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(5)(i) With respect to each invention for any action required by the Patent in which the contractor has an ad- and Trademark Office, notify the Sovance waiver and elects to retain do- licitor of any decision not to continue mestic rights pursuant to paragraph prosecution of the application and de(i)(1) of this section, the contractor liver to the Solicitor executed instrushall have a domestic patent applica- ments granting the Government a tion filed within 6 months after sub- power of attorney. mission of the invention disclosure (iii) For each invention in which the pursuant to paragraph (e)(2)(i) of the contractor initially elects pursuant to clause of $ 14R-9.107-5(a) or such paragraph (i)(1) of this section not to longer period as may be approved by retain the rights waiver, the contracthe Solicitor for good cause shown in tor shall inform the Solicitor promptly writing by the contractor or inventor. in writing of the date and identity of For identified inventions waived to the any on sale, public use, or public discontractor or inventor, the contractor closure of the invention which may or inventor shall have a domestic constitute a statutory bar under 35 patent application filed within 6 U.S.C. 102, which was authorized by or months after the waiver has become known to the contractor, or any coneffective. With respect to such inven- templated action of this nature. tions, the contractor or inventor shall (6)(i) With respect to each invention promptly notify the Solicitor of any in which the contractor elects pursudecision not to file an application. ant to paragraph (i)(1) of this section
(ii) For each Subject Invention on to retain the rights waived in a foreign which a patent application is filed by country, or in which the contractor or the contractor or inventor, the con inventor has obtained a waiver of fortractor or inventor shall:
eign rights on an identified invention, (A) Within 2 months after the filing the contractor or inventor shall have a or within 2 months after submission of patent application filed on the inventhe invention disclosure if the patent tion in that country, in accordance application previously has been filed with applicable statutes and reguladeliver to the Solicitor a copy of the tions, and within one of the following application as filed, including the periods: filing date and serial number:
(A) Eight (8) months from the date (B) Include the following statement of a corresponding United States in the second paragraph of the specifi- patent application filed by the concation of the application and any pat- tractor or inventor, of if such an applients issued on a Subject Invention. cation is not filed, 6 months from the “The Government has rights in this date the invention is submitted in a invention pursuant to Contract No. disclosure pursuant to paragraph
-- (or Grant No. --- --) (e)(2)(i) of the clause of $ 14Rawarded by the Office of Water Re- 9.107.5(a); search and Technology of the United (B) Six (6) months from the date a States Department of the Interior.” license is granted by the Commission
(C) Within 6 months after filing the er of Patents and Trademarks to file application or within 6 months after foreign applications where such filing submitting the invention disclosure if has been prohibited by security reathe application has been filed previ. sons; or ously, deliver to the Solicitor a duly (C) Such longer period as may be apexecuted and approved instrument proved by the Solicitor. fully confirmatory of all rights to (7) The contractor or inventor shall, which the Government is entitled, and three years after a waiver is effective provide the Solicitor an irrevocable as to an invention, and at three-year power to inspect and made copies of intervals thereafter, and when specifithe patent application filed;
cally requested by the Solicitor, fur(D) Provide the Solicitor with a copy nish the Solicitor a report setting of the patent within 2 months after a forth: patent is issued on the application; (i) The commercial use that is being and (E) Not less than 30 days before made, or is intended to be made, of the expiration of the response period said invention, and
(ii) The steps taken to bring the in- material information as the Secretary vention to the point of practical appli- or his designee may require, that such cation or to make invention available waiver has tended substantially to for licensing.
lessen competition or to result in (8) The Government's retention of undue market concentration in any at least a nonexclusive, irrevocable, section of the United States in any paid-up license to make, use, and sale line of commerce to which the techthe invention throughout the world by nology relates; or or on behalf of the Government (in (ii) Unless the recipient of the cluding any Government agency) and waiver demonstrates to the satisfacStates and domestic municipal govern- tion of the Secretary or his designee at ments, unless the Secretary or his des- such hearing the he has taken effecignee determines that it would not be tive steps, or within a reasonable time in the public interest to acquire the li
thereafter is expected to take such cense for the States and domestic mu
steps necessary to accomplish substannicipal governments.
