cides not to continue prosecution of such application; or

(iii) At any time, no longer desires to retain title.

(3) Subject to the license specified in paragraph (d) of this clause, the Contractor agrees to convey to the Government, upon request, the entire right, title, and interest in any Subject Invention in any foreign country if the Contractor:

(i) Does not elect under paragraph (b)(1) of this clause 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 (k) of this clause, or decides not to continue prosecution or to pay any maintenance fees covering the invention. To avoid forefeiture of the patent application or patent, the Contractor shall notify the Contracting Officer not less than sixty (60) days before the expiration period for any action required by the foreign patent office.

(4) A conveyance requested pursuant to paragraph (b)(2) or (3) of this clause shall be made by delivering to the Contracting Officer duly executed instruments (prepared by the Government) and such other papers as are deemed necessary to vest in the Government the entire right, title, and interest 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 in such invention.

(j) Filing of domestic patent applications. (1) With respect to each Subject Invention in which the Contractor elects to retain domestic rights pursuant to paragraph (b) of this clause, the Contractor shall have a domestic patent application filed within 6 months after submission of the invention disclosure pursuant to paragraph (e)(2)(i) of this clause, or such longer period as may be approved by the Contracting Officer for good cause shown in writing by the Contractor. With respect to the invention, the Contractor shall promptly notify the Contracting Officer of any decision not to file an application.

(2) For each Subject Invention on which a patent application is filed by or on behalf of the Contractor, the Contractor shall:

(i) Within 2 months after such filing, or within 2 months after submission of the invention disclosure if the patent application previously had been filed, deliver to the Contracting Officer a copy of the application as filed including the filing date and serial number;

(ii) Include the following statement, appropriately completed, in the second paragraph of the specification of the application

and any patents issued on a Subject Invention. "The Government has rights in this invention pursuant to Contract No. (or Grant No. --) awarded by the National Science Foundation."

(iii) Within 6 months after filing the application or within 6 months after submission of the invention disclosure if the application has been filed previously, deliver to the Contracting Officer a duly executed and approved instrument on a form specified by the Government fully confirmatory of all rights to which the Government is entitled, and provide the agency an irrevocable power to inspect and make copies of the patent application filed;

(iv) Provide the Contracting Officer with a copy of the patent within 2 months after a patent issues on the application, and

(v) Not less than 30 days before the expiration of the response period for any action required by the Patent Office, notify the Foundation of any decision not to continue prosecution of the application and deliver to the Foundation executed instruments granting the Government a power of attorney.

(3) For each Subject Invention in which the Contractor initially elects not to retain principal domestic rights, the Contractor shall inform the Contracting Officer promptly in writing of the date and identity of any sale, public use, or publication of such invention which may constitute a statutory bar under 35 U.S.C. 102, which was authorized by or known to the Contractor, or any contemplated action of this nature. (k) Filing of foreign patent applications. (1) With respect to each Subject Invention in which the Contractor elects to retain rights in a foreign country pursuant to paragraph (b)(1) of this clause, the Contractor shall have a patent application filed on the invention in such country, in accordance with applicable statutes and regulations, and within one of the following periods;

(i) Eight months from the date of a corresponding United States application filed by or on behalf of the Contractor; or if such an application is not filed, 6 months from the date the invention is submitted in a disclosure pursuant to paragraph (e)(2)(i) of this clause;

(ii) Six months from the date a license is granted by the Commissioner of Patents to file foreign applications where such filing has been prohibited by security reasons; or

(iii) Such longer period as may be approved by the Contracting Officer.

(2) The Contractor shall notify the Contracting Officer promptly of each foreign application filed and, upon written request, shall furnish an English version of such foreign application without additional compensation.

(4) In all other cases falling within this paragraph (c), the "PATENT

RIGHTS-OPTION IN THE GOVERNMENT" clause prescribed at § 259.103(a) shall be used with appropriate modifications of that clause so as to allow the Contractor to obtain greater rights than a non-exclusive license as to all or specific inventions. These modifications should reflect the requirements of paragraph (c)(1) of this section, if applicable, and, in addition, particularly where the contract would fall within section 1(a)(1)-(4) of the President's Policy, consideration should be given to including provisions to ensure that research results are made available to the public in accordance with the policy set forth in § 259.106.

(5) The inclusion of special provisions in a contract in accordance with this section, other modifications of the clauses prescribed by this subpart, or the waiver of any of the requirements of the clauses prescribed by this subpart, shall be approved by the General Counsel. In cases where the General Counsel does not grant such approval, interested Foundation staff may refer the matter to the NSF Patent Policy Review Committee.

§ 25-9.104 Greater rights determination.

