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and manufacture, solely in the performance of this contract, of any invention covered by the United States patents identified and listed below, and walves indemnification by the Contractor with respect to such patents: (Identify the patents by number or by other means If more appropriate) 125 F.R. 14243, Dec. 31, 1960, as amended at 29 F.R. 14834, Oct. 31, 1964) $ 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 Govern. ment, 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 clause set forth below shall be included in all contracts in excess of $10,000 for supplies, construction, or experimental, developmental, or research work: Provided, That the clause set forth below shall not be included in contracts:
(a) Where both performance and delivery are to be outside the United States, its possessions, 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, except that as a matter of administrative convenience, the clause need not be deleted when it is a part of a standard form being used for such contracts, since it is self-deleting: NOTICE
ASSISTANCE REGARDING PATENT AND COPYRIGHT INFRINGEMENT (JANUARY 1965)
The provisions of this clause shall be applicable only if the amount of this contract exceeds $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.
(c) This clause shall be included in all subcontracts. For proper action to be taken by the contracting officer with respect to reports of notices or claims of patent infringement received by him under the provisions of this section, see Subpart D of this part. 130 F.R. 6003, Apr. 29, 1965, as amended at 32 F.R. 522, Jan. 18, 1967) 8 9.106 Classified contracts.
Unauthorized disclosure of classified subject matter, whether in patent applications or resulting from the issuance of a patent, may be a violation of 18 U.S.C. 792 et seq. (Espionage and Censorship) and related statutes and may be contrary to the interests of national security. Accordingly, except as otherwise provided in $ 9.106–2, the following clause shall be included in every classified contract (see $ $ 1.201.34 and 1.320 of this chapter). FILING OF PATENT APPLICATIONS
(DECEMBER 1969) (a) Before filing or causing to be filed a patent application in the United States 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 U.S. 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 U.S. 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 in the United States 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 issu- necessary steps may be taken to insure ance of a patent should be otherwise delayed
the security of the application. under pertinent U.S. statutes or regulations.
(c) A request for the approval referred (c) Where the subject matter of this contract is classified for reasons of security, the
to in paragraph (c) of the clause in Contractor shall not file, or cause to be filed
$ 9.106 must be considered and acted in any country, other than in the United upon promptly in order to avoid the loss States as provided in (a) and (b) of this of valuable patent rights of the Governclause, an application or registration for a ment or the contractor. patent containing any of said subject matter
132 F.R. 523, Jan. 1, 1967, as amended at 35 without first obtaining written approval of
F.R. 6832, Apr. 30, 1970; 36 F.R. 21152, Nov. 4, the Contracting Officer.
1971] (d) When filing any patent application coming within the scope of this clause, the $ 9.106–2 Classified contracts relating Contractor shall observe all applicable secu
to atomic energy. rity regulations covering the transmission
Where the contract contains a Patent of classified subject matter, and shall also promptly furnish to the Contracting Officer
Rights clause which includes paragraph the serial number, filing date, and name of
(1) of $ 9.107–7, the instructions concountry of any such patent application. tained in such paragraph shall be folWhen transmitting the application to the U.S. lowed in processing information regardPatent Office, the Contractor shall by separate ing any Subject Invention (Classified or letter identify by agency and number the
Unclassified), relating to the production contract or contracts which require security
or utilization of special nuclear material classification markings to be placed on the application.
or atomic energy. (e) The substance of this clause shall be (32 F.R. 523, Jan. 1, 1967) included in all subcontracts which cover or are likely to cover classified subject matter.
$ 9.107 Patent rights under contracts
for research and development. (32 F.R. 522, Jan. 1, 1967, as amended at 35 F.R. 6832, Apr. 30, 1970; 36 F.R. 21152, Nov. 4,
[29 F.R. 9754, July 21, 1964) 1971]
$ 9.107-1 Introduction. § 9.106-1 Patent applications.
On October 10, 1963, the President (a) Upon receipt from the contractor promulgated a Statement of Governof a patent application, not yet filed, ment Patent Policy applicable to all which has been submitted by the con- Executive Departments and Agencies (28 tractor in compliance with paragraphs F.R. 10943–10946, October 12, 1963). (a) or (b) of the clause in $ 9.106, the This Statement is set forth almost vercontracting officer shall ascertain the batim in $$ 9.107-2 and 9.107-3. Essenproper security classification of the pat- tially, the goal of the Statement of Govent application. Upon a determination ernment Patent Policy is to promote the that the application contains classified development of inventions resulting from material, the contracting officer shall in- Federally sponsored research, so that the form the contractor of any instructions public can benefit from early civilian deemed necessary or advisable relating to use of such inventions. The Statement transmittal of the application to the identifies three categories of procureUnited States Patent Office in accordance ment situations in which the use of three with procedures in the Department of different patent rights clauses will best Defense Industrial Security Manual for serve this goal. In a first category of Safeguarding Classified Security Infor- procurement situations, the goal of the mation. If the material is classified Policy will be best served by the Govern"Secret” or higher, the contracting officer ment acquiring title to the inventions. shall make every effort to notify the con- In the second category, where the contractor of the determination within 30 tractor has demonstrated a technical days pursuant to paragraph (a) of the competence in the area and an ability clause.
