Page images
PDF
EPUB

the permission of the contractor. These requests can be made whether or not a waiver request was made at the time of contracting. Waivers for an identified invention will be provided where it is determined that the patent waiver will be a real incentive to achieving the development and ultimate commercial utilization. Where a waiver of Government patent rights is granted, either at the time of contracting or upon request after an invention is made, certain safeguards will be required by OWRT to protect the public interest.

tier) can be maintained only against the Government in Court of Claims, and not against the contractor or subcontractor, in those cases where the Government has authorized or consented to the manufacture or use of the patented invention. Accordingly, to insure that work by a contractor or subcontractor under a Government contract may not be enjoined by reason of patent infringement, authorization and consent shall be given as provided below. The liability of the Government for damages in any such suit against it may, however, ultimately be borne by a contractor of subcontractor in accordance with the terms of any patent indemnity clause also included in the contract, and an authorization and consent clause does not detract from any patent indemnification commitment by a contractor or subcontractor. Therefore, both a patent indemnity clause and an authorization and consent clause may be included in

8 14R-9.101 Contracting Officer to consult

with Solicitor. (a) Except as is otherwise provided in this subpart, all authority of the Secretary of the Department of the Interior with respect to patent policies and procedures has been delegated to the Solicitor of the Department (Departmental Manual, Part 210, Chapter 2, paragraph 210.2.2A(5)). Therefore, any action under any contract provision required of the Contracting Officer (or other official having administrative authority over the contract) which affects the disposition of rights in inventions and in related area of data, shall be taken only after consultation with and approval of the Solici. tor of the Department. No modification or alteration of any contract provision in these areas shall be made by the Contracting Officer without the express written authorization of the Solicitor. Requests for deviation shall be submitted to the Solicitor and the reasons for the actions requested set forth.

(b) The Office of the Solicitor shall be consulted for policies, instructions, and contract clauses concerning inventions, patents, and data for use in contracts which are to be performed outside the United States, its possessions, and Puerto Rico.

(b) In certain contracting situation, such as those involving demonstration projects, consideration must be given to the impact of third party-owned patents covering technology that n be incorporated in the project which may ultimately affect widespread commercial use of the project results. In such situations, the Interior Department's Solicitor (Division of General Law) should be consulted to determine what modifications, if any, should be made to the utilization of the Authorization and Consent and Indemnity provisions or what other action might be deemed appropriate.

(c) An Authorization and Consent clause shall not be used in contracts where both complete performance and delivery are to be outside the United States, its possessions or Puerto Rico.

8 14R-9.102 Authorization and consent.

(a) Under 28 U.S.C. 1498, any suit for infringement of a United States patent based on the manufacture or use by or for the United States of an invention described in and covered by a patent of the United States by a contractor or by a subcontractor (at any

8 14R-9.102-1 Authorization and consent

in contracts for supplies or services. The following contract clause shall be included in all contracts for supbe included plies or services except:

(a) When prohibited by $14R9.102(c); or

(b) In contracts for research, development, or demonstration work in

[ocr errors]

which the clause in § 14R-9.102–2 is required.

ture of any invention described in and cov. ered by a patent of the United States in the performance of this contract or any part hereof or any amendment hereto or any subcontract hereunder (including all lower. tier subcontracts).

A

AUTHORIZATION AND CONSENT The Government hereby gives its authori. zation and consent (without prejudice to any rights of indemnification) for all use and manufacture, in the performance of this contract or any part hereof or any amendment hereto or any subcontract hereunder (including any lower-tier subcontract), of any invention described in and covered by a patent of the United States (a) embodied in the structure of composition of any article the delivery of which is accepted by the Government under this contract or (b) utilized in the machinery, tools or methods the use of which necessarily results from compliance by the Contractor or the using subcontractor with (i) specifications or written provisions now or hereafter forming a part of this contract, or (ii) specific written instructions given by the Contracting Officer directing the manner of performance. The entire liability to the Government for infringement of a patent of the United States shall be determined solely by the provisions of the indemnity clauses, if any, included in this contract or any subcontract hereunder (including all lower-tier subcontracts), and the Government assumes liability for all other infringement to the extent of the authorization and consent hereinabove granted.

