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Pub.L. 106-405 To promote the development of the commercial space transportation ...
<DOC> [[Page 1741]] TECHNOLOGY TRANSFER COMMERCIALIZATION ACT OF 2000 [[Page 114 STAT. 1742]] Public Law 106-404 106th Congress An Act To improve the ability of Federal <<NOTE: Nov. 1, 2000 - [H.R. 209]>> agencies to license federally owned inventions. Be it enacted by the Senate and House of Representatives of the United States of America in <<NOTE: Technology Transfer Commercializa- tion Act of 2000.>> Congress assembled, SECTION 1. <<NOTE: 15 USC 3701 note.>> SHORT TITLE. This Act may be cited as the ``Technology Transfer Commercialization Act of 2000''. SEC. 2. <<NOTE: 15 USC 3701 note.>> FINDINGS. The Congress finds that-- (1) the importance of linking our unparalleled network of over 700 Federal laboratories and our Nation's universities with United States industry continues to hold great promise for our future economic prosperity; (2) the enactment of the Bayh-Dole Act in 1980 was a landmark change in United States technology policy, and its success provides a framework for removing bureaucratic barriers and for simplifying the granting of licenses for inventions that are now in the Federal Government's patent portfolio; (3) Congress has demonstrated a commitment over the past 2 decades to fostering technology transfer from our Federal laboratories and to promoting public/private sector partnerships to enhance our international competitiveness; (4) Federal technology transfer activities have strengthened the ability of United States industry to compete in the global marketplace; developed a new paradigm for greater collaboration among the scientific enterprises that conduct our Nation's research and development--government, industry, and universities; and improved the quality of life for the American people, from medicine to materials; (5) the technology transfer process must be made ``industry friendly'' for companies to be willing to invest the significant time and resources needed to develop new products, processes, and jobs using federally funded inventions; and (6) Federal technology licensing procedures should balance the public policy needs of adequately protecting the rights of the public, encouraging companies to develop existing government inventions, and making the entire system of licensing government technologies more consistent and simple. SEC. 3. COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENTS. Section 12(b)(1) of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a(b)(1)) is amended by inserting ``or, subject to section 209 of title 35, United States Code, may grant [[Page 114 STAT. 1743]] a license to an invention which is federally owned, for which a patent application was filed before the signing of the agreement, and directly within the scope of the work under the agreement,'' after ``under the agreement,''. SEC. 4. LICENSING FEDERALLY OWNED INVENTIONS. (a) Amendment.--Section 209 of title 35, United States Code, is amended to read as follows: ``Sec. 209. Licensing federally owned inventions ``(a) Authority.--A Federal agency may grant an exclusive or partially exclusive license on a federally owned invention under section 207(a)(2) only if-- ``(1) granting the license is a reasonable and necessary incentive to-- ``(A) call forth the investment capital and expenditures needed to bring the invention to practical application; or ``(B) otherwise promote the invention's utilization by the public; ``(2) the Federal agency finds that the public will be served by the granting of the license, as indicated by the applicant's intentions, plans, and ability to bring the invention to practical application or otherwise promote the invention's utilization by the public, and that the proposed scope of exclusivity is not greater than reasonably necessary to provide the incentive for bringing the invention to practical application, as proposed by the applicant, or otherwise to promote the invention's utilization by the public; ``(3) the applicant makes a commitment to achieve practical application of the invention within a reasonable time, which time may be extended by the agency upon the applicant's request and the applicant's demonstration that the refusal of such extension would be unreasonable; ``(4) granting the license will not tend to substantially lessen competition or create or maintain a violation of the Federal antitrust laws; and ``(5) in the case of an invention covered by a foreign patent application or patent, the interests of the Federal Government or United States industry in foreign commerce will be enhanced. ``(b) Manufacture in United States.--A Federal agency shall normally grant a license under section 207(a)(2) to use or sell any federally owned invention in the United States only to a licensee who agrees that any products embodying the invention or produced through the use of the invention will be manufactured substantially in the United States. ``(c) Small Business.--First preference for the granting of any exclusive or partially exclusive licenses under section 207(a)(2) shall be given to small business firms having equal or greater likelihood as other applicants to bring the invention to practical application within a reasonable time. ``(d) Terms and Conditions.--Any licenses granted under section 207(a)(2) shall contain such terms and conditions as the granting agency considers appropriate, and shall include provisions-- ``(1) retaining a nontransferrable, irrevocable, paid-up license for any Federal agency to practice the invention or [[Page 114 STAT. 1744]] have the invention practiced throughout the world by or on behalf of the Government of the United States; ``(2) requiring periodic reporting on utilization of the invention, and utilization efforts, by the licensee, but only to the extent necessary to enable the Federal agency to determine whether the terms of the license are being complied with, except that any such report shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5 of the United States Code; and ``(3) empowering the Federal agency to terminate the license in whole or in part if the agency determines that-- ``(A) the licensee is not executing its commitment to achieve practical application of the invention, including commitments contained in any plan submitted in support of its request for a license, and the licensee cannot otherwise demonstrate to the satisfaction of the Federal agency that it has taken, or can be expected to take within a reasonable time, effective steps to achieve practical application of the invention; ``(B) the licensee is in breach of an agreement described in subsection (b); ``(C) termination is necessary to meet requirements for public use specified by Federal regulations issued after the date of the license, and such requirements are not reasonably satisfied by the licensee; or ``(D) the licensee has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under the license agreement. ``(e) Public Notice.