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(2) Except as otherwise authorized in writing by the Contracting Officer, the contractor will obtain patent agreements to effectuate the provisions of paragraph (O(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.

(3) 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.

89-9.107-7 Clause for foreign contracts.

The clauses authorized for contracts in $9-9.107-5(a) and 89-9.107-6 may be modified by the Contracting Officer in consultation with Patent Counsel to meet the requirements peculiar to foreign procurement.

89-9.108 (Reserved).

89-9.109 Administration of Patent Rights clauses.

89-9.109-1 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; (6) 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.

89-9.109-2 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.

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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.

89-9.109-3 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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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.

89-9.109-5 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.

89-9.109-6 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:

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(i) Making the benefits of the energy research, development, and demonstration program widely available to the public in the shortest practicable time;

(ii) Promoting the commercial utilization of such inventions;

(iii) Encouraging participation by private persons in DOE's energy research, development, and de:nonstration program; and

(iv) Fostering competition and preventing undue market concentration or the creation or maintenance of other situations inconsistent with the antitrust laws.

(2) If it is not possible to attain each of these objectives immediately and simultaneously for any one waiver determination, the Head of the Agency or designee will seek to reconcile these objectives in light of the overall purposes of the DOE patent policy which is governed by Section 152 of the Atomic Energy Act of 1954, as amended, and Section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974.

(3) Over time, however, the application of this waiver policy is expected to attain each of these objectives. In addition to the patent policies provided by legislation, and where not inconsistent therewith, the waiver determinations will also be guided by the revised Presidential Memorandum and Statement of Government Patent Policy issued August 23, 1971 (36 F.R. 16887-16892).

(b) Advance waiver.

In determining whether a waiver to the contractor at the time of contracting will best serve the interests of the United States and the general public, the Head of the Agency or designee shall, as a minimum, specifically include as considerations the following:

(1) The extent to which the participation of the contractor will expedite the attainment of the purposes of the program;

(2) The extent to which a waiver of all or any part of such rights in any or all fields of technology is needed to secure the participation of the particular contractor;

(3) The extent to which the work to be performed under the contract is useful in the production or utilization of special nuclear material or atomic energy;

(4) The extent to which the contractor's commercial position may expedite utilization of the research, development, and demonstration program results;

(5) The extent to which the Government has contributed to the field of technology to be funded under the contract;

(6) The purpose and nature of the contract, including the intended use of the results developed thereunder;

(1) The extent to which the contractor has made or will make substantial investment of financial resources or technology developed at the contractor's private expense which will directly benefit the work to be performed under the contract;

(8) The extent to which the field of technology to be funded under the contract has been developed at the contractor's private expense;

(9) The extent to which the Government intends to further develop to the point of commercial utilization the results of the contract effort;

(10) The extent to which the contract objectives are concerned with the public health, public safety, or public welfare;

(11) The likely effect of the waiver on competition and market concentration;

(12) In the case of a nonprofit educational institution, the extent to which such institution has a technology transfer capability and program approved by the Head of the Agency or desig. nee as being consistent with the applicable policies of this section, and

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(13) The small business status of the contractor. (c) Waiver of identified inventions.

In determining whether a waiver to the contractor or inventor of rights to an identified invention will best serve the interests of the United States and the general public, the Head of the Agency or designee shall, as a minimum, specifically include as considerations the following:

(1) The extent to which such waiver is a reasonable and necessary incentive to call forth private risk capital for the development and commercialization of the invention;

(2) The extent to which the plans, intentions, and ability of the contractor or inventor will obtain expeditious commercialization of such invention;

(3) The extent to which the invention is useful in the production or utilization of special nuclear material or atomic energy;

(4) The extent to which the Government has contributed to the field of technology of the invention;

(5) The purpose and nature of the invention, including the anticipated use thereof;

(6) The extent to which the contractor has made or will make substantial investment of financial resources or technology developed at the contractor's private expense which will directly benefit the commercialization of the inventor;

(7) The extent to which the field of technology of the invention has been developed at the contractor's expense;

(8) The extent to which the Government intends to further develop the invention to the point of commercial utilization;

(9) The extent to which the invention is concerned with the public health, public safety, or public welfare;

(10) The likely effect of the waiver on competition and market concentration;

(11) In the case of a nonprofit educational institution, the extent to which such institution has a technology transfer capability and program approved by the Head of the Agency or designee as being consistent with the applicable policies of this section; and

(12) The small business status of the contractor. (d) Procedures.

(1) All waiver determinations shall be initiated by a written request providing the information set forth in paragraph (e). Such requests may be submitted by existing or potential contractors in the case of requests for an advance waiver and by contractors or employee-inventors in the case of requests for waiver for identified inventions. A request for an advance waiver may also be made for an identified invention which has already been conceived and which reasonably may be first actually reduced to practice in the course of or under a DOE contract. Such waiver requests must include a copy of the patent or patent application covering the identified invention.

(2) A request for an advance waiver shall be submitted to the Contracting Officer or to contractors for their subcontractors at any time prior to execution of the contract or within thirty days thereafter, but should normally be submitted as part of the contract proposal. If the purpose, scope, or cost of the contract is substantially altered by modification or extension, a new waiver request will be required. Accordingly, in such instance, Patent Counsel should advise the Contracting Officer if the purpose, scope, cost, or other factors are so changed upon which the original waiver was granted as to require submission and approval of a new waiver request covering ine proposed modification or extension. Whili ich vers are granted. the rights set forth in pragraphs (b), (c) and (d) of the clue $9.

407-51a) hould ta .

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