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Revenue Code (26 USC 501(a)) or any nonprofit scientific or educational organization qualified under a state nonprofit organization statute.
(7) Patent Counsel means the Department of Energy (DOE) patent counsel assisting the DOE contracting activity.
(b) Allocation of principal rights. The grantee may retain the entire right, title, and interest throughout the world to each subject invention subject to the provisions of this clause and 35 USC 203. With respect to any subject invention in which the grantee retains title, the Federal Government shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world.
(c) Invention disclosure, election of title and filing of patent applications by grantee. (1) The grantee will disclose each subject invention to the Patent Counsel (with notification by the Patent Counsel to the Contracting Officer) within two months after the inventor discloses it in writing to grantee personnel responsible for the administration of patent matters. The disclosure to the Patent Counsel shall be in the form of a written report and shall identify the grant under which the invention was made and the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention. The disclosure shall also identify any publication, on sale or public use of the invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure. In addition, after disclosure to the Patent Counsel, the grantee will promptly notify the Patent Counsel of the acceptance of any manuscript describing the invention or of any on sale or public use planned by the grantee.
(2) The grantee will elect in writing whether or not to retain title to any invention by notifying the Patent Counsel within twelve months of disclosure to the grantee; provided that in any case where publication, on sale or public use has initiated the one year statutory period wherein valid patent protection can still be obtained in the United States, the period for election of title terminates sixty days prior to the end of the statutory period.
(3) The grantee will file its initial patent application on an elected invention within two years after election or, if earlier, prior to the end of any statutory period wherein valid patent protection can be obtained in the United States after a publication, on sale, or public use. The grantee will file pat
ent applications in additional countries within either ten months of the corresponding initial patent application or six months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications where such filing has been prohibited by a Secrecy Order.
(4) Requests for extension of the time for disclosure to the Patent Counsel, election, and filing, may, at the discretion of the Patent Counsel be granted.
(d) Conditions when the government may obtain title. (1) The grantee will convey to DOE, upon written request, title to any subject invention:
(1) If the grantee fails to disclose or elecet the subject invention within the times specified in (c) above, or elects not to retain title.
(11) In those countries in which the grantee fails to file patent applications within the times specified in (c) above; provided, however, that if the grantee has filed a patent application in a country after the times specified in (c) above but prior to its receipt of the written request of the Patent Counsel, the grantee shall continue to retain title in that country; or
(iii) In any country in which the grantee decides not to continue the prosecution of any application for, to pay the maintenance fees on, or defend in a reexamination or opposition proceeding on, a patent on a subject invention.
(e) Minimum rights to grantee. (1) The grantee will retain a nonexclusive, royalty-free 11cense throughout the world in each subject invention to which the Government obtains title except if the grantee fails to disclose the subject invention within the times specified in (c) above. The grantee's license extends to its domestic subsidiaries and affiliates, if any, within the corporate structure of which the grantee is a part and includes the right to grant sublicenses of the same scope to the extent the grantee was legally obligated to do so at the time the grant was awarded. The license is transferable only with the approval of DOE except when transferred to the successor of that part of the grantee's business to which the invention pertains.
(2) The grantee's domestic license may be revoked or modified by DOE to the extent necessary to achieve expeditious practical application of the subject invention pursuant to an application for an exclusive license submitted in accordance with 10 CFR part 781. This license will not be revoked in that field of use or the geographical areas in which the grantee has achieved practical application and continues to make the benefits of the invention reasonably accessible to the public. The license in any foreign country may be revoked or modified at the discretion of DOE to the extent the grantee, its licensees, or its domestic subsidiaries or affiliates
have failed to achieve practical application in that foreign county.
(3) Before revocation or modification of the license, DOE will furnish the grantee a written notice of its intention to revoke or modify the license, and the grantee will be allowed thirty days (or such other time as may be authorized by DOE for good cause shown by the grantee) after the notice to show cause why the license should not be revoked or modified. The grantee has the right to appeal, in accordance with 10 CFR part 781, any decision concerning the revocation or modification of its license.
(f) Grantee action to protect Government's interest. (1) The grantee agrees to execute or to have executed and promptly deliver to the Patent Counsel all instruments necessary to:
(1) Establish or confirm the rights the Government has throughout the world in those subject inventions for which the grantee retains title, and
(ii) Convey title to DOE when requested under (d) above and to enable the Government to obtain patent protection throughout the world in that subject invention.
(2) The grantee agrees to require, by written agreement, its employees, other than clerical and nontechnical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the grantee each subject invention made under this grant in order that the grantee can comply with disclosure provisions of (c) above and to execute all papers necessary to file patent applications on subject inventions. The disclosure format should require, as a minimum, the information requested by (c)(1) above. The grantee shall instruct such employees through the employee agreements or other suitable educational programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. or foreign statutory bars.
