article: SECTION 1. SHORT TITLE. This Act may be cited as the ``Technology Transfer Improvements Act of 1993''. SEC. 2. FINDINGS. The Congress finds and declares the following: (1) The commercialization of technology and industrial innovation are central to the economic, environmental, and social well-being of citizens of the United States. (2) The Government can help United States business to speed the development of new products and processes by entering into Cooperative Research and Development Agreements which make available the assistance of the Federal laboratories to the private sector, but the commercialization of technology and industrial innovation in the United States depends largely upon actions by business. (3) Government action to claim a right of ownership to any invention or other intellectual property developed under a Cooperative Research and Development Agreement can inhibit the establishment of such agreements with business and can prevent the commercialization of technology and industrial innovation by business. (4) The commercialization of technology and industrial innovation in the United States will be enhanced if the ownership of any invention or other intellectual property developed under a Cooperative Research and Development Agreement belongs to a company or companies incorporated in the United States. SEC. 3. TITLE TO INTELLECTUAL PROPERTY ARISING FROM COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENTS. Section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a) is amended as follows: (1) In the text of subsection (b) immediately preceding paragraph (1), strike ``Government-operated Federal laboratory, and to the extent provided in an agency-approved joint work statement, a Government-owned contractor-operated laboratory, may'' and insert ``Federal laboratory shall ensure that title to any intellectual property arising from the agreement, except intellectual property developed in whole by a laboratory employee, is assigned to the collaborating party or parties to the agreement in exchange for reasonable compensation to the laboratory, and may''. (2) In subsection (b)(2), strike ``or in part''. (3) Amend subsection (b)(3) to read as follows: ``(3) retain a nonexclusive, nontransferable, irrevocable, paid-up license from the collaborating party or parties for any intellectual property arising from the agreement, and have such license practiced throughout the world by or on behalf of the Government, but shall not, in the exercise of such license, publicly disclose proprietary information related to the license;''. (4) Amend subsection (b)(4) to read as follows: ``(4) retain the right, in accordance with procedures provided in regulations promulgated under this section, to require a collaborating party to grant to a responsible applicant or applicants a nonexclusive, partially exclusive, or exclusive license to use the subject intellectual property in any field of use, on terms that are reasonable under the circumstances, or if the collaborating party fails to grant such a license, to grant the license itself if the laboratory finds that-- ``(A) the collaborating party has not taken, and is not expected to take within a reasonable time, effective steps to achieve practical application of the subject intellectual property in the field of use; ``(B) such action is necessary to meet health or safety needs that are not reasonably satisfied by the collaborating party; ``(C) such action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the collaborating party; or ``(D) the collaborating party has not entered into or is in breach of an agreement made pursuant to subsection (c)(4)(B).''. (5) In subsection (d)(2), strike ``and'' at the end; (6) In subsection (d)(3), strike the period at the end and insert ``; and''. (7) At the end of subsection (d), insert the following new paragraph: ``(4) the term `intellectual property rights' means-- ``(A) in the case of government-owned, government- operated Federal laboratories, patents; and ``(B) in the case of government-owned, contractor- operated Federal laboratories, patents, copyrights, and computer chip mask work registrations.''. SEC. 4. DISTRIBUTION OF INCOME FROM INTELLECTUAL PROPERTY RECEIVED BY FEDERAL LABORATORIES. Section 14 of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710c) is amended to read as follows: ``SEC. 14. DISTRIBUTION OF INCOME FROM INTELLECTUAL PROPERTY RECEIVED BY FEDERAL AGENCIES OR LABORATORIES. ``(a) In General.-- ``(1) Except as provided in paragraphs (2) and (4), any income received by a Federal agency or laboratory from the licensing or assignment of intellectual property under agreements entered into by Federal laboratories under section 12, and intellectual property of Federal agencies or laboratories licensed under section 207 of title 35, United States Code, or under any other provision of law, shall be retained by the agency or laboratory and shall be disposed of as follows: ``(A)(i) The head of the agency or laboratory or his designee shall pay to the laboratory employee or employees who have assigned their rights in the intellectual property to the United States, to the laboratory operator, or to a collaborating party or parties to a research agreement an amount equal to the sum of-- ``(I) the first $10,000 received by the agency or laboratory from the intellectual property; and ``(II) 15 percent of any income received by the agency or laboratory from the intellectual property in excess of the sum of the amount paid pursuant to item (I) and the value of unreimbursed research and development resources provided by the laboratory under the terms of the agreement. ``(ii) An agency or laboratory may provide appropriate incentives from royalties to laboratory employees who contribute substantially to the technical development of licensed or assigned