S. 1164 (104th): Technology Transfer Improvements Act of 1995

104th Congress, 1995–1996. Text as of Dec 20, 1995 (Reported by Senate Committee).

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S 1164 RS

Calendar No. 294

104th CONGRESS

1st Session

S. 1164

[Report No. 104-194]

To amend the Stevenson-Wydler Technology Innovation Act of 1980 with respect to inventions made under cooperative research and development agreements, and for other purposes.

IN THE SENATE OF THE UNITED STATES

August 10 (legislative day, JULY 10), 1995

Mr. ROCKEFELLER (for himself and Mr. BURNS) introduced the following bill; which was read twice and referred to the Committee on Commerce, Science, and Transportation

December 20, 1995

Reported by Mr. PRESSLER, with amendments

[Omit the part struck through and insert the part printed in italic]


A BILL

To amend the Stevenson-Wydler Technology Innovation Act of 1980 with respect to inventions made under cooperative research and development agreements, and for other purposes.

    Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ‘Technology Transfer Improvements Act of 1995’.

SEC. 2. FINDINGS.

    The Congress finds the following:

      (1) Bringing technology and industrial innovation to the marketplace is central to the economic, environmental, and social well-being of the people of the United States.

      (2) The Federal Government can help United States business to speed the development of new products and processes by entering into cooperative research and development agreements which make available the assistance of Federal laboratories to the private sector, but the commercialization of technology and industrial innovation in the United States depends upon actions by business.

      (3) The commercialization of technology and industrial innovation in the United States will be enhanced if companies, in return for reasonable compensation to the Federal Government, can more easily obtain exclusive licenses to inventions which develop as a result of cooperative research with scientists employed by Federal laboratories.

SEC. 3. USE OF FEDERAL TECHNOLOGY.

    Subparagraph (B) of section 11(e)(7) of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710(e)(7)(B)) is amended to read as follows:

    ‘(B) A transfer shall be made by any Federal agency under subparagraph (A), for any fiscal year, only if the amount so transferred by that agency (as determined under such subparagraph) would exceed $10,000.’.

SEC. 4. TITLE TO INTELLECTUAL PROPERTY ARISING FROM COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENTS.

    Subsection (b) of section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a(b)) is amended to read as follows:

    ‘(b) ENUMERATED AUTHORITY- (1) Under an agreement entered into pursuant to subsection (a)(1), the laboratory may grant, or agree to grant in advance, to a collaborating party patent licenses or assignments, or options thereto, in any invention made in whole or in part by a laboratory employee under the agreement, for reasonable compensation when appropriate. The laboratory shall ensure that the collaborating party has the option to choose an exclusive license for a field of use for any such invention under the agreement or, if there is more than one collaborating party, that the collaborating parties are offered the option to hold licensing rights that collectively encompass the rights that would be held under such an exclusive license by one party. In consideration for the Government’s contribution under the agreement, grants under this paragraph shall be subject to the following explicit conditions:

      ‘(A) A nonexclusive, nontransferable, irrevocable, paid-up license from the collaborating party to the laboratory to practice the invention or have the invention practiced throughout the world by or on behalf of the Government. In the exercise of such license, the Government shall not publicly disclose trade secrets or commercial or financial information that is privileged or confidential within the meaning of section 552(b)(4) of title 5, United States Code, or which would be considered as such if it had been obtained from a non-Federal party.

      ‘(B) If a laboratory assigns title or grants an exclusive license to such an invention, the Government shall retain the right--

        ‘(i) to require the collaborating party to grant to a responsible applicant a nonexclusive, partially exclusive, or exclusive license to use the invention in the applicant’s licensed field of use, on terms that are reasonable under the circumstances; or

        ‘(ii) if the collaborating party fails to grant such a license, to grant the license itself.

      ‘(C) The Government may exercise its right retained under subparagraphs (B) (ii) and (iii) only if the Government finds that--

        ‘(i) the action is necessary to meet health or safety needs that are not reasonably satisfied by the collaborating party;

        ‘(ii) the action is necessary to meet requirements for public use specified by Federal regulations, and such requirements are not reasonably satisfied by the collaborating party; or

        ‘(iii) the collaborating party has failed to comply with an agreement containing provisions described in subsection (c)(4)(B).

    ‘(2) Under agreements entered into pursuant to subsection (a)(1), the laboratory shall ensure that a collaborating party may retain title to any invention made solely by its employee in exchange for normally granting the Government a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention or have the invention practiced throughout the world by or on behalf of the Government for research or other Government purposes.

