A patent waiver refers to the government’s waiver of rights in an invention arising from DOE-funded research so that private entities may expedite commercialization, quickly bringing their technologies from lab to market. There are three types of waivers: Advance, Identified, and Class patent waivers.
As stated in 10 CFR 784.3 - Policy, Section 6 of Public Law 96-517 (the Bayh-Dole patent and trademark amendments of 1980), as amended, as codified at 35 U.S.C. 200 —212, provides that title to inventions conceived or first actually reduced to practice in the course of or under any contract, grant, agreement, understanding, or other arrangement entered into with or for the benefit of the Department of Energy (DOE) vests in the United States, except where 35 U.S.C. 202 provides otherwise for nonprofit organizations or small business firms. Pursuant to 35 USC 202(a), a nonprofit organization or small business firm generally may elect title to such inventions unless certain specific exceptions apply that would place limitations on that right, such as where "exceptional circumstances" exist (e.g. Determination of Exceptional Circumstances for Energy Efficiency, Renewable Energy, and Advanced Energy Technologies). However, where title to such inventions vests in the United States, the Secretary of Energy (hereinafter Secretary) or designee may waive all or any part of the rights of the United States, subject to required terms and conditions, with respect to any invention or class of inventions made or which may be made by any person or class of persons in the course of or under any contract of DOE if it is determined that the interests of the United States and the general public will best be served by such waiver. In making such determinations, the Secretary or designee shall have the following objectives:
- Making the benefits of the energy research, development, and demonstration program widely available to the public in the shortest practicable time;
- Promoting the commercial utilization of such inventions;
- Encouraging participation by private persons in DOE's energy research, development, and demonstration programs; and
- Fostering competition and preventing undue market concentration or the creation or maintenance of other situations inconsistent with the antitrust laws.
If it is not possible to attain these objectives immediately and simultaneously for any specific waiver determination, the Secretary of the Department of Energy or designee will seek to reconcile these objectives in light of the overall purposes of the DOE patent waiver policy, as set forth in section 152 of the Atomic Energy Act of 1954, 42 U.S.C. 2182, section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974, 42 U.S.C. 5908, Public Law 99-661, 42 U.S.C. 7261a, and, where not inconsistent therewith, the Presidential Memorandum to the Heads of Executive Departments and Agencies on Government Patent Policy issued February 18, 1983 and Executive Order No. 12591 issued April 10, 1987.