[Federal Register Volume 60, Number 156 (Monday, August 14, 1995)]
[Rules and Regulations]
[Pages 41811-41812]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-20023]



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DEPARTMENT OF COMMERCE

Assistant Secretary for Technology Policy

37 CFR Part 401

[Docket No. 950615153-5153-01]
RIN 0692-AA14


Rights to Inventions Made by Nonprofit Organizations and Small 
Business Firms Under Government Grants, Contracts, and Cooperative 
Agreements; Electronic Filing of Written Submissions; Definition of the 
Term ``Patent Application'' or ``Application for Patent''

AGENCY: Assistant Secretary for Technology Policy, Commerce.

ACTION: Interim rule with request for comments.

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SUMMARY: This interim rule (1) authorizes certain government 
contractors and grantees to report electronically to the funding 
agencies their inventions and respective election of title on agency-
approved systems; (2) recognizes that the law now authorizes the filing 
of provisional U.S. patent applications by defining the term ``patent 
application'' or ``application for patent'' to include provisional 
patent applications; and (3) updates the name and address of the office 
to where all submissions and inquiries should be sent.
    Federal agencies each year enter into many research funding 
agreements with nonprofit organizations and small business firms, which 
require them to submit written reports and other information to the 
agencies relating to inventions made under the funding agreements. The 
reports and information must then be manually processed by the 
agencies. A number of these contractors, grantees and agencies have 
established computer systems for keeping track of their inventions. It 
is desirable to utilize these systems to facilitate the invention 
reporting requirements by permitting contractors and grantees to submit 
reports and information to the agencies in electronic form. This would 
result in a reduction of time, paper and postage for the contractors 
and grantees and allow the agencies to more easily keep track of the 
inventions.

DATES: Interim rule effective August 14, 1995; comments must be 
received on or before September 13, 1995.

ADDRESSES: Comments may be mailed to Mr. Jon Paugh, Director, 
Technology Competitiveness Staff, Office of Technology Policy, Room 
4418, Herbert C. Hoover Building, U.S. Department of Commerce, 
Washington, DC 20230.

FOR FURTHER INFORMATION CONTACT: Mr. Jon Paugh at telephone: (202) 482-
2100.

