[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[S. 1537 Introduced in Senate (IS)]

103d CONGRESS
  1st Session
                                S. 1537

    To amend the Stevenson-Wydler Technology Innovation Act of 1980.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

            October 7 (legislative day, September 27), 1993

    Mr. Rockefeller (for himself and Mr. DeConcini) introduced the 
 following bill; which was read twice and referred to the Committee on 
                 Commerce, Science, and Transportation

_______________________________________________________________________

                                 A BILL


 
    To amend the Stevenson-Wydler Technology Innovation Act of 1980.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Technology Commercialization Act of 
1993''.

SEC. 2. FINDINGS.

    The Congress finds and declares the following:
            (1) The commercialization of technology and industrial 
        innovation are central to the economic, environmental, and 
        social well-being of citizens of the United States.
            (2) The Government can help United States business to speed 
        the development of new products and processes by entering into 
        Cooperative Research and Development Agreements which make 
        available the assistance of the Federal laboratories to the 
        private sector, but the commercialization of technology and 
        industrial innovation in the United States depends largely upon 
        actions by business.
            (3) Government action to claim a right of ownership to any 
        invention or other intellectual property developed under a 
        Cooperative Research and Development Agreement can inhibit the 
        establishment of such agreements with business and can prevent 
        the commercialization of technology and industrial innovation 
        by business.
            (4) The commercialization of technology and industrial 
        innovation in the United States will be enhanced if the 
        ownership of any invention or other intellectual property 
        developed under a Cooperative Research and Development 
        Agreement belongs to a company or companies incorporated in the 
        United States.

SEC. 3. TITLE TO INTELLECTUAL PROPERTY ARISING FROM COOPERATIVE 
              RESEARCH AND DEVELOPMENT AGREEMENTS.

    Section 12 of the Stevenson-Wydler Technology Innovation Act of 
1980 (15 U.S.C. 3710a) is amended as follows:
            (1) In the text of subsection (b) immediately preceding 
        paragraph (1), strike ``Government-operated Federal laboratory, 
        and to the extent provided in an agency-approved joint work 
        statement, a Government-owned contractor-operated laboratory, 
        may'' and insert ``Federal laboratory shall ensure that title 
        to any intellectual property arising from the agreement, except 
        intellectual property developed in whole by a laboratory 
        employee, is assigned to the collaborating party or parties to 
        the agreement in exchange for reasonable compensation to the 
        laboratory, and may''.
            (2) In subsection (b)(2), strike ``or in part''.
            (3) Amend subsection (b)(3) to read as follows:
            ``(3) retain a nonexclusive, nontransferable, irrevocable, 
        paid-up license from the collaborating party or parties for any 
        intellectual property arising from the agreement, and have such 
        license practiced throughout the world by or on behalf of the 
        Government, but shall not, in the exercise of such license, 
        publicly disclose proprietary information related to the 
        license;''.
            (4) Amend subsection (b)(4) to read as follows:
            ``(4) retain the right, in accordance with procedures 
        provided in regulations promulgated under this section, to 
        require a collaborating party to grant to a responsible 
        applicant or applicants a nonexclusive, partially exclusive, or 
        exclusive license to use the subject intellectual property in 
        any field of use, on terms that are reasonable under the 
        circumstances, or if the collaborating party fails to grant 
        such a license, to grant the license itself if the laboratory 
        finds that--
                    ``(A) the collaborating party has not taken, and is 
                not expected to take within a reasonable time, 
                effective steps to achieve practical application of the 
                subject intellectual property in the field of use;
                    ``(B) such action is necessary to meet health or 
                safety needs that are not reasonably satisfied by the 
                collaborating party;
                    ``(C) such action is necessary to meet requirements 
                for public use specified by Federal regulations and 
                such requirements are not reasonably satisfied by the 
                collaborating party; or
                    ``(D) the collaborating party has not entered into 
                or is in breach of an agreement made pursuant to 
                subsection (c)(4)(B).''.
            (5) In subsection (d)(2), strike ``and'' at the end;
            (6) In subsection (d)(3), strike the period at the end and 
        insert ``; and''.
            (7) At the end of subsection (d), insert the following new 
        paragraph:
            ``(4) the term `intellectual property rights' means--
                    ``(A) in the case of government-owned, government-
                operated Federal laboratories, patents; and
                    ``(B) in the case of government-owned, contractor-
                operated Federal laboratories, patents, copyrights, and 
                computer chip mask work registrations.''.

SEC. 4. DISTRIBUTION OF INCOME FROM INTELLECTUAL PROPERTY RECEIVED BY 
              FEDERAL LABORATORIES.

    Section 14 of the Stevenson-Wydler Technology Innovation Act of 
1980 (15 U.S.C. 3710c) is amended to read as follows:

``SEC. 14. DISTRIBUTION OF INCOME FROM INTELLECTUAL PROPERTY RECEIVED 
              BY FEDERAL AGENCIES OR LABORATORIES.