    ‘(3) Under an agreement entered into pursuant to subsection (a)(1), a laboratory may--

      ‘(A) accept, retain, and use funds, personnel, services, and property from a collaborating party and provide personnel, services, and property to a collaborating party;

      ‘(B) use funds received from a collaborating party in accordance with subparagraph (A) to hire personnel to carry out the agreement who will not be subject to full-time equivalent restrictions of the agency; and

      ‘(C) to the extent consistent with any applicable agency requirements or standards of conduct, permit an employee or former employee of the laboratory to participate in an effort to commercialize an invention made by the employee or former employee while in the employment or service of the Government.

    ‘(4) A collaborating party in an exclusive license in any invention made under an agreement entered into pursuant to subsection (a)(1) shall have the right of enforcement under chapter 29 of title 35, United States Code.

    ‘(5) A Government-owned, contractor-operated laboratory that enters into a cooperative research and development agreement pursuant to subsection (a)(1) may use or obligate royalties or other income accruing to the laboratory under such agreement with respect to any invention only--

      ‘(A) for payments to inventors;

      ‘(B) for purposes described in clauses (i), (iii), and (iv) of section 14(a)(1)(B); and

      ‘(C) for scientific research and development consistent with the research and development missions and objectives of the laboratory.’.

SEC. 5. DISTRIBUTION OF INCOME FROM INTELLECTUAL PROPERTY RECEIVED BY FEDERAL LABORATORIES.

    Section 14 of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710c) is amended--

      (1) by amending subsection (a)(1) to read as follows:

      ‘(1) Except as provided in paragraphs (2) and (4), any royalties or other payments received by a Federal agency from the licensing and assignment of inventions under agreements entered into by Federal laboratories under section 12, and from the licensing of inventions of Federal laboratories under section 207 of title 35, United States Code, or under any other provision of law, shall be retained by the agency whose laboratory produced the invention and shall be disposed of as follows:

        ‘(A)(i) The head of the agency or laboratory, or such individual’s designee, shall pay each year the first $2,000, and thereafter at least 15 percent, of the royalties or other payments to the inventor or coinvestors.

        ‘(ii) An agency or laboratory may provide appropriate incentives, from royalties or other payments, to employees of laboratory who contribute substantially to the technical development of licensed or assigned inventions between the time that the intellectual property rights to such inventions are legally asserted and the time of the licensing or assigning of the inventions.

        ‘(iii) The agency or laboratory shall retain the royalties and other payments received from an invention until the agency or laboratory makes payments to employees of a laboratory under clause (i) or (ii).

        ‘(B) The balance of the royalties or other payments shall be transferred by the agency to its laboratories, with the majority share of the royalties or other payments from any invention going to the laboratory where the invention occurred. The royalties or other payments so transferred to any laboratory may be used or obligated by that laboratory during the fiscal year in which they are received or during the succeeding fiscal year--

          ‘(i) to reward scientific, engineering, and technical employees of the laboratory, including developers of sensitive or classified technology, regardless of whether the technology has commercial applications;

          ‘(ii) to further scientific exchange among the laboratories of the agency;

          ‘(iii) for education and training of employees consistent with the research and development missions and objectives of the agency or laboratory, and for other activities that increase the potential for transfer of the technology of the laboratories of the agency;

          ‘(iv) for payment of expenses incidental to the administration and licensing of intellectual property by the agency or laboratory with respect to inventions made at that laboratory, including the fees or other costs for the services of other agencies, persons, or organizations for intellectual property management and licensing services; or

          ‘(v) for scientific research and development consistent with the research and development missions and objectives of the laboratory.

        ‘(C) All royalties or other payments retained by the agency or laboratory after payments have been made pursuant to subparagraphs (A) and (B) that is unobligated and unexpended at the end of the second fiscal year succeeding the fiscal year in which the royalties and other payments were received shall be paid into the Treasury.’;

      (2) in subsection (a)(2)--

        (A) by inserting ‘or other payments’ after ‘royalties’; and

        (B) by striking ‘for the purposes described in clauses (i) through (iv) of paragraph (1)(B) during that fiscal year or the succeeding fiscal year’ and inserting in lieu thereof ‘under paragraph (1)(B)’;

      (3) in subsection (a)(3), by striking ‘$100,000’ both places it appears and inserting ‘$150,000’;

