PUBLIC LAW 99-502-OCT. 20,1986 100 STAT. 1785
Public Law 99-502 99th Congress
An Act
To amend the Stevenson-Wydler Technology Innovation Act of 1980 to promote technology transfer by authorizing Government-operated laboratories to enter into Oct. 20, 1986 cooperative research agreements and by establishing a Federal Laboratory Consor- W.R. 37731 tium for Technology Transfer within the National Bureau of Standards, and for other purposes.
Be it enacted by the Senate and House of Representatives of the United States of America in Congressassembled, Federal
Technology SECTION 1. SHORT TITLE. Transfer Act of
1986.This Act may be cited as the "Federal Technology Transfer Act of Gmmerce and 1986". trade.
Government SEC. 2. COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENTS. organization and
The Stevenson-Wydler Technology Innovation Act of 1980 is ~ ~ ~ ~ ~ o l amended by redesignating sections 12 through 15 as sections 16 nok. through 19, and by inserting immediately after section 11 the 15 usc 3701 following: note.
15 USC "SEC. 12. COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENTS. 3711-3714.
"(a)GENERALAUTHORITY.-EachFederal agency may permit the 15 USC 3710a.
director of any of its Government-operated Federal laboratories- "(1) to enter into cooperative research and development state and local
agreements on behalf of such agency (subject to subsection (c)of governments. this section) with other Federal agencies; units of State or local ET&~:,~~government; industrial organizations (including corporations, schools and partnerships, and limited partnerships, and industrial develop- colleges. ment organizations); public and private foundations; nonprofit organizations (including universities); or other persons (includ- ing licensees of inventions owned by the Federal agency); and
"(2) to negotiate licensing agreements under section 207 of title 35, United States Code, or under other authorities for Government-owned inventions made a t the laboratory and other inventions of Federal employees that may be voluntarily assigned to the Government.
"(b) ENUMERATEDA U T H O R I T Y . - U ~ ~ ~ ~agreements entered into pursuant to subsection (a)(l), a Government-operated Federal lab- oratory may (subject to subsection (c)of this section)-
"(1) accept, retain, and use funds, personnel, services, and property from collaborating parties and provide personnel, serv- ices, and property to collaborating parties;
"(2) grant or agree to grant in advance, to a collaborating Patentsand party, patent licenses or assignments, or options thereto, in trademarks. any invention made in whole or in part by a Federal em- ployee under the agreement, retaining a nonexclusive, nontransferrable, irrevocable, paid-up license to practice the invention or have the invention practiced throughout the world by or on behalf of the Government and such other rights as the Federal laboratory deems appropriate; and
100 STAT. 1786
Regulations.
PUBLIC LAW 99-502-OCT. 20, 1986
"(3) waive, subject to reservation by the Government of a nonexclusive, irrevocable, paid-up license to practice the inven- tion or have the invention practiced throughout the world by or on behalf of the Government, in advance, in whole or in part, any right of ownership which the Federal Government may have to any subject invention made under the agreement by a collaborating party or employee of a collaborating party; and
"(4) to the extent consistent with any applicable agency requirements and standards of conduct, permit employees or former employees of the laboratory to participate in efforts to commercialize inventions they made while in the service of the United States.
"(c) CONTRACTCONSIDERATIONS.-(1)A Federal agency may issue regulations on suitable procedures for implementing the provisions of this section: however. im~lementationof this section shall not be delayed until issuance of such regulations.
"(2)The agency in permitting a Federal laboratory to enter into agreements under this section shall be guided by the purposes of this Act.
"(3)(A)Any agency using the authority given it under subsection (a)shall review employee standards of conduct for resolving poten- tial conflicts of interest to make sure they adequately establish guidelines for situations likely to arise through the use of this authority, including but not limited to cases where present or former employees or their partners negotiate licenses or assign- ments of titles to inventions or negotiate cooperative research and development agreements with Federal agencies (including the agency with which the employee involved is or was formerly employed).
"(B) If, in implementing subparagraph (A), an agency is unable to resolve potential conflicts of interest within its current statutory framework, it shall propose necessary statutory changes to be for- warded to its authorizing committees in Congress.
"(4) The laboratory director in deciding what cooperative research and development agreements to enter into shall-
Small business. "(A) give special consideration to small business firms, and consortia involving small business firms; and
Business and "(B) give preference to business units located in the United industry. States which agree that products embodying inventions made International agreements.
under the cooperative research and development agreement or produced through the use of such inventions will be manufac- tured substantially in the United States and, in the case of any industrial organization or other person subject to the control of a foreign company or government, as appropriate, take into consideration whether or not such foreign government permits United States agencies, organizations, or other persons to enter into cooperative research and development agreements and licensing agreements.
