§20135. Property rights in inventions

(a) Definitions.—In this section:

(1) Contract.—The term “contract” means any actual or proposed contract, agreement, understanding, or other arrangement, and includes any assignment, substitution of parties, or subcontract executed or entered into thereunder.

(2) Made.—The term “made”, when used in relation to any invention, means the conception or first actual reduction to practice of such invention.

(3) Person.—The term “person” means any individual, partnership, corporation, association, institution, or other entity.

(b) Exclusive Property of United States.—

(1) In general.—An invention shall be the exclusive property of the United States if it is made in the performance of any work under any contract of the Administration, and the Administrator determines that—

(A) the person who made the invention was employed or assigned to perform research, development, or exploration work and the invention is related to the work the person was employed or assigned to perform, or was within the scope of the person's employment duties, whether or not it was made during working hours, or with a contribution by the Government of the use of Government facilities, equipment, materials, allocated funds, information proprietary to the Government, or services of Government employees during working hours; or

(B) the person who made the invention was not employed or assigned to perform research, development, or exploration work, but the invention is nevertheless related to the contract, or to the work or duties the person was employed or assigned to perform, and was made during working hours, or with a contribution from the Government of the sort referred to in subparagraph (A).

(2) Patent to united states.—If an invention is the exclusive property of the United States under paragraph (1), and if such invention is patentable, a patent therefor shall be issued to the United States upon application made by the Administrator, unless the Administrator waives all or any part of the rights of the United States to such invention in conformity with the provisions of subsection (g).

(c) Contract Provisions for Furnishing Reports of Inventions, Discoveries, Improvements, or Innovations.—Each contract entered into by the Administrator with any party for the performance of any work shall contain effective provisions under which the party shall furnish promptly to the Administrator a written report containing full and complete technical information concerning any invention, discovery, improvement, or innovation which may be made in the performance of any such work.

(d) Patent Application.—No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (hereafter in this section referred to as the “Director”) to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration. Copies of each such statement and the application to which it relates shall be transmitted forthwith by the Director to the Administrator.

(e) Issuance of Patent to Applicant.—Upon any application as to which any such statement has been transmitted to the Administrator, the Director may, if the invention is patentable, issue a patent to the applicant unless the Administrator, within 90 days after receipt of the application and statement, requests that the patent be issued to the Administrator on behalf of the United States. If, within such time, the Administrator files such a request with the Director, the Director shall transmit notice thereof to the applicant, and shall issue such patent to the Administrator unless the applicant within 30 days after receipt of the notice requests a hearing before the Board of Patent Appeals and Interferences on the question whether the Administrator is entitled under this section to receive the patent. The Board may hear and determine, in accordance with rules and procedures established for interference cases, the question so presented, and its determination shall be subject to appeal by the applicant or by the Administrator to the United States Court of Appeals for the Federal Circuit in accordance with procedures governing appeals from decisions of the Board of Patent Appeals and Interferences in other proceedings.

(f) Subsequent Transfer of Patent in Case of False Representations.—Whenever a patent has been issued to an applicant in conformity with subsection (e), and the Administrator thereafter has reason to believe that the statement filed by the applicant in connection with the patent contained a false representation of a material fact, the Administrator, within 5 years after the date of issuance of the patent, may file with the Director a request for the transfer to the Administrator of title to the patent on the records of the Director. Notice of any such request shall be transmitted by the Director to the owner of record of the patent, and title to the patent shall be so transferred to the Administrator unless, within 30 days after receipt of notice, the owner of record requests a hearing before the Board of Patent Appeals and Interferences on the question whether any such false representation was contained in the statement filed in connection with the patent. The question shall be heard and determined, and the determination shall be subject to review, in the manner prescribed by subsection (e) for questions arising thereunder. A request made by the Administrator under this subsection for the transfer of title to a patent, and prosecution for the violation of any criminal statute, shall not be barred by the failure of the Administrator to make a request under subsection (e) for the issuance of the patent to the Administrator, or by any notice previously given by the Administrator stating that the Administrator had no objection to the issuance of the patent to the applicant.

(g) Waiver of Rights to Inventions.—Under such regulations in conformity with this subsection as the Administrator shall prescribe, the Administrator may waive all or any part of the rights of the United States under this section with respect to any invention or class of inventions made or which may be made by any person or class of persons in the performance of any work required by any contract of the Administration if the Administrator determines that the interests of the United States will be served thereby. Any such waiver may be made upon such terms and under such conditions as the Administrator shall determine to be required for the protection of the interests of the United States. Each such waiver made with respect to any invention shall be subject to the reservation by the Administrator of an irrevocable, nonexclusive, nontransferable, royalty-free license for the practice of such invention throughout the world by or on behalf of the United States or any foreign government pursuant to any treaty or agreement with the United States. Each proposal for any waiver under this subsection shall be referred to an Inventions and Contributions Board which shall be established by the Administrator within the Administration. Such Board shall accord to each interested party an opportunity for hearing, and shall transmit to the Administrator its findings of fact with respect to such proposal and its recommendations for action to be taken with respect thereto.

(h) Protection of Title.—The Administrator is authorized to take all suitable and necessary steps to protect any invention or discovery to which the Administrator has title, and to require contractors or persons who retain title to inventions or discoveries under this section to protect the inventions or discoveries to which the Administration has or may acquire a license of use.

(i) Administration as Defense Agency.—The Administration shall be considered a defense agency of the United States for the purpose of chapter 17 of title 35.

(j) Objects Intended for Launch, Launched, or Assembled in Outer Space.—Any object intended for launch, launched, or assembled in outer space shall be considered a vehicle for the purpose of section 272 of title 35.

(k) Use or Manufacture of Patented Inventions Incorporated in Space Vehicles Launched for Persons Other Than United States.—The use or manufacture of any patented invention incorporated in a space vehicle launched by the United States Government for a person other than the United States shall not be considered to be a use or manufacture by or for the United States within the meaning of section 1498(a) of title 28, unless the Administration gives an express authorization or consent for such use or manufacture.

(Pub. L. 111–314, §3, Dec. 18, 2010, 124 Stat. 3339; Pub. L. 112–29, §7(d)(2), Sept. 16, 2011, 125 Stat. 315.)

Amendment of Subsections (e) and (f)

Pub. L. 112–29, §7(d)(2), (e), Sept. 16, 2011, 125 Stat. 315, provided that, effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, with certain exceptions, this section is amended:

(1) in subsections (e) and (f), by striking “Board of Patent Appeals and Interferences” each place it appears and inserting “Patent Trial and Appeal Board”; and

(2) in subsection (e), by inserting “and derivation” after “established for interference”.

See 2011 Amendment notes below.

Amendments

2011—Subsec. (e). Pub. L. 112–29, §7(d)(2), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences” in two places and inserted “and derivation” after “established for interference”.

Subsec. (f). Pub. L. 112–29, §7(d)(2)(A), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”.

Effective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, with certain exceptions, see section 7(e) of Pub. L. 112–29, set out as a note under section 6 of Title 35, Patents.