C01TJ111erce, the Secretary of State, and 

the Department of Stateo Largely because of lack of available funds and lack 

of interest in the program on the part of American industry, progress in its 

development had been slow and unsatisfactory. 

Paragraph ~ of Executive Order 10096, issued by the President under date of 

Jamary 23, 1950, transferred the functions and duties of the Secretary of Commerce 

and of the Department of Commerce under the provisions of Executive Order 9865 to 

the Ghairman of the Government Patents Board, with ai thority to delegate the whole 

or any p~t- of such functions and duties to any Government agency or officer. 

Pending the determination of a definitive and practicable program for the 

protection abroad or inventions resulting from Government-financed.research, the 

Chairman-·issued Administrative Order Noo 2 under date of September 6, 1950, 

delegating to the Secretary of Commerce the operational functions of the foreign 

patent protection program, but reserving to himself responsibility for the approval 

of all matters of policy arising under this delegation. 

During the course of an exploratory study of the problems involved in the 

effective conduct or the program the assistance of an interagency working committee 

was enlistedj the advice o£ the Government Patents Board was obtained, comments of 

Government agencies were sought, conferences were held with representatives of 

industry and the patent bar, and the matter was discussed individually with 

:i.nforrned persons, both within and outside Government, concerned with and experienced in foreign patent protectiono 

Upon the basis of the exploratory study, it was decided to continue temporarily 

the existing foreign patent protection program, with limited filings abroad in a 

few of the chief industrial countries to the extent feasible under available funds. 

A.dmi.riistrative Order No. 4, which was issued by the Chairman or the Government 

Patents Board under date of March 12, 1951, prescribes procedures for effectuating 

the policy of the Government, as set forth in Executive Order 9865, with respect 

to the administration of the program for patent protection abroad of inventions 

resulting from Government-financed research to which the Government has acquired 

titJ.e or the right to f~le foreign patent applications thereono 
REF ID:A104610 

2 

Further study of the problem was made by an interagency working committee in 

the lig'ht of current needs of the Government, including the Mutual Security Program, 

plans f'or rendering military, technical, e.nd economic assistance to friendly 

countries, and. the offshore procurement requirements of the Armed Forces. 

On the basis of !:.his further study ~nd "the recommendations of the interagency 

uorking committee, the experience of the Government under the existing foreign P~tent protnction program since its jnitiation in 1947, related experience of the 

r;ri ti.sh :'"Ind. Canadian Governments under similar programs, the reactions of American 

industry <Jnd tlm patent bar, the position of the Department of' Commerce with respect 

to the oporntion of the program, and analysis of the current requirements of the 

Oovernment ond of possible ways of meeting those requirements, revised procedures 

for achjP.v:i.ng the objectives of F.xecutive Order 9865, a.s amended by Executive 

Order 10096, w:tthout recourse to legislation have been ~evelop~d. 

RPvised Procedures. 'Ihe revised procedures, accomplished within the authority 0£ 

the Chairman of tl'ie Government Patents Board under paragraph 5 of Executive 

Order 10096, are incorporated. in Administrative Orders Nos. 6 and 7. 1hrough tl~ese Admjnistrative Orders the foreign patent protection program of the 

Government, 1.nitiated under Executive Order 9865 in 1947, has been resolved in 

the light of the present defensive requirer11ents and interests of the Government nnc~ of' American industry. 

Both Orders, which were prepared with the assistance of' an interagency working 

proup, have been cleared with the various departments and agencies in the executive 

branch of the Government through their designated liaison officers and have been 

accnpted by the Government Patents Board. The Orders have also been submitted to 

tb:i Prosident for review and their issuance by the Chairman has been authorized. 

The Administrative Orders involve (1) delegatine; to the agencies wherein and/or 

under whose jurisdiction the inventions originate responsibility for determining 

whjch inventions should, for defensive purpos~s, be protected abroad and for seeking 

and acquiring the necessary foreign patent protection; (2) delegating to the 

Secretary of Commerce responsi.bili ty for aff'ording American industry opportunity 

to protect its interests, when it so dosires, ·by under"t-n~iting foreign filing on 

inventions of unusual.commercial promise; and (3) prescribing the procedures for 

the eranting of licenses under foreign patents acquired by the Governmcnto 

J\.dministrative Order No. 6 provides for t,he administr~.tion of a uniform 

policy for the Government with respect to the acquisition and protection of 

.forP.j_gn rights in and to certain inventions., 

Admjnistrative Order No. 7 provides for the administration of a uniform 

policy for the Government with respect to th~ licensing of foreign ~atents 

acqu·lred by the GovArnm~nt. · · 

In essence, the two Orders clarify and make more flexible and eff'ective the 

achievement 0£ the objectiv~ of building up a port.folio of foreign patents and 

foreign patent rights for defensive purposes under the prov:Lsions of Executive 

Order 9865, as amended by Executive Order 10096, without recourse to legislation. 