"(5)(A) If the head of the agency or his designee desires an opportunity to disapprove or require the modification of any such agreement, the agreement shall provide a 30-day period within which such action must be taken beginning on the date the agree- ment is presented to him or her by the head of the laboratory concerned.
"(B) In any case in which t h e head of an agency or his designee disapproves or requires the modification of an agreement presented under this section, the head of the agency or such designee shall
PUBLIC LAW 99-502-OCT. 20, 1986 100 STAT. 1787
transmit a written explanation of such disapproval or modification to the head of the laboratory concerned.
"(6) Each agency shall maintain a record of all agreements en- Records. tered into under this section.
"(dl DEFINITION.-ASused in this section- "(1) the term 'cooperative research and development agree-
ment' means any agreement between one or more Federal laboratories and one or more non-Federal parties under which the Government, through its laboratories, provides personnel, services, facilities, equipment, or other resources with or with- out reimbursement (but not funds to non-Federal parties) and the non-Federal parties provide funds, personnel, services, facilities, equipment, or other resources toward the conduct of specified research or development efforts which are consistent with the missions of the laboratory; except that such term does not include a procurement contract or cooperative agreement as those terms are used in sections 6303, 6304, and 6305 of title 31, United States Code; and
"(2) the term 'laboratory' means a facility or group of facili- ties owned, leased, or otherwise used by a Federal agency, a substantial purpose of which is the performance of research, development, or engineering by employees of the Federal Government.
"(el DETERMINATIONOF LABORATORYMISSIONS.-For purposes of this section, an agency shall make separate determinations of the mission or missions of each of its laboratories.
"(0 RELATIONSHIPTO OTHERLAWS.-Nothing in this section is intended to limit or diminish existing authorities of any agency.".
SEC. 3. ESTABLISHMENT OF FEDERAL LABORATORY CONSORTIUM FOR TECHNOLOGY TRANSFER
Section 11of the Stevenson-Wydler Technology Innovation Act of 1980 (15U.S.C. 3710)is amended- post, p. 1191.
(1)by redesignating subsection (e)as subsection (0; and (2)by inserting after subsection (dl the following:
"(e) ESTABLISHMENTOF FEDERALABORATORYCONSORTIUMFOR TECHNOLOGYTRANSFER.^^) There is hereby established the Federal Laboratory Consortium for Technology Transfer (hereinafter re- ferred to as the 'Consortium') which, in cooperation with Federal Laboratories and the private sector, shall-
"(A) develop and (with the consent of the Federal laboratory concerned) administer techniques, training courses, and mate- rials concerning technology transfer to increase the awareness of Federal laboratory employees regarding the commercial potential of laboratory technology and innovations;
"(B)furnish advice and assistance requested by Federal agen- cies and laboratories for use in their technology transfer pro- grams (including the planning of seminars for small business and other industry);
"(C) provide a clearinghouse for requests, received a t the laboratory level, for technical assistance from States and units of local governments, businesses, industrial development organizations, not-for-profit organizations including univer- sities, Federal agencies and laboratories, and other persons, and-
"(i) to the extent that such requests can be responded to with published information available to the National Tech-
100 STAT. 1788 PUBLIC LAW 99-502-OCT. 20, 1986
nical Information Service, refer such requests to that Serv- ice, and
"(ii) otherwise refer these requests to the appropriate Federal laboratories and agencies:
"(Dl facilitate communicaGon and coordination between Offices of Research and Technology Applications of Federal- - .. laboratories;
"(El utilize (with the consent of the agency involved) the ex~er t i seand services of the National Science Foundation. the ~ e ~ a r t m e n tof Commerce, the National Aeronautics and Space Administration, and other Federal agencies, as necessary;
"(F) with the consent of any Federal laboratory, facilitate the use by such laboratory of appropriate technology transfer mechanisms such as personnel exchanges and computer-based systems;
"(G)with the consent of any Federal laboratory, assist such laboratory to establish programs using technical volunteers to provide technical assistance to communities related to such iaboratory;
"(H) facilitate communication and cooperation between Of- fices of Research and Technology Applications of Federal lab- oratories and regional, State, and local technology transfer organizations;
"(I) when requested, assist colleges or universities, businesses, nonprofit organizations, State or local governments, or regional organizations to establish programs to stimulate research and to encourage technology transfer in such areas as technology program development, curriculum design, long-term research planning, personnel needs projections, and productivity assess- ments; and
"(J)seek advice in each Federal laboratory consortium region from representatives of State and local governments, large and small business, universities, and other appropriate persons on the effectiveness of the program (and any such advice shall be provided a t no expense to the Government).
