01-16137. Licensing of Government Owned Inventions

AGENCY:

Technology Administration, Commerce.

ACTION:

Final rule.

SUMMARY:

This final rule incorporates a recently enacted change to 35 U.S.C. 209 with respect to the granting of exclusive patent licenses by Federal agencies. Federal agencies are now authorized to provide the public no less than 15 days to file an objection to the proposed license. Under the present regulation in 37 CFR part 404, the notice period is 60 days although no specific time period was required by statute. This statutory change is being implemented to address the concern that the granting of exclusive licenses was being unnecessarily delayed by the 60-day notice period.

DATES:

This rule is effective June 29, 2001.

FOR FURTHER INFORMATION CONTACT:

Mr. John Raubitschek, Patent Counsel, at telephone: [phone].

SUPPLEMENTARY INFORMATION:

In section 4(e) of Public Law 106-404, the Technology Transfer Commercialization Act of 2000, signed by the President on November 1, 2000, agencies are now required to give the public notice of at least 15 days before granting an exclusive or partially exclusive license on a federally owned invention. This is reflected in revisions to 37 CFR 404.7(a)(1)(i) and (b)(1)(i). One of the reasons for the minimum notice was a concern that the granting of exclusive licenses was being unnecessarily delayed by the 60 day notice period prescribed by the current regulations. Although agencies may now issue shorter notices, they are expected to balance the need for promptness against the statutory purpose of ensuring that Government inventions are used to benefit the public.

Public Law 106-404 makes other changes to 35 U.S.C. 209 which will be separately addressed in a proposed rule.

In addition, the rule now cites 35 U.S.C. 208, instead of 35 U.S.C. 206, as the correct authority for the Department of Commerce over the patent licensing regulation. The rule also cites section 3(d)(3) of DOO 10-18, instead of section 3(g), for the specific delegation to the Assistant Secretary of Commerce for Technology Policy. Under the authority of 35 U.S.C. 208 and the delegation by the Secretary of Commerce in section 3(d)(3) of DOO 10-18, the Assistant Secretary of Commerce for Technology Policy may issue revisions to 37 CFR Part 404.

Classification

Administrative Procedure Act: Pursuant to 5 U.S.C. 553(b)(B), the Assistant Secretary of Commerce for Technology Policy finds good cause to waive the requirement to provide prior notice and an opportunity for public comment as being unnecessary. This regulation incorporates the language of the statue, verbatim. The Technology Administration is exercising no discretion for which public comment would serve a useful purpose and has no authority to change the statutory requirement.

Executive Order 12866

This rule has been determined not to be significant for purposes of Executive Order 12866 (58 FR 51735, October 4, 1993).

Executive Order 13132

This rule does not contain policies with Federalism implications as that term is defined in Executive Order 13132.

Regulatory Flexibility Act

Because a notice of proposed rulemaking and an opportunity for public comment are not required to be given for this rule by 5 U.S.C. 553, or by any other law, this rule not subject to the analytical requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.).

Paperwork Reduction Act

This rule does not impose any collection of information requirements under the Paperwork Reduction Act (44 U.S.C. 3501 et seq.). However, OMB approval was recently obtained for the application for a license and the utilization reports. The number is 0692-0006 an expires on June 30, 2003.

List of Subjects in 37 CFR Part 404

• Inventions
• Patents
• Licenses

For the reasons set forth in the preamble, 37 CFR Part 404 is amended as follows:

PART 404—LICENSING OF GOVERNMENT OWNED INVENTIONS

1. The authority citation for 37 CFR Part 404 is revised to read as follows:

Authority: 35 U.S.C. 208 and the delegation of authority by the Secretary of Commerce to the Assistant Secretary of Commerce for Technology Policy at sec. 3(d)(3) of DOO 10-18.

2. Section 404.7 is amended by revising paragraphs (a)1)(i) and (b)(1)(i)

§ 404.7

Exclusive and partially exclusive licenses.

* * * * *

(a)(1) * * *

(i) Notice of a prospective license, identifying the invention and the prospective licensee, has been published in the Federal Register, providing opportunity for written objections within at least a 15-day period;

* * * * *

(b)(1) * * *

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

* * * * *

Dated: June 21, 2001.

Bruce P. Mehlman,

Assistant Secretary of Commerce for Technology Policy.