PATENTS, DATA, AND COPYRIGHTS (iii) The patent owner agrees to license NASA for the proposed procurement at a rate which is reasonable under the circumstances. Generally, such rate should not exceed the lowest rate at which the patent owner has licensed a private concern; (iv) The Contracting Officer, in consultation with NASA Patent Counsel, determines that entering into the license agreement will not unduly delay the procurement. (b) Under the agreement, royalties will be payable to the patent owner if the patented item is procured from an unlicensed source and only upon acceptance by NASA of the patented item. These royalties will be considered by NASA as a factor in determining the proposal which is most advantgeous to the Government. Before any royalty payments are considered for evaluation purposes, each offeror will be given an opportunity to show that he is licensed under the patent determined by NASA Patent Counsel to be infringed by the procurement or that performance of the contract in accordance with his offer will not result in infringement of the asserted patent. In the latter instance, each offeror will have 10 days from the date of notification in which to submit evidence to show that his contract performance will not infringe the patent, specifically pointing out how his article or process is distinct from the claimed subject matter. In the event that the Contracting Officer, after consulting Patent Counsel determines that the offeror's performance will not infringe the Patent in question, and the offeror is to be awarded the contract, a patent indemnity clause shall be included in the contract, specifically identifying the asserted patent. This clause shall be included at no additional cost to the Government. Any offeror who fails to show that he is licensed under such patent or that his performance will not result in infringement of the patent, will be regarded as an unlicensed supplier for evaluation purposes. (c) If NASA does not enter into a preprocurement license agreement with a patent owner prior to the procurement of patented items, competing bids, proposals or quotations will be evaluated without regard to royalties or compensation which may ultimately be payable to the patent owner. In such event, the patent owner may bring a claim for patent infringement in accordance with 9.105. 9.102 Authorization and Consent. (a) Under 28 U.S.C. 1498, any suit for infringement of a patent or copyright based on the manufacture or use of a patented invention or copying of copyrighted material for the Government by a contractor or by a subcontractor (including lower tier subcontractors) can be maintained only against the Government in the Court of Claims, and not against the contractor or subcontractor, in those cases where the Government has authorized or consented to such infringement. Accordingly, in order that work by a contractor or subcontractor under a Government contract may not be enjoined by reason of patent infringement, authorization and consent will be given as herein provided. The “Authorization and Consent" clause set froth below shall be included in all contracts for supplies (including construction work), and construction contracts, as follows: AUTHORIZATION AND CONSENT (JANUARY 1964) The Government hereby gives its authorization and consent (without prejudice to any rights of indemnification) for all use and manufacture, in the performance of this contract or any part hereof any amendment hereto or any subcontract hereunder (including any lower-tier subcontract), of any invention described in and covered by a patent of the United States (i) embodied in the structure or composition of any article the delivery of which is accepted by the Government under this contract, or (ii) utilized in the machinery, tools, or methods the use of which necessarily results from compliance by the Contractor or the using subcontractor with (a) specifications or written provisions now or hereafter forming a part of this contract, or (b) specific written instructions given be the Contracting Officer directing the manner of performance. (b) Since greater latitude in the use of patented inventions is to be allowed in a contract for research, experimental, design, engineering or development work than in a contract for supplies,the “Authorization and Consent" clause set forth below shall be used in contracts, including Facilities contracts, involving such work. AUTHORIZATION AND CONSENT (SEPTEMBER 1962) The Government hereby gives its authorization and consent for all use and manufacture of any invention described in and covered by a patent of the United States in the performance of this contract or any part hereof or any amendment hereto or any subcontract hereunder (including any lower tier subcontract). 