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of the Office or produce any document in any legal proceeding without the prior authorization of the Solicitor. Where appropriate, an Office employee may be instructed in writing by the Commissioner, Solicitor, or other appropriate Office employee not to give testimony or produce a document. Without prior approval, no Office employee shall answer inquiries from a person not employed by the Department of Commerce regarding testimony or documents subject to a demand or a potential demand under the provisions of this part. All inquiries involving a demand or potential demand on an Office employee shall be referred to the Solicitor.

(b) A certified copy of a document, not otherwise available under chapter I of this title, will be provided for use in a legal proceeding upon written request and payment of applicable fees required by law.

(c)(1) Request for testimony or document. A request for testimony of an Office employee or document shall be mailed or hand-delivered to the Office of the Solicitor. The mailing address of the Office of the Solicitor is Box 8, Patent and Trademark Office, Washington, DC 20231.

(2) Subpoenas. A subpoena for testimony by an Office employee or a document shall be served in accordance with the Federal Rules of Civil or Criminal Procedure as appropriate, or applicable state procedure, and a copy of the subpoena shall be sent to the Solicitor.

(3) Affidavit. Every request and subpoena shall be accompanied by an affidavit or declaration under 28 U.S.C. 1746 or, if an affidavit or declaration is not feasible, a written statement setting forth the title of the legal proceeding, the forum, the requesting party's interest in the legal proceeding, the reasons for the request or subpoena, a showing that the desired testimony or document is not reasonably available from any other source, and if testimony is requested, the intended use of the testimony, a general summary of the testimony desired, and a showing that no document could be provided and used in lieu of testimony. The purpose of this requirement is to permit the Solicitor to make an in

formed decision as to whether testimony or production of a document should be authorized.

(d) Any Office employee who is served with a demand shall immediately notify the Office of the Solicitor.

(e) The Solicitor may consult or negotiate with an attorney for a party or the party, if not represented by an attorney, to refine or limit a demand so that compliance is less burdensome or obtain information necessary to make the determination required by paragraph (c) of this section. Failure of the attorney or party to cooperate in good faith to enable an informed determination to be made under this part may serve as the basis for a determination not to comply with the demand.

(f) A determination under this part to comply or not to comply with a demand is not an assertion or waiver of privilege, lack of relevance, technical deficiencies or any other ground for noncompliance. The Commissioner reserves the right to oppose any demand or any legal ground independent of any determination under this part.

§ 15a.5 Testimony of Office employees in proceedings involving the United States.

(a) An Office employee may not testify as an expert or opinion witness for any party other than the United States.

(b) When appropriate, the Solicitor may authorize an Office employee to give testimony as an expert or opinion witness on behalf of the United States. Expert or opinion testimony on behalf of the United States will not be authorized in any legal proceeding involving the validity or enforceability of a patent or registered trademark.

(c) Whenever, in any legal proceeding involving the United States, a request is made by an attorney representing or acting under the authority of the United States, the Solicitor will make all necessary arrangements for the Office employee to give testimony on behalf of the United States. Where appropriate, the Solicitor may require reimbursement to the Office of the expenses associated with an Office employee giving testimony on behalf of the United States.

15a.6 Legal proceedings between private litigants.

(a) Testimony by an Office employee and production of documents in a legal proceeding not involving the United States shall be governed by § 15a.4.

(b) If an Office employee is authorized to give testimony in a legal proceeding, the testimony, if otherwise proper, shall be limited to facts within the personal knowledge of the Office employee. An Office employee is prohibited from giving expert or opinion testimony, answering hypothetical or speculative questions, or giving testimony with respect to subject matter which is privileged. If an Office employee is authorized to testify in connection with the employee's involvement or assistance in a quasi-judicial proceeding which took place before the Office, that employee is further prohibited from giving testimony in response to questions which seek:

(1) Information about that employee's:

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a trademark application, registration, opposition, cancellation, interference or concurrent use file.

(D) Any Office manual of practice. (E) Office regulations.

(F) Patent, trademark, or other law. (G) The responsibilities of another Office employee.

(vii) Reliance on particular facts or arguments.

(2) To inquire into the manner in and extent to which the employee considered or studied material in performing the quasi-judicial function.

(3) To inquire into the bases, reasons, mental processes, analyses, or conculsions of that Office employee in performing the quasi-judicial function.

