Department of the Interior and Related Agencies Appropriations for 1976

PART 9-9-PATENTS AND COPYRIGHTS

Subpart 9-9.50-Patents, Inventions, Technical Data

$9-9.5000 Patents, inventions, technical data, and copyrights.

19-9.5001 Purpose and scope of subpart.

(a) This subpart sets forth the policies and practices of the ERDA in connection with patents and related matters based on the Atomic Energy Act of 1954, as amended, and the Presidential Statement on Government patent policy of October 10, 1963, and prescribes contract articles for the purpose of protecting the Government's interest by securing to the Government (1) patent rights in research and development contracts, operating and service contracts, architect-engineer contracts, special contracts and subcontracts and purchase orders thereunder, and (2) protection against patent risks in architect-engineer, construction, and supply contracts and purchase orders.

(b) The provisions of this subpart shall be followed in authorizing (1) the use of patent provisions in cost-type contractor procurement, and (2) deviations from the flowdown requirements of patent provisions in ERDA and cost-type contractor contracts. The provisions of §§9-9.5008–7 and 9-9.5011 also shall be applied to cost-type contractor procurement. The determinations of need for background patent rights under $9-9.5008-3 and the use of the hold-harmless article in §9-9.5010 shall be made by Managers of Field Offices. The allocation of greater patent rights under 89-9.5005-1 shall be made by the Assistant General Counsel for Patents.

$9-9.5002 Rights in inventions, technical data, and copyrights under contracts.

(a) The current practice of the ERDA as to provisions relating to inventions or discoveries, technical data and copyrights to be inserted in contracts, subcontracts, purchase orders, and other arrangements entered into with or for the benefit of the ERDA is determined primarily by:

(1) The character of the work to be performed under the contract; such as research or development; routine development; construction; supply; quantity production; and

(2) The industrial and patent position of the contractor in the field of work of the contract.

Where provisions relating to inventions are appropriate, a provision concerning waiver of claims for pecuniary awards or just compensation under the Atomic Energy Act of 1954, as amended, shall be included. A similar provision shall be included in employee agreements. No provision pertaining to inventions need be used where ordinary commercial materials or equipment are to be furnished "off the shelf" or in ordinary construction contracts not involving special buildings or equipment. In such instances, however, an indemnity provision as set forth in 89-9.5009 in favor of the Government shall be obtained.

(b) Any question as to modification, interpretation, or application of the appropriate patent, inventions, technical data and copyright provisions shall be referred to the local ERDA counsel for action in collaboration with the local Patent Group, or where no local Patent Group exists, with the Assistant General Counsel for Patents.

9-9.5003

89-9.5003 Type A patent provisions.

The following patent article shall be used where the principal purpose of the contract is:

(a) To conduct research or development work in the field of atomic energy at ERDA expense; or

(b) For the operation of a Government-owned atomic energy research or production facility; or

(c) To conduct research or development for ERDA where a major part of the equipment employed in the research and development is furnished at Government expense.

PATENTS AND COPYRIGHTS

TYPE A PATENT Provisions

(b) No claim for pecuniary award or compensation under the provisions of the Atomic Energy Act of 1954, as amended, shall be asserted by the contractor or its employees with respect to any invention or discovery made or conceived in the course of or under this contract.

(c) Except as otherwise authorized in writing by the ERDA, the contractor will obtain patent agreements to effectuate the purposes of paragraphs (a) and (b) of this article from all person's who perform any part of the work under this contract, except such clerical and manual labor personnel as will not have access to technical data.

(d) Except as otherwise authorized in writing by the ERDA, the contractor will insert in all subcontracts provisions making this article applicable to the subcontractor and its employees.'

(e) It is recognized that during the course of the work under this contract, the contractor or its employees may from time to time desire to publish, within the limits of security requirements, information regarding scientific or technical developments made or conceived in the course of or under this contract. In order that public disclosure of such information will not adversely affect the patent interests of the ERDA or the contractor, patent approval for release and publication shall be secured from the ERDA prior to any such release or publication.'