intellectual property between the time that the intellectual property rights are legally asserted and the time of the licensing or assigning of the intellectual property rights. ``(iii) The agency or laboratory shall retain the income received from intellectual property until the agency or laboratory makes payments to laboratory employees under clause (i) or (ii). ``(B) The balance of the income shall be transferred to the agency's laboratories, with the majority share of the royalties or other income going to the laboratory where the intellectual property originated, and the income so transferred to any such laboratory may be used or obligated by that laboratory during the fiscal year in which it is received or during the succeeding fiscal year-- ``(i) for payment of not more than 15 percent of such income for expenses incidental to the administration and licensing of intellectual property by the agency or laboratory with respect to intellectual property which originated at that laboratory, including the fees or other costs for the services of other agencies, persons, or organizations for intellectual property management and licensing services; ``(ii) to reward scientific, engineering, and technical employees of the laboratory, including developers of sensitive or classified technology, regardless of whether the technology has commercial applications; ``(iii) to further scientific exchange among the laboratories of the agency; or ``(iv) for education and training of employees consistent with the research and development mission and objectives of the agency or laboratory, and for other activities that increase the potential for transfer of the technology of the laboratories of the agency. All income retained by the agency or laboratory after payments have been made pursuant to subparagraphs (A) and (B) that is unobligated and unexpended at the end of the fiscal year succeeding the fiscal year in which the income was received shall be paid into the United States Treasury. ``(2) If, after payments to employees under paragraph (1), the intellectual property income received by an agency and its laboratories in any fiscal year exceeds 5 percent of the budget of the laboratories of the agency for that year, 75 percent of such excess shall be paid to the United States Treasury 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 income not so used or obligated shall be paid into the United States Treasury. ``(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 the employee is otherwise entitled or for which the employee is otherwise eligible, or limit the amount thereof. Any payment made under this section to any employee shall continue after the employee leaves the employment of the laboratory or agency. ``(4) A Federal agency receiving income as a result of intellectual property management services performed for another Federal agency or laboratory under section 207 of title 35, United States Code, may retain such income to the extent required to offset the payment of income from intellectual property under paragraph (1)(A)(i), and costs and expenses incurred under paragraph (1)(B)(i), including the cost of foreign protection of the intellectual property of the other agency. All income remaining after payment of the income, 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 (1)(B). ``(b) Certain Assignments.--If the intellectual property from which the income is derived was 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 at the time the intellectual property was originated; ``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 its annual submission to the Congress, each Federal agency shall submit, to the appropriate authorization and appropriations committee of both Houses of the Congress, a summary of the amount of income received from intellectual property and expenditures made (including employee awards) under this section. ``(2) Not later than October 1, 1996, the Comptroller General shall review the effectiveness of the various income- sharing programs established under this section and report to the appropriate committees of the House of Representatives and the Senate, in a timely manner, the Comptroller General's findings, conclusions, and recommendations for improvements in such programs.''. SEC. 5. AMENDMENT TO BAYH-DOLE ACT. Section 210(e) of title 35, United States Code, is amended by inserting ``and the Technology Commercialization Act of 1993'' after ``Federal Technology Transfer Act of 1986''.
summary: Technology Transfer Improvements Act of 1993 - Amends the Stevenson-Wydler Technology Innovation Act of 1980 regarding title to intellectual property arising from cooperative research and developments agreements (CRADAs) to: (1) direct Federal laboratories to ensure that such title is assigned to the collaborating parties to the CRADA in exchange for reasonable compensation to the Federal laboratory; (2) authorize a Federal laboratory to retain (and practice on a worldwide basis) a nonexclusive, nontransferable, irrevocable, paid-up license from the collaborating parties for such property; and (3) authorize a Federal laboratory to require a collaborating partner to grant a license to use such property to a responsible applicant. Defines intellectual property rights as: (1) "patents" in the case of Government-owned, Government-operated Federal laboratories; and (2) "patents, copyrights, and computer chip mask work registration" in the case of Government-owned, contractor-operated Federal laboratories. Sets forth a framework for the distribution of income from intellectual property received by Federal agencies or laboratories. Requires the Comptroller General to report to the Congress on the effectiveness of the income-sharing programs established under this Act. Amends the Bayh-Dole Act to grant this Act precedence over its provisions.