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H.R. 6933 (96th): Government Patent Policy Act of 1980

The Bayh–Dole Act or Patent and Trademark Law Amendments Act (Pub. L. 96-517, December 12, 1980) is United States legislation dealing with intellectual property arising from federal government-funded research. Sponsored by two senators, Birch Bayh of Indiana and Bob Dole of Kansas, the Act was adopted in 1980, is codified at 94 Stat. 3015, and in 35 U.S.C. § 200–212, and is implemented by 37 C.F.R. 401.

The key change made by Bayh–Dole was in ownership of inventions made with federal funding. Before the Bayh–Dole Act, federal research funding contracts and grants obligated inventors (wherever they worked) to assign inventions they made using federal funding to the federal government. Bayh–Dole permits a university, small business, or non-profit institution to elect to pursue ownership of an invention in preference to the government.

This summary is from Wikipedia.

Last updated Oct 11, 2018. Source: Wikipedia

The summary below was written by the Congressional Research Service, which is a nonpartisan division of the Library of Congress, and was published on Nov 20, 1980.

(Measure passed Senate, amended) Amends the Patent and TraDemark laws of the United States to authorize an individual to: (1) cite to the Patent and Trademark Office prior art patents or publications which are pertinent to a claim of a later patent; and (2) request to reexamine a patent to determine whether such a prior patent or publication has any bearing on the patentability of any claim of such patent. Requires the Commissioner of Patents within three months of such a request to make a determination as to whether the cited prior patent raises a substantial new question of the patentability of any claim of the later patent. Authorizes the Commissioner on his or her own initiative to make such a determination at any time. States that a determination that no new question is raised shall be final. Directs the Commissioner, upon determining that there is a new question of patentability, to order and conduct a reexamination. Requires that the patent owner be provided at least two months to file a statement on such question and that the person making the reexamination request be provided two months to respond to such statement. Declares that the patent owner shall be provided an opportunity in any reexamination to amend any claim of the patent in order to distinguish the claim from the prior patent cited or in response to a decision adverse to the patentability of the claim. Authorizes the owner to appeal any adverse decision. Directs the Commissioner, upon the conclusion of any reexamination or appeal proceeding, to issue and publish a certificate cancelling any unpatentable claim, confirming any valid claim, and incorporating any amended claim in the patent. Revises the schedule of fees for Patent Office services. Directs the Commissioner to establish fees for all services and materials relating to patents and trademarks, including application and maintenance. Sets forth the level and schedule of payments for such fees and the procedure for their payment. Makes the revenues from such fees available to carry out the activities of the Patent and Trademark Office. Sets forth the policy of Congress to use the patent system to promote the utilization and marketing of inventions developed under federally supported research and development projects by nonprofit organizations and small business firms. Permits any such organization or firm to elect, within a reasonable amount of time, to retain title to such inventions. Permits Federal agencies which have supported such projects to retain title to inventions through their funding agreements in specified circumstances, including when necessary to conduct foreign intelligence or counterintelligence activities. Requires review of agency determinations that such circumstances exist by the Comptroller General and the Chief Counsel for Advocacy of the Small Business Administration. Directs the Comptroller General to report to Congress on the implementation of this Act by Federal agencies. Enumerates provisions which must be included in funding agreements between a Federal agency and a small business firm or nonprofit organization including provisions: (1) to insure the rights of the Federal Government under this Act; (2) to provide that the agency shall have a nonexclusive, nontransferable, irrevocable and paid-up license to use the invention; (3) to prohibit a nonprofit organization from assigning rights to the invention without the approval of the Federal agency; (4) to prohibit such an organization, other than small business firms, from granting exclusive rights from the earlier of five years from the first commercial use of the invention or eight years from the date of invention; and (5) to require such organizations to use their royalties and earnings to support scientific research or education. Provides that the first commercial use with respect to a product of the invention shall not end the exclusive period for different subsequent products covered by the invention. Authorizes a Federal agency to transfer or assign its rights, acquired from an agency employee as coinventor, to an inventor electing to acquire title to an invention. Requires the head of a Federal agency to approve provisions of a funding agreement which require the licensing to third parties of inventions owned by the contractor. Sets forth terms and conditions under which such approval may be granted. Empowers any Federal agency to require inventors or their assigns to grant licenses in order to: (1) achieve practical application of the invention in its field of use; (2) alleviate health or safety needs; (3) meet requirements for public use specified by Federal regulations; or (4) achieve participation by United States industry in the manufacturing of an invention. Restricts the assignment and licensing of rights by patent holders to foreign owned or controlled firms unless such persons agree that any products embodying the subject invention or produced through the use of the subject invention will be manufactured substantially in the United States where commercially feasible. Authorizes Federal agencies to withhold information on inventions from public disclosure. Specifies the authority of Federal agencies with respect to obtaining patents, granting licenses, and transferring custody of patents. Authorizes the Administrator of General Services to promulgate regulations specifying the terms upon which any federally-owned invention may be licensed. Sets forth the procedure whereby Federal agencies may grant exclusive or partially exclusive licenses in any invention covered by a federally-owned domestic patent or patent application. Prohibits licensing which lessens competition. Directs that small business firms be given preference in exclusive or partially exclusive licensing. Declares that this Act shall take precedence over any other Act in the disposition of inventions. Exempts the Tennessee Valley Authority from the provisions of this Act. Declares that nothing in this Act shall be construed to require the disclosure of intelligence sources or methods or otherwise affect the authority of the Director of Central Intelligence. Directs the Commissioner of Patents and Trademarks to report to Congress within two years on a plan to identify and develop computerized data and retrieval systems to be applied to all aspects of the operation of the Patent and Trademark Office. Sets forth the limitations on the exclusive rights of an owner of a computer program. States that no infringement takes places when copies or adaptions are made for archival purposes or as an essential step in the utilization of such program.