35 U.S.C. § 202
REFERENCES IN TEXTThis Act, referred to in subsec. (d), probably means Pub. L. 96-517, Dec. 12, 1980, 94 Stat. 3015, which enacted sectionsto and to of this title, amended sections , , and of this title, section of Title 15, Commerce and Trade, sections and of Title 17, Copyrights, and sections 2186 and 5908 and former section 2457 of Title 42, The Public Health and Welfare, and enacted provisions set out as notes under sections and of this title. For complete classification of this Act to the Code, see Tables.
AMENDMENTS2011-Subsec. (b)(3). Pub. L. 112-29, §20(i)(2)(A), substituted "section 203(b)" for "the section 203(b)".Subsec. (c)(2). Pub. L. 112-29, §3(g)(7)(A), substituted "the 1-year period referred to in section 102(b) would end before the end of that 2-year period" for "publication, on sale, or public use, has initiated the one year statutory period in which valid patent protection can still be obtained in the United States" and "before the end of that 1-year" for "prior to the end of the statutory".Subsec. (c)(3). Pub. L. 112-29, §3(g)(7)(B), substituted "the expiration of the 1-year period referred to in section 102(b)" for "any statutory bar date that may occur under this title due to publication, on sale, or public use".Subsec. (c)(7)(D). Pub. L. 112-29, §20(i)(2)(B), substituted "except where it is determined to be infeasible following a reasonable inquiry, a preference in the licensing of subject inventions shall be given to small business firms; and" for "except where it proves infeasible after a reasonable inquiry, in the licensing of subject inventions shall be given to small business firms; and".Subsec. (c)(7)(E)(i). Pub. L. 112-29, §13(a), substituted "15 percent" for "75 percent", "85 percent" for "25 percent", and "described above in this clause;" for "as described above in this clause (D);".2009-Subsec. (b)(3), (4). Pub. L. 111-8 redesignated par. (4) as (3) and struck out former par. (3) which read as follows: "At least once every 5 years, the Comptroller General shall transmit a report to the Committees on the Judiciary of the Senate and House of Representatives on the manner in which this chapter is being implemented by the agencies and on such other aspects of Government patent policies and practices with respect to federally funded inventions as the Comptroller General believes appropriate."2002-Subsec. (b)(4). Pub. L. 107-273, §13206(a)(13)(A), substituted "section 203(b)" for "last paragraph of section 203(2)".Subsec. (c)(4). Pub. L. 107-273, §13206(a)(13)(B)(i), substituted "additional rights," for "additional rights;".Subsec. (c)(5). Pub. L. 107-273, §13206(a)(13)(B)(ii), struck out "of the United States Code" after "section of title 5".2000-Subsec. (e). Pub. L. 106-404 amended subsec. (e) generally. Prior to amendment, subsec. (e) read as follows: "In any case when a Federal employee is a coinventor of any invention made under a funding agreement with a nonprofit organization or small business firm, the Federal agency employing such coinventor is authorized to transfer or assign whatever rights it may acquire in the subject invention from its employee to the contractor subject to the conditions set forth in this chapter."1999-Subsec. (a). Pub. L. 106-113 in first sentence, substituted "(iv)" for "iv)" and struck out a second period at end.1991-Subsec. (b)(3). Pub. L. 102-204 substituted "every 5 years" for "each year".1984-Subsec. (a). Pub. L. 98-620, §501(3), substituted "when the contractor is not located in the United States or does not have a place of business located in the United States or is subject to the control of a foreign government" for "when the funding agreement is for the operation of a Government-owned research or production facility", struck out "or" before "(ii)", which was executed by striking out "or" before "(iii)" as the probable intent of Congress, and added cl. (iv).Subsec. (b)(1). Pub. L. 98-620, §501(4), gave to the Department of Commerce oversight of agency use of the exceptions to small business or nonprofit organization invention ownership.Subsec. (b)(2). Pub. L. 98-620, §501(4), substituted provisions authorizing the Administrator of the Office of Federal Procurement Policy to issue regulations describing situations in which agencies may not exercise the authorities of clauses (i) or (ii) of subsec. (a), whenever the Administrator has determined that one or more agencies are utilizing such authority in violation of this chapter for provisions which gave to the Comptroller General oversight of agency actions under this chapter.Subsec. (b)(4). Pub. L. 98-620, §501(4A), added par. (4).Subsec. (c)(1). Pub. L. 98-620, §501(5), substituted provisions requiring disclosure of each invention within a reasonable time after it becomes known to contractor personnel responsible for the administration of patent matters for provision requiring disclosure of each invention within a reasonable time after it is made.Subsec. (c)(2). Pub. L. 98-620, §501(5), substituted provisions requiring the contractor to make a written election within two years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention for provision requiring election to retain title within a reasonable time after disclosure, and inserted provision authorizing the Federal agency to shorten the period for election under certain circumstances.Subsec. (c)(3). Pub. L. 98-620, §501(5), substituted provisions requiring a contractor electing rights in a subject invention to file a patent application prior to any statutory bar date that may occur under this title due to publication, on sale, or public use, and thereafter to file corresponding patent applications in other countries in which it wishes to retain title within reasonable times for provisions requiring the contractor to file patent applications within a reasonable time.Subsec. (c)(4). Pub. L. 98-620, §501(5), substituted