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CHAPTER OFFICE OF THE SECRETARY OF DEFENSE

(Parts 9 to 39)

SUBCHAPTER A-ARMED SERVICES PROCUREMENT REGULATIONS

(continued)

12

Part
9 Patents, data, and copyrights.
10 Bonds, insurance, and indemnification.
11 Federal, State and local taxes.

Labor.
13 Government property.
14

Procurement quality assurance. 15 Contract cost principles and procedures. 16 Procurement forms. 17 Extraordinary contractual actions to facilitate the national defense. 18 Procurement of construction and contracting for architect-engineer services. 19 Transportation. 22 Service contracts. 23 Subcontracting policies and procedures. 24 Disposition of personal property in possession of contractors. 25 Production management. 26 Contract modifications, 30 Appendixes to Armed Services Procurement Regulations. 31-39 [Reserved]

Cross REFERENCE: For a table of contents, Subchapters B-Q, see volume containing Parts 40 to 399.

SUBCHAPTER A-ARMED SERVICES PROCUREMENT

REGULATIONS_(Continued)

PART 9—PATENTS, DATA, AND

COPYRIGHTS Sec. 9.000 Scope of part.

Subpart A-Patents 9.100 Scope of subpart. 9.101 (Reserved] 9.102 Authorization and consent. 9.102-1 Authorization and consent in con

tracts for supplies or services. 9.102–2 Authorization and consent in con

tracts for research or develop

ment. 9.103 Patent indemnification of Govern.

ment by contractor. 9.103-1 Patent Indemnification in formally

advertised contracts-commercial

status predetermined. 9.103-3 Patent Indemnification in negoti

ated contracts. 0.103-4 Waiver of Indemnity by the Govern.

ment. 9.104 Notice and assistance. 9.106 Classified contracts. 9.106-1 Patent applications. 9.106-2 Classified contracts relating to

atomic energy. 9.107 Patent rights under contracts for

research and development. 9.107-1 Introduction. 9.107-2 General, 9.107-3 Policy. 9.107-4 Procedures. 9.107-5 Clauses for domestic contracts. 9.107–6 Clause for foreign contracts. 9.107-7 Contracts relating to atomic energy. 9.107-8 Contracts placed for NASA. 9.107-9 Contracts relating to space. 9.108 Patent rights under contracts for

personal services. 9.109 Administration of patent rights

clauses. 9.109-1 Applicability. 9.109–2 Follow-up by Government. 9.109-3 Maintenance and use of records of

performance. 9.109-4 Conveyance of invention rights to

Government. 9.109-5 Register of Government rights in

inventions. 9.110 Reporting of royalties-anticipated

or paid. 9.111 Refund of royalties. 9.112 Adjustment of royalties.

Subpart B-Data and Copyrights 9.200 Scope of subpart. 9.201 Definitions. 9.202 Acquisition of rights in technical

data. 9.202–1 Background. 9.202-2 Policy. 9.202-3 Procedures.

Scc. 9.203 Contract clauses. 9.204 Contract clauses; special. 9.204-1 Limitation on Government's right of

publication for sale to the general

public. 9.204–2 Production of motion pictures, his

tories, and other works. 9.204-3 Histories and other works. 9.205 Contracts for acquisition of existing

works. 9.205-1 Of-the-shell purchase of books and

similar items. 9.205-2 Purchase of existing motion pic

tures or television recordings. 9.206 Contracts to be performed outside

the United States. 9.207 Data--Withholding of payment. 9.207-1 General. 9.207-2 Clauses. Subpart C-Foreign License and Technical

Assistance Agreements 9.301 General. 9.301-1 Background. 9.301-2 Policy. 9.302 Foreign license and technical assist

ance agreements between the Government and domestic CON

cerns. 9.303 Supply contracts between the Gov

ernment and a foreign govern

ment or concern. 9.304 Foreign license and technical as

sistance agreements between domestic concern and foreign gov

ernment or concern. 9.304-1 International Traffic in Arms Regu

lations. 9.304–2 Review of agreements. Subpart D-Processing of Licenses, Assignments,

and Infringement Claims 9.401 Policy. 9.402 Statutes pertaining to administra

tive claims of infringement. 9.403 Claims for copyright infringement. 9.404 Requirements for filing an admin

istrative claim for patent infringe

ment. 9.405 Indirect notice of patent infringe

ment claims. 9.408 Investigation and administrative

disposition of claims. 9.407 Notification and disclosure to

claimants. 9.408 Settlement of indemnified claims. 9.409 Patent releases, license agreements,

and assignments. 9.409–1 Required clauses. 9.409-2 Clauses to be used when applicable. 9.409-3 Additional clauses-contracts

cept running royalty contracts. 9.409-4 Additional clauses-contracts pro

viding for payment of a running royalty.

ex

Sec.

vided. The liability of the Government 9.410 Assignments.

for damages in any such suit against it 9.411 Procurement of rights in inven

may, however, ultimately be borne by tions, patents and copyrights.