(3) The grantee will notify the Patent Counsel of any decision not to continue prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceeding on a patent, in any country, not less than thirty days before the expiration of the response period required by the relevant patent office.
(4) The grantee agrees to include, within the specification of any United States patent application and any patent issuing thereon covering a subject invention, the following statement, “This invention was made with Government support under (identify the grant) awarded by the Department of Energy. The Government has certain rights in this invention."
(5) The grantee agrees to:
(1) Provide a report prior to the close-out of the grant listing all subject inventions;
(ii) Provide notification of all contracts and subgrants under the grant for experimental, developmental, demonstration, or research work, the identity of the patent rights clause therein, and copy of each such contract or subgrant upon request:
(iii) Provide promptly a copy of the patent application, filing date, and serial number, and patent number and issue date for any subject invention in any country in which the grantee has applied for a patent.
(8) Contracts and subgrants under the grant. (1) The grantee will include this clause, suitably modified to identify the parties, in all contracts and subgrants under the grant, regardless of tier, for experimental, developmental or research work to be performed by a small business firm or a domestic nonprofit organization. The contractor or subgrantee will retain all rights provided for the grantee in this clause, and the grantee will not, as part of the consideration for awarding the contract or subgrant, obtain rights in the contractor's or subgrantee's subject inventions.
(2) The grantee will include in all other contracts or subgrants under the grant, regardless of tier, for experimental, developmental, demonstration, or research work the patent rights clause of 41 CFR 9 9.1075(a) or 41 CFR 9-9.107-6, as appropriate, modified to identify the parties.
(3) In the case of a contract or subgrant under the grant at any tier, DOE, the contractor or subgrantee, and the grantee agree that the mutual obligations of the parties created by the clause constitute a contract between the contractor or subgrantee and DOE with respect to those matters covered by this clause.
(h) Reporting on utilization of subject inventions. The grantee agrees to submit on request periodic reports no more frequently than annually on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the grantee or its licensees or assignees. Such reports shall include information regarding the status of development, date of first commercial sale or use, gross royalties received by the grantee, and such other data and information as DOE may reasonably specify. The grantee also agrees to provide additional reports as may be requested by DOE in connection with any march-in proceeding undertaken by DOE in accordance with paragraph (j) of this clause. To the extent data or information supplied under this section is considered by the grantee, its licensee or assignee to be privileged and confidential and is so marked, DOE agrees that, to the extent permitted by 35 U.S.C 202(c)(5), it will not disclose such information to persons outside the Government.
(1) Preference for United States industry. Notwithstanding any other provision of this clause, the grantee agrees that neither it nor
any assignee will grant to any person the exclusive right to use or sell any subject invention in the United States unless such person agrees that any products embodying the subject invention or produced through the use of the subject invention will be manufactured substantially in the United States. However, in individual cases, the requirement for such an agreement may be waived by DOE upon a showing by the grantee or its assignee that reasonable but unsuccessful efforts have been made to grant licenses on similar terms to potential licensees that would be likely to manufacture substantially in the United States or that under the circumstances domestic manufacture is not commercially feasible.
(1) March-in rights. The grantee agrees that with respect to any subject invention in which it has acquired title, DOE has the right in accordance with the procedures in OMB Circular A-124 to require the grantee, an assignee or exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant or applicants, upon terms that are reasonable under the circumstances, and if the grantee, assignee, or exclusive licensee refuses such a request, DOE has the right to grant such a license itself if DOE determines that:
(1) Such action is necessary because the grantee or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the subject invention in such field of use;
(2) Such action is necessary to alleviate health or safety needs which are not reasonably satisfied by the grantee, assignee, or their licensees;
(3) Such action is necessary to meet requirements for public use specified by federal regulations and such requirements are not reasonably satisfied by the grantee, assignee, or licensees; or
(4) Such action is necessary because the agreement required by paragraph (1) of this clause has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject invention in the United States is in breach of such agreement.
(k) Special provisions for grants to nonprofit organizations. If the grantee is a nonprofit organization, it agrees that: (1) Rights to a subject invention in the
ed States may not be assigned without the approval of DOE, except where such assignment is made to an organization which has as one of its primary functions the management of inventions and which is not, itself, engaged in or does not hold a substantial interest in other organizations engaged in the manufacture or sale of products or the use of processes that might utilize the invention or be in competition with embodiments of the invention (provided that such assignee
will be subject to the same provisions as the grantee);
(2) The grantee may grant exclusive licenses under United States patents or patent applications in subject inventions to persons other than small business firms for a period in excess of the earlier of:
(1) Five years from first commercial sale or use of the invention; or
(11) Eight years from the date of the exclusive license excepting that time before regulatory agencies necessary to obtain premarket clearance, unless on a case-by-case basis, DOE approves a longer exclusive license. If exclusive field of use licenses are granted, commercial sale or use in one field of use will not be deemed commercial sale or use as to other fields of use, and a first commercial sale or use with respect to a product of the invention will not be deemed to end the exclusive period to different subsequent products covered by the invention;
(3) The grantee will share any royalties collected on a subject invention with the inventor; and
(4) The balance of any royalties or income earned by the grantee with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, will be utilized for the support of scientific research or education.
