[Federal Register Volume 60, Number 156 (Monday, August 14, 1995)]
[Rules and Regulations]
[Pages 41811-41812]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-20023]
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DEPARTMENT OF COMMERCE
Assistant Secretary for Technology Policy
37 CFR Part 401
[Docket No. 950615153-5153-01]
RIN 0692-AA14
Rights to Inventions Made by Nonprofit Organizations and Small
Business Firms Under Government Grants, Contracts, and Cooperative
Agreements; Electronic Filing of Written Submissions; Definition of the
Term ``Patent Application'' or ``Application for Patent''
AGENCY: Assistant Secretary for Technology Policy, Commerce.
ACTION: Interim rule with request for comments.
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SUMMARY: This interim rule (1) authorizes certain government
contractors and grantees to report electronically to the funding
agencies their inventions and respective election of title on agency-
approved systems; (2) recognizes that the law now authorizes the filing
of provisional U.S. patent applications by defining the term ``patent
application'' or ``application for patent'' to include provisional
patent applications; and (3) updates the name and address of the office
to where all submissions and inquiries should be sent.
Federal agencies each year enter into many research funding
agreements with nonprofit organizations and small business firms, which
require them to submit written reports and other information to the
agencies relating to inventions made under the funding agreements. The
reports and information must then be manually processed by the
agencies. A number of these contractors, grantees and agencies have
established computer systems for keeping track of their inventions. It
is desirable to utilize these systems to facilitate the invention
reporting requirements by permitting contractors and grantees to submit
reports and information to the agencies in electronic form. This would
result in a reduction of time, paper and postage for the contractors
and grantees and allow the agencies to more easily keep track of the
inventions.
DATES: Interim rule effective August 14, 1995; comments must be
received on or before September 13, 1995.
ADDRESSES: Comments may be mailed to Mr. Jon Paugh, Director,
Technology Competitiveness Staff, Office of Technology Policy, Room
4418, Herbert C. Hoover Building, U.S. Department of Commerce,
Washington, DC 20230.
FOR FURTHER INFORMATION CONTACT: Mr. Jon Paugh at telephone: (202) 482-
2100.
SUPPLEMENTARY INFORMATION: Under the authority of 35 U.S.C. 206 and the
delegation by the Secretary of Commerce in sec. 3(g) of DOO 10-18, the
Assistant Secretary of Commerce for Technology Policy may issue
revisions to 37 CFR Part 401.
Under the rule now in effect, contractors and grantees must report
in writing to the funding agencies their inventions and respective
election of title. They may also be required to indicate if an
invention was not made. The reports are then manually placed by the
agencies in their respective contract or grant files, a very burdensome
and time consuming task.
Therefore, in order to facilitate reporting by contractors and
grantees, new Secs. 401.16 (a) and (b) are being added to 37 CFR Part
401 to authorize certain government contractors and grantees to report
electronically to the funding agencies their inventions and respective
election of title on agency-approved electronic or optical-electronic
systems. These changes will help the agencies to maintain an up-to-date
record of government-funded inventions which can be used to
automatically track the status of these inventions so that rights in
valuable inventions are not inadvertently lost.
New Sec. 401.16(c) is being added to authorize a government
contractor and grantee to electronically submit the close-out report in
Sec. 401.5(f)(1) and the information identified in Secs. 401.5(f) (2)
and (3), which at the present time, although not required, are usually
submitted in writing to the agencies.
This rule change does not require contractors and grantees to
electronically report their inventions to the Federal agencies and some
may wish to continue to communicate in writing. However, since a number
of contractors and grantees have established computer systems to track
their own inventions, it is expected that they would be interested in
reporting their inventions electronically to the agencies. For this
purpose, an electronic system named ``EDISON'' is being developed by
the Division of Extramural Invention Reporting of the National
Institutes of Health which will allow various contractors and grantees
to submit certain information on their inventions by computer to the
agencies. For information on EDISON, Sue Ohata, Acting Director,
Division of Extramural Invention Reporting, NIH may be contacted at
(301) 402-0850, by fax (301) 480-8443 or by e-mail at
[email protected]
New paragraphs (k) and (l) are being added to Sec. 401.2 in order
to define the terms ``electronically filed'' and ``electronic or
optical-electronic system'' which are used in the new Sec. 401.16.
