35 U.S.C. § 203

Current through P.L. 118-106 (published on www.congress.gov on 10/04/2024)

Section 203 - March-in rights

(a) With respect to any subject invention in which a small business firm or nonprofit organization has acquired title under this chapter, the Federal agency under whose funding agreement the subject invention was made shall have the right, in accordance with such procedures as are provided in regulations promulgated hereunder to require the contractor, an assignee or exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant or applicants, upon terms that are reasonable under the circumstances, and if the contractor, assignee, or exclusive licensee refuses such request, to grant such a license itself, if the Federal agency determines that such-

(1) action is necessary because the contractor or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the subject invention in such field of use;

(2) action is necessary to alleviate health or safety needs which are not reasonably satisfied by the contractor, assignee, or their licensees;

(3) action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the contractor, assignee, or licensees; or

(4) action is necessary because the agreement required by section 204 has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject invention in the United States is in breach of its agreement obtained pursuant to section 204.

(b) A determination pursuant to this section or section 202(b)(4) ¹ shall not be subject to chapter 71 of title 41. An administrative appeals procedure shall be established by regulations promulgated in accordance with section 206. Additionally, any contractor, inventor, assignee, or exclusive licensee adversely affected by a determination under this section may, at any time within sixty days after the determination is issued, file a petition in the United States Court of Federal Claims, which shall have jurisdiction to determine the appeal on the record and to affirm, reverse, remand or modify, as appropriate, the determination of the Federal agency. In cases described in paragraphs (1) and (3) of subsection (a), the agency's determination shall be held in abeyance pending the exhaustion of appeals or petitions filed under the preceding sentence.

¹ See References in Text note below.

35 U.S.C. § 203

Added Pub. L. 96-517, §6(a), Dec. 12, 1980, 94 Stat. 3022; amended Pub. L. 98-620, title V, §501(9), Nov. 8, 1984, 98 Stat. 3367; Pub. L. 102-572, title IX, §902(b)(1), Oct. 29, 1992, 106 Stat. 4516; Pub. L. 107-273, div. C, title III, §13206(a)(14), Nov. 2, 2002, 116 Stat. 1905; Pub. L. 111-350, §5(i)(2), Jan. 4, 2011, 124 Stat. 3850.

EDITORIAL NOTES

REFERENCES IN TEXTSection 202(b)(4), referred to in subsec. (b), was redesignated section 202(b)(3) of this title by Pub. L. 111-8, div. G, title I, §1301(h), Mar. 11, 2009, 123 Stat. 829.

AMENDMENTS2011-Subsec. (b). Pub. L. 111-350 substituted "chapter 71 of title 41" for "the Contract Disputes Act ( 41 U.S.C. § 601 et seq.)".2002- Pub. L. 107-273 redesignated par. (1) as subsec. (a) and former subpars. (a) to (d) as pars. (1) to (4), respectively, redesignated former par. (2) as subsec. (b), struck out quotation marks and comma before "as appropriate", and substituted "paragraphs (1) and (3) of subsection (a)" for "paragraphs (a) and (c)".1992-Par. (2). Pub. L. 102-572 substituted "United States Court of Federal Claims" for "United States Claims Court".1984- Pub. L. 98-620 designated existing provisions as par. (1) and added par. (2).

STATUTORY NOTES AND RELATED SUBSIDIARIES

EFFECTIVE DATE OF 1992 AMENDMENTAmendment by Pub. L. 102-572 effective Oct. 29, 1992, see section 911 of Pub. L. 102-572 set out as a note under section 171 of Title 28, Judiciary and Judicial Procedure.

EFFECTIVE DATESection effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub. L. 96-517 set out as an Effective Date of 1980 Amendment note under section 41 of this title.

Federal agency: The term "Federal agency" means any executive agency as defined in section 105 of title 5, and the military departments as defined by section 102 of title 5.
contractor: The term "contractor" means any person, small business firm, or nonprofit organization that is a party to a funding agreement.
funding agreement: The term "funding agreement" means any contract, grant, or cooperative agreement entered into between any Federal agency, other than the Tennessee Valley Authority, and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the Federal Government. Such term includes any assignment, substitution of parties, or subcontract of any type entered into for the performance of experimental, developmental, or research work under a funding agreement as herein defined.
inventor: The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
nonprofit organization: The term "nonprofit organization" means universities and other institutions of higher education or an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 ( 26 U.S.C. 501(c) ) and exempt from taxation under section 501(a) of the Internal Revenue Code ( 26 U.S.C. 501(a) ) or any nonprofit scientific or educational organization qualified under a State nonprofit organization statute.1 See References in Text note below.
practical application: The term "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.
small business firm: The term "small business firm" means a small business concern as defined at section 2 of Public Law 85-536 ( 15 U.S.C. 632 ) and implementing regulations of the Administrator of the Small Business Administration.
subject invention: The term "subject invention" means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) 1 of the Plant Variety Protection Act ( 7 U.S.C. 2401(d) )) must also occur during the period of contract performance.
United States: The terms "United States" and "this country" mean the United States of America, its territories and possessions.