5 2 1 ation of new products and processes, it is the purpose and 2 policy of this chapter to make available to employees, for 3 inventions made by them that are unrelated to their employ4 ment, those incentives provided by the patent laws to encourage individuals to make inventions, to disclose them to the 6 public, and to commercialize them, while at the same time to 7 maintain an incentive for employers to support research and 8 development activities and to commercialize inventions by 9 their employees that are related to that employment. 10 "8 222. Definitions "For purposes of this chapter "(1) the terms 'employer' and 'employee' have the meanings given those terms in section 3 of the Fair Labor Standards Act of 1938 (29 U.S.C. 203); "(2) the term 'invention' means an invention which is patentable under chapter 10 of this title; "(3) the term 'preinvention assignment agreement' means an agreement which an employee executes at the request of his or her employer that gives any rights to the employer in any inventions of the employee not yet made at the time of the execution of the agreement; "(4) the term 'employment invention' means an invention that is made by an employee during a term of employment HR 3284 IH 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 3 “(A) as a result of the employee's normal or specifically assigned duties; "(B) based in significant part upon technical data or information possessed by and acquired OF from the employer of the employee, and which is not generally known to the public; or "(C) wherein the employee enjoyed a special position of trust or confidence or a fiduciary relationship with his or her employer at the time of making the invention, and the invention is related to the employer's actual or contemplated business known to the employee; and "(5) an invention is deemed to have been 'made' when it is conceived or first actually reduced to practice. 16 "8223. Limitation upon terms of an employee preinven 17 18 tion assignment agreement "(a) A preinvention assignment agreement shall not be 19 enforceable to transfer any rights to the employer in any in20 vention that is not an employment invention; except that an 21 employer may require an employee of the employer to grant 22 to the employer a nontransferable, nonexclusive license to 23 practice an invention that is not an employment invention 24 whenever such invention is made by the employee with a HR 3286 IH 4 1 substantial use of the employer's time, materials, facilities, or 2 funds. 3 “(b) An employer may require that the employee of the 4 employer disclose to the employer all inventions made by the 5 employee, solely or jointly with others, during the term of the PROVIDED HOWEVER THAT 6 employee's employment with the employerfif-the-disclosures INVENTIONS WHICH ARE NOT EMPLOYMENT INVENTIONS BE 7 are received and kept in confidence., UNLESS OTHERWISE AUTHORIZED 8 BY THE EMPLOYEE. “(c) A preinvention assignment agreement shall not be 9 enforceable to transfer any rights to an employer in any in10 vention that is conceived by an employee of the employer 11 after termination of employment with the employer. 12 “(d) In case of any disagreement or conflict with respect THE RIGHTS OR OBLIGATIONS CREATED BY 13 to any provision of this chapter, the matter shall be settled by 14 arbitration in the State in which the employee is employed in APPLICABLE 15 accordance with the rules of the American Arbitration Asso 16 ciation, at the request of either party. EXCEPT THAT IT NOT BE REQUIRED THAT PROCEEDINGS ACTUALLY BE CONDUCTED BY SAID “(e) This section shall not affect rights in any invention ASSOCIATION 18 conceived prior to January 1, 1984.". 17 19 SEC. 2. The analysis of part II of title 35, United States 20 Code, is amended by adding after the item relating to chapter 21 18 of the following new item: "19. Employee Inventions...... 221". HR 2286 IH Suggested Modifications to HR 3286 The following are "clean" versions of the paragraphs of HR 3286 as suggested by IEEE Intellectual Property Committee: Section 223(4)(B) - based in significant Section 223(b) - An employer may require Section 223(d) - In case of any disagreement or conflict with respect to Attachment B Comments on Harvey Manbeck's Markup of HR 3286 The following is a section by section response to the comments made by Harvey Manbeck on his "Exhibit C (continued)" to his testimony submitted to Mr. Kastenmeier's Subcommittee on March 28, 1984. We generally agree with Mr. Manbeck's analysis of HR 3286 and applaud many of his suggestions as being substantive improvements over the original proposal. However, we are in fundamental disagreement with Mr. Manbeck on portions of §222(4)(B), §222(4)(C), §222(4)(D), and §223(a) and explain our positions in detail in the text of the correspondence to Mr. Kastenmeier. We concur that the intent of the definition of "employee" covers only employees whose place of (2) §222(4)(B) - We do not agree with the proposed changes that would add the phrase "or suggested by". The original unmodified wording "based in significant part upon" is preferable. (3) $222(4)(C) (4) $222(4)(D) (5) §223(a) (6) §223(b) We agree with the remaining changes. We do not agree with the changes suggested. - We do not agree with this change (see #4 - We agree with the conceptual change, but not |