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permit other procuring activities to determine whether they have an interest in the matter.
(5) A copy of the communication from the claimant, if any.
(6) A copy of the Notice of Appearance required by $ 598.105–52 (a) (2).
(c) The Chief, Patents Division, upon receipt of the request for clearance, shall determine, so far as indicated by his files, the Government Register of Patent Rights, and the Department of Justice, whether the Department of the Army or any other department or agency has investigated or settled, or received a report or notice of, a claim pertaining to the same subject matter and whether a Government license may be involved, and shall then grant such clearance in writing as appears proper.
(d) When clearance has been granted, the Designee shall proceed in accordance with $ 598.105-52 (a) (4) through (6).
(e) The Chief, Patents Division, shall send copies of the request for clearance and of the clearance to the chief patent or legal officer of each technical service having a probable interest in the matter. Each such oficer shall promptly investigate the procurement in his service and report to the Designee to whom clearance has been issued of the interest, if any, of his service in the matter and of any pertinent information available. (Negative reports should be made if applicable.) A positive report shall include a description (with drawings where necessary), of the procured materiel suficient to enable the Designee to determine whether the procurement constitutes infringement under such claim, together with the oficer's opinion on the question of infringement and the reasons therefor. The Chief, Patents Division, also shall notify the Departments of Navy and Air Force of each such claim and request those Departments to notify the Designee (with informational copies to the Chief, Patents Division) of any pertinent information available to them. No claim shall be settled or final report rendered (pursuant to § 598.105–56) until reports are received by the Designee from each chief patent or legal officer notified of the clearance, unless adequate explanation is presented.
$ 598.105-56 Final report by designee where no settlement of claim is made. A final report (in duplicate) of the results of the investigation made on behalf of
the Department, including recommendations and conclusions of the Designee, shall be made by him to the Chief, Patents Division, with respect to each such claim (whether or not such claim is covered by an indemnity agreement) in which settlement is believed to be inadvisable, or the Designee has been unable to settle upon terms deemed reasonable by him. A copy of the final report shall be forwarded by the Designee to the chiefs of the chiefs of the interested technical services at this time.) Each such report shall be dated and clearly marked "Final Report," and shall include so far as applicable and practicable the following information:
(a) Numbers and dates of all contracts and subcontracts for procurement of the item in question, together with the name and address of each Contractor and subcontractor concerned, and the text of each Contractor's agreement, if any to indemnify the Government against liability for infringement, or a statement that there is no such indemnity agreement. This information shall include contracts of any other technical service concerned.
(b) Extent and dates of alleged infringement.
(c) The text of any contract clause granting (or if there is no such clause any other information relating to) authorization and consent by the Government to the manufacture or use of the article, material, design, or process upon which such claim is based.
(d) Copies of patents alleged to be infringed.
(e) Result of title search in the Patent Office Assignment Records and examination of the Government Register or Patent Rights.
(f) A full and complete disclosure of the alleged infringing device, material, design or process (including detailed description thereof, together with drawings, sketches, photographs, and specimens in proper cases) sufficient to determine whether infringement is present.
(g) Report of date and extent of searches, if any, in each of the following categories:
(1) Prior art patents and publications.
(2) Pending applications filed by the service conducting the investigation.
(3) Prior public uses.
(h) Copies of any prior art patents and publications, and full and complete
description (and where practicable, a drawing, sketch, photograph, or specimen) of any prior uses relied upon by the Designee.
(i) Statement of the extent to which royalties, if any, have been adjusted by the Department. (See $ 9.111 of this title and $ 598.111.)
(j) Statement as to whether or not the inventor or patent owner was a Government employee in a position to order, influence, or induce use of the invention by the Government.
(k) Statement as to whether or not the invention was made during the time the inventor was in the employment or service of the Government, and if so, a description of the inventor's official functions at the time and a statement as to whether Government time, materials, or facilities were used.
(1) Names and addresses of prospective witnesses (fact and expert) and, where pertinent to validity or infringement, signed statements of witnesses. Where a witness refuses to sign a statement, & statement of the interviewing officer setting forth the facts which the witness may be expected to state if called to testify.
