32 C.F.R. Subpart B—Restrictions and Conditions for Licensing and Types of Licenses
Title 32 - National Defense
The following restrictions and conditions apply to all licenses granted under this part: (a) Restrictions: (1) A license may be granted only if the applicant has supplied the Air Force with a satisfactory plan for development or marketing of the invention, or both, and with information about the applicant's capability to fulfill the plan. (2) A license granting rights to use or sell under an Air Force invention in the United States shall normally be granted only to a licensee who agrees that any product embodying the invention or produced through the use of the invention will be manufactured substantially in the United States. (b) Conditions. Licenses shall contain such terms and conditions as the Air Force determines are appropriate for the protection of the interests of the Federal Government and the public and are not in conflict with law or this part. The following terms and conditions apply to any license: (1) The duration of the license shall be for a period specified in the license agreement, unless sooner terminated according to provisions therein. (2) The license may be granted for all or less than all fields of use of the invention or in specified geographical areas, or both. (3) The license may extend to subsidiaries of the licensee or other parties if provided for in the license but shall be nonassignable without approval of the Air Force, except to the successor of that part of the licensee's business to which the invention pertains. (4) The license may provide the licensee the right to grant sublicenses under the license, subject to the approval of the Air Force. Each sublicense shall make reference to the license, including the rights retained by the Government, and a copy of each sublicense shall be furnished to the Air Force. (5) The license shall require the licensee to carry out the plan for development or marketing of the invention, or both, to bring the invention to practical application within a period specified in the license, and to continue to make the benefits of the invention reasonably accessible to the public. (6) The license shall require the licensee to report, at least annually, on the utilization or efforts at obtaining utilization that are made by the licensee, with particular reference to the plan submitted. (7) Licenses may be royalty-free or for royalties or other consideration. (8) When the licensee agrees that any products embodying the invention or produced through use of the invention will be manufactured substantially in the United States, the license shall recite such agreement. (9) The license shall provide for the right of the Air Force to terminate the license, in whole or in part, if: (i) The Air Force determines that the licensee is not executing the plan submitted with its requests for a license and the licensee cannot otherwise demonstrate to the satisfaction of the Air Force that it has taken or can be expected to take within a reasonable time effective steps to achieve practical application of the invention; (ii) The Air Force determines that such action is necessary to meet requirements for public use specified by Federal regulations issued after the date of the license and such requirements are not reasonably satisfied by the licensee; (iii) The licensee has willfully made a false statement of or willfully omitted a material fact in the license application or in any report required by the license agreement; or (iv) The licensee commits a substantial breach of a covenant or agreement contained in the license. (10) The license may be modified or terminated consistent with this part upon mutual agreement of the Air Force and the licensee. (11) Nothing relating to the grant of a license, nor the grant itself, shall be construed to confer upon any person, any immunity from or defense under the antitrust laws or from a charge of patent misuse, and the acquisition and use of rights pursuant to this subpart shall not be immunized from the operation of state or Federal law by reason of the source of the grant. (12) The license shall contain a provision that the government makes no representation or warranty as to the validity of any licensed patent or patent application, or of the scope of any of the claims contained therein, or that the exercise of the license will not result in the infringement of any other patent and that the Government assumes no liability whatsoever resulting from the exercise of the license. Each Air Force invention normally will be made available for the granting of nonexclusive licenses, subject to the provisions of any other license, including those in §841.8, and subject to the following condition: the nonexclusive license may also provide that, after termination of a period specified in the license agreement, the Air Force may restrict the license to the fields of use or geographic areas, or both, in which the licensee has brought the invention to practical application and continues to make the benefits of the invention reasonably accessible to the public. However, such restriction shall be made only in order to grant an exclusive or partially exclusive license according to this part. Each Government invention may be made available for the granting of an exclusive or partially exclusive license subject to the following restrictions and conditions: (a) Restrictions. Exclusive or partially exclusive licenses may be granted on federally owned inventions as follows: (1) Three months after notice of the invention's availability has been announced in the (2) Without such notice where the Air Force determines that expeditious granting of such a license will best serve the interest of the Federal Government and the public; and (3) In either situation specified in paragraph (a) (1) or (2) of this section only if: (i) Notice of a prospective license, identifying the invention and the prospective licensee, has been published in the (ii) After expiration of the 60-day period and consideration of any written objections received during the period, the Air Force makes the determinations required by §841.15 favorably to the applicant; and (iii) The Air Force has given first preference to any small business firms submitting plans that are determined by the agency to be within the capabilities of the firms and as equally likely, if executed, to bring the invention to practical application as any plans submitted by applicants that are not small business firms. (b) Conditions. In addition to the provisions of §841.6, the following terms and conditions apply to domestic exclusive and partially exclusive licenses: (1) The license shall be subject to the irrevocable royalty-free right of the Government of the United States to practice and have practiced the invention on behalf of the United States and on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States. (2) The license shall reserve to the Air Force the right to require the licensee to grant sublicenses to responsible applicants, on reasonable terms, when necessary to fulfill health or safety needs. (3) The license shall be subject to any licenses in force at the time of the grant of the exclusive or partially exclusive license. (4) The license may grant the licensee the right of enforcement of the licensed patent pursuant to the provisions of 35 U.S.C. 29, as determined appropriate in the public interest. Nothing in this part will preclude the Air Force from granting licenses for Air Force inventions which are the result of an authorized exchange of rights in the settlement of patent disputes. The following exemplify circumstances wherein such licenses may be granted: (a) In consideration of the settlement of an interference; (b) In consideration of a release of a claim of infringement; or (c) In exchange for or as part of the consideration for a license under adversely held patents. (a) Exclusive or partially exclusive licenses may be granted on an Air Force invention covered by a foreign patent, patent application, or other form of protection, provided that: (1) Notice of a prospective license identifying the invention and prospective licensee has been published in the (2) The Air Force has considered whether the interests of the Federal Government or United States industry in foreign commerce will be enhanced; and (3) The Air Force has not determined that the grant of such license will tend substantially to lessen competition or result in undue concentration in any section of the United States in any line of commerce to which the technology to be licensed relates, or to create or maintain other situations inconsistent with antitrust laws. (b) In addition to the provisions of §841.6, the following terms and conditions apply to foreign exclusive and partially exclusive licenses: (1) The license shall be subject to the irrevocable, royalty-free right of the United States Government to practice and have practiced the invention on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States. (2) The license shall be subject to any licenses in force at the time of the grant of the exclusive license. (3) The license may grant the licensee the right to take any suitable and necessary action to protect the licensed property on behalf of the United States Government.
Title 32: National Defense
PART 841—LICENSING GOVERNMENT-OWNED INVENTIONS IN THE CUSTODY OF THE DEPARTMENT OF THE AIR FORCE
Subpart B—Restrictions and Conditions for Licensing and Types of Licenses
§ 841.6 Restrictions and conditions.
§ 841.7 Nonexclusive licenses.
§ 841.8 Exclusive and partially exclusive licenses.
§ 841.9 Additional licenses.
§ 841.10 Foreign licenses.