(f) With respect to any U.S. Patent Application filed by the Contractor on any contract invention or discovery made or conceived in the course of the contract, the Contractor will incorporate in the first paragraph of the U.S. Patent Application the following statement:

"The invention described herein was made in the course of, or under, a contract (if desired, may substitute contract with identifying number) with the Energy Research and Development Administration."

19-9.5004 Type B patent provisions.

The following patent article shall be used where the criteria set forth in §9-9.5003 are inapplicable and where:

(a) A principal purpose of the contract is to create, develop or improve products, processes, or methods which are intended for commercial use (or which are otherwise intended to be made available for use) by the general public at home or abroad, or which will be required for such use by governmental regulations; or

(b) A principal purpose of the contract is for exploration into fields which directly concern the public health or public welfare; or

(c) The contract is in a field of science or technology in which there has been little significant experience outside of work funded by the Government, or where the Government has been the principal developer of the field, and the acquisition of exclusive rights at the time of contracting might confer on the contractor a preferred or dominant position; or

(d) The services of the contractor are:

(1) For the operation of a Government-owned, nonatomic energy research or production facility; or

(2) For coordinating and directing the work of others.

TYPE B PATENT PROVISIONS

'For publication and indemnity clauses for use in research and development contracts with educational institutions, see 49-16.5002-8, Articles B-III and B-VIII, for special research support agreements; and see 19-16.5002-9, Articles B-6 and B-7, for cost-type contracts.

PATENTS, INVENTIONS, TECHNICAL DATA

license retained by the contractor, as provided in this paragraph, the judgment of the ERDA on these matters shall be accepted as final; and the contractor, for itself and for its employees, agrees that the inventor or inventors will execute all documents and do all things necessary or proper to carry out the judgment of the ERDA.

(c) Except as otherwise authorized in writing by the ERDA, the contractor will obtain patent agreements to effectuate the purposes of paragraphs (a) and (b) of this article from all persons who perform any part of the work under this contract, except such clerical and manual labor personnel as will not have access to technical data.

(d) Except as otherwise authorized in writing by the ERDA, the contractor will insert in all subcontracts provisions making this article applicable to the subcontractor and its employees.

(e) It is recognized that during the course of the work under this contract, the contractor or its employees may from time to time desire to publish within the limits of security requirements, information regarding scientific or technical developments made or conceived in the course of or under this contract. In order that public disclosure of such information will not adversely affect the patent interests of the ERDA or the contractor, patent approval for release and publication shall be secured from the ERDA prior to any such release or publication.

"The invention described herein was made in the course of, or under, a contract (if desired, may substitute contract with identifying number) with the Energy Research and Development Administration."

$9-9.5005 Type C patent provisions.

The following patent article shall be used where the criteria set forth in §§9-9.5003 and 9-9.5004 are inapplicable and where:

(a) The principal purpose of the contract is to build upon existing knowledge or technology to develop information, products, processes, or methods for use by the Government, and the work called for by the contract is (1) in a field of technology other than atomic energy in which the contractor has acquired technical competence (demonstrated by factors such as know-how, experience, and patent position), and (2) directly related to a area in which the contractor has an established nongovernmental commercial position; or

(b) The work to be performed or the material or equipment to be furnished by the contractor is of such character that any inventions or discoveries that may be made will probably: (1) Relate only incidentally (and not directly) to some phase of atomic energy, (2) relate to a field of work in which the contractor has an established industrial and patent position, and (3) result from routine development or production work by the contractor.

TYPE C PATENT Provisions

(a) Whenever any invention or discovery is made or conceived by the contractor or its employees in the course of or under this contract, the contractor shall promptly furnish the ERDA with complete information thereon, and the ERDA shall have the sole power to determine whether or not and where a patent application shall be filed, and to determine the disposition of the title to and rights in and to any invention or discovery and any patent application or patent that may result; provided, however, that the contractor in any event shall retain at least a sole (except as against the Government or its account), irrevocable, royalty-free license with the sole right to grant sublicenses, under said invention, discovery, patent application or patent, such license and sublicensing rights being limited to the manufacture, use and sale for purposes other than use in the production or utilization of special nuclear material or atomic energy. Subject to the license retained by the contractor, as provided in this paragraph, the judgment of the ERDA on these matters shall be accepted as final; and the contractor, for itself and for its employees, agrees that the inventor or inventors will execute all documents and do all things necessary or proper to carry out the judgment of the ERDA.