SUPPLEMENTARY INFORMATION: Under the authority of 35 U.S.C. 206 and the 
delegation by the Secretary of Commerce in sec. 3(g) of DOO 10-18, the 
Assistant Secretary of Commerce for Technology Policy may issue 
revisions to 37 CFR Part 401.
    Under the rule now in effect, contractors and grantees must report 
in writing to the funding agencies their inventions and respective 
election of title. They may also be required to indicate if an 
invention was not made. The reports are then manually placed by the 
agencies in their respective contract or grant files, a very burdensome 
and time consuming task.
    Therefore, in order to facilitate reporting by contractors and 
grantees, new Secs. 401.16 (a) and (b) are being added to 37 CFR Part 
401 to authorize certain government contractors and grantees to report 
electronically to the funding agencies their inventions and respective 
election of title on agency-approved electronic or optical-electronic 
systems. These changes will help the agencies to maintain an up-to-date 
record of government-funded inventions which can be used to 
automatically track the status of these inventions so that rights in 
valuable inventions are not inadvertently lost.
    New Sec. 401.16(c) is being added to authorize a government 
contractor and grantee to electronically submit the close-out report in 
Sec. 401.5(f)(1) and the information identified in Secs. 401.5(f) (2) 
and (3), which at the present time, although not required, are usually 
submitted in writing to the agencies.
    This rule change does not require contractors and grantees to 
electronically report their inventions to the Federal agencies and some 
may wish to continue to communicate in writing. However, since a number 
of contractors and grantees have established computer systems to track 
their own inventions, it is expected that they would be interested in 
reporting their inventions electronically to the agencies. For this 
purpose, an electronic system named ``EDISON'' is being developed by 
the Division of Extramural Invention Reporting of the National 
Institutes of Health which will allow various contractors and grantees 
to submit certain information on their inventions by computer to the 
agencies. For information on EDISON, Sue Ohata, Acting Director, 
Division of Extramural Invention Reporting, NIH may be contacted at 
(301) 402-0850, by fax (301) 480-8443 or by e-mail at 
[email protected].
    New paragraphs (k) and (l) are being added to Sec. 401.2 in order 
to define the terms ``electronically filed'' and ``electronic or 
optical-electronic system'' which are used in the new Sec. 401.16.
    Section 401.2(j) is being amended to define the term ``Secretary'' 
as the Assistant Secretary of Commerce for Technology Policy to conform 
with the authority citation for 37 CFR Part 401.
    Public Law 103-465 amended 35 U.S.C. 111 to provide for the filing 
of provisional applications on or after June 8, 1995. To reflect this 
change in the law, the Patent and Trademark Office (PTO) amended 37 CFR 
Parts 1 and 3 to cover these provisional applications as indicated in 
the Federal Register, 60 FR 20195, April 25, 1995. The changes to 35 
U.S.C. 111 and 37 CFR Parts 1 and 3 also affected 37 CFR Part 401. 
Accordingly, new paragraph (m) is being added to Sec. 401.2 to 
recognize these changes by defining the term ``patent application'' or 
``application for patent'' to include a provisional or nonprovisional 
U.S. national application for patent as defined in 37 CFR 1.9 (a)(2) 
and (a)(3), respectively, or an application for patent in a foreign 
country or in an international patent office.
    New paragraph (n) is being added to Sec. 401.2 to define the term 
``initial patent application'' as a nonprovisional U.S. national 
application for patent as defined in 37 CFR 1.9(a)(3) to make it clear 
that the requirements stated in paragraph (c) of the standard clause at 
Sec. 401.14(a) and in paragraph (c) of Sec. 401.13 are not being 
changed. These paragraphs are based on 35 U.S.C. Secs. 202(c) and 205, 
respectively, which refer to a U.S. national patent application filed 
under 35 U.S.C. 111 before it was amended by the Uruguay Round 
Agreements Act (Public Law 103-465). 

[[Page 41812]]

    Section 401.5(f)(2) is being amended to refer to patent application 
number rather than serial number by replacing the term ``serial'' with 
``patent application'' in order to conform to the change made by the 
PTO to the title and paragraph (a) of 37 CFR 1.53 as indicated in the 
Federal Register, 60 FR 20195, April 25, 1995.
    Section 401.13(c)(2) has been editorially amended to refer to a 
patent application rather than just an application.
    Finally, current Sec. 401.16 is being redesignated as Sec. 401.17 
and the address to where any submissions or inquiries should be sent is 
being updated since the Federal Technology Management Policy Division 
is now the Technology Competitiveness Staff which is part of the Office 
of Technology Policy (OTP)/Technology Administration.
    Pursuant to section 553 of the Administrative Procedure Act (5 
U.S.C. 553) (APA), the Assistant Secretary of Commerce for Technology 
Policy finds that there is good cause for waiving, as impracticable, 
unnecessary, and contrary to public interest, the prior notice of 
proposed rulemaking and the required 30-day delay in the effective date 
because: (1) This interim rule provides a contractor or grantee the 
opportunity to report electronically inventions and respective election 
of title to the funding agency using an agency-approved electronic 
system which may result in cost savings to the contractor, grantee and/
or the funding agency; (2) These changes are not considered 
substantive; and (3) This interim rule provides a 30-day comment period 
and any comments received will be considered prior to finalization of 
this interim rule.
    This interim rule has been determined to be significant for 
purposes of E.O. 12866 (58 FR 51735, October 4, 1993).
    This interim rule does not contain policies with Federalism 
implications sufficient to warrant preparation of a Federalism 
assessment under E.O. 12612.
    Because a notice of proposed rulemaking and an opportunity for 
public comment are not required to be given for this rule by section 
553 of the APA (5 U.S.C. 553) or by any other law, under sections 3(a) 
of the Regulatory Flexibility Act (5 U.S.C. 603(a) and 604(a)) no 
initial or final Regulatory Flexibility Analysis has to be or will be 
prepared.
    This interim rule involves a collection of information which has 
approval under the Paperwork Reduction Act. The control number is 9000-
0095.

