---
kind: "section"
citation: "42 U.S.C. § 5908"
title: "42"
title_heading: "The Public Health and Welfare"
number: "5908"
heading: "Patents and inventions"
release: "119-102"
url: "https://uscodex.org/usc/42/5908"
units:
  - "Chapter 74 — Nonnuclear Energy Research and Development"
---

# §5908. Patents and inventions

- (a) **Vesting of title to invention and issuance of patents to United States; prerequisites—** Whenever any [invention](#m-4) is made or conceived in the course of or under any [contract](#m-2) of the Department, other than nuclear [energy](/usc/42/6311.md?p=7) research, development, and demonstration pursuant to the Atomic Energy Act of 1954 ([42 U.S.C. 2011](/usc/42/2011.md) et seq.) and the [Secretary](/usc/42/242q–4.md?p=2) determines that—
  - (1) the [person](#m-1) who made the [invention](#m-4) was employed or assigned to perform research, development, or demonstration work and the [invention](#m-4) is related to the work he was employed or assigned to perform, or that it was within the scope of his employment duties, whether or not it was made during working hours, or with a contribution by the Government of the use of Government [facilities](/usc/42/11049.md?p=4), equipment, materials, allocated [funds](/usc/42/12854.md?p=3), information proprietary to the Government, or services of Government [employees](/usc/42/1320a–7h.md?p=e-7) during working hours; or
  - (2) the [person](#m-1) who made the [invention](#m-4) was not employed or assigned to perform research, development, or demonstration work, but the [invention](#m-4) is nevertheless related to the [contract](#m-2) or to the work or duties he was employed or assigned to perform, and was made during working hours, or with a contribution from the Government of the sort referred to in [clause (1)](#a-1).[^1]

  title to such [invention](#m-4) shall vest in the [United States](/usc/42/403.md?p=k), and if patents on such [invention](#m-4) are issued they shall be issued to the [United States](/usc/42/403.md?p=k), unless in particular circumstances the [Secretary](/usc/42/242q–4.md?p=2) waives all or any part of the rights of the [United States](/usc/42/403.md?p=k) to such [invention](#m-4) in conformity with the provisions of this section.

