Page images
PDF
EPUB
[merged small][ocr errors]

fied to conform to the waiver granted.

(3) A request for waiver (other than advance waivers) for an identified invention shall be submitted to the Patent Counsel (with notification by Patent Counsel to the Contracting Officer) at the time the invention is reported to DOE, or not later than nine 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 or inventor.

(4) All requests for waiver received by DOE or its contractors will be forwarded promptly to the Patent Counsel assisting the procuring activity, together with any reference or supporting documents provided by the requestor and any documents or comments provided by the staff of the activity. If the request for waiver appears to contain insufficient information, the Patent Counsel may seek additional information from the requestor to supplement the request and may also seek additional information from other sources. The Patent Counsel will thoroughly analyze the request in view of each of the objectives and considerations set forth in this 89-9.109-6 and shall also consider the overall rights obtained by the Government in the patent, copyright, and data clauses of the contract. Where it appears that a lesser part of the rights of the United States than requested would be more appropriate in view of the policies set forth in this 89-9.109-6, the Patent Counsel should attempt to negotiate a compromise acceptable to both the requestor and DOE.

(5) The Patent Counsel will prepare and recommend a statement of considerations setting forth the rationale for either accepting or rejecting the waiver request. While the statement need not make specific findings as to each and every consideration of paragraph (b) or (c) of this section, it will cover those that raise significant issues and those that are decisive, and it will explain the basis for the recommmended determination. There may be occasions when the application of the various considerations in (b) or (c) of this section to a particular case could cause conflicting results, and in those instances the differences will be reconciled giving due regard to the overall policies set forth in this 99-9.109-6. Field Patent Counsel will coordinate actions on advance waivers with the Chief Counsel of the field procuring activity concerned as required by local procedures.

(6) The statement shall be forwarded to the Assistant General Counsel for Patents to serve as a recommended basis for the waiver determination. The Assistant General Counsel for Patents will also obtain comments from the appropriate DOE program organization to assist the Head of the Agency or designee in the waiver determination. In situations where time does not permit a delay in contract negotiations for the preparation and mailing of a full written statement, field Patent Counsel may submit a recommendation on the waiver verbally to the Assistant General Counsel for Patents and request a verbal determination from the Head of the Agency or designee. Such action shall be promptly confirmed in writing.

(7) In making waiver determinations, the Head of the Agency or designee shall objectively review all requests for waiver in view of the objectives and considerations set forth in this $9-9.109-6. If this determination and the rationale therefor is not accurately reflected in the recommended statement of considerations, a new statement shall be prepared.

(8) Where the request for advance waiver has not been approved prior to the effective date of the contract and the terms and conditions of the waiver have thus not been made a part of the contract, the Contracting Officer shall promptly notify the requestor by letter of the determination of the Head of the Agency or designee, and the basis therefor. If the advance waiver is approved, the letter shall state the scope, terms, and conditions of such waiver. Where the terms and conditions of an approved advance waiver have not been made a part of the contract, the letter shall inform the requestor that the advance waiver shall be effective (i) as of the effective date of the contract for an advance waiver of inventions identified, i.e., conceived prior to the effective date of the contract, or (ii) as of the date the invention is reported with an election by the contractor to retain rights therein, i.e., for an invention conceived or first actually reduced to practice atier the effective date of the contract; provide a copy of

52-476 0 - 80 - 9

[ocr errors][merged small]

the letter is signed and returned to the Contracting Officer by the requestor acknowledging the acceptance of the scope, terms and conditions of the advance waiver. After acceptance by the contractor of an advance waiver, the Contracting Officer shall cause a unilateral no-cost modification to be made to the contract incorporating the terms and conditions of the waiver in lieu of previous patent provisions. Whenever a requested determination has been denied, the requestor may, within thirty days, request reconsideration. Such a request shall include any additional facts and rationale not previously submitted which support the request. Requests for reconsideration shall be submitted and processed in accordance with the procedures set forth in this paragraph (d).

(e) Content of waiver requests.

