Propriety of Licensing Government Employee's Patent

A civil service employee of the Air Force requested an opinion on the propriety of licensing his patent to the Government. He requested that GAO find the Air Force determination of rights valid. Based on a complete review of his work responsibilities and the extent of the Government's contribution to the invention, the Air Force left the entire right, title, and interest in the invention to the inventor. After this, the employee sought and obtained a patent at his personal expense. The Air Force expressed an interest in the device, and the employee offered to license the patent to the Government. The Chief of the Patents Division of the Air Force Judge Advocate General stated that there appeared to be sufficient governmental interest to acquire a license to the patent, but that it would not be appropriate for the Air Force to do so because the making of the invention may not have been wholly unrelated to the duties of the employee. After reviewing the arguments presented, GAO concluded that it would be legal and appropriate for the Air Force to acquire the license from the employee provided that he is not in violation of the conflict of interest statutes and regulations. The employee invented the device on his own time without the use of Government equipment, materials, or facilities. At the time, the employee did not have research and development responsibilities, and he developed the invention without the benefit of Government information. Regulations which forbid contracts between the Government and employees of the Government, except for the most compelling reasons, do not apply here. The device is not available from any source other than the inventor-employee. Since the Government has manifested its need for the invention, a compelling reason exists for allowing such a contract. GAO had no objection to the employee's assisting in the testing and use of the invention if he is in no way in a position to determine whether, or how many, items involving his invention are procured.