Sec. 9.410

9.411

9.412

9.413

Assignments.

Procurement of rights in inven-
tions, patents and copyrights.
Contract format.
Recordation.

AUTHORITY: The provisions of this Part 9 issued under 10 U.S.C. 2202, 2301-2314, E.O. 9001, 6 F.R. 6787, as amended by E.O. 9296, 8 F.R. 1429, 3 CFR, 1943 Cum. Supp.

§ 9.000 Scope of part.

This part sets forth policies, instructions and contract clauses pertaining to patents and copyrights in connection with the procurement of supplies and services.

[25 F.R. 14242, Dec. 31. 19601

Subpart A-Patents

§ 9.100 Scope of subpart.

§ 9.101 § 9.102

[Reserved]

Authorization and consent.

(a) Under 28 U.S.C. 1498, any suit for infringement of a United States patent based on the manufacture or use by or for the United States of an invention described in and covered by a patent of the United States 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 the manufacture or use of the patented invention. Accordingly, to insure that work by a contractor or subcontractor under a Government contract may not be enjoined by reason of patent infringement, authorization and consent shall be given as herein pro

vided. The liability of the Government for damages in any such suit against it may, however, ultimately be borne by the contractor or subcontractor in accordance with the terms of any patent indemnity clause also included in the contract, and an authorization and consent clause does not detract from any patent indemnification commitment by the contractor or subcontractor. Therefore, both a patent indemnity clause and an authorization and consent clause may be included in the same contract.

(b) Any provision whereby the Government expressly agrees to indemnify the contractor against liability for patent infringement shall not be inincluded in a contract.

(c) An authorization and consent clause shall not be used in contracts where both complete performance and delivery are to be outside the United States, its possessions, or Puerto Rico. [29 F.R. 14833, Oct. 31, 1964]

§ 9.102-1

Authorization and consent in contracts for supplies or services.

The contract clause set forth below may be included in all contracts for supplies or services (including construction or architect-engineering work, see § 18.902-1 of this chapter) except:

(a) When prohibited by § 9.102(c); or (b) In contracts for experimental, developmental, or research work in which the clause of § 9.102-2 is required. AUTHORIZATION AND CONSENT (MAR. 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 or 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 (1) 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 by the Contracting Officer directing the manner of performance. The entire liability to the Government for infringement of a patent of the United States shall be determined solely by the provisions of the indemnity clauses, if any, included in this contract or any subcontract hereunder (including any lower-tier subcontract), and the Government assumes liability for all other

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 Government 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:

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 (i) without increase in price on the basis that the patent is invalid or not infringed, or (ii) 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 § 9.1031 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 selfdeleting as to such contracts.

[29 F.R. 14834, Oct. 31, 1964]

§ 9.103-1 Patent indemnification in for. mally advertised contracts commercial 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.

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 applicable laws, rules, or regulations to participate in the defense thereof; and further, such indemnity shall not apply to: (1) An infringement resulting 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; (ii) 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 (iii) 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 a 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 following:

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

or

The foregoing shall apply only to the following:

(Specifically identify the items to which the Patent Indemnity clause applies) (Sept. 1964)

[29 F.R. 14834, Oct. 31, 1964, as amended at 30 F.R. 1743, Feb. 9. 1965]

66-071-72- -2

§ 9.103-3

Patent indemnification in negotiated 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, Officer, 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 commercial 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. 1955) Any provision of this contract to the contrary notwithstanding, the Government hereby authorizes and consents to the use