9.103 Patent Indemnification of Government by Contractor. (a) A patent indemnity clause is not appropriate in contracts for experimental, developmental, or research work. When it is known that an item being procured is protected, or probably will be protected, by a United States patent or patents, the inclusion of a “Patent Indemnity” clause may be appropriate. In such case, where the patent owner informs a prospective bidder or otherwise 9.102 CFR TITLE 41 CHAPTER 18 PART 9 contends PATENTS, DATA, AND COPYRIGHTS INNOVATIONS, INVENTIONS, AND PATENTS that the item being procured would infringe his patent or patents, the patent indemnity clause set forth below, limited to the specifically designated patents in question, may be included in the contract (other than construction contracts made with Standard Form 23A) if its use is approved by Patent Counsel. PATENT INDEMNITY (NOVEMBER 1964) (a) The Contractor shall indemnify the Government and its officers, agents, and employees against liability, including costs, for infringement of the United States letters patent designated in paragraph (b) below and the United States letters patents which may mature on the patent applications, if any, designated in paragraph (b) below, arising out of the manufacture or delivery of supplies or out of construction, alteration, modification, or repair of real property (hereinafter referred to as "construction work"), under this contract, or out of the use or disposal by or for the account of the Government of such supplies or construction work. The foregoing indemnity shall not apply unless the Contractor shall have been informed as soon as practicable by the Government of the suit or action alleging such infringement, and shall have been given such opportunity as is afforded by applicable laws, rules, or regulations to participate in the defense thereof; and further, such indemnity shall not apply if: (i) the infringement results from compliance with specific written instructions of the Contracting Officer directing a change in the supplies to be delivered or in the materials or equipment to be used, or directing a manner of performance of the contract not normally used by the Contractor; or (ii) the infringement results from the addition to, or change in, the supplies furnished or construction work performed, which addition or change was made subsequent to delivery or performance by the Contractor; or (iii) the claimed infringement is settled without the consent of the Contractor, unless required by final decree jurisdiction. (b) This "Patent Indemnity" United States patents and patent designated (here designate applications). of a court of competent clause is applicable to such applications as are next the patents or patent (End of clause) NASA PROCUREMENT REGULATION 9.103 INNOVATIONS, INVENTIONS, AND PATENTS (b) In construction contracts made with Standard Form 23A, retain the "Patent Indemnity" clause contained therein. 9.104 Notice and Assistance. The Government should be notified by the contractor of all claims of infringement in connectio": with the performance of a contract which come to the contractor's attention, especially where the Government has given its authorization and consent for the use and manufacture of any patented invention in the performance of the contract or where the contract calls for the delivery to the Government of supplies, models, or prototypes. 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 Iclaim 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 "Notice of Assistance Regarding Patent and Copyright Infringement" clause set forth below shall be included in contracts in excess of $10,000. NOTICE AND ASSISTANCE REGARDING PATENT AND COPYRIGHT (The provisions of this clause shall be applicable only if the amount of this contract exceeds ten thousand dollars ($10,000).) (a) The Contractor 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 Contractor has agreed to indemnify the Government. (End of clause) 9.105 Processing of Infringement Claims. Any claim for infringement of a patent or copyright should be addressed to or brought to the attention of the Office of General Counsel, NASA Headquarters, and should identify (i) the United States copyright, patent, or patent application, (ii) the interest of the claimant, and (iii) the acts alleged to constitute the infringement. 9.106 Classified Contracts. Unauthorized disclosure of classified subject matter, whether in patent applications or resulting from an issuance of a patent, may be a violation of 9.104 CFR TITLE 41 CHAPTER 18 PATENTS, DATA, COPYRIGHTS 18 U.S.C. 791 et seq. (Espionage and Censorship) and related statutes and may be contrary to the interest of nationall security. Accordingly, the "Filing of Patent Applications" clause set forth below shall be included in every classified contract and in every unclassified contract which covers or is likely to cover classified subject matter. FILING OF PATENT APPLICATIONS (SEPTEMBER 1962) (a) Before filing or causing to be filed a patent application disclosing any subject matter of this contract, which subject matter is classified "Secret" or higher, the Contractor shall, citing the thirty (30) day provision below, transmit the proposed application to the Contracting Officer for determination whether, for