(m) Conclusions regarding infringement (with respect to all departmental procurements involved) and reasons therefor.
(n) Conclusions regarding validity and reasons therefor, unless the Designee's conclusions given under paragraph (m) of this section are that in his opinion there is no infringement.
(0) Conclusions regarding the Government's liability, the estimated money value of the claim, and an estimate of future procurement involving possible increase of the claim.
(p) Summary of unsuccessful negotiations for settlement, if any.
$ 598.105-57 Action and authority of the Chief, Patents Division. (a) The Chief, Patents Division, shall coordinate and expedite the processing of such claims and may request status reports from the Designees for this purpose.
(b) The Chief, Patents Division, shall review each final report and, where such claim was asserted in a communication, shall write a letter to the claimant or his representative (with copies to the Designee and chiefs of interested technical
services) stating the final conclusions of the Department.
(c) Upon reviewing the final report, the Chief, Patents Division, shall prepare a supplemental report (and send a copy to the Designee) stating any conclusions supplemental to those stated in the final report, if such supplemental report is deemed advisable, and stating any conclusions which differ from those of the Designee, with recommendations of appropriate action.
(d) When final action has been taken on behalf of the Department, the Chief, Patents Division, shall so advise the Attorney General.
$ 598.105-58 Available procedure for settlement of claims and procurement of invention and patent rights. (a) The Designee to whom the claim has been cleared may, subject to the availability of appropriations and allotments of funds in his service, settle such claims in accordance with these paragraphs, by execution of a contract or release and license, or release and assignment.
(b) No contract shall be made which includes a release of such claim, or a license, which will inure to the benefit of a Contractor who has agreed to indemnify the Government ($ 9.103 of this title and § 598.103) by releasing or discharging such Contractor in whole or in part from his obligation of indemnity, unless such Contractor is made a party to the contract and appropriate arrangements are made to the end that the Contractor shall pay all money consideration flowing to the claimant or potential claimant which is attributable to that part of the release or license which benefits the Contractor.
$ 598.105–59 Settlement with foreign claimants. No contract of settlement of patent infringement liability or other liability for use of inventions shall be made with a national of a government which is within the scope of the Mutual Defense Assistance program, without first obtaining the written approval of the Chief, Patents Division.
$ 598.105-60 Fiscal procedures. (a) An agreement to pay a fixed amount for the purchase of a paid up license and release or an assignment and release, or a release either by way of lump sum payment or an amount determinable at the time of execution of the contract, is subject to the provision that allotment of funds made for supplies will not be exceeded. Officers charged with making such agreements shall submit prior to incurring any obligation, the proposed agreements to the cognizant fiscal officer for verification as to sufficiency of funds for that purpose. The following statements shall be included on the face of the contract: “The supplies and services to be obtained by this instrument are authorized by, are for the purpose set forth in, and are chargeable to the following allotments, the available balances of which are sufficient to cover the cost of the same."
(b) An agreement to pay running royalties on future procurement proportioned to use is not subject to the provision mentioned in paragraph (a) of this section.
(c) Any fiscal questions involving patent matters may be referred to the Chief, Patents Division, for opinion.
$ 598.105–61 Approval of certain contracts-(a) Contracts requiring approval. Approval by the Chief, Contracts Branch, is required of all contracts made under any of the following circumstances:
(1) The contract provides for total payments by the Government of $25,000 or more.
(2) The scope of the license is limited to:
(i) A term less than the life of any patent involved;
(1) Any particular Government purpose;
(iii) Less than all Government agencies on the same terms; or
(iv) Disposition rights otherwise than according to law.
(3) The rights obtained are a release of past infringement only.
(b) Submission for approval. Where approval of a contract is required by paragraph (a) of this section, or because the contract contains a deviation from the requirements of $ 598.105 the Designee shall submit the contract in the number of copies for which approval is sought (plus one unexecuted copy) to the Chief, Contracts Branch, through the Chief, Patents Division. The contract shall be accompanied by a memorandum of facts signed by the Designee setting forth, where pertinent:
(1) Identification and brief description of the subject matter of the patent, patent application, or invention involved in the claim being settled.
(2) Date of clearance required by $ 598.105–55.