List of Subjects in 37 CFR Part 401

    Inventions, Patents, Nonprofit organizations, Small business firms.

    For the reasons set forth in the preamble, 37 CFR part 401 is 
amended as follows:

PART 401--RIGHTS TO INVENTIONS MADE BY NONPROFIT ORGANIZATIONS AND 
SMALL BUSINESS FIRMS UNDER GOVERNMENT GRANTS, CONTRACTS, AND 
COOPERATIVE AGREEMENTS

    1. The authority citation for 37 CFR part 401 continues to read as 
follows:

    Authority: 35 U.S.C. 206 and the delegation of authority by the 
Secretary of Commerce to the Assistant Secretary of Commerce for 
Technology Policy at sec. 3(g) of DOO 10-18.

    2. Section 401.2 is amended by revising paragraph (j) to read as 
follows:


Sec. 401.2  Definitions.

* * * * *
    (j) The term ``Secretary'' means the Assistant Secretary of 
Commerce for Technology Policy.
    3. New paragraphs (k), (l), (m) and (n) are added to Sec. 401.2 to 
read as follows:


Sec. 401.2  Definitions.

* * * * *
    (k) The term electronically filed means any submission of 
information transmitted by an electronic or optical-electronic system.
    (l) The term electronic or optical-electronic system means a 
software-based system approved by the agency for the transmission of 
information.
    (m) The term patent application or ``application for patent'' 
includes a provisional or nonprovisional U.S. national application for 
patent as defined in 37 CFR 1.9 (a)(2) and (a)(3), respectively, or an 
application for patent in a foreign country or in an international 
patent office.
    (n) The term initial patent application means a nonprovisional U.S. 
national application for patent as defined in 37 CFR 1.9(a)(3).
    4. Section 401.5 is amended by revising paragraph (f)(2) to read as 
follows:


Sec. 401.5  Modification and tailoring of clauses.

* * * * *
    (f) * * *
    (2) Provide, upon request, the filing date, patent application 
number and title; a copy of the patent application; and patent number 
and issue date for any subject invention in any country in which the 
contractor has applied for a patent.
* * * * *
    5. Section 401.13 is amended by revising paragraph (c)(2) to read 
as follows:


Sec. 401.13  Administration of patent rights clauses.

* * * * *
    (c) * * *
    (2) In accordance with 35 U.S.C. 205, agencies shall not disclose 
or release for a period of 18 months from the filing date of the patent 
application to third parties pursuant to requests under the Freedom of 
Information Act, or otherwise, copies of any document which the agency 
obtained under this clause which is part of an application for patent 
with the U.S. Patent and Trademark Office or any foreign patent office 
filed by the contractor (or its assignees, licensees, or employees) on 
a subject invention to which the contractor has elected to retain 
title. This prohibition does not extend to disclosure to other 
government agencies or contractors of government agencies under an 
obligation to maintain such information in confidence.
* * * * *
    6. Section Sec. 401.16 is redesignated as Sec. 401.17 and revised 
to read as follows:


Sec. 401.17  Submissions and inquiries.

    All submissions or inquiries should be directed to Director, 
Technology Competitiveness Staff, Office of Technology Policy, 
Technology Administration, telephone number 202-482-2100, Room H4418, 
U.S. Department of Commerce, Washington, D.C. 20230.
    7. A new Sec. 401.16 is added to read as follows:


Sec. 401.16  Electronic filing.

    Unless otherwise requested or directed by the agency,
    (a) the written report required in (c)(1) of the standard clause in 
Sec. 401.14(a) may be electronically filed;
    (b) the written election required in (c)(2) of the standard clause 
in Sec. 401.14(a) may be electronically filed; and
    (c) the close-out report in (f)(1) and the information identified 
in (f)(2) and (f)(3) of Sec. 401.5 may be electronically filed.

    Dated: August 7, 1995.
Graham Mitchell,
Assistant Secretary of Commerce for Technology Policy.
[FR Doc. 95-20023 Filed 8-11-95; 8:45 am]
BILLING CODE 3510-18-P