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INNOVATIONS, INVENTIONS, AND PATENTS

(1) Presumption of Title.

(i) Any Reportable Item which the Administrator considers to be a Subject Invention shall be presumed to have been made in the manner specified in paragraph (1) or (2) of Section 305(a) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457(a)) (hereinafter called "the Act"), and the above presumption shall be conclusive unless at the time of reporting the Reportable Item the Contractor submits to the Contracting Officer a written statement, containing supporting details, demonstrating that the Reportable Item was not made in the manner specified in paragraph (1) or (2) of Section 305(a) of the Act.

(ii) Regardless of whether title to a given Subject Invention would otherwise be subject to an advance waiver or is the subject of a petition for waiver, the Contractor may nevertheless file the statement described in paragraph (b)(1)(i) above. The Administrator will review the information furnished by the Contractor in any such statement and any other available information relating to the circumstances surrounding the making of the Subject Invention and will notify the Contractor whether the Administrator has determined that the Subject Invention was made in the manner specified in paragraph (1) or (2) of Section 305(a) of the Act.

(2) Property Rights in Subject Inventions. Each Subject Invention for which the presumption of paragraph (b)(1)(i) of this clause is conclusive, or for which there has been a determination that it was made in the manner specified in paragraph (1) or (2) of Section 305(a) of the Act, shall be the exclusive property of the United States as represented by the National Aeronautics and Space Administration unless the Administrator waives all or any part of the rights of the United States, as provided in paragraph (b)(3) below.

(3) Waiver of Rights. Section 305(f) of the Act provides for the promulgation of regulations for the waiver by the Administrator of the rights of the United States with respect to any invention or class of inventions made or which may be made under the conditions specified in paragraph (1) or (2) of Section 305(a) of the Act. The promulgated NASA Patent Waiver Regulations, 14 CFR Section 1245, Subpart 1, provide for the consideration of petitions from the Contractor or employee-inventor for waiver in any Subject Invention or petition from the Contractor for advance waiver of rights to any or all of the inventions which may be made under a contract and which may be requested prior to the execution of the contract or within 30 days after execution of the contract. Waiver of foreign rights may be requested concurrently with domestic rights or independently thereof.

(c) Minimum Rights Reserved by the Government.

(1) With respect to each Subject Invention for which a waiver of rights is applicable pursuant to 14 CFR Section 1245, Subpart 1, the Government shall reserve:

(i) an irrevocable, nonexclusive, nontransferrable, royalty-free license for the practice of such invention throughout the world by or on behalf of the United States or any foreign government pursuant to any treaty or agreement with the United States; and

(ii) such other rights as set forth in 14 CFR 1245.107.

(2) Nothing contained in this paragraph (c) shall be deemed to grant to the Government any rights with respect to any invention other than a Subject Invention.

(d) Minimum Rights to the Contractor.

(1) The Contractor is granted, (see 14 CFR 1245.1), a revocable, nonexclusive, royalty-free license in each patent application filed in any country on a Subject Invention reported in accordance with paragraph (e) of this clause, and in any resulting patent, in which the Government acquires title. The license shall extend to the Contractor's domestic subsidiaries and affiliates, if any, within the corporate structure of which the Contractor is a part and shall include the right to grant sublicenses of the same scope to the extent the Contractor was legally obligated to do so at the time the contract was awarded. The license shall be transferrable only with the approval of the Administrator except when transferred to the successor of that part of the Contractor's business to which the invention pertains.

(2) The Contractor's nonexclusive domestic license granted pursuant to paragraph (d)(1) of this clause may be revoked or modified by the Administrator to the extent necessary to achieve the earliest practical application of the Subject Invention pursuant to an application for an exclusive license submitted in accordance with 14 CFR 1245.2. This license shall not be revoked in that field of use and/or the geographical areas in which the Contractor has achieved practical application and continues to make the benefits of the invention reasonably accessible to the public. The Contractor's nonexclusive license in any foreign country granted pursuant to paragraph (d)(1) of this clause may be revoked or modified at the discretion of the Administrator to the extent the Contractor or its domestic affiliates have failed to achieve practical application in that foreign country.