Section 401.2(j) is being amended to define the term ``Secretary''
as the Assistant Secretary of Commerce for Technology Policy to conform
with the authority citation for 37 CFR Part 401.
Public Law 103-465 amended 35 U.S.C. 111 to provide for the filing
of provisional applications on or after June 8, 1995. To reflect this
change in the law, the Patent and Trademark Office (PTO) amended 37 CFR
Parts 1 and 3 to cover these provisional applications as indicated in
the Federal Register, 60 FR 20195, April 25, 1995. The changes to 35
U.S.C. 111 and 37 CFR Parts 1 and 3 also affected 37 CFR Part 401.
Accordingly, new paragraph (m) is being added to Sec. 401.2 to
recognize these changes by defining the term ``patent application'' or
``application for patent'' to include a provisional or nonprovisional
U.S. national application for patent as defined in 37 CFR 1.9 (a)(2)
and (a)(3), respectively, or an application for patent in a foreign
country or in an international patent office.
New paragraph (n) is being added to Sec. 401.2 to define the term
``initial patent application'' as a nonprovisional U.S. national
application for patent as defined in 37 CFR 1.9(a)(3) to make it clear
that the requirements stated in paragraph (c) of the standard clause at
Sec. 401.14(a) and in paragraph (c) of Sec. 401.13 are not being
changed. These paragraphs are based on 35 U.S.C. Secs. 202(c) and 205,
respectively, which refer to a U.S. national patent application filed
under 35 U.S.C. 111 before it was amended by the Uruguay Round
Agreements Act (Public Law 103-465).
[[Page 41812]]
Section 401.5(f)(2) is being amended to refer to patent application
number rather than serial number by replacing the term ``serial'' with
``patent application'' in order to conform to the change made by the
PTO to the title and paragraph (a) of 37 CFR 1.53 as indicated in the
Federal Register, 60 FR 20195, April 25, 1995.
Section 401.13(c)(2) has been editorially amended to refer to a
patent application rather than just an application.
Finally, current Sec. 401.16 is being redesignated as Sec. 401.17
and the address to where any submissions or inquiries should be sent is
being updated since the Federal Technology Management Policy Division
is now the Technology Competitiveness Staff which is part of the Office
of Technology Policy (OTP)/Technology Administration.
Pursuant to section 553 of the Administrative Procedure Act (5
U.S.C. 553) (APA), the Assistant Secretary of Commerce for Technology
Policy finds that there is good cause for waiving, as impracticable,
unnecessary, and contrary to public interest, the prior notice of
proposed rulemaking and the required 30-day delay in the effective date
because: (1) This interim rule provides a contractor or grantee the
opportunity to report electronically inventions and respective election
of title to the funding agency using an agency-approved electronic
system which may result in cost savings to the contractor, grantee and/
or the funding agency; (2) These changes are not considered
substantive; and (3) This interim rule provides a 30-day comment period
and any comments received will be considered prior to finalization of
this interim rule.
This interim rule has been determined to be significant for
purposes of E.O. 12866 (58 FR 51735, October 4, 1993).
This interim rule does not contain policies with Federalism
implications sufficient to warrant preparation of a Federalism
assessment under E.O. 12612.
Because a notice of proposed rulemaking and an opportunity for
public comment are not required to be given for this rule by section
553 of the APA (5 U.S.C. 553) or by any other law, under sections 3(a)
of the Regulatory Flexibility Act (5 U.S.C. 603(a) and 604(a)) no
initial or final Regulatory Flexibility Analysis has to be or will be
prepared.
