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Federal Register / Vol. 86, No. 1 / Monday, January 4, 2021 / Proposed Rules prior to the expiration of the statutory deadline, or 60 days prior to the date if 401.14c5 applies, notify the Federal agency of any decision.

k
4 It will make efforts that are reasonable under the circumstances to attract licensees of subject inventions that are small business firms and that, when appropriate, it will give a preference to a small business firm when licensing a subject invention;
5 The Federal agency may review the contractors licensing program and decisions regarding small business applicants, and the contractor will negotiate changes to its licensing policies, procedures, or practices with the Federal agency when the Federal agencys review discloses that the contractor could take reasonable steps to more effectively implement the requirements of paragraph k4 of this clause; and 6 The Federal agency may take into consideration concerns presented by small businesses in making such determinations in paragraph k5 of this clause.

m Electronic Filing a Unless otherwise requested or directed by the Federal agency 1 The written disclosure required in c1 of this clause shall be electronically filed;
2 The written election required in c2 of this clause shall be electronically filed; and 3 If required by the agency to be submitted, the close-out report in paragraph c1 of this clause and the patent information and periodic reporting identified in paragraph c3
of this clause shall be electronically filed.
b Other written notices required in this clause may be electronically delivered to the agency or the contractor through an electronic database used for reporting subject inventions, patents, and utilization reports to the funding agency.
401.15

Removed and Reserved
13. Remove and reserve 401.15.
14. Revise 401.16 to read as follows:

401.16 Federal agency reporting requirements.

Federal agencies will report annually to the Secretary of Commerce on data pertaining to reported subject inventions under a funding agreement, including a Number of subject inventions reported to the Federal Agency;
b Patent applications filed on subject inventions;

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c Issued patents on subject inventions;
d Number of requests and number of requests granted for extension of the time for disclosures, election, and filing per 37 CFR 401.14c5;
e Number of subject inventions conveyed to the Government in accordance with 37 CFR 401.14d;
f Number of waivers requested and waivers granted per 37 CFR 401.14i;
and g Number of requests for assignment of invention rights. Such information will be received by the Secretary no later than the last day of October of each year.

alternative to appropriated funding or as an alternative funding mechanism.
18. Revise 404.2 to read as follows:

401.17

Amended
15. Amend 401.17 by removing the phrase , telephone 301 4351986
before the final period of the paragraph.

PART 404LICENSING OF
GOVERNMENT OWNED INVENTIONS
16. The authority citation for 37 CFR
part 404 continues to read as follows:

Authority: 35 U.S.C. 207209, DOO 30
2A.

17. Revise 404.1 to read as follows:

404.1

Scope of part.

a This part prescribes the terms, conditions, and procedures upon which a federally owned invention, other than an invention in the custody of the Tennessee Valley Authority, may be licensed. This part does not affect licenses which:
1 Were in effect prior to April 7, 2006;
2 May exist at the time of the Governments acquisition of title to the invention, including those resulting from the allocation of rights to inventions made under Government research and development contracts;
3 Are the result of an authorized exchange of rights in the settlement of patent disputes, including interferences;
or 4 Are otherwise authorized by law or treaty, including 35 U.S.C. 202e, 35
U.S.C. 207a3 and 15 U.S.C. 3710a, which also may authorize the assignment of inventions. Although licenses on inventions made under a cooperative research and development agreement CRADA are not subject to this regulation, agencies are encouraged to apply the same policies and use similar terms when appropriate.
Similarly, this should be done for licenses granted under inventions where the agency has acquired rights pursuant to 35 U.S.C. 207a3.
b Royalties collected pursuant to this part are not intended as an
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404.2

Policy and objective.

It is the policy and objective of this subpart to promote the results of federally funded research and development through the patenting and licensing process. In negotiating licenses, the Government may consider payments under a licensing agreement as a means for promoting the practical application of a subject invention and as a method to ensure commercialization by the licensee.
404.4

Removed and Reserved
19. Remove and reserve 404.4.

404.5

Amended
20. Amend 404.5 by removing 404.5a2 from paragraph b8iv and adding in its place 35 U.S.C.
209b.
21. Revise 404.7 to read as follows:

404.7 Exclusive, co-exclusive, and partially exclusive licenses.

a Exclusive, co-exclusive or partially exclusive licenses may be granted on Government owned inventions, only if:
1 Notice of a prospective license, identifying the invention at a minimum, has been published and responses, if any, reviewed in accordance with 35
U.S.C. 209. The agency, in its discretion, may include other information as appropriate;
2 After expiration of the public notice period and consideration of any written objections received in accordance with 35 U.S.C. 209e, the Federal agency has determined that:
i The public will be served by the granting of the license, as indicated by the applicants intentions, plans and ability to bring the invention to the point of practical application or otherwise promote the inventions utilization by the public;
ii The proposed scope of exclusivity is not greater than reasonably necessary to provide the incentive for bringing the invention to practical application, as proposed by the applicant, or otherwise to promote the inventions utilization by the public; and iii Exclusive, co-exclusive or partially exclusive licensing is a reasonable and necessary incentive to call forth the investment capital and expenditures needed to bring the invention to practical application or otherwise promote the inventions utilization by the public;
3 The Federal agency has determined that the grant of such a license will not tend substantially to
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