(b) No claim for pecuniary award or compensation under the provisions of the Atomic Energy Act of 1954, as amended, shall be asserted by the contractor or its employees, with respect to any invention or discovery made or conceived in the course of or under this contract.

63-434 0-76-25

PATENTS AND COPYRIGHTS

(c) Except as otherwise authorized in writing by the ERDA, the contractor will obtain patent agreements to effectuate the purposes of paragraphs (a) and (b) of this article from all persons who perform any part of the work under this contract, except such clerical and manual labor personnel as will not have access to technical data.

(d) Except as otherwise authorized in writing by the ERDA, the contractor will insert in all subcontracts provisions making this article applicable to the subcontractor and its employees.

(e) It is recognized that during the course of the work under this contract, the contractor or its employees may from time to time desire to publish, within the limits of security requirements, infor"mation regarding scientific or technical developments made or conceived in the course of or under this contract. In order that public disclosure of such information will not adversely affect the patent interests of the ERDA or the contractor, patent approval for release and publication shall be secured from the ERDA prior to any such release or publication.

(f) With respect to each invention or discovery in which the contractor is granted the principal or any exclusive rights under clause (a), the contractor agrees to provide written reports at reasonable intervals when requested by ERDA as to;

(1) The commercial use that is being made or is intended to be made of such invention or discovery; and

(2) The steps taken by the contractor to bring the invention to a point of practical application or to make the invention or discovery available for licensing.

(g) With respect to each invention or discovery in which the contractor is granted the principal or any exclusive rights under clause (a), the contractor agrees to and does hereby grant the ERDA:

(1) The right to require the granting of nonexclusive, royalty-free licenses to applicants on any such invention or discovery unless the contractor, its transferees, or assignees demonstrate to the ERDA, on request, that the contractor, its transferees, or assignees have taken effective steps within three (3) years after a patent issues on such invention or discovery to bring the invention or discovery to a point of practical application, or have granted licenses thereon free or on reasonable terms, or can show cause why he, his transferees, or assignees should retain the principal or exclusive rights for a further period of time, and

(2) The right to grant licenses royalty-free or on reasonable terms to the extent that the invention or discovery is required for public use by governmental regulation, or as may be necessary to fulfill health needs, or for other public purposes stipulated in this contract.

(h) With respect to any U.S. Patent Application filed by the Contractor on any contract invention or discovery made or conceived in the course of the contract, the Contractor will incorporate in the first paragraph of the U.S. Patent Application the following statement:

"The invention described herein was made in the course of, or under, a contract (if desired, may substitute contract with identifying number) with the Energy Research and Development Administration."

$9-9.5005-1 Administrative allocation of patent rights.

(a) The ERDA may administratively accord a contractor or inventor rights under $9-9.5003 and greater rights than the minimum rights specified in $9-9.5004 or 89-9.5005 in an invention or discovery made or conceived in the course of or under a contract after the invention or discovery has been identified and reported, provided (1) the ERDA determines that the allocation of greater rights is consistent with the criteria set forth in said sections or (2) the accord of 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 where the equities warrant such action.

(b) The according of greater rights shall be subject to:

(1) The contractor or inventor agreeing to furnish ERDA with a written report, upon request, setting forth (i) the commercial use that is being made or is intended to be made of said invention or discovery, and (ii) the steps taken to bring the invention or discovery to a point of practical application, or to make the invention or discovery available for licensing (irrespective of any report under §9-9.5005(f)).