- (b) **Contract as requiring report to Department of invention, etc., made in course of contract—** Each [contract](#m-2) entered into by the Department with any [person](#m-1) shall contain effective provisions under which such [person](#m-1) shall furnish promptly to the Department a written report containing full and complete technical information concerning any [invention](#m-4), discovery, improvement, or innovation which may be made in the course of or under such [contract](#m-2).
- (c) **Waiver by Secretary of rights of United States; regulations prescribing procedures; record of waiver determinations; objectives—** Under such regulations in conformity with the provisions of this section as the [Secretary](/usc/42/242q–4.md?p=2) shall prescribe, the [Secretary](/usc/42/242q–4.md?p=2) may waive all or any part of the rights of the [United States](/usc/42/403.md?p=k) under this section with respect to any [invention](#m-4) or class of [inventions](#m-4) made or which may be made by any [person](#m-1) or class of [persons](#m-1) in the course of or under any [contract](#m-2) of the Department if he determines that the interests of the [United States](/usc/42/403.md?p=k) and the general public will be best served by such waiver. The Department shall maintain a publicly available, periodically updated record of waiver determinations. In making such determinations, the [Secretary](/usc/42/242q–4.md?p=2) shall have the following objectives:
  - (1) Making the benefits of the [energy](/usc/42/6311.md?p=7) research, development, and demonstration [program](/usc/42/274l–1.md?p=4) widely available to the public in the shortest practicable time.
  - (2) Promoting the commercial utilization of such [inventions](#m-4).
  - (3) Encouraging participation by private [persons](#m-1) in the Department’s [energy](/usc/42/6311.md?p=7) research, development, and demonstration [program](/usc/42/274l–1.md?p=4).
  - (4) Fostering competition and preventing undue market concentration or the creation or maintenance of other situations inconsistent with the antitrust laws.
- (d) **Considerations applicable at time of contracting for waiver determination by Secretary—** In determining whether a waiver to the [contractor](#m-5) at the time of contracting will best serve the interests of the [United States](/usc/42/403.md?p=k) and the general public, the [Secretary](/usc/42/242q–4.md?p=2) shall specifically include as considerations—
  - (1) the extent to which the participation of the [contractor](#m-5) will expedite the attainment of the purposes of the [program](/usc/42/274l–1.md?p=4);
  - (2) the extent to which a waiver of all or any part of such rights in any or all fields of technology is needed to secure the participation of the particular [contractor](#m-5);
  - (3) the extent to which the [contractor](#m-5)’s commercial position may expedite utilization of the research, development, and demonstration [program](/usc/42/274l–1.md?p=4) results;
  - (4) the extent to which the Government has contributed to the field of technology to be funded under the [contract](#m-2);
  - (5) the purpose and nature of the [contract](#m-2), including the intended use of the results developed thereunder;
  - (6) the extent to which the [contractor](#m-5) has made or will make substantial investment of financial resources or technology developed at the [contractor](#m-5)’s private expense which will directly benefit the work to be performed under the [contract](#m-2);
  - (7) the extent to which the field of technology to be funded under the [contract](#m-2) has been developed at the [contractor](#m-5)’s private expense;
  - (8) the extent to which the Government intends to further develop to the point of commercial utilization the results of the [contract](#m-2) effort;
  - (9) the extent to which the [contract](#m-2) objectives are concerned with the public health, public safety, or public welfare;
  - (10) the likely effect of the waiver on competition and market concentration; and
  - (11) in the case of a nonprofit educational institution, the extent to which such institution has a technology transfer capability and [program](/usc/42/274l–1.md?p=4), approved by the [Secretary](/usc/42/242q–4.md?p=2) as being consistent with the applicable policies of this section.
- (e) **Considerations applicable to identified invention for waiver determination by Secretary—** In determining whether a waiver to the [contractor](#m-5) or inventor or rights to an identified [invention](#m-4) will best serve the interests of the [United States](/usc/42/403.md?p=k) and the general public, the [Secretary](/usc/42/242q–4.md?p=2) shall specifically include as considerations [paragraphs (4) through (11)](#d-4..d-11) of subsection (d) as applied to the [invention](#m-4) and—
  - (1) the extent to which such waiver is a reasonable and necessary incentive to call forth private risk capital for the development and commercialization of the [invention](#m-4); and
  - (2) the extent to which the plans, intentions, and ability of the [contractor](#m-5) or inventor will obtain expeditious commercialization of such [invention](#m-4).
- (f) **Rights subject to reservation where title to invention vested in United States—** Whenever title to an [invention](#m-4) is vested in the [United States](/usc/42/403.md?p=k), there may be reserved to the [contractor](#m-5) or inventor—
  - (1) a revocable or irrevocable nonexclusive, paid-up license for the practice of the [invention](#m-4) throughout the world; and
  - (2) the rights to such [invention](#m-4) in any foreign country where the [United States](/usc/42/403.md?p=k) has elected not to secure patent rights and the [contractor](#m-5) elects to do so, subject to the rights set forth in paragraphs (2), (3), (6), and (7) of subsection (h): Provided, That when specifically requested by the Department and three years after issuance of such a patent, the [contractor](#m-5) shall submit the report specified in subsection (h)(1) of this section.
- (g) **to (i) Repealed. Pub. L. 96–517, § 7(c), Dec. 12, 1980, 94 Stat. 3027—**
- (j) **Small business status of applicant for waiver or licenses—** The [Secretary](/usc/42/242q–4.md?p=2) shall, in granting waivers or licenses, consider the small business status of the applicant.
- (k) **Protection of invention, etc., rights by Secretary—** The [Secretary](/usc/42/242q–4.md?p=2) is authorized to take all suitable and necessary steps to protect any [invention](#m-4) or discovery to which the [United States](/usc/42/403.md?p=k) holds title, and to require that [contractors](#m-5) or [persons](#m-1) who acquire rights to [inventions](#m-4) under this section protect such [inventions](#m-4).
- (l) **Department as defense agency of United States for purpose of maintaining secrecy of inventions—** The Department shall be considered a defense agency of the [United States](/usc/42/403.md?p=k) for the purpose of [chapter 17](/usc/35/chptII-ch17.md) of title 35.
- (m) **Definitions—** As used in this section—
  - (1) the term “person” means any individual, partnership, [corporation](/usc/42/2296b–7.md?p=1), association, institution, or other entity;
  - (2) the term “contract” means any contract, grant, [agreement](/usc/42/1320b–8.md?p=a-3-A), understanding, or other arrangement, which includes research, development, or demonstration work, and includes any assignment, substitution of parties, or subcontract executed or entered into thereunder;
  - (3) the term “made”, when used in relation to any [invention](#m-4), means the conception or first actual reduction to practice of such [invention](#m-4);
  - (4) the term “invention” means inventions or discoveries, whether patented or unpatented; and
  - (5) the term “contractor” means any [person](#m-1) having a [contract](#m-2) with or on behalf of the Department.
- (n) **Report concerning applicability of existing patent policies to energy programs; time for submission to President and appropriate congressional committees—** Within twelve months after December 31, 1974, the [Secretary](/usc/42/242q–4.md?p=2) with the participation of the [Attorney General](/usc/42/14902.md?p=6), the [Secretary](/usc/42/242q–4.md?p=2) of [Commerce](/usc/42/6311.md?p=7), and other officials as the President may designate, shall submit to the President and the appropriate congressional committees a report concerning the applicability of existing patent policies affecting the [programs](/usc/42/274l–1.md?p=4) under this chapter, along with his recommendations for amendments or additions to the statutory patent policy, including his recommendations on mandatory licensing, which he deems advisable for carrying out the purposes of this chapter.

