University and Small Business Patent Procedures Act

(Measure passed Senate, amended, roll call #84 (91-4))

University and Small Business Patent Procedures Act - States that it is the objective of this Act to amend existing patent procedures in order to promote the marketing of inventions developed under federally supported research and development projects by nonprofit organizations and small business firms.

Permits any such organization or firm to elect, within a reasonable amount of time, to retain title to such inventions. Permits Federal agencies which have supported such projects to retain title to inventions through their funding agreements in specified circumstances, including when necessary to conduct foreign intelligence or counterintelligence activities.

Requires review of agency determinations that such circumstances exist by the Comptroller General and the Chief Counsel for Advocacy of the Small Business Administration. Directs the Comptroller General to report to Congress on the implementation of this Act by Federal agencies.

Enumerates provisions which must be included in funding agreements between a Federal agency and a small business firm or nonprofit organization including provisions: (1) to insure the rights of the Federal Government under this Act; (2) to provide that the agency shall have a nonexclusive, nontransferable, irrevocable and paid-up license to use the invention; (3) to prohibit a nonprofit organization from assigning rights to the invention without the approval of the Federal agency; (4) to prohibit such an organization, other than small business firms, from granting exclusive rights from the earlier of five years from the first commercial use of the invention or eight years from the date of invention; and (5) to require such organizations to use their royalties and earnings to support scientific research or education. Provides that the first commercial use with respect to a product of the invention shall not end the exclusive period to different subsequent products covered by the invention.

Requires the head of a Federal agency to approve provisions of a funding agreement which require the licensing to third parties of inventions owned by the contractor. Sets forth terms and conditions under which such approval may be granted.

Authorizes a Federal agency to transfer or assign its rights, acquired from an agency employee as coinventor, to an inventor electing to acquire title to an invention.

Empowers any Federal agency to require inventors or their assigns to grant licenses in order to: (1) achieve practical application of the invention in its field of uses; (2) alleviate health or safety needs; (3) meet requirements for public use specified by Federal regulations; or (4) achieve participation by United States industry in the manufacturing of an invention.

Entitles the government to 15 percent of all net income in excess of $70,000 gross income received by a contractor after a patent application is filed on a subject invention. Provides that if a contractor receives a gross income of $1,000,000, the government shall be entitled to a share of the excess of $1,000,000, subject to negotiation, but not to exceed five percent of such excess. Limits the government share of any such excesses to its contributions under the funding agreement. Authorizes and directs the Director of the Office of Federal Procurement Policy to revise the government entitlements in light of changes to the Consumer Price Index or other indices at least every three years. Declares the government entitlements shall cease when: (1) the patent application is rejected; (2) the patent expires; or (3) the patent is found to be invalid.

Restricts the assignment and licensing of rights by patent holders to foreign owned or controlled firms unless such persons agree that any products embodying the subject invention or produced through the use of the subject invention will be manufactured substantially in the United States where commercially feasible.

Authorizes Federal agencies to withhold information on inventions from public disclosure.

Specifies the authority of Federal agencies with respect to obtaining patents, granting licenses, and transferring custody of patents.

Authorizes the Administrator of General Services to promulgate regulations specifying the terms upon which any federally-owned invention may be licensed.

Sets forth the procedure whereby Federal agencies may grant exclusive or partially exclusive licenses in any invention covered by a federally-owned domestic patent or patent application.

Prohibits licensing which lessens competition. Directs that business firms be given preference in exclusive or partially exclusive licensing.

Enumerates provisions which must be contained in any grant of a license by a Federal agency.

Declares that nothing in this Act shall be construed to require the disclosure of intelligence sources or methods or otherwise affect the authority of the Director of Central Intelligence.

Declares that this Act shall take precedence over any other Act in the disposition of inventions.

Exempts the Tennessee Valley Authority from the provisions of this Act.