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documents necessary for the prosecution of the above-identified application for patent.

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[121(b) When the clause of $ 1-9.107-5(b) is included in a contract or when a party [obtains] retains title to an identified invention and the right to file a patent application pursuant to a greater rights determination of § 1-9.109-6, the optional form of Confirmatory Instrument set forth [in this $1-9.199(e) (2)] hereinafter is approved for use by the contractor or by the party [obtaining] retaining [greater rights] title. (The Patent Rights elause of $19.107-5fb) requires the contraetor to record this instrument in the Patent Assignment Register under 35 U.S.C. 261, to pay the recording fee, and to send the ageney the recorded instrument which contains the U.S. Patent Office's recordation information. The Patent Office in recording this instrument places a record of the instrument in the Governmental Register maintained pursuant to Exeeutive Order 9424 of February 18, 1944.]

CONFIRMATORY INSTRUMENT

(License to the Government)

Application for:

(Title of invention) Inventor (s): Serial No.:

Contract No.: Filing Date:

--- Contractor: The invention identified above is a "Subject Invention" under Patent Rights clause,

(identify clause) (------------) included in Contract No.

(date) with

(specify agency)

This document is confirmatory of the paid-up license granted to the Government in this invention, [and] patent applications, and any resulting patent, and all other rights reserved to] acquired by the Government by] under the referenced (clause] contract.

[The Government is not estopped at any time from contesting the enforceability, validity, scope of, or title to the patent appliestion identified above or any-patent resulting therefrom.] It is understood and agreed that this document does not preclude the Government from asserting rights under the provisions of said contract or of any other agreement between the Government and the Contractor, or any other rights of the Government with respect to the above-identified invention.

The Government is hereby granted an irrevocable power to inspect and make copies of the above-identified patent application.

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[134] (c) Assignments, licenses, confirmatory instruments, and other papers evidencing any rights of the Government in patents or patent applications shall be recorded in the Statutory Register and/or documented in the Governmental Register maintained by the U.S. Patent and Trademark Office pursuant to Executive Order 9424, February 18, 1944. Such documents shall be sent to the Commissioner of Patents and Trademarks, Attention: Assignment Branch, Washington, D. C. 20231, and when the document is to be recorded in the Statutory Register, shall be accompanied by the required fee. When the document is recorded in the Statutory Register, the Patent and Trademark Office places a copy of this recording in the Governmental Register. If the agency does not have the document recorded in the Statutory Register, it shall send two copies of the document to the Commissioner of Patents and Trademarks, and request that these documents be filed in a designated section of the Governmental Register. The Governmental Register contains [three several sections [:- they including a secret, departmental, and public section[s]. The secret section is for applications bearing a security classification; the departmental section is for documents which are available to the Government and to the public only upon approval of the Government agency; and the public section permits access to the public.

119.199 +19.109 5 Reserved}].

8 1-9.109–6 Retention of [G]greater rights [determinations].

(a) Request for the retention of greater domestic rights. A contractor's request for a determination [of] that he retain greater domestic rights in an identified invention under the Patent Rights clauses of § 1-9.107–5(a) or (c) or 1-9.107–6 shall be submitted in writing to the agency.

(1) The request shall contain the following information:

(i) The prime contract number and the subcontract number, if applicable, under which the invention was made and an identification of the agency's contracting office;

(ii) A brief description of the invention or a copy of the invention disclosure;

(iii) The nature and extent of the rights desired;

(iv) A description of the development, risk capital and expense, and time required to bring the invention to the point of practical application;

(v) A statement of the contractor's plans and intentions to bring the invention to the point of practical application including:

(A) If further development [is] and marketing are to be conducted by the contractor, a description of the facilities, personnel, and marketing outlets available for that purpose, and the extent to which such development is to be undertaken by the contractor or others on his behalf and/or;

(B) If she intends to lieense] licensing of the invention is intended, a brief description of the contractor's licensing program; and

(vi) A statement, where the invention falls within $ 1-9.107-3(a), of the contractor's contribution when she con tends) the contention is made that the Government's contribution to the invention is small compared to his contribution.

(2) Agencies may request additional information which would facilitate a determination [of] that greater rights should be retained by the contractor. Illustrations of such items of information include the following:

(i) The relationship of the invention to a principal purpose of the contract;

(ii) Any facts or information known to the contractor about whether the invention is intended to be developed by the Government for commercial use or is to be required for such use by governmental regulation;

(iii) The relationship, if any, of the invention to the public health, safety, or welfare; and

(iv) The field of science and technology of the invention and whether the Government has been the principal developer of this field.

(3) The contractor's employee(s) who made an invention in the course of or under a contract may also request, with proper authorization from his employer, a [greater rights] determination that he retain greater rights whenever the contract so provides. A copy of the authorization of the contractor-employer should be submitted with the employee-inventor's request for such a [greater rights] determination. In submitting the information required for a [greater rights] determination for the retention of greater rights as provided in § 1-9.109-6(a) (1), and in applying the other provisions of this paragraph, the term contractor shall be understood to also mean the employee-inventor.

(b) Reimbursement of costs for filing patent applications. In order to protect the interest of the Government and the party submitting a request for a [greater rights) determination that greater rights be retained, the filing of a United States patent application prior to the agency's determination is permissible. If an application on a Subject Invention is filed during the pendency of the determination, or within 60 days prior to the receipt of a request by the agency, the agency shall reimburse the party filing the application for the reasonable filing costs and for any patent prosecution as may have occurred as provided by $ 115.205–26 or § 1-15.309–22. Whenever such costs are not covered [in] by § 1-15.205–26 or § 1-15.309–22, the agency may nevertheless reimburse the party causing the application to be filed for the reasonable costs of such filing and for any patent prosecution that may have occurred, subject to the availability of funds, provided :

(1) The agency determines that the party is not entitled to the retention of greater rights which are coextensive with the party's request; and

(2) Prior to reimbursement the party requesting such determination assigns the application to a Government agency and the agency accepts the assignment of the application.

(c) Agency consideration. The agency shall consider each request for the determination for the retention of greater domestic rights which was submitted within the period specified in the Patent Rights clause and shall make the determination in accordance with the criteria set out in paragraphs (d) or (e) of this section, as applicable.

(d) Criteria for [greater rights] a determination for the retention of greater rights-[Option in] Acquisition by the Government clause. When the request for [greater rights] a determination for the retention of greater rights relates to an invention reported under the Patent Rights clause of $ 1-9.1075(a) or $ 1-9.107-6(a):

(1) The requesting party may retain greater rights regardless of whether the invention is or is not [e-primary objeet] directly related to a principal purpose of the contract when the agency finds that the invention comes within the criteria of $ 1-9.107-3(a) (1) through (4); and

(i) The (acquisition] retention of [the] greater rights is a necessary incentive to call forth private risk capital and expense to bring the invention to the point of practical application; or

(ii) The Government's contribution to the invention is small compared to that of the contractor.

(2) The requesting party also may retain greater rights when the agency finds that:

(i) The invention is not [a primary objeet] directly related to a principal purpose of the contract and does not come within the criteria of $ 1-9.107–3(a) (1) through (4); and

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