[Federal Register Volume 61, Number 114 (Wednesday, June 12, 1996)]
[Rules and Regulations]
[Pages 29657-29659]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-14844]
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DEPARTMENT OF VETERANS AFFAIRS
38 CFR Part 1
RIN 2900-AI03
Inventions by Employees of Department of Veterans Affairs
AGENCY: Department of Veterans Affairs.
ACTION: Final rule.
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SUMMARY: This document amends the regulations concerning inventions
developed by employees of the Department of Veterans Affairs (VA). It
adds the Federal Technology Transfer Act (FTTA) of the 1986 as an
authority for these regulations. Also, it reflects changes in
delegations of authority made by the Department of Commerce (DOC), the
lead agency concerning patents and inventions. Further, it removes
language in the VA regulations that is also set forth in DOC
regulations. The DOC regulations are applicable to the Department
without restatement in VA regulations. In addition, it makes changes to
VA delegations of authority. Lastly, the amendments clarify procedures
to be followed by VA employees in reporting inventions.
EFFECTIVE DATE: July 12, 1996.
FOR FURTHER INFORMATION CONTACT: Chuck Delobe, Deputy Assistant General
Counsel (024B), Department of Veterans Affairs, 810 Vermont Ave., NW.,
Washington, DC 20420, (202) 273-6383.
SUPPLEMENTARY INFORMATION: Executive Order 10096, dated January 23,
1950, as amended by Executive Order 10930, dated March 24, 1961, set
forth the criteria Federal agencies are to utilize in making
determinations of ownership rights to inventions developed by Federal
employees. The E.O. also required that each Federal agency take all
necessary steps, including the promulgation of regulations, to
effectuate the order. The VA's regulations implementing the executive
order are found at 38 CFR 1.650-666.
DOC was given lead agency authority to implement the provisions of
the E.O. DOC's regulations, applicable to all Federal agencies, set
forth a uniform patent policy and are found at 37 CFR part 501. The
amendments reflect more recent changes in the delegations of authority
within DOC. It adds the Federal Technology Transfer Act (FTTA) of the
1986 as an authority for these regulations. Also, it reflects changes
in delegations of authority made by the Department of Commerce (DOC),
the lead agency concerning patents and inventions. Further, it removes
language in the VA regulations that is also set forth in DOC
regulations. The DOC regulations are applicable to the Department
without restatement in VA regulations. In addition, it makes changes to
VA delegations of authority. Lastly, the amendments clarify procedures
to be followed by VA employees in reporting inventions.
This final rule consists of agency procedures and nonsubstantive
changes and, therefore, is not subject to the notice-and-comment and
effective date provisions of 5 U.S.C. 553.
The Secretary hereby certifies that this final rule will not have a
significant economic impact on a substantial number of small entities
as they are defined in the Regulatory Flexibility Act, 5 U.S.C. 601-
612. This final rule would not have any impact on individuals or small
entities. Therefore, pursuant to 5 U.S.C. 605(B), this final rule is
exempt from the initial and final regulatory flexibility analysis
requirements of sections 603 and 604.
There is no Catalog of Federal Domestic Assistance number for the
program affected by this final rule.
List of Subjects in 38 CFR Part 1
Administrative practice and procedure, Archives and records,
Cemeteries, Claims, Courts, Flags, Freedom of information, Government
contracts, Government employees, Government property, Infants and
children, Inventions and patents, Investigation, Parking, Penalties,
Postal service, Privacy reporting and record keeping requirements,
Seals and insignia security measures, Wages.
Approved: May 5, 1996.
Jesse Brown,
Secretary of Veterans Affairs.
For the reasons set out in the preamble, 38 CFR part 1 is amended
as set forth below:
[[Page 29658]]
PART 1--GENERAL PROVISIONS
1. The authority citation for part 1 sections 1.650-1.666 is
revised to read as follows:
Authority: sections 1.650 to 1.666 issued under sect. 1, 66
Stat. 811, 72 Stat. 1114; 35 U.S.C. 266; 15 U.S.C. 3710a; 38 U.S.C.
501; E.O. 10096, E.O. 10930, 15 FR 389; 3 CFR 1949-1953 Comp.
2. Section 1.650 is amended by removing ``the regulations'' and
adding, in its place, ``these regulations'', and by removing
``concerning inventions by employees of the Department of Veterans
Affairs.''