(3) Before revocation or modification of the license, pursuant to paragraph (d)(2) of this clause, the Contractor shall be allowed 30 days (or such other time as may be allowed by the Administrator for good cause shown by the Contractor). after the notice to show cause why the license should not be revoked or modified. The Contractor shall have the right to reconsideration or appeal, in accordance with 14 CFR 1245.2, of any decision concerning the revocation or modification of its license.

(e) Reportable Item Identification Procedures and Reports.

(1) The Contractor shall establish, maintain and follow active and effective procedures to ensure that Reportable Items are promptly identified and timely reported. These procedures shall include the maintenance of laboratory notebooks or equivalent records and any other records that are necessary to document the conception and/or the first actual reduction to practice of Reportable Items, and records which show that the procedures for identifying and reporting the Reportable Items are followed. Upon request, the Contractor shall furnish the Contracting Officer a description of these procedures so that he may evaluate and determine their effectiveness.

(2) The Contractor shall furnish the Contracting Officer:

(i) A full and complete technical report for each Reportable Item within 6 months after conception or first actual reduction to practice, whichever occurs first under the contract. But, in any event, for Subject Inventions, such report shall be furnished prior to any on sale, public use, or publication known to the Contractor. The report shall identify the contract and inventor or innovator and shall be sufficiently complete in technical detail and appropriately illustrated by

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sketch or diagram to convey to one skilled in the art to which the Reportable Item pertains, a clear understanding of the nature, purpose, operation, and to the extent known, the physical, chemical, biological, or electrical characteristics of the item;

(ii) Interim reports, at least every 12 months from the date of the contract, listing Reportable Items for that period and certifying that:

(A) The Contractor's procedures for identifying and reporting Reportable Items, required by this paragraph (e), have been followed throughout the reporting period; and

(B) All Reportable Items have been reported or that there are no such Reportable Items.

(iii) A final report within 3 months after completion of the contract work, listing all Reportable Items or certifying that there were no such Reportable Items. Such final report shall also include a negative subcontract report, if appropriate, pursuant to paragraph (i)(5) of this clause.

(3) The Contractor shall furnish, upon written request by the Contracting Officer, additional technical and other information available to the Contractor as is necessary. for the preparation of a patent application and for prosecution of such patent application, and in addition shall execute or endeavor to secure execution of all lawful documents and instruments determined by the Administrator to be necessary for the preparation and prosecution of applications for Letters Patent covering any Subject Invention.

(4) The Contractor agrees that the Government may use, duplicate, and disclose, in whole or in part, in any manner and for any purpose whatsoever, and have others so do, all reports of Reportable Items and all other reports and papers furnished or required to be furnished pursuant to this clause.

(f) Forfeiture of Rights In Unreported Subject Inventions.

(1) The Contractor shall forfeit to the Government all rights in any Subject Invention which it fails to report to the Contracting Officer within 6 months after the time he:

(i) Files or causes to be filed a United States or foreign application for patent thereon; or

(ii) Submits the final report required by paragraph (e)(2)(iii) of this clause, whichever is later.

(2) However, the Contractor shall not forfeit rights in a Subject Invention if, within the time specified in (1) of this paragraph (f), the Contractor:

(i) Prepared a written decision based upon a review of the record that the invention was neither conceived nor first actually reduced to practice in the performance of any work under the contract and submits the same to the Contracting Officer; or

(ii) Reports the invention to the Contracting Officer, together with the written statement specified in paragraph (b)(1)(i) of this clause, to overcome the presumption of title in the invention; or

(iii) Establishes that the failure to report did not result from his fault or negligence.

(3) At the discretion of the Administrator, the Contractor may not forfeit rights under paragraph (f)(1) of this clause if the Contractor files or causes to be filed a United States application for patent thereon and the applicant files with the Commissioner of Patents a written statement under oath pursuant to subsections 305(c) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457(c)).

(4) Pending written assignment of the patent applications and patents on a Subject Invention determined by the Contracting Officer to be forfeited (such determination to be a final decision under the "Disputes" clause), the Contractor shall be deemed to hold the invention and the patent applications and patents pertaining thereto in trust for the Government. The forfeiture provision of this paragraph (f) shall be in addition to and shall not supersede other rights and remedies which the Government may have with respect to Subject Inventions.

(g) Examination of Records Relating to Inventions.

(1) The Contracting Officer, until the expiration of 3 years after final payment under the contract, shall have the right to examine any books (including laboratory notebooks), records, documents, and other supporting data of the Contractor which the Contracting Officer reasonably deems pertinent to the discovery or identification of Subject Inventions or to determine compliance with the requirements of this clause.

