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(4) The purpose and nature of the also be requested where the purpose invention, including the anticipated or scope of work of an existing conuse thereof;
tract is to be substantially altered. (5) The extent to which the contrac When advance waivers are granted, tor has made or will make substantial the rights set forth in paragraphs (b), investment of financial resources or (c), and (d) of the clause of $ 14Rtechnology developed at the contrac- 9.107-5(a) should be modified, to contor's private expense which will direct form to the waiver granted. ly benefit the commercialization of (3) A request for waiver (other than the invention;
advance waivers for an identified in(6) The extent to which the field of vention shall be submitted to the contechnology of the invention has been tracting officer at the time the invendeveloped at the contractor's expense; tion is reported to OWRT, or not later
(7) The extent to which Government than six (6) months after conception intends to further develop the inven- or first actual reduction to practice, tion to the point of commercial utiliza whichever occurs first, or such longer tion;
period as may be authorized by the (8) The extent to which the inven contracting officer for good cause tion is concerned with the public shown in writing by the contractor or health, public safety, or public wel inventor. fare;
(4) All requests for waiver received (9) The likely effect of the waiver on by OWRT or its contractors will be competition and market concentra forwarded promptly to the Solicitor, tion;
together with any reference or sup(10) In the case of a nonprofit educa porting documents provided by the tional institution, the extent to which staff of the activity. If the request for such institution has a technology waiver appears to contain insufficient transfer capability and program, ap- information, the Solicitor may seek proved by the Secretary or his desig- additional information from the renee as being consistent with the appli questor to supplement the request, cable policies of this section; and
and may also seek additional informa(11) The small business status of the tion from other sources. The Solicitor contractor.
will thoroughly analyze the request in (d) Procedures. (1) All waiver deter view of each of the objectives and conminations shall be initiated by a writ- siderations set forth in this section ten request. Such requests may be sub- and shall also consider the overall mitted by existing or potential con rights obtained by the Government in tractors in the case of requests for an the patent, copyright, and data clauses advance waiver and by contractors or of the contract. Where it appears that employee-inventors in the case of re a lesser part of the rights of the quests for waiver for identified inven United States than requested would be tions. A request for an advance waiver more appropriate in view of the polimay also be made for an identified in cies set forth in this section, the Solicivention which has already been con tor should attempt to negotiate a comceived and which reasonably may be promise acceptable to both the requesfirst actually reduced to practice in tor and OWRT. the course of or under an OWRT con (5) The Solicitor will prepare and tract. Such waiver requests must in recommend a Statement of Considerclude a copy of the patent or patent ations setting forth the rationale for application covering the identified in either accepting or rejecting the vention.
waiver request. While the Statement (2) A request for an advance waiver need not make specific findings as to shall be submitted to the contracting each and every consideration of paraofficer or to contractors for their sub graph (b) or (c) of this section, it will contractors at any time prior to execu cover those that raise significant tion of the contract or within thirty issues and those that are decisive, and (30) days thereafter, but should nor it will explain the basis for the recommally be submitted as part of the con- mended determination. There may be tract proposal. Advance waivers may occasions when the application of the
various considerations in paragraphs (b) or (c) of this section to a particular case could cause conflicting results, and in those instances the differences will be reconciled giving due regard to the overall policies set forth in this section.
(6) The Statement shall serve as a recommended basis for the waiver determination. The Solicitor will also obtain comments from the appropriate OWRT program division to assist the Secretary or his designee in the waiver determination.
(7) In making waiver determinations, the Secretary or his designee shall objectively review all requests for waiver in views of the objectives and considerations set forth in this section. If this determination and the rationale therefor is not accurately reflected in the recommended Statement of Consideration, a new Statement shall be prepared.
