Patent Waiver Regulation

The Department of Energy (DOE) is publishing a final rule to recodify and update a patent waiver regulation that was incorporated in the Department of Energy Acquisition Regulations (DEAR) in 1984 (applicable to contracts) and the DOE Assistance Regulations (applicable to grants and cooperative agreements). The final rule contains changes that conform the regulation provisions to post-1984 statutory amendments, including the addition of terms and conditions for contractor retention of patent rights required by 35 U.S.C. 210. The rule also contains some new clarifying provisions and minor procedural changes to the DOE patent waiver process. This final rule will govern waiver of the Department's rights in inventions made under contracts, grants, cooperative agreements, understandings, or other DOE arrangements with entities other than small businesses and non-profit organizations. This rule will also apply to all participants in cooperative research and development agreements (CRADAs), with both Bayh-Dole entities and non-Bayh-Dole entities. Rights in inventions made under DOE funding agreements with small businesses and nonprofit organizations are generally controlled by 35 U.S.C. 202, which provides, with certain exceptions, for contractor retention of title to inventions. However, this rule does apply to waiver of rights in inventions when DOE has reserved title and other rights in funding agreements with nonprofit organizations and small business firms pursuant to the exceptions in 35 U.S.C. 202.