[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[H.R. 209 Referred in Senate (RFS)]
1st Session
H. R. 209
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
May 12, 1999
Received
September 29, 1999
Read twice and referred to the Committee on Commerce, Science, and
Transportation
_______________________________________________________________________
AN ACT
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 1999''.
SEC. 2. 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 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
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.''.
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'';
(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. REVIEW OF COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENT
PROCEDURES.
(a) Review.--Within 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 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 one 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 Federal agencies
and national laboratories, shall--
(1) determine the adequacy of existing procedures and
methods for interagency coordination and awareness with respect
to cooperative research and development agreements described in
subsection (a); and
(2) establish and distribute to appropriate Federal
agencies--
(A) specific criteria to indicate the necessity for
gathering and considering the views of other agencies
on joint work statements or cooperative research and
development agreements as described in subsection (a);
and
(B) additional procedures, if any, for carrying out
such gathering and considering of agency views with
respect to cooperative research and development
agreements described in subsection (a).
Procedures established under this subsection shall be designed to the
extent possible to use or modify existing procedures, to minimize
burdens on Federal agencies, to encourage industrial partnerships with
national laboratories, and to minimize delay in the approval or
disapproval of joint work statements and cooperative research and
development agreements.
(c) Limitation.--Nothing in this Act, nor any procedures
established under this section shall provide to the Office of Science
and Technology Policy, the National Science and Technology Council, or
any Federal agency the authority to disapprove a cooperative research
and development agreement or joint work statement, under section 12 of
the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C.
3710a), of another Federal agency.
SEC. 9. INCREASED FLEXIBILITY FOR FEDERAL LABORATORY PARTNERSHIP
INTERMEDIARIES.
Section 23 of the Stevenson-Wydler Technology Innovation Act of
1980 (15 U.S.C. 3715) is amended--
(1) in subsection (a)(1) by inserting ``, institutions of
higher education as defined in section 1201(a) of the Higher
Education Act of 1965 (20 U.S.C. 1141(a)), or educational
institutions within the meaning of section 2194 of title 10,
United States Code'' after ``small business firms''; and
(2) in subsection (c) by inserting ``, institutions of
higher education as defined in section 1201(a) of the Higher
Education Act of 1965 (20 U.S.C. 1141(a)), or educational
institutions within the meaning of section 2194 of title 10,
United States Code,'' after ``small business firms''.
SEC. 10. REPORTS ON UTILIZATION OF FEDERAL TECHNOLOGY.
(a) Agency Activities.--Section 11 of the Stevenson-Wydler
Technology Innovation Act of 1980 (15 U.S.C. 3710) is amended--
(1) by striking the last sentence of subsection (b);
(2) by inserting after subsection (e) the following:
``(f) Agency Reports on Utilization.--
``(1) In general.--Each Federal agency which operates or
directs one or more Federal laboratories or which conducts
activities under sections 207 and 209 of title 35, United
States Code, shall report annually to the Office of Management
and Budget, as part of the agency's annual budget submission,
on the activities performed by that agency and its Federal
laboratories under the provisions of this section and of
sections 207 and 209 of title 35, United States Code.
``(2) Contents.--The report shall include--
``(A) an explanation of the agency's technology
transfer program for the preceding fiscal year and the
agency's plans for conducting its technology transfer
function, including its plans for securing intellectual
property rights in laboratory innovations with
commercial promise and plans for managing its
intellectual property so as to advance the agency's
mission and benefit the competitiveness of United
States industry; and
``(B) information on technology transfer activities
for the preceding fiscal year, including--
``(i) the number of patent applications
filed;
``(ii) the number of patents received;
``(iii) the number of fully-executed
licenses which received royalty income in the
preceding fiscal year, categorized by whether
they are exclusive, partially-exclusive, or
non-exclusive, and the time elapsed from the
date on which the license was requested by the
licensee in writing to the date the license was
executed;
``(iv) the total earned royalty income
including such statistical information as the
total earned royalty income, of the top 1
percent, 5 percent, and 20 percent of the
licenses, the range of royalty income, and the
median, except where disclosure of such
information would reveal the amount of royalty
income associated with an individual license or
licensee;
``(v) what disposition was made of the
income described in clause (iv);
``(vi) the number of licenses terminated
for cause; and
``(vii) any other parameters or discussion
that the agency deems relevant or unique to its
practice of technology transfer.
``(3) Copy to secretary; attorney general; congress.--The
agency shall transmit a copy of the report to the Secretary of
Commerce and the Attorney General for inclusion in the annual
report to Congress and the President required by subsection
(g)(2).
``(4) Public availability.--Each Federal agency reporting
under this subsection is also strongly encouraged to make the
information contained in such report available to the public
through Internet sites or other electronic means.'';
(3) by striking subsection (g)(2) and inserting the
following:
``(2) Reports.--
``(A) Annual report required.--The Secretary, in
consultation with the Attorney General and the
Commissioner of Patents and Trademarks, shall submit
each fiscal year, beginning one year after enactment of
the Technology Transfer Commercialization Act of 1999,
a summary report to the President, the United States
Trade Representative, and the Congress on the use by
Federal agencies and the Secretary of the technology
transfer authorities specified in this Act and in
sections 207 and 209 of title 35, United States Code.
``(B) Content.--The report shall--
``(i) draw upon the reports prepared by the
agencies under subsection (f);
``(ii) discuss technology transfer best
practices and effective approaches in the
licensing and transfer of technology in the
context of the agencies' missions; and
``(iii) discuss the progress made toward
development of additional useful measures of
the outcomes of technology transfer programs of
Federal agencies.
``(C) Public availability.--The Secretary shall
make the report available to the public through
Internet sites or other electronic means.''; and
(4) by inserting after subsection (g) the following:
``(h) Duplication of Reporting.--The reporting obligations imposed
by this section--
``(1) are not intended to impose requirements that
duplicate requirements imposed by the Government Performance
and Results Act of 1993 (31 U.S.C. 1101 note);
``(2) are to be implemented in coordination with the
implementation of that Act; and
``(3) are satisfied if an agency provided the information
concerning technology transfer activities described in this
section in its annual submission under the Government
Performance and Results Act of 1993 (31 U.S.C. 1101 note).''.
(b) Royalties.--Section 14(c) of the Stevenson-Wydler Technology
Innovation Act of 1980 (15 U.S.C. 3710c(c)) is amended to read as
follows:
``(c) Reports.--The Comptroller General shall transmit a report to
the appropriate committees of the Senate and House of Representatives
on the effectiveness of Federal technology transfer programs, including
findings, conclusions, and recommendations for improvements in such
programs. The report shall be integrated with, and
submitted at the same time as, the report required by section 202(b)(3)
of title 35, United States Code.''.
Passed the House of Representatives May 11, 1999.
Attest:
JEFF TRANDAHL,
Clerk.