$9-9.104 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 attention. The contractor should also assist the Government, to the extent of evidence 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 contracts in excess of $10,000 for supplies, services, construction, research, development, or demonstration work. However, the clause shall not be included in contracts:

(a) Where both performance and delivery are to be outside the United States, its possession, 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

The provisions of this clause shall be applicable only if the amount of this contract exceeds $10,000.

(a) The contactor 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 knowledge.

(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 or 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 contactor has agreed to indemnify the Government.

$9-9.105

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

(Reserved)

Unauthorized disclosure of classified subject matter, whether in a patent application or resulting from the issuance of a patent, may be a violation of not only the Atomic Energy Act of 1954, as amended, and other laws relating to espionage and national security, but also provisions pertaining to disclosure of information incorporated in the contract. Accordingly, the following clause shall be included in every contract which covers or is likely to cover classified subject

matter.

CLASSIFIED INVENTIONS

(a) The contractor shall not file or cause to be filed on any invention or discovery conceived or first actually reduced to practice in the course of or under this contract in any country other than the United States, an application or registration for a patent without first obtaining written approval of the contracting officer.

(b) When filing a patent application in the United States on any invention or discovery conceived or first actually reduced to practice in the course of or under this contract the subject matter of which is classified for reasons of security, the contractor shall observe all applicable security regulations covering the transmission of classified subject matter. When transmitting the patent application to the United States Patent and Trademark Office, the contractor shall by separate letter identify by agency and number the contract or contracts which require security classification markings to be placed on the application.

(c) The substance of this clause shall be included in subcontracts which cover or are likely to cover classified subject

matter.

$9-9.107

$9-9.107-1

Patent rights under contracts for research, develop-
ment and demonstration and under special contracts.

General.

This section sets forth the policies, procedures and practices of ERDA in connection with inventions, patents, and related matters based upon the Atomic Energy Act of 1954, as amended (42 USC 2182), and Section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974 (42 USC 5908); and, to the extent not inconsistent with the foregoing statutes, the revised Presidential Memorandum and Statement of Government Patent Policy, August 23, 1971 (36 R.R. 1688716892). Section 152 of the Atomic Energy Act provides that the title

to inventions useful in the nuclear energy field made or conceived in the course of or under a contract, subcontract, or arrangement entered into for the benefit of the Commission (now ERDA) shall be vested in the Government. Government rights in such an invention may be waived consistent with the policy of Section 152. In a similar manner, Section 9 of the Federal Nonnuclear Energy Research and Development Act provides that title to inventions made or conceived in the course of or under ERDA contracts other than in the nuclear energy field shall vest in the Government and that all or part of the rights of the Government in such inventions may be waived if it is determined, in conformity with the provisions of Section 9, that the interests of the United States and the general public will best be served by such waiver.

$9-9.107-2 (Reserved)

$9-9.107-3 Policy.

(a) Whenever any invention is made or conceived in the course of or under any contract of ERDA, title to such invention shall vest in the United States unless the head of the agency or designee waives all or any part of the rights of the United States in the invention. While waivers are to be granted only in conformity with the specific minimum considerations and under the carefully delineated conditions set forth in §9-9.109-6, it is recognized that waivers comprise a necessary part of the commercialization incentives available to ERDA. It is intended, therefore, that waivers will be provided in appropriate situations to encourage industrial participation and foster rapid commercial utilization in the overall best interest of the United States and the general public. With regard to any waivers granted under this Part 9-9, ERDA shall maintain a publicly available, periodically updated record of such waiver determinations.

(b) In contracts having as a purpose the conduct of research, development or demonstration work and in other special contracts, the Government shall normally acquire title in and to any invention or discovery conceived or first actually reduced to practice in the course of or under the contract, allowing the contractor to retain a nonexclusive, revocable, paid-up license in the invention and the right to file and retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor's nonexclusive license retained in the invention may be revoked or modified by ERDA only to the extent necessary to achieve expeditious practical application of the invention pursuant to an applicaton for and the grant of an exclusive license in the invention.

