and Senators Hart and Long stated: We should note that the compromise contains many highly inter- 2. Section 9 of the Nonnuclear Energy Act Section 9 of the Nonnuclear Energy Act is the most comprehensive Government patent policy provision ever passed by the Congress. The Conference Committee on S. 1283 in their report to both Houses pointed out that the basic structure of Section 9 was derived from the Space Act with some modifications derived from the Atomic Energy Act. Some of the detailed criteria of Section 9 were stated as being adopted primarily from NASA and AEC regulations, as well as from the Presidential Patent Policy Statement. The Conference Committee also stated that the in 40/ clusion of a detailed patent policy provision represented the conclusion of that Committee that it is both necessary and appropriate for Congress to delineate the basic and minimum considerations and conditions under which the ERDA would allocate principal rights to inventions, or license 41/ ERDA owned inventions. Subsection 9(a) of the Act states that whenever an invention is made or conceived in the course of or under any contract of the Administration other than nuclear energy research and development pursuant to the Atomic Energy Act, and the Administrator makes either of two determinations regarding the persons who made the invention, then title to such inventions shall be vested in the United States unless the Administrator waives all or any part of such rights in conformity with the provisions of Section 9. This subsection is based on Section 305(a) of the Space Act. However, a most important concept adopted in this subsection was that for administrative ease, the patent policy of Section 9 was made to apply to all ERDA research, development, and demonstration contracts other than those covered by the Atomic Energy Act. By this requirement, Congress provided that the patent policies of ERDA would be controlled by only two Acts, the 42/ Atomic Energy Act and the Nonnuclear Energy Act. This change was important to assure that ERDA's nonnuclear R&D was not covered by multiple and somewhat inconsistent legislation in view of its activities being a combination of the responsibilities and organization of several Government agencies, 43/ each operating to some extent under their respective authorities. 42/ Id. 43/ In particular, this change insured that ERDA's fossil energy research and development would be controlled by Section 9 of the Nonnuclear Energy Act, and not by the inflexible patent language contained in the Coal Research Act (30 U.S.C. $666) which had been applicable to the Department of Interior Office of Coal Research (now ERDA's Fossil Energy Div.). 42 U.S.C. $5814 (1974). Another important change made in subsection 9(a) from the language of the Space Act was that the phrase "made or conceived in the course of or under any contract" was inserted in lieu of the expression "made in the performance of any work under any contract." This language was taken from the Atomic Energy Act in order that the requirements for relating an invention to a contract would be the same in ERDA's nuclear and nonnuclear activities. made. In addition several other changes of a technical nature were This Subsection 9(b) requires that each contract entered into by ERDA shall contain provisions effective to insure the reporting of inventions. section was taken directly from the Space Act and recognized the need for the reporting of inventions to ERDA by its contractors. Subsection 9(c) was also derived from the Space Act except that additional guidance was provided in the form of four stated objectives which the Administrator should seek to accomplish in making waiver determina tions. Section 9(c) states, as does the Space Act, that the Administrator may waive all or any part of the rights to any invention or class of inventions made or to be made under any contract with the Administration if he determines that the interests of the United States and the general public will best be served by such waiver. However, in making waiver determinations, the Administrator was directed to have the following objectives: making the benefits of the energy research, development, and The Nonnuclear Conference Report makes two important points on this provision clear. First, it recognizes that in any single waiver situation, all four of these objectives may not be obtainable; i.e., in some situations participation may be more important than fostering competition, while in others the reverse might be true. The Conference Committee states that it expected that over the long run all four of these objectives would be obtained.- Secondly, the Report makes clear that waiver decisions of the 45/ Administrator are not subject to a public hearing requirement. 44/ Subsection 9(d) sets forth eleven specific factors which the Administrator is to consider in making waiver determinations at the time of 45/ Id. This is an important statement in view of the fact that several Government agencies have been sued on the grounds that their policy of permitting contractors to retain title was not expressly authorized by Congress and in at least one case argued that hearings would be necessary in order for statutory waiver to be granted. contracting. These factors are based on the experience of AEC, NASA and other Federal agencies under the Presidential Patent Policy Statement. the contribution that the contractor has made or will make to commercialization of contract results the contribution that the Government has made or will make to commercialization of the contract results the purpose of the contract and the intended use of the contract results -- the effect of the waiver on public health, safety and welfare, and its effect on competition --the extent to which Universities have a technology transfer capability Subsection 9(e) sets forth considerations similar to the considerations for advance waivers that must be taken into account in waiving rights to identified inventions made under ERDA contracts. ERDA has the authority to make both advance waivers at the time of contracting and case-by-case waivers after an invention is identified. Accordingly, Section 9(c), (d) and (e) represent a departure from the previous manner in which patent waiver determinations has been treated in prior legislation. In adopting these provisions, Congress rejected the |