      (4) in subsection (a)(4)--

        (A) by striking ‘income’ each place it appears and inserting in lieu thereof ‘payments’;

        (B) by striking ‘the payment of royalties to inventors’ in the first sentence thereof and inserting in lieu thereof ‘payments to inventors’;

        (C) by striking ‘clause (i) of paragraph (1)(B)’ and inserting in lieu thereof ‘clause (iv) of paragraph (1)(B)’;

        (D) by striking ‘payment of the royalties,’ in the second sentence thereof and inserting in lieu thereof ‘offsetting the payments to inventors,’; and

        (E) by striking ‘ [Struck out->] clause [<-Struck out] clauses (i) through (iv) of’; and

      (5) by amending paragraph (1) of subsection (b) to read as follows:

      ‘(1) by a contractor, grantee, or participant, or an employee of a contractor, grantee, or participant, in an agreement or other arrangement with the agency, or’.

SEC. 6. EMPLOYEE ACTIVITIES.

    Section 15(a) of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710d(a)) is amended--

      (1) by striking ‘the right of ownership to an invention under this Act’ and inserting in lieu thereof ‘ownership of or the right of ownership to an invention made by a Federal employee’; and

      (2) by inserting ‘obtain or’ after ‘the Government, to’.

SEC. 7. AMENDMENT TO BAYH-DOLE ACT.

    Section 210(e) of title 35, United States Code, is amended by striking ‘, as amended by the Federal Technology Transfer Act of 1986,’.

SEC. 8. FASTENER QUALITY ACT AMENDMENTS.

    (a) SECTION 2 AMENDMENTS- Section 2 of the Fastener Quality Act (15 U.S.C. 5401) is amended--

      (1) by striking subsection (a)(4), and redesignating paragraphs (5) through (9) as paragraphs (4) through (8), respectively;

      (2) by striking ‘by lot number’ in subsection (a)(7), as so redesignated by paragraph (1) of this subsection; and

      (3) by striking ‘used in critical applications’ in subsection (b) and inserting ‘in commerce’.

    (b) SECTION 3 AMENDMENTS- Section 3 of the Fastener Quality Act (15 U.S.C. 5402) is amended--

      (1) by striking ‘having a minimum tensile strength of 150,000 pounds per square inch’ in paragraph (1)(B);

      (2) in paragraph (2) by inserting ‘consensus’ after ‘or any other’;

      (3) in paragraph (5)--

        (A) by inserting ‘or’ after ‘standard or specification,’ in subparagraph (B);

        (B) by striking ‘or’ at the end of subparagraph (C);

        (C) by striking subparagraph (D); and

        (D) by inserting ‘or produced in accordance with ASTM F 432’ after ‘307 Grade A’;

      (4) by striking ‘other person’ in paragraph (6) and inserting ‘government agency’;

      (5) by striking ‘Standard’ in paragraph (8) and inserting ‘Standards’;

      (6) by striking paragraph (11) and redesignating paragraphs (12) through (15) as paragraphs (11) through (14), respectively;

      (7) by striking ‘, a government agency’ and all that follows through ‘markings of any fastener’ in paragraph (13), as so redesignated, and inserting ‘or a government agency’; and

      (8) by inserting ‘for the purpose of achieving a uniform hardness’ in paragraph (14), as so redesignated, after ‘quenching and tempering’.

    (c) SECTION 4 REPEAL- Section 4 of the Fastener Quality Act (15 U.S.C. 5403) is repealed.

    (d) SECTION 5 AMENDMENTS- Section 5 of the Fastener Quality Act (15 U.S.C. 5404) is amended--

      (1) by striking ‘subsections (b) and (c)’ in subsection (a)(1)(B) and (2)(A)(i) and inserting ‘subsections (b), (c), and (d)’;

      (2) by striking ‘or, where applicable’ and all that follows through ‘section 7(c)(1)’ in subsection (c)(2);

      (3) by striking ‘, such as the chemical, dimensional, physical, mechanical, and any other’ in subsection (c)(3);

      (4) by inserting ‘except as provided in subsection (d),’ in subsection (c)(4) before ‘state whether’; and

      (5) by adding at the end the following new subsection:

    ‘(d) ALTERNATIVE PROCEDURE FOR CHEMICAL CHARACTERISTICS- Notwithstanding the requirements of subsections (b) and (c), a manufacturer shall be deemed to have demonstrated, for purposes of subsection (a)(1), that the chemical characteristics of a lot conform to the standards and specifications to which the manufacturer represents such lot has been manufactured if the following requirements are met:

      ‘(1) The coil or heat number of metal from which such lot was fabricated has been inspected and tested with respect to its chemical characteristics by a laboratory accredited in accordance with the procedures and conditions specified by the Secretary under section 6.

