Je veux savoir à propos de…

42

Federal Register / Vol. 86, No. 1 / Monday, January 4, 2021 / Proposed Rules
otherwise, copies of any document 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. This prohibition does not apply to documents published by the U.S. Patent and Trademark Office or any foreign patent office.
c When implementing policies that encourage public dissemination of the results of work supported by the agency through government publications or other publications of technical reports, agencies shall not include copies of documents submitted by contractors pursuant to 401.14c when a contractor notifies the agency that a particular report or other submission contains a disclosure of a subject invention to which it has elected title or may elect title, or such publication could create a statutory bar to obtaining patent protection.
12. Amend 401.14 as follows:
a. Revise paragraphs a2 and 7, and c1 and 3;
b. Add paragraph c6;
c. Revise paragraph d;
d. Remove sucessor and add in its place successor in the final sentence of paragraph e1;
e. Revise paragraph f3;
f. Remove incidential and add in its place incidental in paragraph k3;
g. Revise paragraph k4;
h. Add paragraphs k5 and 6;
i. Add paragraph m.
The revisions read as follows:
401.14

Standard patent rights clauses.

a
2 Subject invention means any invention of a 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 41d of the Plant Variety Protection Act, 7 U.S.C. 2401d must also occur during the period of contract performance. An invention that is conceived and reduced to practice without the use of any federal funds is not considered a subject invention.

7 The term statutory period means the one-year period before the effective filing date of a claimed invention in a
VerDate Sep<11>2014

17:03 Dec 31, 2020

Jkt 253001

patent application during which exceptions to prior art exist per 35
U.S.C. 102b as amended by the LeahySmith America Invents Act, Public Law 11229.

c
1 The contractor will disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters. The disclosure to the agency shall be in the form of a written report and shall identify the contract under which the invention was made and the inventors. It shall be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention. The disclosure shall also identify any publication, on sale or public use of the invention, and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure. In addition, after disclosure to the agency, the contractor will promptly notify the agency of the acceptance of any manuscript describing the invention for publication or of any on sale or public use planned by the contractor. If required by the Federal agency, the contractor will provide periodic but no more frequently than annual listings of all subject inventions which were disclosed to the agency during the period covered by the report, and will provide a report prior to the close-out of a funding agreement listing all subject inventions or stating that there were none.

3i The contractor will file its initial patent application on a subject invention to which it elects to retain title within one year after election of title or, if earlier, prior to the end of any statutory period wherein valid patent protection can be obtained in the United States after a publication, on sale, or public use. Subject to the grant of an extension by an agency under paragraph c5 of this clause, if the contractor files a provisional application as its initial patent application, it shall file a non-provisional application within 10
months of the filing of the provisional application.
ii Each provisional application filed following the initial patent application must contain additional written description of the subject invention not previously disclosed in a patent
PO 00000

Frm 00014

Fmt 4702

Sfmt 4702

application. The contractor shall file or notify the government that they do not intend to file a non-provisional application within 10 months of the last filed provisional application that is consistent with this section.
iii The contractor will file patent applications in additional countries or international patent offices within either ten months of the first filed patent application or six months from the date permission is granted by the Commissioner of Patents to file foreign patent applications where such filing has been prohibited by a Secrecy Order.
iv If required by the Federal agency, the contractor will provide 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.

6 In the event a subject invention is made under funding agreements of more than one agency, at the request of the contractor or on their own initiative the agencies shall designate one agency as responsible for administration of the rights of the government in the invention.
d Conditions When the Government May Obtain Title 1 A Federal agency may require the contractor to convey title to the Federal agency of any subject invention i If the contractor fails to disclose or elect title to the subject invention within the times specified in paragraph c of this clause, or elects not to retain title.
ii In those countries in which the contractor fails to file patent applications within the times specified in paragraph c of this clause; provided, however, that if the contractor has filed a patent application in a country after the times specified in paragraph c of this clause, but prior to its receipt of the written request of the Federal agency, the contractor shall continue to retain title in that country.
iii In any country in which the contractor decides not to continue the prosecution of any non-provisional patent application for, to pay a maintenance, annuity or renewal fee on, or to defend in a reexamination or opposition proceeding on, a patent on a subject invention.
2 A Federal agency, at its discretion, may waive the requirement for the contractor to convey title to any subject invention.

f
3 For each subject invention, the contractor will, no less than 60 days
E:FRFM04JAP1.SGM

04JAP1