(2) The Contracting Officer shall have the right to review all books (including laboratory notebooks), records and documents of the Contractor relating to the conception or first actual reduction to practice of inventions in the same field of technology as the work under this contract to determine whether any such inventions are Reportable Items if the Contractor refuses or fails to:

(i) Establish the procedures of paragraph (e)(1) of this clause; or

(ii) Maintain and follow such procedures; or

(iii) Correct or eliminate any material deficiency in the procedures within thirty (30) days after the Contracting Officer notifies the Contractor of such a deficiency.

(h) Withholding of Payment (Not Applicable to Subcontracts).

(1) Any time before final payment of the amount of this contract, the Contracting Officer may, if he deems such action warranted, withhold payment until a reserve not to exceed $50,000 or 5 percent of the amount of this contract, whichever is less, shall have been set aside, if in his opinion the Contractor fails to:

(i) Establish, maintain, and follow effective procedures for identifying and reporting Reportable Items pursuant to paragraph (e)(1) of this clause; or

(ii) Furnish any Reportable Items pursuant to paragraph (e)(2)(i) of this clause; or

(iii) Furnish acceptable interim reports pursuant to paragraph (e)(2)(ii) of this clause; or

(iv) Provide the information regarding subcontracts pursuant to paragraph (i)(5) of this clause.

The reserve or balance thereof shall be withheld until the Contracting Officer has determined that the Contractor has rectified whatever deficiencies exist and has delivered all reports, disclosures, and other information required by this clause.

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CFR TITLE 41 CHAPTER 18

INNOVATIONS, INVENTIONS, AND PATENTS

(b) In construction contracts made with Standard Form 23A, retain the "Patent Indemnity" clause contained therein. 9.104 Notice and Assistance. The Government should be notified by the contractor of all claims of infringement in connectio": with the performance of a contract which come to the contractor's attention, especially where the Government has given its authorization and consent for the use and manufacture of any patented invention in the performance of the contract or where the contract calls for the delivery to the Government of supplies, models, or prototypes. The contractor should also assist the Government, to the extent of evidence and information in the possession of the contractor, in connection with any suit against the Government, or any Iclaim against the Government made before suit has been instituted, on account of any alleged patent or copyright infringement arising out of or resulting from the performance the contract. Accordingly, the "Notice of Assistance Regarding Patent and Copyright Infringement" clause set forth below shall be included in contracts in excess of $10,000.

of

NOTICE AND ASSISTANCE REGARDING PATENT AND COPYRIGHT
INFRINGEMENT (NOVEMBER 1964)

(The provisions of this clause shall be applicable only if the amount of this contract exceeds ten thousand dollars ($10,000).

(a) The Contractor shall report to the Contracting Officer, promptly and in reasonable written detail, each notice or claim of patent or copyright infringement based on the performance of this contract of which the Contractor has knowledge.

(b) In the event of any claim or suit against the Government on account of any alleged patent or copyright infringement arising out of the performance of this contract or out of the use of any supplies furnished or work or services performed hereunder, the Contractor shall furnish to the Government, when requested by the Contracting Officer, all evidence and information in possession of the Contractor pertaining to such suit or claim. Such evidence and information shall be furnished at the expense of the Government except where the Contractor has agreed to indemnify the Government.

(End of clause)

9.105 Processing of Infringement Claims. Any claim for infringement of a patent or copyright should be addressed to or brought to the attention of the Office of General Counsel, NASA Headquarters, and should identify (i) the United States copyright, patent, or patent application, (ii) the interest of the claimant, and (iii) the acts alleged to constitute the infringement.

of or

9.106 Classified Contracts. Unauthorized disclosure classified subject matter, whether in patent applications resulting from an issuance of a patent, may be a violation of

9.104

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PATENTS, DATA, COPYRIGHTS

18 U.S.C. 791 et seq. (Espionage and Censorship) and related

statutes and may be contrary to the interest of national| security. Accordingly, the "Filing of Patent Applications" clause set forth below shall be included in every classified contract and in every unclassified contract which covers or is likely to cover classified subject matter.