      ‘(2) Such laboratory has provided to the manufacturer, either directly or through the metal manufacturer, a written inspection and testing report, which shall be in a form prescribed by the Secretary by regulation, listing the chemical characteristics of such coil or heat number.

      ‘(3) The report described in paragraph (2) indicates that the chemical characteristics of such coil or heat number conform to those required by the standards and specifications to which the manufacturer represents such lot has been manufactured.

      ‘(4) The manufacturer demonstrates that such lot has been fabricated from the coil or heat number of metal to which the report described in paragraphs (2) and (3) relates.

    In prescribing the form of report required by subsection (c), the Secretary shall provide for an alternative to the statement required by subsection (c)(4), insofar as such statement pertains to chemical characteristics, for cases in which a manufacturer elects to use the procedure permitted by this subsection.’.

    (e) SECTION 6 AMENDMENT- Section 6(a)(1) of the Fastener Quality Act (15 U.S.C. 5405(a)(1)) is amended by striking ‘Within 180 days after the date of enactment of this Act, the’ and inserting ‘The’.

    (f) SECTION 7 AMENDMENTS- Section 7 of the Fastener Quality Act (15 U.S.C. 5406) is amended--

      (1) by amending subsection (a) to read as follows:

    ‘(a) DOMESTICALLY PRODUCED FASTENERS- It shall be unlawful for a manufacturer to sell any shipment of fasteners covered by this Act which are manufactured in the United States unless the fasteners--

      ‘(1) have been manufactured according to the requirements of the applicable standards and specifications and have been inspected and tested by a laboratory accredited in accordance with the procedures and conditions specified by the Secretary under section 6; and

      ‘(2) an original laboratory testing report described in section 5(c) and a manufacturer’s certificate of conformance are on file with the manufacturer, or under such custody as may be prescribed by the Secretary, and available for inspection.’;

      (2) by inserting ‘label’ after ‘private’ the first place it appears in subsection (c)(2);

      (3) by inserting ‘to the same’ in subsection (c)(2) after ‘in the same manner and’;

      (4) by striking ‘certificate’ in subsection (d)(1) and inserting ‘test report’;

      (5) by striking subsection (e) and inserting the following:

    ‘(e) COMMINGLING- It shall be unlawful for any manufacturer, importer, or private label distributor to commingle like fasteners from different lots in the same container; except that such manufacturer, importer, or private label distributor may commingle like fasteners of the same type, grade, and dimension from not more than two tested and certified lots in the same container during repackaging and plating operations: Provided, that any container which contains the fasteners from two lots shall be conspicuously marked with the lot identification numbers of both lots.’; and

      (6) by striking subsection (f) and inserting the following:

    ‘(f) SUBSEQUENT PURCHASER- If a person who purchases fasteners for any purpose so requests either prior to the sale or at the time of sale, the seller shall conspicuously mark the container of the fasteners with the lot number from which such fasteners were taken.’.

    (g) SECTION 9 AMENDMENT- Section 9 of the Fastener Quality Act (15 U.S.C. 5408) is amended by adding at the end the following new subsection:

    ‘(d) ENFORCEMENT- The Secretary may designate officers or employees of the Department of Commerce to conduct investigations pursuant to this Act. In conducting such investigations, those officers or employees may, to the extent necessary or appropriate to the enforcement of this Act, exercise such authorities as are conferred upon them by other laws of the United States, subject to policies and procedures approved by the Attorney General.’.

    (h) SECTION 10 AMENDMENTS- Section 10 of the Fastener Quality Act (15 U.S.C. 5409) is amended--

      (1) by striking ‘10 years’ in subsections (a) and (b) and inserting ‘5 years’; and

      (2) by striking ‘any subsequent’ in subsection (b) and inserting ‘the subsequent’.

    (i) SECTION 13 AMENDMENT- Section 13 of the Fastener Quality Act (15 U.S.C. 5412) is amended by striking ‘within 180 days after the date of enactment of this Act’.

    (j) SECTION 14 REPEAL- Section 14 of the Fastener Quality Act (15 U.S.C. 5413) is repealed.

    S 1164 RS----2