(8) Where the request for advance waiver has not been approved prior to the effective date of the contract and the terms and conditions of the waiver has thus not been made a part of the contract, the contracting officer shall promptly notify the requestor by letter of the determination of the Secretary or his designee, and the basis therefor. If the advance waiver is approved, the letter shall state the scope, terms, and conditions of such waiver. Where the terms and conditions of an approved advance waiver have not been made a part of the contract, the letter shall inform the requestor that the advance waiver shall be effective (i) as of the effective date of the contract for an advance waiver of inventions identified, i.e., conceived prior to the effective date of the contract, or (ii) as of the date the invention is reported with an election by the contractor to retain rights therein, i.e., for an invention conceived or first actually reduced to practice after the effective date of the contract; provided a copy of the letter is signed and promptly returned to the contracting officer by the requestor acknowledging the acceptance of the scope, terms, and conditions of the advance waiver. After the acceptance by the contractor of an advance waiver, the contracting officer shall cause a unilateral no-cost modifi
cation to be made to the contract incorporating the terms and conditions of the waiver in lieu of previous patent provisions. Whenever a requested determination has been denied, the requestor may, within thirty (30) days, request reconsideration. Such a request shall include any additional facts and rationale not previously submitted which support the request. Requests for reconsideration shall be submitted and processed in accordance with the procedures set forth in paragraph (d) of this section.
(e) Content of waiver requests. (1) All requests for waiver shall include the following information:
(i) The requestor's identification, business address, and, if represented by counsel, the counsel's name and address.
(ii) An identification of the pertinent contract or proposed contract and a copy of the contract statement of work or a nonproprietary statement which fully describes the proposed work to be performed.
(iii) The nature and extent of waiver requested.
(iv) A full and detailed statement of facts, to the extent known by or available to the requestor, directed to each of the considerations set forth in paragraph (b) or (c) of this section, as applicable, and a statement applying such facts and considerations to the policies set forth in paragraph (a) of this section. It is important that this submission be tailored to the unique aspects of each request for waiver, and be as complete as feasible; and
(v) The signature of the requestor or his authorized representative with the following statement:
The facts set forth in this request for waiver are within the knowledge of the requestor and are submitted with the inten. tion that the Secretary or his designee rely on them in reaching the waiver determination.
(2) Requests for waiver for identified inventions shall, in addition to paragraph (e)(1)(i) through (v) of this section include:
(i) The full names of all inventors;
(ii) A statement of whether a patent application has been filed on the invention, together with a copy of such
application if filed, or, if not filed, a (iii) Situations involving the private complete description of the invention; use of Government facilities and the
(iii) If a patent application has not contractor is funding all or a part of been filed, any information which may such costs; and indicate a potential statutory bar to (iv) Situations in which the equities the patenting of the invention under of the contractor are so substantial in 35 U.S.C. 102, or a statement that no relation to that of the Government bar or potential bar is known to exist; that the waiver is necessary to obtain and
the participation of the contractor. (iv) Where the requestor is the in (2) As stated in paragraph (a) of this ventor, written authorization from the section, waivers may be granted as to applicable contractor or subcontractor all or any part of the rights of the permitting the inventor to request a United States to an invention except waiver.
for certain rights set forth in para(3) Subject to Department of the In graph (i) of this section. Accordingly, terior regulations, requirements, and the waiver of all patent rights that are restrictions on the treatment of pro- inherent to an invention, rather than prietary and classified information, all part of the rights, will not necessarily material submitted in requests for be appropriate. The scope of the waiver or in support thereof will be waiver will depend upon the relationmade available to the public after a ship of the contractual situation or determination on the waiver request identified invention to the considerhas been made, regardless of whether ations set forth in paragraph (b) or (c) a waiver is granted. Accordingly, re of this section in order to best achieve quests for waiver should not contain the objectives set forth in paragraph information or data that the requestor (a) of this section. For example, waivis not willing to have made public. If ers may be restricted to a particular proprietary or classified information is field of use in which the contractor needed to make the waiver determina- has substantial equities or a commertion, such information shall not be cial position, or restricted to those submitted unless specifically requested uses that are not the primary object of by the Solicitor.
