(a) The Contractor hereby grants to the Government an irrevocable, nonexclusive, nontransferable, and paid up license under the following patents, applications for patent, and any patents granted on such applications, and under any patents which may issue as the result of any reissue, division or continuation thereof, to practice by or cause to be practiced for the Government throughout the world, any and all of the inventions thereunder, in the manufacture and use of any article or material, in the use of any method or process, and in the disposition of any article or material in accordance with law: U.S. Patent No. Date___ Date____ Filing together with corresponding foreign patents and foreign applications for patents, insofar as the Contractor has the right to grant licenses thereunder without incurring an obligation to pay royalties or other compensation to others solely on account of such grant. For the Department of the Army: Chief, Patents Division, Office of The Judge Advocate General for the Department of the Air Force: Chief, Patents Division, Office of The Judge Advocate General; and for the Defense Supply Agency: The Patent Counsel. (b) No rights are granted or implied by the agreement under any other patents other than as provided above or by operation of law. (c) Nothing contained herein shall limit any rights which the Government may have obtained by virtue by prior contracts or by operation of law or otherwise. (b) License term. One of the following clauses may be used as appropriate. (ALTERNATE A) LICENSE TERM The license hereby granted shall remain in full force and effect for the full term of each of the patents referred to in the "License Grant" clause of this contract and any and all patents hereafter issued on applications for patent referred to in such "License Grant" clause. (ALTERNATE B) LICENSE TERM The license hereby granted shall terminate on the day of Provided, however, That said termination shall be without prejudice to the completion of any contract entered into by the Government prior to said date of termination or to the use or disposition thereafter of any articles or materials manufactured by or for the Government under this license. § 9.409-4 Additional clauses-contracts providing for payment of a running royalty. The clauses set forth below are examples which may be used in patent release and settlement agreements, and license agreements, when it is desired to cover the subject matter thereof and the contract provides for payment of a running royalty. (a) License grant. No Military Department shall be obligated to pay royalties unless the contract is signed on behalf of such Department. Accordingly, the following License Grant clause should be limited to the practice of the invention by or for the signatory Department or Departments: under in the manufacture and use of any article or material, in the use of any method or process, and in the disposition of any article or material in accordance with law: U.S. Patent No. ------ Date Application Serial No. Filing Date together with corresponding foreign patents and foreign applications for patent, insofar as the Contractor has the right to grant licenses thereunder without incurring an obligation to pay royalties or other compensation to others solely on account of such grant. (b) No rights are granted or implied by the agreement under any other patents other than as provided above or by operation of law. (c) Nothing contained herein shall limit any rights which the Government may have obtained by virtue of prior contracts or by operation of law or otherwise. (b) License term. The following clause is a sample form for expressing the license term. LICENSE TERM The license hereby granted shall remain in full force and effect for the full term of each of the patents referred to in the "License Grant" clause of this contract and any and all patents hereafter issued on applications for patent referred to above unless sooner terminated as elsewhere herein provided. (c) Computation of royalties. The following clause, providing for the computation of royalties, may be of varying scope depending upon the nature of the royalty bearing article, the volume of procurement, and the type of contract pursuant to which the procurement is to be accomplished. COMPUTATION OF ROYALTIES Subject to the conditions hereinafter stated, royalties shall accrue to the Contractor under this agreement on all articles or materials embodying, or manufactured by the use of, any or all inventions claimed under any unexpired U.S. patent licensed herein, upon acceptance thereof by the Deat partment of 8 the rate of [------ percent of the net selling price of such articles or materials] [(amount) per (name of item)] whether manufactured by the Government or procured under a fixed price contract, and at the rate of (amount) per (name of item) acquired or manufactured by a Contractor performing under a cost-reimbursement contract. With respect to such articles or materials made by the Department of "net selling price," as used & Use bracketed matter as appropriate. in this paragraph, means the actual cost of direct labor and materials without allowance for overhead and supervision. (d) Reporting and payment of royalties. (1) The contract should contain a provision specifying the office designated within the specific Department involved to make any necessary reports to the contractor of the extent of use of the licensed subject matter by the entire Department, and such office shall be charged with the responsibility of obtaining from all procuring offices of that Department the information necessary to make the required reports and corresponding vouchers necessary to make the required payments. The following clause is a sample for expressing reporting and payment of royalties requirements: REPORTING AND PAYMENT OF ROYALTIES (a) The (procuring office) shall, on or before the sixtieth (60th) day next following the end of each yearly period ending during which royalties have accrued under this license, deliver to the Contractor, subject to military security regulations, a report in writing furnishing necessary information relative to royalties which have accrued under this contract. (b) Royalties which have accrued under this contract during the yearly 10 period ending shall be paid to the Contractor (if appropriations therefor are available or become available) within sixty (60) days next following the receipt of a voucher from the Contractor submitted in accordance with the report referred to in (a) of this clause: Provided, That the Government shall not be obligated to pay, in respect of any such yearly period, on account of the combined royalties accruing under this contract directly and under any separate licenses granted pursuant to the "License to Other Government Agencies" clause (if any) of this contract, amount greater than ($_ -------) dollars; and if such combined royalties exceed the said maximum yearly obligation, each department or agency shall pay a pro rata share of the said maximum yearly obligation as determined by the proportion its accrued royalties bear to the combined total of accrued royalties. an (2) Where more than one Department or Government Agency is licensed and • The frequency, date, and length of reporting periods should be selected as appropriate to the particular circumstances of the contract. 