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U. S. DEPARTMENT OF ENERGY

contractor or the sublicensee shall have the right to appeal in accordance with 10 CFR 781, any decision concerning the modification or revocation of the sublicense. (h) Facilities license.

The following paragraph will be included as paragraph (n) of the Patent Rights (long form) clause in each contract having as purpose the design, construction, or operation of a Government-owned research, development, demonstration, or production facility. The scope of the license in the following paragraph may, in appropriate situations, be expanded to cover similar facilities.

(n) Facilities license.

In addition to the rights of the parties with respect to inventions or discoveries conceived or first actually reduced to practice in the course of or under this contract, the contractor agrees to and does hereby grant to the Government an irrevocable, nonexclusive paid-up license in and to any inventions or discoveries regardless of when conceived or actually reduced to practice or acquired by the contractor, which are owned or controlled by the contractor at any time through completion of this contract and which are incorporated or embodied in the construction of the facility or which are utilized in the operation of the facility or which cover articles, materials, or products manufactured at the facility (1) to practice or to have practiced by or for the Government at the facility, and (2) to transfer such license with the transfer of that facility. The acceptance or exercise by the Government of the aforesaid rights and license shall not prevent the Government at any time from contesting the enforceability, validity or scope of, or title to, any rights or patents herein licensed.

§9-9.107-6 Clause for domestic contracts (short form).

The following clause may be used instead of the clause of §9-9.107-5(a) in contracts for basic or applied research where the contractor is a nonprofit or educational institution and in special situations including consultant contracts. This clause shall not be used in long term consultancy arrangements for work in DOE programs providing opportunities for specialized work experience at DOE-owned facilities for scientific, engineering, and other employees of private firms and institutions engaged in civilian applications of atomic energy. In such instances consult Patent Counsel. Also, this clause is not to be used in contracts calling for the operation of Government-owned facilities, or contracts in which an advance waiver has been granted, or other special contracts such as those for the conduct of major long-term continuing programs or basic agreements providing for the assignment of new tasks from time to time by mutual agreement.

(a) Definitions.

PATENT RIGHTS (SHORT FORM)

(1) “Subject invention" means any invention or discovery of the contractor conceived or first actually reduced to practice in the course of performance 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, or any variety of patents, whether patented or unpatented, under the patent laws of the United States of America or any foreign country.

(2) "Patent Counsel" means the DOE Patent Counsel assisting the procur

ing activity.

(b) Invention disclosures and reports.

(1) The contractor shall furnish the Patent Counsel (with notification by Patent Counsel to the Contracting Officer):

(i) A written report containing full and complete technical information concerning each subject invention within 6 months after conception or first actual reduction to practice but in any event prior to any on sale, public use, or public disclosure of such invention known to the contractor. The report shall identify the contract and inventor and shall be sufficiently complete in technical detail and appropriately illustrated by sketch or diagram to convey to one skilled in the art to which the invention pertains, a clear understanding of the nature, purpose, operation, and to the extent known, the physical, chemical, biological, or electrical char

PROCUREMENT REGULATIONS

acteristics of the invention;

(ii) Upon request, but not more than annually, interim reports on a DOE-approved form listing subject inventions for that period and certifying that all subject inventions have been disclosed or that there were no such inventions; and

(iii) A final report on a DOE-approved form within 3 months after completion of the contract work listing all subject inventions and certifying that all subject inventions have been disclosed or that there were no such inventions. (2) The contractor agrees that the Government may duplicate and disclose subject invention disclosures and all other reports and papers furnished or required to be furnished pursuant to the contract.

(c) 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 (c)(2) and (d) of this clause.

(2) Greater rights determination.

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 (d) of this clause on identified inventions in accordance with the procedure and criteria of 41 CFR §9-9.109-6. A request for a determination of whether the contractor or the employee-inventor is entitled to retain such greater rights must be submitted to the Patent Counsel (with notification by Patent Counsel to the Contracting Officer) at the time of the first disclosure of the invention pursuant to paragraph (b)(1) of this clause or not later than 9 months after conception or first actual reduction to practice, whichever occurs first, or such longer period 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. The information to be submitted for a greater rights determination is specified in 41 CFR §9-9.109-6(e).

(d) Minimum rights to the contractor.

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. Revocation shall be in accordance with the procedure of paragraphs (c)(2) and (3) of the clause in 41 CFR §9-9.107-5(a). The contractor also has the right to request foreign rights in accordance with the procedures of paragraph (c)(4) of the clause in 41 CFR §9-9.107-5(a).

(e) Employee and subcontractor agreements.

Unless otherwise authorized in writing by the Contracting Officer, the contractor shall:

(1) Obtain patent agreements to effectuate the provisions of the Patent Rights clause from all persons who perform any part of the work under this contract except nontechnical personnel, such as clerical employees and manual laborers.