The new Orders supers·ede Administrative Orders Nos. 2 and 4 and, by spelling out 

jn ereater detail the procedures to be followed, enablA the agencies concerned 

to obtain the desired foreign patent protection more expeditiously. 

J 

.... 
L 

- 3 -

Bo'iji Administrative Orders provide that, in order to obtain uniformity and 

consistency in the operation of the foreign patent protection program, the Chai~ o:f. the Government Patents Board retains the right to pass- upon all 

matters of policy. 

Administrative '·order No. 6. In accordance with the PI'.Ovisions of Executive 

Order 980$ and the.authority of the Chairman of the Government Patents Bo~rd 

under pa~agraph 5 of E~ecutive Order 10096, Administrative Order No. 6 places 

upon th,e_Gove;rnment agency·concerned the primary responsibility for determining whethe~ qr not and.in what foreign jurisdictions patent protection should be 

sought on inventions made by employees of the agency, or made under contract 

with the agency, a~ for taking the nece~sary action to obtai~ ~uch protection. 

In thos~ cases wherP. the agency concerned determines that foreign patent protec~on is desirable but ·the agency is unable, or does not see fit, to 

obtain sμch protection itse1f, Administrative Order No. 6 provides that the 

agency.report the facts promptly to the Secretary of aommerce, whereupon it 

becomes his responsibility to ascertain whether any other Government agency 

or priva.·te industry is interested enough and willing to finance the cost of 

obtainj.ng foreign patent protection of the invention. 

·· · If neither a Government agency nor industry is interested and willing 

to· finance such foreign patent protection within the six-month period specified 

in paragraph 8 of Administrative Order No. 6 and the' invention has not been 

discloseQ by publication as provided in paragraph 7 thereof, the Administrative 

Order provides the opportunity for the inventor to seek foreign patent protection 

on the invention, reserving to the Government the right to a no:eexclusive, 

irrevocable, royalty-free license under any foreign patents which may issue 

thereon. 

·. · Paragraphs 1, 2, and 3 of Administrative Order No. 6 cover the purpose, 

ai thorit.y and scope of the Order, in accordance with the provisions o:f Executive Order 9865 as amended. 

Paragraph 4 prescribes the procedure for obtaining an· option to acquire 

foreign patent rights by the Government and is in accordance with paragraph 3 

of Executive Order 9865 as amended. · 

Paragraph 5 prescribes the pr0cedure for .the GoYernment agency concerned 

to detemine whether and where foreign patent protection is to be sought and 

to take t~e necessary action to obtain such protection, if' the agency is able 

and sees fit to do so. 

·Paragraph 6 prescribes the procedure the Secretary of Commerce is to 

folJ.ow in obtaining fo~eign patent protection on inventions.when cases are 

referred to him in accordance wit~ subparagraph (b) of paragraph 5 above. 

Paragraph 7 provides for disclosure of the invention through publication 

.. izi lieu ·of patenting, when such disclosure would adequately protect the 

.... interests of the Government. This procedure, which has been in effect under ldministrati~e Order No. 4, is designed to save money through the medium of 

publication wherever possible and· adequate. 
REF ID:A104610 

- 4 -

Paragraph B prescribes the procedure and the conditions under which the 

inventor may seek foreign patent pr~tection of an invention when the Government 

does not exercise the option obtained under paragraph 4 above, '!hie procedure 

enables the Government to obtain a license and thereby protect its interests. 

The to:r'ms of the license include the power to issue sublicenses "for use in 

behalf of the Government and/or in furtherance of the foreign policies of the 

Government,". instead 0£ the usual 11for governmental purposes., 1

• in order to 

meet any d~.i'ensive requirements of the Government that might arise under the 

Nu tual Security Program~ particularly off shore procurement# or in· the furtherancP. of any present or futu~e foreign policy of the Government, 

Parav-aph 9 continues the delegation of the operational aspects of the 

foreign patont protection program. to the Secretary of Commerce., which has been 

in effect undel' Administrative OrdA:r No" 2, .· .·. 

