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NEW LAWS 

ACT OF· AUGUST 1, 1946, PUBLIC LAW 0NO. 585 

PATENTS AND· INVENTIONS 

SEc. 11. (a) P:r:ocluction and military utilizatioi1: 

(1) No patent .shall hereafter be granted £oi:· any invention or discovery which is use'ful solely in the pl'oduction of fissionable material or in the utilization of 

fissionable n1aterial or atomic energy for a military 

weapon. Any patent g~·a'nted for any such in:vention or 

discovery is hereby revoked, and just compensation shall 

be made therefor. 

(2) No patent hereafte.r granted slrnll confer any 

rights with i·espect to any invention or discovery to the 

extent that such invention or dist.:overy is used in the 

production of fissionable material or in the uti_lizittion. 

of fissionable material or atomic energy for a military 

weapon·. Any rights conferred by any patent heretofore 

granted for any invention or cfrscovel'y are hereby revoked to the extent that &uch invention or discovery is 

so used, and just compensation shall be made therefor. 

(3) Any person who has made or: hereafter nmkes any 

invention or clisco'rnry useful in the production of fissionable material or in the utilization of fissionable ma-. 

terial or atomic •eirnrgy for :t military weapon shitH file 

with the Commission a report containing a complete description thereof, unless such invention or disco'\1ery is 

described in an application for a patent filed in the 

I'atent •Office by such person within the.· time required 

for the filing of such report. The report covering any 

such in.vention 6r discovery slrnll be tiled on 61' before 

whicheve1' of the foJlowing is the latest: (A) The sixtieth day after the date of enact!Tlent of this act; (B) the 

sixtieth cl::ty after the coniplction 0£ such invention or 

clisco:very; or ('C) the ·sixtieth day after such person fi1:st 

discovers or fil·st has reason to belim;e that such inventio'n 

or discovery is useful in such production or utilizatimi. 

(b) Use of inventions for resea.rch: No patent 'hereafter granted. shaH confer any rights with respect to any 

invention or discove_ry to the extent that such invention 

or discovery .is. used in the conduct of research or devel" 

(39) 

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oopment activit.ies in the fields specified in section 3. Any 

rights conferred by ·a.ny patent heretofore granted for 

any invention or discqvery are hereby revoked to the extent that such i!wention or discovery is so used, and just 

comi)ensation· shn 11 be made therefor. 

( c) 'Non military utilization·: 

(.1) It sha~l be tl:ie duty of the Commission to declare 

any patent to be affectec]. with the publi5.! interest-if (A) 

the inv.ention or discovei·y covered by the patent utifrzes 

or is essential in. the utilization uf tissionable material or 

atomic energy; and (B) the licensing of such invention or 

discovery under this .subsection is necessary to effe~tuate 

the policies and purposes of this act. 

(2) " 7 henever any patent has been declared, pursuant 

to paragraph .(I), to be affected with the public interest-

(A) The Commission is hereby licensed to use the ipvention or discovery co:vered by sucl~ patent in performing any of its powers up:der this act; and 

(B) Any person to whom a license has been issued. 

under section 7 is hereby licensed to use thfl invention or 

discovery covered by such patent to the extent such invention or .discovery is used by him in carrying on the 

-acti.vities authorized by his license under section 7 .. 

The owner- of the pa,tent· shall be entitled to a reasonable royalty fee for aiJ.y use of an invention or discovery 

licens()cl by this subsection. Such royalty foe may be 

agreed upon by such owner lmd the liceiise,e, or in the 

absence of such agrecme11t shail be detepnined by the 

Co1nmi ssion. 

( 3) No court slrnll have j url.sdiction or power to stay, 

restraiil, or otherwise enjoin the use. of any invention or 

discovery by a .licensee, to the extei1t that such use is 

licensed by paragraph: (2) above, on the ground' of infringement of·any patent. If in any action for infringement against .such licensee the c.ourt shall determine that 

the defendant is exercising such licei1Se, the measure of 

da1:nages shall be the royalty fee determined pursuant to 

this sect:1on, together with such costs, 'interest, and reasonable. a,ttoniey's fees as may be fixed by the court. If 

no.r.oyalty fee. has been determined, the court shall st[l,y 

the proceeding until the royalty fee is determined pursuant to this section. If any such ~icensee shall f~ti.l to 

pay.such royaJty fee, the patentee may bring an action in 

any court of competent jurisdiction for' such royalty fee, 
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together with such costs, interest,. and reasonable attorney's :fees as may be fixed by the court. 

