---
kind: "section"
citation: "37 C.F.R. § 401.9"
title: "37"
number: "401.9"
heading: "Contractor and contractor employee inventor requests for rights in inventions."
url: "https://uscodex.org/cfr/37/401.9"
---

# §401.9. Contractor and contractor employee inventor requests for rights in inventions.

- (a) Agencies shall allow a contractor to request greater rights in an invention, including a request to return title to an invention to the contractor, when the funding agreement contains alternate provisions in accordance with [§ 401.3(a)(2)](/cfr/37/401.3.md?p=a-2):
  - (1) The agency shall consider if the circumstances which originally led the agency to invoke an exception under [§ 401.3(a)](/cfr/37/401.3.md?p=a) are currently valid and applicable to the actual subject invention.
    - (i) The agency shall provide the contractor the opportunity to submit information on its plans and intentions to bring the subject invention to practical application pursuant to [35 U.S.C. 200](/usc/35/200.md).
    - (ii) The agency shall assess whether government ownership of the invention will better promote the policies and objectives of [35 U.S.C. 200](/usc/35/200.md) than the plans and intentions submitted by the contractor.
    - (iii) The agency shall consider whether to allow the standard clause at [§ 401.14](/cfr/37/401.14.md) to apply with additional conditions imposed upon the contractor's use of the invention for specific uses or applications, or with expanded government license rights in such uses or applications.
  - (2) The agency shall reply to the contractor with its determination within 90 days after receiving a request and any supporting information from the contractor. If a bar to patenting is sooner than 90 days from receipt of a request, the agency may either file a patent application on the subject invention or authorize the contractor to file a patent application at its own risk and expense.
  - (3) The Department of Energy is authorized to process deferred determinations either in accordance with its waiver regulations or this section.
- (b) Pursuant to [35 U.S.C. 202(d)](/usc/35/202.md?p=d), a contractor is required to obtain approval from a funding Agency before assigning rights to a subject invention made under a funding agreement to an employee/inventor. When an employee/inventor retains rights to a subject invention made under a funding agreement, either the Agency or the contractor must ensure compliance by the employee/inventor with at least those conditions that would apply under paragraphs [(b)](#b), (d), (f)(4), (h), (i), and (j) of the clause at [§ 401.14](/cfr/37/401.14.md).

## Notes

### Amendments

[88 FR 17737, Mar. 24, 2023]

### Authority

Authority: 35 U.S.C. 206; DOO 30-2A.

### Source

Source: 52 FR 8554, Mar. 18, 1987, unless otherwise noted.

### Amendments

[88 FR 17737, Mar. 24, 2023]