the relevant technology, the Patent Paralegal, after receiving the awardee's election not to patent and after ascertaining that the inventor also does not want to patent, may send a copy of the invention disclosure to that agency to give it an opportunity to review and patent the invention. Unless the agency expresses an interest in the invention within thirty days, the Patent Paralegal will acknowledge the awardee's negative election by encouraging prompt publication of all research results. If the agency does express an interest in patenting the invention, the Patent Paralegal, with the concurrence of the cognizant Program Manager and Grants or Contracts Officer, will transfer to it all rights to the invention.

§ 650.11 Inventions also supported by another Federal Agency.

Part 16.c. of OMB Circular A-124 provides that in the event that an invention is made under funding agreements of more than one agency, the agencies involved will, at the request of the grantee or contractor or on their own initiative, designate one agency to be responsible for the administration of the invention. Whenever the NSF Patent Paralegal finds that another Federal agency also supported an NSF subject invention, he or she will consult with the grantee or contractor and the other agency to determine if a single agency should be designated to administer the Government's rights in the invention. With the concurrence of the cognizant Program Manager and Grants or Contracts Officer, the Patent Paralegal may transfer to, or accept from, another Federal agency, all rights in a jointly-supported invention.

§ 650.12 Utilization reports.

Until the form for and frequency of the utilization reports required by paragraph h of the standard Patent Rights clause are established by the Lead Agency overseeing implementation of the Bayh-Dole Act (see part 10.a. of OMB Circular A-124), the Foundation will not normally request such reports. This section will be amended to describe the reporting requirements when they are established.

(a) Requests for extension of time to disclose to the NSF Patent Paralegal, make an election to retain title to, or file a patent on a subject invention will be granted unless the NSF Intellectual Property Attorney determines that such an extension would either imperil the securing of valid patent protection or unacceptably restrict the publication of the results of the NSFsupported research.

(b) The restrictions on assignment and exclusive licensing by nonprofit organizations imposed by subparagraphs k(1) and k(2) of the Patent Rights clause in § 650.4(a) will be waived when that appears to serve the policy and objective of the Bayh-Dole Act. The NSF Intellectual Property Attorney may waive the restrictions either at the time of award or for an identified invention. Some circumstances under which the restrictions will normally be waived are described in section 6 of the NSF Patent Policy (§ 650.2).

(c) The preference for United States industry imposed by paragraph i of the clause in § 650.4(a) may be waived by the NSF Intellectual Property Attorney as provided in that paragraph.

(d) The NSF Intellectual Property Attorney may waive on behalf of the Foundation and the Government some or all of the rights normally reserved in a subject invention if the award under which the invention was made was not controlled by the Bayh-Dole Act and the inventing organization demonstrates that the NSF made a very limited contribution to the discovery or that the interests of the United States and the general public will be served thereby.

(e) Requests for waiver under this section should be addressed to the NSF Intellectual Property Attorney and should explain why waiver is justified under the stated criteria. The Intellectual Property Attorney will obtain the concurrence of the cognizant Program Manager and Grants or Contracts Officer before taking any action under this section. The requester will be given a written explanation of the reasons for denial of a request covered by this section.

§ 650.14 Exercise of march-in rights.

(a) The procedures established by this section supplement those prescribed by part 13. of OMB Circular A124 and apply to all march-in rights held by the Foundation including those resulting from funding agreements not covered by the OMB Circular.

(b) Petitions requesting that the NSF exercise a march-in right should be addressed to the NSF Intellectual Property Attorney. Such petitions should:

(1) Identify the patent or patent application involved and the relevant fields of use of the invention;

(2) State the grounds for the proposed march-in;

(3) Supply evidence that one or more of the four conditions creating a march-in right (lack of practical application, unsatisfied health or safety needs, unmet requirements for public use, or failure to prefer United States industry) is present; and

(4) Explain what action by the Foundation is necessary to correct that condition.

(c) If evidence received from a petitioner or from the Foundation's administration of the Patent Rights clauses indicates that one or more of the four conditions creating a marchin right might exist, the NSF Intellectual Property Attorney will informally review the matter as provided in part 13.b. of OMB Circular A-124. If that informal review indicates that one or more of the four conditions creating a march-in right probably exists, the Intellectual Property Attorney will initiate a formal march-in proceeding by issuing a written notice to the patentholder. That notice will provide all the information required by part 13.c. of OMB Circular A-124. The patentholder may submit information and argument in opposition to the proposed march-in in person, in writing, or through a representative.