(Authority: 38 U.S.C. (501(a), unless otherwise noted.)
3. In Sec. 1.651, paragraphs (b) and (c) are revised to read as
follows:
Sec. 1.651 Definitions.
* * * * *
(b) The term employee or Government employee means any officer or
employee, civilian or military, of the Department of Veterans Affairs.
Part-time, without compensation (WOC) employees and part-time
consultants are included.
(c) The term Secretary of Commerce means the Under Secretary of
Commerce for Technology.
4. Section 1.652 is revised to read as follows:
Sec. 1.652 Criteria for determining rights to employee inventions.
(a) The criteria to be applied in determining the respective rights
of the Government and of the employee-inventor in and to any invention
subject to these provisions shall be in accordance with the Uniform
Patent Policy regulations found at 37 CFR 501.6 and 501.7.
(b) Ownership in and to inventions arising under Cooperative
Research and Development Agreements (CRADAs) pursuant to 15 USC 3710a
shall be governed by the provisions of the pertinent CRADA, as
authorized by the Federal Technology Transfer Act.
(Authority: 15 U.S.C. 3710a; 37 CFR part 501)
5. Section 1.653 is revised to read as follows:
Sec. 1.653 Delegation of authority.
(a) The General Counsel or Deputy General Counsel is authorized to
act for the Secretary of Veterans Affairs in matters concerning patents
and inventions, unless otherwise required by law. The determination of
rights to an invention as between the Government and the employee where
there is no cooperative research and development agreement shall be
made by the General Counsel or Deputy General Counsel, in accordance
with 37 CFR part 500.
(b) The Directors of VA Medical Centers are delegated the authority
to enter into cooperative research and development and license
agreements under the Federal Technology Transfer Act of 1986, Pub. L.
99-502.
(Authority: E.O. 12591; 15 U.S.C. 3710a)
6. Section 1.654 is amended by removing ``given in paragraph 1(a)
of Executive Order 10096 (15 FR 389, 3 CFR, 1949-1953 comp., p. 292)
shall'' and adding, in its place, ``as set forth in 37 CFR 501.6
should''; by removing ``inventor (employee)'' and adding, in its place,
``employee inventor''; by removing ``Commissioner'' and adding, in its
place, ``Secretary of Commerce''; and the section heading is revised to
read as follows:
Sec. 1.654 Patenting of Inventions.
* * * * *
7. Section 1.655 is revised to read as follows:
Sec. 1.655 Government license in invention of employee.
If an invention is made by an employee and it is determined that
the employee inventor is entitled to full ownership under 37 CFR 501.6,
subject to a nonexclusive, irrevocable, royalty-free license in the
Government with power to grant sublicenses for all Governmental
purposes, it shall be the duty of the employee inventor to notify the
Office of General Counsel of the status of the patent application,
including the patent application number, so that the Department may
protect the interests reserved to the Government under 37 CFR 501.6.
8. Section 1.656 is revised to read as follows:
Sec. 1.656 Information to be submitted by inventor.
(a) In the case of an invention or believed invention, the inventor
will prepare a statement for submission to his or her immediate
superior. It will be submitted regardless of where the ownership is
believed to exist. The statement will consist of two parts:
(1) One part of the statement will be a disclosure of the invention
sufficient to permit the preparation of a patent applicant. It shall
consist of a description, including where applicable, of the parts or
components of the invention as shown on the drawings or blueprints,
accompanied further by a description of the construction and operation
of the invention. Photographs of the invention may be included. The
inventor should state pertinent prior art known to him or her, and set
forth in detail as clearly as possible the respects which his or her
invention differs.
(2) The other part of the statement will set forth the
circumstances attending the making of the invention. It will include
the full name and address of the inventor; the grade and title of his
or her position; whether full time or part time; his or her duties at
the time the invention was made; the facts pertinent to a determination
whether the invention bore a direct relation to or was made in
consequence of such official duties; whether there was, and if so, the
terms of any special agreement or understanding with respect to use or
manufacture of his or her invention; date of the invention; when and
where it was conceived, constructed and tested; whether it was made
entirely during working hours; whether, and to what extent there was a
contribution by the Government of any of the following: Facilities;
equipment; materials or supplies; funds; information; time or services
of other Government employees on duty. When the invention is disclosed
through publication, or in consultation with a manufacturer or
attorney, simultaneous notification of the publication shall be given
to the Office of General Counsel. A copy of the article will accompany
the notification.
