I
105TH CONGRESS
1ST SESSION
H. R. 2544
To improve the ability of Federal agencies to license federally owned
inventions.
IN THE HOUSE OF REPRESENTATIVES
SEPTEMBER 25, 1997
Mrs. MORELLA introduced the following bill; which was referred to the Com-
mittee on Science, and in addition to the Committee on the Judiciary,
for a period to be subsequently determined by the Speaker, in each case
for consideration of such provisions as fall within the jurisdiction of the
committee concerned
A BILL
To improve the ability of Federal agencies to license federally
owned inventions.
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
Commercialization Act of 1997’’.
SEC. 2. COOPERATIVE RESEARCH AND DEVELOPMENT
AGREEMENTS.
Section 12(b)(1) of the Stevenson-Wydler Technology
Innovation Act of 1980 (15 U.S.C. 3710a(b)(1)) is
amended by inserting ‘‘or, subject to section 209 of title
35, United States Code, in a federally owned invention di-
rectly related to the scope of the work under the agree-
ment,’’ after ‘‘under the agreement,’’.
SEC. 3. LICENSING FEDERALLY OWNED INVENTIONS.
(a) AMENDMENT.—Section 209 of title 35, United
States Code, is amended to read as follows:
‘‘§ 209. Licensing federally owned inventions
‘‘(a) AUTHORITY.—A Federal agency may grant an
exclusive or partially exclusive license on a federally owned
invention if—
‘‘(1) granting the license is a reasonable and
necessary incentive to—
‘‘(A) call forth the investment capital and
expenditures needed to bring the invention to
practical application; or
‘‘(B) otherwise promote the invention’s uti-
lization by the public;
‘‘(2) the Federal agency finds that the public
will be served by the granting of the license, as indi-
cated by the applicant’s intentions, plans, and ability
to bring the invention to practical application or oth-
erwise promote the invention’s utilization by the
public;
‘‘(3) the applicant makes a commitment to
achieve practical utilization of the invention within a
reasonable time;
‘‘(4) granting the license will not substantially
lessen competition or create or maintain a violation
of the antitrust laws; and
‘‘(5) in the case of an invention covered by a
foreign patent application or patent, the interests of
United States industry in foreign commerce will be
enhanced.
‘‘(b) MANUFACTURE IN UNITED STATES.—Licenses
shall normally be granted under this section only to a li-
censee who agrees that any products embodying the inven-
tion or produced through the use of the invention will be
manufactured substantially in the United States.
‘‘(c) SMALL BUSINESS.—First preference for the
granting of licenses under this section shall be given to
small business firms having equal or greater likelihood as
other applicants to bring the invention to practical appli-
cation within a reasonable time.
‘‘(d) TERMS
AND CONDITIONS.—Licenses granted
under this section shall contain such terms and conditions
as the granting agency considers appropriate. Such terms
and conditions—
‘‘(1) shall include provisions—
‘‘(A) requiring periodic reporting on utili-
zation of the invention, and utilization efforts,
by the licensee; and
‘‘(B) empowering the Federal agency to
terminate the license in whole or in part if the
agency determines that—
‘‘(i) the licensee is not adequately exe-
cuting its commitment to achieve practical
utilization of the invention within a reason-
able time;
‘‘(ii) the licensee is in breach of an
agreement described in subsection (b); or
‘‘(iii) termination is necessary to meet
requirements for public use specified by
Federal regulations issued after the date of
the license, and such requirements are not
reasonably satisfied by the licensee; and
‘‘(2) may include a requirement that the li-
censee provide the agency with a plan for develop-
ment or marketing the invention.
Information obtained pursuant to paragraph (1)(A) shall
be treated by the Federal agency as commercial and finan-
cial information obtained from a person and privileged and
confidential and not subject to disclosure under section
552 of title 5, United States Code.
‘‘(e) PUBLIC NOTICE.—No license may be granted
under this section unless public notice of the availability
of a federally owned invention for licensing in an appro-
priate manner has been provided at least 30 days before
the license is granted. This subsection shall not apply to
the licensing of inventions made under a cooperative re-
search and development agreement entered into under sec-
tion 12 of the Stevenson-Wydler Technology Innovation
Act of 1980 (15 U.S.C. 3710a).’’.
(b) CONFORMING AMENDMENT.—The item relating
to section 209 in the table of sections for chapter 18 of
title 35, United States Code, is amended to read as fol-
lows:
‘‘209. Licensing federally owned inventions.’’.
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