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Federal Register / Vol. 86, No. 1 / Monday, January 4, 2021 / Proposed Rules and any other information in the administrative record. The consistency of the exercise of march-in rights with the policy and objectives of 35 U.S.C.
200 shall also be considered. In cases referred for fact-finding, the head of the agency or designee may reject only those facts that have been found to be clearly erroneous, but must explicitly state the rejection and indicate the basis for the contrary finding. Written notice of the determination whether march-in rights will be exercised shall be made by the head of the agency or designee and sent to the contractor assignee of exclusive licensee by certified or registered mail within 90 days after the completion of fact-finding or 90 days after oral arguments, whichever is later, or the proceedings will be deemed to have been terminated and thereafter no march-in based on the facts and reasons upon which the proceeding was initiated may be exercised.
7 An agency may, at any time, terminate a march-in proceeding if it is satisfied that it does not wish to exercise march-in rights.
b The procedures of this part shall also apply to the exercise of march-in rights against inventors receiving title to subject inventions under 35 U.S.C.
202d and, for that purpose, the term contractor as used in this section shall be deemed to include the inventor.
c An agency determination unfavorable to the contractor assignee or exclusive licensee shall be held in abeyance pending the exhaustion of appeals or petitions filed under 35
U.S.C. 203b.
d For purposes of this section the term exclusive licensee includes a partially exclusive licensee.
e March-in rights shall not be exercised exclusively based on the business decisions of the contractor regarding the pricing of commercial goods and services arising from the practical application of the invention.
f Agencies are authorized to issue supplemental procedures not inconsistent with this part for the conduct of march-in proceedings.
401.7 and 401.8
Reserved
Removed and
8. Remove and reserve 401.7 and 401.8.
9. Revise 401.9 as follows:

401.9 Contractor and contractor employee inventor requests for rights in inventions.

a Agencies shall allow a contractor to request greater rights in an invention, including a request to return title to an invention to the contractor, when the funding agreement contains alternate
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provisions in accordance with 401.3a2:
1 The agency shall consider if the circumstances which originally led the agency to invoke an exception under 401.3a are currently valid and applicable to the actual subject invention.
i The agency shall provide the contractor the opportunity to submit information on its plans and intentions to bring the subject invention to practical application pursuant to 35
U.S.C. 200.
ii The agency shall assess whether government ownership of the invention will better promote the policies and objectives of 35 U.S.C. 200 than the plans and intentions submitted by the contractor.
iii The agency shall consider whether to allow the standard clause at 401.14 to apply with additional conditions imposed upon the contractors use of the invention for specific uses or applications, or with expanded government license rights in such uses or applications.
2 The agency shall reply to the contractor with its determination within 90 days after receiving a request and any supporting information from the contractor. If a bar to patenting is sooner than 90 days from receipt of a request, the agency may either file a patent application on the subject invention or authorize the contractor to file a patent application at its own risk and expense.
3 The Department of Energy is authorized to process deferred determinations either in accordance with its waiver regulations or this section.
b Pursuant to 35 U.S.C. 202d, a contractor is required to obtain approval from a funding Agency before assigning rights to a subject invention made under a funding agreement to an employee/
inventor. When an employee/inventor retains rights to a subject invention made under a funding agreement, either the Agency or the contractor must ensure compliance by the employee/
inventor with at least those conditions that would apply under paragraphs b, d, f4, h, i, and j of the clause at 401.14.
10. Amend 401.11 as follows:
a. Remove paragraph a;
b. Redesignate paragraph b as paragraph a;
c. Revise the newly redesignated paragraphs a1 through 4;
d. Remove newly redesignated paragraph a5;
e. Redesignate paragraphs c through e as paragraphs b through d, respectively, and revise the newly redesignated paragraphs b through d.

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The revisions read as follows:
401.11

Appeals.

a
1 A refusal to grant an extension under paragraph c5 of the standard clause at 401.14.
2 A request for a conveyance of title under paragraph d1 of the standard clause at 401.14.
3 A refusal to grant a waiver under paragraph i of the standard clause at 401.14.
4 A refusal to approve an assignment under paragraph k1 of the standard clause at 401.14.
b Each agency shall establish and publish procedures under which any of the agency actions listed in paragraph a of this section may be appealed to the head of the agency or designee.
Review at this level shall consider both the factual and legal basis for the actions and its consistency with the policy and objectives of 35 U.S.C. 200206.
c Appeals procedures established under paragraph b of this section shall include administrative due process procedures and standards for factfinding at least comparable to those set forth in 401.6a4 through 6
whenever there is a dispute as to the factual basis for an agency request for a conveyance of title under paragraph d of the standard clause at 401.14, including any dispute as to whether or not an invention is a subject invention.
d To the extent that any of the actions described in paragraph a of this section are subject to appeal under the Contract Dispute Act, the procedures under the Act will satisfy the requirements of paragraphs b and c of this section.
11. Revise 401.13 to read as follows:
401.13 Confidentiality of contractor submissions.

Pursuant to 35 U.S.C. 202c5 and 205, the following procedures shall govern confidentiality of documents submitted under paragraph c of the standard clause found at 401.14:
a Agencies shall not disclose to third parties pursuant to requests under the Freedom of Information Act FOIA any information disclosing a subject invention during the time which an initial patent application may be filed under paragraph c of the standard clause found at 401.14 or such other clause in the funding agreement. This prohibition does not apply to information that has previously been published by the inventor, contractor, or otherwise.
b Agencies shall not disclose or release, pursuant to requests under the Freedom of Information Act or
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