is "...consistent with the policy of this Section.' In the Joint Committee's report on Atomic Energy on S.2391, (87th Cong.) which added this language to Section 152, the Joint Committee stated that the language ...will make it clear that any waiver will have to be Similarly, the Nonnuclear Conference Report on S.1283 stated, in reference to Section 9, that the "...provisions provide for the Federal Government normally to retain title to inventions developed under ERDA 49/ contracts...." (emphasis added). Accordingly, it appears that the patent policies set forth in Section 152 and Section 9 have been given similar legislative interpretations. Although Section 9 provides more detailed guidance in regard to granting waivers than does Section 152, this guidance is of the type that would normally be followed in considering any patent waiver. This guidance concerns the impact of patent waiver on the government's research, development and demonstration effort, the ultimate objectives of the applicable government program, and the end use contemplated for the program results. The Conference Committee on S.1283 stated that its guidelines have been adopted primarily from NASA and AEC regulations, and the 50/ Presidential Patent Policy Statement. 49/ See Chapter III, Section B. 1, and Appendix A.14. 51/ In the Nuclear Data suit against the AEC which challenged AEC's waiver authority and procedures, the patent counsel of AEC testified on the factors to which he gave consideration in granting a waiver to an identified invention. The testimony shows that substantially the same factors as the ones set forth in subsections 9(d) and 9(e) of the Non nuclear Energy Act have been used in waiver determinations for identified 52/ inventions under the Atomic Energy Act. Inasmuch as the guidelines set forth in Section 9 are similiar to that previously used by AEC and are of the scope which should properly be used in determining the public interest in any flexible patent policy, it is our view that ERDA's nuclear and nonnuclear patent policies can properly be harmonized by utilizing the waiver guidelines and factors for consideration required by Section 9 with the considerations for the special field of atomic energy set forth in the Atomic Energy Act. 51/ 52/ Nuclear Data v. Atomic Energy Commission, 364 F. Supp. 423, (1973). Deposition, Roland A. Anderson, Nuclear Data v. Atomic Energy Commission, February 24, 1974, at 197-198. See Appendix A.10. Mr. Anderson, former AEC Assistant General Counsel for Patents, when asked to enumerate "the factors you considered in deciding to waive the rights," replied: to the best of my recollection factors that were considered were: the nature of the invention, the field of the invention, the potential utilization of the invention, the relationship of the invention to the prior area, the field of Atomic Energy and in other fields, whether the Commission was promoting the production of the subject matter of the invention or was primarily interested in the research and development aspects, 2. Temporary ERDA-PR Patent Regulations 53/ Since the research and development procurement process was an ongoing activity on January 19, 1975, the day ERDA came into existence,and contracts were being awarded under policies and contract clauses of the AEC, the Department of Interior, the National Science Foundation, and the Environmental Protection Agency, by the various organizations realigned by the Energy Reorganization Act into ERDA, temporary patent policy regulations were necessary to obtain some measure of compliance with the 541 applicable statutes. ERDA Immediate Action Directive 9100-1- was issued establishing a temporary patent policy which provided that the various components of the ERDA could use their preexisting policies so long as the contractor was permitted to retain only a nonexclusive license 52/ continued 53/ whether the Commission was manufacturing devices of the nature of Executive Order 11834 (Jan. 15, 1975). 54/ See Appendix B.1.; the regulations were published in 40 Fed. Reg. 16848-16849, (April 15, 1975). to inventions, the right to request greater rights after an invention was identified, and the right to file foreign patent applications where ERDA elects not to do so. All other situations were indicated as constituting a waiver for which the Administrator's approval was necessary. Brief pro cedures were also included to indicate how waiver requests should be handled. This interim approach has resulted in many different contract patents clauses being used by various organizational entities of ERDA. 3. Proposed Permanent ERDA-PR Patent Regulations The rules and procedures applicable to procurement contracts of the various Federal departments and agencies authorized by law is generally regulated by the FPR for civilian agencies and the Armed Services Procure55/ ment Regulations (ASPR) for the military departments. While the ASPR has 56/ ERDA procurements are subject had detailed patent provisions throughout the years, the FPR has not, until recently, covered this subject. to the general requirements of the FPR unless specifically exempted therefrom, by a statutory requirement or a FPR deviation. 571 ERDA's patent 55/ 56/ The FPR provisions on the Allocation of Rights in Inventions was published on May 7, 1975 to become effective on June 5, 1975, 40 Fed. Reg. 19814-19823 (correction 40 Fed. Reg. 28067, July 3, 1975). The ASPR recently modified its patent provisions and adapted, for the most part, the language of the FPR, ASPR-DPC #75-3, August 29,1975 Patent Rights. 57/ The ERDA Procurement Regulations implement and supplement the FPR and are a part of the FPR system, ERDA-PR $9-1.102. regulations, therefore, are not only governed by Section 152 of the Atomic Energy Act and Section 9 of the Nonnuclear Energy Act, but also by Utilizing these three documents as guidance, the provisions of the FPR. ERDA published on October 15, 1975, proposed policies and procedures on patents, data and copyrights which would, when finalized, form Part 9-9 58/ of the ERDA Procurement Regulations,- (hereafter referred to as the ERDA-PR). The proposed ERDA-PR patent regulations were published for public comment and were made available for immediate permissive use. These proposed regulations were patterned after, and follow quite closely, the precedures and language of the FPR patent provisions. The AEC patent clauses which implemented the Atomic Energy Act consisted of a few short paragraphs which did not address many of the procedural or administrative matters that are covered in the clauses of the recently issued FPR and ASPR patent provisions. By following the FPR, the procedural part of the regulations, as well as the clauses themselves, have been substantially lengthened and in a sense made more complex. This complexity, and even the length of the regulations, should be offset by the fact that substantially identical procedures and language will be used by every govern ment agency. 58/ 40 Fed. Reg. 48363-48380 (1975). See Appendix B.2. |