the contract effort. Waivers may also (f) Record waiver determinations. be limited to particular geographical The Solicitor shall maintain and peri- locations, may be made effective only odically update a publicly available for a specified duration of time, or record of waiver determinations.
may require the contractor to license (g) Waiver situations and types of others at reduced royalties in considerwaivers. (1) The various factual situa- ation of the Government's contributions which are appropriate for waiv tion to the research, development, or ers cannot be categorized precisely in- demonstration effort. asmuch as the appropriateness of a (3) In advance waivers of identified waiver will depend upon the manner inventions, the invention will be in which the considerations set forth deemed to be a Subject Invention and in paragraph (b) or paragraph (c) of the waiver will be considered as being this section relates to the facts and effective as of the effective date of the circumstances surrounding the parti- contract. This will be true regardless culating contracting situation or the of whether the identified invention particular invention in order to best had been first reduced to practice achieve the objectives set forth in under the contract. A purpose of such paragraph (a) of this section. However, waivers is to clarify and definitize the some examples of factors bearing on rights of the parties to such inventions where waivers might be appropriate when the facts surrounding the first are the following:
actual reduction to practice prior to or (i) Cost sharing contracts;
during the contract are or will be diffi(ii) Situations in which OWRT is cult to establish. providing increased funding to a spe- (h) Waivers to educational institucific on-going privately sponsored re- tions. (1) Except to the extent that a search, development, or demonstration nonprofit educational institution may project;
be engaged as a contractor operating a
Government-owned facility or under to the marketplace inventions to taking other special contracts, the fol which it retains title including a delowing considerations apply to the scription of the efforts typically ungranting of advance and identified dertaken by the institution to license waivers to educational institutions its inventions together with copies of having an approved technology trans- earnest offers or proposals to the instifer program and capability. To obtain tution from identified prospective approval of its technology transfer licensee(s) to commit funds, facilities, program, educational institutions shall proprietary background technology forward their requests to OWRT as and know-how, and the services of perprovided in paragraph (h)(2) of this sonnel, to bring to the marketplace an section.
invention or inventions to which the (2) A nonprofit educational institu- institution retains title; tion desiring to obtain approval of its (ix) A description of the institution's technology transfer program and ca past patent application and patent li. pability shall provide OWRT at the censing activities, including the followtime of contracting with the following ing: information:
(A) Number of inventions reported (i) General information concerning to the institution during each of the the institution, including:
past ten (10) years; (A) A copy of its Articles of Incorpo. (B) Number of patent applications ration;
filed during each of the past ten (10) (B) A statement of the institution's years; purposes and aims; and
(C) Number of patents obtained (C) A statement indicating the during each of the past ten (10) years; source of the institution's funds.
(D) Number of exclusive licenses (ii) A copy of the institution's estab- issued during each of the past ten (10) lished patent policy, together with the years; date and manner of its adoption;
(E) Number of nonexclusive licenses, (iii) The name, title, address, and other than those to sponsor Governtelephone number of the officer re- ment agencies, issued during each of sponsible for administration of patent the past ten (10) years; and invention matters and a descrip- (F) Gross royalty income during tion of staffing in this area, including each of the past ten (10) years; all offices which contribute to the in- (G) A general description of royalstitution's patent management capa ties charged, including minimum and bilities;
maximum royalty rates; (iv) A description of the institution's (x) A list of subsidiary or affiliate inprocedures for identifying and report- stitutions which would be covered by ing inventions and a description of the an agreement signed by the instituprocedures for evaluation of such in- tion; ventions for inclusion in the institu (xi) If the institution is a subsidiary tion's promotional program;
or affiliate organization, the name of (v) A copy of the agreement signed the other related organization and a by employees engaged in research and description of the relationship; development, indicating their obliga- (xii) The amount of Government tion in regard to inventions conceived support for research and development or first actually reduced to practice in activities currently being administered the course of their assigned duties; by the institution, giving Government
(vi) A copy of the invention report agency and breakdown; form or outline utilized for prepara (xiii) A statement of the institution's tion of invention reports;
policies with respect to the sharing of (vii) A statement of whether the in- royalties with employees; and stitution has an agreement with any (xiv) A description of the uses made patent management organizations or of any net income generated by the inconsultants and a copy of any such stitution's patent management proagreements;
gram. (viii) A description of the plans and (3) Before an institution's technolintentions of the institution to bring ogy transfer program and capabilities
are approved for the contracting, the institution shall have a technology transfer program which, as a mini. mum shall include the five (5) criteria listed below:
(i) An established patent policy which is consistent with the four policy objectives in § 14R-9.109-6(a) and is administered on a continuous basis by an officer or organization responsible to the institution.
