[Federal Register Volume 61, Number 114 (Wednesday, June 12, 1996)]
[Rules and Regulations]
[Pages 29657-29659]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-14844]



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DEPARTMENT OF VETERANS AFFAIRS

38 CFR Part 1

RIN 2900-AI03


Inventions by Employees of Department of Veterans Affairs

AGENCY: Department of Veterans Affairs.

ACTION: Final rule.

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SUMMARY: This document amends the regulations concerning inventions 
developed by employees of the Department of Veterans Affairs (VA). It 
adds the Federal Technology Transfer Act (FTTA) of the 1986 as an 
authority for these regulations. Also, it reflects changes in 
delegations of authority made by the Department of Commerce (DOC), the 
lead agency concerning patents and inventions. Further, it removes 
language in the VA regulations that is also set forth in DOC 
regulations. The DOC regulations are applicable to the Department 
without restatement in VA regulations. In addition, it makes changes to 
VA delegations of authority. Lastly, the amendments clarify procedures 
to be followed by VA employees in reporting inventions.

EFFECTIVE DATE: July 12, 1996.

FOR FURTHER INFORMATION CONTACT: Chuck Delobe, Deputy Assistant General 
Counsel (024B), Department of Veterans Affairs, 810 Vermont Ave., NW., 
Washington, DC 20420, (202) 273-6383.

SUPPLEMENTARY INFORMATION: Executive Order 10096, dated January 23, 
1950, as amended by Executive Order 10930, dated March 24, 1961, set 
forth the criteria Federal agencies are to utilize in making 
determinations of ownership rights to inventions developed by Federal 
employees. The E.O. also required that each Federal agency take all 
necessary steps, including the promulgation of regulations, to 
effectuate the order. The VA's regulations implementing the executive 
order are found at 38 CFR 1.650-666.
    DOC was given lead agency authority to implement the provisions of 
the E.O. DOC's regulations, applicable to all Federal agencies, set 
forth a uniform patent policy and are found at 37 CFR part 501. The 
amendments reflect more recent changes in the delegations of authority 
within DOC. It adds the Federal Technology Transfer Act (FTTA) of the 
1986 as an authority for these regulations. Also, it reflects changes 
in delegations of authority made by the Department of Commerce (DOC), 
the lead agency concerning patents and inventions. Further, it removes 
language in the VA regulations that is also set forth in DOC 
regulations. The DOC regulations are applicable to the Department 
without restatement in VA regulations. In addition, it makes changes to 
VA delegations of authority. Lastly, the amendments clarify procedures 
to be followed by VA employees in reporting inventions.
    This final rule consists of agency procedures and nonsubstantive 
changes and, therefore, is not subject to the notice-and-comment and 
effective date provisions of 5 U.S.C. 553.
    The Secretary hereby certifies that this final rule will not have a 
significant economic impact on a substantial number of small entities 
as they are defined in the Regulatory Flexibility Act, 5 U.S.C. 601-
612. This final rule would not have any impact on individuals or small 
entities. Therefore, pursuant to 5 U.S.C. 605(B), this final rule is 
exempt from the initial and final regulatory flexibility analysis 
requirements of sections 603 and 604.
    There is no Catalog of Federal Domestic Assistance number for the 
program affected by this final rule.

List of Subjects in 38 CFR Part 1

    Administrative practice and procedure, Archives and records, 
Cemeteries, Claims, Courts, Flags, Freedom of information, Government 
contracts, Government employees, Government property, Infants and 
children, Inventions and patents, Investigation, Parking, Penalties, 
Postal service, Privacy reporting and record keeping requirements, 
Seals and insignia security measures, Wages.

    Approved: May 5, 1996.
Jesse Brown,
Secretary of Veterans Affairs.

    For the reasons set out in the preamble, 38 CFR part 1 is amended 
as set forth below:

[[Page 29658]]

PART 1--GENERAL PROVISIONS

    1. The authority citation for part 1 sections 1.650-1.666 is 
revised to read as follows:

    Authority: sections 1.650 to 1.666 issued under sect. 1, 66 
Stat. 811, 72 Stat. 1114; 35 U.S.C. 266; 15 U.S.C. 3710a; 38 U.S.C. 
501; E.O. 10096, E.O. 10930, 15 FR 389; 3 CFR 1949-1953 Comp.

    2. Section 1.650 is amended by removing ``the regulations'' and 
adding, in its place, ``these regulations'', and by removing 
``concerning inventions by employees of the Department of Veterans 
Affairs.''

