[Congressional Bills 105th Congress]
[From the U.S. Government Publishing Office]
[H.R. 2544 Introduced in House (IH)]







105th CONGRESS
  1st Session
                                H. R. 2544

 To improve the ability of Federal agencies to license federally owned 
                              inventions.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                           September 25, 1997

 Mrs. Morella introduced the following bill; which was referred to the 
     Committee on Science, and in addition to the Committee on the 
 Judiciary, for a period to be subsequently determined by the Speaker, 
 in each case for consideration of such provisions as fall within the 
                jurisdiction of the committee concerned

_______________________________________________________________________

                                 A BILL


 
 To improve the ability of Federal agencies to license federally owned 
                              inventions.

    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 Transfer 
Commercialization Act of 1997''.

SEC. 2. 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, in a federally owned 
invention directly related to the scope of the work under the 
agreement,'' after ``under the agreement,''.

SEC. 3. 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 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;
            ``(3) the applicant makes a commitment to achieve practical 
        utilization of the invention within a reasonable time;
            ``(4) granting the license will not substantially lessen 
        competition or create or maintain a violation of the antitrust 
        laws; and
            ``(5) in the case of an invention covered by a foreign 
        patent application or patent, the interests of United States 
        industry in foreign commerce will be enhanced.
    ``(b) Manufacture in United States.--Licenses shall normally be 
granted under this section 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 
licenses under this section 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.--Licenses granted under this section 
shall contain such terms and conditions as the granting agency 
considers appropriate. Such terms and conditions--
            ``(1) shall include provisions--
                    ``(A) requiring periodic reporting on utilization 
                of the invention, and utilization efforts, by the 
                licensee; and
                    ``(B) empowering the Federal agency to terminate 
                the license in whole or in part if the agency 
                determines that--
                            ``(i) the licensee is not adequately 
                        executing its commitment to achieve practical 
                        utilization of the invention within a 
                        reasonable time;
                            ``(ii) the licensee is in breach of an 
                        agreement described in subsection (b); or
                            ``(iii) 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; and
            ``(2) may include a requirement that the licensee provide 
        the agency with a plan for development or marketing the 
        invention.
Information obtained pursuant to paragraph (1)(A) 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, United States Code.
    ``(e) Public Notice.--No license may be granted under this section 
unless public notice of the availability of a federally owned invention 
for licensing in an appropriate manner has been provided at least 30 
days before the license is granted. 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).''.
    (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.''.
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