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(6) 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 niade or such right is reserved, the Patent Rights clause should be amended as set forth in 89-9.107-5(d).
(d) License rights (upon request) to the contractor. Paragraph (c) of the Patent Rights (long form) clause of 89-9.107-5(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 89-9.107-5(e) shall be substituted for paragraph (c)(1) of the Patent Rights (long form) clause. However, in programs of the type discussed in 89-9.107-4(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 89-9.107-5(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.
(1) 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,
the paragraph ia $9-9.107-5(8)(1) may be substituted for paragraph (c)(1) of $9-9.107-5(a), or the paragraphs in 99-9.107-5(g)(2) may be substituted for paragraphs (c)(1), (c)(2), and (c)(3) of 89-9.107-5(a), as appropriate.
(8) 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 89-9.107-5(h) shall be used in all such contracts in addition to the provisions of the “long form” Patent Rights clause.
(1) The policy expressed in 89-9.107-3 is applicable to prime contracts and to subcontracts regardless of tier. The Patent Rights clause of 89-9.107-5(a) or 89-9.107-6 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 89-9.107-5(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.
(i) Publication of invention disclosures.
The Patent Rights clauses specify that the Government may duplicate and disclose invention disclosures reported under the contract, although it is rot 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 89-9.107-5(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.
89-9.107-5 Clause for domestic contracts (long form).
(a) Patent Rights clause. When the Contracting Officer has determined that a contract falls within 89-9.107-4(a)(1), except where the clause of 89-9.107-6 is applicable, the following clause shall be included in the contract.
PATENT RIGHTS (LONG FORM) (a) Definitions.
(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.
(1) Assignment to the Government.
The contractor agrees to assign to the Government the entire right, title, and interest throughout the world in and to each subject invention, except to the extent that rights are retained by the contractor under paragraphs (6X2) and (c) of this clause.
(2) Greater rights determinations.
The contractor or the employee-inventor with authorization of the contractor may request greater rights than the nonexclusive license and the foreign patent rights provided in paragraph (c) of this clause on identified inventions in accordance with 41 CFR 89-9.109-6(d). Such requests must be submitted to Patent Counsel (with notification by Patent Counsel to the Contracting Officer) at the time of the first disclosure pursuant to paragraph (eX2) of this clause, or not later than 9 months after conception or first actual reduction to practice, whichever occurs first, or such longer periods as may be authorized by Patent Counsel (with notification by Patent Counsel to the Contracting Officer) for good cause shown in writing by the contractor.
(c) Minimum rights to the contractor
(1) Contractor license.
The contractor reserves a revocable, nonexclusive, paid-up license in each patent application filed in any country on a subject invention and any resulting patent in which the Government acquires title. The license shall extend to the contractor's domestic subsidiaries and affiliates, if any, within the corporate structure of which the contractor is a part and shall include the right to grant sublicenses of the same scope to the extent the contractor was legally obligated to do so at the time the contract was awarded. The license shall be transferable only with approval of DOE except when transferred to the successor of that part of the contractor's business to which the invention pertains.
(2) Revocation limitations.
The contractor's nonexclusive license retained pursuant to paragraph (c) (1) of this clause and sublicenses granted thereunder may be revoked or modified by DOE, either in whole or in part, only to the extent necessary to achieve expeditious practical application of the subject invention under DOE's published licensing regulations (10 CFR 781), and only to the extent an exclusive license is actually granted. This license shall not be revoked in that field of use and/or the geographical areas in which the contractor, or its sublicensee, has brought the invention to the point of practical application and continues to make the benefits of the invention reasonably accessible to the public, or is expected to do so within a reasonable time.
(3) Revocation procedures.
Before modification or revocation of the license or sublicense, pursuant to paragraph (c)2) of this clause, DOE shall furnish the contractor a written notice of its intention to modify or revoke the license and any sublicense thereunder, and the contractor shall be allowed 30 days, or such longer periods as may be authorized by the Patent Counsel (with notification by Patent Counsel to the Contracting Officer) for good cause shown in writing by the contractor, after such notice to show cause why the license or any sublicense should not be modified or revoked. The contractor shall have the right to appeal, in accordance with 10 CFR 718, any decision concerning the modification or revocation of his license or any sublicense.
(4) Foreign patent rights.
Upon written request to Patent Counsel (with notification by Patent Counsel to the Contracting Officer), and subject to DOE security regulations and requirements, there shall be reserved to the contractor, or the employee inventor with authorization of the contractor, the patent rights to a subject invention in any foreign country where the Government has elected not to secure such rights provided:
(i) The recipient of such rights, when specifically requested by DOE and three years after issuance of a foreign patent disclosing said subject invention, shall furnish DOE a report setting forth:
(A) The commercial use that is being made, or is intended to be made, of said invention, and
(B) The steps taken to bring the invention to the point of practical application or to make the invention available for licen-ing
(ii) 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.
(iii) Subject to the rights granted in (c)(1), (2) and (3) of this clause, the Head of the Agency or designee shall have the right to terminate the foreign patent rights granted in this paragraph (cX4) in whole or in part unless the recipient of such rights demonstrates to the satisfaction of the Head of the Agency or designee that effective steps necessary to accomplish substantial utilization of the invention have been taken or within a reasonable time will be taken.
(iv) Subject to the rights granted in (c)(1), (2) and (3) of this clause, the Head of the Agency or designee shall have the right, commencing four years after foreign patent rights are accorded under this paragraph (c)(4), 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 said foreign patent rights in whole or in part, following a hearing upon notice thereof to the public, upon a petition by an interested person justifying such hearing:
(A) If the Head of the Agency or designee determines, upon review of such material as he deems relevant, and after the recipient of such rights 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 foreign patent rights have 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
(B) Unless the recipient of such rights demonstrates to the satisfaction of the Head of the Agency or designee at such hearing that the recipient has taken effective steps, or within a reasonable time thereafter is expected to take such steps, necessary to accomplish substantial utilization of the invention.
(d) Filing of patent applications.
(1) With respect to each subject invention in which the contractor or the inventor requests foreign patent rights in accordance with paragraph (c)(4) of this clause, a request may also be made for the right to file and prosecute the U.S. application on behalf of the U.S. Government. If such request is granted, the contractor or inventor shall file a domestic patent application on the invention within 6 months after the request for foreign patent rights is granted, or such longer period of time as may be approved by the Patent Counsel for good cause shown in writing by the requestor. With respect to the invention, the requestor shall promptly notify the Patent Counsel (with notification by Patent Counsel to the Contracting Officer) of any decision not to file an application.
(2) For each subject invention on which a domestic patent application is filed by the contractor or inventor, the contractor or inventor shall:
(i) Within 2 months after the filing of a patent application or within 2 months after submission of the invention disclosure, if the patent application has been filed previously, deliver to the Patent Counsel a copy of the application as filed including the filing date and serial number;
(ii) 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 assignment to the Government, on a form specified by the Government;
(iii) Provide the Patent Counsel with the original patent grant promptly after a patent is issued on the application; and
. (iv) Not less than 30 days before the expiration of the response period for any action required by the Patent and Trademark Office, notity the Patent Counsel of any decision not to continue prosecution of the appiication.
(3) With respect to each subject invention in which the contractor or inventor has requested foreign paten! rights, the contractor is inentur shall file a patent application on the invention in each fortyn county!which request
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