"(2) The membership of the Consortium shall consist of the Fed- eral laboratories described in clause (1)of subsection (b) and such other laboratories as may choose to join the Consortium. The rep- resentatives to the Consortium shall include a senior staff member of each Federal laboratory which is a member of the Consortium and a representative appointed from each Federal agency with one or more member laboratories.
"(3)The representatives to the Consortium shall elect a Chairman of the ~onsoi t ium.
"(4) The Director of the National Bureau of Standards shall provide the Consortium, on a reimbursable basis, with administra- tive services, such as office space, personnel, and support services of the Bureau, as requested by the Consortium and approved by such
Reports.
Director. "(5) Each Federal laboratory or agency shall transfer technology
directly to users or representatives of users, and shall not transfer technology directly to the Consortium. Each Federal laboratory shall conduct and transfer technology only in accordance with the practices and policies of the Federal agency which owns, leases, or otherwise uses such Federal laboratory.
"(6)Not later than one year after the date of the enactment of this subsection, and every year thereafter, the Chairman of the Consor-
PUBLIC LAW 99-502-OCT. 20,1986 100 STAT. 1789
tium shall submit a report to the President, to the appropriate authorization and appropriation committees of both Houses of the Congress, and to each agency with respect to which a transfer of funding is made (for the fiscal year or years involved) under para- graph (71, concerning the activities of the Consortium and the expenditures made by it under this subsection during the year for which the report is made.
"(7)(A) Subject to subparagraph (B), a n amount equal to 0.005 percent of that portion of the research and development budget of each Federal agency that is to be utilized by the laboratories of such agency for a fiscal year referred to in subparagraph (B)(ii)shall be transferred by such agency to the National Bureau of Standards at the beginning of the fiscal year involved. Amounts so transferred shall be provided by the Bureau to the Consortium for the purpose of carrying out activities of the Consortium under this subsection.
"(B) A transfer shall be made by any Federal agency under subparagraph (A),for any fiscal year, only if-
"(i) the amount so transferred by that agency (as determined under such subparagraph) would exceed $10,000; and
"(ii) such transfer is made with respect to the fiscal year 1987, 1988,1989,1990, or 1991.
"(C) The heads of Federal agencies and their designees, and the directors of Federal laboratories, may provide such additional sup- port for operations of the Consortium as they deem appropriate.
"(8)(A)The Consortium shall use 5 percent of the funds provided in paragraph (7)(A) to establish demonstration projects in tech- nology transfer. To carry out such projects, the Consortium may arrange for grants or awards to, or enter into agreements with, nonprofit State, local, or private organizations or entities whose primary purposes are to facilitate cooperative research between the Federal laboratories and organizations not associated with the Fed- eral laboratories, to transfer technology from the Federal labora- tories, and to advance State and local economic activity.
"(B) The demonstration projects established under subparagraph (A)shall serve as model programs. Such projects shall be designed to develop programs and mechanisms for technology transfer from the Federal laboratories which may be utilized by the States and which will enhance Federal, State, and local programs for the transfer of technology.
"(C) Application for such grants, awards, or agreements shall be in such form and contain such information as the Consortium or its designee shall specify. "(DlAny person who receives or utilizes any proceeds of a grant or
award made, or agreement entered into, under this paragraph shall keep such records as the Consortium or its designee shall determine are necessary and appropriate to facilitate effective audit and evaluation, including records which fully disclose the amount and disposition of such proceeds and the total cos,t of the project in connection with which such proceeds were used. . SEC. 4. UTILIZATION OF FEDERAL TECHNOLOGY.
(a)RESPONSIBILITYFOR TECHNOLOGYT R A N S F E R . - - ~ ~ C ~ ~ O ~l l (a) of the Stevenson-Wydler Technology Innovation Act of 1980 (15U.S.C. 3710(a))is amended-
(1)by inserting "(1)"after "POLICY.-";and (2) by adding a t the end thereof the following new
paragraphs:
Records.
100 STAT. 1790 PUBLICLAW 99-502-OCT. 20,1986
(2) Technology transfer, consistent with mission responsibil- ities, is a responsibility of each laboratory science and engineering professional.
