37 CFR 401.12 - Licensing of background patent rights to third parties.

§ 401.12 Licensing of background patent rights to third parties.

(a) A funding agreement with a small business firm or a domestic nonprofit organization will not contain a provision allowing a Federal agency to require the licensing to third parties of inventions owned by the contractor that are not subject inventions unless such provision has been approved by the agency head and a written justification has been signed by the agency head. Any such provision will clearly state whether the licensing may be required in connection with the practice of a subject invention, a specifically identified work object, or both. The agency head may not delegate the authority to approve such provisions or to sign the justification required for such provisions.

(b) A Federal agency will not require the licensing of third parties under any such provision unless the agency head determines that the use of the invention by others is necessary for the practice of a subject invention or for the use of a work object of the funding agreement and that such action is necessary to achieve practical application of the subject invention or work object. Any such determination will be on the record after an opportunity for an agency hearing. The contractor shall be given prompt notification of the determination by certified or registered mail. Any action commenced for judicial review of such determination shall be brought within sixty days after notification of such determination.

This is a list of United States Code sections, Statutes at Large, Public Laws, and Presidential Documents, which provide rulemaking authority for this CFR Part.

This list is taken from the Parallel Table of Authorities and Rules provided by GPO [Government Printing Office].

It is not guaranteed to be accurate or up-to-date, though we do refresh the database weekly. More limitations on accuracy are described at the GPO site.


United States Code
U.S. Code: Title 35 - PATENTS

Title 37 published on 20-Dec-2017 04:15

The following are ALL rules, proposed rules, and notices (chronologically) published in the Federal Register relating to 37 CFR Part 401 after this date.

  • 2016-11-07; vol. 81 # 215 - Monday, November 7, 2016
    1. 81 FR 78090 - Rights to Federally Funded Inventions and Licensing of Government Owned Inventions
      GPO FDSys XML | Text
      DEPARTMENT OF COMMERCE, National Institute of Standards and Technology, National Institutes of Standards and Technology
      Notice of proposed rulemaking.
      For Comments: Comments must be received no later than December 9, 2016. For Public Meeting/Webinar: A meeting and simultaneous webinar will be held on November 21, 2016, from 1 p.m. until 3 p.m. Eastern Time. Requests to participate in-person must be received via the meeting Web site no later than November 14, 2016.
      37 CFR Parts 401 and 404
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