(1) All requests for waiver shall include the following information (Forms for submitting requests for advance and identified waivers indicating the necessary information may be obtained from the Contracting Officer or Patent Counsel):

(i) The requestor's identification, business address, and, if represented by Counsel, the Counsel's name and address;

(ii) An identification of the pertinent contract or proposed contract and a copy of the contract statement of work or a nonproprietary statement which fully describes the proposed work to be performed;

(iii) The nature and extent of waiver requested;

(iv) A full and detailed statement of facts, to the extent known by or available to the requestor, directed to each of the considerations set forth in paragraph (b) or (c) of this section, as applicable, and a statement applying such facts and considerations to the policies set forth in paragraph (a) of this section. It is important that this submission be tailored to the unique aspects of each request for waiver, and be as complete as feasible; and

(v) The signature of the requestor or authorized representative with the following statement:

The facts set forth in this request for waiver are within the knowledge of the
requestor and are submitted with the intention that the Head of the Agency or desig.

nee rely on them in reaching the waiver determination. (2) Requests for waiver, for identified inventions shall include, in addition to items (1)(i) to (v) above:

(i) The full names of all inventors;

(ii) A statement of whether a patent application has been filed on the invention, together with a copy of such application if filed or, if not filed, a complete description of the invention;

(iii) If a patent application has not been filed, any information which may indicate a potential statutory bar to the patenting of the invention under 35 USC 102 or a statement that no such bar is known to exist; and

(iv) Where the requestor is the inventor, written authorization from the applicable contractor or subcontractor permitting the inventor to request a waiver.

(3) Subject to DOE regulations, requirements, and restrictions on the treatment of proprietary and classified information, all material submitted in requests for waiver or in support thereof will be made available to the public after a determination on the waiver request has been made, regardless of whether a waiver is granted. Accordingly, requests for waiver should not contain information or data that the requestor is not willing to have made public. If proprietary or classified information is needed to make the waiver determination, such information shall not be submitted unless specifically requested by the Patent Counsel.

(1) Record of waiver determinations.

[merged small][ocr errors]

The Assistant General Counsel for Patents shall maintain and periodically update a publicly available record of waiver determinations.

(8) Waiver situations and types of waivers.

(1) The various factual situations which are appropriate for waivers cannot be categorized precisely inasmuch as the appropriateness of a waiver will depend upon the manner in which the considerations set forth in paragraph (b) or paragraph (c) of this section relate to the facts and circumstances surrounding the particular contracting situation or the particular invention in order to best achieve the objectives set forth in paragraph (a) of this section. However, some examples where waivers might be appropriate are in the following:

(i) Cost-sharing contracts;

(ii) Situations in which DOE is providing increased funding to a specific ongoing privately-sponsored research, development, or demonstration project;

(iii) Situations involving the private use of Government facilities where the contractor is funding all or a part of such costs;

(iv) Situations in which the equities of the contractor are so substantial in relation to that of the Government that the waiver is necessary to obtain the participation of the contractor; and

(v) Situations involving contracts with small business concerning their privately developed technology.

(2) As stated in paragraph (a) of this section, waivers may be granted as to all or any part of the rights of the United States to an invention except for certain rights as set forth in paragraph (i) in this section. Accordingly, the waiver of all patent rights that are inherent to an invention, rather than part of the rights, will not necessarily be appropriate. The scope of the waiver will depend upon the relationship of the contractual situation or identified invention to the considerations set forth in paragraph (b) or (c) in order to best achieve the objectives set forth in paragraph (a) of this section. For example, waivers may be restricted to a particular field of use in which the contractor has substantial equities or a commercial position, or restricted to those uses that are not the primary object of the contract effort. Waivers may also be limited to particular geographical locations, may be made effective only for a specified duration of time, or may require the contractor to license others at reduced royalties in consideration of the Government's contribution to the research, development, or demonstration effort.

(3) In advance waivers of identified inventions, the invention will be deemed to be a subject invention and the waiver will be considered as being effective as of the effective date of the contract. This will be true regardless of whether the identified invention had been first actually reduced to practice prior to the time of contracting or would be reduced to practice under the contract. A purpose of such waivers is to clarify and definitize the rights of the parties to such inventions when the facts surrounding the first actual reduction to practice prior to or during the contract are or will be difficult to establish.

(h) Waivers to educational institutions.

(1) Except to the extent that a nonprofit educational institution may be engaged as a contractor operating a Government-owned facility or undertaking other special contracts, the following considerations apply to granting of advance and identified waivers to educational institutions having an approved technology transfer program capability. To obtain approval of a technology transfer program, an educational institution shall forward its request to DOE as provided in paragraph (2) below.

(2) A nonprofit educational institution desiring to obtain approval of its technology transfer program and acceptability shall provide the agency with the following information:

(i) General information concerning the institution, including:

U. S. DE PARTMENT OF ENERGY

(A) A copy of its articles of incorporation;
(B) A statement of the institution's purpose and aims; and
(C) A statement indicating the source of the institution's funds.

