IIA
104TH CONGRESS
1ST SESSION
H. R. 2196
IN THE SENATE OF THE UNITED STATES
DECEMBER 13, 1995
Received; read twice and referred to the Committee on Commerce, Science,
and Transportation
AN ACT
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,
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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 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.
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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, through such agreement, 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 licens-
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ing 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 sub-
ject to the following explicit conditions:
‘‘(A) A nonexclusive, nontransferable, irrev-
ocable, 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 Govern-
ment 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 cir-
cumstances; or
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‘‘(ii) if the collaborating party fails to
grant such a license, to grant the license itself.
‘‘(C) The Government may exercise its right re-
tained under subparagraph (B) only if the Govern-
ment finds 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 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—
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‘‘(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 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; and
‘‘(D) waive, subject to reservation by the Gov-
ernment of a nonexclusive, irrevocable, paid-up li-
cense 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.
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‘‘(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),
(ii), (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
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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 re-
tained 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 ap-
propriate incentives, from royalties, or other pay-
ments, to laboratory employees who are not an in-
ventor of such inventions but who substantially in-
creased the technical value of such inventions.
‘‘(iii) The agency or laboratory shall retain the
royalties and other payments received from an inven-
tion 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 pay-
ments shall be transferred by the agency to its lab-
oratories, with the majority share of the royalties or
other payments from any invention going to the lab-
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oratory 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 com-
mercial applications;
‘‘(ii) to further scientific exchange among
the laboratories of the agency;
‘‘(iii) for education and training of employ-
ees consistent with the research and develop-
ment 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 re-
spect to inventions made at that laboratory, in-
cluding the fees or other costs for the services
of other agencies, persons, or organizations for
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intellectual property management and licensing
services; or
‘‘(v) for scientific research and develop-
ment consistent with the research and develop-
ment 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 sec-
ond 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’’;