PROCUREMENT REGULATIONS 9-9.109-6 (C) Within 6 months after filing the application or within 6 months after submitting the invention disclosure if the application has been filed previously, deliver to the Patent Counsel a duly executed and approved instrument fully confirmatory of all rights to which the Government is entitled, and provide DOE an irrevocable power to inspect and make copies of the patent application filed. If, however, a waiver request is pending, delivery of the confirmation instrument may be delayed until a determination of the waiver request is made; (D) Provide the Patent Counsel with a copy of the patent within 2 months after a patent is issued on the application; and (E) Not less than 30 days before the expiration of the response period for any action required by the Patent and Trademark Office, notify the Patent Counsel of any decision not to continue prosecution of the application and deliver to the Patent Counsel executed instruments granting the Government a power of attorney. (iii) For each invention in which the contractor initially elects pursuant to (i)(1) of this section not to retain the rights waived, the contractor shall inform the Patent Counsel promptly in writing of the date and identity of any on sale, public use, or public disclosure of the invention which may constitute a statutory bar under 35 U.S.C. 102, which was authorized by or known to the contractor, or any contemplated action of this nature. (6)(i) With respect to each invention in which the contractor elects pursuant to (i)(1) of this section to retain the rights waived in a foreign country, or in which the contractor or inventor has obtained a waiver of foreign rights on an identified invention, the contractor or inventor shall have a patent application filed on the invention in that country, in accordance with applicable statutes and regulations, and within one of the following periods: (A) Eight months from the date of a corresponding United States application filed by the contractor or inventor, or if such an application is not filed, 6 months from the date the invention is submitted in a disclosure pursuant to paragraph (e)(2)(i) of the clause of §99.107-5(a); (B) Six months from the date a license is granted by the Commissioner of Patents and Trademarks to file foreign applications where such filing has been prohibited by security reasons; or (C) Such longer period as may be approved by the Patent Counsel. (ii) The contractor or inventor shall notify the Patent Counsel promptly of each foreign application filed and, upon written request, shall furnish an English version of the application without additional compensation. (7) The contractor or inventor shall, three years after a waiver is effective as to an invention, and at three-year intervals thereafter, and when specifically requested by the Patent Counsel, furnish Patent Counsel a report setting forth: and (i) The commercial use that is being made, or is intended to be made, of said invention, (ii) The steps taken to bring the invention to the point of practical application or to make the invention available for licensing. (8) The Government shall retain at least an irrevocable, nonexclusive, paid-up license to make, use, and sell the invention throughout the world by or on behalf of the Government (including any Government agency) and States and domestic municipal governments, unless the Head of the Agency or designee determines that it would not be in the public interest to acquire the license for the States and domestic municipal governments. (9) The Head of the Agency or designee has the right to require the granting of a nonexclusive, exclusive, or partially exclusive license to a responsible applicant or applicants, upon terms reasonable under the circumstances: 9-9.109-6 U.S. DEPARTMENT OF ENERGY tions; (i) To the extent that the invention is required for public use by Governmental regula (ii) As may be necessary to fulfill health, safety or energy needs; or (iii) Such other purposes as may be stipulated in the applicable agreement. (10) The Head of the Agency or designee has the right to terminate such waiver in whole or in part unless the recipient of such waiver demonstrates to the satisfaction of the Head of the Agency or designee that effective steps have been taken, or within a reasonable time thereafter are expected to be taken, necessary to accomplish substantial utilization of the invention. (11) The Head of the Agency or designee has the right, commencing four years after a waiver is effective as to an invention, to require the granting of a nonexclusive or partially exclusive license to a responsible applicant or applicants, upon terms reasonable under the circumstances, and in appropriate circumstances to terminate the waiver in whole or in part, following a hearing upon notice thereof to the public, upon a petition by an interested person justifying such hearing; (i) If the Head of the Agency or designee determines upon review of such material as is relevant, and after the recipient of the waiver or other interested person has had the opportunity to provide such relevant and material information as the Head of the Agency or designee may require, that such waiver has tended substantially to lessen competition or to result in undue market concentration in any section of the United States in any line of commerce to which the technology relates; or (ii) The recipient of the waiver demonstrates to the satisfaction of the Head of the Agency or designee at such hearing that effective steps have been taken, or within a reasonable time thereafter are expected to be taken, necessary to accomplish substantial utilization of the invention. (j) Termination. (1) Any waiver may be terminated at the discretion