(1) Communication. The DOE central point of contact for communications or matters relating to this clause is the Patent Counsel.
(2) Patent rights (short form). This clause shall apply to grants awarded to grantees other than small business firms or domestic nonprofit organizations, where such grants have as a purpose the conduct of experimental, developmental, demonstration, or research work. Prior to award or within 30 days after an award is signed by the DOE Contracting Officer, or such longer period as may be authorized by the Patent Counsel for good cause shown in writing by the applicant or grantee, the applicant or grantee may petition DOE for an advance waiver of the Government's rights to inventions conceived or first actually reduced to practice under the grant in accordance with 41 CFR part 9-9. DOE shall consider and dispose of any such request in accordance with the waiver provisions of 41 CFR part 9-9. If a waiver is granted the ani ed, the appropriate waiver clause shall be substituted for the Patent Rights (Short Form) clause. DOE also may authorize an advance waiver for a class of awards when appropriate and shall specify the applicable patent rights clause in every award covered by such a waiver.
PATENT RIGHTS (SHORT FORM) (a) Definitions. (1) Subject invention means any invention or discovery of the grantee conceived or first actually reduced to practice in the course of or under this grant and includes any art, method, process, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plants, whether patented or unpatented, under the patent laws of the United States of America or any foreign country.
(2) Patent Counsel means DOE Patent Counsel assisting the procuring activity.
(b) Invention disclosures and reports. (1) The grantee shall furnish the Patent Counsel (with notification by Patent Counsel to Contracting Officer):
(1) A written report containing full and complete technical information concerning each subject invention within 6 months after conception or first actual reduction to practice but in any event prior to any sale, public use, or public disclosure of such invention known to the grantee. The report shall identify the grant and inventor and shall be sufficiently complete in technical detail and appropriately illustrated by sketch or diagram to convey to one skilled in the art to which the invention pertains, a clear understanding of the nature, purpose, operation and, to the extent known, the physical, chemical, biological or electrical characteristics of the invention;
(11) Upon request, but not more than annually, interim reports on a DOE-approved form listing subject inventions for that period and certifying that all subject inventions have been disclosed or that there were no such inventions; and
(ill) A final report on a DOE-approved form within 3 months after completion of the grant work listing all subject inventions and certifying that all subject inventions have been disclosed or that there were no such inventions.
(2) The grantee agrees that the Government may duplicate and disclose subject invention disclosures and all other reports and papers furnished or required to be furnished pursuant to the grant.
(c) Allocation of principal rights. (1) Assignment to the Government.
The grantee agrees to assign to the Government the entire right, title, and interest throughout the world in and to each subject Invention, except to the extent that rights are retained by the grantee under paragraphs (c)(2) and (d) of this clause.
(2) Greater rights determination. The grantee, or the employee-inventor with authorization of the grantee, may request greater rights than the nonexclusive license and the
foreign patent rights provided in paragraph (d) of this clause on identified inventions in accordance with the procedure and criteria of 41 CFR 9.109-6. A request for a determination of whether the grantee or the employeeinventor is entitled to retain such greater rights must be submitted to the Patent Counsel (with notification by Patent Counsel to the Contracting Officer) at the time of the first disclosure of the invention pursuant to paragraph (b)(1) of this clause or not later than 9 months after conception or first actual reduction to practice, whichever occurs first, or such longer period as may be authorized by the Patent Counsel (with notification by Patent Counsel to the Contracting Officer) for good cause shown in writing by the grantee. The information to be submitted for greater rights determination is specified in 41 CFR 9-9.109 6(e).
(d) Minimum rights to the Grantee. The Grantee reserves a revocable, nonexclusive, paid-up license in each patent application filed in any country on a subject invention and any resulting patent in which the Government acquires title. Revocation shall be in accordance with the procedures of paragraphs (c)(2) and (3) of the clause in 41 CFR 9_9.107-5(a). The grantee also has the right to request foreign rights in accordance with the procedures of paragraph (c)(4) of the clause in 41 CFR 9-9.107-5(a).
(e) Employee and contractor or subgrantee agreements. Unless otherwise authorized in writing by the Contracting Officer, the grantee shall:
(1) Obtain patent agreements to effectuate the provisions of the Patent clause from all persons who perform any part of the work under this grant except nontechnical personnel, such as clerical employees and manual laborers.