8 14R-9.102-2 Authorization and consent

in contracts for research, development,

or demonstration. Greater latitude in the use of patented inventions may be necessary in a contract for research, development, or demonstration work than in a contract for supplies. Unless prohibited by § 14R-9.102(c), the following clause shall be included in all contracts calling exclusively for research, development, or demonstration work and may be included in contracts calling for both supplies and research, development, or demonstration work where the latter work is a primary purpose of the contract. In all other contracts for both supplies and research, development, or demonstration work, the Authorization and Consent clause § 14R9.102-1 shall be used. If the following clause is included in a contract, the clause in 14R-9.102-1 shall not be included.

814R-9.103 Patentindemnification of

Government by contractor. In order that the Government may be reimbursed for liability for patent infringement arising out of or resulting from the performance of construction contracts or contracts for supplies, including standard parts and components which normally are or have been sold or offered for sale to the public in the commercial open market, or which are the same as such supplies with a relatively minor modification thereof, a clause providing for indemnification of the Government shall be included in such contracts as well as in subcontracts, as appropriate, in accordance with the instructions set forth below. However, a Patent Indemnity clause normally shall not be used in contracts or subcontracts:

(a) When the Authorization and Consent clause in § 14R-9.102-2 applicable to research, development, or demonstration contracts is authorized, except that in contracts calling also for supplies of the kind described above, or for supplying standard parts or components, the Patent Indemnity clause in 14R-9.103-3(b) may be used with respect to such supplies; in subcontracts thereunder, the Patent Indemnity clause of $ 14R-9.103-1 or 8 14R-9.103-3(b) shall be used as appropriate:

(b) When the contract is for supplies which clearly are not, or have not, been sold or offered for sale to the public in the commercial open market;

(c) When both performance and delivery are to be outside the United States, its possessions, or Puerto Rico, unless the contract indicates that the supplies are ultimately to be shipped into the United States, its possessions, or Puerto Rico, in which case the instruction of $ 14R-9.103-1 or $ 14R9.103-3 are applicable; or

(d) When the contract is for an amount of $10,000 or less (as a matter of administrative convenience, however, the clause need not be deleted

AUTHORIZATION AND CONSENT The Government hereby gives its authorization and consent for all use and manufac

[ocr errors][merged small]

where it is a part of a standard form being used for such contracts since it is self-deleting).

8 14R-9.103-1 Patent indemnification in

formally advertised contracts-commercial status predetermined. Except as prohibited by § 14R-9.103, the following clause is appropriate in formally advertised construction contracts and shall be included in formal. ly advertised contracts for supplies when it has been determined in advance of issuing the invitation for bids that the supplies (or such supplies apart from relatively minor modification to be made thereto) normally are or have been sold or offered for sale by any supplier to the public in the commercial open market.

PATENT INDEMNITY If the amount of this contract is in excess of $10,000, the Contractor shall indemnify the Government and its officers, agents, and employees against liability, including costs, for infringement of any United States Letters Patent (except Letters Patent issued upon an application which is now or may hereafter be kept secret or otherwise with held from issue by order of the Government) arising out of the manufacture or delivery of supplies or out of construction, alteration, modification, or repair of real property (hereinafter referred to as "construction work”) under this contract, or out of the use or disposal by or for the account of the Government of such supplies or construction work. The foregoing indemnity shall not apply unless the Contractor shall have been informed as soon as practicable by the Government of the suit or action alleging such infringement, and shall have been given such opportunity as is afforded by applicable laws, rules, or regulations to participate in the defense thereof; and further, such indemnity shall not apply to: (i) an infringement resulting from compliance with specific written instructions of the Contracting Officer directing a change in the supplies to be delivered or in the materi. als or equipment to be used, or directing a manner of performance of the contract not normally used by the contractor; (ii) an in fringement resulting from addition to, or change in, such supplies or components furnished or construction work performed which addition or change was made subsequent to delivery or performance by the Contractor; or (iii) a claimed infringement which is settled without the consent of the Contractor, unless required by final decree of a court of competent jurisdiction.

