[Federal Register Volume 77, Number 21 (Wednesday, February 1, 2012)]
[Rules and Regulations]
[Pages 4887-4890]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-2162]
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DEPARTMENT OF ENERGY
10 CFR Part 781
RIN 1990-AA41
DOE Patent Licensing Regulations
AGENCY: Office of the General Counsel, Department of Energy.
ACTION: Final rule.
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SUMMARY: The Department of Energy (DOE) is amending its patent
licensing regulations to remove outdated sections and provide for the
creation of a new appeal authority to serve as the Invention Licensing
Appeal Board. Under the new regulations, the DOE Deputy General Counsel
for Technology Transfer and Procurement shall hear and decide appeals
relating to licensing of federally-owned inventions; and to copyright
licenses granted in works created under management and operating (M &
O) contracts with DOE, but not including M & O contracts administered
by the National Nuclear Security Administration (NNSA) for NNSA
facilities. The NNSA Deputy General Counsel for Procurement shall hear
and decide appeals under management and operating contracts
administered by NNSA for NNSA facilities.
[[Page 4888]]
DATES: Effective Date: This final rule is effective February 1, 2012.
FOR FURTHER INFORMATION CONTACT: John T. Lucas, Office of the Assistant
General Counsel for Technology Transfer and Intellectual Property, U.S.
Department of Energy, Forrestal Building, Room 6F-067, 1000
Independence Avenue SW., Washington, DC 20585; Telephone: (202) 586-
2802.
SUPPLEMENTARY INFORMATION:
I. Discussion
II. Final Action
III. Regulatory Review
I. Discussion
The DOE regulations at 10 CFR part 781 were promulgated to
establish the procedures, terms, and conditions upon which licenses may
be granted in inventions covered by patents or patent applications
vested in the United States of America, as represented by or in the
custody of DOE. Pursuant to the authority of 35 U.S.C. 206, the
Department of Commerce since issued regulations on licensing of
government-owned inventions, which are codified at 37 CFR part 404.
Those regulations currently supersede, to the extent inconsistent, the
DOE regulations at 10 CFR part 781 and similarly prescribe the terms,
conditions, and procedures upon which a federally-owned invention may
be licensed. 10 CFR part 781 has served to supplement 37 CFR part 404
to include, among other things, provisions for appeals, referencing
procedures of the DOE Board of Contract Appeals. The DOE Board of
Contract Appeals has since been terminated. That board served as the
Invention Licensing Appeal Board under the current DOE regulations at
10 CFR part 781. Accordingly, several sections of part 781 contain
language that has become outdated since the codification of the DOE
patent licensing regulations.
Also, since the original codification of the patent licensing
regulations at 10 CFR part 781, DOE has promulgated the regulations at
48 CFR part 970, which govern its M & O contracts. Those regulations
provide that M & O contractors may with agency permission assert
copyright in works first produced in performance of their contracts.
However, where the contractor has not made a satisfactory demonstration
that it or any of its licensees is pursuing commercialization, DOE may
require that licenses be granted to other responsible applicants.
Pursuant to 48 CFR 970.5227-2(e)(3)(vi), M & O contractors may appeal
such decisions to the Invention Licensing Appeal Board.
DOE takes this opportunity to amend its regulations at 10 CFR part
781 to remove outdated sections and provide for the creation of a new
appeal authority to serve as the Invention Licensing Appeal Board.
Under the new regulations, the DOE Deputy General Counsel for
Technology Transfer and Procurement shall hear and decide appeals
arising under: (1) 37 CFR 404.11, relating to licensing of federally-
owned inventions; and (2) 48 CFR 970-5227-2(e)(3)(vi), relating to
copyright licenses granted in works created under M & O contracts with
DOE, but not including M & O contracts administered by NNSA for NNSA
facilities. The NNSA Deputy General Counsel for Procurement shall hear
and decide appeals under 48 CFR 970-5227-2(e)(3)(vi) arising under M &
O contracts administered by NNSA for NNSA facilities.
II. Final Action
DOE is publishing this final rule without prior notice and
opportunity for public comment, and is making the rule effective upon
publication in the Federal Register, because the Administrative
Procedure Act exempts rules of procedure from its notice and comment
and delayed effective date requirements (5 U.S.C. 553(b)(3)(A) and
(d)).
