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Federal Register / Vol. 86, No. 1 / Monday, January 4, 2021 / Proposed Rules to respond to the contractor following the informal consultation from 60 days to 120 days.
7 Clarify 401.6 to include a provision that march-in rights shall not be exercised by an agency exclusively on the basis of business decisions of a contractor regarding the pricing of commercial goods and services arising from the practical application of the invention.
8 Revise 401.9 to clarify the statutory authority and process for assigning rights to an employee/
inventor, and to clarify said employee/
inventors responsibilities under 37 CFR
part 401 when receiving an assignment of rights to a subject invention made under a funding agreement, and incorporate streamlined text from 401.15 to clarify the process by which a contractor may make a request for greater rights in an invention when the funding agreement contains an alternate provision in accordance with 401.3a2, and remove the requirement for an agency to reimburse the contractor for the costs of filing a patent application while a greater rights request is under review.
9 Revise 401.13 to streamline the text and clarify the confidentiality of contractor submissions made under 401.14c as it relates to Freedom of Information Act requests, copies of documents filed with a patent office, and agency policies on public dissemination of results supported by agency funding programs.
10 Revise 401.14c3 to clarify the procedures for filing more than one provisional patent application on a disclosed subject invention.
11 Revise 401.14d to add a new paragraph permitting agencies, at their discretion, to release the contractor from the requirement to waive title to the agency after one of the conditions in 401.14d has occurred.
12 Revise 401.14k to streamline the requirements for small business considerations into a single section by incorporating language from 401.7
and 401.14m.
13 Move the electronic filing requirements from 401.16 into the standard clause at 401.14; update the requirements to include that if the patent information and periodic reports in 401.14c3 and/or the close-out report 401.14c1 are required by an agency, they will be electronically filed unless otherwise directed by the agency;
and permit other written notices to be electronically transmitted between the contractor and the agency.
14 Implement a requirement new 401.16 for federal agencies to report annually on activities under 37 CFR part
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401, including the number of subject inventions reported, the number of patent applications filed on reported subject inventions, the number of issued patents on subject inventions, the number of requests made and granted for extensions of time under 401.14c5, the number of subject inventions to which title has been conveyed to the Government, the number of requests made and granted for a waiver of the preference for U.S.
industry requirement, and the number of requests for assignment of invention rights.
15 Remove the telephone number for the Interagency Edison service center so that contact information can be updated in a timelier fashion via the iEdison website.
This proposed rulemaking does not address government assignment to contractor of rights in invention of government employee 401.10 or licensing of background rights to third parties 401.12.
In addition to the aforementioned streamlining changes and technical corrections throughout the regulation, the proposed revisions to 37 CFR part 404 will:
1 Revise 404.1 to clarify that licensing royalties are not considered an augmentation of appropriated funds.
2 Revise 404.2 to clarify the link between establishing patent license financial terms and the goal of promoting commercial use, by noting that the government may consider licensing payments as a means to ensure commercialization by the licensee and thus promote the practical application of a subject invention.
3 Streamline 404.7 by removing duplicative sections and revising the paragraph to align the process for granting exclusive, co-exclusive and partially exclusive licenses with the requirements of 35 U.S.C. 209 as it pertains to the required information and publication site for a notice of intent to grant an exclusive license, the requirement to consider the interests of the Federal Government or United States industry in foreign commerce before granting an exclusive license on a foreign patent application or patent, and the additional provisions that apply to exclusive licenses beyond the requirements of 404.5.
4 Revise 404.10 to remove the requirement that a Federal agency notify sublicensees of an intent to modify or terminate a license.
5 Revise 404.11 to clarify who has standing to appeal the grant, denial, modification, or termination of a license by limiting a claim of damage by the agencys granting of an exclusive license
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to that which denies a party the opportunity to promote the commercialization of an invention, and by requiring all agencies to establish procedures for considering appeals.
This proposed rulemaking does not address definitions 404.3, nonexclusive licenses 404.6, application for a license 404.8, protection and administration of inventions 404.12, or transfer of custody 404.13.
IV. Request for Comments NIST is requesting comments about 37 CFR parts 401 and 404 of the BayhDole regulations. We have included some questions that you might consider as you develop your comments:
1. Are there any changes to these regulations, consistent with current law, that you or your organization think would accelerate the transfer of federally funded research and technology to entrepreneurs, or otherwise strengthen the Nations innovation system?
2. Are there specific revisions to the language in 401.14b that could help clarify the existing scope of the Government Use License for owners and licensees working to achieve practical application of subject inventions?
3. Are there provisions within 37 CFR
part 401 or 404 that are inconsistent with, or otherwise affected by, changes in the patent laws under the LeahySmith America Invents Act, Public Law 11229, or that Acts implementing regulations?
When submitting comments, remember to:
i. Identify the document by docket ID
number and other identifying information subject heading, Federal Register date and page number.
ii. Please organize your comments by referencing the specific question you are responding to or the relevant section number in the proposed regulatory text.
iii. Explain why you agree or disagree;
suggest alternatives and substitute language for your requested changes.
iv. Describe any assumptions and provide any technical information and/
or data that you used.
v. Provide specific examples to illustrate your concerns and suggest alternatives.
vi. Explain your views as clearly as possible.
vii. All submissions, including attachments and other supporting materials, will become part of the public record and subject to public disclosure.
NIST reserves the right to publish relevant comments publicly, unedited and in their entirety. Personal information, such as account numbers
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