32 C.F.R. PART 841—LICENSING GOVERNMENT-OWNED INVENTIONS IN THE CUSTODY OF THE DEPARTMENT OF THE AIR FORCE
Title 32 - National Defense
Authority: 10 U.S.C. 8012.
Source: 50 FR 20563, May 17, 1985, unless otherwise noted.
This regulation prescribes the policies, administrative requirements, procedures, terms, and conditions for licensing of rights in federally owned patents and patent applications vested in the United States of America in the custody of the Department of the Air Force. It is consistent with General Services Administration Licensing of Federally Owned Inventions, 41 CFR 101–4, which implements Pub. L. 96–517. It applies to all requests for a license under an Air Force invention. Federally owned inventions in the custody of the Department of the Air Force normally will best serve the public interest when they are developed to the point of practical application and made available to the public in the shortest possible time. Nonexclusive, partially exclusive, or exclusive licenses for the practice of these inventions may be granted to applicants who agree to develop and/or market the inventions. All Air Force inventions normally will be made available for the granting of licenses to responsible applicants. Nonexclusive, partially exclusive, or exclusive licenses will be executed on behalf of the Department of the Air Force by the Secretary or by anyone to whom this authority is delegated. The administration of this part is delegated to The Judge Advocate General, who may redelegate the administration of this part to the Chief, Patents Division, Office of The Judge Advocate General. All communications received in any Air Force activity requesting information regarding the licensing of a Government invention will be acknowledged and sent without further action directly to HQ USAF/JACP, Washington DC 20324. (a) Air Force invention means an invention, plant, or design which is covered by a patent or patent application in the United States, or a patent, patent application, plant variety protection, or other form of protection in a foreign country, title to which has been assigned to or otherwise vested in the United States Government and in the custody of the Department of the Air Force. (b) Small business firm means a small business concern as defined in section 2 of Pub. L. 85–536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration. (c) Practical Application means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine or system; and in each case, under such conditions as to establish that the invention is being utilized and that its benefits are to the extent permitted by law or Government regulations available to the public on reasonable terms. (d) United States means the United States of America, its territories and possessions, the District of Columbia, and the Commonwealth of Puerto Rico. (a) Royalties may or may not be charged under nonexclusive licenses granted to US citizens and US corporations on Government inventions; however, the Department of the Air Force may require other considerations when a royalty is not charged. (b) Normally, an exclusive or partially exclusive license on an Air Force invention will contain a royalty provision and/or other consideration flowing to the Government. 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. The Department of the Air Force will cause to be published in the Requests for a license under an Air Force invention should be addressed to the Chief, Patents Division, HQ USAF/JACP, Washington DC 20324. An application for a license will include: (a) Identification of the invention for which the license is desired including the patent application serial number or patent number, title, and date, if known; (b) Identification of the type of license for which the application is submitted; (c) Name and address of the person, company, or organization applying for the license and the citizenship or place of incorporation of the applicant; (d) Name, address, and telephone number of the representative of the applicant to whom correspondence should be sent; (e) Nature and type of applicant's business, identifying products or services which the applicant has successfully commercialized, and approximate number of applicant's employees; (f) Source of information concerning the availability of a license on the invention; (g) A statement indicating whether the applicant is a small business firm as defined in §841.4 of this subpart; (h) A detailed description of the applicant's plan for development or marketing of the invention, or both, which should include: (1) A statement of the time, nature, and amount of anticipated investment of capital and other resources which applicant believes will be required to bring the invention to practical application; (2) A statement as to applicant's capability and intention to fulfill the plan, including information regarding manufacturing, marketing, financial, and technical resources; (3) A statement of the fields of use for which applicant intends to practice the invention; and (4) A statement of the geographic areas in which the applicant intends to manufacture any products embodying the invention and geographic areas where applicant intends to use or sell the invention, or both; (i) Identification of licenses previously granted to applicant under federally owned inventions; (j) A statement containing the applicant's best knowledge of the extent to which the invention is being practiced by private industry or Government, or both, or is otherwise available commercially; and (k) Any other information which applicant believes will support a determination to grant the license to applicant. A notice that the prospective exclusive or partially exclusive licensee has been selected will be published by the Department of the Air Force