(a)(1) Contractors desiring to retain rights in inventions made under or during the course of contracts containing provisions that condition the retention of principal rights in such inventions by the contractor on the determination of the Foundation, such as those prescribed at § 25-9.103(a), should address their request to the General Counsel who has been delegated authority to make such determinations. In all such cases the General Counsel shall seek the recommendations and advice of the Patent Policy Review Committee.

(2) Such requests should contain the following information:

(i) The contract number, and subcontract number is applicable, under which the invention was made;

(ii) A complete invention disclosure or reference to one that has previously been furnished, including any NSF identifying numbers, if known;

(iii) A description of the relationship of the invention to the main purpose of the contract;

(iv) The contractor's evaluation of the commercial possibilities of the invention both in its original embodiment and in possible adaptations to other uses;

(v) An explanation of why it is believed that rights greater than free public use are needed to bring the invention into use;

(vi) The nature and extent of the rights desired;

(vii) A description of the stage of development of the invention, and an estimate of the cost of development, capital and time required to bring the invention to the point of practical appliIcation as defined in the President's Policy;

(viii) A statement of the contractor's plans and intentions to bring the invention to the point of practical application including:

(A) If further development is to be conducted by the contractor, a description of the facilities, source of funds, personnel, and marketing outlets available for that purpose and the extent to which such development is to be undertaken by the contractor or others on his behalf and/or

(B) If he intends to license the invention, a brief description of his licensing program;

(ix) A statement of any equities in the invention which the contractor believes it has in the invention which would be appropriate for consideration by the Foundation;

(x) If other Government agencies have contributed to the cost of making the invention, the identification of such agencies and the grant or contract involved, and the approximate share of each;

(xi) A listing of other countries in which the contractor would be interested in filing applications for patents;

(xii) If publication of the substance of this invention has occurred or is planned or there has been a use or sale such as might possibly create a future statutory bar to the patenting of the invention, the name of the journal, the date or probable date of publication, a reprint of the article if it has been published or a copy of the draft as submitted for publication, and/or details regarding the use or sale of the invention;

(xiii) An identification and indication of the ownership of any patents, patent applications, or invention disclosures known to the contractor which would affect the practice of the invention.

(b) Determinations under this section shall be made on the basis of the guidelines set forth in the President's Policy and this subpart. In addition, the relationship of the invention to other technology controlled by the contractor shall be considered as discussed in § 25-9.106.

(c)(1) In cases where principal rights in an invention are left with a contractor which, itself, is not expected to further develop the invention, the Foundation will require the contractor to make reasonable attempts to license inventions on a nonexclusive basis; provided that an exclusive license may be granted if the contractor determines that an exclusive license is necessary as an incentive for development of the invention or because market conditions are such as to require licensing on an exclusive basis in order to bring the invention into use. This determination shall be in writing and supplied to the Foundation at or before the time an exclusive license is granted. Any such exclusive license granted under a domestic patent or patent application will normally be limited to a period of three years from first commercial sale or eight years from the inception of the license agreement, whichever occurs first. Thereafter, unless the original exclusive license period is extended with the approval of the Foundation, additional licenses will be made available on a nonexclusive basis at a royalty not greater than that charged to the exclusive licensee.

(2) In addition to the requirements of paragraph (c)(1) of this section, any determination under this section shall reserve to the Government the rights set forth in § 25-9.105. In addition, if he has not already done so, the contractor shall be required to have a domestic patent application filed on the invention within 6 months from the date of the determination, or such longer period as may be authorized by the Foundation for good cause shown by the contractor. Each determination

shall also include appropriate provisions concerning foreign rights. The determination may also include such other provisions as are considered appropriate.

(3) When neither the grantee, the employee-inventor, nor any other Government agency notified of the invention by the Foundation wishes to take principal rights in an invention, it shall normally be dedicated to the public through publication.

§ 25-9.105 Minimum government rights.

In all cases where the contractor or any other person or entity has been allowed to retain or obtain principal rights in an invention, or possible future inventions, whether at the time of award or after an invention has been identified, the Foundation shall reserve the following minimum rights, if not otherwise required by or inconsistent with any other provision of this subpart.

(a) A nonexclusive, nontransferable, paid-up license to make, use, and sell the invention throughout the world by or on behalf of the Government of the United States (including any Government agency) and States and domestic municipal governments, unless the Director determines that it would not be in the public interest to acquire the license for the States and domestic municipal governments.

(b) The right to sublicense any foreign government pursuant to any existing or future treaty or agreement, but only if the Director determines it would be in the national interest to acquire this right.

(c) The principal or exclusive rights to the invention (or the right to acquire the same) in any country in which the contractor does not elect to secure a patent.