§ 15a.7 Procedures when an Office employee receives a subpoena.

(a) Any Office employee who receives a subpoena shall immediately forward the subpoena to the Office of the Solicitor. The Solicitor will determine the extent to which an Office employee will comply with the subpoena.

(b) If the Office employee is not authorized to comply with the subpoena, the Office employee shall appear at the time and place stated in the subpoena, produce a copy of part 15a of title 15 and a copy of this part, and respectfully refuse to provide any testimony or produce any document. United States ex rel. Touhy v. Ragen, 340 U.S. 462 (1951).

(c) When necessary or appropriate, the Solicitor will request assistance from the Department of Justice or a U.S. Attorney or otherwise assure the presence of an attorney to represent the interests of the Office or an Office employee.

167-137 0-96--10

SUBCHAPTER B-GOVERNMENT INVENTIONS JURISDICTION

PART 100-[RESERVED]

PART 101-ACQUISITION AND PROTECTION OF FOREIGN RIGHTS IN INVENTIONS

Sec.

101.1 Purpose.

101.2 Authority.

101.3 Scope.

101.4 Option to be obtained.

101.5 Action by agency concerned.

101.6 Action by the Department of Commerce.

101.7 Publication in lieu of patenting. 101.8 Foreign filing by inventor.

101.9 Administration of foreign patents. 101.10 Reports and records.

101.11 Dissemination of this part.

AUTHORITY: E.O. 9865, 3 CFR 1943-1948 Comp., p. 651, E.O. 10096, 3 CFR 1948-1953 Comp., p. 292.

SOURCE: Administrative Order 6, 19 FR 3937, June 29, 1954, unless otherwise noted. Redesignated at 34 FR 20383, Dec. 31, 1969.

§ 101.1 Purpose.

The purpose of this part is to provide for the administration of a uniform policy for the Government with respect to the acquisition and protection of foreign rights in and to certain inventions.

§ 101.2 Authority.

Authority for the issuance of this part is provided in E.O. 9865, dated June 14, 1947 (12 FR 3907), as amended by paragraph 5 of E.O. 10096, dated January 23, 1950 (15 FR 389).

§ 101.3 Scope.

This part is restricted to inventions to which the Government is entitled to acquire, or may acquire, title or the right to file foreign patent applications or otherwise to seek protection abroad thereon. Exempted from the provisions of this part are (a) inventions within the jurisdiction of the Atomic Energy Commission, except in such cases as the said Commission specifically authorizes the inclusion of an invention, and (b) inventions officially classified for reasons of the national security,

until such inventions become declassified.

§ 101.4 Option to be obtained.

(a) When the Government is entitled to acquire foreign rights in and to an invention made by a Government employee, including the right to file foreign patent applications or otherwise to seek protection abroad on the invention, the Government agency concerned shall obtain an option to acquire such rights.

(b) When the Government is entitled to acquire foreign rights in and to an invention made pursuant to contract, including the right to file foreign patent applications or otherwise to seek protection abroad on the invention, the Government agency concerned shall, when the agency deems it desirable, obtain an option to acquire such rights.

§ 101.5 Action by agency concerned.

Subject to the approval of the Chairman of the Government Patents Board on all matters of policy, the Government agency concerned shall, with respect to each invention on which the option specified in §101.4 is obtained or on which the foreign rights have been acquired, determine whether or not and in what foreign jurisdictions patent protection should be sought in the public interest. Upon determining that foreign patent protection is desirable, the agency shall:

(a) To the extent of available funds within its own appropriation, take or cause to be taken all action necessary to secure such foreign patent protection of the invention, consistent with existing law and the requirements of the Government; and

(b) If sufficient funds are not available within its own appropriation or the agency does not see fit to use funds when available, furnish the Secretary of Commerce as soon as practicable, preferably not later than two months after the filing of the application for United States patent on the invention,

through the use of Foreign Patent Protection Reporting Form TS-12, sufficient information concerning the invention and the reasons for its determination with respect to the desirability of foreign patent protection, to enable the Secretary of Commerce to seek the financial support of other interested Government agencies and/or of industry in securing foreign patent protection of the invention.

