9-9.100

U. S. DEPARTMENT OF ENERGY

patent system. As set forth in these regulations, patent incentives, including DOE's authority to waive the Government's patent rights to the extent provided for by statute, will be utilized in appropriate situations at the time of contracting to encourage industrial participation, foster commercial utilization and competition, and make the benefits of DOE's activities widely available to the public. In addition to considering the waiver of patent rights at the time of contracting, DOE will also consider the incentive of a waiver of patent rights upon the reporting of an identified invention when requested by the contractor or the employee-inventor with the permission of the contractor. These requests can be made whether or not a waiver request was made at the time of contracting. Waivers for identified inventions will be provided where it is determined that the patent waiver will be a real incentive to achieving the development and ultimate commercial utilization of inventions. Where a waiver of the Government's patent rights is granted, either at the time of contracting or upon request or after an invention is made, certain safeguards will be required by DOE to protect the public interest.

(b) Another major DOE mission is to manage the nation's uranium enrichment and other classified programs, where R&D procurements are directed toward processes and equipment not available to the public. To accomplish DOE's programs for bringing private industry into these and other special programs to the maximum extent permitted by national security and policy considerations, it is desirable that the technology developed in these programs be made available on a selected basis for use in the particular fields of interest and under controlled conditions by properly cleared industrial and scientific research institutions. To insure such availability and control, the grant of waivers in these programs may necessarily be more limited than in other DOE programs.

89-9.101 (Reserved).

§9-9.102 Authorization and consent.

(a) Under 28 USC 1498, any suit for unauthorized use of a United States patent based on the manufacture or use by or for the United States of an invention described in and covered by a patent of the United States by a contractor or by a subcontractor (at any tier) can be maintained only against the Government in the Court of Claims, and not against the contractor or subcontractor, in those cases where the Government has authorized or consented to the manufacture or use of the patented invention. Accordingly, to insure that work by a contractor or subcontractor under a Government contract may not be enjoined by reason of patent infringement, authorization and consent shall be given in the prime contract and shall apply to all subcontracts thereunder as provided below. The liability of the Government for damages in such suit against it may, however, ultimately be borne by a contractor or subcontractor in accordance with the terms of any Patent Indemnity clause also included in the contract or subcontract, and an Authorization and Consent clause may be included in the same contract or subcontract.

(b) In certain contracting situations, such as those involving demonstration projects, consideration should be given to the impact of third party-owned patents covering technology that may be incorporated in the project which may ultimately affect widespread commercial use of the project results. In such situations, Patent Counsel should be consulted to determine what modifications, if any, should be made to the utilization of the Authorization and Consent and Patent Indemnity provisions or what other action might be deemed appropriate.

(c) An Authorization and Consent clause shall not be used in contracts where both complete performance and delivery are to be outside the United States, its possessions or Puerto Rico.

PROCUREMENT REGULATIONS

§9-9.102-1 Authorization and consent in contracts for supplies or services.

9-9.103

The following contract clause shall be included in all contracts for supplies or services except when prohibited by §9-9.102(c) or in contracts for research, development, or demonstration work and in subcontracts thereunder in which the clause in §9-9.102-2 is required.

AUTHORIZATION AND CONSENT

The Government hereby gives its authorization and consent (without prejudice to
any rights of indemnification) for all use and manufacture, in the performance of
this contract or any part hereof or any amendment hereto or any subcontract hereun-
der (including any lower-tier subcontract), of any invention described in and cov-
ered by a patent of the United States (a) embodied in the structure or composition
of any article the delivery of which is accepted by the Government under this con-
tract or (b) utilized in the machinery, tools or methods, the use of which necessarily
results from compliance by the contractor or the using subcontractor with
(i) specifications or written provisions now or hereafter forming a part of this con-
tract, or (ii) specific written instructions given by the Contracting Officer direct-
ing the manner of performance. The entire liability to the Government for
infringement of a patent of the United States shall be determined solely by the provi-
sions of the indemnity clauses, if any, included in this contract or any subcontract
hereunder (including all lower-tier subcontracts), and the Government assumes lia-
bility for all other infringement to the extent of the authorization and consent herein-
above granted.

§9-9.102-2 Authorization and consent in contracts for research, development, or demonstration.

Greater latitude in the use of patented inventions may be necessary in a contract for research, development, or demonstration work than in a contract for supplies. Unless prohibited by §9– 9.102(c), the following clause shall be included in all contracts calling for research, development, or demonstration work and shall be included in contracts calling for both supplies and research, development, or demonstration work where the latter work is a primary purpose of the contract. In all other contracts for both supplies and research, development, or demonstration work, the Authorization and Consent clause in §9-9.102-1 shall be used. If the following clause is included in a contract, the clause in §9-9.102-1 shall not be included.