of the Head of the Agency or designee, in whole or in part, if the request for waiver is found to contain false material statements or nondisclosure of material facts, and such were specifically relied upon in reaching the waiver determination. (2) Any waiver, as applied to particular inventions, may be terminated at the discretion of the Head of the Agency or designee, in whole or in part, if the requirements set forth in paragraph (i) of this section (terms and conditions of the waivers) have not been fulfilled and such failure is determined by the Head of the Agency or designee to be material and detrimental to the interests of the United States and the general public. (3) Prior to terminating a waiver under paragraph (j)(1) or (j)(2) of this section, the recipient of the waiver will be given written notice of the intention to terminate the waiver, the extent of such proposed termination and the reason therefor, and a period of 30 days, or such longer period as the Head of the Agency or designee shall determine for good cause shown in writing, to show cause why the waiver should not be so terminated. (4) All terminations of waivers shall be subject to the rights granted in paragraph (c)(1) of the clause of §9-9.107-5(f), and termination shall normally be partial in nature, requiring the waiver recipient to grant nonexclusive or partially nonexclusive licenses to responsible applicants upon terms reasonable under the circumstances. (k) Effective date. Waivers shall be effective on the following dates: PROCUREMENT REGULATIONS 9-9.110 (1) For advance waivers of identified inventions, i.e., inventions conceived prior to the effective date of the contract, on the effective date of the contract, even though the advance waiver may have been requested after that date; (2) For identified inventions under advance waivers, i.e., inventions conceived or first actually reduced to practice after the effective date of the contract, on the date the invention is reported with the election to retain rights as to that invention; and (3) For waivers of identified inventions (other than under an advance waiver), on the date of the letter notifying the requestor that the waiver has been granted. §9-9.110 Reporting of royalties. In order that DOE may be informed regarding royalty payments to be made by a contractor in connection with any procurement, construction, or operation where the amount of the royalty payment is reflected in the contract price, or is to be reimbursed by the Government, the negotiator shall: (a) Obtain from the offeror information concerning any royalty payments expected to be made in connection with the proposed procurement, construction, or operation, together with the names of the licensors and either the patent numbers involved or such other information as will permit identification of the patents and patent applications as well as the basis on which the royalties are to be paid; (b) Obtain from the offeror a certificate that the contract price includes no amount representing the payment of royalty by the offeror directly to others in connection with the performance of the contract; or (c) Insert in the contract the clause set forth below: REPORTING OF ROYALTIES If this contract is in an amount which exceeds $10,000 and if any royalty payments 9-9.200 U.S. DEPARTMENT OF ENERGY Subpart 9-9.2 Technical Data and Copyrights §9-9.200 Scope of subpart. This subpart sets forth DOE's policy, procedures, and contract clauses with respect to the acquisition and use of technical data and copyrights in contracts or subcontracts entered into, with or for the benefit of the Government. 89-9.201 Definitions. For the purpose of this subpart, the following terms have the meanings set forth below: (a) "Technical data" means recorded information, regardless of form or characteristic, of a scientific or technical nature. It may, for example, document research, experimental, developmental, demonstration, or engineering work or be usable or used to define a design or process or to procure, produce, support, maintain, or operate material. The data may be graphic or pictorial delineations in media such as drawings or photographs, text in specifications or related performance or design type documents, or computer software (including computer programs, computer software data bases, and computer software documentation). Examples of technical data include research and engineering data, engineering drawings and associated lists, specifications, standards, process sheets, manuals, technical reports, catalog item identification, and related information. Technical data, as used in this subpart, do not include financial reports, cost analyses, and other information incidental to contract administration. (b) "Proprietary data" means technical data which embody trade secrets developed at private expense, such as design procedures or techniques, chemical composition of materials, or manufacturing methods, processes, or treatments, including minor modifications thereof, provided that such data: (1) Are not generally known or available from other sources without obligation concerning their confidentiality; (2) Have not been made available by the owner to others without obligation concerning their confidentiality; and (3) Are not already available to the Government without obligation concerning their confidentiality. (c) "Contract data" means technical data first produced in the performance of the contract, technical data which are specified to be delivered under the contract, technical data that may be called for under the Additional Technical Data Requirements clause of the contract, if any, or technical data actually delivered in connection with the contract. (d) "Unlimited rights" means rights