I
104TH CONGRESS
1ST SESSION
H. R. 2196
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.
IN THE HOUSE OF REPRESENTATIVES
AUGUST 4, 1995
Mrs. MORELLA (for herself, Mr. WALKER, Mr. BROWN of California, and Mr.
TANNER) introduced the following bill; which was referred to the Commit-
tee on Science
A BILL
To amend the Stevenson-Wydler Technology Innovation Act
of 1980 with respect to inventions made under coopera-
tive research and development agreements, and for other
purposes.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Technology Transfer
Improvements Act of 1995’’.
SEC. 2. FINDINGS.
The Congress finds the following:
(1) Bringing technology and industrial innova-
tion 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 tech-
nology and industrial innovation in the United
States depends upon actions by business.
(3) The commercialization of technology and in-
dustrial innovation in the United States will be en-
hanced if companies, in return for reasonable com-
pensation to the Federal Government, can more eas-
ily obtain exclusive licenses to inventions which de-
velop as a result of cooperative research with sci-
entists employed by Federal laboratories.
SEC. 3. USE OF FEDERAL TECHNOLOGY.
Subparagraph (B) of section 11(e)(7) of the Steven-
son-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 DEVEL-
OPMENT 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 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 reason-
able compensation when appropriate. The laboratory shall
ensure that the collaborating party has the option to
choose an exclusive license for a 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 ex-
plicit conditions:
‘‘(i) the action is necessary to meet health
or safety needs that are not reasonable satisfied
by the collaborating party;
‘‘(ii) the action is necessary to meet re-
quirements for public use specified by Federal
regulations, and such requirements are not rea-
sonably 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).
‘‘(2) Under agreements entered into pursuant to sub-
section (a)(1), the laboratory shall ensure that a collabo-
rating 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 inven-
tion practiced throughout the world by or on behalf of the
Government for research or other Government purposes.
‘‘(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; and
‘‘(C) to the extent consistent with any applica-
ble agency requirements or standards of conduct,
permit an employee or former employee of the lab-
oratory to participate in an effort to commercialize
an invention made by the employee or former em-
ployee while in the employment or service of the
Government.
‘‘(4) A collaborating party in an exclusive license in
any invention made under an agreement entered into pur-
suant to subsection (a)(1) shall have the right of enforce-
ment under chapter 29 of title 35, United States Code.
‘‘(5) A Government-owned, contractor-operated lab-
oratory that enters into a cooperative research and devel-
opment agreement pursuant to subsection (a)(1) may use
or obligate royalties or other income accruing to the lab-
oratory under such agreement with respect to any inven-
tion only—
‘‘(A) for payments to inventors;
‘‘(B) for a purposes described in clauses (i),
(iii), and (iv) of section 14(a)(1)(B); and
‘‘(C) for scientific research and development
consistent with the research and development mis-
sions and objectives of the laboratory.’’.
SEC. 5. DISTRIBUTION OF INCOME FROM INTELLECTUAL
PROPERTY RECEIVED BY FEDERAL LABORA-
TORIES.
Section 14 of the Stevenson-Wydler Technology Inno-
vation 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 agen-
cy whose laboratory produced the invention and shall
be disposed of as follows:
‘‘(A)(i) The head of the agency or labora-
tory, or such individual’s designee, shall pay
each year the first $2,000, and thereafter at
least 15 percent, of the royalties or other pay-
ments to the inventor or coinventors.
‘‘(ii) An agency or laboratory may provide
appropriate incentives, from royalties, or other
payments, to employees of a laboratory who
contribute substantially to the technical devel-
opment of licensed or assigned inventions be-
tween the time that the intellectual property
rights to such inventions are legally asserted
and the time of the licensing or assigning of the
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 oc-
curred. 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 classi-
fied 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 activi-
ties that increase the potential for transfer
of the technology of the laboratories of the
agency;
‘‘(iv) for payment of expenses inciden-
tal to the administration and licensing of
intellectual property by the agency or lab-
oratory 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 serv-
ices; or
‘‘(v) for scientific research and devel-
opment consistent with the research and
development missions and objectives of the
laboratory.
‘‘(C) All royalties or other payments re-
tained by the agency or laboratory after pay-
ments have been made pursuant to subpara-
graphs (A) and (B) that is unobligated and un-
expended 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 para-
graph (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 ap-
pears 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 inven-
tors’’;
(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 inven-
tors,’’; 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 amend-
ed—
(1) by striking ‘‘the right of ownership to an in-
vention under this Act’’ and inserting in lieu thereof
‘‘ownership of or the right of ownership to an inven-
tion made by a Federal employee’’; and
(2) by inserting ‘‘obtain or’’ after ‘‘the Govern-
ment, 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 Tech-
nology Transfer Act of 1986,’’.
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