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''

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]

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