U.S. Code » Title 35 » Part PART II— PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS › Chapter CHAPTER 18— PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE

35 U.S.C. § 201

Definitions

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As used in this chapter—(a) The term “Federal agency” means any executive agency as defined in section 105 of title 5, and the military departments as defined by section 102 of title 5.(b) The term “funding agreement” means any contract, grant, or cooperative agreement entered into between any Federal agency, other than the Tennessee Valley Authority, and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the Federal Government. Such term includes any assignment, substitution of parties, or subcontract of any type entered into for the performance of experimental, developmental, or research work under a funding agreement as herein defined.(c) The term “contractor” means any person, small business firm, or nonprofit organization that is a party to a funding agreement.(d) The term “invention” means any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).(e) The term “subject invention” means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) 11 See References in Text note below. of the Plant Variety Protection Act (7 U.S.C. 2401(d))) must also occur during the period of contract performance.(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.(g) The term “made” when used in relation to any invention means the conception or first actual reduction to practice of such invention.(h) The term “small business firm” means a small business concern as defined at section 2 of Public Law 85–536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration.(i) The term “nonprofit organization” means universities and other institutions of higher education or an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or educational organization qualified under a State nonprofit organization statute.(Added Pub. L. 96–517, § 6(a), Dec. 12, 1980, 94 Stat. 3019; amended Pub. L. 98–620, title V, § 501(1), (2), Nov. 8, 1984, 98 Stat. 3364; Pub. L. 99–514, § 2, Oct. 22, 1986, 100 Stat. 2095; Pub. L. 107–273, div. C, title III, § 13206(a)(12), Nov. 2, 2002, 116 Stat. 1904.)Editorial NotesReferences in Text

The Plant Variety Protection Act, referred to in subsec. (d), is Pub. L. 91–577, Dec. 24, 1970, 84 Stat. 1542, which is classified principally to chapter 57 (§ 2321 et seq.) of Title 7, Agriculture. For complete classification of this Act to the Code, see Short Title note set out under section 2321 of Title 7 and Tables.

Section 41 of the Plant Variety Protection Act (7 U.S.C. 2401(d)), referred to in subsec. (e), was subsequently amended, and no longer defines the term “date of determination”.

Amendments

2002—Subsec. (a). Pub. L. 107–273 struck out “United States Code,” after “section 105 of title 5,” and “, United States Code” after “section 102 of title 5”.

1986—Subsec. (i). Pub. L. 99–514 substituted “Internal Revenue Code of 1986” for “Internal Revenue Code of 1954”.

1984—Subsec. (d). Pub. L. 98–620, § 501(1), inserted “or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.)” after “title”.

Subsec. (e). Pub. L. 98–620, § 501(2), inserted “: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act (7 U.S.C. 2401(d))) must also occur during the period of contract performance” after “agreement”.

Statutory Notes and Related SubsidiariesEffective Date

Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub. L. 96–517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.

Notes of Decisions
Cited in 12 cases (1 in the last 5 years), 1991–2022 · leading case: Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011).
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Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776 (2011). · cites it 3× “35 U. S. C. §§201 (e), (c), 202(a). The Act defines “subject inven tion” as “any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement,” §201(e), and provides that contractors may “elect to re tain title…”
L-3 Commc'ns Corp. v. Jaxon Eng'g & Maint., Inc., 125 F. Supp. 3d 1155 (D. Colo. 2015). · cites it 4× “35 U.S.C. § 201 (a). However, the right to retain is conditioned upon the contractor promptly disclosing the invention to the contracting agency.”
Ciba-Geigy Corp. v. Alza Corp., 804 F. Supp. 614 (D.N.J. 1992). · cites it 3× “35 U.S.C. § 201 . Under 35 U.S.C. § 202 (c), however, a funding agreement must contain certain provisions.”
TM Patents, L.P. v. Int'l Bus. MacHines Corp., 121 F. Supp. 2d 349 (S.D.N.Y. 2000). · cites it 2× “4 In view of the foregoing, IBM contends that Hillis lacked title to assign to Thinking Machines, because he failed to file the paperwork required by 35 U.S.C. § 201 (d). Of course, if Hillis did not have valid title, then he could not convey good title to Thinking Machines,…”
Campbell Plastics Eng'g & Mfg., Inc. v. Les Brownlee, Acting Sec'y of the Army, 389 F.3d 1243 (Fed. Cir. 2004). “” See 35 U.S.C. § 201 (d)-(e) (1988) (defining an “invention” to mean “any invention or discovery that is or may be patentable,” and “subject invention” to mean “any invention of the contractor conceived or first actually reduced to practice in the performance of work under a…”
S. Rsch. Inst. v. Griffin Corp., 938 F.2d 1249 (11th Cir. 1991). · cites it 2× “The statute covers inventions “conceived or first actually reduced to practice in the performance of work under a funding agreement_” 35 U.S.C. § 201 (e) (1988). The funding agreement between SRI and the USDA was entered into in 1978 and concluded in 1980.”
Trinity Indus., Inc. v. Road Sys., Inc., 235 F. Supp. 2d 536 (E.D. Tex. 2002). · cites it 5× “35 U.S.C. § 201 (b) (emphasis added). Under the Act, a “contractor” is “any person, small business firm, or nonprofit organization that is a party to a funding agreement.”
Univ. of South Florida Bd. of Trs. v. United States (Fed. Cl. 2019). · cites it 2× “131 at 23 (citing 35 U.S.C. § 201 (b) (1994)); see also ECF No.”
Univ. of South Florida Bd. of Trs. v. United States (Fed. Cl. 2022). · cites it 2× “” 35 U.S.C. § 201 (b). It further defines “subject invention” to mean “any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.”
Mahon v. Mainsail LLC (N.D. Cal. 2020). “35 U.S.C. § 201 (a),(e). Even if a creator transfers a right, she may remain 14 the “beneficial owner” of that right if the transferee pays royalties based on the right’s 15 exploitation.”
Wisconsin Alumni Rsch. Found. v. Xenon Pharm., Inc., 252 F. App'x 319 (Fed. Cir. 2007). “At its heart, the Bayh-Dole Act concerns government funding agreements — contracts in the language of 35 U.S.C. § 201— an area that is outside our section 1295(a) jurisdiction.”
Wisconsin Alumni Rsch. Found. v. Xenon Pharm., Inc., 263 F. App'x 865 (Fed. Cir. 2008). “For example, 35 U.S.C. § 201 (d) defines “invention” as “any invention or discovery which is or may be patentable .”
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