Nonmilitary utilization. 42 U.S.C. Sec. 2183. absence of false material statements or nondisclosure of "SEC. 153. NONMILITARY UTILIZATION. "a. The Commission may, after giving the patent owner an opportunity for a hearing, declare any patent to be affected with the public interest if (1) the invention or discovery covered by the patent is of primary importance in the production or utilization of special nuclear material or atomic energy; and (2) the licensing of such invention or discovery under this section is of primary importance to effectuate the policies and purposes of this Act. "b. Whenever any patent has been declared affected with the public interest, pursuant to subsection 153 a. "(1) the Commission is hereby licensed to use the invention or discovery covered by such patent in performing any of its powers under this Act; and 12 Public Law 87-206 (75 Stat. 475) (1961), sec. 10, amended sec. 152. Before amendment this section read as follows: "SEC. 152. INVENTIONS CONCEIVED DURING COMMISSION CONTRACTS.Any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, made or conceived under any contract, subcontract, arrangement. or other relationship with the Commission, regardless of whether the contract or arrangement involved the expenditure of funds by the Commission, shall be deemed to have been made or conceived by the Commission, except that the Commission may waive its claim to any such invention or discovery if made or conceived by any person at or in connection with any laboratory under the jurisdiction of the Commission as provided in section 33, or under such other circumstances as the Commission may deem appropriate. No patent for any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within 30 days after request therefor by the Commissioner of Patents, a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of, in connection with or under the terms of any contract, subcontract, arrangement, or other relationship with the Commission, regardless of whether the contract or arrangement involved the expenditure of funds by the Commission. The Commissioner of Patents shall forthwith forward copies of the application and the statement to the Commission. "The Commissioner of Patents may proceed with the application and issue the patent to the applicant (if the invention or discovery is otherwise patentable) unless the Commission, within 90 days after receipt of copies of the application and statement, directs the Commissioner of Patents to issue the patent to the Commission (if the invention or discovery is otherwise patentable) to be held by the Commission as the agent of and on behalf of the United States "If the Commission files such a direction with the Commissioner of Patents, and if the applicant's statement claims, and the applicant still believes, that the invention or discovery was not made or conceived in the course of, in connection with, or under the terms of any contract, subcontract, arrangement, or other relationship with the Commission entitling the Commission to take title to the application or the patent the applicant may, within 30 days after notification of the filing of such a direction. request a hearing before a Board of Patent Interferences. The Board shall have the power to hear and determine whether the Commission was entitled to the direction filed with the Commissioner of Patents. The Board shall follow the rules and procedures established for interference cases and an appeal may be taken by either the applicant or the Commission from the final order of the Board to the Court of Customs and Patent Appeals in accordance with the procedures governing the appeals from the Board of Patent Interferences. "If the statement filed by the applicant should thereafter be found to contain false material statements any notification by the Commission that it has no objections to the issuance of a patent to the applicant shall not be deemed in any respect to constitute a waiver of the provisions of this section or of any applicable civil or criminal statute, and the Commission may have the title to the patent transferred to the Commission on the records of the Commissioner of Patents in accordance with the provisions of this section." (2) any person may apply to the Commission for a nonexclusive patent license to use the invention or discovery covered by such patent, and the Commission shall grant such patent license to the extent that it finds that the use of the invention or discovery is of primary importance to the conduct of an activity by such person authorized under this Act. "c. Any person "(1) who has made application to the Commission for a license under sections 53, 62, 63, 81, 103, or 104, or a permit or lease under section 67; "(2) to whom such license, permit, or lease has been issued by the Commission; "(3) who is authorized to conduct such activities as such applicant is conducting or proposes to conduct