(d) The right to require written reports at reasonable intervals on the commercial use that is being made or is intended to be made of the invention.

(e) The right to require the inclusion of the following appropriately completed statement in the second paragraph of the specification of any patent application or patent: "The Government has rights in this invention pursuant to Contract No.

awarded by the National Science Foundation."

(f) The right to require the granting of a nonexclusive or exclusive license to a responsible applicant on terms that are reasonable under the circumstances (1) unless it is determined that effective steps have been taken within three years after a patent issues on the invention to bring the invention to the point of practical application, or that the invention has been made available for licensing royalty-free or on terms that are reasonable under the circumstances or unless cause can be shown why the Foundation should not exercise this right for some further period of time; (2) to the extent the invention is determined to be necessary to fulfill health or safety needs; or (3) to the extent the invention is determined to be needed for other public purposes stipulated in the contract. Determinations and other actions taken pursuant to this paragraph (f) shall be by the Director or by such person(s) as he may designate.

(g) The right to approve any license covering the invention proposed to be granted to any of the following persons or organizations:

(1) Any person who participated as an employee of the contractor in the research leading to the conception and/or actual reduction to practice of the invention;

a

(2) An organization of which person described in paragraph (g)(1) of this section was an active promoter or organizer or in which such a person is an officer, director, or holds a substantial interest;

(3) An organization of which the contractor was an active promoter, organizer, or financer.

Approval of such a license shall be given only if the contractor can show that a bona fide effort was made without success to interest other organizations known to be interested in the subject matter of the invention in becoming licensees, or can otherwise show why the public interest will best be served by the proposed licensing arrangement. Notwithstanding anything above, this paragraph (g) shall not apply in the case of a contract with a for-profit contractor.

§ 25-9.106 Availability of inventions to the public.

(a) A major objective of the Foundation is to encourage the use of inventions arising out of activities supported by the Foundation. It is important that any useful product or process developed or improved under a contract is made available to the public on reasonable terms. In some cases, to ensure such availability it may be necessary, either at the time of award or in connection with the determination under § 25-9.104, to require the contractor to furnish to responsible applicants technical data or rights in other inventions to the extent necessary to practice the invention made or product or process developed or improved under the contract.

(b) Program managers or other Foundation personnel shall refer cases involving preexisting proprietary technology (such as "proprietary data," "trade secrets," patents, or patent applications) to the General Counsel or the Patent Policy Review Committee in accordance with applicable Staff Memoranda.

§ 25-9.107 Delegations.

The General Counsel is authorized to make any determinations required by these regulations to be made by the Director, including determinations required by the President's Policy to be made by the head of the agency, except those specified in § 25-9.105(f). PART 25-30—CONTRACT FINANCING Subpart 25-30.1-Forms of Financing § 25-30.103 Advance payments.

The NSF legislation provides that advance, progress, or other payments which relate to scientific activities or scientific information may be made without regard to the Provisions of section 3648 Revised Statutes (31 U.S.C. 529). Advance payments may be made in any amount not exceeding the contract price, provided (a) the amount of the advance payment is based upon an analysis of the financing required by the contractor for the contract and does not exceed reasonable financial requirements between

payments, and (b) such advance payment is appropriate in order to contract for the required work.

(42 U.S.C. 1861-1875, 1876-1879; 33 U.S.C. 1121-1124; 63 Stat. 37, as amended; 41 U.S.C. 201 note)

[34 FR 1440, Jan. 30, 1969]

PART 25-50-SPECIAL AUTHORITIES

Subpart 25-50.1—Additional Authorities

§ 25-50.101 Additional authority of the National Science Foundation.

The Foundation has special authority under the National Science Foundation Act, as amended, 42 U.S.C. 18611875, title IX of the National Defense Education Act, 42 U.S.C. 1876-1879, and the National Sea Grant College and Program Act, 33 U.S.C. 1121-1124. For example, the Foundation has authority:

(2) To enter into and amend contracts, for the carrying on of scientific activities and science information activities, without advertising, without legal consideration and without performance or other bonds;

(b) To publish or arrange for the publication of scientific and technical information (permitting exceptions from certain Government Printing Office procedures);

(c) To prescribe, with the approval of the Comptroller General, special accounting procedures;

(d) To acquire by purchase, lease, loan, gift, or condemnation, and to hold and dispose of by grant, sale, lease, or loan, real and personal property of all kinds necessary for, or resulting from, the exercise of authority granted by the National Science Foundation Act or the National Defense Education Act.

(42 U.S.C. 1861-1875, 1876-1879; 33 U.S.C. 1121-1124; 63 Stat. 37, as amended; 41 U.S.C. 201 note)

[34 FR 1440, Jan. 30, 1969]