Outline of the federal framework for the disposition of inventions

Here is an outline of the federal framework for inventions. I have included links to various documents. Lots more to be said, and the brief account here is more gist than deep summary, but perhaps you find it helpful. Plenty of additional documents out there, such as the PHS revised patent policy of 1962 (discussion in the Harbridge House report here). A number of policies and reports are compiled in a 1977 report. The big picture–things in the federal land of regulation of inventions made in federal research and development is not, shall we say, straight forward.

Attorney General’s Report on Government Patent Practices and Policies

For many years, the framework for federal agency disposition of inventions. 

Issued in 1947, lead author David Lloyd Kreeger. Recommends that federal agencies fund development of inventions in which they determine they have an interest, that federal agencies should not take a financial interest in licenses granted to federally owned inventions, that agencies should not grant exclusive licenses, and should not set up to police exclusive license agreements or to enforce patents against US citizens and US companies.

Executive Order 10096

Basis for federal claims of ownership on inventions made by federal employees. 

Issued by President Truman in 1950, EO 10096 creates the authority for federal agencies to claim ownership of inventions made by federal employees. Codified at 37 CFR 501. Authority for  federal agencies to take ownership of (or release claims to) inventions made by federal employee inventors. Addresses Dubilier. A number of revisions.

Kennedy and Nixon Patent Policies

Statement of executive branch patent policy from 1963 until replaced in 1983.

Kennedy (1963) and Nixon revisions (1971) established when federal agencies should allow contractors to retain rights to inventions made in federally funded work, and when agencies should require assignment of inventions to the government. The general frame was that companies with technical capability and non-governmental markets should own inventions; otherwise the government should own unless a federal agency decided otherwise. There were four categories of exceptions to contractor ownership, including research directly concerning public health. These policies form the default position of the federal government in research and development contracting for two years under Bayh-Dole. Essentially, there were two patent rights clauses potentially in play–one for inventions with a scope defined by the Federal Procurement Regulation and one for subject inventions within the scope of Bayh-Dole’s patent rights clauses, which took precedence.

2 CFR 200

2 CFR 200 codifies administration of grants with universities and other nonprofits. In present form/numeration in 2013. Many changes over the years. Formerly OMB Circular A-110, initially issued in 1976, with inventions at _.36. Then 2 CFR 215. Now at 2 CFR 200, with inventions  addressed at 2 CFR 200.315 and .316.

Stevenson-Wydler Act

Basis for disposition of royalties received by federal laboratories and patent clauses in CRADAs and cooperative research center agreements. 

15 USC  Chapter 63. Passed in 1980. Establishes a number of programs pertaining to technology transfer from federal laboratories. Basis for Secretary of Commerce to use patent rights clauses as desired, federal cooperative research centers, and CRADAs. Takes precedence over Bayh-Dole, but some provisions later amended to conform to Bayh-Dole practices. Basis for disposition of royalties received by federal laboratories.

The Bayh-Dole Act

Basis for nonprofit and small business contractors conditionally to retain ownership of inventions that they acquire and which are made in federally funded work.

35 USC 200-212. Part of federal patent law. Passed in 1980, effective July 1, 1981. Original version here. Major revision in 1983. A number of changes since, but most of the attempts at change have come via changes to the CFR.

Requires federal agencies to use standard patent rights clauses in federal funding agreements with small businesses and nonprofits unless they can justify some other rights clause. Contractors that obtain title to an invention made in federally funded work may retain that title, subject to various conditions to protect the public from nonuse, unreasonable terms, and failure to satisfy public health or regulatory needs.

Authorizes federal agencies to deal in exclusive patent licenses, to take a financial interest in patent licenses, and to enforce patent rights or authorize private companies to enforce patent rights on behalf of the government.

Replaces a portion of the Kennedy/Nixon patent policy.

Reagan Presidential Memorandum

Basis for federal agencies to use Bayh-Dole like provisions with large company contractors. 

Memorandum issued by President Reagan in 1983. Replaces the rest of the Kennedy/Nixon patent policy. Authorizes all federal agencies to use Bayh-Dole-like contract provisions with any contractor for research and development work.

Executive Order 12591

Authorizes royalty sharing for federal employee inventors. 

President Reagan Executive Order 12591 issued in 1987. Authorizes federal agencies to promote commercialization. Authorizes federal agencies to create royalty sharing programs for federal employee inventors. Incorporates the 1983 Memorandum by reference. Would be no royalty sharing but for Bayh-Dole’s authorization for federal agencies to receive royalties.

37 CFR 401

Bayh-Dole delegates administration of the statute to the Department of Commerce, which has further delegated oversight to NIST.  Finalized in 1987. 37 CFR 401 codifies the portion of Bayh-Dole dealing with federal contracting for research or development (202-204), restating the statute, providing specific guidance, adding provisions not in Bayh-Dole, and establishing three standard patent rights clauses, at 37 CFR 401.14 [for nonprofits], 37 CFR 401.14 (minus paragraph (k)) [for small businesses], 37 CFR 401.9 [for inventors, as small businesses].

37 CFR 404

Codifies the portion of Bayh-Dole (35 USC 207, 209) dealing with federal for agency invention licensing. Finalized in 1985. Notably restates only the Bayh-Dole policy objective of promoting utilization.

Federal Acquisition Regulation (FAR)

Finalized in 1983. Codified at 48 CFR. Restates Bayh-Dole at 52.227-11, with five alternative clauses; a patent rights clause for large companies that differs in significant ways from 37 CFR 401.14 is at DFARS 252.227-7038. The FAR displaced the Federal Procurement Regulation (1975), which codified the Nixon version of the Kennedy patent policy. Restated with agency-specific customizations at various places in the CFR.

Stanford v Roche

In 2011 the US Supreme Court ruled in Stanford v Roche that Bayh-Dole does not vest invention title with contractors or give them any special right to take title, rejecting claims made ubiquitously by university patent administrators and related lobbying organizations, including AUTM.

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