to use, duplicate or disclose technical data, in whole or in part, in any manner and for any purpose whatsoever, and to permit others to do so. §9-9.202 Acquisition and use of technical data. $9-9.202-1 General. (a) The provisions herein pertain to research, development, demonstration and supply contracts, and contracts for the operation, design, or construction of Government-owned facilities which are covered by §9-9.202-4. Under DOE's broad charter to perform research, development, and demonstration work, in both nuclear and nonnuclear fields, and to meet the objectives stated in §9-9.202-2 below, DOE has extensive needs for technical data. The satisfaction of these needs and the achievement of DOE's objectives through a sound data policy are found in the balancing of the needs and equities of the Government, its contractors, and the general public. PROCUREMENT REGULATIONS 9-9.202-1 (b) It is important to keep a clear distinction between contract requirements for the delivery of technical data on the one hand, and rights in technical data on the other. The legal rights which the Government acquires in technical data in DOE contracts (other than “facilities” contracts) are set forth in the Rights in Technical Data (long form) clause of §9-9.202–3(c)(2). However, this clause does not obtain for the Government the delivery of any data whatsoever. Rather, known requirements for the technical data to be delivered by the contractor shall be set forth as part of the contract (e.g. in the statement of work). An Additional Technical Data Requirements clause is included in this subpart to enable the Contracting Officer to require the contractor to furnish additional technical data, the requirement for which was not known at the time of contracting. There is, however, a built-in limitation on the kind of technical data which a contractor may be required to deliver under either the contract statement of work or the Additional Technical Data Requirements clause. This limitation is found in the withholding provision of paragraph (e) of the Rights in Technical Data (long form) clause of §9-9.2033(e)(2) which provides that the contractor need not furnish "proprietary data." It is specifically intended that the contractor may withhold "proprietary data" even though a requirement for technical data specified in the statement of work or called for pursuant to the Additional Technical Data Requirements clause would seemingly require the furnishing of proprietary data. This withholding of proprietary data is the primary means by which the contractor may protect its proprietary position. (c) There are, however, two situations where the Government, or its representative, may need to have limited access to a contractor's proprietary data. First, paragraph (f) of the Rights in Technical Data (long form) clause gives the Contracting Officer's representatives the limited right to inspect at the contractor's facility the contractor's proprietary data which were withheld from delivery under paragraph (e) of the clause for the purpose of verifying that such data were properly withheld or to evaluate work performance. In carrying out the inspection, normally the Contracting Officer's representative is a DOE employee although he may be an employee of a DOE contractor acting under an agreement to treat in confidence the proprietary data to be inspected. However, where the contractor whose data are to be inspected demonstrates that there would be a possible conflict of interest if the inspection were made by such a contractor employee, the Contracting Officer's representative may be limited to a DOE employee. Paragraph (f) has a built-in exclusion from these inspection rights for "specific items of proprietary data" when they are so specified in the contract schedule. Such exclusions limit even DOE's minimum rights of evaluating contract work performance and verifying that technical data withheld by the contractor is proprietary in fact. Such exclusions should be sparingly used, and only in situations where program personnel stipulate to the fact that DOE has no need for access to the specified items to be excluded from paragraph (f), i.e., that the nondisclosure and nonaccessibility will not adversely affect the DOE program involved. It should also be noted that paragraph (f) permits exclusion of "specific items" of proprietary data and, accordingly, should not be used to exclude classes of technical data or all technical data pertaining to specific items or processes or classes of items or processes. The second situation, where the Government may have limited access to a contractor's proprietary data, is provided in optional paragraph (g) of the Rights in Technical Data (long form) clause. When used, optional paragraph (g) provides the Government the right to require the contractor to furnish with limited rights the proprietary data previously withheld under paragraph (e). In this situation, the limited rights in proprietary data and the Government's obligation for limited use and disciosure of such data as set forth in the Rights in Technical Data (long form) clause provides the means by which the contractor protects its proprietary position. Paragraph (g) will be used only where it is determined by DOE that for programmatic reasons there is a need for the delivery of proprietary data to the Government. Where proprietary data is to be delivered under paragraph (g) and subparagraph (a) or (b) of the limited rights legend is to be applied to the data, the contractor may, if he can show the possibility of a conflict of interest regarding disclosure of such data to other contractors, limit or modify subparagraphs (a) or (b) as set forth in 89-9.1023(e)(3), to exclude or include certain contractors. |