PROCUREMENT REGULATIONS 9-9.107-4 1971 (36 F.R. 16887-16892). Section 152 of the Atomic Energy Act provides that the title to inventions useful in the nuclear energy field, made or conceived in the course of or under a contract, subcontract, or arrangement entered into for the benefit of the Commission (now DOE), shall be vested in the Government. Government rights in such an invention may be waived consistent with the policy of Section 152. In a similar manner. Section 9 of the Federal Nonnuclear Energy Research and Development Act provides that title to inventions made or conceived in the course of or under DOE contracts other than in the nuclear energy field shall vest in the Government, and that all or part of the rights of the Government in such inventions may be waived if it is determined, in conformity with the provisions of Section 9, that the interests of the United States and the general public will best be served by such waiver. §9-9.107-2 (Reserved). §9-9.107-3 Policy. (a) Whenever any invention is made or conceived in the course of or under any contract of DOE, title to such invention shall vest in the United States unless the Head of the Agency or designee waives all or any part of the rights of the United States in the invention. While waivers are to be granted only in conformity with the specific minimum considerations and under the carefully delineated conditions set forth in §9-9.109-6, it is recognized that waivers comprise a necessary part of the commercialization incentives available to DOE. It is intended, therefore, that waivers will be provided in appropriate situations to encourage industrial participation and foster rapid commercial utilization in the overall best interest of the United States and the general public. With regard to any waivers granted under this Part 9-9, DOE shall maintain a publicly available, periodically updated record of such waiver determinations. (b) In contracts having as a purpose the conduct of research, development or demonstration work and in other special contracts, the Government shall normally acquire title in and to any invention or discovery conceived or first actually reduced to practice in the course of or under the contract, allowing the contractor to retain a nonexclusive, revocable, paid-up license in the invention and the right to file and retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor's nonexclusive license retained in the invention may be revoked or modified by DOE only to the extent necessary to achieve expeditious practical application of the invention pursuant to an applicaton for and the grant of an exclusive license in the invention. (c) In contracts having as a purpose the conduct of research, development, or demonstration work and in other special contracts, the Government may have to acquire the right to require licensing of background patent rights by the contractor to insure reasonable public availability and accessibility necessary to practice the subject of the contract in the fields of technology specifically contemplated in the contract effort. The need for background patent rights and the particular rights that should be obtained for either the Government or the public will depend upon the type, purpose, and scope of the contract effort, and the cost to the Government of obtaining such rights. Accordingly, the background patent rights provision which will be appropriate for many contract situations is included in the Patent Rights clause. (d) Nothing in this Part 9-9 shall be deemed to convey to any individual, corporation or other business organization immunity from civil or criminal liability, or to create defenses to actions under the antitrust laws. §9-9.107-4 Procedures. (a) Selection of Patent Rights clause. (1) Whenever a contract, subcontract or other arrangement has as a purpose the conduct of research, development, or demonstration work, the operation of a Government-owned research or production facility, the furnishing of architect-engineer, design or other special services, or the coordination and direction of the work of others, the Contracting Officer stall 9-9.107-4 U.S. DEPARTMENT OF ENERGY include in the proposed contract either the Patent Rights clause of §9-9.107-5(a), or the clause of §9-9.107-6. The clause set forth in §9-9.107-6 may be used only in contracts calling for basic or applied research work with nonprofit or educational institutions or in certain consultant contracts as set forth in paragraph (a)(5) of this section. (2) The Patent Rights clauses of §9-9.107-5(a) and §9--9.107-6 provide that the Government shall acquire title to each invention made (i.e., conceived or first actually reduced to practice) in the course of or under the contract. However, the contractor shall retain in such invention a nonexclusive, revocable license and, subject to DOE security requirements and regulations, may file and retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor or the inventor may also retain greater rights than these after an invention has been identified and reported to DOE if the Secretary or designee determines that the interests of the United States and the general public