reasons of national security, such application should be placed under an order of secrecy or sealed in accordance with the provisions of 35 U.S.C. 181-188 or the issuance of a patent should be otherwise delayed under pertinent statutes or regulations; and the Contractor shall observe any instructions of the Contracting Officer with respect to the manner of delivery of the patent application to the United States Patent Office for filing, but the Contractor shall not be denied the right to file such patent application. If the Contracting Officer shall not have given any such instructions within thirty (30) days from the date of mailing or other transmittal of the proposed application, the Contractor may file the application. (b) The Contractor shall furnish to the Contracting Officer, at the time of or prior to the time when the Contractor files or causes to be filed a patent application disclosing any subject matter of this contract, which subject matter is classified "Confidential," a copy of such application for determination whether, for reasons of national security, such application should be placed under an order of secrecy or the issuance of a patent should be otherwise delayed under pertinent statutes or regulations. (c) In filing any patent application coming within the scope of this clause, the Contractor shall observe all applicable security regulations covering the transmission of classified subject matter. (End of clause) 9.107 Property Rights in Inventions Made in the Performance of Work Under NASA Contracts with Other Than Small Business Firms or Nonprofit Organizations. 9.107-1 General. (a) The policies, procedures, and practices of NASA with respect to the reporting of inventions, discoveries, improvements, and innovations made in the performance of work under any NASA contract or subcontract with other than a small business firm or nonprofit organization, and the allocation of NASA PROCUREMENT REGULATION 9.107-1 INNOVATIONS, INVENTIONS, AND PATENTS or or property rights relating thereto, are based upon Section 305 of the National Aeronautics and Space Act of 1958, as amended (42 U.S.C. 2457); and, to the extent not inconsistent with such statute, the revised Presidential Memorandum and Statement of Government Patent Policy issued on August 23, 1971 (36 FR 16887-16892). Any disposition of rights made in accordance with the President's statement has been authorized by Congress (35 U.S.C. 210(c); 94 Stat. 3027). Inventions made in the performance of work under NASA contracts subcontracts (with other than a small business firm nonprofit organization) in the manner specified in Section 305 (a) (1) or (2) of the Act (42 U.S.C. 2457 (a)(1), (2)), become the exclusive property of the Government unless the Administrator of NASA determines that the interest of the United States will be served by waiving all or any part of the Government's rights under the provisions of Section 305(f) of the Act (42 U.S.Č. 2457(f)). Such waiver of rights is made pursuant to recommendation of an Inventions and Contributions Board established by the Administrator. The policies, procedures and practice of NASA with respect to the disposition of rights and the reporting of inventions and discoveries made in the performance of work under any NASA contract or subcontract with small business firms and nonprofit organizations are set forth in 9.108. (b) Section 305(b) of the Act (42 U.S.C. 2457 (b)) also provides that each NASA contract and subcontract for the performance of any work shall contain effective provisions for the reporting of any invention, discovery, improvement or innovation made thereunder. NASA is also authorized, under Section 305(h) of the Act (42 U.S.c. 2457(h)) and under 35 U.S.C. 207, 94 Stat. 3023, to undertake all suitable and necessary steps to protect and administer rights to any invention or discovery for which it holds title, including applying for, obtaining and maintaining patents thereon, and to require contractors and persons who retain title under the Act to protect any of them to which NASA has or may require license rights. Further, 35 U.S.C. 207, 94 Stat. 3023, authorizes NASA to grant nonexclusive, exclusive or partially exclusive licenses, pursuant to regulation 14 CFR 1245.2, for any invention covered by a patent or patent application for which NASA holds title. NASA is also required, under Section 203(a)(3) of the Act (42 U.S.C. 2473(a)(3)) to provide for the widest practicable and appropriate dissemination information concerning its activities and the results thereof. 9.107-2 [Reserved] 9.107-3 Policy. of (a) It is the policy of NASA to require prompt reporting of inventions, discoveries, improvements, and innovations made in the performance of any work under any NASA contract or subcontract in order to protect the Government's interests therein; and to provide the widest practicable and appropriate dissemination, early utilization, expeditious development, and continued availability thereof for the benefit of the 9.107-2 CFR TITLE 41 CHAPTER 18 |