Paragraph 10 prescribes uniform reporting procedures and provides for 

centralized maintenance of records. 

Paragraph 11 provides for appropriate dissemination of the provisions of 

the Order. 

Pnragrapn 12 provides for the revocation of Administrattve·orCiers Nos. 2 

and 4, which are l!l111'$:PJ9ded by Ad1rd.niitt.ra.tive. Ol"ders Nos" 6 ~d 7i . . . ~ . . . . ~ . •.· 

.. . 

>'dministrative Oitder No. 7. Administ:i:·a.tive procedures, impleJri.entins :and 

supplementing pa'.;e:g:rapn. 9,..o.:f' Administrative OrQ.e;r ~o. t$ 1 are ~.et i'ortjl. ,'separately 

in AChnin.1.•trat·:J.,.,. O:i:tda~ ·w.o" .1• 'J,'hese p:ro<'ladu,.es1 ·wh;l.oh. ·a?e a~oep+;~~:i~ to. the . Department of Commerce and the Department of S~ate, are ~n acco~drinee ~ith ·the provisio~s· of ~~outive<OI'd.A:r ~66-' ~ a.m~nded. ·.and the delegation .fit' -nne ;Licensing 

a.spects of. the. :t"oveign p11.tent protecti.on program to the Secretary ·o.r· Qominerce, 

continuing the situation, whi'ch has existed.Under Administrative Orders Nos. 2 

and h. .'· · · · · 

Paragraphsl, 2~ and 3 of Administrative Order No. 7 cover the purpose., 

authori.ty and scope of the Order, in accordan.ae ~ith the provisions of Executive 

Order 9865 as a.mended and the continuance of ·the. de.legatioμ of' licensing respons:i.bili ties to the· S.eoretarv of Commerce. · · . " . .. 

Paragraph 4 J:'.flStatee the respons:l.bili ty o.f' the Department. of State as 

pr.escr:i.bed in EX151.eutive Order 9B65 as amendedp .. ·. · 

Paragraph ~ aonti~es the existing procedure for the granting of licenses 

under foreign patents acquired by the Oover:raqent. R 

Pa?'.ag:raph ~ PftYid.• .. fpa:i oe~t!lflli~ed mail'l'i.'f~J'laflCe of rieco.~e. orf all licenses 

rranted under ~aragraph $ a~9ve and the submiaeion of periodic ~eports to the Chairm~ of the GoVeNlmant Patar+ts Boa.rd. 

June 24., 1954 

.... 
• 

' • 

• GOVEBNMENT l:'l~T~TS BOARD. 

Office of t."ie Chairman 

Administrative Order J!<u. . ..5.. _______________________ .... _A,..pri--1 26 195! 

RULES AND REGULATIONS FOR THE ADMINISTRATION OF A UNH~OBM PATENT POLICY VIITR RESPECT TO THE DOMESTIC RIGHTS IN" 

------....:I=NJENTIONS MADJLBY GOVERN~T ~LO~Y-F;ES...,.~------

Sectign 1. PurPose: ~ 

., The purpose or this order is to provide for the administration of a uniform 

patent policy for the Government with respect to the domestic rights in inventions 

made by Government employees and to prescribe rules and regulations for implementing and e.f£ectuating such _policy. 

Sectioq_~~ Authori\!J. 

Authority for the ad.ministration of a uniform patent policy is provided in 

Executive Order 10096, dated J&.nu~ry 23, 1950 (15 F.R. 389). 

This order appliep to any invention made bi a Government employee on or after 

Januar-; 23, 1950, :md to any action taken with respect thereto. 

Section 4. Definitions: 

(a) The term "Government ag~ncy", as used in thli:; order, mewis any Executive 

depart:nent or independent es"tti.b.J.ishment of the J!:xeouti ve branch or the Goveminent 

(including uny independent regulatory commission or board, any corporhtion wholly o~ued by the United States, and the b'mithsonian Institution), but does not include 

the Atomic 11lergy Commission. 

(b) The term "Government em11lo,yee", as used in this order, means any officer 

or employee, civilill.n or military, of any Goverrunent agency, includin~ Eilly part-time 

consultant or part-time employee except as may otherwise be provided for by agency 

regulation approved by the Chairman. 