8 14R-9.103-3 Patent indemnity in negoti.

ated contracts. The fact that a contract is negotiated does not preclude inclusion of a Patent Indemnity clause in such a contract, and such clause may be included in negotiated construction contracts and in contracts for supplies when such supplies normally are or have been sold or offered for sale to the public in the commercial open market. or are such supplies with relatively minor modifications made thereto, or in contracts for supplying standard parts or components.

(a) Subject to the foregoing and to the prohibitions in 14R-9.103, the clause in § 14R-9.103-1 is approved for use in negotiated contracts for construction work or supplies.

(b) Except as prohibited by § 14R9.103, the following clause is appropriate in research, development, or demonstration contracts when it has been determined by OWRT in any particular contracting situation that the contract will require standard supplies sold or offered for sale to the public on the commercial open market or utilize the contractor's practices or methods which normally are or have been used in providing goods and services on the commercial open market.

PATENT INDEMNITY The Contractor shall indemnify the Government and its officers, agents, and employees against liability, including costs, for infringement of U.S. Letters Patent (except Letters Patent issued upon an application which is now or may hereafter be kept secret or otherwise withheld from issue by order of the Government) resulting from the Contractor's: (a) furnishing or supplying standard parts or components which have been sold or offered for sale to the public on the commercial open market; or (b) utilizing its normal practices or methods which normally are or have been used in providing goods and services in the commercial open market, in the performance of the contract; or (c) utilizing any parts, components, practices, or methods to the extent to which the Contractor has secured indemnification from liability. The foregoing indemnity shall not apply unless the Contractor shall have been informed as soon as practicable by the Government of the suit or action alleging such infringement, and shall

have been given such opportunity as is afforded by applicable laws, rules, or regulations to participate in the defense thereof; and further, such indemnity shall not apply to a claimed infringement which is settled without the consent of the Contractor, unless required by final decree of a court of competent jurisdiction or to an infringement resulting from addition to or change in such supplies or components furnished on construction work performed which addition or change was made subsequent to deliver or performance by the Contractor.

(a) Where both performance and delivery are to be outside the United States, its possessions, or Puerto Rico, unless the contract indicates that the supplies are ultimately to be shipped into the United States, its possessions, or Puerto Rico; or

(b) Of $10,000 or less (as a matter of administrative convenience, however, the clause need not be deleted when it is part of a standard form being used for such contracts since it is self-deleting).

NOTICE AND ASSISTANCE REGARDING PATENT

AND COPYRIGHT INFRINGEMENT

§ 14R-9.103–4 Waiver of indemnity by the

Government. If it is desired to exempt one or more specified United States patents from the Patent Indemnity clause in $ 14R-9.103-1 and $ 14R-9.103-3(b), concurrence for such exemption shall be obtained from the Solicitor, and the following clause shall be included in the contract, in addition to the Patent Indemnity clause.

WAIVER OF INDEMNITY Any provision of this contract to the contrary notwithstanding, the Government hereby authorizes and consents to the use and manufacture, solely in the performance of this contract, of any invention covered by the United States patents indentified as listed below, and waives indemnification by the Contractor with respect to such patents: (Identify the patents by number or by other means if more appropriate).

The provisions of this clause shall be applicable only if the amount of this contract exceeds $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 knowledgement.

(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 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.

(c) This clause shall be included in all subcontracts.

[ocr errors][merged small][merged small]

8 14R-9.104 Notice and assistance.