"(3)Each laboratory director shall ensure that efforts to transfer technology are considered positively in laboratory job descriptions, employee promotion policies, and evaluation of the job performance of scientists and engineers in the laboratory.".
(b)RESEARCHAND TECHNOLOGYAPPLICATIONSOFFICES.-(1) Section ll(b) of such Act (15U.S.C. 3710(b))is amended-
(A) by striking out "a total annual budget exceeding $20,000,000 shall provide a t least one professional individual full-time" and inserting in lieu thereof "200 or more full-time equivalent scientific, engineering, and related technical posi- tions shall provide one or more full-time equivalent positions";
(B)by inserting immediately before the next to last sentence the following new sentence: "Furthermore, individuals filling positions in an Office of Research and Technology Applications shall be included in the overall laboratory/agency management development program so as to ensure that highly competent technical managers are full participants in the technology transfer process.";
(C)by striking out "requirements set forth in (1)and/or (2)of this subsection" in the next to last sentence and inserting in lieu thereof "reauirement set forth in clause (2)of the preceding- sentence"; and
(Dl by striking out "either requirement (1)or (2)" in the last sentence and inserting in lieu thereof "such requirement".
(2) Section ll(c) of such Act (15 U.S.C. 3710(c)) is amended-
State and local governments.
. . (A) by striking out para&aph(l) and inserting in lieu thereof
the following: "(1)to prepare application assessments for selected research
and development projects in which that laboratory is engaged and which in the opinion of the laboratory may have potential commercial applications;";
(B) by striking out "the Center for the Utilization of Federal Technology" in paragraph (3) and inserting in lieu thereof "the National Technical Information Service, the Federal Labora- tory Consortium for Technology Transfer,", and by striking out "and" after the semicolon;
(C) by striking out "in response to requests from State and local government officials." in paragraph (4) and inserting in lieu thereof "to State and local government officials; and"; and
(Dlby inserting immediately after paragraph (4) the following new paragraph:
"(5) to participate, where feasible, in regional, State, and local programs designed to facilitate or stimulate the transfer of technology for the benefit of the region, State, or local jurisdic- tion in which the Federal laboratory is located."
(c) DISSEMINATIONOF TECHNICALINFORMATION.-Sectionll(d) of such Act (15U.S.C. 3710(d))is amended-
(1) by striking out "(d)" and all that follows down through "shall-" and inserting in lieu thereof the following:
(d) DISSEMINATIONOF TECHNICALINFORMATION.-T~~National Technical Information Service shall-";
(2)by striking out paragraph (2); (3)by striking out "existing" in paragraph (3),and redesignat-
ing such paragraph as paragraph (2);
PUBLIC LAW 99-502-OCT. 20, 1986 100 STAT. 1791
15 USC 3710.
(4) by striking out paragraph (4) and inserting in lieu thereof the following:
"(3) receive requests for technical assistance from State and State and local local governments, respond to such requests with published governments. information available to the Service, and refer such requests to the Federal Laboratory Consortium for Technology Transfer to the extent that such requests require a response involving more than the published information available to the Service;";
(5) by redesignating paragraphs (5) and (6) as paragraphs (4) and (51, respectively; and
(6) by striking out "(c)(4)" in paragraph (4)as so redesignated and inserting in lieu thereof "(c)(3)".
(d) AGENCYREPORTING.-S~C~~O~ll(n of such Act (15 U.S.C. 3710(e))(as redesignated by section 3(1) of this Act) is amended-
(1) by striking out "prepare biennially a report summarizing Reports. the activities" in the first sentence and inserting in lieu thereof "report annually to the Congress, as part of the agency's annual budget submission, on the activities"; and
(2) by striking out the second sentence.
SEC. 5. FUNCTIONS OF THE SECRETARY OF COMMERCE.
Section 11of the Stevenson-Wydler Technology Innovation Act of 1980 (as amended by the preceding provisions of this Act) is further amended by adding a t the end thereof the following new subsection:
"(g) FUNCTIONSOF THE SECRETARY.-(1)The Secretary, in consulta- tion with other Federal agencies, may-
"(A) make available to interested agencies the expertise of the Department of Commerce regarding the commercial potential of inventions and methods and options for commercialization which are available to the Federal laboratories, including re- search and development limited partnerships;
"(B) develop and disseminate to appropriate agency and lab- oratory personnel model provisions for use on a voluntary basis in cooperative research and development arrangements; and
"(C) furnish advice and assistance, upon request, to Federal agencies concerning their cooperative research and develop- ment programs and projects.