(d) If the NSF Intellectual Property Attorney determines that a genuine dispute over material facts exists, he or she will identify the disputed facts and notify the NSF General Counsel. The General Counsel will establish a cross-directorate fact-finding panel. The panel will establish its own fact

finding procedures, within the requirements of part 13.e. of OMB Circular A-124, based on the dimensions of the particular dispute. The Intellectual Property Attorney will serve as secretary to the panel, but will not take part in its deliberations. Written findings of facts will be submitted to the General Counsel, sent by certified mail to the patentholder, and made available to all other interested parties.

(e) The NSF General Counsel will determine whether and how the Foundation should exercise a march-in right as provided in part 13.g. of OMB Circular A-124.

§ 650.15 Request for conveyance of title to NSF.

(a) The procedures established by this section apply to the exercise of the Foundation's right under paragraph d. of the Patent Rights clause in § 650.4(a) to request conveyance of title to a subject invention if certain conditions exist.

(b) The NSF Intellectual Property Attorney may request the recipient of an NSF award to convey to the Foundation or a designee title in one or more countries to any invention to which the awardee has elected not to retain title. The Intellectual Property Attorney may also request immediate conveyance of title to a subject invention if the awardee fails (1) to submit a timely invention disclosure, (2) to make a timely election to retain patent rights, or (3) to file a timely patent application; but only if he or she determines that such action is required to preserve patent rights.

(c) The NSF Intellectual Property Attorney will informally review any apparent failure by an awardee to comply with the requirements of paragraph c. of the Patent Rights clause in § 650.4(a). The interested institution, the inventor, the patentholder, and any other interested party will be given an opportunity to explain why a particular invention was not disclosed, why an election was not made, or why a patent application was not filed. If the Intellectual Property Attorney determines that a genuine dispute over material facts exists, a cross-director

ate fact-finding panel will be appointed by the General Counsel. The panel will establish its own fact-finding procedures, within the requirements of part 13.e. of OMB Circular A-124, based on the dimensions of the particular dispute. Written findings of facts will be submitted to the Intellectual Property Attorney, sent by certified mail to the patentholder, and made available to all other interested parties.

(d) The NSF Intellectual Property Attorney will determine whether the Foundation should request conveyance of title or if it should retain title obtained under § 650.15(b).

[48 FR 19860, May 2, 1983; 48 FR 44078, Sept. 27, 1983]

§ 650.16 Appeals.

(a) All actions by the NSF Intellectual Property Attorney under § 650.8 denying a request for greater rights, under § 650.13 denying a request for waiver, under § 650.14(d) denying the existence of a material dispute, under § 650.15(d) requesting conveyance of title, or under § 650.19 refusing retroactive application of the Bayh-Dole Act may be appealed to the Director of the Foundation by an affected party within thirty days. A request under § 650.15(b) to immediately convey title to the Foundation may be appealed to the General Counsel by the titleholder within five days.

(b) In reviewing the actions of the NSF Intellectual Property Attorney, the Director, or his or her designee, will consider both the factual and legal basis for the action or determination and its consistency with the policies and objectives of the Foundation and, if applicable, the Bayh-Dole Act (35 U.S.C. 200 to 206) and OMB Circular A-124.

[48 FR 19860, May 2, 1983; 48 FR 44078, Sept. 27, 1983]

§ 650.17 Background rights.

The Foundation will acquire rights to a research performer's pre-existing technology only in exceptional circumstances where, due to the nature of the research being supported, the Foundation requires greater control over resulting inventions. The NSF In

tellectual Property Attorney, with the concurrence of the cognizant Program Manager and Grants or Contracts Officer, will negotiate the background rights provision. If the affected awardee is a small business firm or nonprofit organization, the provision will conform to the requirements of the Bayh-Dole Act (35 U.S.C. 202(f)) as implemented by part 15 of OMB Circular A-124.

§ 650.18 Subcontracts.

Awardees should normally use the Patent Rights clause in § 650.4(a) in all subcontracts. At the request of the awardee or on recommendation from NSF staff, the Intellectual Property Attorney, with the concurrence of the cognizant Program Manager and Grants or Contracts Officer, may direct the awardee to insert into subcontracts relating to scientific research a patent provision other than that contained in § 650.4(a) of this regulation. Special patent provisions may be negotiated for subcontracts under § 650.5.

§ 650.19 Retroactive application.

The provisions of § 650.8 apply to all inventions disclosed after the effective date of this regulation under funding agreements that contain a deferred determination clause, including those awarded before July 1, 1981, to small business firms and nonprofit organizations. At the request of the awardee, the Intellectual Property Attorney, with the concurrence of the cognizant Program Manager and Grants or Contracts Officer, may also apply those provisions to inventions disclosed under awards which contain special patent clauses or were covered by an Institutional Patent Agreement with the Foundation.

