PRIA, Government Policy, Made Personal

Summary

A federal agency can make a small business or nonprofit that owns an invention made with federal funding give a license to others. The license can be nonexclusive, partly exclusive, or exclusive and must be on fair terms. If the owner refuses, the agency can give the license itself when it finds one of four things: the owner is not taking (or won’t take soon) the steps to put the invention to practical use; the invention is needed to fix unmet health or safety needs; it is needed to meet public-use rules that are not being met; or a required agreement under section 204 was not obtained or a licensee broke its agreement. Decisions under this rule are not governed by chapter 71 of title 41. An administrative appeal process will be created under rules in section 206. Anyone harmed by the decision (the contractor, inventor, assignee, or exclusive licensee) may file a petition in the United States Court of Federal Claims within 60 days. That court reviews the record and can confirm, reverse, send back, or change the agency’s decision. For the situations about failing to commercialize or failing to meet public-use rules (items 1 and 3), the agency must pause its action while appeals or court petitions are pending.

Title 35, §203

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(a)With respect to any subject invention in which a small business firm or nonprofit organization has acquired title under this chapter, the Federal agency under whose funding agreement the subject invention was made shall have the right, in accordance with such procedures as are provided in regulations promulgated hereunder to require the contractor, an assignee or exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant or applicants, upon terms that are reasonable under the circumstances, and if the contractor, assignee, or exclusive licensee refuses such request, to grant such a license itself, if the Federal agency determines that such—

(1)action is necessary because the contractor or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the subject invention in such field of use;

(2)action is necessary to alleviate health or safety needs which are not reasonably satisfied by the contractor, assignee, or their licensees;

(3)action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the contractor, assignee, or licensees; or

(4)action is necessary because the agreement required by section 204 has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject invention in the United States is in breach of its agreement obtained pursuant to section 204.

(b)A determination pursuant to this section or section 202(b)(4) shall not be subject to chapter 71 of title 41. An administrative appeals procedure shall be established by regulations promulgated in accordance with section 206. Additionally, any contractor, inventor, assignee, or exclusive licensee adversely affected by a determination under this section may, at any time within sixty days after the determination is issued, file a petition in the United States Court of Federal Claims, which shall have jurisdiction to determine the appeal on the record and to affirm, reverse, remand or modify, as appropriate, the determination of the Federal agency. In cases described in paragraphs (1) and (3) of subsection (a), the agency’s determination shall be held in abeyance pending the exhaustion of appeals or petitions filed under the preceding sentence.

Notes & Related Subsidiaries

Editorial Notes

References in Text

section 202(b)(4), referred to in subsec. (b), was redesignated section 202(b)(3) of this title by Pub. L. 111–8, div. G, title I, § 1301(h), Mar. 11, 2009, 123 Stat. 829.

Amendments

2011—Subsec. (b). Pub. L. 111–350 substituted “chapter 71 of title 41” for “the Contract Disputes Act (41 U.S.C. § 601 et seq.)”. 2002—Pub. L. 107–273 redesignated par. (1) as subsec. (a) and former subpars. (a) to (d) as pars. (1) to (4), respectively, redesignated former par. (2) as subsec. (b), struck out quotation marks and comma before “as appropriate”, and substituted “paragraphs (1) and (3) of subsection (a)” for “paragraphs (a) and (c)”. 1992—Par. (2). Pub. L. 102–572 substituted “United States Court of Federal Claims” for “United States Claims Court”. 1984—Pub. L. 98–620 designated existing provisions as par. (1) and added par. (2).

Statutory Notes and Related Subsidiaries

Effective Date

of 1992 AmendmentAmendment by Pub. L. 102–572 effective Oct. 29, 1992, see section 911 of Pub. L. 102–572, set out as a note under section 171 of Title 28, Judiciary and Judicial Procedure.

Effective Date

Section effective July 1, 1981, but implementing

Regulations

authorized to be issued earlier, see section 8(f) of Pub. L. 96–517, set out as an

Effective Date

of 1980 Amendment note under section 41 of this title.

§203 March-in Rights

Summary

Title 35, §203

Notes & Related Subsidiaries

Editorial Notes

References in Text

Amendments

Statutory Notes and Related Subsidiaries

Effective Date

Effective Date

Regulations

Effective Date

Citations & Metadata