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S. 64

Uniform Patent Procedures Act of 1985

Uniform Patent Procedures Act of 1985 - Provides that Federal contractors may automatically own inventions they make under Government research and development contracts unless: (1) it is determined that the discovery is needed for foreign intelligence or counterintelligence purposes; (2) the contractor is not located in the United States, or is a foreign government; (3) it is determined on a case-by-case basis that exceptional circumstances require Federal ownership; or (4) such inventions are a result of the naval nuclear propulsion or weapons-related programs. Requires these determinations to be made in writing and filed with the Secretary.

Provides that if a contractor does not elect to file a patent application, the Federal agency may then assert ownership.

Provides that the agency may use a subject invention royalty free and can require that it be kept updated on utilization of the contractor.

Provides that agencies may force contractors to grant licenses to competitors for using an invention made under Federal research and development contracts: (1) if effective steps are not being taken toward commercialization; (2) to alleviate serious health or safety needs not being satisfied by the contractor; or (3) to meet requirements for public use specified by Federal regulations not being satisfied by the contractor. Permits a contractor to appeal such a determination within 60 days to the United States Claims Court.

Assures that the owner of a patent will not be deprived of any background patent or of any rights under such patent. Prohibits agencies from requiring contractors to give up privately developed technologies to competitors in order to secure a contract, unless specifically approved by the agency head with a written justification.

Permits an agency to waive Federal rights in patents on inventions made under Federal contract if it is in the national interest or the funding agreement involved substantial cost-sharing with the contractor.

Committee on Judiciary requested executive comment from Justice Department, Commerce Department (Patent and Trademark Office).

Sen. Dole, Robert J. [R-KS](R-KS)Sponsor
2 cosponsors1 D1 R
2cosponsors1committees4actions10subjects
  1. Committee

    Committee on Judiciary requested executive comment from Justice Department, Commerce Department (Patent and Trademark Office).

    Judiciary Committee
  2. Committee

    Referred to Subcommittee on Patents, Copyrights and Trademarks.

    Intellectual Property Subcommittee
  3. IntroReferral

    Read twice and referred to the Committee on Judiciary.

    Judiciary Committee
  4. IntroReferral10000

    Introduced in Senate

Uniform Patent Procedures Act of 1985 — Informed