Acquisition and Protection of Foreign Rights in Inventions; Licensing of Foreign Patents Acquired by the Government; Uniform Patent Policy for Rights in Inventions Made by Government Employees

The interim final rule removes the regulation dealing with the Government's foreign rights in inventions made by Government employees, and expands the uniform patent policy for domestic rights in inventions to include foreign rights in order to have a uniform patent policy for all rights in inventions made by Government employees. The rule also removes the regulation dealing with the licensing of foreign patents acquired by the Government, which is inconsistent with 37 CFR Part 404 on the licensing of Government-owned inventions. This action is taken in keeping with the goals of the National Performance Review and in order to comply with recent Executive Orders that address regulatory reforms. The rule also revises the uniform patent policy to permit an agency to impose certain conditions on the employee's title to the invention where the agency decides not to file a patent application, some of which are authorized by Sec. 15 of the Federal Technology Transfer Act of 1986; to require agencies to provide the inventor, prior to appeal, with a full explanation of the agency determination and a copy of 37 CFR Part 501 in all cases where the agency has determined that the Government is entitled to title or a license in the invention in order to reduce the number of appeals; and to require agencies to decide if they should file any foreign patent applications within 8 months from filing a patent application in the U.S. or to authorize agencies to use an option to acquire foreign rights from the employee in order to avoid the need to transfer back the foreign rights to the employee if the agency does not file a foreign patent application within 8 months of filing an unclassified patent application in the U.S.