will best be served by a waiver of such rights, utilizing the considerations set forth in §9-9.109-6. (3) The Patent Rights clauses shall normally include the provisions set forth in paragraph (1) of the clause in §9-9.107-5(a) and paragraph (f) of the clause in §9-9.107-6. If the Contracting Officer determines that the work to be performed under the contract would not be useful in the production or utilization of special nuclear material or atomic energy, paragraphs (1) or (f) may be omitted. (4) The primary missions of DOE may require that certain rights in the contractor's privately developed background patents be acquired for the Government's future production, research, development, and demonstration projects. Similar rights may also be required to enable private parties to utilize a subject of the contract in the fields of technology specifically contemplated in the contract effort. To this end, subject to specified exceptions and negotiations, the Patent Rights clause in contracts over $250,000 shall normally include provisions obtaining rights of the type specified in §9-9.107-5 to such background patents. It is recognized that the precise rights to be acquired will depend upon the facts of each situation and are a matter for determination by DOE and for negotiation with the contractor. General guidelines for use by Contracting Officers and contract negotiators are provided in §9-9.107-5(b). (5) The short form Patent Rights clause in §9-9.107-6 may be used in contracts calling for basic or applied research where the contractor is a nonprofit or educational institution, and in special situations such as consultant contracts. However, this clause will not be used in contracts in which an advance waiver or greater rights has been granted, in certain consultant contracts as explained in §9-9.107-6, or in other special contracts. (6) Solicitations and proposed contracts shall provide offerors and prospective contractors with notice of and the right to request, in advance of or within 30 days after the effective date of contracting, a waiver of all or any part of the rights of the United States with respect to subject inventions. In no event will the fact that an offeror has requested such a waiver be a consideration in the evaluation of the offer or the determination of its acceptability. If an advance waiver is granted, the Patent Rights clause of §9-9.107–5(a) shall be used and appropriately modified in accordance with the terms of such waiver. To provide adequate notice to prospective contractors or offerors, the following provision will be inserted in all solicitations which may result in contracts calling for research, development, or demonstration: Offerors and prospective contractors, in accordance with applicable statutes and (7) DOE may make restricted data applicable to civil uses of atomic energy available to contractors or other persons requiring such data for use in their contracts, business, trade, or profession. In such instances, the special terms and conditions of the type set forth in 10 CFR 725.23(b) and (d) should be used instead of the provision set forth in this part. PROCUREMENT REGULATIONS 9-9.107-4 (b) License for the Government, states, and domestic municipal governments. When a waiver is granted or foreign rights are retained by either the contractor or the inventor, the Government shall retain for the United States, States, and domestic municipal governments at least a paid-up, nonexclusive, irrevocable license in all applicable inventions unless the Head of the Agency or designee determines that it would not be in the public interest to acquire such rights for the States and domestic municipal governments. Requests by contractors for such determinations, together with justifications therefor, shall be submitted to the Contracting Officer. The Contracting Officer shall refer such requests to the Patent Counsel assisting the procuring activity forwarding the request, along with appropriate comments and recommendations, to the Assistant General Counsel for Patents to serve as a basis for the above referenced determination by the Head of the Agency or designee. (c) Right to sublicense foreign governments. The Patent Rights clause does not provide the Government with the right to grant sublicenses to a foreign government, pursuant to any treaty or agreement, in subject inventions to which the contractor has been granted greater or foreign rights. The Head of the Agency or designee may determine at the time of contracting that it would be in the national interest to acquire this right, or the Head of the Agency or designee may reserve the right to make this determination after the invention is identified. When such a determination is made or such right is reserved, the Patent Rights clause should be amended as set forth in §9-9.107-5(d). (d) License rights (upon request) to the contractor. Paragraph (c) of the Patent Rights (long form) clause of §9-9.107-5(a) specifies the license rights retained by the contractor in inventions made in the course of or under the contract. In appropriate circumstances, such as in contracts for the operation of Government-owned facilities