under a general license issued by the Commission under sections 62 or 81; or "(4) whose activities or proposed activities are authorized under section 31, may at any time make application to the Commission for a patent license for the use of an invention or discovery useful in the production or utilization of special nuclear material or atomic energy covered by a patent. Each such application shall set forth the nature and purpose of the use which the applicant intends to make of the patent license, the steps taken by the applicant to obtain a patent license from the owner of the patent, and a statement of the effects, as estimated by the applicant, on the authorized activities which will result from failure to obtain such patent license and which will result from the granting of such patent license. "d. Whenever any person has made an application to the Commission for a patent license pursuant to subsection 153 c. - "(1) the Commission, within 30 days after the filing of such application, shall make available to the owner of the patent all of the information contained in such application, and shall notify the owner of the patent of the time and place at which a hearing will be held by the Commission; (2) the Commission shall hold a hearing within 60 days after the filing of such application at a time and place designated by the Commission; and "(3) in the event an applicant applies for two or more patent licenses, the Commission may, in its discretion, order the consolidation of such applications, and if the patents are owned by more than one owner, such owners may be made parties to one hearing. "e. If, after any hearing conducted pursuant to subsection 153 d., the Commission finds that "(1) the invention or discovery covered by the patent is of primary importance in the production or Injunctions. 42 U.S.C. sec. 2184. utilization of special nuclear material or atomic energy; "(2) the licensing of such invention or discovery is of primary importance to the conduct of the activities of the applicant; "(3) the activities to which the patent license are proposed to be applied by such applicant are of primary importance to the furtherance of policies and purposes of this Act; and "(4) such applicant cannot otherwise obtain a patent license from the owner of the patent on terms which the Commission deems to be reasonable for the intended use of the patent to be made by such applicant, the Commission shall license the applicant to use the invention or discovery covered by the patent for the purposes stated in such application on terms deemed equitable by the Commission and generally not less fair than those granted by the patents or by the Commission to similar licensees for comparable use. "f. The Commission shall not grant any patent license pursuant to subsection 153 e. for any other purpose than that stated in the application. Nor shall the Commission grant any patent license to any other applicant for a patent license on the same patent without an application. being made by such applicant pursuant to subsection 153 c., and without separate notification and hearing as provided in subsection 153 d., and without a separate finding as provided in subsection 153 e. "g. The owner of the patent affected by a declaration or a finding made by the Commission pursuant to subsection 153 b. or 153 e. shall be entitled to a reasonable royalty fee from the licensee for any use of an invention or discovery licensed by this section. Such royalty fee may be agreed upon by such owner and the patent licensee, or in the absence of such agreement shall be determined for each patent license by the Commission pursuant to subsection 157 c. "h. The provisions of this section shall apply to any patent the application for which shall have been filed before September 1, 1979.13 "SEC. 154. INJUNCTIONS.-No court shall have jurisdiction or power to stay, restrain, or otherwise enjoin the use of any invention or discovery by a patent licensee, to the extent that such use is licensed by subsection 153 b. or 153 e. If, in any action against such patent licensee, the court shall determine that the defendant is exercising 13 Public Law 86-50 (73 Stat. 81) (1959). sec. 114, amended subsec. 153 h. by changing the date from Sept. 1, 1959, to Sept. 1, 1964. Public Law 88-394 (78 Stat. 376) (1964), sec. 1, amended subsec. 153 h. by changing the date from Sept. 1, 1964, to Sept. 1, 1969. Public Law 91161 (83 Stat. 444) (1969), sec. 1. amended subsec. 153 h. by changing the date from Sept. 1. 1969, to Sept. 1, 1974. Public Law 93-377, sec. 6 (88 Stat. 475) (1974), amended subsec. 