( d) Acquisition·o:f patents: The Commissionis author-. 

ized to purchase, or to take, requisition, or condemn, and 

·make just compensation for, (1) any invention or discovery which is use:ful in the proclucti~n o:f fissionable 

material or in the utilization of fissionable material or 

atomic energy for a milita1'y weapon·, or which utilizes or 

is essen'tial. in the utilizatibn of fissionable material or 

atomic. energy, or (2) any patent or patent applicati·o11 

covering any such invention or discovery. The Commissioner o:f Patents shall notify the Commission- of all 

applications ·for paten.ts heretofore or hereafter filed 

which in his opinion discloses such inventions or discoverjes and shall provide the Cominission access to all 

such :appli«::ations. 

( e) Compensation awards, and royalties: 

(l) Patent Compensation. Board:. The Commission 

shall designate a Patent Compensation .Board, corn;;isting 

of two or more. em:ployees of the Commi.ssion, to consider 

applications under this subsection. 

(2) Eligibility: 

(A) Any owner of a patent Jicens.ed under subsection 

( c). ( 2) or any licensee thereunder may make application 

to the Commission for. the determin·ation of a reasonable 

royalty fee in accordance with such procedures as it by 

regulation may establish. 

(B) Any person seeking to obtiiin the just compensation provided in subsections (a), (b), or (.d) shall make 

application_ therefor to the Commission in a:ccordaJ}Cl;l 

with such procedures as it may by regulation establish. 

( C) Any person making any invention or discovery 

useful in· the production of fissionable material or in the 

utilization of fissionable material or atomic energy for 

a miliJary weapon who is not entitled to compensation 

therefor under .subsection (a) and who has complied 

with subsection (a) ( 3) a hove may ~mke. application 

fo the Commission for, and the Cornmission inay grant, 

an award. ' 

(D) An~ persoi: making application under this subsection shall. have the right to be represented .by counsel. 

(3) Standar.df;l: ' 

(A) In determining such reasonable royalty fee, the 

Commission shall take into consideration any defense, 
REF @:A4148483 

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general or special, that might be pleaded by a defendant 

in an action for infringement, the e:x'tent to '\'hich, if any, 

such patent was developed tlnough :federally financed 

research, the degree of utility, novelty, and importance 

of the .inven~ion or discovery, find may consider the cost 

to.·the o:wner of the ,patent of developing such invention 

or discovery °.I' acquiring sucli patent. . 

(B) In determining what constitutes just compensation imder subsection (a), (b), or (cl) above, the Commission shall take into account the considerations set 

:forth in paragraph (A) above, and the actual use of such 

invention or discovery, and may determine that such ' . compensation be paid in periodio payments or in a lump 

sum.· 

(C) In determining the amount of :my a\\;ard under 

paragraph (2) (C) of th'is subsection, the Commission 

shall take into account the considerations set forth in 

paragraph (A) above; and the actual use of such inventi<m or discovery. Awards so made may··be paid by the 

Commission in periodic payments or in a lump sum. 

( 4) J uclicial review: Any person aggrievecl by any 

determination of t.he Commis$ion of an award or of a 

reasonable ro3'alty fee may obtain a review of such determination in the Court of Appeals for the District of. 

Columbia by filing in such court~ within 30 clays after 

notice of snch cleterm,i'nation, a written petition praying 

that such determination be set aside. A copy of s(1ch 

petition shall be forthwith serv:ecl upoh the Commission 

and thereupon the Commission shall fi1e with the court 

a certified transcript of the entire record in the proceeding, including the findings an·d conclusions upon which 

the determination '''ns based. Upon the filing of snch 

transcl'ipt the coui't . shall have exclusive jurisdiction•· 

upon the record cert.ifiedto it to affirm the determina·tion 

in its entirety or set it aside and remand it to the Commission for further proceeding~. The finctihgs of the 

Conl.n1ission as to the facts, if supported by substant~al 

evidence; sha 11 be conclusive. The court's judgment shall 

be final, subject, however, to review by the Supreme 

Court of the United States upon writ of certiorari qn 

pefition therefor under section 240 of the Judicial Code 

(U. S. C., title 28, sec. 347), by the Commission or any 

·part,Y to the court proceeding, ·