"(2)Two years after the date of the enactment of this subsection Reports. and every two years thereafter, the Secretary shall submit a sum- mary report to the President and the Congress on the use by the agencies and the Secretary of the authorities specified in this Act. Other Federal agencies shall cooperate in the report's preparation.
"(3)Not later than one year after the date of the enactment of the Reports. Federal Technology Transfer Act of 1986, the Secretary shall submit to the President and the Congress a report regarding-
"(A) any copyright provisions or other types of barriers which Copyrights. tend to restrict or limit the transfer of federally funded com- State and local puter software to the private sector and to State and local governments. governments, and agencies of such State and local governments; and
"(B) the feasibility and cost of compiling and maintaining a current and comprehensive inventory of all federally funded training software.".
100 STAT. 1
15 USC 3710b.
15 USC 3710~.
Effective date. Federal Register? publ~cat~on.
Regulations.
PUBLIC LAW 99-502-OCT. 20, 1986
SEC. 6. REWARDS FOR SCIENTIFIC, ENGINEERING, AND TECHNICAL PERSONNEL OR FEDERAL AGENCIES.
The Stevenson-Wydler Technology Innovation Act of 1980 (as amended by the preceding provisions of this Act) is further amended by inserting after section 12 the following new section: "SEC. 13. REWARDS FOR SCIENTIFIC, ENGINEERING. AND TECHNICAL
PERSONNEL OF FEDERAL AGENCIES.
"The head of each Federal agency that is making expenditures a t a rate of more than $50,000,000 per fiscal year for research and development in its Government-operated laboratories shall use the appropriate statutory authority to develop and implement a cash awards program to reward its scientific, engineering, and technical personnel for-
"(1)inventions, innovations, or other outstanding scientific or technological contributions of value to the United States due to commercial application or due to contributions to missions of the Federal agency or the Federal government, or
"(2) exemplary activities that promote the domestic transfer of science and technology development within the Federal Government and result in utilization of such science and tech- nology by American industry or business, universities, State or local governments, or other non-Federal parties.".
SEC. 7. DISTRIBUTION OF ROYALTIES RECEIVED BY FEDERAL AGENCIES.
The Stevenson-Wydler Technology Innovation Act of 1980 (as amended by the preceding provisions of this Act) is further amended by inserting after section 13 the following new section: "SEC. 14. DlSTRIRUTION OF ROYALTIES RECEIVED BY FEDERAL
AGENCIES.
"(a) INGENERAL.-(1)Except a s provided in paragraphs (2)and (41, any royalties or other income received by a Federal agency from the licensing or assignment of inventions under agreements entered into under section 12, and inventions of Government-operated Fed- eral laboratories licensed under section 207 of title 35, United States Code, or under any other provision of law, shall be retained by the agency whose laboratory produced the invention and shall be dis- posed of as follows:
"(A)(i) The head of the agency or his designee shall pay a t least 15 percent of the royalties or other income the agency receives on account of any invention to the inventor (or co-inventors) if the inventor (or each such co-inventor) was an employee of the agency at the time the invention was made. This clause shall take effect on the date of the enactment of this section unless the agency publishes a notice in the Federal Register within 90 days of such date indicating its election to file a Notice of Proposed Rulemaking pursuant to clause (ii).
"(ii) An agency may promulgate, in accordance with section 553 of title 5, United States Code, regulations providing for an alternative program for sharing royalties with inventors who were employed by the agency a t the time the invention was made and whose names appear on licensed inventions. Such regulations must-
"(I) guarantee a fixed minimum payment to each such inven- tor, each year that the agency receives royalties from that inventor's invention;
PUBLIC LAW 99-502-OCT. 20,1986 100 STAT. 1793
"(11)provide a percentage royalty share to each such inventor, each year that the agency receives royalties from that inven- tor's invention in excess of a threshold amount;
"(111) provide that total payments to all such inventors shall exceed 15 percent of total agency royalties in any given fiscal year; and
"(IV) provide appropriate incentives from royalties for those laboratory employees who contribute substantially to the tech- nical development of a licensed invention between the time of the filing of the patent application and the licensing of the invention.