(Authority: 38 U.S.C. (501(a), unless otherwise noted.)

    3. In Sec. 1.651, paragraphs (b) and (c) are revised to read as 
follows:


Sec. 1.651  Definitions.

* * * * *
    (b) The term employee or Government employee means any officer or 
employee, civilian or military, of the Department of Veterans Affairs. 
Part-time, without compensation (WOC) employees and part-time 
consultants are included.
    (c) The term Secretary of Commerce means the Under Secretary of 
Commerce for Technology.
    4. Section 1.652 is revised to read as follows:


Sec. 1.652  Criteria for determining rights to employee inventions.

    (a) The criteria to be applied in determining the respective rights 
of the Government and of the employee-inventor in and to any invention 
subject to these provisions shall be in accordance with the Uniform 
Patent Policy regulations found at 37 CFR 501.6 and 501.7.
    (b) Ownership in and to inventions arising under Cooperative 
Research and Development Agreements (CRADAs) pursuant to 15 USC 3710a 
shall be governed by the provisions of the pertinent CRADA, as 
authorized by the Federal Technology Transfer Act.

(Authority: 15 U.S.C. 3710a; 37 CFR part 501)

    5. Section 1.653 is revised to read as follows:


Sec. 1.653  Delegation of authority.

    (a) The General Counsel or Deputy General Counsel is authorized to 
act for the Secretary of Veterans Affairs in matters concerning patents 
and inventions, unless otherwise required by law. The determination of 
rights to an invention as between the Government and the employee where 
there is no cooperative research and development agreement shall be 
made by the General Counsel or Deputy General Counsel, in accordance 
with 37 CFR part 500.
    (b) The Directors of VA Medical Centers are delegated the authority 
to enter into cooperative research and development and license 
agreements under the Federal Technology Transfer Act of 1986, Pub. L. 
99-502.

(Authority: E.O. 12591; 15 U.S.C. 3710a)

    6. Section 1.654 is amended by removing ``given in paragraph 1(a) 
of Executive Order 10096 (15 FR 389, 3 CFR, 1949-1953 comp., p. 292) 
shall'' and adding, in its place, ``as set forth in 37 CFR 501.6 
should''; by removing ``inventor (employee)'' and adding, in its place, 
``employee inventor''; by removing ``Commissioner'' and adding, in its 
place, ``Secretary of Commerce''; and the section heading is revised to 
read as follows:


Sec. 1.654  Patenting of Inventions.

* * * * *
    7. Section 1.655 is revised to read as follows:


Sec. 1.655  Government license in invention of employee.

    If an invention is made by an employee and it is determined that 
the employee inventor is entitled to full ownership under 37 CFR 501.6, 
subject to a nonexclusive, irrevocable, royalty-free license in the 
Government with power to grant sublicenses for all Governmental 
purposes, it shall be the duty of the employee inventor to notify the 
Office of General Counsel of the status of the patent application, 
including the patent application number, so that the Department may 
protect the interests reserved to the Government under 37 CFR 501.6.
    8. Section 1.656 is revised to read as follows:


Sec. 1.656  Information to be submitted by inventor.

    (a) In the case of an invention or believed invention, the inventor 
will prepare a statement for submission to his or her immediate 
superior. It will be submitted regardless of where the ownership is 
believed to exist. The statement will consist of two parts:
    (1) One part of the statement will be a disclosure of the invention 
sufficient to permit the preparation of a patent applicant. It shall 
consist of a description, including where applicable, of the parts or 
components of the invention as shown on the drawings or blueprints, 
accompanied further by a description of the construction and operation 
of the invention. Photographs of the invention may be included. The 
inventor should state pertinent prior art known to him or her, and set 
forth in detail as clearly as possible the respects which his or her 
invention differs.
    (2) The other part of the statement will set forth the 
circumstances attending the making of the invention. It will include 
the full name and address of the inventor; the grade and title of his 
or her position; whether full time or part time; his or her duties at 
the time the invention was made; the facts pertinent to a determination 
whether the invention bore a direct relation to or was made in 
consequence of such official duties; whether there was, and if so, the 
terms of any special agreement or understanding with respect to use or 
manufacture of his or her invention; date of the invention; when and 
where it was conceived, constructed and tested; whether it was made 
entirely during working hours; whether, and to what extent there was a 
contribution by the Government of any of the following: Facilities; 
equipment; materials or supplies; funds; information; time or services 
of other Government employees on duty. When the invention is disclosed 
through publication, or in consultation with a manufacturer or 
attorney, simultaneous notification of the publication shall be given 
to the Office of General Counsel. A copy of the article will accompany 
the notification.
    (b) The inventor's immediate superior shall promptly review the 
statement of the employee inventor for completeness and accuracy, and 
shall certify that the employee's statement of circumstances attending 
the invention is or is not correct, giving reasons if pertinent. The 
file should then be submitted through the facility head (or 
administration heads or top staff officials in the case of Central 
Office employees) to the General Counsel together with any comments or 
recommendations.