(2) Unless otherwise authorized or directed by the Contracting Officer, the contractor shall include the Patent Rights clause of 41 CFR §9-9.107-5(a) or 41 CFR §9-9.107-6, as appropriate, modified to identify the parties in any subcontract hereunder having as a purpose the conduct of research, development, or demonstration work; and

(3) Promptly notify the Contracting Officer in writing upon the award of any subcontract containing a Patent Rights clause by identifying the subcontractor, the work to be performed under the subcontract, and the dates of award and estimated completion. Upon the request of the Contracting Officer, the contractor shall furnish a copy of the subcontract to such requester.

(f) Atomic energy.

(1) No claim for pecuniary award or compensation under the provisions of the Atomic Energy Act of 1954, as amended, shall be asserted by the contractor or its employees with respect to any inventions or discovery made or conceived in the course of or under this contract.

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U.S. DEPARTMENT OF ENERGY

(2) Except as otherwise authorized in writing by the Contracting Officer, the contractor will obtain patent agreements to effectuate the provisions of paragraph (f)(1) of the clause from all persons who perform any part of the work under this contract, except nontechnical personnel, such as clerical employees and manual laborers.

(g) Publication.

In order that information concerning scientific or technical developments conceived or first actually reduced to practice in the course of or under the contract is not prematurely published so as to adversely affect patent interest of DOE, the Contractor agrees to submit to the Patent Counsel for patent review a copy of each paper 60 days prior to its intended publication date. The Contractor may publish such information after expiration of a 60-day period following such submission or prior thereto if specifically approved by the Patent Counsel, unless the Contractor is informed (in writing within the 60-day period) that in order to protect patentable subject matter, publication must further be delayed. In this event, publication shall be delayed up to 100 days beyond the 60-day period or such longer period as mutually agreed to.

§9-9.107-7 Clause for foreign contracts.

The clauses authorized for contracts in §9-9.107-5(a) and §9-9.107-6 may be modified by the Contracting Officer in consultation with Patent Counsel to meet the requirements peculiar to foreign procurement.

§9-9.108 (Reserved).

§9-9.109 Administration of Patent Rights clauses.

§9-9.109-1 Patent rights follow-up.

It is important that the Government and the contractor know and exercise their rights in inventions conceived or first actually reduced to practice in the course of or under Government contracts in order to ensure their expeditious availability to the public, to enable the Government, the contractor, and the public to avoid unnecessary payment of royalties, and to defend themselves against claims and suits for patent infringement. To attain these ends, contracts having Patent Rights clauses should be so administered that:

(a) Inventions are identified, disclosed, and reported as required by the contract clause; (b) The rights of the Government in such inventions are established;

(c) When appropriate, patent applications are timely filed and prosecuted by the contractor, the inventor, or by the Government as appropriate;

(d) The filing of patent applications is documented by formal instruments such as licenses or assignments; and

(e) Expeditious commercial utilization of such inventions is achieved.

§9-9.109-2 Follow-up by contractor.

(a) The Patent Rights clause requires contractors to establish and maintain effective procedures to ensure that inventions made under the contract are identified, disclosed, and, when appropriate, patent applications filed, and that the Government's rights therein are established and protected. When it is determined after the award of a contract that the contractor or subcontractor may not have a clear understanding of the rights and obligations of the parties under a Patent Rights clause, a postaward orientation conference or letter should be used by DOE to explain these rights and obligations. When reviewing a contractor's procedures, particular attention shall be given to ascertaining their effectiveness for identifying and disclosing inventions.

PROCUREMENT REGULATIONS

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(b) A qualified representative of the contractor shall furnish to the Patent Counsel (with notification by Patent Counsel to the Contracting Officer) interim reports upon request, and upon completion of the contract work, a final report setting forth:

(1) A list of all subject inventions made during the reporting period;

(2) A certification that all subject inventions have been disclosed or that there were no such inventions, and that the contractor's procedures for identifying and disclosing inventions have been followed throughout the period; and

(3) A list of all subcontracts entered into during the reporting period which contain a Patent Rights clause, together with copies of such subcontracts (if not earlier furnished to DOE), or a statement that there were no such subcontracts.

(c) Ordinarily, inventions and discoveries will be reported on a Form DOE 213 (copies of which shall be made available by Patent Counsel) or on such other form that has been approved by Patent Counsel. Reporting of inventions promptly before completion of the work under the respective contracts will aid patent clearance. Submission of annual interim reports, where contracts cover an extended period, will also facilitate the disposition of patent matters and expedite the issuance of final patent clearance.

§9-9.109-3 Follow-up by Government.