(3) A brief statement of the Designee's conclusions regarding validity and infringement and the reasons therefor.
(4) A statement of the extent of Government use of the invention(s), including the estimated money value of the claim, if any, and an estimate of future procurement, if any, involving possible increase of the amount of the claim.
(5) Specific reference to the sections of this subchapter necessitating the requested approval.
(6) Reasons for any deviations from any prescribed contract clause, and precise statement of such deviation.
(7) Recommendation, with supporting reasons, that the contract be approved.
$ 598.105-62 Contract distribution(a) General. The Designee will obtain the original and at least one executed copy of each release, license, and assignment made in accordance with these paragraphs. The original shall be forwarded by the Designee (unless the contract does not involve the payment of money to the Contractor) to Audits Branch, United States General Accounting Office, Fort Benjamin Harrison, Indianapolis 49, Indiana. The executed copy, together with a second copy (photostatic preferred), shall be transmitted without delay by the Designee to the Chief, Patents Division for recording in the United States Patent Office. The memorandum of transmittal shall include the Designee's recommendation whether the instrument should be filed in the public register, departmental register, or the secret register. This memorandum shall also set forth (1) the name of the claimant; name of the releasor, licensor, or assignor; and name of the patentee or inventor; (2) the patent number or patent application serial number; and (3) a statement that the instrument effects settlement of the claim for which clearance was granted.
(b) Contracts providing for payment or a running royalty. A copy of each license which provides for the payment of a running royalty shall be transmitted by the Designee to the chiefs of the technical services. Receipt of such copy shall constitute notice that future procurement of the licensed subject matter requires the payment of royalties to the licensor. Where necessary, the chiefs of the technical services shall notify procurement and price analysis offices affected.
$ 598.105-63 Disclosure of information to claimants and their representatives. In order that settlements advantageous to the Government may be secured, any Designee or his representative may (subject to the provisions of $ 598.105-54 and considerations of military security), in the performance of his official duties and when he has reason to believe that such action would be to the advantage of the United States, disclose to the claimant or his authorized representative any facts or matters of evidence which appear to bear upon his claim or its value.
$ 598.105-64 Contract clauses and forms. The following clauses and forms are applicable to contracts for the settlement of infringement claims.
(a) Mandatory contract clauses(1) Certain clauses. Section 7.103–19 of this title-Officials Not to Benefit, $ 7.103–20 of this title-Covenant Against Contingent Fees, and $ 7.104-16 of this title-Gratuities, shall be included in every release, license, and assignment executed by the Government.
(2) Assignment of claims. Section 7.10348 of this title-Assignment of Claims shall be included in every contract which calls for payments by the Government aggregating $1,000 or more.
(3) Disputes. Section 7.103–12 of this title-Disputes shall be included in every contract which calls for payments by the Government aggregating $20,000 or more, and is recommended for inclusion in other contracts.
(4) Release of past infringement. The following clause shall be included in every contract made in accordance with these paragraphs which grants to the Government under an issued patent:
RELEASE OF PAST INFRINGEMENT Contractor agrees to and does hereby release each and every claim and demand which Contractor now has or may hereafter have against the Government, its officers, agents, servants and employees, for infringement by or for the Government of ((1)) any of the patents and applications for patent specifically identified in this contract, 1(2) and any other patent or application for patent owned or hereafter acquired by Contractor, insofar as and to the extent only as such other patent or patent application covers the manufacture, use or disposition of (description of subject matter) ), by rea
son of the manufacture, use, sale, or other disposition of any article or material, or the use of any process covered by said patents or applications for patent, occurring prior to the date of this contract, and by reason of the use, sale, or other disposition thereafter of any article or material manufactured or contracted for prior to the date of this contract.
NOTE: Bracketed portions of the foregoing clause may be omitted when not appropriate cr not encompassed by the release as negotiated.
