(d) Nature and type of applicant's business; (e) Source of information concerning the availability of a license on this invention; (f) Purpose for which license is desired and a brief description of applicant's plan to achieve that purpose; (g) A statement of the fields of use for which applicant intends to practice the invention; and (h) A statement as to the geographic areas in which the applicant would practice the invention. § 101-4.104-3 Contents of an exclusive license application. In addition to the information indicated in § 101-4.104-2, an application for an exclusive license shall include: (a) Applicant's status, if any, in any one or more of the following categories: (1) Small business firm, (2) minority business enterprise, (3) location in a surplus labor area, (4) location in a lower income area, and (5) location in an economically depressed area; (b) A statement of applicant's capability to undertake the development and marketing required to achieve the practical application of the invention; (c) A statement describing the time, expenditure, and other acts which the applicant considers necessary to achieve practical application of the invention and the applicant's offer to invest that sum to perform such acts if the license is granted; (d) A statement that contains the applicant's best knowledge of the extent to which the Government invention is being practiced by private industry and the Government; and (e) Any other facts which the applicant believes are evidence that it is in the public interest for the Government agency to grant an exclusive license rather than a nonexclusive license and that such exclusive license should be granted to the applicant. § 101-4.104-4 Published notices. (a) A notice that a prospective exclusive licensee has been selected shall be published in the FEDERAL REGISTER, and a copy of the notice shall be sent to the Attorney General. The notice shall include: (1) Identification of the invention; (2) Identification of the selected licensee; (3) Duration and scope of the contemplated license; and (4) A statement to the effect that the license will be granted unless : (i) An application for a nonexclusive license, submitted by a responsive applicant pursuant to § 101-4.104-2, is received by the Government agency having custody of the invention within 60 days from the publication of the notice in the FEDERAL REGISTER, and the Government agency determines in accordance with its prescribed procedures under which procedures the Government agency shall record and make available for public inspection all decisions made pursuant thereto and the basis therefor, that the applicant has established that he has already achieved or is likely to bring the invention to the point of practical application within a reasonable period under a nonexclusive license; or (ii) The Government agency determines that a third party has presented evidence and argument which has established that it would not be in the public interest to grant the exclusive license. (b) If an exclusive license has been granted pursuant to this Subpart 101-4.1, notice thereof shall be published in the FEDERAL REGISTER. Such notice shall include: (1) Identification of the invention; (3) Duration and scope of the license. (c) If an exclusive license has been modified or revoked pursuant to § 101-4.104-5, notice thereof shall be published in the FEDERAL REGISTER. Such notice shall include: (1) Identification of the invention; (2) Identification of the licensee; and (3) Effective date of the modification or revocation. § 101-4.104-5 Modification or revocation. (a) Any license granted pursuant to this Subpart 101-4.1 may be modified or revoked by the Government agency granting the license if the licensee at any time defaults in making any report required by the license or commits any breach of any covenant or agreement therein contained. (b) A license may also be revoked by the Government agency granting the license if the licensee willfully makes a false statement of a material fact or willfully omits a material fact in the license application or any report required in the license agreement. (c) Before modifying or revoking any license granted pursuant to this subpart for any cause, the Government agency shall furnish the licensee and any sublicensee of record a written notice of intention to modify or revoke the license, and the licensee and any sublicensee shall be allowed 30 days after such notice to remedy any breach of any covenant or agreement as referred to in (a) of this section or to show cause why the license should not be modified or revoked. § 101-4.104-6 Appeals. An applicant for a license, a licensee, or such other third party who has participated under § 101-4.104-4 (a) (4) (ii) shall have the right to appeal, in accordance with procedures prescribed by the Government agency, any decision concerning the granting, denial, interpretation, modification, or revocation of a license. § 101-4.105 Litigation [An exclusive licensee shall be granted the right to sue at his own expense any party who infringes the rights set forth in his license and covered by the licensed patent. The licensee may join the Government upon consent of the Attorney General as a party complainant in such suit but without expense to the Government, and the licensee shall pay costs and any final judgment or deeree that may be rendered against the Government in such suit. The Government shall have an absolute right to intervene in any such suit at its own expense. The licensee shall be obligated to furnish promptly to the Government, upon request, copies of all pleadings and other papers filed in any such suit and of evidence adduced in proceedings relating to the licensed patent including, but not limited to, negotiations or settlement and agreements settling claims by a licensee based on the licensed patent, and all other books, documents, papers, and records pertaining to such suit. If as a result of any such litigation the patent shall be declared invalid, the licensee shall have the right to surrender his license and be relieved from any further obligation thereunder.] The property interest in a patent is the right to exclude. It is not the intent of the Government to transfer the property right in a patent when a license is issued pursuant to this subpart. Accordingly, the right to sue for infringement shall be retained with respect to all licenses so issued by the Government. § 101-4.106 Transfer of custody of Government inventions. A Government agency having custody of a Government-owned invention may enter into an agreement to transfer its custody to another Government agency for purposes of administration, including the granting of licenses pursuant to this subpart. Effective date. This subpart is effective [May 7, 1973, but may be observed earlier] October 1, 1975. However, the head of a Government agency may exclude from the terms, conditions, and procedures set forth in this subpart any license that was in the process of being negotiated on the effective date. Dated: [January 29, 1973] October 1, 1975. APPENDIX C FEDERAL PROCUREMENT REGULATIONS (REVISED) FPR AMENDMENT 147 (Published Federal Register, Vol. 40, No. 89, May 7, 1975) 1-9.107-5 Clauses for domestic contracts (long form) 1-9.107-6 Clauses for domestic contracts (short form) 1-9.107-7 Clauses for foreign contracts Administration of Patent Rights clauses 1-9.109-1 Patent rights follow-up 69 Note: Language added is italicized and language deleted is set off in brackets [Originally published as FPR Amendment 116, F.R. Vol. 38, No. 170, September 4, 1973. Correction-F.R. Vol. 40, No. 129, July 3, 1975.] Title 41-Public Contracts and Property Management CHAPTER 1-FEDERAL PROCUREMENT REGULATIONS [FPR Amdt. 147] PART 1-9-PATENTS, DATA, AND COPYRIGHTS Allocation of Rights in Inventions This amendment of the Federal Procurement Regulations [pre scribes policies, procedures, and appropriate contract clauses coneerning the allocation of rights in inventions, which enable the Government agencies not otherwise subject to statute to implement the President's Statement on Government Patent Policy (86 F.R. 16887, August 26, 1971). The attention of interested parties is particularly directed to the paragraph entitled "Comments by interested parties invited" which follows the regulation] makes changes in Subpart 1-9.1, Patents, which was published in the Federal Procurement Regulations (38 F.R. 23782, September 4, 1973). The regulations were developed in cooperation with the Committee on Government Patent Policy, Federal Council for Science and Technology. The regulations implement the revised Presidential Statement on Government Patent Policy (36 F.R. 16887, August 26, 1971). As originally published, interested parties were invited to submit comments. This opportunity to comment was considered appropriate, since the draft which was originally furnished for comment was extensively modified and enlarged. On February 28, 1974, the effective date provision of the regulations was cancelled in view of pending litigation. The regulations now have been revised in the light of the comments received and a new effective date has been established. The table of parts of Chapter 1 is amended to add the following entry: 1-9 Patents, data, and copyrights. Chapter 1 is amended by adding new Part 1-9 as follows: |