tial utilization of the invention. (9) The right of the Secretary or his
(j) Terminations. (1) Any waiver designee to require the granting of
may be terminated at the discretion of nonexclusive, exclusive, or partially
the Secretary, or his designee, in exclusive license to a responsible appli
whole or in part, if the request for cant or applicants, upon terms reason
waiver is found to contain false mateable under the circumstances:
rial statements or nondisclosure of (i) To the extent that the invention
material facts, and such were specifiis required for public use by Govern
cally relied upon in reaching the ment regulations;
waiver determination. (ii) As may be necessary to fulfill
(2) Any waiver, as applied to particuhealth, safety, or energy needs; or
lar invention, may be terminated at (iii) For such other purposes as may
the discretion of the Secretary, or his be stipulated in the applicable agree
designee, in whole or in part, if the rement. (10) The right of the Secretary or
quirements set forth in paragraph (i) his designee to terminate such waiver
of this section (Terms and conditions in whole or in part unless the recipient
of waivers) have not been fulfilled, of such waiver demonstrates to the
and such failure is determined by the satisfaction of the Secretary or his
Secretary or his designee to be materidesignee that effective steps have been
al and detrimental to the interests of taken, or within a reasonable time
the United States and the general thereafter are expected to be taken,
public. necessary to accomplish substantial
(3) Prior to terminating a waiver utilization of the invention.
under paragraph (j)(1) or (j)(2) of this (11) The right of the Secretary, or
section, the recipient of the waiver will his designee, commencing four years be given written notice of the intenafter a waiver is effective as to an in
tion to terminate the waiver, the vention, to require the granting of a extent of such proposed termination nonexclusive or partially exclusive li. and the reason therefor, and a period cense to a responsible applicant or ap of 30 days, or such longer period as plicants, upon terms reasonable under the Secretary or his designee shall dethe circumstances, and in appropriate termine for good cause shown in writcircumstances to terminate the waiver ing, to show cause why the waiver in whole or in part, following a hear. should not be so terminated. ing upon notice thereof to the public, (4) All terminations of waivers shall upon a petition by an interested be subject to the rights granted in person justifying such hearing;
paragraph (c)(1) of the clause of (i) If the Secretary or his designee $ 14R-9.107-5(a), and when justified determines upon review of such mate- by equitable considerations terminarial as he deems relevant, and after tion shall normally be partial in the recipient of the waiver, or other nature, requiring the waiver recipient interested person, has had the oppor- to grant nonexclusive or partially extunity to provide such relevant and clusive licenses to responsible appli
cants upon terms reasonable under the circumstances.
(k) Effective date. Waivers shall be effective on the following dates:
(1) For advance waivers of identified invention, i.e., inventions conceived prior to the effective date of the contract, on the effective date of contract, even though the advance waiver may have been requested after this date;
(2) For identified inventions under advance waivers, i.e., invention conceived or first actually reduced to practice after the effective date of the contract, on the date the invention is reported with the election to retain rights as to that invention; and
(3) For waivers of identified inventions (other than under an advance waiver), on the date of the letter notifying the requestor that the waiver has been granted.
to its completion or final settlement the amount of any royalties or other payments paid or to be paid by it directly to others in connection with the performance of this contract together with the names and addresses of licensors to whom such payments are made and either the patent numbers involved or such other information as will permit identification of the patents or other basis on which the royalties are to be paid. The approval of OWRT of any individual payments or royalties shall not stop the Government at any time from contesting the enforceability, validity or scope of, or title to, any patent under which a royalty or payments are made.
Subpart 14R-9.2-Technical Data and
§ 14R-9.110 Reporting of royalties.