III. Regulatory Review
A. Review Under Executive Order 12866
This regulatory action has been determined not to be a
``significant regulatory action'' under Executive Order 12866,
``Regulatory Planning and Review'' (58 FR 51735, October 4, 1993).
Accordingly, this final rule was not subject to review under the
Executive Order by the Office of Information and Regulatory Affairs
within the Office of Management and Budget (OMB).
B. Review Under the Regulatory Flexibility Act
The Regulatory Flexibility Act (5 U.S.C. 601 et seq.) requires
preparation of an initial regulatory flexibility analysis for any rule
that by law must be proposed for public comment, unless the agency
certifies that the rule, if promulgated, will not have a significant
economic impact on a substantial number of small entities. Because a
general notice of proposed rulemaking is not required by any law, the
analytical provisions of the Regulatory Flexibility Act do not apply,
and DOE has not prepared a regulatory flexibility analysis for this
rulemaking.
C. Review Under the National Environmental Policy Act
Pursuant to the Council on Environmental Quality Regulations (40
CFR parts 1500-08), DOE has established regulations for its compliance
with the National Environmental Policy Act of 1969 (42 U.S.C. 4321 et
seq.). Pursuant to Appendix A of Subpart D of 10 CFR part 1021, DOE has
determined that today's regulatory action is strictly procedural
(Categorical Exclusion A6). Accordingly, neither an environmental
impact statement nor an environmental assessment is required.
D. Review Under the Paperwork Reduction Act
This final rule contains no new collection of information requiring
OMB approval under the Paperwork Reduction Act (44 U.S.C. 3501 et
seq.).
E. Review Under Executive Order 12988
With respect to the review of existing regulations and the
promulgation of new regulations, section 3(a) of E.O. 12988, ``Civil
Justice Reform'' (61 FR 4729, February 7, 1996), imposes on executive
agencies the general duty to adhere to the following requirements: (1)
Eliminate drafting errors and ambiguity; (2) write regulations to
minimize litigation; and (3) provide a clear legal standard for
affected conduct rather than a general standard and promote
simplification and burden reduction. Section 3(b) of E.O. 12988
specifically requires that executive agencies make every reasonable
effort to ensure that the regulation: (1) Clearly specifies the
preemptive effect, if any; (2) clearly specifies any effect on existing
Federal law or regulation; (3) provides a clear legal standard for
affected conduct while promoting simplification and burden reduction;
(4) specifies the retroactive effect, if any; (5) adequately defines
key terms; and (6) addresses other important issues affecting clarity
and general draftsmanship under any guidelines issued by the United
States Attorney General. Section 3(c) of E.O. 12988 requires executive
agencies to review regulations in light of applicable standards in
section 3(a) and section 3(b) to determine whether they are met or it
is unreasonable to meet one or more of them. DOE has completed the
required review and determined that, to the extent permitted by law,
this final rule meets the relevant standards of E.O. 12988.
F. Review Under Executive Order 13132
Executive Order 13132, ``Federalism'' (64 FR 43255, August 4, 1999)
imposes
[[Page 4889]]
certain requirements on agencies formulating and implementing policies
or regulations that preempt state law or that have federalism
implications. Agencies are required to examine the constitutional and
statutory authority supporting any action that would limit the
policymaking discretion of the states and carefully assess the
necessity for such actions. DOE has examined today's rule and has
determined that it does not preempt state law and does not have a
substantial direct effect on the states, on the relationship between
the national government and the states, or on the distribution of power
and responsibilities among the various levels of government. No further
action is required by E.O. 13132.
G. Review Under the Unfunded Mandates Reform Act of 1995
The Unfunded Mandates Reform Act of 1995 (Pub. L. 104-4) requires a
Federal agency to perform a detailed assessment of costs and benefits
of any rule imposing a Federal mandate with costs to state, local or
tribal governments, or to the private sector. This rulemaking does not
impose a Federal mandate on state, local or tribal governments or on
the private sector.
H. Review Under the Treasury and General Government Appropriations Act,
1999
Section 654 of the Treasury and General Government Appropriations
Act, 1999 (Pub. L. 105-277), requires Federal agencies to issue a
Family Policymaking Assessment for any rule or policy that may affect
family well being. This rule will have no impact on family, the
autonomy or integrity of the family as an institution. Accordingly, DOE
has concluded that it is not necessary to prepare a Family Policy
Assessment.