101.6 Action by the Department of Commerce.

Subject to the approval of the Chairman of the Government Patents Board on all matters of policy, the Secretary of Commerce shall, immediately upon receipt of a Foreign Patent Protection Reporting Form TS-12 on an invention, pursuant to § 101.5(b):

(a) Consult with Government agencies and with United States industry and commerce, familiar with the technical, scientific, industrial, commercial or other economic or social factors affecting the invention involved, to ascertain possible interest in foreign patent protection of the invention and willingness to finance such protection; and

(b) After such consultation and consideration of such factors as the availability of valid patent protection in the countries selected and to the extent of funds made available by Government agencies and/or industry, take or cause to be taken all action necessary to secure such protection of the invention, consistent with existing law and the requirements of the Government.

$101.7 Publication in lieu of patenting. When the foreign rights of the Government with respect to an invention may be adequately protected through prompt disclosure of the invention in lieu of patenting, the Government agency concerned, or the Secretary of Commerce in cooperation with the Government agency concerned, may, with the approval of the Chairman of the Government Patents Board, cause the invention to be disclosed by publication thereof.

101.8 Foreign filing by inventor.

When the foreign rights in and to an invention are not assigned to the Gov

ernment but the Government may, at its option or on request, acquire such rights and determines not to cause an application to be filed in any particular foreign country or otherwise to seek protection of the invention, or fails to take such action:

(a) Within six months of the filing of an application for United States patent on the invention, or

(b) Within six months of declassification of an invention previously under a security classification, or

(c) Within six months after disclosure of an invention to the Government pursuant to contract, whichever is later, such determination or such failure to act shall constitute a decision by the Government to leave such rights to the inventor subject, to the extent practicable, to a nonexclusive, irrevocable, royalty-free license to the Government in any patent which may issue thereon in any foreign country, including the power to issue sublicenses for use in behalf of the Government and/or in furtherance of the foreign policies of the Government.

§ 101.9 Administration of foreign patents.

The functions and duties of the Chairman of the Government Patents Board under paragraphs 4 and 5 of E.O. 9865, as amended by paragraph 5 of E.O. 10096, are, until further notice, hereby delegated to the Secretary of Commerce: Provided, however, That all matters of policy arising under this delegation shall be subject to the approval of the Chairman of the Government Patents Board.

§ 101.10 Reports and records.

(a) Each Government agency shall report promptly to the Secretary of Commerce, with a copy to the Chairman of the Government Patents Board, all actions by the agency taken pursuant to §§ 101.5 and 101.7, as well as disclosures by publication by the agency made pursuant to paragraph 2(a) of E.O. 10096.

(b) The Secretary of Commerce shall maintain adequate records and other necessary files, to provide readily available information on all inventions included under the provisions of §§ 101.5, 101.6, 101.7, and paragraph (a) of this section, and shall submit to the

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§102.4 The Department of State.

Pursuant to Executive Orders 9865 and 10096, it is the responsibility of the Department of State, in consultation with the Chairman of the Government Patents Board and the Secretary of Commerce, to seek arrangements among governments under which each government and its nationals shall have access to the foreign patents of the other participating governments. § 102.5 Licenses under foreign patents.

(a) Licenses under foreign patents acquired by the United States Government shall be granted by the Secretary of Commerce to nationals of the United States on a nonexclusive, revocable, royalty-free basis, except in such cases as the Secretary of Commerce, with the approval of the Chairman of the Government Patents Board, shall determine it to be inconsistent with the public interest to issue such licenses on a nonexclusive, royalty-free basis.

(b) Licenses under foreign patents acquired by the United States Government may be granted by the Secretary of Commerce to a foreign government or its nationals pursuant to any arrangements which may come into force with such foreign government as provided in §102.4, or, in the absence of such arrangements, on such terms as the Secretary of Commerce, with the approval of the Chairman of the Government Patents Board and of the Secretary of State, shall determine, in accordance with law, to be in the public interest, subject to outstanding li

censes.

(c) With respect to foreign patents relating to matters of public health, licenses under such patents issued to the United States Government may be granted by the Secretary of Commerce to a foreign government or its nationals on a nonexclusive, revocable, royalty-free basis unless the Chairman of the Government Patents Board, on the recommendation of the Secretary of State, shall determine otherwise, regardless of whether such foreign government is a party to the arrangements specified in § 102.4.

§ 102.6 Reports and records.

The Secretary of Commerce shall maintain adequate records and other

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