(c) In contracts having as a purpose the conduct of research, development, or demonstration work and in other special contracts the

Government may have to acquire the right to require licensing of background patent rights by the contractor to insure reasonable public availability and accessibility necessary to practice the subject of the contract in the fields of technology specifically contemplated in the contract effort. The need for background patent rights and the particular rights that should be obtained for either the Government or the public will depend upon the type, purpose, and scope of the contract effort, and the cost to the Government of obtaining such rights. Accordingly, the background patent rights provision which will be appropriate for many contract situations is included in the Patent Rights clause.

(d) Nothing in this Part 9-9 shall be deemed to convey to any individual, corporation or other business organization immunity from civil or criminal liability, or to create defenses to actions under the antitrust laws.

other arrangement

(1) Whenever a contract, subcontract or has as a purpose the conduct of research, development, or demonstration work, the operation of a Government-owned research or production facility, the furnishing of architect-engineer, design or other special services, or the coordination and direction of the work of others, the contracting officer shall include in the proposed contract either the Patent Rights clause of §9-9.107-5(a), or the clause of $9-9.107-6. The clause set forth in §9-9.107-6 may be used only in contracts calling for basic or applied research work with nonprofit or educational institutions or in certain consultant contracts as set forth in paragraph (a)(5) of this section.

(2) The Patent Rights clauses of $9-9.107-5(a) and §9-9.107-6 provide that the Government shall acquire title to each invention made (i.e., conceived or first actually reduced to practice) in the course of or under the contract. However, the contractor shall retain in such invention a nonexclusive, revocable license, and subject to ERDA security requirements and regulations, may file and retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor or the inventor may also retain greater rights than these after an invention has been identified and reported to ERDA if the head of the agency or designee determines that the interests of the United States and the general public will best be served by a waiver of such rights, utilizing the considerations set forth in §9-9.109-6.

(3) The Patent Rights clauses shall normally include the

provisions set forth in paragraph (1) of the clause in §9-9.107-5(a) and paragraph (f) of the clause in $9-9.107-6. If the contracting officer determines that the work to be performed under the contract would not be useful in the production or utilization of special nuclear material or atomic energy, paragraphs (1) or (f) may be omitted.

(4) The primary missions of ERDA may require that certain rights in the contractor's privately developed background patents be acquired for the Government's future production, research, development, and demonstration projects. Similar rights may also be required to enable private parties to utilize a subject of the contract in the fields of technology specifically contemplated in this contract effort. To this end, subject to specified exceptions and negotiations, the Patent Rights clause in contracts over $250,000 shall normally include provisions obtaining rights of the type specified in $9-9.107-5 to such background patents. It is recognized that the precise rights to be acquired will depend upon the facts of each situation and are a matter for determination by ERDA and for negotiation with the contractor. General guidelines for use by contracting officers and contract negotiators are provided in §9-9.107-5(b).

(5) The short form Patent Rights clause in §9-9.107-6 may be used in contracts calling for basic or applied research where the contractor is a non-profit or educational institution, and in special situations such as consultant contracts. However, this clause will not be used in contracts in which an advance waiver or greater rights has been granted, in certain consultant contracts as explained in $9-9.107-6, or in other special contracts.

(6) Solicitations and proposed contracts shall provide offerors and prospective contractors with notice of and the right to request, in advance of or within 30 days after the effective date of contracting, a waiver of all or any part of the rights of the United States with respect to subject inventions. In no event will the fact that an offeror has requested such a waiver be a consideration in the evaluation of the offer or the determination of its acceptability. If an advance waiver is granted, the Patent Rights clause of $9-9.107-5(a) shall be used and appropriately modified in accordance with the terms of such waiver. To provide adequate notice to prospective contractors or offerors, the following provision will be inserted in all solicitations which may result in contracts calling for research, development, or demonstration:

Offerors and prospective contractors in accordance with applicable statutes and ERDA Regulations (41 CFR 9-9. 109-6) have the right to request in advance of or within 30 days after the effective date of contracting a waiver of all or any part of the rights of the United States in subject inventions.