GOVERNMENT
Sen. Long's Proposed Patent Policy Blasted Flexible policy on ownership of federal R&D patents urged by industry
Sen. Russell Long His bill to require government title to patents resulting from federally financed R&D faces opposition
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The hearing room of the Senate Patent Subcommittee is not the place "where seldom is heard a discouraging word"—at least as far as Sen. Russell Long's proposed patent policy is concerned. For the Louisiana Democrat's plan to require government ownership of all patents resulting from federally financed research (C&EN, May 17, page 32), there was nothing but discouraging words from a parade of 17 witnesses. The only encouraging words were those spoken by Sen. Long himself on behalf of his bill. The committee is considering three proposals to establish a uniform federal policy on ownership of patents resulting from government-financed research and development. S. 1899, sponsored by Sen. Long, would require the Government to take title to these patents in all cases. S. 1809, sponsored by committee chairman Sen. John L. McClellan (D.-Ark.), would generally permit the contractor to keep the patents but would set up criteria under which the Government would take title to the patents. S. 789, sponsored by Sen. Leverett Saltonstall (R.-Mass.), is similar to the McClellan bill but is slightly more favorable to the contractors. All the witnesses denounced the Long bill. They claimed that it would stifle invention and impede scientific progress. In addition, they claimed that the provisions of the bill are so inflexible and restrictive that the Government could reach out and seize contractors' research and private patents to which it is not entitled. All the witnesses agreed that the McClellan bill is a fair solution to the problem. It protects the rights of both Government and the contractors and it is flexible enough so that decisions on ownership of patents can be made on the equities involved in individual cases. Most agreed that the Saltonstall bill would provide an adequate solution to the problem but is less flexible than the McClellan bill. Sen. McClellan seems likely to favor his own bill but is open to suggested changes. He will not go along with extreme solutions—Government take
all or contractors take all. As he put it, "I think there must be a middle ground; there is no other way to solve the problem." So many witnesses are clamoring to be heard that the committee plans to schedule two more days of hearings later this month or early in July. The American Chemical Society plans to present its views on government patent policy at the next round of hearings. In the past, the committee has considered at great length the problem of ownership of patents resulting from federal research but has never taken any action. This year may be different. Sen. McClellan has promised the Senate that his committee will approve a patent policy bill before the^ end of this session of Congress. Administration View. Almost all federal research and development spending is aimed at achieving national goals other than the production of commercial products or processes for the economy. Dr. Donald F. Hornig, the President's Science Adviser and head of the Office of Science and Technology, told the committee. The patent question thus really centers on two problems: how the economy can profit from these large expenditures made to fill government needs and what incentives are needed to stimulate private follow-on commercial developments. Unfortunately, most of the public discussion has centered on cases involving products developed for civilian use with federal funds, Dr. Hornig says. In these cases, which account for only a small fraction of federal R&D funds, there is no real difference of opinion within the Government. President Kennedy's 1963 statement of government patent policy requires the Government to take title to these inventions, he says. In Dr. Hornig's opinion, the big problem with the federal R&D program is how to provide the incentives needed to extract more benefits for the civilian economy. As a rule, commercial product ideas are rarely picked up by industry off the shelf or
out of reports. Strong, positive efforts of an individual or a group with vision and tenacity are required to bring them into use. "Inventions made in the course of federally financed research rarely represent a bonanza to be seized by eager companies," he says. A policy which generally gives title to patents to the contractors will give the contractor an incentive to identify all patentable ideas and results as the work goes along. This policy will also encourage commercial development of inventions. If the Federal Government is not prepared to carry development to the commercial stage, as is usually the case, then someone else must be encouraged to make the additional development and take the risk needed to get the product ready for commercial use, Dr. Hornig says.