to commercialize his inventions, the (b) In the case of all applications filed Policy Statement calls for the contractor under the provisions of this section, the or grantee to obtain title to the resulting contracting officer, upon receiving the patent, subject to a license in the Govapplication serial number, the filing date, ernment. In such a situation, the norand the information furnished by the mal incentives provided by the patent contractor under paragraph (d) of the system are sufficient guarantee that the clause, shall promptly submit that in- inventions will be exploited and develformation to personnel having cogni- oped for civilian use. In the third and zance of patent matters in order that final category, the division of patent 1
rights is deferred until the invention is disclosed. This may be necessary where the commercial interests of the contractor are not sufficiently established to give title to the contractor at the time of contracting. This brief general summary of the Policy Statement does not attempt, of course, to define the categories with precision; and, in any event, exceptions to the general rules are provided by the Policy for special situations. 129 F.R. 9754, July 21, 1964) § 9.107–2 General.
(a) Basic considerations. (1) The Government expends large sums for the conduct of research and development which results in a considerable number of inventions and discoveries.
(2) The inventions in scientific and technological fields resulting from work performed under Government contracts constitute a valuable national resource.
(3) The use and practice of these inventions and discoveries should stimulate inventors, meet the needs of the Government, recognize the equities of the contractor, and serve the public interest.
(4) The public interest in a dynamic and efficient economy requires that efforts be made to encourage the expeditious development and civilian use of these inventions. Both the need for incentives to draw forth private initiatives to this end and the need to promote healthy competition in industry must be weighed in the disposition of patent rights under Government contracts. Where exclusive rights are acquired by the contractor, he remains subject to the provisions of the antitrust laws.
(5) The public interest is also served by sharing of benefits of Governmentfinanced research and development with foreign countries to a degree consistent with our international programs and with the objectives of United States foreign policy.
(6) There is growing importance attaching to the acquisition of foreign patent rights in furtherance of the interest of United States industry and the Government.
(7) The prudent administration of Government research and development calls for a Government-wide policy on the disposition of inventions made under Government contracts reflecting com
mon principles and objectives, to the extent consistent with the missions of the respective agencies. The policy must recognize the need for flexibility to accommodate special situations.
(b) Availability of Government-owned patents. Government-owned patents shall be made available and the technological advances covered thereby brought into being in the shortest time possible through dedication or licensing and shall be listed in official Government publications or otherwise.
(c) Definitions. As used in 88 9.107– 9.107-9, the stated terms are defined as follows:
(1) "Invention or invention or discovery” includes any art, machine, manufacture, design or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the Patent Laws of the United States of America or any foreign country;
(2) “Contractor" means any individual, partnership, public or private corporation, association, institution, or other entity which is a party to the contract:
(3) “Contract" means any actual or proposed contract, agreement, grant, or other arrangement, or subcontract entered into with or for the benefit of the Government where a purpose of the contract is the conduct of experimental, developmental, or research work;
(4) “Made,” when used in relation to any invention or discovery, means the conception or first actual reduction to practice of such invention in the course of or under the contract;
(5) "Governmental purpose" means the right of the Government of the United States (including any agency thereof, state, or domestic municipal government) to practice and have practiced (make or have made, use or have used, sell or have sold) throughout the world by or on behalf of the Government of the United States.
(6) "To the point of practical application" means to manufacture in the case of a composition or product, to practice in the case of a process, or to operate in the case of a machine or system and, in each case, under such conditions as to establish that the invention is being worked and that its benefits are reason. ably accessible to the public. (29 F.R. 9755, July 21, 1964)
§ 9.107–3 Policy.
(a) Category 1. The Government shall normally acquire or reserve the right to acquire the principal or exclusive rights throughout the world in and to any inventions made in the course of or under a contract where:
(1) 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
(2) A principal purpose of the contract is for exploration into fields which directly concern the public health or public welfare; or
(3) 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
(4) The services of the contractor are
(1) For the operation of a Government-owned research or production facility; or
(u) For coordinating and directing the work of others. In exceptional circumstances, the contractor may acquire greater rights than a nonexclusive license at the time of contracting, where the Secretary certifies that such action will best serve the public interest. Greater rights than a nonexclusive license may be acquired by the contractor after the invention has been identified, where the invention when made in the course of or under the contract is not a primary object of the contract: Provided, The acquisition of such greater rights is consistent with the intent of this section and is a necessary incentive to call forth private risk capital and expense to bring the invention to the point of practical application.
(b) Category II. In other situations, where the 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 in a field of technology in which the contractor has acquired technical competence (demonstrated by factors such as know-how, experience, and patent position) directly related to an area in which the contractor has an established nongovernmental commercial position, the contractor shall normally acquire the principal or exclusive rights throughout the world in and to any resulting inventions, subject to the Government's acquiring at least an irrevocable nonexclusive royalty-free license throughout the world for governmental purposes.
