[Title 40 CFR 95]
[Code of Federal Regulations (annual edition) - July 1, 1996 Edition]
[Title 40 - PROTECTION OF ENVIRONMENT]
[Chapter I - ENVIRONMENTAL PROTECTION AGENCY (CONTINUED)]
[Part 95 - MANDATORY PATENT LICENSES]
[From the U.S. Government Publishing Office]
40
PROTECTION OF ENVIRONMENT
9
1996-07-01
1996-07-01
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MANDATORY PATENT LICENSES
95
PART 95
PROTECTION OF ENVIRONMENT
ENVIRONMENTAL PROTECTION AGENCY (CONTINUED)
PART 95-MANDATORY PATENT LICENSES--Table of Contents
Sec.
95.1 Definitions.
95.2 Petition for mandatory license.
95.3 Findings prior to application to Attorney General.
95.4 Limitations on mandatory licenses.
Authority: 42 U.S.C. 7609; Sec. 104, Pub. L. 103-182, 107 Stat.
2057, 2064.
Source: 59 FR 67638, Dec. 30, 1994, unless otherwise noted.
Sec. 95.1 Definitions.
(a) As used in this part, all terms not defined in this section
shall have the meaning given them by the Act.
(b) Act means the Clean Air Act, as amended (42 U.S.C. Secs. 7401-
7671).
(c) Agency means the Environmental Protection Agency.
(d) Administrator means the Administrator of the Environmental
Protection Agency.
Sec. 95.2 Petition for mandatory license.
(a) Any party required to comply with sections 111, 112 or 202 of
the Act (42 U.S.C. 7411, 7412 or 7521) may petition to the Administrator
for a mandatory patent license pursuant to section 308 of the Act (42
U.S.C. 7608), under a patent that the petitioner maintains is necessary
to enable the petitioner to comply with Sections 111, 112 or 202 of the
Act.
(b)(1) Each petition shall be signed by the petitioner and shall
state the petitioner's name and address. If the petitioner is a
corporation, the petition shall be signed by an authorized officer of
the corporation, and the petition shall indicate the state of
incorporation. Where the petitioner elects to be represented by counsel,
a signed notice to that effect shall be included with the petition at
the time of filing.
(2) Each petition shall include a copy of the patent under which a
mandatory patent license is sought. The petition shall identify all
current owners of the patent and shall include a copy of all assignment
documents relevant to the patent that are available from the United
States Patent and Trademark Office.
(3) Each petition must identify any person whose interest the
petitioner believes may be affected by the grant of the license to which
the petition is directed.
(4) Each petition must contain a concise statement of all of the
essential facts upon which it is based. No particular form of statement
is required. Each petition shall be verified by the petitioner or by the
person having the best knowledge of such facts. In the case of facts
stated on information and belief, the source of such information and
grounds of belief shall be given. The statement of facts shall include
the following:
(i) An identification of the provisions of the Act and/or
regulations thereunder that the petitioner maintains petitioner will be
able to comply with if the petitioner is granted the patent license that
is the subject of the petition;
(ii) An identification of the nature and purpose of the petitioner's
intended use of the patent license;
(iii) An explanation of the relationship between the patented
technology and the activities to which petitioner
[[Page 277]]
proposes to apply the patented technology, including an estimate of the
effect on such activities stemming from the grant or denial of the
patent license;
(iv) A summary of facts demonstrating that the patent under which a
mandatory patent license is sought is being used or is intended for
public or commercial use;
(v) An explanation of why a mandatory patent license is necessary
for the petitioner to comply with the requirements of sections 111, 112
or 202 of the Act, and why the patented technology is not otherwise
available;
(vi) An explanation of why there are no other reasonable
alternatives for accomplishing compliance with sections 111, 112 or 202
of the Act;
(vii) An explanation of why the unavailability of a mandatory patent
license may result in a substantial lessening of competition or a
tendency to create a monopoly in any line of commerce in any section of
the United States;
(viii) A summary of efforts made by the petitioner to obtain a
patent license from the owner of the patent, including the terms and
conditions of any patent license proposed by petitioner to the patent
owner; and
(ix) The terms, if any, on which the owner of the patent has
proposed to grant the petitioner a patent license.
(5) Each petition shall include a proposed patent license that
states all of the terms and conditions that the petitioner proposes for
the patent license.
(6) Petitions shall be addressed to the Assistant Administrator for
Air and Radiation, Mail Code 6101, U.S. Environmental Protection Agency,
Washington, DC 20460.
(c) Petitions that do not include all of the information required in
paragraph (b) of this section shall be returned to the petitioner. The
petitioner may supplement the petition and resubmit the petition.
(d) If the Administrator, or the Administrator's designee, finds
that the criteria in Sec. 95.3 are not met, or otherwise decides to deny
the petition, a denial of the petition shall be sent to the petitioner,
along with an explanation of the reasons for the denial.
(e) If the Administrator, or the Administrator's designee, finds
that the criteria in Sec. 95.3 are met and decides to apply to the
Attorney General for a patent license under section 308 of the Act,
notice of such application shall be given to the petitioner, along with
a copy of the application sent to the Attorney General.
Sec. 95.3 Findings prior to application to Attorney General.
The Administrator, or the Administrator's designee, may apply to the
Attorney General for a mandatory patent license pursuant to section 308
of the Act (42 U.S.C. 7608) either in response to a petition under
Sec. 95.2 or on the Administrator's or designee's own initiative, only
after expressly finding that each one of the following mandatory
criteria is met:
(a) The application is for a patent license covering no more than
one patent;
(b) The party to whom the proposed patent license is to be granted
has presented the Administrator or designee with evidence that such
party has made reasonable efforts to obtain a patent license from the
patent owner with terms similar to the license terms to be proposed in
the application to the Attorney General;
(c) The patent under which a patent license is sought in the
application to the Attorney General is being used or is intended for
public or commercial use;
(d) The mandatory patent license is necessary for a party to comply
with the requirements of sections 111, 112 or 202 of the Act (42 U.S.C.
7411, 7412 or 7521);
(e) The patented technology is not otherwise reasonably available,
and there are no other reasonable alternatives for accomplishing
compliance with sections 111, 112 or 202 of the Act (42 U.S.C. 7411,
7412 or 7521); and
(f) The unavailability of a mandatory patent license may result in a
substantial lessening of competition or a tendency to create a monopoly
in any line of commerce in any section of the United States.
[[Page 278]]
Sec. 95.4 Limitations on mandatory licenses
(a) If the Administrator, or the Administrator's designee, decides
to apply to the Attorney General for a mandatory patent license in
accordance with Sec. 95.3, the application shall include a proposed
patent license with the following limitations:
(1) The scope and duration of the patent license shall be limited to
that necessary to permit the proposed licensee to comply with the
requirements the Act;
(2) The patent license shall be nonexclusive;
(3) The patent license shall be non-assignable, except with that
part of the enterprise or goodwill that enjoys the license;
(4) The patent license shall be for use of the licensed technology
in the United States only;
(5) The patent license shall extend only to those uses necessary to
enable the licensee to comply with sections 111, 112 or 202 of the Act
(42 U.S.C. 7411, 7412 or 7521);
(6) The patent license shall provide for termination, subject to
adequate protections of the legitimate interests of the licensed party,
when the circumstances that made the compulsory patent license necessary
cease to exist and are unlikely to recur; and
(7) The patent license shall provide for adequate remuneration that
takes into account the economic value of the license.
(b) The Administrator, or the Administrator's designee, may decide
as appropriate to include additional conditions, terms or limitations on
the scope of the patent license for which application is made to the
Attorney General.