97-25120. Minor Amendments To Rule on Inventions and Patents Resulting From Grants, Cooperative Agreements, and Contracts

[Federal Register Volume 62, Number 185 (Wednesday, September 24, 1997)]
[Rules and Regulations]
[Pages 49938-49939]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 97-25120]


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NATIONAL SCIENCE FOUNDATION

45 CFR Part 650


Minor Amendments To Rule on Inventions and Patents Resulting From 
Grants, Cooperative Agreements, and Contracts

AGENCY: National Science Foundation.

ACTION: Final rule with request for comments.

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SUMMARY: This action amends the NSF Patents regulation to permit 
grantee to use an electronic reporting and management system for 
inventions made with NSF assistance.

DATES: This revision is effective September 24, 1997. Comments, 
however, are welcome and will be considered in making future revisions.

ADDRESSES: All comments should be addressed to: NSF Patent Assistant, 
Office of the General Counsel, National Science Foundation 4201 Wilson 
Boulevard, Arlington, VA 22230.

FOR FURTHER INFORMATION CONTACT: Teresa L. Hamm-Wooten, NSF Patent 
Assistant, on [phone] (voice), [phone] (facsimile), or 
[e-mail].

SUPPLEMENTARY INFORMATION: This amendment revises the current NSF 
patent regulation published as part 650 of title 45 of the Code of 
Federal Regulations to permit NSF grantees to use the Edison Invention 
Information Management System maintained by the National Institutes of 
Health to handle NSF-assisted inventions. The only change for grantees 
who do not choose to use Edison is that they will be required to submit 
to the NSF Patent Assistant a copy of the page of the United States 
patent application that contains the Federal support clause required by 
paragraph (f)(4) of the standard Patent Rights clause in section 
650.4(a) along with a confirmation of the Government license instead of 
being required to provide a copy of the entire patent when it issues. 
That change is being made (1) to conform the Foundation's reporting 
requirement to those of the National Institutes of Health and (2) 
because the availability of searchable on-line patent databases has 
eliminated the need for the Foundation to have paper copies of patents 
issued on NSF subject inventions.

Determinations

    I have determined, under the criteria set forth in Executive Order 
12866, that this rule is not a significant regulatory action requiring 
review by the Office of Information and Regulatory Affairs. I also 
certify, pursuant to the requirements of the Regulatory Flexibility 
Act, 5 U.S.C. Secs. 601-612, that none of the changes made by this rule 
will have a significant economic impact on any small entities. Finally, 
I have reviewed this rule in light of section 2 of Executive Order 
12778 and certify for the National Science Foundation that this rule 
meets the applicable standards provided in sections 2(a) and 2(b) of 
that order.

List of Subjects in 45 CFR Part 650

    Government procurement, Grant programs--science and technology, 
Inventions and patents, Nonprofit organizations, Small businesses.
Lawrence Rudolph,
General Counsel.

    Accordingly, Title 45 of the Code of Federal Regulations part 650 
is amended as follows:

PART 650--PATENTS

    1. The authority citation for Part 650 continues to read as 
follows:

    Authority: 35 U.S.C. 200-212; 42 U.S.C. 1870(e) and 1871; and 
the Presidential Memorandum entitled ``Government Patent Policy'', 
issued February 18, 1983.


Sec. 650.4  [Amended]

    2. The Patent Rights clause set forth in Sec. 650.4(a) is amended:
    A. By replacing ``APRIL, 1992'' in its heading with ``SEPTEMBER, 
1997'';
    B. By adding between the words ``Government'' and ``within'' the 
phrase ``and the page of a United States patent application that 
contains the Federal support clause'' in paragraph (f)(5); and
    C. By removing paragraph (f)(6).
    3. The following new Sec. 650.19 is added:


Sec. 650.19  Electronic invention handling.

    (a) Grantees are encouraged to use the Edison Invention Information 
Management System maintained by the National Institutes of Health to 
disclose NSF subject inventions. Detailed instructions for use of that 
system are provided at http://era.info.nih.gov/Edison/ and should be 
followed for NSF subject inventions except that:
    (1) All written communications required should be addressed to the 
Patent Assistant, Office of the General Counsel, National Science 
Foundation, 4201 Wilson Boulevard, Arlington, VA 22230.
    (2) NSF does not require either an Annual Utilization Report or a 
Final Invention Statement and Certification.

[[Page 49939]]

    (b) Questions on use of Edison may be sent to the NSF Patent 
Assistant at [e-mail].

[FR Doc. 97-25120 Filed 9-23-97; 8:45 am]
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