in the (a) Identification of the invention; (b) Identification of the selected licensee; and (c) A statement that the license will be granted unless any written objection is received within 60 days. (a) After the notice is published in the (1) An identification of the invention, type of license desired, and name and address of the party applying for the license; (2) The name and address of all third parties who objected to the granting of the license, if any; (3) A brief statement of the reasons for the objections, if any; (4) A discussion of the relative merits of the license application vs. the objections filed by third parties, if any; (5) Determinations, and reasons supporting the determinations, whether: (i) The interests of the Federal Government and the public will be served by the proposed license, in view of the applicant's intentions, plans, and ability to bring the invention to practical application or otherwise promote the invention's utilization by the public; (ii) The desired practical application has not been achieved or is not likely expeditiously to be achieved under any nonexclusive license which has been granted on the invention; (iii) Exclusive or partially exclusive licensing is a reasonable and necessary incentive to call forth the investment of risk capital and expenditures to bring the invention to practical application or otherwise promote the invention's utilization by the public; (iv) The proposed terms and scope of exclusivity are not greater than reasonably necessary to provide the incentive for bringing the invention to practical application or otherwise promote the invention's utilization by the public; (v) The grant of such license will tend substantially to lessen competition or result in undue concentration in any section of the country in any line of commerce to which the technology to be licensed relates, or to create or maintain other situations inconsistant with the antitrust laws; and (vi) The interest of the United States Government or industry in foreign commerce will be enhanced, if the license request is under a foreign patent, patent application, or other form of protection. (6) The signature of the individuals making the determinations. (b) A record of the determinations to grant or deny an exclusive or a partially exclusive license shall be maintained by the Patents Division. Before modifying or terminating a license, other than by mutual agreement, the Air Force shall furnish the licensee and any sublicensee of record a written notice of intention to modify or terminate the license, and the licensee and any sublicensee shall be allowed 30 days after such notice to remedy any breach of the license or show cause why the license should not be modified or terminated. A party whose application for a license has been denied, a licensee whose license has been modified or terminated, in whole or in part, or a party who timely filed a written objection in response to the notice required in §841.8 and §841.10 and who can demonstrate to the satisfaction of the Air Force that such party may be damaged by the agency action, may appeal to The Judge Advocate General, any decision or determination concerning the grant, denial, interpretation, modification, or termination of a license. The appeal must be in writing and submitted within 60 days from the date the decision or determination was mailed to the party. Under certain circumstances it may be in the best interest of the Air Force to enter into an agreement to transfer its custody of any invention to another Government agency for purposes of administration including the granting of licenses pursuant to this part. Such transfers will be made on a case-by-case basis. Title 35 U.S.C. 209 provides that any plan submitted pursuant to §841.13 above and any report required by §841.6 may be treated by the Air Force as commercial and financial information obtained from a person and priviledged and confidential and not subject to disclosure under 5 U.S.C. 552.
Title 32: National Defense
PART 841—LICENSING GOVERNMENT-OWNED INVENTIONS IN THE CUSTODY OF THE DEPARTMENT OF THE AIR FORCE
Section Contents
§ 841.0 Purpose.
§ 841.1 Air Force policy.
§ 841.2 Execution of licenses.
§ 841.3 Delegation of authority.
§ 841.4 Definitions.
§ 841.5 Royalties.
§ 841.6 Restrictions and conditions.
§ 841.7 Nonexclusive licenses.
§ 841.8 Exclusive and partially exclusive licenses.
§ 841.9 Additional licenses.
§ 841.10 Foreign licenses.
§ 841.11 Publication requirements.
§ 841.12 Request for a license.
§ 841.13 Contents of a license application.
§ 841.14 Published notices.
§ 841.15 Determination to grant or deny exclusive or partially exclusive licenses.
§ 841.16 Modification and termination.
§ 841.17 Appeals.
§ 841.18 Transfer procedure.
§ 841.19 Confidentiality of plans and reports.
Subpart A—General Information
top
§ 841.0 Purpose.
top
§ 841.1 Air Force policy.
top
§ 841.2 Execution of licenses.
top
§ 841.3 Delegation of authority.
top
§ 841.4 Definitions.
top
§ 841.5 Royalties.
top
Subpart B—Restrictions and Conditions for Licensing and Types of Licenses
top
§ 841.6 Restrictions and conditions.
top
§ 841.7 Nonexclusive licenses.
top
§ 841.8 Exclusive and partially exclusive licenses.
top
§ 841.9 Additional licenses.
top
§ 841.10 Foreign licenses.
top
Subpart C—Licensing Procedures
top
§ 841.11 Publication requirements.
top
§ 841.12 Request for a license.
top
§ 841.13 Contents of a license application.
top
§ 841.14 Published notices.
top
§ 841.15 Determination to grant or deny exclusive or partially exclusive licenses.
top
§ 841.16 Modification and termination.
top
§ 841.17 Appeals.
top
Subpart D—Transfer of Custody of Government Inventions and Confidentiality of Information
top
§ 841.18 Transfer procedure.
top
§ 841.19 Confidentiality of plans and reports.
top
