Sec. 101.9 Administration of foreign patents. AUTHORITY: E.O. 9865, 3 CFR 1943-1948 Comp., p. 651, E.O. 10096, 3 CFR 1948-1953 Comp., p. 292. SOURCE: Administrative Order 6, 19 FR 3937, June 29, 1954, unless otherwise noted. Redesignated at 34 FR 20383, Dec. 31, 1969. § 101.1 Purpose. The purpose of this part is to provide for the administration of a uniform policy for the Government with respect to the acquisition and protection of foreign rights in and to certain inventions. § 101.2 Authority. Authority for the issuance of this part is provided in Executive Order 9865, dated June 14, 1947 (12 FR 3907), as amended by paragraph 5 of Executive Order 10096, dated January 23, 1950 (15 FR 389). § 101.3 Scope. This part is restricted to inventions to which the Government is entitled to acquire, or may acquire, title or the right to file foreign patent applications or otherwise to seek protection abroad thereon. Exempted from the provisions of this part are (a) inventions within the jurisdiction of the Atomic Energy Commission, except in such cases as the said Commission specifically authorizes the inclusion of an invention, and (b) inventions officially classified for reasons of the national security, until such inventions become declassified. § 101.4 Option to be obtained. (a) When the Government is entitled to acquire foreign rights in and to an invention made by a Government employee, including the right to file foreign patent applications or otherwise to seek protection abroad on the invention, the Government agency concerned shall obtain an option to acquire such rights. (b) When the Government is entitled to acquire foreign rights in and to an invention made pursuant to contract, including the right to file foreign patent applications or otherwise to seek protection abroad on the invention, the Government agency concerned shall, when the agency deems it desirable, obtain an option to acquire such rights. § 101.5 Action by agency concerned. Subject to the approval of the Chairman of the Government Patents Board on all matters of policy, the Government agency concerned shall, with respect to each invention on which the option specified in § 101.4 is obtained or on which the foreign rights have been acquired, determine whether or not and in what foreign jurisdictions patent protection should be sought in the public interest. Upon determining that foreign patent protection is desirable, the agency shall: (a) To the extent of available funds within its own appropriation, take or cause to be taken all action necessary to secure such foreign patent protection of the invention, consistent with existing law and the requirements of the Government; and (b) If sufficient funds are not available within its own appropriation or the agency does not see fit to use funds when available, furnish the Secretary of Commerce as soon as practicable, preferably not later than two months after the filing of the application for United States patent on the invention, through the use of Foreign Patent Protection Reporting Form TS-12, sufficient information concerning the invention and the reasons for its determination with respect to the desirability of foreign patent protection, to enable the Secretary of Commerce to seek the financial support of other interested Government agencies and/or of industry in securing foreign patent protection of the invention. § 101.6 Action by the Department of Com merce. Subject to the approval of the Chairman of the Government Patents Board on all matters of policy, the Secretary of Commerce shall, immediately upon receipt of a Foreign Patent Protection Reporting Form TS-12 on an invention, pursuant to § 101.5(b): (a) Consult with Government agencies and with United States industry ト and commerce, familiar with the technical, scientific, industrial, commercial or other economic or social factors affecting the invention involved, to ascertain possible interest in foreign patent protection of the invention and willingness to finance such protection; and (b) After such consultation and consideration of such factors as the availability of valid patent protection in the countries selected and to the extent of funds made available by Government agencies and/or industry, take or cause to be taken all action necessary to secure such protection of the invention, consistent with existing law and the requirements of the Government. § 101.7 Publication in lieu of patenting. When the foreign rights of the Government with respect to an invention may be adequately protected through prompt disclosure of the invention in lieu of patenting, the Government agency concerned, or the Secretary of Commerce in cooperation with the Government agency concerned, may, with the approval of the Chairman of the Government Patents Board, cause the invention to be disclosed by publication thereof. § 101.8 Foreign filing by inventor. When the foreign rights in and to an invention are not assigned to the Government but the Government may, at its option or on request, acquire such rights and determines not to cause an application to be filed in any particular foreign country or otherwise to seek protection of the invention, or fails to take such action: (a) within six months of the filing of an application for United States patent on the invention, or (b) within six months of declassification of an invention