153 h. by changing the date from Sept. 1, 1974 to Sept. 1, 1979. such license, the measure of damages shall be the royalty fee determined pursuant to subsection 157 c., together with such costs, interest, and reasonable attorney's fees as may be fixed by the court. If no royalty fee has been determined, the court shall stay the proceeding until the royalty fee is determined pursuant to subsection 157 c. If any such patent licensee shall fail to pay such royalty fee, the patentee may bring an action in any court of competent jurisdiction for such royalty fee, together with such costs, interest, and reasonable attorney's fees as may be fixed by the court. "SEC. 155. PRIOR ART.-In connection with applications for patents covered by this Chapter, the fact that the invention or discovery was known or used before shall be a bar to the patenting of such invention or discovery even though such prior knowledge or use was under secrecy within the atomic energy program of the United States. "SEC. 156. COMMISSION PATENT LICENSES.-The Commission shall establish standard specifications upon which it may grant a patent license to use any patent held by the Commission or declared to be affected with the public interest pursuant to subsection 153 a. Such a patent license shall not waive any of the other provisions of this Act. Prior art. 42 USC. sec. 2185. Commission 12 U.S.C. sec. 2186. patent licenses. 42 Compensation, awards, and royalties. 42 U.S.C. sec. 2187. "SEC. 157. COMPENSATION, AWARDS, AND ROYALTIES. "a. PATENT COMPENSATION BOARD.-The Commission shall designate a Patent Compensation Board to consider applications under this section. The members of the Board shall receive a per diem compensation for each day spent in meetings or conferences, and all members shall receive their necessary traveling or other expenses while engaged in the work of the Board. The members of the Board may serve as such without regard to the provisions of sections 281, 283, or 284 of Title 18 of the United States Code, except in so far as such 62 Stat. 697. sections may prohibit any such member from receiving compensation in respect of any particular matter which directly involves the Commission or in which the Com mission is directly interested. "b. ELIGIBILITY.— "(1) Any owner of a patent licensed under section 158 or subsections 153 b. or 153 e., or any patent licensee thereunder may make application to the Commission for the determination of a reasonable royalty fee in accordance with such procedures as the Commission by regulation may establish. "(2) Any person seeking to obtain the just compensation provided in section 151 shall make application therefor to the Commission in accordance with such procedures as the Commission may by regulation establish. "(3) Any person making any invention or discovery useful in the production or utilization of special nuclear Eligibility. 43-785 0 - 80 - 7 Standards. Monopolistic 42 U.S.C. sec. 2188. material or atomic energy, who is not entitled to com- "(1) In determining a reasonable royalty fee as provided for in subsection 153 b., or 153 e., the Commission shall take into consideration (A) the advice of the Patent Compensation Board; (B) any defense, general or special, that might be pleaded by a defendant in an action for infringement; (C) the extent to which, if any, such patent was developed through federally financed research; and (D) the degree of utility, novelty, and importance of the invention or discovery, and may consider the cost to the owner of the patent of developing such invention or discovery or acquiring such patent. "(2) In determining what constitutes just compensation as provided for in section 151, or in determining the amount of any award under subsection 157 b. (3), the Commission shall take into account the considerations set forth in subsection 157 c. (1) and the actual use of such invention or discovery. Such compensation may be paid by the Commission in periodic payments or in a lump sum. "d. PERIOD OF LIMITATIONS.-Every application under this section shall be barred unless filed within six years after the date on which first accrues the right of such reasonable royalty fee, just compensation, or award for which such application is filed. 15 "SEC. 158. MONOPOLISTIC USE OF PATENTS.-Whenever use of patents. the owner of any patent hereafter granted for any invention or discovery of primary use in the utilization or production of special nuclear material or atomic energy is found by a court of competent jurisdiction to have intentionally used such patent in a manner so as to violate any of the antitrust laws specified in subsection 105 a., there may be included in the judgment of the court, in its discretion and in addition to any other lawful sanctions, a requirement that such owner license such patent to any other licensee of the Commission who demonstrates a need therefor. If the court, at its discretion, deems that such licensee shall pay a reasonable royalty to 14 Public Law 93-276 (88 Stat. 115) (1974), sec. 201, amended this section by substituting the words "after consultation with" for the words "upon the recommendation of". 15 Public Law 87-206 (75 Stat. 475) (1961). sec. 11. added subsec. 4. |