110 STAT. 776 PUBLIC LAW 104-113—MAR. 7, 1996 agree to grant in advance, to a collaborating party patent licenses or assignments, or options thereto, in any invention made in whole or in part by a laboratory employee under the agreement, for reasonable compensation when appropriate. The laboratory shall ensure, through such agreement, that the collaborating party has the option to choose an exclusive license for a pre-negotiated field of use for any such invention under the agreement or, if there is more than one collaborating party, that the collaborating parties are offered the option to hold licensing rights that collectively encompass the rights that would be held under such an exclusive license by one party. In consideration for the Government's contribution under the agreement, grants under this paragraph shall be subject to the following explicit conditions: "(A) A nonexclusive, nontransferable, irrevocable, paid-up license from the collaborating party to the laboratory to practice the invention or have the invention practiced throughout the Confidential world by or on behalf of the Government. In the exercise information. of such license, the Government shall not publicly disclose trade secrets or commercial or financial information that is privileged or confidential within the meaning of section 552(b)(4) of title 5, United States Code, or which would be considered as such if it had been obtained from a non-Federal party. "(B) If a laboratory assigns title or grants an exclusive license to such an invention, the Government shall retain the right— "(i) to require the collaborating party to grant to a responsible applicant a nonexclusive, partially exclusive, or exclusive license to use the invention in the applicant's licensed field of use, on terms that are reasonable under the circumstances; or "(ii) if the collaborating party fails to grant such a license, to grant the license itself. "(C) The Government may exercise its right retained under subparagraph (B) only in exceptional circumstances and only if the Government determines that— "(i) the action is necessary to meet health or safety needs that are not reasonably satisfied by the collaborating party; "(ii) the action is necessary to meet requirements for public use specified by Federal regulations, and such requirements are not reasonably satisfied by the collaborating party; or "(iii) the collaborating party has failed to comply with an agreement containing provisions described in subsection (c)(4)(B). This determination is subject to administrative appeal and judicial review under section 203(2) of title 35, United States Code. "(2) Under agreements entered into pursuant to subsection (a)(1), the laboratory shall ensure that a collaborating party may retain title to any invention made solely by its employee in exchange for normally granting the Government a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention or have the invention practiced throughout the world by or on behalf of the Government for research or other Government purposes.
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