This interim rule involves a collection of information which has
approval under the Paperwork Reduction Act. The control number is 9000-
0095.
List of Subjects in 37 CFR Part 401
Inventions, Patents, Nonprofit organizations, Small business firms.
For the reasons set forth in the preamble, 37 CFR part 401 is
amended as follows:
PART 401--RIGHTS TO INVENTIONS MADE BY NONPROFIT ORGANIZATIONS AND
SMALL BUSINESS FIRMS UNDER GOVERNMENT GRANTS, CONTRACTS, AND
COOPERATIVE AGREEMENTS
1. The authority citation for 37 CFR part 401 continues to read as
follows:
Authority: 35 U.S.C. 206 and the delegation of authority by the
Secretary of Commerce to the Assistant Secretary of Commerce for
Technology Policy at sec. 3(g) of DOO 10-18.
2. Section 401.2 is amended by revising paragraph (j) to read as
follows:
Sec. 401.2 Definitions.
* * * * *
(j) The term ``Secretary'' means the Assistant Secretary of
Commerce for Technology Policy.
3. New paragraphs (k), (l), (m) and (n) are added to Sec. 401.2 to
read as follows:
Sec. 401.2 Definitions.
* * * * *
(k) The term electronically filed means any submission of
information transmitted by an electronic or optical-electronic system.
(l) The term electronic or optical-electronic system means a
software-based system approved by the agency for the transmission of
information.
(m) The term patent application or ``application for patent''
includes a provisional or nonprovisional U.S. national application for
patent as defined in 37 CFR 1.9 (a)(2) and (a)(3), respectively, or an
application for patent in a foreign country or in an international
patent office.
(n) The term initial patent application means a nonprovisional U.S.
national application for patent as defined in 37 CFR 1.9(a)(3).
4. Section 401.5 is amended by revising paragraph (f)(2) to read as
follows:
Sec. 401.5 Modification and tailoring of clauses.
* * * * *
(f) * * *
(2) Provide, upon request, the filing date, patent application
number and title; a copy of the patent application; and patent number
and issue date for any subject invention in any country in which the
contractor has applied for a patent.
* * * * *
5. Section 401.13 is amended by revising paragraph (c)(2) to read
as follows:
Sec. 401.13 Administration of patent rights clauses.
* * * * *
(c) * * *
(2) In accordance with 35 U.S.C. 205, agencies shall not disclose
or release for a period of 18 months from the filing date of the patent
application to third parties pursuant to requests under the Freedom of
Information Act, or otherwise, copies of any document which the agency
obtained under this clause which is part of an application for patent
with the U.S. Patent and Trademark Office or any foreign patent office
filed by the contractor (or its assignees, licensees, or employees) on
a subject invention to which the contractor has elected to retain
title. This prohibition does not extend to disclosure to other
government agencies or contractors of government agencies under an
obligation to maintain such information in confidence.
* * * * *
6. Section Sec. 401.16 is redesignated as Sec. 401.17 and revised
to read as follows:
Sec. 401.17 Submissions and inquiries.
All submissions or inquiries should be directed to Director,
Technology Competitiveness Staff, Office of Technology Policy,
Technology Administration, telephone number 202-482-2100, Room H4418,
U.S. Department of Commerce, Washington, D.C. 20230.
7. A new Sec. 401.16 is added to read as follows:
Sec. 401.16 Electronic filing.
Unless otherwise requested or directed by the agency,
(a) the written report required in (c)(1) of the standard clause in
Sec. 401.14(a) may be electronically filed;
(b) the written election required in (c)(2) of the standard clause
in Sec. 401.14(a) may be electronically filed; and
(c) the close-out report in (f)(1) and the information identified
in (f)(2) and (f)(3) of Sec. 401.5 may be electronically filed.
Dated: August 7, 1995.
Graham Mitchell,
Assistant Secretary of Commerce for Technology Policy.
[FR Doc. 95-20023 Filed 8-11-95; 8:45 am]
BILLING CODE 3510-18-P