"(iii) An agency that has published its intention to promulgate regulations under clause (ii) may elect not to pay inventors under clause (i) until the expiration of two years after the date of the enactment of this Act or until the date of the promulgation of such regulations, whichever is earlier. If an agency makes such an elec- tion and after two years the regulations have not been promulgated, the agency shall make payments (in accordance with clause (i))of a t least 15 percent of the royalties involved, retroactive to the date of the enactment of this Act. If promulgation of the regulations occurs within two years after the date of the enactment of this Act, payments shall be made in accordance with such regulations, retro- active to the date of the enactment of this Act. The agency shall retain its royalties until the inventor's portion is paid under either clause (i) or (ii). Such royalties shall not be transferred to the agency's Government-operated laboratories under subparagraph (B) and shall not revert to the Treasury pursuant to paragraph (2) as a result of any delay caused by rulemaking under this subparagraph.
"(B) The balance of the royalties or other income shall be trans- ferred by the agency to its Government-operated laboratories, with the majority share of the royalties or other income from any inven- tion going to the laboratory where the invention occurred; and the funds so transferred to any such laboratory may be used or obligated by that laboratory during the fiscal year in which they are received or during the succeeding fiscal year-
"(i) for payment of expenses incidental to the administration and licensing of inventions by that laboratory or by the agency with respect to inventions which occurred a t that laboratory, including the fees or other costs for the services of other agen- cies, persons, or organizations for invention management and licensing services;
"(ii) to reward scientific, engineering, and technical employ- ees of that laboratory;
"(iii) to further scientific exchange among the Government- operated laboratories of the agency; or
"(iv) for education and training of employees consistent with the research and development mission and objectives of the agency, and for other activities that increase the licensing potential for transfer of the technology of the Government- operated laboratories of the agency.
Any of such funds not so used or obligated by the end of the fiscal year succeeding the fiscal year in which they are received shall be paid into the Treasury of the United States.
"(2) If, after payments to inventors under paragraph (11, the royalties received by an agency in any fscal year exceed 5 percent of the budget of the Government-operated laboratories of the agency for that year, 75 percent of such excess shall be paid to the Treasury
100 STAT. 1794 PUBLIC LAW 99-502-OCT. 20, 1986
Wages.
Patents and trademarks. Business and industry. 15 USC 3710d.
of the United States and the remaining 25 percent may be used or obligated for the purposes described in clauses (i) through (iv) of paragraph (1)(B)during that fiscal year or the succeeding fiscal year. Any funds not so used or obligated shall be paid into the Treasury of the United States.
"(3) Any payment made to an employee under this section shall be in addition to the regular pay of the employee and to any other awards made to the employee, and shall not affect the entitlement of the employee to any regular pay, annuity, or award to which he is otherwise entitled or for which he is otherwise eligible or limit the amount thereof. Any payment made to an inventor as such shall continue after the inventor leaves the laboratory or agency. Pay- ments made under this section shall not exceed $100,000 per year to any one person, unless the President approves a larger award (with the excess over $100,000 being treated as a Presidential award under section 4504 of title 5, United States Code).
"(4) A Federal agency receiving royalties or other income as a result of invention management services performed for another Federal agency or laboratory under section 207 of title 35, United States Code, shall retain such royalties or income to the extent required to offset the payment of royalties to inventors under clause (i)of paragraph (l)(A),costs and expenses incurred under clause (i)of paragraph (l)(B),and the cost of foreign patenting and maintenance for such invention performed a t the request of the other agency or laboratory. All royalties and other income remaining after payment of the royalties, costs, and expenses described in the preceding sentence shall be transferred to the agency for which the services were performed, for distribution in accordance with clauses (i) through (iv)of paragraph (l)(B).
"(b) CERTAINASSIGNMENTS.-Ifthe invention involved was one assigned to the Federal agency-
"(1)by a contractor, grantee, or participant in a cooperative agreement with the agency, or
"(2)by an employee of the agency who was not working in the laboratory a t the time the inventon was made,
the agency unit that was involved in such assignment shall be considered to be a laboratory for purposes of this section.
"(c) REPORTS.-(1) In making their annual budget submissions Federal agencies shall submit, to the appropriate authorization and appropriation committees of both Houses of the Congress, sum- maries of the amount of royalties or other income received and expenditures made (including inventor awards) under this section.
"(2) The Comptroller General, five years after the date of the enactment of this section, shall review the effectiveness of the various royalty-sharing programs established under this section and report to the appropriate committees of the House of Representa- tives and the Senate, in a timely manner, his findings, conclusions, and recommendations for improvements in such programs.".
SEC. 8. EMPLOYEE ACTIVITIES.