or special long term, cost-reimbursement, Government-funded research, development, or demonstration work, this provision shall be modified to provide a revocable, nonexclusive, royalty-free license in inventions only upon request by the contractor for reservation of such license. In such situations, the paragraph set forth in §9-9.107-5(e) shall be substituted for paragraph (c)(1) of the Patent Rights (long form) clause. However, in programs of the type discussed in §9-9.107-4(a)(7), or in certain contracts or subcontracts involving access to restricted data, royalty-free licenses shall not necessarily be granted with respect to inventions or discoveries resulting from the contractor's or subcontractor's access to restricted data. (e) License rights to contractor (irrevocable). Paragraph (c)(1) of the Patent Rights (long form) clause specifies that the license rights retained by the contractor in such inventions are revocable. In special circumstances the license may be irrevocable, in which case paragraph (c)(1) set forth in §9-9.107-5(f) shall be substituted for paragraphs (c)(1), (c)(2) and (c)(3) of the Patent Rights (long form) clause. Because granting irrevocable licenses may interfere with DOE's licensing program which is intended to promote the commercial utilization of inventions resulting from its research, development, or demonstration programs, contractors desiring irrevocable licenses shall submit a written request with a justification to the Contracting Officer. The Contracting Officer shall refer such request to the Patent Counsel assisting the procuring activity forwarding the request, along with appropriate comments and recommendations, to the Assistant General Counsel for Patents to serve as a basis for approval by the Head of the Agency or designee. (f) Contractor sublicensing. The rights of a contractor having a license as set forth in paragraphs (d) and (e) above to grant a revocable license to one or more sublicensees may be considered appropriate by the Head of the Agency or designee in certain circumstances such as, where the contractor is costsharing; where the contractor's control or involvement in the technology which is the subject of the contract is substantial; where the reservation of licensing rights in the contractor would best promote commercialization or utilization of the technology; or where substantial segments of the user population already have licenses or would otherwise be licensed. In such situations, 9-9.107-4 U. S. DEPARTMENT OF ENERGY the paragraph in §9-9.107-5(g)(1) may be substituted for paragraph (c)(1) of §9-9.107-5(a), or the paragraphs in §9-9.107-5(g)(2) may be substituted for paragraphs (c)(1), (c)(2), and (c)(3) of §9-9.107-5(a), as appropriate. (g) Facilities license. Whenever a contract has as a purpose, the design, construction, or operation of a Government-owned research, development, demonstration or production facility, it is necessary that the Government be accorded certain rights with respect to further use of the facility by or on behalf of the Government upon termination of the contract, including the right to make, use, transfer, or otherwise dispose of all articles, materials, products, or processes embodying inventions or discoveries used or embodied in the facility regardless of whether or not conceived or actually reduced to practice under or in the course of such a contract. Accordingly, paragraph §9-9.107-5(h) shall be used in all such contracts in addition to the provisions of the "long form" Patent Rights clause. (h) Subcontracts. (1) The policy expressed in §9-9.107-3 is applicable to prime contracts and to subcontracts regardless of tier. The Patent Rights clause of §9-9.107-5(a) or §9-9.107-6 shall be included in all subcontracts having as a purpose, the conduct of research, development, or demonstration work. However, the Patent Rights clause contained in the prime contract is not to be deemed automatically appropriate for subcontracts. For example, it would not be appropriate to the extent that waivers have been granted the prime contractor at the time of contracting. A separate waiver, if any, must be obtained by subcontractors. Further, the withholding of payment provision of the prime contract will not normally be included in a subcontract except upon request of the Contracting Officer and except for subcontracts awarded by contractors who operate Government-owned facilities and for special contracting situations, in which cases the withholding of payment provision may be flowed down to the first-tier subcontractor only. Whenever either the prime contractor or a proposed subcontractor considers the inclusion of the Patent Rights clause of §9-9.107-5(a) or §9-9.107-6 to be inappropriate, or the subcontractor refuses to accept such a clause in its subcontract, the matter shall be referred, prior to award of the subcontract, to the Contracting Officer for a resolution in accordance with §99.107-4(k). Upon such referral, the same considerations and procedures followed in selecting the appropriate Patent Rights clause included in the prime contract shall be used in selecting the subcontractor clause. (2) Contractors