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And so the arguments went, each with its own justifications,
philosophies, and individual case examples. Unfortunately, both of
these extreme positions are oversimplified, only partially correct,
and neither recognizes the many variables involved in the Government's
R&D contracting processes.
Congressional Action (prior to the 93d Congress)
As the issues surrounding the proper allocation of rights to
inventions resulting from government-sponsored research and development
began to draw more public attention in the 1950's and 60's, Congress
approached the subject on a case-by-case basis.
For example, in some
instances, Congress provided guidance to the entire research and devel
42/ opment program of a government agency In other situations, guidance was
Examples of congressional guidance to the entire program of an agency can be found in the Atomic Energy Act, the National Aeronautics and Space Act, and in the National Science Foundation Act, Congress directed the Atomic Energy Commission to acquire all rights to inventions in the atomic energy field except when a determination was made to waive such rights, In other fields, the Commission was given no statutory guidance. The Atomic Energy Act of 1954 provides:
Any invention or discovery useful in the production
shall be vested in, and be the property
(42 U.S.C. $2182)
Congress, however, required NASA to acquire rights to all inventions, regardless of the field of technology involved, unless such rights were waived. The National Aeronautics and Space Act of 1958 (42 U.S.C. $2457 (a)-(j) (hereinafter the Space Act)) provides that applicable inventions become the:
43/ provided only to a particular research and development program,
44/ a program which crossed agency lines. With the exception of the patent
provisions of the National Science Foundation Act of 1950 and the Solid
Waste Disposal Act, these statutory provisions were generally interpreted
to require the Government to take title to all inventions, or to inventions
in a particular technological field.45/
The effect of this case-by-case legislative approach is that agencies
having similar missions have different patent requirements, or even
similar programs within an agency are subject to different patent policies.
For example, space research conducted by NASA requires a "title" approach
exclusive property of the United States .
However, congressional guidance to the National Science Foundation (NSF) was much different, in that congress requested NSF, 42 U.S.C. $1871(a), to allocate rights to inventions:
i in a manner calculated to protect the public interest and the equities of the individual or organization with which the contract or other arrangement is executed.
The patent to the coal research work of the Department of the Interior. provisions of the Saline Water Conversion Act of September 22, 1961, 42 U.S.c. $1954(b) applied only to this specific program of the Department of the Interior.
The Solid Waste Disposal Act of October 20, 1965, 42 U.S.C. $3253, was applicable to both EPA's and HEW's efforts under this Act.
See, for example, the interpretať ion of the Coal Research Act, Department of Interior, Solicitor's Memorandum Opinion, M-36637, 69 1.D. 54 (1962).
pursuant to the Space Act, whereas similar research performed for the
Department of Defense (DOD) is generally subject to a "license" patent
provision. Similarly, health research, perhaps of the same scope and
in the same field, utilizes different patent policies depending on
which agency (e.g. NSF, HEW, DOD, NASA, AEC, AID, etc.) contracted for
In addition to problems encountered by this piecemeal legislative
approach, inconsistencies in legislative terminology and guidelines resulted
46/ from this approach. This is true even where a similar result was sought.
One of the earliest examples of congressional patent policy guidance was given to the Department of Agriculture in the Research and Marketing Act of 1946 (7 U.S.C. $427 (i)). This Act stated that research results should be:
Lavailable to the public through dedication,
In the early 1960's Congress switched to language which simply stated
The degree of flexibility from the original title-taking requirements
47/ of the various statutes also differs in many respects..
of NASA may waive title in the public interest, whereas AEC (ERDA) can waive
its claims under the Act in "appropriate circumstances.148/
In the Coal
Research Act of July 7, 1960, the only exception to the title provision was when the Secretary deemed it to be necessary for national defense ; 49/
but, in the Federal Coal Mine Health and Safety Act of 1969, the exception
to title taking was as the Secretary may find necessary in the public
On the other hand, the Solid Waste Disposal Act requires the
The Congress came full circle in 1969 by going back to the language "... be available to the general public" in the Federal Coal Mine Health and Safety Act (30 U.S.C. $951(c)), except that a degree of flexibility was added by the language
with such exceptions and limitations,
if any, as the Secretary (of HEW] ... may find to be necessary in the public interest. .. This theme was continued in 1972 with the Consumer Product Safety Act (15 U.S.C. $2054(d)) where inventions "... will be made available to the public without charge on a nonexclusive basis" whenever the Federal contribution" .. is more than minimal..."
Also, where greater flexibility was desired, Congress at least once used equitable guidelines, National Science Foundation Act of 1950, supra note 42.
42 U.S.c. $2457(a) & (f) for NASA; 42 U.S.c. $2182 for AEC (ERDA).
30 U.S.C. $666.
30 U.S.C. $951(c).
agencies to adhere to the President's Statement of Government Patent Policy
51/ which presumably controls the allocation of invention rights.
This Act (42 U.S.C. $3253(c)), provides that research results:
. will be made readily available on fair and equitable terms to industries utilizing... and furnishing. solid waste disposal (processes and equipment], [and further that the Secretary of Interior and any other government agencies). .. would make use of, and adhere to, the Statement of Government Patent Policy which was promulgated by the President in his memorandum of October 10, 1963;
See also The Federal Fire Prevention and Control Act of 1974, Pub. L.