AlC's Dr« Henry Hass Long proposal would be against public interest
"S. 1809 establishes a policy which is closest to what I believe to be a proper balance between the title and license policies and which at the same time provides sufficient flexibility to the contracting agencies and a proper degree of recognition of the need to provide incentives for the further development and use of federally financed inventions,,, Dr. Hornig says. This bill is very similar to the federal patent policy now in effect. Since this flexible policy was put into effect in 1963, a small number of errors may have been made among the thousands of rights determinations that have been made, Dr. Hornig
says. However, the exercise of administrative discretion has not resulted in a "give-away" of valuable rights, he adds. "Give-away" has been the most frequent charge leveled by Sen. Long at the government R&D program. The Manufacturing Chemists' Association believes that the Government's patent policy must be flexible because government research is so diverse, Ernest G. Peterson of Hercules Powder told the committee. Circumstances dictate that in some cases the Government should take title to inventions; in other cases the contractor should keep the inventions. MCA backs S. 1809. One of the defects of an inflexible patent policy, such as that proposed by Sen. Long, is that it would reduce the cross-flow of ideas between government and commercial research, Mr. Peterson says. Such a policy would attract companies interested in government research for its government potential only, not its commercial potential. The result would be to deprive the Government of many new ideas and valuable background that could be made available if contractors also considered commercial objectives, he says. PMA's Changes. The Pharmaceutical Manufacturers Association also backs the McClellan bill (S. 1809) but would like to make some changes in it. Under the bill, the Government would take title to inventions resulting from contracts where "the purpose of the contract is for exploration into fields which directly concern the public health, welfare, or safety." PMA president Austin Smith thinks the contractor should acquire patents in these cases just as he would in other cases. "No different economic principle applies because an invention results from this type of contract," he says. The approach outlined in the Saltonstall or McClellan bill would provide for the most orderly continuation of the nation's economic growth, Dr. Henry B. Hass, president of the American Institute of Chemists, told the committee. However, he believes that determination of patent rights should be made at the time the contract is signed. This would assure greater willingness by highly qualified contractors to undertake the work, he says. Restrictive policies, like the Long proposal, would work against the best
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AEC's Oak Ridge National Laboratory
Dr. Donald Hornig Incentives needed to extract benefits from R&D
interests of the public as a whole, Dr. Hass says. Under this policy, it does not pay anyone to befirstin the devel opment of a product but it does pay to be second, he says. "Financial gain still remains the strongest incentive for a company to commercialize a product," he adds. At his own request, Sen. Long was the last witness to appear before the committee. In an emotion-packed speech, dramatically punctuated with table poundings, arm wavings, finger pointings, and other gestures, Sen. Long reviewed the same charges he has made on many other occasions— namely, that industrialists, character ized as "congenial pirates," are trying to steal inventions paid for with tax payers' money. At one point Sen. Long, pounding the table, shouted, "I may be mistaken but I'm in no doubt"—a sentiment agreed to by all the Senators present. What of the other patent policy proposals? "The Saltonstall bill is an out-and-out giveaway," Sen. Long says, "and the McClellan bill does not offer very much more to the public." In Sen. Long's opinion, the Saltonstall bill has one virtue: it doesn't hide behind any verbiage; the giveaway of research paid for by the public is plainly stated. He says he will discuss this subject frequently and at length on the Senate floor. Sen. McClellan, obviously not wishing to be drawn into a heated controversy, politely thanked Sen. Long for his "interesting statement" and adjourned the hear ings.
is expanding its uranium-233 purifica tion and storage facilities. When the new facilities are completed next month, ORNL will be able to supply the fuel in three forms—in solution, as oxide, or as metal.
The Atomic Energy Commission has
just published for public comment a proposal by the state of Tennessee to assume some of the agency's regula tory authority over uses of radioactive materials in that state. Under the law AEC can turn over to a state regula tory responsibility for the uses of ra dioisotopes, the source materials ura nium and thorium, and small amounts of fissionable materials if AEC finds that the state's program fits in with its own and is adequate to protect public health and safety. Nine statesArkansas, California, Florida, Kansas, Kentucky, Mississippi, North Caro lina, New York, and Texas—already have taken over this responsibility. And a proposal by a 10th, Oregon, has been published for public comment.
The Food and Drug Administration
has asked producers of drugs now used on food-producing animals to bring it up to date on any additional tissue residue data and test methods they may have that they have not al ready submitted to the agency. FDA is now reviewing all Such drugs ap proved for use before food additives amendments were enacted. This prior approval was based in part on the condition that no residues of the drugs or metabolites would be found in the tissues or products of treated an imals. FDA is trying to determine if the status of any of these products should be changed based on more re cent scientific data.
