Compulsory licensing of patents under United States Energy Storage Competitiveness Act of 2007

The following are excerpts from 42 USC 17231, enacted as part of the United States Energy Storage Competitiveness Act of 2007 (Pub. L. 110–140, DEC. 19, 2007) as part of a larger program of federal subsidies in the field of energy, the Congress has created a system of compulsory licenses of patents, designed specifically to:

support the ability of the United States to remain globally competitive in energy storage systems for electric drive vehicles, stationary applications, and electricity transmission and distribution.

Among the features of the compulsory licensing provisions are these:

(i) the patent holder shall not negotiate any license or royalty agreement with any entity that is not an industrial participant under this subsection; and
(ii) the patent holder shall negotiate nonexclusive licenses and royalties in good faith with any interested industrial participant under this subsection; and
(C) the new invention be developed under such other terms as the Secretary determines to be necessary to promote the accelerated commercialization of inventions made under this subsection to advance the capability of the United States to successfully compete in global energy storage markets.

Not only does this non-voluntary licensing program target specific fields of technologies, it is effectively a local working requirement.

TITLE 42 > CHAPTER 152 > SUBCHAPTER V > Part D > § 17231
§ 17231. Energy storage competitiveness

(a) Short title
This section may be cited as the “United States Energy Storage Competitiveness Act of 2007”.

(c) Program
The Secretary shall carry out a research, development, and demonstration program to support the ability of the United States to remain globally competitive in energy storage systems for electric drive vehicles, stationary applications, and electricity transmission and distribution.

(e) Energy Storage Advisory Council
(B) Energy storage industry
The Council shall consist primarily of representatives of the energy storage industry of the United States.

(4) Plans
No later than 1 year after December 19, 2007, and every 5 years thereafter, the Council, in conjunction with the Secretary, shall develop a 5-year plan for integrating basic and applied research so that the United States retains a globally competitive domestic energy storage industry for electric drive vehicles, stationary applications, and electricity transmission and distribution.

(g) Applied research program
(1) In general
The Secretary shall conduct an applied research program on energy storage systems to support electric drive vehicles, stationary applications, and electricity transmission and distribution technologies, including—
(A) ultracapacitors;
(B) flywheels;
(C) batteries and battery systems (including flow batteries);
(D) compressed air energy systems;
(E) power conditioning electronics;
(F) manufacturing technologies for energy storage systems;
(G) thermal management systems; and
(H) hydrogen as an energy storage medium.
(2) Funding
For activities carried out under this subsection, in addition to funding activities at National Laboratories, the Secretary shall provide funds to, and coordinate activities with, a range of stakeholders, including the public, private, and academic sectors.

(3) Participation agreements
As a condition of participating in a center, a participant shall enter into a participation agreement with the center that requires that activities conducted by the participant for the center promote the goal of enabling the United States to compete successfully in global energy storage markets.

(7) Intellectual property
In accordance with section 202(a)(ii) of title 35, section 2182 of this title, and section 5908 of this title, the Secretary may require, for any new invention developed under this subsection, that—
(A) if an industrial participant is active in a [1] energy storage research center established under this subsection relating to the advancement of energy storage technologies carried out, in whole or in part, with Federal funding, the industrial participant be granted the first option to negotiate with the invention owner, at least in the field of energy storage technologies, nonexclusive licenses, and royalties on terms that are reasonable, as determined by the Secretary;
(B) if 1 or more industry participants are active in a center, during a 2-year period beginning on the date on which an invention is made—
(i) the patent holder shall not negotiate any license or royalty agreement with any entity that is not an industrial participant under this subsection; and
(ii) the patent holder shall negotiate nonexclusive licenses and royalties in good faith with any interested industrial participant under this subsection; and
(C) the new invention be developed under such other terms as the Secretary determines to be necessary to promote the accelerated commercialization of inventions made under this subsection to advance the capability of the United States to successfully compete in global energy storage markets.