--No exclusive or partially exclusive license may be granted under section 207(a)(2) unless public notice of the intention to grant an exclusive or partially exclusive license on a federally owned invention has been provided in an appropriate manner at least 15 days before the license is granted, and the Federal agency has considered all comments received before the end of the comment period in response to that public notice. This subsection shall not apply to the licensing of inventions made under a cooperative research and development agreement entered into under section 12 of the Stevenson- Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a). ``(f ) Plan.--No Federal agency shall grant any license under a patent or patent application on a federally owned invention unless the person requesting the license has supplied the agency with a plan for development or marketing of the invention, except that any such plan shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5 of the United States Code.''. (b) Conforming Amendment.--The item relating to section 209 in the table of sections for chapter 18 of title 35, United States Code, is amended to read as follows: ``209. Licensing federally owned inventions.''. [[Page 114 STAT. 1745]] SEC. 5. MODIFICATION OF STATEMENT OF POLICY AND OBJECTIVES FOR CHAPTER 18 OF TITLE 35, UNITED STATES CODE. Section 200 of title 35, United States Code, is amended by striking ``enterprise;'' and inserting ``enterprise without unduly encumbering future research and discovery;''. SEC. 6. TECHNICAL AMENDMENTS TO BAYH-DOLE ACT. Chapter 18 of title 35, United States Code (popularly known as the ``Bayh-Dole Act''), is amended-- (1) by amending section 202(e) to read as follows: ``(e) In any case when a Federal employee is a coinventor of any invention made with a nonprofit organization, a small business firm, or a non-Federal inventor, the Federal agency employing such coinventor may, for the purpose of consolidating rights in the invention and if it finds that it would expedite the development of the invention-- ``(1) license or assign whatever rights it may acquire in the subject invention to the nonprofit organization, small business firm, or non-Federal inventor in accordance with the provisions of this chapter; or ``(2) acquire any rights in the subject invention from the nonprofit organization, small business firm, or non-Federal inventor, but only to the extent the party from whom the rights are acquired voluntarily enters into the transaction and no other transaction under this chapter is conditioned on such acquisition.''; and (2) in section 207(a)-- (A) by striking ``patent applications, patents, or other forms of protection obtained'' and inserting ``inventions'' in paragraph (2); and (B) by inserting ``, including acquiring rights for and administering royalties to the Federal Government in any invention, but only to the extent the party from whom the rights are acquired voluntarily enters into the transaction, to facilitate the licensing of a federally owned invention'' after ``or through contract'' in paragraph (3). SEC. 7. TECHNICAL AMENDMENTS TO THE STEVENSON-WYDLER TECHNOLOGY INNOVATION ACT OF 1980. The Stevenson-Wydler Technology Innovation Act of 1980 is amended-- (1) in section 4(4) (15 U.S.C. 3703(4)), by striking ``section 6 or section 8'' and inserting ``section 7 or 9''; (2) in section 4(6) (15 U.S.C. 3703(6)), by striking ``section 6 or section 8'' and inserting ``section 7 or 9''; (3) in section 5(c)(11) (15 U.S.C. 3704(c)(11)), by striking ``State of local governments'' and inserting ``State or local governments''; (4) in section 9 (15 U.S.C. 3707), by-- (A) striking ``section 6(a)'' and inserting ``section 7(a)''; (B) striking ``section 6(b)'' and inserting ``section 7(b)''; and (C) striking ``section 6(c)(3)'' and inserting ``section 7(c)(3)''; (5) in section 11(e)(1) (15 U.S.C. 3710(e)(1)), by striking ``in cooperation with Federal Laboratories'' and inserting ``in cooperation with Federal laboratories''; [[Page 114 STAT. 1746]] (6) in section 11(i) (15 U.S.C. 3710(i)), by striking ``a gift under the section'' and inserting ``a gift under this section''; (7) in section 14 (15 U.S.C. 3710c)-- (A) in subsection (a)(1)(A)(i), by inserting ``, other than payments of patent costs as delineated by a license or assignment agreement,'' after ``or other payments''; (B) in subsection (a)(1)(A)(i), by inserting ``, if the inventor's or coinventor's rights are assigned to the United States'' after ``inventor or coinventors''; (C) in subsection (a)(1)(B), by striking ``succeeding fiscal year'' and inserting ``2 succeeding fiscal years''; (D) in subsection (a)(2), by striking ``Government- operated laboratories of the''; and (E) in subsection (b)(2), by striking ``inventon'' and inserting ``invention''; and (8) in section 22 (15 U.S.C. 3714), by striking ``sections 11, 12, and 13'' and inserting ``sections 12, 13, and 14''. SEC. 8. <<NOTE: 15 USC 3701a note.>> REVIEW OF COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENT PROCEDURES. (a) Review.--Within <<NOTE: Deadline.>> 90 days after the date of the enactment of this Act, each Federal agency with a federally funded laboratory that has in effect on that date of the enactment one or more cooperative research and development agreements under section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a) shall report to the Committee on National Security of the National Science and Technology Council and the Congress on the general policies and procedures used by that agency to gather and consider the views of other agencies on-- (1) joint work statements under section 12(c)(5)(C) or (D) of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a(c)(5)(C) or (D)); or (2) in the case of laboratories described in section 12(d)(2)(A) of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a(d)(2)(A)), cooperative research and development agreements under such section 12, with respect to major proposed cooperative research and development agreements that involve critical national security technology or may have a significant impact on domestic or international competitiveness. (b) Procedures.--Within 1 <<NOTE: Deadline.>> year after the date of the enactment of this Act, the Committee on National Security of the National Science and Technology Council, in conjunction with relevant
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