The Stevenson-Wydler Technology Innovation Act of 1980 (as amended by the preceding provisions of this Act) is further amended by inserting after section 14 the following new section: "SEC. 15. EMPLOYEE ACTIVITIES.
"(a) IN GENERAL.-If a Federal agency which has the right of ownership to an invention under this Act does not intend to file for
PUBLIC LAW 99-502-OCT. 20, 1986 100 STAT. 1795
a patent application or otherwise to promote commercialization of such invention, the agency shall allow the inventor, if the inventor is a Government employee or former employee who made the inven- tion during the course of employment with the Government, to retain title to the invention (subject to reservation by the Govern- ment of a nonexclusive, nontransferrable, irrevocable, paid-up license to practice the invention or have the invention practiced throughout the world by or on behalf of the Government). In addition, the agency may condition the inventor's right to title on the timely filing of a patent application in cases when the Govern- ment determines that it has or may have a need to practice the invention.
"(b)DEFINITION.-For purposes of this section, Federal employees include 'special Government employees' as defined in section 202 of title 18, United States Code.
"(c) RELATIONSHIPTO OTHERLAWS.-Nothing in this section is intended to limit or diminish existing authorities of any agency.".
SEC. 9. MISCELLANEOUS AND CONFORMING AMENDMENTS.
(a)REPEALOF NATIONALINDUSTRIALTECHNOLOGYBOARD.-Section 10 of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3709) is repealed. (b)CHANGESIN TERMINOLOGYOR ADMINISTRATIVESTRUCTURE.-(1)
Section 3(2) of the Stevenson-Wydler Technology Innovation Act of 1980 is amended by striking out "centers for industrial technology" 15 USC3702. and inserting in lieu thereof "cooperative research centers".
(2) Section 4 of such Act is amended- 15 USC 3703. (A) by striking out "Industrial Technology" in paragraph (1)
and inserting in lieu thereof "Productivity, Technology, and Innovation";
(B) by striking out " 'Director' means the Director of the Office of Industrial Technology" in paragraph (3) and inserting in lieu thereof " 'Assistant Secretary' means the Assistant Sec- retary for Productivity, Technology, and Innovation";
(C) by striking out "Centers. for Industrial Technology" in paragraph (4) and inserting in lieu thereof "Cooperative Research Centers";
(D) by striking out paragraph (61, and redesignating para- graphs (7) and (8) as paragraphs (6) and (71, respectively; and (E)by striking out "owned and funded" in paragraph (6)as so
redesignated and inserting in lieu thereof "owned, leased, or otherwise used by a Federal agency and fundedJ'.
(3) Section 5(a)of such Act is amended by striking out "Industrial 15 usc 3704. Technology" and inserting in lieu thereof "Productivity, Tech- nology, and Innovation".
(4)Section 5(b)of such Act is amended by striking out "DIRECTOR" and inserting in lieu thereof "ASSISTANTSECRETARY",and by strik- ing out "a Director of the Office" and all that follows and inserting in lieu thereof "?n Assistant Secretary for Productivity, Technology, and Innovation. .
(5)Section 5(c)of such Act is amended- (A) by striking out "the Director" each place it appears and
inserting in lieu thereof "the Assistant Secretary"; (B) by redesignating paragraphs (7)and (8) as paragraphs (9)
and (101,respectively; and (C)by inserting immediately after paragraph (6) the following
new paragraphs:
100 STAT. 1796 PUBLIC LAW 99-502-OCT. 20, 1986
15 USC 3705.
35 USC 200 et seq.
15 USC 3707.
15 USC 3714.
Ante, p. 1785.
15 USC 3703.
"(7) encourage and assist the creation of centers and other joint initiatives by State of local governments, regional organizations, private businesses, institutions of higher education, nonprofit organizations, or Federal laboratories to encourage technology transfer, to stimulate innovation, and to promote an appropriate climate for investment in technology- related industries;
"(8) propose and encourage cooperative research involving appropriate Federal entities, State or local governments, re- gional organizations, colleges or universities, nonprofit organizations, or private industry to promote the common use of resources, to improve training programs and curricula, to stimulate interest in high technology careers, and to encourage the effective disseminaticn of technologv skills within the wider-- community;".
(6) The heading of section 6 of such Act is amended to read as follows: "SEC. 6. COOPERATIVE RESEARCH CENTERS."
(7) Section 6(a)of such Act is amended by striking out "Centers for Industrial Technology" and inserting in lieu thereof "Cooperative Research Centers".
(8) Section 6(b)(l)of such Act is amended by striking out "basic and appliedJ'.