(a) With respect to each contract, subcontract, or other agreement under their jurisdiction, the Heads of Procuring Activities are responsible for:

(1) Assuring compliance with the provisions of Part 9-9 in executing or approving any contracts, subcontracts, other agreements, understandings, or other arrangements, or any supplements thereto. The Patent Counsel assisting their activity should be consulted to ensure that only authorized departure is made from the requirements set forth in these regulations and that all substantive and procedural rights required by section 152 of the Atomic Energy Act of 1954, as amended, or section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974, are obtained;

(2) Transmitting the information requested on the Patent Information Sheet, Form DOE 242, to the Assistant General Counsel for Patents;

(3) Reviewing, in consultation with the contractor, subcontractor, or vendor, arrangements for obtaining adequate patent agreements from employees and others performing work under any contract, subcontract, or other agreements containing patent provisions in favor of the Government. (The form of such patent agreement actually in use or proposed for use shall be forwarded for approval to the Patent Counsel assisting the procuring activity.)

(4) Forwarding a notice of completion or termination of the work and a request for patent clearance to the Assistant General Counsel for Patents for each contract, subcontract, or other agreement containing patent provisions giving rise to rights in the Government; and

(5) Withholding payments due to contractors in accordance with paragraph (i) of the Patent Rights clause of §9-9.107-5(a) until, in the case of interim reports, a determination has been made in consultation with Patent Counsel that existing deficiencies have been corrected or that delivery of all reports, disclosures, and other information have been made, or, in the case of final reports, receipt of written patent clearance certification from the Assistant General Counsel for Patents.

(b) The Assistant General Counsel for Patents, upon receipt of the DOE-approved Patent Information Sheet, will assign the patent responsibility and notify the person who transmits the information sheet of the Patent Counsel assigned to conduct the patent surveillance of the reported contract, subcontract, or other agreement. Upon receipt of the notice of completion or termination as provided in paragraph (a)(4) of this section, a notice of patent clearance will

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U. S. DEPARTMENT OF ENERGY

be issued by the Assistant General Counsel for Patents when there has been, to his best knowledge and belief, compliance with the patent provisions.

(c) The Patent Counsel assigned to assist the procuring activity will assist Contracting Officers in selecting and negotiating patent provisions and, in the case of field procuring activities, will coordinate such assistance with the Chief Counsel in accordance with established local procedures. Patent Counsel will generally submit Patent Information Sheets and otherwise assist Heads of Procuring Activities, contractors, Contracting Officers, subcontractors and vendors in: reporting of inventions and discoveries; reviewing and providing patent clearance prior to publication or release of reports and proposed technical articles and prior to public release or disclosure of information regarding scientific and technical developments made in the course of or under the contract; handling claims for patent and copyright infringement; preparation of certificates to initiate patent clearance; and the handling of other patent matters.

(d) Patent application filing and determination of rights to inventions and discoveries. The Assistant General Counsel for Patents or designee shall:

(1) Make the determination that inventions reported under subparagraph (e)(2)(i) of the Patent Rights clause are subject inventions under the contract;

(2) Determine whether and where patent protection will be obtained on inventions; (3) Represent DOE before domestic and foreign patent offices;

(4) Accept assignments and instruments confirmatory of the Government's rights to inventions; and

(5) Represent DOE in patent and other intellectual property matters including those under these regulations.

89-9.109-4 Remedies.

If a contractor operating under a Patent Rights clause fails to establish, maintain, or follow effective procedures for identifying and disclosing inventions as required by the Patent Rights clause or fails to correct any deficiency after notice thereof, the Contracting Officer may require the contractor to make available for examination books, records, and documents relating to inventions in the same field of technology as the contract to enable an agency determination of whether there are such inventions, and may invoke the withholding of payments provision if a contractor fails to disclose an invention deemed by DOE to be a subject invention.

§9-9.109-5 Conveyance of invention rights acquired by the Government.

Whenever the Government acquires the entire rights, title, and interest in an invention pursuant to a contract or by operation of law, assignments shall be obtained from the inventor to the Government, with the consent of the contractor, to perfect or confirm the Government's rights. The form of conveyance of title from the inventor to the contractor must be legally sufficient to convey the rights the contractor has required to convey to the Government.

§9-9.109-6 Waivers

(a) General.

(1) The Head of the Agency or designee may waive all or any part of the rights of the United States (other than certain rights prescribed in paragraph (i) of this section) with respect to any invention or class of inventions made or which may be made by any person or class of persons in the course of or under any contract of DOE, if it is determined that the interests of the United States and the general public as set forth in the Atomic Energy Act of 1954, as amended (42 USC 2182), and the Federal Nonnuclear Energy Research and Development Act of 1974 (42 USC 5908), will best be served by such waivers. In making such determinations, the Head of the Agency or designee shall have the following objectives: