§ 404.7 - Exclusive, co-exclusive, and partially exclusive licenses.

§ 404.7 Exclusive, co-exclusive, and partially exclusive licenses.

Cross Reference

Link to an amendment published at 88 FR 17739, Mar. 24, 2023.

(a)

(1)

Exclusive, co-exclusive or partially exclusive

domestic

licenses may be granted on Government owned inventions, only if

;

:

(

i

1) Notice of a prospective license

,

identifying the invention and the prospective licensee

,

has been published

in the Federal Register or other appropriate manner, providing opportunity for filing written objections within at least a 15-day period; (ii

and responses, if any, reviewed in accordance with 35 U.S.C. 209(e). The agency, in its discretion, may include other information as appropriate;

(2) After expiration of the

period in § 404.7(a)(1)(i)

public notice period and consideration of any written objections received

during the period

in accordance with 35 U.S.C. 209(e), the Federal agency has determined that

;

:

(

A

i) The public will be served by the granting of the license,

in view of

as indicated by the applicant's intentions, plans and ability to bring the invention to the point of practical application or otherwise promote the invention's utilization by the public

.

;

(

B) Exclusive, co-exclusive or partially exclusive licensing is a reasonable and necessary incentive to call forth the investment capital and expenditures needed to bring

ii) The proposed scope of exclusivity is not greater than reasonably necessary to provide the incentive for bringing the invention to practical application, as proposed by the applicant, or otherwise to promote the invention's utilization by the public; and

(

C) The proposed scope of exclusivity is not greater than reasonably necessary to provide the incentive for bringing

iii) Exclusive, co-exclusive or partially exclusive licensing is a reasonable and necessary incentive to call forth the investment capital and expenditures needed to bring the invention to practical application

, as proposed by the applicant,

or otherwise

to

promote the invention's utilization by the public;

(

iii

3) The Federal agency has

not

determined that the grant of such a license will not tend to substantially

to

lessen competition or create or maintain a violation of the Federal antitrust laws;

and

(

iv

4) The Federal agency has given first preference to any small business firms submitting plans that are determined by the agency to be within the capability of the firms and as having equal or greater likelihood as those from other applicants to bring the invention to practical application within a reasonable time

. (2

; and

(5) In the case of an invention covered by a foreign patent application or patent, the interests of the Federal Government or United States industry in foreign commerce will be enhanced.

(b) In addition to the provisions of § 404.5, the following terms and conditions apply to

domestic

exclusive, co-exclusive and partially exclusive licenses:

(

i

1) The license shall be subject to the irrevocable, royalty-free right of the Government of the United States to practice or have practiced the invention on behalf of the United States and on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States.

(

ii

2) The license shall reserve to the Federal agency the right to require the licensee to grant sublicenses to responsible applicants, on reasonable terms, when necessary to fulfill health or safety needs.

(

iii

3) The license shall be subject to any licenses in force at the time of the grant of the exclusive, co-exclusive or partially exclusive license.

(

b)

(1) Exclusive, co-exclusive or partially exclusive foreign licenses may be granted on a Government owned invention provided that;

(i) Notice of a prospective license, identifying the invention and the prospective licensee, has been published in the Federal Register or other appropriate manner, providing opportunity for filing written objections within at least a 15-day period and following consideration of such objections received during the period;

(ii) The agency has considered whether the interests of the Federal Government or United States industry in foreign commerce will be enhanced; and

(iii) The Federal agency has not determined that the grant of such a license will tend substantially to lessen competition or create or maintain a violation of the Federal antitrust laws.

(2) In addition to the provisions of § 404.5, the following terms and conditions apply to foreign exclusive, co-exclusive and partially exclusive licenses:

(i) The license shall be subject to the irrevocable, royalty-free right of the Government of the United States to practice and have practiced the invention on behalf of the United States and on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States.

(ii) The license shall be subject to any licenses in force at the time of the grant of the exclusive, co-exclusive or partially exclusive license.

(iii) The license

4) The license may grant the licensee the right to take any suitable and necessary actions to protect the licensed property, on behalf of the Federal Government.

(c) Federal agencies shall maintain a record of determinations to grant exclusive, co-exclusive or partially exclusive licenses.

[71 88 FR 1151317739, Mar. 8, 2006, as amended at 83 FR 15963, Apr. 13, 201824, 2023]