(c) The term "invention", as used in thls order, means any art, machine, 

manufacture, design, or composition of matter, or any new and useful improvement 

thereof, or any variety or plant, which is or may be patentable under the patent 

laws of the United States. 

r. -('d) The term "Chairman", as used in this order, means the Chairman of tile 

Government Patents Board. 
REF ID:A104610 

• e - 2 -

Each Government aeency will de1,er:nj ne whether the results of reoearch, develop- .. ment, or other activity within the agency constitute invention within the purview 

of Executive Order 1009~. 

Section 6. De~~Ij!!,:i:_~.EJ..tion of ..r,1,ghkJ.l!-~!4..J~:-2..Al'l..~~-:q,;(!.i..orn. 

(a) Subject to review by the Chairman ·as provided for in this order, each 

Government agency will (\etermine the respective rights of the Government and of the 

inventor in and to any invention made by a Government employee while under the administrative jurisdiction of such agency. 

(b) The following rules shall be applied in determining the respective rights 

of the Government and of the inventor in and to any invention that is subject to 

the provisions of this order: 

(1) The Government shall obt~in the entire domestic right, title 

and interest in and to all inventions made bf any Government employee (i) during working hours, or (ii) with a contribution by the Government 

or facilities, equipment, materials, funds, or information, or of time or 

services of other Government. employees on official duty, or (iii) which 

bear a direct relation to or are made in consequence of the official 

duties or the inventor. 

(2) In any case where the contribution of the Gov~~nment, as 

measured by any one or more of the criteria set forth in subparagraph (1) last above, to the invention is insufficient equitably t~ justify 

a requirement of assignment ·to the Government of the entire domestic 

right, title, and interest in ttnd to such invention, or in any case 

where the Government has insufficient interest in an invention to obtain the entire domestic right, title, and interest therein (although the 

Gover•1ment could obtain same under subparagraph (1) above), the 

Government agency concerned, subject to the approw1l of the Chai'r=rum, 

shall leave title to such invention in the e1nployee, subject, however, 

to the reservation to the Government of ~ nonexclusive, irrevocab1e~ 

royalty-f~ee license in the invention ~~th power to grant licenses for 

all governmental purposes, such reservatlon, in the terms thereof, t9 

appear, where practicable, in any patent, domestic or forfi!ib'n; which' 

may issue on such invention~ 

(3) In applying the provisions of subpa.ragraphs (l) and (2) above 

to the facts and circumstances relatin~ to the ma.king of an.v partlcular 

invention, it shall be presumed that an invention made by an employee · who is employed or assigned (i) to invent or impl'ove or perfect any art, 

machine, manufacture, or ·composition of matter, (ii) to conduct or perform ~esearch, development work, or bot.~, (iii) to supervise, direct, 

coordinu.te, or review Government financed or conducted research, development work, or both, or (iv) to act in a liaison capacity among governmental 

or non-governmental agencies or individuals engaged in such work, falls 

' • 
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within the provisions of subparagraph (1) above, and it shall be presumed that any invention made by any other employee falls within the 

provisions of subparagraph (2) above. Either presumption may be 

rebutted by the facts or circumstances attendant upon: the conditions 

under which any particular invention is made and, notwithstanding the 

foregoing, shall not preclude a deter.nination that the invention falls 

within the provisions of subparagraph (4) next below. 

(4) In any case wherein the Government neither (i) obtains the 

entire domestic right, title and interest in and to an invention pursuant to the provisions of subparagraph (1) above nor (ii) reserves 

a nonexclusive, irrevocable, royalty-free license in the invention, 

with ~ower to grant licenses for ~11 governmental purposes, pursuant 

to the provisions of subparagraph (2) above, the Governnent sh~ll 

leave the entire right, title and interest in and to the invention in 

the Government employee, subject t~ law. 

(c) In the event that a Government agency determines, pursuant to subparagraph (2) or subparagraph (4) of paragraph (b) of this section, that title to an invention 

will be left with an em?loyee, the agency shall, subject to considerations of national 

security, or public health, safety, or welfare, report to the Chairman, promptly upon 

making such determination, the following information concerning the invention: 

(1) description of the invention in sufficient detail to permit 

a satisfactory review; 

(2) name of inventor and his employment status; and 

(3) statement of agency determination and reasons therefor • .,..,.-.... 

