Daily Rules, Proposed Rules, and Notices of the Federal Government
Section 209(c) gives DOE with authority to grant exclusive or partially exclusive licenses in department-owned inventions, where a determination can be made, among other things, that the desired practical application of the invention has not been achieved, or is not likely expeditiously to be achieved, under a nonexclusive license. The statute and implementing regulations (37 CFR 404) require that the necessary determinations be made after public notice and opportunity for filing written objections.
Corrosion Solutions, a new small business, has applied for an exclusive license to practice the inventions and has a plan for commercialization of the invention. DOE intends to grant the license, upon a final determination in accordance with 35 U.S.C. 209(c), unless, within 15 days of publication of this notice, NETL's Office of Chief Counsel (contact information listed above) receives in writing any of the following, together with the supporting documents:
(i) A statement from any person setting forth reasons why it would not be in the best interest of the United States to grant the proposed license; or
(ii) An application for a nonexclusive license to the invention, in which the applicant states that it already has brought the invention to practical application or is likely to bring the invention to practical application expeditiously.
The proposed license would be exclusive, subject to a license and other rights retained by the U.S. Government, and subject to a negotiated royalty. DOE will review all timely written responses to this notice and will grant the license if, after expiration of the 15-day notice period and after consideration of any written responses to this notice, a determination is made in accordance with Section 209(c) that the license is in the public interest.