(ii) A copy of the institution's established patent policy, together with the date and manner of its adoption;

(iii) The name, title, address, and telephone number of the officer responsible for administration of patent and invention matters and a description of staffing in this area, including all offices which contribute to the institution's patent management capabilities;

(iv) A description of the institution's procedures for identifying and reporting inventions and a description of the procedures for evaluation of such inventions for inclusion in the institution's promotional program;

(v) A copy of the agreement signed by employees engaged in research and development, indicating their obligation in regard to inventions conceived or first actually reduced to practice in the course of their assigned duties;

(vi) A copy of the invention report form or outlines utilized for preparation of invention reports;

(vii) A statement of whether the institution has an agreement with any patent management organizations or consultants and a copy of any such agreements;

(viii) A description of the plans and intentions of the institution to bring to the market. place inventions to which it retains title, including a description of the efforts typically undertaken by the institution to license its inventions.

(ix) A description of the institution's past patent application and patent licensing activities, including the following:

(A) Number of inventions reported to the institution during each of the past 5 years;
(B) Number of patent applications filed during each of the past 5 years;
(C) Number of patents obtained during each of the past 5 years;
(D) Number of exclusive licenses issued during each of the past 5 years;

(E) Number of nonexclusive licenses, other than those to sponsoring Government agencies, issued during each of the past 5 years;

(F) Gross royalty income during each of the past 5 years; and

(G) A general description of royalties charged, including minimum and maximum royalty rates.

(x) A list of subsidiary or affiliate institutions which would be covered by an agreement signed by the institution;

(xi) If the institution is a subsidiary or affiliate organization, the name of the other related organization and a description of the relationship:

(xii) The amount of support from each Federal Agency for research and development activities currently being administered by the institution, giving Government agency and breakdown;

(xiii) A statement of the institution's policies with respect to the sharing of royalties with employees; and

(xiv) A description of the uses made of any net income generated by the institution's patent management program.

[merged small][ocr errors]

(3) Before an institution's technology transfer program and capabilities are approved, the institution shall have a technology transfer program which, as a minimum shall include the five criteria listed below. In addition to these criteria, consideration will be given to whether or not other Government agencies have approved an institutional patent agreement with the requesting institution. The six criteria are:

(i) An established patent policy which is consistent with the four policy objectives in 89-9.109-6(a) and is administered on a continuous basis by an officer or organization responsible to the institution;

(ii) Agreements with employees requiring them to assign to the institution or its designee or the Government any invention conceived or first actually reduced to practice by them in the course of or under Government contracts and awards, or assurance that such agreements are obtained prior to the assignment of personnel to Government-supported research and development projects;

(iii) Procedures for insuring that inventions are promptly identified and timely disclosed to the officer or organization administering the patent policy of the institution;

(iv) Procedures for insuring that inventions disclosed to the institution are evaluated for inclusion in the institution's promotional program; and

(v) An active and effective promotional program for the licensing and marketing of inventions.

. (vi) The institution has a policy of preferring, in appropriate circumstances, nonexclusive over exclusive licensing and domestic over foreign manufacture..

(4) In connection with requests for advance waivers, an approved technology transfer program and capabilities shall be considered in lieu of commercial, manufacturing, and marketing capabilities which normally reside in industry. Such approval shall not be considered sufficient in and of itself as justifying the granting of an advance waiver to an institution. Approval of the grant of an advance waiver must be viewed in light of the considerations of 89-9.109-6(b) above and the four objectives set forth in 89-9.109-6(a) above.

(5) In requests for identified waivers, however, the fact that an institution with an approved technology transfer program and capabilities has identified an invention and has expressed a desire to commercialize it through a request for a waiver therefor shall normally constitute a presumption that the institution has met the criteria of $9-9.109-6(c) unless it is indicated that under one or more of the criteria the presumption is inapplicable.

(6) If, in addition to a DOE-approved technology transfer program, an educational institution has a written procedure whereby the institution reviews for patentable subject matter papers concerning scientific or technical developments, the following paragraph (8) may be substituted for paragraph (g) of the Patent Rights (short form) clause of 89-9.107-6 or other Patent Rights clause in the contract.

(8) 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 screen for patent review each paper prior to its intended publi-
cation date. If a Subject Invention is identified by the Contractor in a paper submit-
ted for review, the paper will be submitted to Patent Counsel prior to publication.
· Publication may be delayed by Patent Counsel for such time as is necessary to file

a patent application thereon, up to a maximum of 100 days from the date the paper
was submitted to Patent Counsel, or for a period longer than 100 days as mutually

agreed. (i) Terms and conditions of waivers. Each waiver shall contain, as a minimum, provisions covering each of the following:

« PreviousContinue »