The report in a case falling within the provisions of subp~ragr~ph (2) of paragr~ph 

(b) of this section shall. be made after the expiration of the period prescribed in 

section 7 of this order for the t~king of an appeal, or it may be made prior to 

the expiration of such period if the employee acquiesces in the agency determination. The Chairman thereupon shall review the determination of the Government agency, 

and his decision respecting the matter shall be final, subject to the right of the 

inventor to submit to the Chairman, within 30 days (or such longer period as the 

Chairman may, for good cause, fix in any case) after receiving notice of such decision, a petition for the reconsideration of the decision if it gives to the Government greater rights than the agency determination. A copy of any such petition must 

also be filed by the inventor with the employing agency within the prescribed period. 

Section 7. A1m~al~ gy enm.~o~ees: 

(a)· Any Government employee who is aggrieved by an agency determination 

pursuant to subparagraph (1) or subparagraph (2) of paragraph (b) of section 6 of 

this nrder may obtain a review of the agency determination by filing, within 30 

days (or such longer period as the Chairman may, for good cau;e, fix in any case) 

after receiving notice or such determination, a written appeal with the Chairman 

and a copy of the appeal with the Government agency. 
-4-

(b) In the event of the filing of an appeal pursuant to paragraph {af of 

~his section, the Government agency which made the determination shall, subject to 

qonsiderations of national security, or public health, safety, or welfare, furnish 

the Chairman in writing, promptly upon the filing of the appeal, the following inforivation concerning the invention involved in the appeal: 

(1) description of the invention in sufficient detail to permit 

a satisfactory review; 

(2) name of the inventor roid his employment status, including a 

detailed statement of his official duties and responsibilities at the 

time of making the invention; and 

(3) detailed statement of the nature of the dispute or controversy, 

together with copies of the agency determination,of any briefs or written 

arguments that may have been filed, of any statements or other evidence 

that may have been considered by· the agency, and of other releVl:mt 

material. 

(c) The decision of the Chairman upon ~ny appe~l taken pursuant to this section 

shall be final. 

Section 8. Patent protection: 

(a) A Government agency, upon determining that an invention coming within the 

scope of subparagraph (l} or subparagraph (2) or paragraph (b) of section 6 of this 

order has been made, shall thereupon determine whether patent protection will be 

sought in the United States by the agency for such inventiono A controversy over 

the respective rights of the Government and of the inventor in any case shall not 

delay the taking of the actions provided for in this section. In cases coming 

within the scope of subparagraph (2) of par~graph (b) of section 6 of thls order, 

agency action looking toward such patent protection shall be contingent upon the 

consent of the inventor. 

(b) Where there is a dispute as to whether subparagrri.pn. (1) or subparagraph 

(2) of paragraph (b) of section 6 of this order applies in determining the respective rights of the Government and of ~n employee in and to any invention, the 

agency will determine whether patent protection will be sought in the United States 

pending the Chairman's decision on the dispute, and, if it decides th~t a.n application for patent should be fil~d, will take such rights as are specified in 

subparagraph (2) of paragraph (b) of section 6 of this order, but this shall be 

without prejudice to acquiring the rights specified in subparagraph (1) of that 

paragraph should the Chairman so decide. 

(c) Where an agency has determined to leave title to an inventlon with 

an employee under subparagraph (2) of paragraph (b) of section 6 of this order, 

the agency will, upon the filing of an application for patent and pending review 

of the determination by the Chairman, take the rights specified in that subparagraph 

without prejudice to the subsequent acquisition by the Government of the rights 

specified in subparagraph (1) of that par~graph should the Chairman so decide. 

• 
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(d) In the event that patent protection is sought by an agency for an 

invention made by a Government employee, the agency shall, subject to considerations or national security, or public health, safety, or welfare, report to the 

Chairman, promptly upon the filing or an application for patent, the following 

; information concerning the invention: 

(1) brief description of the invention; 

(2) name of the inventor and bis employment status; and 

(3) serial number, title of invention, and date on which the 

application was filed. 

(e) In the event that a Government agency determines that an application 

for patent will not be filed on an invention made under the circumstances specified 

in subparagraph (l) of paragraph (b) of section 6 of this order, giving the United 

States the right to title thereto, the agency shall, subject to considerations or 

national security, or public health, safety, or welfare, report to the Chairman, 

promptly upon making such determination, the following information concerning the 

iJ!\ivention 1 · · t 

(l) description of the invention in sufficient detail to permit 

a satisfactory review; 

(2) name o.r the inventor and his employment status; and 

(3) statement or agency determination and ~easons therefor. 