provision that the funding agreement may provide for such additional rights, including the right to assign or have assigned foreign patent rights in the subject invention, as are determined by the agency as necessary for meeting the obligations of the United States under any treaty, international agreement, arrangement of cooperation, memorandum of understanding, or similar arrangement, including any military agreement relating to weapons development and production for provision that the agency could, if provided in the funding agreement, have additional rights to sublicense any foreign government or international organization pursuant to any existing or future treaty or agreement.Subsec. (c)(5). Pub. L. 98-620, §501(6), substituted "as well as any information on utilization or efforts at obtaining utilization obtained as part of a proceeding under section 203 of this chapter shall be treated" for "may be treated".Subsec. (c)(7)(A). Pub. L. 98-620, §501(7), struck out provision which made an exception for organizations which were not themselves engaged in or did not hold a substantial interest in other organizations engaged in the manufacture or sales of products or the use of processes that might utilize the invention or be in competition with embodiments of the invention.Subsec. (c)(7)(B). Pub. L. 98-620, §501(8), redesignated cl. (C) as (B). Former cl. (B), relating to a prohibition against the granting of exclusive licenses under United States Patents or Patent Applications in a subject invention by the contractor to persons other than small business firms for periods in excess of certain specified periods and relating to commercial sales, was struck out.Subsec. (c)(7)(C). Pub. L. 98-620, §501(8), added cl. (C). Former cl. (C) redesignated (B).Subsec. (c)(7)(D). Pub. L. 98-620, §501(8), added cl. (D). Former cl. (D) redesignated (E).Subsec. (c)(7)(E). Pub. L. 98-620, §501(8), redesignated former cl. (D) as (E) and inserted provisions placing a limit on the amount of royalties that the contract operators of Government-owned laboratories are entitled to retain after paying patent administrative expenses and a share of the royalties to inventors, requiring payment of amounts in excess of such limits to the United States Treasury, and requiring that, to the extent it provides the most effective technology transfer, the licensing of subject inventions shall be administered by contractor employees on location at the facility.
EFFECTIVE DATE OF 2011 AMENDMENTAmendment by section 3(g)(7) of Pub. L. 112-29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112-29 set out as an Effective Date of 2011 Amendment; Savings Provisions note under sectionof this title. Pub. L. 112-29, §13(b), Sept. 16, 2011, 125 Stat. 327, provided that: "The amendments made by this section [amending this section] shall take effect on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent issued before, on, or after that date."Amendment by section 20(i)(2) of 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, see section 20(l) of Pub. L. 112-29 set out as a note under section of this title.
EFFECTIVE DATE OF 1999 AMENDMENTAmendment by Pub. L. 106-113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106-113 set out as a note under sectionof this title.
EFFECTIVE DATESection effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub. L. 96-517 set out as an Effective Date of 1980 Amendment note under sectionof this title.
- Federal agency
- The term "Federal agency" means any executive agency as defined in section 105 of title 5, and the military departments as defined by section 102 of title 5.
- The term "contractor" means any person, small business firm, or nonprofit organization that is a party to a funding agreement.
- funding agreement
- The term "funding agreement" means any contract, grant, or cooperative agreement entered into between any Federal agency, other than the Tennessee Valley Authority, and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the Federal Government. Such term includes any assignment, substitution of parties, or subcontract of any type entered into for the performance of experimental, developmental, or research work under a funding agreement as herein defined.
- The term "invention" means any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act ( 7 U.S.C. 2321 et seq.).
- The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
- nonprofit organization
- The term "nonprofit organization" means universities and other institutions of higher education or an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 ( 26 U.S.C. 501(c) ) and exempt from taxation under section 501(a) of the Internal Revenue Code ( 26 U.S.C. 501(a) ) or any nonprofit scientific or educational organization qualified under a State nonprofit organization statute.1 See References in Text note below.
- practical application
- The term "practical application" means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine or system; and, in each case, under such conditions as to establish that the invention is being utilized and that its benefits are to the extent permitted by law or Government regulations available to the public on reasonable terms.
- small business firm
- The term "small business firm" means a small business concern as defined at section 2 of Public Law 85-536 ( 15 U.S.C. 632 ) and implementing regulations of the Administrator of the Small Business Administration.
- subject invention
- The term "subject invention" means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) 1 of the Plant Variety Protection Act ( 7 U.S.C. 2401(d) )) must also occur during the period of contract performance.
- United States
- The terms "United States" and "this country" mean the United States of America, its territories and possessions.
- The terms "joint inventor" and "coinventor" mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.