(b) The inventor's immediate superior shall promptly review the
statement of the employee inventor for completeness and accuracy, and
shall certify that the employee's statement of circumstances attending
the invention is or is not correct, giving reasons if pertinent. The
file should then be submitted through the facility head (or
administration heads or top staff officials in the case of Central
Office employees) to the General Counsel together with any comments or
recommendations.
Sec. 1.657 [Removed]
9. Section 1.657 is removed.
Sec. 1.658 [Redesignated as Sec. 1.657]
10. Section 1.658 is redesignated as
11. Newly redesignated Sec. 1.657 is revised to read as follows:
Sec. 1.657 Determination of rights.
The General Counsel will make a determination of rights subject to
review where required by the Secretary of Commerce. The determination
will be in accordance with 37 CFR 501.7.
12. A new Sec. 1.658 is added to read as follows:
Sec. 1.658 Right of appeal.
In accordance with 37 CFR 501.8, the employee has a right of appeal
to the
[[Page 29659]]
Secretary of Commerce within 30 days of receipt of the Department's
determination of ownership rights. The decision reached by the
Secretary of Commerce will be communicated to the employee.
13. Section 1.659 is amended by removing ``patentability'' and
adding, in its place, ``a determination of ownership rights''; by
removing ``may'' and adding, in its place, ``will''; by removing
``patent consideration.'' and adding, in its place, ``an ownership
determination where the employee idea or suggestion involves an
invention. The employee shall be directed to submit a disclosure of
invention in accordance with these regulations if such has not been
previously submitted.''
Sec. 1.660 [Removed]
14. Section 1.660 is removed.
Sec. 1.661 [Redesignated as Sec. 1.660]
15. Section 1.661 is redesignated as Sec. 1.660.
16. Newly redesignated Sec. 1.660 is revised to read as follows:
Sec. 1.660 Expeditious handling.
No patent may be granted where the invention has been in public use
or publicly disclosed for more than one year before filing of a patent
application. Hence, submissions involving inventions should be made as
promptly as possible in order to avoid delay which might jeopardize
title to the invention or impair the rights of the inventor or the
Government.
Sec. 1.662 [Redesignated as Sec. 1.661]
17. Section 1.662 is redesignated as Sec. 1.661.
Sec. 1.663 [Redesignated as Sec. 1.662]
18. Section 1.663 is redesignated as Sec. 1.662.
Sec. 1.666 [Redesignated as Sec. 1.663]
19. Section 1.666 is redesignated as Sec. 1.663.
20. Newly redesignated Sec. 1.663 is revised to read as follows:
Sec. 1.663 Licensing of Government-owned inventions.
(a) The licensing of Government-owned inventions under VA control
and custody will be conducted pursuant to the regulations on the
licensing of Government-owned inventions contained in 37 CFR part 404,
and 15 U.S.C. 3710a, as appropriate.
(b) Any person whose application for a license in an invention
under VA control and custody has been denied; whose license in such an
invention has been modified or terminated, in whole or in part; or who
timely filed a written objection in response to a proposal to grant an
exclusive or partially exclusive license in an invention under VA
control or custody, may, if damaged, appeal any decision or
determination concerning the grant, denial, interpretation,
modification, or termination of a license to the Secretary of Veterans
Affairs. Such appeal shall be in writing; shall set forth with
specificity the basis of the appeal; and shall be postmarked not later
than 60 days after the action being appealed. Upon request of the
appellant, such appeal may be considered by one to three persons
appointed on a case-by-case basis by the Secretary of Veterans Affairs.
Such a request will be granted only if it accompanies the written
appeal. Appellant may appear and be represented by counsel before such
a panel, which will sit in Washington, DC. If the appeal challenges a
decision to grant an exclusive or partially exclusive license in an
invention under VA control or custody, the licensee shall be furnished
a copy of the appeal, shall be given the opportunity to respond in
writing, may appear and be represented by counsel at any hearing
requested by appellant, and may request a hearing if appellant has not,
under the same terms and conditions, at which the appellant may also
appear and be represented by counsel.
[FR Doc. 96-14844 Filed 6-11-96; 8:45 am]
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