previously under a security classification, or (c) within six months after disclosure of an invention to the Government pursuant to contract, whichever is later, such determination or such failure to act shall constitute a decision by the Government to leave such rights to the inventor subject, to the extent practicable, to a nonexclusive, irrevocable, royalty-free license to the Government in any patent which may issue thereon in any foreign country, including the power to issue sublicenses for use in behalf of the Government and/or in furtherance of the foreign policies of the Government. § 101.9 Administration of foreign patents. The functions and duties of the Chairman of the Government Patents Board under paragraphs 4 and 5 of Executive Order 9865, as amended by paragraph 5 of Executive Order 10096, are, until further notice, hereby delegated to the Secretary of Commerce: Provided, however, That all matters of policy arising under this delegation shall be subject to the approval of the Chairman of the Government Patents Board. § 101.10 Reports and records. (a) Each Government agency shall report promptly to the Secretary of Commerce, with a copy to the Chairman of the Government Patents Board, all actions by the agency taken pursuant to §§ 101.5 and 101.7, as well as disclosures by publication by the agency made pursuant to paragraph 2(a) of Executive Order 10096. (b) The Secretary of Commerce shall maintain adequate records and other necessary files, to provide readily available information on all inventions included under the provisions of §§ 101.5, 101.6, 101.7, and paragraph (a) of this section, and shall submit to the Chairman of the Government Patents Board a written report quarterly, or otherwise as the Chairman may request, on all operations of this program during the preceding calendar quarter or other period designated. Sec. 102.5 Licenses under foreign patents. 102.6 Reports and records. AUTHORITY: E.O. 9865, 12 FR 3907, 3 CFR, 1947 Supp., E.O. 10096, 15 FR 389, 3 CFR, 1950 Supp. SOURCE: Administrative Order 7, 19 FR 3938, June 29, 1954, unless otherwise noted. Redesignated at 34 FR 20383, Dec. 31, 1969. § 102.1 Purpose. The purpose of this part is to provide for the administration of a uniform policy for the Government with respect to the licensing of foreign patents acquired by the Government. § 102.2 Authority. Authority for the issuance of this part is provided in Executive Order 9865, dated June 14, 1947 (12 FR 3907), as amended by paragraph 5 of Executive Order 10096, dated January 23, 1950 (15 FR 389). § 102.3 Scope. This part is to implement and supplement § 101.9 of this chapter,1 with respect to inventions on which the Government has acquired foreign patents, except inventions within the jurisdiction of the Atomic Energy Commission which are not specifically authorized by said Commission for inclusion within the terms of this part. § 102.4 The Department of State. Pursuant to Executive Orders 9865 and 10096, it is the responsibility of the Department of State, in consultation with the Chairman of the Government Patents Board and the Secretary of Commerce, to seek arrangements among governments under which each government and its nationals shall have access to the foreign patents of the other participating governments. § 102.5 Licenses under foreign patents. (a) Licenses under foreign patents acquired by the United States Government shall be granted by the Secretary of Commerce to nationals of the 'See Part 101 of this chapter (A.O. 6). United States on a nonexclusive, revocable, royalty-free basis, except in such cases as the Secretary of Commerce, with the approval of the Chairman of the Government Patents Board, shall determine it to be inconsistent with the public interest to issue such licenses on a nonexclusive, royalty-free basis. (b) Licenses under foreign patents acquired by the United States Government may be granted by the Secretary of Commerce to a foreign government or its nationals pursuant to any arrangements which may come into force with such foreign government as provided in § 102.4, or, in the absence of such arrangements, on such terms as the Secretary of Commerce, with the approval of the Chairman of the Government Patents Board and of the Secretary of State, shall determine, in accordance with law, to be in the public interest, subject to outstanding licenses. (c) With respect to foreign patents relating to matters of public health, licenses under such patents issued to the United States Government may be granted by the Secretary of Commerce to a foreign government or its nationals on a nonexclusive, revocable, royalty-free basis unless the Chairman of the Government Patents Board, on the recommendation of the Secretary of State, shall determine otherwise, regardless of whether such foreign government is a party to the arrangements specified in § 102.4. § 102.6 Reports and records. The Secretary of Commerce shall maintain adequate records and other necessary files, to provide readily available information on all licenses granted under § 102.5, and shall submit to the Chairman of the Government Patents Board a written report, with a copy to the Secretary of State, quarterly or otherwise as the Chairman may request, on all operations of the licensing program during the preceding calendar quarter or other period designated. 80-117 0-81--15 |