10 The frequency, date, and length of reporting periods should be selected as appropriate to the particular circumstances of the contract. there is a ceiling on the royalties payable in any reporting period, the licensing Departments or Agencies shall coordinate with respect to the pro rata share of royalties to be paid by each. (e) License to other Government agencies. When it is intended that a license on the same terms and conditions be available to other departments and agencies of the Government, the following clause is an example which may be used: LICENSE TO OTHER GOVERNMENT AGENCIES The Contractor hereby agrees to grant a separate license under the patents, applications for patents, and improvements referred to in the "License Grant" clause of this contract, on the same terms and conditions as appear in this license contract, to any other department or agency of the Government at any time on receipt of a written request for such a license from such department or agency: Provided, however, That as to royalties which accrue under such separate 11censes, reports and payments shall be made directly to the Contractor by each such other department or agency pursuant to the terms of such separate licenses. The Contractor shall notify the Licensee hereunder promptly upon receipt of any request for license hereunder. The Contractor hereby conveys to the Government, as represented by the Secretary of the entire right, title, and interest in and to the following patents (and applications for patent), in and to the inventions thereof, and in and to all claims and demands whatsoever for infringement thereof heretofore accrued, the same to be held and enjoyed by the Government through its duly appointed representatives to the full end of the term of said patents (and to the full end of the terms of all patents which may be granted upon said applications for patent, or upon any division, continuation-in-part or continuation thereof): U.S. Patent No. Date Name of Inventor Even though no infringement has occurred or been alleged, it is the policy of the Department of Defense to procure rights under patents, patent applications, and copyrights whenever it is in the Government's interest to do so and the desired rights can be obtained at a fair price. The required and suggested clauses in §§ 9.409 and 9.410 shall be required and suggested clauses, respectively, for license agreements and assignments made under this paragraph. The instructions in §§ 9.409 and 9.410 concerning the applicability and use of those clauses shall be followed insofar as they are pertinent. [35 F.R. 6833, Apr. 30, 1970] § 9.412 Contract format. The following format, appropriately modified where necessary, may be used for contracts of release, license, or assignment: Whereas, Contractor warrants that he has the right to grant the within license and release, and the Government desires to procure the same, and Whereas, this contract is authorized by law, including 10 U.S.C. 2386, Now therefore, in consideration of the grant, release and agreements hereinafter recited, the parties have agreed as follows: Article 1. License Grant." (Insert the clause in 9-409.3(a) for a paid up license, or the clause in 9-409.4(a) for a license on a running royalty basis.) Article 2. License Term." 11 If only a release is procured delete this article; if an assignment is procured, use the clause in 9-410. (Insert the appropriate alternative clause in 9-409.3 (b) for a paid up license, or the clause in 9-409.4 (b) for a license on a running royalty basis.) Article 3. Release of Past Infringement. (Insert the clause in 9-409.2(a).) Article 4. Nonestoppel. (Insert the clause in 9-409.1 (f).) The Contractor shall be paid the sum of Dollars ($---.-) in full compensation for the rights herein granted and agreed to be granted. (For a license on a running royalty basis, insert the clause in 9-409.4 (c) in accordance with the instructions therein, and also the clause as specified in 9-409.2(b) and 9-409.4 (d) and (e).) Article 6. Officials Not to Benefit. Article 7. Covenant Against Contingent 10.103-1 10.103-2 10.103-3 10.103-4 10.103-5 10.104 Performance bond. Bid guarantees. Applicability. Limitations. Amount required. Solicitation provisions. Noncompliance with bid guaran tee requirements. Performance and payment bonds for construction contracts. Performance bonds. Payment bonds. Waiver of performance and payment bonds. Furnishing information to subcontractors and suppliers. Requirements and indefinite quantity contracts. Performance and payment bonds for contracts other than construction contracts. General. Performance bonds. Payment bonds. Other types of bonds. Advance payment bonds. Fidelity and forgery bonds. 10.104-1 10.104-2 10.104-3 10.105 10.105-1 10.105-3 10.105-4 Other types of bonds. § 10.101-1 Advance payment bond. "Advance payment bond" means bond which secures the performance and the fulfillment of a contractual provision for the making of advance payments. [29 F.R. 6933, May 27, 1964] § 10.101-2 Annual bid bond. "Annual bid bond" means a single bond (in lieu of separate bid bonds), without limitation as to penal amount, which secures all bids (on other than construction contracts) requiring bonds submitted by a contractor during a specific fiscal year of the Government in response to formal advertising. [29 F.R. 6933, May 27, 1964] § 10.101-3 Annual performance bond. This term means a single bond (in lieu of separate performance bonds for each contract) which secures the performance of contracts (other than construction contracts) which require bonds and are entered into by a contractor during a specific fiscal year of the Government. Such bonds may be in different forms, including the following three: The first providing for penal sums separately applicable to each covered contract, regardless of the total amount of covered contracts; the second providing a gross penal sum cumulatively applicable to the total amount of all covered contracts but without a separate limit applicable to each contract; and the third providing both, separate contract and cumulative limits. [34 F.R. 13844, Aug. 29, 1969] § 10.101-4 Bid guarantee. "Bid guarantee" means a form of security accompanying a bid or proposal as assurance that the bidder (a) will not withdraw his bid within the period specified therein for acceptance, and (b) will execute a written contract and furnish such bonds as may be required within the period specified in the bid (unless a longer period is allowed) after receipt of the specified forms. [29 F.R. 6933, May 27, 1964] |