In order that OWRT may be informed regarding royalty payments to be made by a contractor in connection with any procurement, construction, or operation where the amount of the royalty payments is reflected in the contract price, or is to be reimbursed by the Government, the negotiator shall (a) obtain from the offeror information concerning any royalty payments expected to be made in connection with the proposed procurement, construction, or operation, together with the names of the licensors and either the patent numbers involved or such other information as will permit identification of the patents and patent applications as well as the basis on which the royalties are to be paid or (b) obtain from the offeror a certificate that the contract price includes no amount representing the payment of any royalty by the offeror directly to others in .connection with the performance of the contract, or (c) insert in the contract the clause set forth below:
REPORTING OF ROYALTIES If this contract is in an amount which exceed $10,000 and if any royalty payments are directly involved in the contract or are reflected in the contract price to the Government, the Contractor agrees to report in writing to the Contracting Officer during the performance of this contract and prior
$ 14R-9.900 Scope of subpart.
This subpart sets forth OWRT'S policy, procedures, and contract clauses with respect to the acquisition and use of technical data and copyrights in contracts or subcontracts entered into, with or for the benefit of the Government. The policy, as implemented by the procedures and contract clauses, is promulgated to comply with section 408, of the Water Research and Development Act of 1978, Public Law 95-467, which in a concluding proviso states:
That, subject to the patent policy of section 408, all research or development contracted for, sponsored, cosponsored, or authorized under authority of this Act, shall be provided in such manner that all information, data, and know-how, regardless of their nature or mediums, resulting from such research and development will (with such exceptions and limitations, if any, as the Secretary may find to be necessary in the interest of national defense) be usefully available for practice by the general public consonant with the purpose of this Act. Thus, the statutorily mandated availability for practical utility of the contract's resulting informational products is carried out by this Subpart with provisions requiring acquisition by the Government of unlimited rights in all technical data produced in the performance of the contract, which are supplemented with further provisions ensuring compliance with the mandate by requiring where essential for use in connection with the practice of the informational products,
the availability of contractor's propri- (3) Are not already available to the etary data in the form of results ob- Government without obligation contained by their use through marketing cerning their confidentiality. in sufficient quantity and at reason (c) “Contract data" means technical able price, or by licensing that propri- data first produced in the performetary data on suitable terms to the ance of the contract, technical data Government and third parties apply. which are specified to be delivered in ing for such licensing.
the contract, technical data that may
be called for under the Additional 8 14R-9.201 Definitions.
Technical Data Requirements clause For the purpose of this subpart, the
of the contract, if any, or technical
data actually delivered in connection following terms have the meanings set
with the contract. forth below: (a) “Technical data” means recorded
(d) “Unlimited rights” means rights information, regardless of form or
to use, duplicate, or disclose technical
data, in whole or in part, in any characteristic, of a scientific or techni
manner and for any purpose whatsocal nature. It may, for example, docu
ever, and to permit others to do so. ment research, experimental, developmental, demonstration, or engineering 814R-9.202 Acquisition and use of techniwork, or be usable or used to define a
cal data. design or process or to procure, produce, support, maintain, or operate 8 14R-9.202-1 General. materiel. The data may be graphic or
(a) The provisions herein pertain to pictorial delineations in media such as
contracts other than those for the opdrawings or photographs, text in
eration of a Government-owned facilispecifications or related performance
ty and special contracts covered by or design type documents, or computer
§ 14R-9.202.4. Under OWRT's broad software (including computer pro
charter to perform research, developgrams, computer software data bases,
ment, and demonstration work in and computer software documenta
water fields, and in operating Governtion). Examples of technical data in
ment-owned facilities, OWRT has exclude test, sampling, research and en
tensive needs for technical data. The gineering data, engineering drawings
satisfaction of these needs and the and associated lists, specifications, achievement of OWRT's objectives standards, process sheets, manuals, all
through a sound data policy are found technical reports, catalog item identi
in the balancing of the needs and equification, and related information.
ties of the Government, industry, and Technical data as used in this Subpart
the general public. does not include financial reports, cost
(b) It is important to keep a clear analyses, and other information inci
distinction between contract requiredental to contract administration.
ments for the furnishing of technical (b) “Proprietary data” means techni.
data on the one hand, and rights in cal data which embody trade secrets the technical data furnished on the developed at private expense, such as other. The legal rights which the Govdesign procedures or techniques, ernment acquires in technical data are chemical composition of materials, set forth in a “Rights in Technical manufacturing methods, process, or Data" clause of $ 14R-9.202-3(e)(2). treatments, including minor modifica. However, this clause does not obtain tions thereof, or computer formatting, for the Government the delivery of provided that such data are protecta any data whatsoever. Rather, known ble and accordingly:
requirements for specific technical (1) Are not generally known or avail data to be furnished by the contractor able from other sources without obli- shall be set forth as part of the congation concerning their confidential tract (e.g., in the Statement of Work).
