US Government Employee Inventors–Brief Comments

  As a starting point, 37 C.F.R. § 501.6 provides that “The Government shall obtain, except as herein otherwise provided, the entire right, title and interest in and to any invention made by any Government employee.”  In other words, generally, where the sole inventor is an employee of the Federal government, the Federal government will retain title in the invention.

We are unaware of any general authorization for Federal agencies to assign the title of an invention of a Federal employee.  However, under limited circumstances Federal agencies are permitted under 15 U.S.C. § 3710a to assign title pursuant to a Cooperative Research and Development Agreement (CRADA).  CRADAs allow Federal agencies to share facilities and employee, but not funds with non-Federal parties in conducting research.

Moreover, when a Federal agency obtains title in an invention, 35 U.S.C. § 207 permits the agency to grant exclusive, nonexclusive, or partially exclusive licenses, albeit subject to the limitations defined in 35 U.S.C. § 209.  Obtaining an exclusive license could provide rights comparable to those from an assignment of title.

If an employee of a non-US government entity is an inventor, then achieving ownership of the invention is a bit easier.

Under the Bayh-Dole Act, which is codified in 35 U.S.C. §§ 201–212, nonprofit organizations and small businesses may elect to retain title in inventions conceived or reduced to practice in the performance of work under a funding agreement.  There are, however, a number of exceptions to the right of contractors to retain title in their inventions defined in 35 U.S.C. § 202, including that the funding agreement may provide otherwise “when the contractor is not located in the United States or does not have a place of business located in the Unites States or is subject to the control of a foreign government.”  When a Federal employee is a coinventor of an invention made with a nonprofit organization, small business firm, or non-Federal employee, the Bayh-Dole Act authorizes Federal agencies to either (i) license or assign its rights in the invention or (ii) acquire rights in the invention from the nonprofit organization, small business firm, or non Federal employee.  Although not found in the Bayh-Dole Act, Executive Order 12591 effectively extended the application of the Bayh Dole Act to all contractors regardless of size “to the extent permitted by law.”

Advertisement