Sec. 1.657  [Removed]

    9. Section 1.657 is removed.


Sec. 1.658  [Redesignated as Sec. 1.657]

    10. Section 1.658 is redesignated as
    11. Newly redesignated Sec. 1.657 is revised to read as follows:


Sec. 1.657  Determination of rights.

    The General Counsel will make a determination of rights subject to 
review where required by the Secretary of Commerce. The determination 
will be in accordance with 37 CFR 501.7.
    12. A new Sec. 1.658 is added to read as follows:


Sec. 1.658  Right of appeal.

    In accordance with 37 CFR 501.8, the employee has a right of appeal 
to the

[[Page 29659]]

Secretary of Commerce within 30 days of receipt of the Department's 
determination of ownership rights. The decision reached by the 
Secretary of Commerce will be communicated to the employee.
    13. Section 1.659 is amended by removing ``patentability'' and 
adding, in its place, ``a determination of ownership rights''; by 
removing ``may'' and adding, in its place, ``will''; by removing 
``patent consideration.'' and adding, in its place, ``an ownership 
determination where the employee idea or suggestion involves an 
invention. The employee shall be directed to submit a disclosure of 
invention in accordance with these regulations if such has not been 
previously submitted.''


Sec. 1.660  [Removed]

    14. Section 1.660 is removed.


Sec. 1.661  [Redesignated as Sec. 1.660]

    15. Section 1.661 is redesignated as Sec. 1.660.
    16. Newly redesignated Sec. 1.660 is revised to read as follows:


Sec. 1.660  Expeditious handling.

    No patent may be granted where the invention has been in public use 
or publicly disclosed for more than one year before filing of a patent 
application. Hence, submissions involving inventions should be made as 
promptly as possible in order to avoid delay which might jeopardize 
title to the invention or impair the rights of the inventor or the 
Government.


Sec. 1.662  [Redesignated as Sec. 1.661]

    17. Section 1.662 is redesignated as Sec. 1.661.


Sec. 1.663  [Redesignated as Sec. 1.662]

    18. Section 1.663 is redesignated as Sec. 1.662.


Sec. 1.666  [Redesignated as Sec. 1.663]

    19. Section 1.666 is redesignated as Sec. 1.663.
    20. Newly redesignated Sec. 1.663 is revised to read as follows:


Sec. 1.663  Licensing of Government-owned inventions.

    (a) The licensing of Government-owned inventions under VA control 
and custody will be conducted pursuant to the regulations on the 
licensing of Government-owned inventions contained in 37 CFR part 404, 
and 15 U.S.C. 3710a, as appropriate.
    (b) Any person whose application for a license in an invention 
under VA control and custody has been denied; whose license in such an 
invention has been modified or terminated, in whole or in part; or who 
timely filed a written objection in response to a proposal to grant an 
exclusive or partially exclusive license in an invention under VA 
control or custody, may, if damaged, appeal any decision or 
determination concerning the grant, denial, interpretation, 
modification, or termination of a license to the Secretary of Veterans 
Affairs. Such appeal shall be in writing; shall set forth with 
specificity the basis of the appeal; and shall be postmarked not later 
than 60 days after the action being appealed. Upon request of the 
appellant, such appeal may be considered by one to three persons 
appointed on a case-by-case basis by the Secretary of Veterans Affairs. 
Such a request will be granted only if it accompanies the written 
appeal. Appellant may appear and be represented by counsel before such 
a panel, which will sit in Washington, DC. If the appeal challenges a 
decision to grant an exclusive or partially exclusive license in an 
invention under VA control or custody, the licensee shall be furnished 
a copy of the appeal, shall be given the opportunity to respond in 
writing, may appear and be represented by counsel at any hearing 
requested by appellant, and may request a hearing if appellant has not, 
under the same terms and conditions, at which the appellant may also 
appear and be represented by counsel.

[FR Doc. 96-14844 Filed 6-11-96; 8:45 am]
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