An “Additional Technical Data Re(2) Have not been made available by quirements" clause is included in this the owner to others without obligation subpart to enable the Contracting Ofconcerning their confidentiality, and ficer to require the contractor to fur
nish additional technical data, the re- cer's representative may be limited to quirement for which was not known at a Government employee. Paragraph the time of contracting. There is, how. (f) has a built-in exclusion from these ever, a built-in limitation of the kind inspection rights for "specific items of of technical data which a contractor proprietary data" when they are so may be required to deliver under specified in the contract schedule. either the contract Statement of Work Such exclusions limit even OWRT's or the “Additional Technical Data Re- minimum rights of evaluating contract quirements" clause. This limitation is work performance and verifying that found in the withholding procedure of technical data withheld by the conparagraph (e) of the "Rights in Tech- tractor is proprietary in fact. Such exnical Data" (long form) clause which clusions should be sparingly used, and provides that the contractor need not only in situations where program perfurnish "proprietary data." It is spe- sonnel stipulate to the fact that cifically intended that the contractor OWRT has no need for access to the may withhold “proprietary data" even specified items to be excluded from though a requirement for technical paragraph (f), i.e., that the nondisclodata specified in the Statement of sure and nonaccessibility will not adWork or called for pursuant to the versely affect the OWRT program in“Additional Technical Data Require- volved. It should also be noted that ments” clause would seemingly require paragraph (f) permits exclusion of the furnishing of proprietary data. “specific items" of proprietary data This withholding of proprietary data and, accordingly, should not be used to is the primary means by which the exclude classes of technical data or all contractor may protect its proprietary technical data pertaining to specific position. However, in no event is with items or process or classes of items or holding of data first produced in the processes. The second situation, where performance of the contract to be the Government may have limited sanctioned since not having been de- access to a contractor's proprietary veloped at private expense it cannot data, is provided in paragraph (h) of be proprietary for the purposes of the Rights in Technical Data (long withholding.
form) clause. When used, paragraph (c) There are, however, two situa (h) provides the Government the right tions where the Government, or its to require the contractor to furnish representatives, may need to have lim with limited rights the proprietary ited access to a contractor's propri- data previously withheld under paraetary data. First, paragraph (f) of the graph (e). In this situation, the limited “Rights in Technical Data" (long rights in proprietary data and the form) clause gives the Contracting Of Government's obligation for limited ficer's representatives the limited use and disclosure of such data as set right to inspect at the contractor's fa- forth in the Rights in Technical Data cility the contractor's proprietary data (long form) clause provides the means which was withheld from delivery by which the contractor protects its under paragraph (e) for the purpose proprietary position. Paragraph (h) of verifying that such data was proper will be used only where it is deterly withheld or to evaluate work per- mined by OWRT that for programformance. In carrying out the inspec- matic reasons there is a need for the tion, normally the Contracting Offi- delivery of proprietary data to the cer's representative is a Government Government. Where proprietary data employee, although he may be an em- is to be delivered under paragraph (h) ployee of a Government contractor and subparagraph (a) or (b) of the acting under an agreement to treat in Limited Rights Legend is to be applied confidence the proprietary data to be to the data, the contractor may, if he inspected. However, where the con- can show the possiblity of a conflict of tractor whose data are to be inspected interest regarding disclosure of such demonstrates that there would be a data to other contractors, limit or possible conflict of interest if the in- modify subparagraphs (a) or (b) as set spection were made by such a contrac- forth in § 14R-9.202-3(e)(3), to exclude tor employee, the Contracting Offi- or include certain contractors.