The Government should be notified by the contractor of all claims of infringement in connection with the performance of a Government contract which come to the contractor's atten. tion. The contractor should also assist the Government, to the extent of evi. dence and information in the possession of the contractor, in connection with any suit against the Government, or any claims 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 of the contract. Accordingly, the following clause shall be included in all con tracts in excess of $10,000 for supplies, services, construction, research, devel. opment, or demonstration work. However, that the clause shall not be in cluded in contracts:

8 14R-9.107-1 General.

This section sets forth the policies, procedures, and practices of OWRT in connection with inventions, patents, and related matters based upon section 408 of the Water Research and Development Act of 1978, Pub. L. 95467 of October 17, 1978, citing sections 9 and 10 of the Federal Nonnuclear Energy Research and Development Act of 1974 (42 U.S.C. 5908, 5909); and, to the extent not inconsistent with the

foregoing statutes, the revised Presi. retain title in any foreign country in dential Memorandum and Statement which the Government does not elect of Government Patent Policy, August to secure patent rights. The contrac23. 1971 (36 FR 16887-16892). Pursu- tor's nonexclusive license retained in ant to the foregoing statutes, title to the invention may be revoked or modiinventions conceived or otherwise fied by OWRT only to the extent necmade in the course of or under OWRT essary to achieve expeditious practical contracts shall vest in the Govern application of the invention pursuant ment, and that all or part of the rights to an application for and the grant of of the Government in such inventions an exclusive license in the invention. may be waived if it is determined, in

(c) In contracts having as a purpose conformity with the provisions of sec

the conduct of research, development, tion 9 of the Federal Nonnuclear or demonstration work and in other Energy Research and Development special contracts the Government may Act, that the interests of the United

have to acquire the right to require liStates and the general public will best

censing of background patent rights to be served by such waiver.

insure reasonable public availability

and accessibility necessary to practice 8 14R-9.107-2 (Reserved]

the results of the contract in the field & 14R-9.107-3 Policy.

of technology specifically contemplat

ed in the contract effort. The need for (a) Whenever any invention is con

background patent rights and the parceived or otherwise made in the course

ticular rights that should be obtained of or under any contract of OWRT,

for either the Government or the title to such invention shall vest in the

public will depend upon the type, purUnited States unless the Secretary of

pose, and the scope of the contract the Interior, or his designee, waives all

effort, and the cost to the Governor any part of the rights of the United

ment of obtaining such rights. AccordStates. While waivers are to be grant

ingly, the background patent rights ed only in conformity with the specific

provision which will be appropriate for minimum considerations and under

many contract situations is included in the carefully delineated conditions set

the Patent Rights clause. forth in § 14R-9.109-6, it is recognized that waivers comprise a necessary part

(d) Nothing in this Part 14R-9 shall of the commercialization incentives

be deemed to convey to any individual,

corporation, or other business organiavailable to OWRT. It is intended, therefore, that waivers will be pro

zation immunity from civil or criminal vided in appropriate situations; to en

liability, or to create defenses to accourage industrial participation and

tions under the antitrust laws. foster rapid commercial utilization in

8 14R-9.107-4 Procedures. the overall best interest of the United States and the general public. With (a) Selection of Patent Rights clause. regard to any waivers granted under (1) Whenever a contract, subcontract, this Part 14R-9, OWRT shall maintain or other arrangement has as a purpose a publicly available, periodically up the conduct of research, development, dated record of such waiver determi- or demonstration work, the operation nations.

of a Government-owned research and (b) In contracts having as a purpose production facility, the furnishing of the conduct of research, development, architect-engineer, design or other or demonstration work and in other special services, or the coordination special contracts, the Government and direction of the work of others, shall normally acquire title in and to and in other special situations involvany invention or discovery conceived ing the use of Government-owned maor first actually reduced to practice in terials, equipment, or classified technithe course of or under the contract, al- cal data and information, the Conlowing the contractor to retain a non- tracting Officer shall include in the exclusive, revocable, paid-up license in proposed contract either the Patent the invention, and upon written re Rights clause of $ 14R-9.107-5(a), or quest to OWRT, the right to file and the clause of g 14R-9.107-6. The clause

« PreviousContinue »