DOE direct research and development transactions include contracts, grants, and cooperative agreements, and technology investment agreements (TIA’s). For transactions other than TIA’s, the US Government will have certain rights, set forth by statute, in any invention conceived or first actually reduced to practice under the agreement. 42 U.S.C. 5908 provides that title to such inventions vests in the United States, except where 35 U.S.C. 202 provides otherwise for nonprofit organizations or small businesses. However, the Department may waive all or any part of the U.S. Government’s invention rights, subject to certain conditions.
A TIA, authorized by 42 U.S.C. 7256(g), may be used only in appropriate circumstances, as set forth in 10 C.F.R. 603.200. Under a TIA, there may be more flexibility to vary intellectual property provisions from those set forth in 42 U.S.C. 5908 and 35 U.S.C. 202.
For technical data, normally, the Government has unlimited rights in technical data first produced under a DOE agreement. Delivery of, or third party licensing of, data or proprietary software developed solely at private expense will not normally be required, except as may be specifically negotiated in a particular agreement to satisfy DOE’s needs, or to ensure commercialization of technology developed under a DOE agreement. Under a TIA, or certain other DOE programs, there may be authority to protect certain first produced data from disclosure outside the Government for a limited period of time.