(5) Non-estoppel. The following clause shall be included in every contract made in accordance with these paragraphs, except that it may be omitted in contracts not executed by the Government made pursuant to $ 598.1508 if the contract conveys to the Government (i) a release of not substantially less scope than that set forth in subparagraph (4) of this paragraph, and (ii) & license for the full term of the licensed patents and patents issued on the patent applications or an assignment of not substantially less scope (except for foreign rights) than that set forth in paragraph (d) of this section:
NON-ESTOPPEL Contractor agrees that the Government shall not be estopped at any time to contest the enforceability, validity or scope of, or the title to, any patent or patent application herein licensed, but this provision shall not be deemed to modify or avoid the obligation of the Government to pay royalties as elsewhere herein provided).'
(6) Protection against unjust payments. The following clause shall be included in every contract providing for payment of a running royalty:
PROTECTION AGAINST UNJUST PAYMENTS
(a) If any license has been or shall hereafter be granted under substantially the same patents and authorizing substantially the same acts which are authorized under this contract within the United States, on royalty terms which are in any respect more favorable to the licensee than those contained herein, the Government shall be en. titled to the benefit of such more favorable terms with respect to all royalties accruing under this license after the date such more favorable terms become effective, and contractor shall promptly notify the Secretary of the Army in writing of the granting of such more favorable terms.
i The word "licensed" 18 appropriately changed to "assigned" in assignment contracts.
· The bracketed part is to be omitted except in contracts for payment of running royalties.
tract not providing for payment of a running royalty:
The license hereby granted shall remain in full force and effect for the full term of the patent(s) referred to above (and any and all patents hereafter issued on applications for patent referred to, above.)
(b) The Government shall have the right, notwithstanding any other provision of this contract, to terminate the within license by giving notice in writing to Contractor specifying a date when such termination is to be effective; termination of said license in the manner aforesaid may, as specified in such notice, take effect either in whole or insofar as sald license applies to any specified service or command of the Department of the Army or to any specified article, material or method, or to the extent that rights are granted under any specified patent or the specified claims of any patent; and if any part of the said license is thus terminated the rights of the Government to enjoy or to terminate other parts thereof shall be in no wise prejudiced thereby.
(c) In the event any claim of any patent hereby licensed is construed or held invalid by decision of a court of competent jurisdiction, the requirement to pay royalties under this contract insofar as it arises solely by reason of such claim, and any other claim not materially different therefrom, shall we interpreted in conformity with the court's decision as to the scope or validity of such claims: Provided, however, that in the event such decision is modified or reversed on appeal, the requirements to pay royalties under this license shall be interpreted in conformity with the final decision rendered on such appeal.
(b) Suggested clauses; contracts except running royalty contracts—(1) License grant. The following clause is a suggested form for expressing the license grant in all contracts except those providing for payment of a running royalty:
LICENSE (a) Contractor agrees to and does hereby grant and convey to the Government, an irrevocable, nonexclusive, nontransferable and paid up license under the following patent(s) (and application(s) for patent) to practice and cause to be practiced for the government any and all of the inventions thereof in the manufacture, use and disposition of any article or material, and in the use of any method, in accordance with law: U.S. Patent No.
Date Application serial No.
Filing date (together with corresponding foreign patents and applications for patent, insofar as Contractor has the right to grant licenses thereunder).
(b) 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.
(2) License term. Either of the following clauses is suggested as a form for expressing the license term in any con
The license hereby granted shall terminate on the day of
19.--; 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.
(c) Suggested clauses; contracts providing for payment of a running royalty. In addition to any clause required in accordance with paragraph (a) of this section, the following clauses are suggested for use, where appropriate, in contracts providing for payment of a running royalty:
(1) License grant. No departments other than the Department of the Army shall be obligated to pay royalties unless the contract is signed on behalf of such departments. Accordingly, the following license grant clause, appropriately limited to the practice of the invention by or for the Department of the Army, iş suggested for use:
LICENSE (a) Contractor agrees to and does hereby grant and convey to the Government, as represented by the Secretary of the Army, an irrevocable, nonexclusive, nontransferable license under the following patent(s) (and application(s) for patent] to practice by the Department of the Army and cause to be practiced for the Department of the Army any and all of the inventions thereof in the manufacture, use and disposition of any article or material, and in the use of any method, in accordance with law: U. S. Patent No.
Date Application serial No.
Filing date (together with corresponding foreign patents and applications for patent, so far as contractor bas the right to grant licenses thereunder).
(b) 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.