(c) Category III. Where the commercial interests of the contractor are not sufficiently established to be covered by the criteria specified in paragraph (b) of this section, the final determination of rights shall be made by the contracting officer after the invention has been identified, in a manner deemed most likely to serve the public interest as expressed in this Policy Statement (see § 9.107–2 and other paragraphs of this section), taking particularly into account the intentions of the contractor to bring the invention to a point of commercial application and th guidelines of paragraph (a) of this section: Provided, That in the special situations set forth in § 9.107–4(c) (2), the contractor may acquire at the time of contracting greater rights than a nonexclusive license. In any case, the Government shall acquire at least a nonexclusive royalty-free license throughout the world for Governmental purposes.
(d) In the Category II and Category III situations, when two or more potential contractors are judged to have presented proposals of equivalent merit, willingness to grant the Government principal or exclusive rights in resulting inventions will be an additional factor in the evaluation of the proposals. In no event will contractors be asked to state their willingness to grant the Government principal or exclusive patent rights prior to a determination that proposals of equivalent merit have been presented.
(e) where the principal or exclusive (except as against the Government) rights in an invention remain in the contractor, he should agree to provide written reports at reasonable intervals, when requested by the Government, on the commercial use that is being made or is
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intended to be inade of inventions made under Government contracts.
(f) Where the principal or exclusive (except as against the Government) rights in an invention remain in the contractor, unless the contractor, his licensee, or his assignee has taken effective steps within three years after a patent issues on the invention to bring the invention to the point of practical application or has made the invention available for licensing royalty-free or on terms that are reasonable in the circumstances, or can show cause why he should retain the principal or exclusive rights for a further period of time, the Government shall have the right to require the granting of a license to an applicant on a nonexclusive royalty-free basis.
(g) Where the principal or exclusive (except as against the Government) rights to an invention are acquired by the contractor, the Government shall have the right to require the granting of a license to an applicant royalty-free or on terms that are reasonable in the circumstances to the extent that the invention is required for public use by governmental regulations or as may be necessary to fulfill health needs, or for other public purposes stipulated in the contract.
(h) Where the Government may acquire the principal rights and does not elect to secure a patent in a foreign country, the contractor may file and retain the principal or exclusive foreign rights subject to retention by the Government of at least a royalty-free license for governmental purposes and on behalf of any foreign government pursuant to any existing or future treaty or agreement with the United States. (29 F.R. 9755, July 21, 1964, as amended at 30 F.R. 6003, Apr. 29, 1965) $ 9.107-4 Procedures.
(a) After appropriate consultation with legal, patent, and technical advisors, the contracting officer shall determine whether the Government or the contractor should acquire the principal or exclusive rights (hereafter these rights are referred to as "title") to any or all inventions made in the course of or under each contract and shall document the contract file to support his determination. The basic considerations and policy set forth above together with procedures in this part shall govern the
making of this determination. The Preaward Patent Rights Documentation Checklist set forth in paragraph (h) of this section may be used in determining the appropriate Patent Rights clause to be incorporated in a request for proposals in procurements involving experimental, developmental, or research work. If the contracting officer determines that the Patent Rights (Title) clause (8 9.1075(a)) is applicable, that clause shall be the only Patent Rights clause used. If It is determined that the Patent Rights (Title) clause (§ 9.107-5(a)) is not applicable, the contracting officer shall include both the Patent Rights (License) (9.107-5(b)) and Patent Rights (Deferred) (§ 9.107-5(c)) clauses in the request for proposals together with the statement: “The contracting officer will determine during negotiation which of these two patent rights clauses will be used in the contract, and the determination will be made in accordance with the guidelines set forth in ASPR 9-107." Except where the Patent Rights (Title) clause is applicable, DD Form 1564, "Preaward Patent Rights Documentation", may be included in each request for proposal. In the case of an unsolicited proposal, the contractor may be requested to complete that DD Form. The Checklist and the DD Form, if used, shall be made a part of the contract file.
(b) Category I-Where the contracting officer determines that proposed experimental, developmental, or research work falls within Category I set forth in § 9.107-3(a), the Patent Rights (Title) clause set forth in § 9.107-5(a) shall be included in the contract. When said determination is based on § 9.107-3 (a) (3) notice to that effect will be included in the solicitation. If the contractor to whom the award is to be made challenges the applicability of this provision, the contracting officer will review the basis for his determination and provide the contractor with the reason for his conclusion. If the contracting officer and the contractor cannot then resolve the issue, the contracting officer will promptly forward the problem to the Head of the Procuring Activity for resolution. If award of the contract cannot be delayed, the contracting officer may proceed with the procurement pending resolution of the issue, provided the contract contains the Patent Rights (Title) clause set forth in $ 9.107-5(a), accompanied by