the contractor or subcontractor in ac9.412 Contract format. 9.413 Recordation,

cordance with the terms of any patent

indemnity clause also included in the AUTHORITY: The provisions of this Part 9

contract, and an authorization and conIssued under 10 U.S.C. 2202, 2301-2314, E.O.

sent clause does not detract from any 9001, 6 F.R. 6787, as amended by E.O. 9298, 8 F.R. 1429, 3 CFR, 1943 Cum. Supp.

patent indemnification commitment by

the contractor or subcontractor. There$ 9.000 Scope of part.

fore, both a patent indemnity clause and This part sets forth policies, instruc- an authorization and consent clause may tions and contract clauses pertaining to

be included in the same contract. patents and copyrights in connection (b) Any provision whereby the Govwith the procurement of supplies and Ernment expressly agrees to indemnify services.

the contractor against liability for [25 F.R. 14242, Dec. 31, 19601

patent infringement shall not be in

included in a contract. Subpart A-Patents

(c) An authorization and consent § 9.100

clause shall not be used in contracts Scope of subpart.

where both complete performance and This subpart prescribes contract

delivery are to be outside the United clauses and instructions which define and

States, its possessions, or Puerto Rico. implement the policy of the Department

(29 F.R. 14833, Oct. 31, 1964) of Defense with respect to

(a) Inventions made in the course of $ 9.102-1 Authorization and consent in experimental, developmental, or research

contracts for supplies or services. work performed under Government con- The contract clause set forth below tracts;

may be included in all contracts for (b) Patent infringement liability re- uppli or services (including construcsulting from work performed by or for tion or architect-engineering work, see the Government;

§ 18.902–1 of this chapter) except: (c) Royalties payable in connection (a) When prohibited by $ 9.102(c); or with the performance of Government (b) In contracts for experimental, contracts;

developmental, or research work in (d) Security requirements covering which the clause of $ 9.102–2 is required. patent applications containing classified

AUTHORIZATION AND CONSENT (MAR. 1964) subject matter filed by contractors.

The Government hereby gives its authori. (29 F.R. 14833, Oct. 31, 1964)

zation and consent (without prejudice to $ 9.101 [Reserved]

any rights of indemnification) for all use

and manufacture, in the performance of this $ 9.102 Authorization and consent.

contract or any part hereof or any amend. (a) Under 28 U.S.C. 1498, any suit for

ment hereto or any subcontract hereunder infringement of a United States patent

(including any lower-tier subcontract), of

any invention described in and covered by based on the manufacture or use by or

a patent of the United States (1) embodied for the United States of an invention in the structure or composition of any article described in and covered by a patent of the delivery of which is accepted by the Govthe United States by a contractor or by ernment under this contract, or (11) utilized a subcontractor (including lower-tier in the machinery, tools, or methods the use subcontractors) can be maintained only

of which necessarily results from compliance against the Government in the Court of

by the Contractor or the using subcontractor

with (a) specifications or written provisions Claims, and not against the contractor

now or hereafter forming a part of this conor subcontractor, in those cases where

tract, or (b) specific written instructions the Government has authorized or con- given by the Contracting Officer directing sented to the manufacture or use of the manner of performance. The entire the patented invention. Accordingly,

liability to the Government for infringeto insure that work by a contractor or

ment of a patent of the United States shall

be determined solely by the provisions of the subcontractor under a Government con

indemnity clauses, if any, included in this tract may not be enjoined by reason of

contract or any subcontract hereunder (inpatent infringement, authorization and

cluding any lower-tier subcontract), and the consent shall be given as herein pro- Government assumes liability for all other

infringement to the extent of the authorization and consent hereinabove granted. (29 F.R. 6932, May 27, 1964, as amended at 29 F.R. 14833, Oct. 31, 1964; 32 F.R. 522, Jan. 18, 1967) $ 9.102-2 Authorization and consent in

contracts for research or develop

ment. Greater latitude in the use of patented inventions may be necessary in a contract for experimental, developmental, or research work than in a contract for supplies. Unless prohibited by $ 9.102 (c), the clause set forth below shall be included in all contracts calling exclusively for experimental, developmental, or research work, and may be included in contracts calling for both supplies and experimental, developmental, or research work where the latter work is a primary purpose of the contract. In all other contracts for both supplies and experimental, developmental, or research work, the Authorization and Consent clause of § 9.102–1 shall be used. If the clause set forth below is included in a contract, the clause in § 9.102–1 shall not be included. AUTHORIZATION AND CONSENT (JAN. 1961)

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 lowertier subcontract). [26 F.R. 2613, Mar. 28, 1961, as amended at 29 F.R. 14833, Oct. 31, 1964) § 9.103 Patent indemnification of Gov

ernment by contractor. In order that the Government may be reimbursed for liability for patent infringement arising out of or resulting from the performance of construction contracts or contracts for supplies which normally are or have been sold or offered for sale to the public in the commercial open market or which are the same as such supplies with a relatively minor modification thereof a clause providing for indemnification of the Government is to be included in such contracts in accordance with the instructions set forth below. A patent indemnity clause shall not be used in contracts:

(a) Where the Authorization and Consent clause of $ 9.102-2 applicable to research and development contracts is

authorized, except that in contracts calling also for supplies of the kind described above, a patent indemnity clause may be used with respect to such supplies;

(b) Where the contract is for supplies which clearly are not or have not been sold or offered for sale to the public in the commercial open market. However, even in the foregoing instance, a patent indemnity clause may be included where (1) in the case of contracts to be awarded by formal advertising It is desired to obtain an indemnity as to specific components or spare parts so sold or offered for sale, in which case the clause shall be modified pursuant to $ 9.103-1(b); or (2) in the case of contracts to be awarded either by formal advertising (see § 2.407-8 of this chapter) or negotiation, a patent owner contends that the prospective procurement would infringe his patent and the low bidder or offeror is willing to indemnify the Government as to such patent either (1) without increase in price on the basis that the patent is invalid or not infringed, or (11) for other good reasons;

(c) 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, in which case the instructions of $ 9.103– 1 or $ 9.103–3 are applicable; or

(d) Where the contract is for an amount of $5,000 or less, except that, as a matter of administrative convenience, the clause need not be deleted where it is a part of a standard form being used for contracts of $5,000 or less, since it is self. deleting as to such contracts. (29 F.R. 14834, Oct. 31, 1964) § 9.103-1 Patent indemnification in for.

mally advertised contracts

cial status predetermined. (a) Except as prohibited by $ 9.103 the clause set forth below is appropriate in formally advertised construction contracts and shall be included in formally advertised contracts for supplies when it has been determined in advance of issuing the invitation for bids that the supplies (or such supplies apart from relatively minor modifications to be made thereto) normally are or have been sold or offered for sale by any supplier to the public in the commercial open market.

commer

PATENT INDEMNITY (SEPTEMBER 1964) If the amount of this contract is in excess of $5,000, the Contractor shall indemnify the Government and its officers, agents, and employees against liability, including costs, for infringement of any United States letters patent (except letters patent issued upon an application which is now or may hereafter be kept secret or otherwise withheld from issue by order of the Government) 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 appli. cable laws, rules, or regulations to participate in the defense thereof; and further, such indemnity shall not apply to: (1) An infringement resulting from compliance witb specific written instructions of the Contracting Oficer 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; (11) an infringement resulting from addition to, or change in, such supplies or components furnished or construction work performed which addition or change was made subsequent to delivery or performance by the Contractor; or (111) a claimed infringement which is settled without the consent of the Contractor, unless required by final decree of a court of competent jurisdiction.

(b) Where & supply contract calls in part for specific components or spare parts which normally are or have been sold or offered for sale by any supplier to the public in the commercial open market, or such items with relatively minor modifications, the Patent Indemnity clause of paragraph (a) of this section shall be modified by adding to the end of the clause either of the following sentences:

The foregoing shall not apply to the fol. lowing:

(Specifically identify the items to be excluded from the Patent Indemnity clause) (Sept. 1964)

$ 9.103-3 Patent indemnification in ne

gotiated contracts. A patent indemnity clause is not required to be included in negotiated contracts, but may be included in negotiated construction contracts, as authorized in $ 9.103(b) (2), and in negotiated contracts for supplies where such supplies normally are or have been sold or offered for sale to the public in the commercial open market, or are such supplies with relatively minor modifications made thereto. Ordinarily, the Contracting, Oficer, in consultation with the contractor, should be able to determine whether the supplies being purchased normally are on sale or have been sold or offered for sale to the public in the commercial open market.

(a) Subject to the foregoing and to the prohibitions in 9.103, the clause set forth in $ 9.103–1(a) is approved for use in negotiated contracts for construction work or supplies.

(b) Where a supply contract calls in part for specific components or spare parts which normally are or have been sold or offered for sale to the public in the commercia! open market, or such items with relatively minor modifications, the patent indemnity clause of $ 9.103–1(a) shall be modified by adding to the end of the clause either of the following sentences:

(SEPTEMBER 1964) The foregoing shall not apply to the following: (Specifically identify the items to be excluded from the Patent Indemnity clause). or

(SEPTEMBER 1964) The foregoing shall apply only to the following: (Specifically identify the items to which the Patent Indemnity clause applies). (33 F.R. 7399, May 18, 1968] $ 9.103–4 Waiver of indemnity by the

Government. In the event that it is desired to exempt one or more specified United States patents from the patent indemnity clause of $ 9.103–1, authority shall first be obtained from the Secretary concerned or his authorized representative, and the following clause shall be included in the contract, in addition to the patent indemnity clause:

WAIVER OF INDEMNITY (JAN, 1956) Any provision of this contract to the contrary notwithstanding,

the Government bereby authorizes and consents to the use

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