shall not use their ability to award subcontracts as economic leverage to acquire rights for themselves in the inventions resulting from subcontracts, and a waiver granted to a prime contractor is not normally applicable to inventions of subcontractors. However, in appropriate circumstances, the prime contractor's waiver may be made applicable to the inventions of any or all subcontractors such as, where there are pre-existing special research and development arrangements between the prime contractor and subcontractor, or where the prime contractor and subcontractor are partners in a cooperative effort. In addition, in such circumstances, the prime contractor may be permitted to acquire nonexclusive licenses in the subcontractor's inventions when a waiver for subcontractor inventions is not applicable. (i) Record of decisions. Patent Counsel assisting the procuring activity shall record the basis for the following actions: (1) waivers at the time of contracting; (2) waivers granted on identified inventions; (3) determinations that no license need be obtained for States or domestic municipal governments; (4) determinations that the right to sublicense foreign governments should be obtained; and (5) the grant of irrevocable licenses. (j) Publication of invention disclosures. PROCUREMENT REGULATIONS 9-9.107-5 The Patent Rights clauses specify that the Government may duplicate and disclose invention disclosures reported under the contract, although it is not DOE's practice to publish invention disclosures. Because public disclosure before the filing of a U.S. patent application may create a bar to filing certain foreign applications, the clauses also require that patent approval for release or publication of information relating to the contract work be secured from Patent Counsel prior to any such release or publication. When the contractor has requested or obtained a waiver, or has advised of its interest in obtaining certain foreign filing rights, provision is made for DOE to use its best efforts to withhold release or publication of such information for a specified time period in accordance with paragraph (d)(1) of the clause in §9-9.107-5(a) to permit the timely filing of a U.S. patent application by the contractor. (k) Negotiations and deviations. Contracting Officers shall contact the field Patent Counsel assisting their procuring activity or the Assistant General Counsel for Patents, for assistance in selecting, negotiating, or approving appropriate patent, copyright, and data clauses. It should be noted that such clauses may be involved in and affected by the negotiations for a patent waiver. In the case of field procuring activities, Patent Counsel will coordinate such review and assistance with the Chief Counsel in accordance with established local procedures. Any intended departures or deviations from the Federal Procurement Regulations shall be referred by the Contracting Officer to the Assistant General Counsel for Patents for review and concurrence prior to obtaining approval in accordance with §9-1.009-2. A deviation amounting to a class deviation to the FPR or the DOE-PR shall be forwarded through the Assistant General Counsel for Patents to the Senior Procurement Official, Headquarters. §9-9.107-5 Clause for domestic contracts (long form). (a) Patent Rights clause. When the Contracting Officer has determined that a contract falls within §9-9.107-4(a)(1), except where the clause of §9-9.107-6 is applicable, the following clause shall be included in the contract. (a) Definitions. PATENT RIGHTS (LONG FORM) (1) "Subject invention" means any invention or discovery of the contractor conceived or first actually reduced to practice in the course of or under this contract, and includes any art, method, process, machine manufacture, design or composition of matter, or any new and useful improvement thereof, whether patented or unpatented under the Patent Laws of the United States of America or any foreign country. (2) "Contract" means any contract, grant, agreement, understanding, or other arrangement, which includes research, development, or demonstration work, and includes any assignment or substitution of parties. (3) "States and domestic municipal governments" means the States of the United States, the District of Columbia, Puerto Rico, the Virgin Islands, American Samoa, Guam, the Trust Territory of the Pacific Islands, and any political subdivision and agencies thereof. (4) "Government agency" includes an executive department, independent commission, board, office, agency, administration, authority, government corporation, or other Government establishment of the Executive Branch of the Government of the United States of America. (5) "To the point of practical application" means to manufacture, in the case of a composition or product, to practice in the case of a process, or to operate in the case of a machine and under such conditions as to establish that the invention is being worked and that its benefits are reasonably accessible to the public. (6) "Patent Counsel" means the Department of Energy Patent Counsel assisting the procuring activity. (b) Allocation of principal rights. |