(9)Section 6(e)of such Act is amended to read as follows: "(el RESEARCHAND DEVELOPMENTU ILIZATION.-Inthe promotion
of technology from research and development efforts by Centers under this section, chapter 18 of title 35, United States Code, shall apply to the extent not inconsistent with this section.".
(10)Section 6(f) of such Act is repealed. (11) The heading of section 8 of such Act is amended by striking
out "CENTERS FOR INDUSTRIAL TECHNOLOGY" and inserting in lieu thereof "COOPERATIVE RESEARCH CENTERS".
(12) Section 8(a) of such Act is amended by striking out "Centers for Industrial Technology" and inserting in lieu thereof "Coopera- tive Research Centers".
(13) Section 19 of such Act (as redesignated by section 2 of this Act) is amended by striking out "pursuant to this Act" and inserting in lieu thereof "pursuant to the provisions of this Act (other than sections 12, 13,and 14)".
(c) RELATEDCONFORMINGAMENDMENT. -S~C~~O~210 of title 35, United States Code, is amended by adding a t the end thereof the following new subsection:
"(el The provisions of the Stevenson-Wydler Technology Innova- tion Act of 1980, as amended by the Federal Technology Transfer Act of 1986,shall take precedence over the provisions of this chapter to the extent that they permit or require a disposition of rights in subject inventions which is inconsistent with this chapter.".
(d) ADDITIONALD E F I N I T I O N S . - S ~ C ~ ~ ~ ~4 of such Act (as amended by subsection (b)(2)of this section) is further amended by adding at the end thereof the following new paragraphs:
"(8) 'Federal agency' means any executive agency as defined in section 105 of title 5, United States Code, and the military departments as defined in section 102of such title.
"(9) 'Invention' means any invention or discovery which is or may be patentable or otherwise protected under title 35, United States Code, or any novel variety of plant which is or may be
PUBLIC LAW 99-502-OCT. 20,1986 100 STAT.1797
protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).
"(10) 'Made' when used in conjunction with any invention means the conception or first actual reduction to practice of such invention.
"(11)'Small business firm' means a small business concern as defined in section 2 of Public Law 85-536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration.
"(12) 'Training technology' means computer software and related materials which are developed by a Federal agency to train employees of such agency, including but not limited to software for computer-based instructional systems and for inter- active video disc systems.".
(el REDESIGNATIONOF SECTIONSTO REFLECTCHANGESMADEBY PRECEDINGPROVISIONS.-(1)Such Act (as amended by the preceding provisions of this Act) is further amended by redesignating sections 11through 19 as sections 10 through 18, respectively. 15 U s c
(2)(A)Section 5(d)of such Act is amended by inserting "(as then in 3710-3714. effect)" after "sections 5, 6,8, 11, 12,and 13of this Act". 15 usc 3704.
(B) Section 8(a) of such Act is amended by striking out the last 15 u S c 3707. sentence.
(C)Section 9(d)of such Act is amended by striking out "or 13"and 15 usc 3708. inserting in lieu thereof "10,14, or 16".
(3)Section 13(a)(l)of such Act (asredesignated by paragraph (1)of 15 usc 3710c. this subsection) is amended by striking out "section 12" in the matter preceding subparagraph (A) and inserting in lieu thereof "section 11".
(4) Section 18 of such Act (as redesignated by paragraph (1)of this 15 USC 3714. subsection) is amended by striking out "sections 12,13, and 14" and inserting in lieu thereof "sections 11,12, and 13".
(f) CLARIFICATIONOF FINDINGSAND PURPOSES.-(1) The second sentence of section 2(10) of such Act (15 U.S.C. 3701(10))is amended by inserting ", which include inventions, computer software, and training technologies," immediately after "developments".
(2) Section 3(3) of such Act (15 U.S.C. 3702(3)) is amended by inserting ", including inventions, software, and training tech- nologies," immediately after "developments".
Approved October 20, 1986.
LEGISLATIVE HISTORY-H.R. 37'73:
HOUSE REPORTS: No. 99-415 (Comm. on Science and Technolom) and No. 99-953-- (Comm. of Conference).
SENATE REPORTS:No. 99-283 (Comm. on Commerce, Science, and Transportation). CONGRESSIONAL RECORD:
Vol. 131 (1985):Dec. 9, considered and passed House. Vol. 132 (1986):Aue. 9. considered and oassed Senate. amended.
0cC 3, '~enateagreed td conference report. Oct. 7, House agreed to conference report.