    ``(a) In General.--
            ``(1) Except as provided in paragraphs (2) and (4), any 
        income received by a Federal agency or laboratory from the 
        licensing or assignment of intellectual property under 
        agreements entered into by Federal laboratories under section 
        12, and intellectual property of Federal agencies or 
        laboratories licensed under section 207 of title 35, United 
        States Code, or under any other provision of law, shall be 
        retained by the agency or laboratory and shall be disposed of 
        as follows:
                    ``(A)(i) The head of the agency or laboratory or 
                his designee shall pay to the laboratory employee or 
                employees who have assigned their rights in the 
                intellectual property to the United States, to the 
                laboratory operator, or to a collaborating party or 
                parties to a research agreement an amount equal to the 
                sum of--
                            ``(I) the first $10,000 received by the 
                        agency or laboratory from the intellectual 
                        property; and
                            ``(II) 15 percent of any income received by 
                        the agency or laboratory from the intellectual 
                        property in excess of the sum of the amount 
                        paid pursuant to item (I) and the value of 
                        unreimbursed research and development resources 
                        provided by the laboratory under the terms of 
                        the agreement.
                    ``(ii) An agency or laboratory may provide 
                appropriate incentives from royalties to laboratory 
                employees who contribute substantially to the technical 
                development of licensed or assigned intellectual 
                property between the time that the intellectual 
                property rights are legally asserted and the time of 
                the licensing or assigning of the intellectual property 
                rights.
                    ``(iii) The agency or laboratory shall retain the 
                income received from intellectual property until the 
                agency or laboratory makes payments to laboratory 
                employees under clause (i) or (ii).
                    ``(B) The balance of the income shall be 
                transferred to the agency's laboratories, with the 
                majority share of the royalties or other income going 
                to the laboratory where the intellectual property 
                originated, and the income so transferred to any such 
                laboratory may be used or obligated by that laboratory 
                during the fiscal year in which it is received or 
                during the succeeding fiscal year--
                            ``(i) for payment of not more than 15 
                        percent of such income for expenses incidental 
                        to the administration and licensing of 
                        intellectual property by the agency or 
                        laboratory with respect to intellectual 
                        property which originated at that laboratory, 
                        including the fees or other costs for the 
                        services of other agencies, persons, or 
                        organizations for intellectual property 
                        management and licensing services;
                            ``(ii) to reward scientific, engineering, 
                        and technical employees of the laboratory, 
                        including developers of sensitive or classified 
                        technology, regardless of whether the 
                        technology has commercial applications;
                            ``(iii) to further scientific exchange 
                        among the laboratories of the agency; or
                            ``(iv) for education and training of 
                        employees consistent with the research and 
                        development mission and objectives of the 
                        agency or laboratory, and for other activities 
                        that increase the potential for transfer of the 
                        technology of the laboratories of the agency.
        All income retained by the agency or laboratory after payments 
        have been made pursuant to subparagraphs (A) and (B) that is 
        unobligated and unexpended at the end of the fiscal year 
        succeeding the fiscal year in which the income was received 
        shall be paid into the United States Treasury.
            ``(2) If, after payments to employees under paragraph (1), 
        the intellectual property income received by an agency and its 
        laboratories in any fiscal year exceeds 5 percent of the budget 
        of the laboratories of the agency for that year, 75 percent of 
        such excess shall be paid to the United States Treasury and the 
        remaining 25 percent may be used or obligated for the purposes 
        described in clauses (i) through (iv) of paragraph (1)(B) 
        during that fiscal year or the succeeding fiscal year. Any 
        income not so used or obligated shall be paid into the United 
        States Treasury.
            ``(3) Any payment made to an employee under this section 
        shall be in addition to the regular pay of the employee and to 
        any other awards made to the employee, and shall not affect the 
        entitlement of the employee to any regular pay, annuity, or 
        award to which the employee is otherwise entitled or for which 
        the employee is otherwise eligible, or limit the amount 
        thereof. Any payment made under this section to any employee 
        shall continue after the employee leaves the employment of the 
        laboratory or agency.
            ``(4) A Federal agency receiving income as a result of 
        intellectual property management services performed for another 
        Federal agency or laboratory under section 207 of title 35, 
        United States Code, may retain such income to the extent 
        required to offset the payment of income from intellectual 
        property under paragraph (1)(A)(i), and costs and expenses 
        incurred under paragraph (1)(B)(i), including the cost of 
        foreign protection of the intellectual property of the other 
        agency. All income remaining after payment of the income, 
        costs, and expenses described in the preceding sentence shall 
        be transferred to the agency for which the services were 
        performed, for distribution in accordance with clauses (i) 
        through (iv) of paragraph (1)(B).
    ``(b) Certain Assignments.--If the intellectual property from which 
the income is derived was assigned to the Federal agency--
            ``(1) by a contractor, grantee, or participant in a 
        cooperative agreement with the agency; or
            ``(2) by an employee of the agency who was not working in 
        the laboratory at the time the intellectual property was 
        originated;
the agency unit that was involved in such assignment shall be 
considered to be a laboratory for purposes of this section.
    ``(c) Reports.--
            ``(1) In making its annual submission to the Congress, each 
        Federal agency shall submit, to the appropriate authorization 
        and appropriations committee of both Houses of the Congress, a 
        summary of the amount of income received from intellectual 
        property and expenditures made (including employee awards) 
        under this section.
            ``(2) Not later than October 1, 1996, the Comptroller 
        General shall review the effectiveness of the various income-
        sharing programs established under this section and report to 
        the appropriate committees of the House of Representatives and 
        the Senate, in a timely manner, the Comptroller General's 
        findings, conclusions, and recommendations for improvements in 
        such programs.''.

SEC. 5. AMENDMENT TO BAYH-DOLE ACT.

    Section 210(e) of title 35, United States Code, is amended by 
inserting ``and the Technology Commercialization Act of 1993'' after 
``Federal Technology Transfer Act of 1986''.

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