FILING OF PATENT APPLICATIONS (SEPTEMBER 1962)

(a) Before filing or causing to be filed a patent application disclosing any subject matter of this contract, which subject matter is classified "Secret" or higher, the Contractor shall, citing the thirty (30) day provision below, transmit the proposed application to the Contracting Officer for determination whether, for reasons of national security, such application should be placed under an order of secrecy or sealed in accordance with the provisions of 35 U.S.C. 181-188 or the issuance of a patent should be otherwise delayed under pertinent statutes or regulations; and the Contractor shall observe any instructions of the Contracting Officer with respect to the manner of delivery of the patent application to the United States Patent Office for filing, but the Contractor shall not be denied the right to file such patent application. If the Contracting Officer shall not have given any such instructions within thirty (30) days from the date of mailing or other transmittal of the proposed application, the Contractor may file the application.

(b) The Contractor shall furnish to the Contracting Officer, at the time of or prior to the time when the Contractor files or causes to be filed a patent application disclosing any subject matter of this contract, which subject matter is classified "Confidential," a copy of such application for determination whether, for reasons of national security, such application should be placed under an order of secrecy or the issuance of a patent should be otherwise delayed under pertinent statutes or regulations.

(c) In filing any patent application coming within the scope of this clause, the Contractor shall observe all applicable security regulations covering the transmission of classified subject matter.

(End of clause)

9.107 Property Rights in Inventions Made in the Performance of Work Under NASA Contracts with Other Than Small Business Firms or Nonprofit Organizations.

9.107-1 General.

(a) The policies, procedures, and practices of NASA with respect to the reporting of inventions, discoveries, improvements, and innovations made in the performance of work under any NASA contract or subcontract with other than a small business firm or nonprofit organization, and the allocation of

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property rights relating thereto, are based upon Section 305 of the National Aeronautics and Space Act of 1958, as amended (42 U.S.C. 2457); and, to the extent not inconsistent with such statute, the revised Presidential Memorandum and Statement of Government Patent Policy issued on August 23, 1971 (36 FR 16887-16892). Any disposition of rights made in accordance with the President's statement has been authorized by Congress (35 U.S.C. 210(c); 94 Stat. 3027). Inventions made in the performance of work under NASA contracts or subcontracts (with other than a small business firm or nonprofit organization) in the manner specified in Section 305 (a) (1) or (2) of the Act (42 U.S.C. 2457 (a)(1), (2)), become the exclusive property of the Government unless the Administrator of NASA determines that the interest of the United States will be served by waiving all or any part of the Government's rights under the provisions of Section 305(f) of the Act (42 U.S.Č. 2457 (f)). Such waiver of rights is made pursuant to recommendation of an Inventions and Contributions Board established by the Administrator. The policies, procedures and practice of NASA with respect to the disposition of rights and the reporting of inventions and discoveries made in the performance of work under any NASA contract or subcontract with small business firms and nonprofit organizations are set forth in 9.108.

(b) Section 305(b) of the Act (42 U.S.C. 2457 (b)) also provides that each NASA contract and subcontract for the performance of any work shall contain effective provisions for the reporting of any invention, discovery, improvement or innovation made thereunder. NASA is also authorized, under Section 305(h) of the Act (42 U.S.C. 2457(h)) and under 35 U.S.C. 207, 94 Stat. 3023, to undertake all suitable and necessary steps to protect and administer rights to any invention or discovery for which it holds title, including applying for, obtaining and maintaining patents thereon, and to require contractors and persons who retain title under the Act to protect any of them to which NASA has or may require license rights. Further, 35 U.S.C. 207, 94 Stat. 3023, authorizes NASA to grant nonexclusive, exclusive or partially exclusive licenses, pursuant to regulation 14 CFR 1245.2, for any invention covered by a patent or patent application which NASA holds title. NASA is also required, under Section 203(a)(3) of the Act (42 U.S.C. 2473(a)(3)) to provide for the widest practicable and appropriate dissemination information concerning its activities and the results thereof. 9.107-2 [Reserved]

9.107-3 Policy.

for

of

(a) It is the policy of NASA to require prompt reporting of inventions, discoveries, improvements, and innovations made in the performance of any work under any NASA contract or subcontract in order to protect the Government's interests therein; and to provide the widest practicable and appropriate dissemination, early utilization, expeditious development, and continued availability thereof for the benefit of the

9.107-2

CFR TITLE 41 CHAPTER 18

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