'ft\e Chall-man may, 1£ he determin~s that the interest of the Government so requires a~d subject to considerations of national security, or public health, safety, or 

' welfare, cause an application for patent to be filed or cause the invention to be 

fully disclosed by publication thereof: ftoX\ded, however, That po application for 

patent respecting any Vliriety of plant invented by an employee of the Department of 

Agriculture shall be filed with.out.the approval of the Secretary or Agriculture. 

(f) Whenever a patent hereafter issues on an invention made by a Government 

employee, in respect to which the Government has any right, title, or interest, including a license, the Government agency concerned shall, promptly upon the issuance ~t the patent, furnish to the Chairman: 

{l) an abstract or the invention; 

(2) name or the inventor and his employment status; 

(3) a copy of the patent; and 

(4) statement of the nature and extent of the right, title, or inte~est or the Oovernment in the inventiono 
REF ID:A104610 

·e 

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Section 9. Report forms: 

The Chairman will. prescribe the forms to be used by Government agencies in 

subnitting the reports specified in this order. 

Section 10, Liaison: 

Each Government agency shall.designate~ liaison officer at the agency level 

to deal with the Office of the Chairman: Pron<!~, how~~' That the Departments 

of the AiimT, the Navy-, and the Air Force may each designate a liaison officer. 

·Section 11. Dissemination q_f order: 

Ee.ch Government agency shall make appropriate arrangements for the dissemination 

to its employees of the provisions or this order. 

· Section 12, Ret,vocation: 

Administrative Order No. 1, duted September 6, 1950, is superseded by the provisions or this order, which shall remain in effect until further notice. 

/ s/ Archie M, Pal.mer 

... 

Chairman 

Approvedz 

/s/ Barry S. Trwnan 

President 

Datez April 261 19'1 

I 

• 
-REF ID:A104610 

GOVERNMENT PATENTS BOARD e 

Office of the Chairman 

April 26, 19Sl 

PROOEDURAL INSTRUOTIONS FOR SUBMITTING THE REPffiTS S:>ECIFIED 

IN ADMINISTRATIVE ORDER NOo 5 

Administrative Qr:oder No. 5, entitled Rules and Regulations for the 

Administratien ot a Unif arm Patent Policy with Respect to the Danestic 

Rights in Inventions Made by Government Employees, which supersedes 

Adminiatrat1ve Order No. 1,, has been approved by the President and is 

being issued under date of April 26, 1951. Section 9 of that Order 

provides that the Chairman of the Government Patents Board will prescribe 

the forms to be used in submitting the reports specified in that arder. 

A copy ot Administrative Order Noo 5 accompanies these revised procedural 

instructions, which supersede those issued under date or February 12, l9Sl. 

l. Case Number: Each invention will be reported as a separate case 

and each report wilioe assigned a case number by the originating agency, 

consisting of the code nu.."'ll.ber indicated an the accanpanying lists (or, if 

not so indicated, as assigned at the request of the agency) 1 fol.lowed by a 

dash and a serial number assigned by the agency. F o.r example, if the agency 

code number is 5, its first case will be 5-1. 

2. Type of Case: Following the case number the agency will indioateJ 

in parentnese;:tiie"tYPe of ca.se. The several. types of cases will be indicated by reference to the section and paragraph of Administrative Order 

No. S under whi.ch the invention ia reported, as follows: 

6c - Report of agency determination that title be left with inventor 

8d - Report when patent application is filed 

8e - Report of agency determination not to file application 

a:r - Report when patent issues 

7b - Report by agency subsequent to appeal by employee 

It may be that several reports will be submitted on one invention_, as tor 

example under 8d and Bf or under 8d and 6c. The same case number will be 

used in all reports on the same invention, but separate reference will be 

made on each report to the applicable section and paragraph. 

3. ~!,!!_C?,!L<?.f._Re_ports: Except £or reports on disputes and controversies, all reports will be subnd.tted in duplicateJ single spaced, on 

paper size 8 x 10·~. Reports on disputes and controversies {type 7b) will 

be submitted in quadruplicate, single spaced, on paper size 8 x lei. Only 

one copy of the patent need accompany reports on type Bf cases •. 

4. Inf'ormation as to Date Invention Is Ma.de: All reports will indicate 

Wiether the invention was made {l) prior to1 or {2) on or after the date o£ 

Executive Order 10096 (January 23,, 1950). In this connection see Interpretations and Opinions No4 1,, entitJ.ed Interpretation of "Made". 

Enclosures 

Archie Mo Palmer 

Chairman