(2) The contractor or inventor agreeing that unless effective steps have been taken to bring the invention to a point of practical application within three (3) years after the issuance of a U.S. patent therefor or unless the contractor has granted licenses on reasonable terms within three (3) years after the issuance of a U.S. patent therefor, the ERDA may grant licenses royalty-free to applicants on the patents issued thereon unless the contractor, the inventor, or a transferee or assignee, if any, can show cause why the said greater rights should be continued for a further period.

PATENTS, INVENTIONS, TECHNICAL DATA

(3) The retention by the Government of the right to grant licenses royalty-free or on reasonable terms to the extent that the invention or discovery is required for public use by governmental regulation, or as may be necessary to fulfill health needs, or for other public purposes stipulated in the contract.

(4) The retention by the Government in all cases of at least an irrevocable, nonexclusive, royalty-free license throughout the world for governmental purposes.

89-9.5006 Right to file U.S. and foreign patent applications.

(a) In instances where a contractor desires assurance as to the right to file U.S. patent applications, the following provision (as well as such formal changes in the provisions following the inserted provisions as may be necessary) may be inserted after the word "result" in paragraph (a) of Patent Article under $89-9.5003, 9-9.5004, and 9-9.5005.

Provided, however, That if the ERDA determines not to file, the contractor may file any U.S. patent application subject to ERDA security requirements and regulations.

(b) If the contract work is to be performed at contractor's own facilities (not Government or ERDA owned or Government or ERDA contractor operated facilities, or not at contractor's facilities where a major part of the equipment employed in the research and development is Government or ERDA furnished) and the contractor, when reporting an invention desires to undertake U.S. and foreign filings so as to acquire irrevocable, nonexclusive license for all purposes in any U.S. patent resulting therefrom and the title and rights in any resulting foreign patents, subject to the terms and conditions hereinafter provided, the following provisions may be inserted after the word "result" in paragraph (a) of Patent Article under §§9-9.5003, 9-9.5004, and 9-9.5005.

Provided, however, That if the contractor, when furnishing the complete information as to any invention or discovery advises the ERDA that the contractor will file at its own expense, subject to security requirements and regulations, a U.S. patent application within six (6) months of reporting, and designated foreign patent applications on such invention or discovery, subject to security requirements and regulations, the contractor shall retain:

(1) A nonexclusive, irrevocable, paid-up license for all purposes in any such U.S. patent application filed by the contractor and any U.S. patent issued thereon, and

(2) The title and rights in any such foreign patent applications or foreign patents secured by the contractor, subject to:

(i) A nonexclusive, irrevocable, paid-up license to the U.S. Government for U.S. governmental purposes and with the right of the U.S. Government to grant licenses to foreign governments for purposes of governmental use by such foreign governments pursuant to a treaty or agreement with the U.S. Government or an agency thereof.

(ii) Granting, upon request, nonexclusive royalty-free licenses to U.S. citizens, and to U.S. corporations when 75 percent or more of the voting interest is owned by U.S. citizens, for use in the production or utilization of special nuclear material or atomic energy; and agreeing to grant to foreign users and purchasers of the product of such a U.S. licensee a license, to use or sell such product to an assignee of the business or plant or as surplus, at a reasonable, nondiscriminatory royalty ordinarily to be at no greater royalty than contractor has charged its other foreign licensees.

(iii) The right of the contractor to grant such other licenses in accordance with applicable statutes and regulations.

(a) Provided, That if the contractor grants any licenses other than as provided in (ii) above, the same shall be for reasonable royalties or compensation, and

(b) Provided, further, That if, after 3 years of the issuance of a particular foreign patent, contractor, its assignee or its licensees cannot demonstrate, upon ERDA request, the practical application of the subject matter covered by such foreign patent, the contractor or its assignee shall, at the ERDA's request, grant licenses on any such foreign patent to others at reasonable royalties.

(3) If the contractor does not desire to prosecute the U.S. patent application or any foreign application or maintain any foreign patent, the contractor, prior to abandonment, shall afford the ERDA an opportunity to take over prosecution of any such patent application or maintain any patent.

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