Changes Proposed for Small Business, Non-profit Rights to Federally Funded Inventions

The Office of the Assistant Secretary for Technology Policy in the U.S. Department of Commerce has requested public comments on proposed changes to the rights to inventions made by non-profit organizations and small businesses through cooperative research and development agreements (CRADAs) between government-owned and -operated laboratory and a collaborating party. 

Under the Bayh-Dole Act (Pub. L. 96-517), nonprofit and small business contractors and grantees have the option to retain rights in their inventions in order to facilitate the commercialization of the results of federally funded research. These rights may be limited in exceptional circumstances. For instance, there is a need to limit the rights of certain contractors and grantees in their inventions when they are performing research for the Government under CRADA with a collaborating party as authorized by the Federal Technology Transfer Act (Pub. L. 99-502) (FTTA). If these rights are not limited, the collaborating party would not receive the rights to which it would normally be entitled under a CRADA, which includes the option for an exclusive license to any CRADA invention made by a Government employee. 

The use of contractors for support services in federally-owned and operated laboratories has proliferated in recent years. These contractors are not retained for their research expertise but rather for general support. The addition of these support contractors clouds or confuses the rights to inventions for CRADA participants. 

As a result, the Department of Commerce proposes to add language in the basic patent rights clause that encourages the contractor to negotiate with the collaborating party but in the absence of an agreement, provides certain minimum rights for the collaborating party in the contractor's inventions. The rights would be of the same scope and terms the collaborating party would receive in an invention made by a Government employee under the CRADA, which is typically an option for an exclusive license. Although negotiation should occur prior to the contractor starting work under the CRADA, it could be postponed with the permission of the Government until an invention is made by the contractor under the CRADA. The procedures for using the alternate clause are provided in new Sec. 401.3(a)(5). 

The full proposal can be found in the September 11 on-line edition of the Federal Register: http://www.access.gpo.gov/su_docs/fedreg/a000911c.html 

Comments should be mailed to Mr. Jon Paugh, Director, Technology Competitiveness, Office of Technology Policy, Room 4418, Herbert C. Hoover Building, U.S. Department of Commerce, Washington, DC 20230. FOR FURTHER INFORMATION CONTACT: Mr. John Raubitschek, Patent Counsel, at telephone: (202) 482-8010. 

Comments must be received on or before October 11, 2000.