§ 650.20 Delegation of authority.

The General Counsel is responsible for implementing this regulation and is authorized to make any exceptions to or extensions of the NSF Patent Policy as may be required by particular circumstances. The General Counsel will designate persons to serve as the NSF Intellectual Property Attorney and Patent Paralegal. Those indi

viduals are authorized to carry out the functions assigned them by this regulation.

APPENDIX A TO PART 650-OPTIONAL FORMAT FOR CONFIRMATORY LICENSE

The following format may be used for the confirmatory license to the Government required by subparagraph f(5) of the Patent Rights clause in § 650.4(a). The form given in 41 CFR 1-9.105(b) or any equivalent instrument may also be used.

License to the United States Government

This instrument confirms to the United States Government, as represented by the National Science Foundation, an irrevocable, nonexclusive, nontransferable, royaltyfree license to practice or have practiced on its behalf throughout the world the following subject invention:

§ 660.1 What is the purpose of these regulations?

(a) The regulations in this part implement Executive Order 12372, "Intergovernmental Review of Federal Programs," issued July 14, 1982 and amended on April 8, 1983. These regulations also implement applicable provisions of section 401 of the Intergovermental Cooperation Act of 1968.

(b) These regulations are intended to foster an intergovermental partnership and a strengthened Federalism by relying on state processes and on state, areawide, regional and local coordination for review of proposed federal financial assistance and direct federal development.

(c) These regulations are intended to aid the internal management of the Foundation, and are not intended to create any right or benefit enforceable at law by a party against the Foundation or its officers.

§ 660.2 What definitions apply to these regulations?

"Foundation" means the National

Science Foundation.

"Order" means Executive Order 12372, issued July 14, 1982, and

amended April 8, 1983 and titled "Intergovernmental Review of Federal Programs."

"Director" means the Director of the National Science Foundation or an official or employee of the Foundation acting for the Director under a delegation of authority.

"State" means any of the 50 states, the District of Columbia, the Commonwealth of Puerto Rico, the Commonwealth of the Northern Mariana Islands, Guam, American Samoa, the U.S. Virgin Islands, or the Trust Territory of the Pacific Islands.

§ 660.3 What programs and activities of the Foundation are subject to these regulations?

The Director publishes in the FEDERAL REGISTER a list of the Foundation's programs and activities that are subject to these regulations.

§ 660.4 [Reserved]

§ 660.5 What is the Director's obligation with respect to federal interagency coordination?

The Director, to the extent practicable, consults with and seeks advice from all other substantially affected federal departments and agencies in an effort to assure full coordination between such agencies and the Foundation regarding programs and activities covered under these regulations.

§ 660.6 What procedures apply to the selection of programs and activities under these regulations?

(a) A state may select any program or activity published in the FEDERAL REGISTER in accordance with § 660.3 of this part for intergovernmental review under these regulations. Each state, before selecting programs and activities, shall consult with local elected officials.

(b) Each state that adopts a process shall notify the Director of the Foundation's programs and activities selected for that process.

(c) A state may notify the Director of changes in its selections at any time. For each change, the state shall submit to the Director an assurance that the state has consulted with elected local elected officials regarding

the change. The Foundation may establish deadlines by which states are required to inform the Director of changes in their program selections.

(d) The Director uses a state's process as soon as feasible, depending on individual programs and activities, after the Director is notified of its selections.

§ 660.7 How does the Director communicate with state and local officials concerning the Foundation's programs and activities?

(a) For those programs and activities covered by a state process under § 660.6, the Director, to the extent permitted by law:

(1) Uses the state process to determine views of state and local elected officials; and

(2) Communicates with state and local elected officials, through the state process, as early in a program planning cycle as is reasonably feasible to explain specific plans and actions.

(b) The Director provides notice to directly affected state, areawide, regional, and local entities in a state of proposed federal financial assistance or direct federal development if:

(1) The state has not adopted a process under the Order; or

(2) The assistance or development involves a program or activity not selected for the state process.

This notice may be made by publication in the FEDERAL REGISTER or other appropriate means, which the Foundation in its discretion deems appropriate.

§ 660.8 How does the Director provide states an opportunity to comment on proposed federal financial assistance and direct federal development?

(a) Except in unusual circumstances, the Director gives state processes or directly affected state, areawide, regional and local officials and entities:

(1) At least 30 days from the date established by the Director to comment on proposed federal financial assistance in covered programs (i.e., those referenced in § 660.3) in the form of continuation awards that are not peer reviewed; and