(ii) Agreements with employees requiring them to assign to the institution or its designee or the Government any invention conceived or first actually reduced to practice by them in the course of or under Government contracts and awards or assurance that such agreements are obtained prior to the assignment of personnel to Government-supported research and development projects;
(iii) Procedures for insuring that inventions are promptly identified and timely disclosed to the officer or organization administering the patent policy of the institution;
(iv) Procedures for insuring that inventions disclosed to the institutions are evaluated for inclusion in the institution's promotional program for the licensing and marketing of inventions.
(4) In considering approval of tech. nology transfer programs and capabilities in connection with requests for waivers, such approval shall be considered in lieu of commercial, manufacturing, and marketing capabilities which normally reside in industry. Such approval shall not be considered sufficient in and of itself as justifying the granting of a waiver to an institution. Approval of the grant of a waiver must be viewed in light of the considerations of $ 14R-9.106(b) or (c) above, as applicable, and the four objectives set forth in 14R-9.109-6(a) above.
(i) Terms and conditions of waivers. Each waiver shall contain, as a mini. mum, provisions covering each of the following:
(1) Advance waivers shall apply only to inventions reported in accordance with paragraph (e)(2)(i) of the clause of $ 14R-9.107-5(a) and with which is included an election as to whether the contractor will retain the rights waived in the invention, and specify
ing those countries in which rights will be retained.
(2) Subject to the rights granted in paragraphs (c)(1), (2), and (3) of the clause of § 14R-9.107-5(a), the contractor or inventor shall agree to convey to the Government, upon request, the entire domestic right, title, and ir est in any Subject Invention when the contractor or inventor as appropriate:
(i) Does not elect, in accordance with (1)(1) of this section to retain such rights; or
(ii) Fails to have a United States patent application filed on the invention in accordance with paragraph (i)(5) of this section, or decides not to continue prosecution of such application; or
(iii) At any time, no longer desires to retain title.
(3) Subject to the rights granted in paragraph (c)(1), (2), and (3) of the clause of $ 14R-9.107-5(a), the contractor or inventor shall agree to convey to the Government, upon request, the entire right, title, and interest in any Subject Invention in any foreign coun. try if the contractor or inventor, as appropriate:
(i) Does not elect, in accordance with paragraph (i)(1) of this section to retain such rights in the country; or
(ii) Fails to have a patent application filed in the country on the invention in accordance with paragraph (i)(6) of this section, or decides not to continue prosecution or to pay any maintenance fees covering the invention. To avoid forfeiture of the patent application or patent, the contractor or inventor shall notify the contracting officer or patent counsel not less than 60 days before the expiration period for any action required by the foreign patent office.
(4) Conveyances requested pursuant to paragraph (i) (2) or (3) of this section shall be made by delivering to the Solicitor duly executed instruments and such other papers as are deemed necessary to vest in the Government the entire right, title, and interest in the invention to enable the Government to apply for and prosecute patent applications covering the invention in this or the foreign country, respectively, or otherwise establish its ownership of the invention.