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.
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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
Committee on Science
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A BILL
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.
Be it enacted by the Senate and House of Representatives 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 innovation 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 technology and
industrial innovation in the United States depends upon actions
by business.
(3) The commercialization of technology and industrial
innovation in the United States will be enhanced if companies,
in return for reasonable compensation to the Federal
Government, can more easily obtain exclusive licenses to
inventions which develop as a result of cooperative research
with scientists employed by Federal laboratories.
SEC. 3. USE OF FEDERAL TECHNOLOGY.
Subparagraph (B) of section 11(e)(7) of the Stevenson-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 DEVELOPMENT 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 reasonable
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 explicit conditions:
``(A) A nonexclusive, nontransferable, irrevocable, 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 Government 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 circumstances; or
``(ii) if the collaborating party fails to grant
such a license, to grant the license itself.
``(C) The Government may exercise its right retained under
subparagraphs (B) (ii) and (iii) only if the Government finds
that--
``(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 requirements
for public use specified by Federal regulations, and
such requirements are not reasonably 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 subsection (a)(1),
the laboratory shall ensure that a collaborating 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 invention
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 applicable agency
requirements or standards of conduct, permit an employee or
former employee of the laboratory to participate in an effort
to commercialize an invention made by the employee or former
employee 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 pursuant to subsection
(a)(1) shall have the right of enforcement under chapter 29 of title
35, United States Code.
``(5) A Government-owned, contractor-operated laboratory that
enters into a cooperative research and development agreement pursuant
to subsection (a)(1) may use or obligate royalties or other income
accruing to the laboratory under such agreement with respect to any
invention 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 missions and objectives of
the laboratory.''.
SEC. 5. DISTRIBUTION OF INCOME FROM INTELLECTUAL PROPERTY RECEIVED BY
FEDERAL LABORATORIES.
Section 14 of the Stevenson-Wydler Technology Innovation 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 agency whose
laboratory 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
appropriate incentives, from royalties, or other
payments, to employees of a laboratory who contribute
substantially to the technical development of licensed
or assigned inventions between 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 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 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 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 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 services; or
``(v) for scientific research and
development consistent with the research and
development 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 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 paragraph (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 appears
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 inventors'';
(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 inventors,''; 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 amended--
(1) by striking ``the right of ownership to an invention
under this Act'' and inserting in lieu thereof ``ownership of
or the right of ownership to an invention made by a Federal
employee''; and
(2) by inserting ``obtain or'' after ``the Government,
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 Technology Transfer Act of
1986,''.