AUTHORIZATION AND CONSENT

The Government hereby gives its authorization and consent for all use and manufac-
ture of any invention described in and covered by a patent of the United States in
the performance of this contract or any part hereof or any amendment hereto or
any subcontract hereunder (including all lower-tier subcontracts).

§9-9.103 Patent indemnification of Government by contractors.

In order that the Government may be reimbursed for liability for patent infringement arising out of or resulting from the performance of construction contracts or contracts for supplies, including standard parts and components which normally are or have been sold or offered for sale to the public in the commercial open market, or which are the same as such supplies with a relatively minor modification thereof, a clause providing for indemnification of the Government shall be included in such contracts as well as in subcontracts, as appropriate, in accordance with the instructions set forth below. However, a Patent Indemnity clause normally shall not be used in contracts or subcontracts:

(a) When the Authorization and Consent clause in §9-9.102-2 applicable to research, development, or demonstration contracts is authorized, except that in contracts calling also for supplies of the kind described above, or for supplying standard parts or components, the Patent Indemnity clause in §9-9.103-3(b) may be used with respect to such supplies; in subcontracts

9-9.103

U. S. DEPARTMENT OF ENERGY

thereunder, the Patent Indemnity clause of §9-9.103-1 or §9-9.103-3(b) shall be used as appropriate;

(b) When the contract is for supplies which clearly are not, or have not been, sold or offered for sale to the public in the commercial open market;

(c) When both performance and delivery are to be outside the United States, its possessions, or Puerto Rico, unless the contract indicates that the supplies are ultimately to be shipped into the United States, its possessions or Puerto Rico, in which case the instructions of §9-9.103-1 or §9-9.103-3 are applicable; or

(d) When the contract is for an amount of $10,000 or less (as a matter of administrative convenience, however, the clause need not be deleted where it is a part of a standard form being used for such contracts, since it is self-deleting).

§9-9.103-1 Patent indemnification in formally advertised contracts predetermined.

commercial status

Except as prohibited by §9-9.103, the following clause is appropriate in formally advertised construction contracts and shall be included in formally advertised contracts for supplies when it has been determined in advance of issuing the invitation for bids that the supplies (or such supplies apart from relatively minor modifications to be made thereto) normally are or have been sold or offered for sale by any supplier to the public in the commercial open market.

PATENT INDEMNITY

If the amount of this contract is in excess of $10,000 the contractor shall indemnify
the Government and its officers, agents, and employees against liability, including
costs, for infringement of any United States letters patent (except U.S. letters patent
issued upon an application which is now or may hereafter be kept secret or otherwise
withheld from issue by order of the Government) arising out of the manufacture
or delivery of supplies or out of construction, alteration, modification, or repair of
real property (hereinafter referred to as "construction work") under this contract,
or out of the use or disposal by or for the account of the Government of such supplies
or construction work. The foregoing indemnity shall not apply unless the contractor
shall have been informed as soon as practicable by the Government of the suit or
action alleging such infringement, and shall have been given such opportunity as
is afforded by applicable laws, rules, or regulations to participate in the defense
thereof; and further, such indemnity shall not apply to: (a) an infringement re-
sulting from compliance with specific written instructions of the Contracting Officer
directing a change in the supplies to be delivered or in the materials or equipment
to be used, or directing a manner of performance of the contract not normally used
by the contractor; (b) an infringement resulting from addition to or change in,
such supplies or components furnished or construction work performed which addi-
tion or change was made subsequent to delivery or performance by the contractor;
or (c) a claimed infringement which is settled without the consent of the contrac-
tor, unless required by final decree of a court of competent jurisdiction.

§9-9.103-2 (Reserved)

§9-9.103-3 Patent indemnification in negotiated contracts.

The fact that a contract is negotiated does not preclude inclusion of a Patent Indemnity clause in such a contract, and such clause may be included in negotiated construction contracts and in contracts for supplies when such supplies normally are or have been sold or offered for sale to the public in the commercial open market, or are such supplies with relatively minor modifications made thereto, or in contracts for supplying standard parts or components.

(a) Subject to the foregoing and to the prohibitions in §9-9.103, the clause in §9-9.103-1 is approved for use in negotiated contracts for construction work or supplies.

PROCUREMENT REGULATIONS

9-9.104

(b) Except as prohibited by §9-9.103, the following clause is appropriate in research, development, or demonstration contracts when it has been determined by DOE in any particular contracting situation that the contract will require standard supplies sold or offered for sale to the public on the commercial open market or will use the contractor's practices or methods which normally are or have been used in providing goods and services on the commercial open market.