I. Review Under the Treasury and General Government Appropriations Act,
2001
The Treasury and General Government Appropriations Act, 2001 (44
U.S.C. 3516 note) provides for agencies to review most disseminations
of information to the public under guidelines established by each
agency pursuant to general guidelines issued by OMB. OMB's guidelines
were published at 67 FR 8452 (February 22, 2002), and DOE's guidelines
were published at 67 FR 62446 (October 7, 2002). DOE has reviewed
today's rule under the OMB and DOE guidelines and has concluded that it
is consistent with applicable policies in those guidelines.
J. Review Under Executive Order 13211
Executive Order 13211, ``Actions Concerning Regulations That
Significantly Affect Energy Supply, Distribution, or Use'' (66 FR
28355, May 22, 2001) requires Federal agencies to prepare and submit to
the Office of Information and Regulatory Affairs (OIRA), OMB, a
Statement of Energy Effects for any significant energy action. A
``significant energy action'' is defined as any action by an agency
that promulgates or is expected to lead to promulgation of a final
rule, and that: (1) Is a significant regulatory action under E.O.
12866, or any successor order; and (2) is likely to have a significant
adverse effect on the supply, distribution, or use of energy, or (3) is
designated by the Administrator of OIRA as a significant energy action.
For any significant energy action, the agency must give a detailed
statement of any adverse effects on energy supply, distribution, or use
should the proposal be implemented, and of reasonable alternatives to
the action and their expected benefits on energy supply, distribution,
and use. Today's rule is not a significant energy action. Accordingly,
DOE has not prepared a Statement of Energy Effects.
K. Congressional Notification
As required by 5 U.S.C. 801, DOE will report to Congress
promulgation of this rule prior to its effective date. The report will
state that it has been determined that the rule is not a ``major rule''
as defined by 5 U.S.C. 804(2).
L. Approval by the Office of the Secretary of Energy
The Office of the Secretary of Energy has approved issuance of this
final rule.
List of Subjects in 10 CFR Part 781
Administrative practice and procedure, Inventions and patents.
Issued in Washington, DC, on December 23, 2011.
Daniel B. Poneman,
Deputy Secretary of Energy.
For the reasons set forth in the preamble, DOE amends Chapter III
of Title 10 of the Code of Federal Regulations as set forth below:
PART 781--DOE PATENT LICENSING REGULATIONS
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1. The authority citation for Part 781 is revised to read as follows:
Authority: 42 U.S.C. 2186, 42 U.S.C. 2201(g), and 35 U.S.C.
207-209.
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2. Section 781.1 is revised to read as follows:
Sec. 781.1 Scope.
The regulations of this part supplement the U.S. Department of
Commerce regulations, entitled LICENSING OF GOVERNMENT OWNED
INVENTIONS, at 37 CFR Part 404.
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3. Section 781.2 is revised to read as follows:
Sec. 781.2 Policy.
(a) It is the policy of this regulation to use the patent system to
promote the utilization of inventions arising from Department of Energy
supported research and development.
(b) Decisions as to grants or denials of any license application
will, in the discretion of the Secretary of Energy, be based on the
Department of Energy's view of what is in the best interests of the
United States and the general public under the provisions of these
regulations. Decisions of the Department of Energy under these
regulations may be made on the Secretary of Energy's behalf by the
Assistant General Counsel for Technology Transfer and Intellectual
Property, except where otherwise delegated.
Sec. 781.3 [Removed and Reserved]
0
4. Remove and reserve Sec. 781.3.
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5. Section 781.4 is revised to read as follows:
Sec. 781.4 Communications.
All communications concerning the regulations in this part,
including applications for licenses, should be addressed or delivered
to the General Counsel, Attention: Assistant General Counsel for
Technology Transfer and Intellectual Property, U.S. Department of
Energy, 1000 Independence Avenue SW., Washington, DC 20585.
Sec. Sec. 781.51 and 781.52 [Removed and Reserved]
0
6. Remove and reserve Sec. Sec. 781.51 and 781.52.
0
7. Section 781.53 is revised to read as follows:
Sec. 781.53 Additional licenses.
Subject to any outstanding licenses, nothing in this part shall
preclude the Department of Energy from granting additional
nonexclusive, or exclusive, or partially exclusive licenses for
inventions covered by this part when the Department of Energy
determines that to do so would provide for an equitable exchange of
patent rights. The following circumstances are examples in which such
licenses may be granted:
(a) In consideration of the settlement of interferences or other
administrative
[[Page 4890]]
proceedings before the U.S. Patent and Trademark Office;
(b) In consideration of a release of any claims;
(c) In exchange for or as a part of the consideration for a license
under adversely held patents;
(d) As necessary for meeting obligations of the U.S. under any
treaty, international agreement arrangement or cooperation, memorandum
of understanding or similar arrangement; or
(e) In consideration for the settlement or resolution of any
proceeding under the Department of Energy Organization Act or other
law.
Sec. Sec. 781.61, 781.62, 781.63, and 781.64 [Removed and Reserved]
0
8. Remove and reserve Sec. Sec. 781.61, 781.62, 781.63, and 781.64.
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9. Section 781.65 is revised to read as follows:
Sec. 781.65 Appeals.
(a) Standing. The following parties have the right to appeal under
this part:
(1) Pursuant to 37 CFR 404.11:
(i) A person whose application for a license has been denied;
(ii) A licensee whose license has been modified or terminated, in
whole or in part;
(iii) A person who timely filed a written objection in response to
the notice required by 37 CFR 404.7(a)(1)(i) or (b)(1)(i) and who can
demonstrate to the satisfaction of the Federal agency that such person
may be damaged by the agency action; or
(2) A management and operating contractor appealing an agency
decision to grant a copyright license to a third party pursuant to the
Rights in Data-Technology Transfer clause for DOE management and
operating contracts per 48 CFR part 970.
(b) Notice of Appeal. Appeal under paragraph (a) of this section
shall be initiated by filing a Notice of Appeal with the Secretary,
ATTN: Deputy General Counsel for Technology Transfer and Procurement
(``Deputy General Counsel''), within thirty (30) days from the date of
receipt of a written notice by the Department of Energy of an action
set forth in paragraph (a) of this section. The Notice of Appeal shall
specify the portion of the decision from which the appeal is taken. A
statement of fact and argument in the form of a brief in support of the
appeal shall be submitted with the Notice of Appeal or within thirty
(30) days thereafter.
(c) Procedure. Appeals under this section shall be conducted
pursuant to rules of procedure provided by the Deputy General Counsel.
(d) Within sixty (60) days of receiving appellant's brief pursuant
to paragraph (b) of this section or such other time period set by the
Deputy General Counsel, the Office of the Assistant General Counsel for
Technology Transfer and Intellectual Property shall submit to the
Deputy General Counsel a response brief and shall timely serve a copy
of the response brief to appellant.
(e) The Deputy General Counsel shall consider the facts and
arguments submitted in appellant's brief submitted under paragraph (b)
of this section, as well as those presented by the Assistant General
Counsel for Technology Transfer and Intellectual Property. An appeal by
a licensee under paragraph (a)(1)(ii) of this section may include a
hearing, upon request of the licensee, to address a dispute over any
relevant fact. Such request for a hearing must be received by the
Deputy General Counsel within thirty (30) days of appellant's receipt
of the response brief.
(f) The Deputy General Counsel shall issue a written decision,
which shall constitute the final action of the Department on the
matter.
(g) The parties may agree to Alternate Dispute Resolution in lieu
of an appeal.
(h) Appeals Arising Under National Nuclear Security Administration
(NNSA) Management and Operating Contracts. For appeals pursuant to
paragraph (a)(2) of this section arising under management and operating
contracts administered by NNSA for NNSA facilities, the NNSA Deputy
General Counsel for Procurement shall be designated as the appeal
authority (Deputy General Counsel) pursuant to paragraphs (b) through
(f) of this section.
Sec. Sec. 781.66, 781.71, and 781.81 [Removed and Reserved]
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10. Remove and reserve Sec. Sec. 781.66, 781.71 and 781.81.
[FR Doc. 2012-2162 Filed 1-31-12; 8:45 am]
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