TABLE III, WAIVER ACTIONS OF IDENTIFIED INVENTIONS (cont'd) DISPOSITION Granted revocable nonexclusive license in TABLE III, WAIVER ACTIONS OF IDENTIFIED INVENTIONS (cont'd) DISPOSITION Granted waiver of domestic rights only with -169 The authority for ERDA to issue licenses under ERDA-owned patents derives from both the Atomic Energy Act and the Nonnuclear Energy Act. Section 156 of the Atomic Energy Act provides authority to establish standard specifications upon which the ERDA (formerly AEC) may grant a patent license to practice any patent held by ERDA or declared to be affected with the public interest pursuant to subsection 153(a) of the Atomic Energy Act. Further, subsection 161 (g) of the Atomic Energy 2/ Act gives the Administrator authority to acquire, purchase, lease, and hold real and personal property, including patents, as agent of and on behalf of the United States, and to sell, lease, grant, and dispose of such real and personal property as provided in the Atomic Energy Act. Subsection 9(g) of the Nonnuclear Energy Act gives the Administrator the authority to determine and promulgate regulations specifying the terms and conditions under which licenses may be granted under inventions owned by the United States. This subsection also sets forth express authority for ERDA to grant exclusive or partially exclusive licenses under certain circumstances and subject to the conditions of subsection 9(h). Exclusive or partially exclusive licenses may be granted pursuant to subsection 9(g) after notice and opportunity for hearing is given to the general public if it is determined that: the interest of the United States and the general public will best be served by the license; - the invention has not and is not likely to achieve the desired - exclusive licensing is necessary to achieve commercial use; and the terms of exclusivity are not greater than necessary to ment of costs and a reasonable profit. 3/ ERDA may not grant such exclusive rights if the Administrator determines that the grant of such a license will tend to substantially lessen competition or result in undue concentration of market power in any section of the country in any line of commerce to which the technology of the invention relates. The Nonnuclear Conference Report accompanying this legislation indicates that, in considering these antitrust aspects of exclusive licensing, it is not intended that either the Administrator supplant the high level effort expended by the Justice Department or the Federal Trade Commission, or that ERDA undertake the elaborate type. of evidentiary record generally required in an antitrust proceeding. The Nonnuclear Energy Act sets forth minimum terms and conditions in subsection 9(h) for the grant of an exclusive or partially exclusive license that are substantially identical to those terms and conditions 3/ H.R. Rep. No. 93-1563, 93rd Cong., 2d. Sess. (1974). See Appendix A.14. which apply to a waiver of rights to the contractor or inventor. These terms and conditions include reporting requirements, and the reservation of certain rights in the United States including "march-in" rights.4/ ERDA has not yet issued licensing regulations pursuant to the 5/ statutory authority contained in the Nonnuclear Energy Act. Patent licensing regulations embracing both domestic and foreign patents have 6/ been promulgated pursuant to the authority of the Atomic Energy Act. Under these regulations, a list of inventions available for domestic licensing is published in the Federal Register, the U.S. Patent and Trademark Office Official Gazette, and in one other publication.7/ 4/ These terms and conditions are discussed in detail in Chapter III, Section B.2 of this report, in connection with the waiver provisions. 5/ Nor have any patents been issued yet on inventions made pursuant to this Act. 6/ 10 C.F. R. Part 81; AEC published its domestic patent licensing regulations at 38 Fed. Reg. 7318 (March 20, 1973); and its foreign patent licensing regulations at 38 Fed. Reg. 8241 (March 30, 1973). These regulations were redesignated as 10 C.F.R. Part 781 soon after the creation of ERDA on January 19, 1975. 40 Fed. Reg. 8794, (March 3, 1975). 7/ Government Inventions For Licensing, published weekly by the Dept. of Commerce, National Technical Information Service. See quarterly publication of ERDA entitled, U.S. Patents and Patent Applications For Licensing. |