PATENT INDEMNITY

The contractor shall indemnify the Government and its officers, agents, and employ-
ees against liability, including costs, for infringement of U.S. Letters Patent (except
U.S. Letters Patent issued upon an application which is now or may hereafter be
kept secret or otherwise withheld from issue by order of the Government) resulting
from the contractor's: (a) furnishing or supplying standard parts or components
which have been sold or offered for sale to the public on the commercial open mar-
ket; or (b) utilizing its normal practices or methods which normally are or have
been used in providing goods and services in the commercial open market, in the
performance of the contract; or (c) utilizing any parts, components, practices, or
methods to the extent to which the contractor has secured indemnification from lia-
bility. The foregoing indemnity shall not apply unless the contractor shall have been
informed as soon as practicable by the Government of the suit or action alleging
such infringement, and shall have been given such opportunity as is afforded by ap-
plicable laws, rules, or regulations to participate in the defense thereof; and further,
such indemnity shall not apply to a claimed infringement which is settled without
the consent of the contractor, unless required by final decree of a court of competent
jurisdiction or to an infringement resulting from addition to or change in such sup-
plies or components furnished or construction work performed for which addition
or change was made subsequent to delivery or performance by the contractor.

§9-9.103-4 Waiver of indemnity by the Government.

If it is desired to exempt one or more specified United States patents from the Patent Indemnity clause in §9-9.103-1 and §9-9.103-3(b), concurrence for such exemption shall be obtained from the Patent Counsel assisting the procuring activity, and the following clause shall be included in the contract, in addition to the Patent Indemnity clause.

WAIVER OF INDEMNITY

Any provision of this contract to the contrary notwithstanding, the Government
hereby authorizes and consents to the use and manufacture, solely in the perfor-
mance of this contract, of any invention covered by the United States patents identi-
fied as listed below, and waives indemnification by the contractor with respect to
such patents: (identify the patents by number or by other means if more appropriate).

§9-9.104 Notice and assistance.

The Government should be notified by the contractor of all claims of infringement in connection with the performance of a Government contract which come to the contractor's attention. The contractor should also assist the Government, to the extent of evidence and information in the possession of the contractor, in connection with any suit against the Government or any claims against the Government made before suit has been instituted, on account of any alleged patent or copyright infringement arising out of or resulting from the performance of the contract. Accordingly, the following clause shall be included in all contracts in excess of $10,000 for supplies, services, construction, research, development, or demonstration work. However, the clause shall not be included in contracts:

(a) Where both performance and delivery are to be outside the United States, its possessions, or Puerto Rico, unless the contract indicates that the supplies are ultimately to be shipped into the United States, its possessions, or Puerto Rico; or

9-9.104

U. S. DEPARTMENT OF ENERGY

(b) Of $10,000 or less (as a matter of administrative convenience, however, the clause need not be deleted when it is part of a standard form being used for such contracts since it is selfdeleting).

NOTICE AND ASSISTANCE REGARDING PATENT AND
COPYRIGHT INFRINGEMENT

The provisions of this clause shall be applicable only if the amount of this contract
exceeds $10,000.

(a) The contactor shall report to the Contracting Officer, promptly and in
reasonable written detail, each notice or claim of patent or copyright infringement
based on the performance of this contract of which the contractor has knowledge.

(b) In the event of any claim or suit against the Government on account of any alleged patent or copyright infringement arising out of the performance of this contract or out of the use of any supplies furnished or work or services performed hereunder, the contractor shall furnish to the Government when requested by the Contracting Officer, all evidence and information in possession of the contractor pertaining to such suit or claim. Such evidence and information shall be furnished at the expense of the Government except where the contractor has agreed to indemnify the Government.

§9-9.105 (Reserved).

(c) This clause shall be included in all subcontracts.

§9-9.106 Classified inventions.

Unauthorized disclosure of classified subject matter, whether in a patent application or resulting from the issuance of a patent, may be a violation of not only the Atomic Energy Act of 1954, as amended, and other laws relating to espionage and national security, but also provisions pertaining to disclosure of information incorporated in the contract. Accordingly, the following clause shall be included in every contract which covers or is likely to cover classified subject

matter.

CLASSIFIED INVENTIONS

(a) The contractor shall not file or cause to be filed on any invention or discovery conceived or first actually reduced to practice in the course of or under this contract in any country other than the United States, an application or registration for a patent without first obtaining written approval of the Contracting Officer.

(b) When filing a patent application in the United States on any invention or discovery conceived of or first actually reduced to practice in the course of or under this contract, the subject matter of which is classified for reasons of security, the contractor shall observe all applicable security regulations covering the transmission of classified subject matter. When transmitting the patent application to the United States Patent and Trademark Office, the contractor shall by separate letter identify by agency and number, the contract or contracts which require security classification markings to be placed on the application.

(c) The substance of this clause shall be included in subcontracts which cover or are likely to cover classified subject matter.

§9-9.107 Patent rights under contracts for research, development, and demonstration and under special contracts.

§9-9.107-1 General.

This section sets forth the policies, procedures and practices of DOE in connection with inventions, patents, and related matters based upon the Atomic Energy Act of 1954, as amended (42 USC 2182), and Section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974 (42 USC 5908); and, to the extent not inconsistent with the foregoing statutes, the revised Presidential Memorandum and Statement of Government Patent Policy, August 23.