[Ip-health] Army proposes exclusive patent license to Sanofi for "Zika Virus Vaccine and Methods of Production”

Jamie Love james.love at keionline.org
Fri Dec 9 03:43:08 PST 2016


Regarding the Army's Ziki vaccine license, ​The statute on federal owned
inventions has some important rules for licensing patents.

First, a "
​
 Federal agency may grant an exclusive or partially exclusive license on a
federally owned invention . . . only if--
granting the license is a reasonable and necessary incentive to  ... call
forth the investment capital and expenditures needed to bring the invention
to practical application;  . . .  ​
​
and that the proposed scope of exclusivity is not greater than reasonably
necessary to provide the incentive for bringing the invention to practical
application, ​

​Second, ​if the benefits of the invention ​are ​
​​"
available to the public on reasonable terms."


​    ​
​Jamie
​


35 U.S.C.
United States Code, 2011 Edition
Title 35 - PATENTS
PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE
Sec. 209 - Licensing federally owned inventions

§209. Licensing federally owned inventions

(a) Authority.—A
​​
Federal agency may grant an exclusive or partially exclusive license on a
federally owned invention under section 207(a)(2) only if—

​​
(1) granting the license is a reasonable and necessary incentive to—

(A) call forth the investment capital and expenditures needed to bring the
invention to practical application; or

(B) otherwise promote the invention's utilization by the public;

(2) the Federal agency finds that the public will be served by the granting
of the license, as indicated by the applicant's intentions, plans, and
ability to bring the invention to practical application or otherwise
promote the invention's utilization by the public,
​​
and that the proposed scope of exclusivity is not greater than reasonably
necessary to provide the incentive for bringing the invention to practical
application, as proposed by the applicant, or otherwise to promote the
invention's utilization by the public;

(3) the applicant makes a commitment to achieve practical application of
the invention within a reasonable time, which time may be extended by the
agency upon the applicant's request and the applicant's demonstration that
the refusal of such extension would be unreasonable;

(4) granting the license will not tend to substantially lessen competition
or create or maintain a violation of the Federal antitrust laws; and

(5) in the case of an invention covered by a foreign patent application or
patent, the interests of the Federal Government or United States industry
in foreign commerce will be enhanced.


​---------------------------------------------------​


35 U.S.C.
United States Code, 2011 Edition
Title 35 - PATENTS
PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE
Sec. 201 - Definitions
>From the U.S. Government Printing Office, www.gpo.gov


§201. Definitions

As used in this chapter—

(f) The term “practical application” means to manufacture in the case of a
composition or product, to practice in the case of a process or method, or
to operate in the case of a machine or system; and, in each case, under
such conditions as to establish that the invention is being utilized and
that its benefits are to the extent permitted by law or Government
regulations
​​
available to the public on reasonable terms.



More information about the Ip-health mailing list