(2) The grantee shall include this clause or the Patent Rights clause of 41 CFR 9-9.1075(a) or the clause of $ 600.33(b)(1), as appropriate, modified to identify the parties in any contract or subgrant hereunder having as a purpose the conduct of experimental, research, development, or demonstration work; and
(3) Promptly notify the Contracting Officer in writing upon the award of any contract or subgrant containing a Patent Rights clause by identifying the contractor or subgrantee, the work to be performed under the contract or subgrant, and dates of award and estimated completion. Upon the request of the Contracting Officer, the grantee shall furnish a copy of the contract or subgrant to such requestor.
(1) Atomic energy. (1) No claim for pecuniary award or compensation under the provisions of the Atomic Energy Act of 1954, as amended, shall be asserted by the grantee or its employees with respect to any inventions or discovery made or conceived in the course of or under this grant.
(2) Except as otherwise authorized in writing by the Contracting Officer, the grantee will obtain patent agreements to effectuate the provisions of paragraph (0)(1) of the clause from all persons who perform any part of the work under this grant except nontechnical personnel, such as clerical employees and manual laborers.
(g) Publication. In order that information concerning scientific or technical develop ments conceived or first actually reduced to practice in the course of or under the grant is not prematurely published so as to adversely affect patent interest of DOE, the grantee agrees to submit to the Patent Counsel for patent review a copy of each paper 60 days prior to its intended publication date. The grantee may publish such information after expiration of a 60-day period following such submission or prior thereto if specifically approved by the Patent Counsel, unless the grantee is informed (in writing within the 60-day period) that in order to protect patentable subject matter, publication must further be delayed. In this event, publication shall be delayed up to 100 days beyond the 60-day period or such longer period as mutually agreed to.
(3) Rights in technical data (short form). This clause shall apply to all grants other than those having as a purpose the conduct of a conference, symposium, or training. However, this clause does not provide protection for proprietary data. If proprietary data may be utilized under a grant, other appropriate technical data clauses (as provided in 48 CFR 952.227) may be included in the award.
RIGHTS IN TECHNICAL DATA (SHORT FORM)
(a) Definitions. The definitions of terms set forth in DEAR 927.401 apply to the extent these terms are used herein.
(b) Allocation of rights. (1) The Government shall have:
(1) Unlimited rights in technical data first produced or specifically used in the performance of this grant.
(11) The right of the Contracting Officer or his representatives to inspect at all reasonable times up to three years after final payment under this grant all technical data first produced or specifically used in the grant (for which inspection the grantee or its contractor or subgrantee shall afford proper facilities to DOE), and
(111) The right to have any technical data first produced or specifically used in the performance of this grant delivered to the Government as the Contracting Officer may from time-to-time direct during the progress of the work, or in any event as the Contracting Officer shall direct upon completion or termination of this grant.
(2) The grantee shall have: The right to use for its private purposes, subject to patent, security or other provisions of this grant, technical data it first produces in the performance of this grant provided the date requirements of this grant have been met as of the date of the private use of such data. The grantee agrees that the to extent it receives or is give access to proprietary data or other technical business of financial data in the form of recorded information from DOE or & DOE contractor or subcontractor, the grantee shall treat such data in accordance with any restrictive legend contained thereon, UDless use is specifically authority by prior written approval of the Contracting Officer.
(c) Copyrighted material. (1) The grantee agrees to and does hereby grant to the GOFernment and to others acting on its behalf:
(1) A royalty-free, nonexclusive, irrerocable, world-wide license for Governmental purposes to reproduce, distribute, display, and perform all copyrightable material first produced or composed in the performance of this grant by the grantee, its employees or any individual or concern specifically employed or assigned to originate and prepare such material and to prepare derivative works based thereon,
(11) A license as aforesaid under any and all copyrighted or copyrightable work not first produced or composed by the grantee in the performance of this grant but which is incorporated in the material furnished under the grant, provided that such license shall be only to the extent the grantee now has, or prior to completion or close-out of the grant, may acquire the right to grant such license without becoming liable to pay compensation to others solely because of such grant.
(2) The grantee agrees that it will not knowingly include any material copyrighted by others in any written or copyrightable material furnished or delivered under this grant without a license as provided for in paragraph (c)(1)(11) of this section, or without the consent of the copyright owner, unless it obtains specific written approval of the Contracting Officer for the inclusion of such copyright material.
(4) Rights in technical data (modified short form). This clause shall apply to any grant having as a purpose the conduct of a conference, a symposium, or training.
RIGHTS IN TECHNICAL DATA-MODIFIED SHORT
FORM (1) The grantee grants to the Government a worldwide, royalty-free, non-exclusive, irrevocable license to publish, duplicate, translate, perform, exhibit and dispose of and to have others to do so, technical information or data including copyrightable material first produced by the grantee, under the grant.