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 busi-
ness to speed the development of new products and processes
by entering into cooperative research and development agree-
ments which make available the assistance of Federal labora-
tories to the private sector, but the commercialization of tech-
nology 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 Govern-
ment, 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 trans-
ferred by that agency (as determined under such subparagraph)
would exceed $10,000.’’.
SEC. 4. TITLE TO INTELLECTUAL PROPERTY ARISING FROM COOPERA-
TIVE 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
H. R. 2196—2
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 contribu-
tion 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 collaborat-
ing 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 inven-
tion or have the invention practiced throughout the world by or
on behalf of the Government for research or other Government
purposes.
H. R. 2196—3
‘‘(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 accord-
ance 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 Govern-
ment; 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 inven-
tion 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 individ-
ual’s designee, shall pay each year the first $2,000, and there-
after 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