## Footnotes

[^1]: So in original. Probably should be a comma.

## Source credit

(Pub. L. 93–577, § 9, Dec. 31, 1974, 88 Stat. 1887; Pub. L. 96–517, § 7(c), Dec. 12, 1980, 94 Stat. 3027; Pub. L. 109–58, title X, § 1009(b)(7), Aug. 8, 2005, 119 Stat. 935.)

## Notes

### Editorial Notes

### References in Text

The Atomic Energy Act of 1954, referred to in subsec. (a), is act Aug. 1, 1946, ch. 724, as added by act Aug. 30, 1954, ch. 1073, § 1, 68 Stat. 919, which is classified principally to chapter 23 (§ 2011 et seq.) of this title. For complete classification of this Act to the Code, see Short Title note set out under section 2011 of this title and Tables.

### Amendments

2005—Subsec. (a). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” in introductory and concluding provisions.

Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration” in introductory provisions.

Subsec. (b). Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration” in two places.

Subsec. (c). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” wherever appearing in introductory provisions.

Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration” in two places in introductory provisions.

Subsec. (c)(3). Pub. L. 109–58, § 1009(b)(7)(C), substituted “Department’s” for “Administration’s”.

Subsec. (d). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” in introductory provisions and par. (11).

Subsec. (e). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator” in introductory provisions.

Subsec. (f)(2). Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration”.

Subsecs. (j), (k). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary” for “Administrator”.

Subsec. (l). Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration”.

Subsec. (m)(5). Pub. L. 109–58, § 1009(b)(7)(A), substituted “Department” for “Administration”.

Subsec. (n). Pub. L. 109–58, § 1009(b)(7)(B), substituted “Secretary with” for “Administrator with”.

1980—Subsec. (g). Pub. L. 96–517 struck out subsec. (g) which related to licenses for inventions, promulgation of regulations specifying terms and conditions, criteria and procedures for grant of exclusive or partially exclusive licenses, and record of determinations.

Subsec. (h). Pub. L. 96–517 struck out subsec. (h) which related to required terms and conditions in waiver of rights or grant of exclusive or partially exclusive license.

Subsec. (i). Pub. L. 96–517 struck out subsec. (i) which related to publication in the Federal Register by the Administrator of waiver or license termination hearing requirements and availability of records.

### Statutory Notes and Related Subsidiaries

### Effective Date of 1980 Amendment

Amendment by Pub. L. 96–517 effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub. L. 96–517, set out as a note under section 41 of Title 35, Patents.