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Catalog of Federal Domestic Assistance

Program Descriptions

81.003:  Granting of Patent Licenses

Popular Name:  DOE Patents Available for Licensing

Objectives:  To encourage widespread utilization of inventions covered by DOE owned patents.

PROGRAM AND AWARD	FINANCIAL AND INFORMATION CONTACTS
ELIGIBILITY REQUIREMENTS	FINANCIAL AND ADMINISTRATIVE INFO.
APPLICATION AND AWARD PROCESS	INFORMATION CONTACTS
RELATED PROGRAMS	ASSISTANCE CONSIDERATIONS
PROGRAM ACCOMPLISHMENTS	POST ASSISTANCE REQUIREMENTS

81.003 ELIGIBILITY REQUIREMENTS:

Applicant Eligibility:  Individuals, firms, or corporations with satisfactory plans and intentions to commercialize the invention may apply.

Beneficiary Eligibility:  Individuals, firms, and corporations will benefit.

Credentials/Documentation:  Satisfactory plans for development and/or marketing of the invention. In the case of corporations, the State of incorporation. This program is excluded from coverage under OMB Circular No. A-87.

81.003 APPLICATION AND AWARD PROCESS:

Preapplication Coordination:  This program is excluded from coverage under OMB Circular No. A-102 and E.O. 12372.

Application Procedure:  By letter to the Assistant General Counsel for Patents, DOE, Washington, DC 20585, identifying the patent by its number, together with information as to: (1) The nature and type of the applicant's business; (2) the purpose for which the license is desired together with documentation as to the applicant's plan for development and/or marketing of the invention to achieve that purpose; (3) the geographical areas in which the applicant will practice the invention; (4) the applicant's willingness to render periodic reports on the use of the licensed subject matter; (5) the applicant's status as a small business firm, minority business, or other; and (6) remittance of a $25 processing fee for each license requested. This program is excluded from coverage under OMB Circular No. A-110.

Award Procedure:  Patent licenses are issued by the Office of the Assistant General Counsel for Patents, DOE.

Deadlines:  None.

Range of Approval/Disapproval Time:  Normally three months for nonexclusive licenses; somewhat longer for exclusive licenses.

Appeals:  Applicants denied a license and revoked licensees have the right to appeal in accordance with 10 CFR 781 by filing notice of appeal within 30 days. Appeals board is designated upon filing of notice of appeal.

Renewals:  Licenses may be renewed upon reapplication, contingent on satisfactory performance.

Criteria for Selecting Proposals:  Nonexclusive licenses -satisfactory plan for development and/or marketing of the invention. Exclusive licenses in addition, a determination in accordance with 35 U.S.C. 209(c) that exclusivity is reasonable and necessary for commercialization.

Examples of Funded Projects:  Not applicable.

Range and Average of Financial Assistance:  Not applicable.

81.003 RELATED PROGRAMS:

• 11.900 Patent and Trademark Technical Information Dissemination.

81.003 PROGRAM ACCOMPLISHMENTS:

For fiscal year 1999, three licenses were granted. About 6 licenses are expected to be granted in fiscal year 2000.

81.003 FINANCIAL AND ADMINISTRATIVE INFO:

Federal Agency:  OFFICE OF GENERAL COUNSEL, DEPARTMENT OF ENERGY

Type of Assistance:  Dissemination of Technical Information.

Obligations:  (Salaries) Not separately identifiable.

Budget Account Number:  89-0228-0-1-276.

Authorization:  Public Law 96-517, 35 U.S.C. 207, 208, 209; Atomic Energy Act of 1954, Sections 156 and 161(g), as amended, Public Law 83-703, 68 Stat. 919, 42 U.S.C. 2186 and 2201; Department of Energy Organization Act of 1977, as amended, Public Law 95-91, 42 U.S.C. 7101.

Regulations, Guidelines, and Literature:  Licensing of government owned inventions (37 CFR 404). 10 CFR 781, DOE Patent Licensing Regulations; "U.S. Department of Energy Patents Available for Licensing" describes the program and is available from the Technical Information Center. Abstracts of most DOE owned patents are published in "Government Inventions for Licensing," a journal published by the National Technical Information Service (NTIS).

81.003 INFO CONTACTS:

Regional or Local Office:  Not applicable.

Headquarters Office:  Robert J. Marchick, Office of the Assistant General Counsel for Patents, DOE, Washington, DC 20585. Phone: (202) 586-2802. Use the same number for FTS.

(See Appendix IV for more contact info.)

81.003 ASSISTANCE CONSIDERATIONS:

Formula and Matching Requirements:  Not applicable.

Length and Time Phasing of Assistance:  Not applicable.

Uses and Use Restrictions:  Nonexclusive, revocable licenses are granted by Department of Energy (DOE) to responsible applicants with plans for development and/or marketing on about 1,200 DOE owned United State patents. Exclusive and partially exclusive licenses may also be granted. Similar licenses on about 200 DOE owned foreign patents may be accorded to United State citizens and corporations, and to others under terms and conditions which depend upon particular facts. Licenses for use or sale in the United State may normally be granted only to licensees that agree to manufacture in the United State Copies of U.S. patents may be obtained from the United State Patent and Trademark Office, Department of Commerce, Washington, DC 20231, at $3.00 per copy.

81.003 POST ASSISTANCE REQUIREMENTS:

Reports:  Annual reports are required to be submitted as to the extent of utilization and royalties due, if applicable.

Audits:  If license is royalty bearing, DOE has the right to inspect the books of account as necessary to determine accuracy of statement.

Records:  None except where the specific license provides for payment of royalty.