(1) Advance waivers shall apply only to inventions reported in accordance with paragraph(e)(2)(i) of the clause of §9-9.107-5(a) and with which is included an election as to whether the contractor will retain the rights waived in the invention, and specifying those countries in which rights will be retained. (2) Subject to the rights granted in paragraphs (c)(1), (2) and (3) of the Patent Rights clause of §9-9.107-5(a), the contractor or inventor shall agree to convey to the Government, upon request, the entire domestic right, title, and interest in any subject invention when the contractor or inventor, as appropriate: (i) Does not elect, in accordance with (i)(1) of this section to retain such rights; or (ii) Fails to have a United States patent application filed on the invention in accordance with paragraph (i)(5) of this section, or decides not to continue prosecution of such application; ог (iii) At any time, no longer desires to retain title. (3) Subject to the rights granted in paragraph (c)(1), (2) and (3) of the Patent Rights clause of §9-9.107-5(a), the contractor or inventor shall agree to convey to the Government, upon request, the entire right, title and interest in any subject invention in any foreign country, if the contractor or inventor, as appropriate: (i) Does not elect, in accordance with paragraph (i)(1) of this section, to retain such rights in the country; or (ii) Fails to have a patent application filed in the country on the invention in accordance with paragraph (i)(6) of this section, or decides not to continue prosecution or to pay any maintenance fees covering the invention. To avoid forfeitures of the patent application or patent, the contractor or inventor shall notify the Patent Counsel not less than 60 days before the expiration period for any action required by the Foreign Patent Office. (4) Conveyances requested pursuant to paragraph (i)(2) or (3) of this section shall be made by delivering to the Patent Counsel duly executed instruments and such other papers as are deemed necessary to vest in the Government the entire right, title, and interest in the invention to enable the Government to apply for and prosecute patent applications covering the invention in this or the foreign country, respectively, or otherwise establish its ownership of the invention. (5)(i) With respect to each invention in which the contractor has an advance waiver and elects to retain domestic rights pursuant to paragraph (i)(1) of this section, the contractor shall have a domestic patent application filed within 6 months after submission of the invention disclosure pursuant to paragraph (e)(2)(i) of the clause of §9-9.107-5(a) or such longer period as may be approved by the Patent Counsel for good cause shown in writing by the contractor or inventor. For identified inventions waived to the contractor or inventor, the contractor or inventor shall have a domestic patent application filed within 6 months after the waiver has become effective. With respect to such inventions, the contractor or inventor shall promptly notify the Patent Counsel of any decision not to file an application. (ii) For each subject invention on which a patent application is filed by the contractor or inventor, the contractor or inventor shall: (A) Within 2 months after the filing or within 2 months after submission of the invention disclosure if the patent application previously has been filed, deliver to Patent Counsel a copy of the application as filed including the filing date and serial number; (B) Include the following statement in the second paragraph of the specification of the application and any patents issued on a subject invention, "The Government has rights in this invention pursuant to Contract No. by the U.S. Department of Energy;" (or Grant No. awarded (C) 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 instrument fully confirmatory of all rights to which the Government is entitled, and provide DOE an irrevocable power to inspect and make copies of the patent application filed. If, however, a waiver request is pending, delivery of the confirmation instrument may be delayed until a determination of the waiver request is made; (D) Provide the Patent Counsel with a copy of the patent within 2 months after a patent is issued on the application; and (E) Not less than 30 days before the expiration of the response period for any action required by the Patent and Trademark Office, notify the Patent Counsel of any decision not to continue prosecution of the application and deliver to the Patent Counsel executed instruments granting the Government a power of attorney. (iii) For each invention in which the contractor initially elects pursuant to (i)(1) of this section not to retain the rights waived, the contractor shall inform the Patent Counsel promptly in writing of the date and identity of any on sale, public use, or public disclosure of the invention which may constitute a statutory bar under 35 U.S.C. 102, which was authorized by or known to the contractor, or any contemplated action of this nature. (6)(i) With respect to each invention in which the contractor elects pursuant to (i)(1) of this section to retain the rights waived in a foreign country, or in which the contractor or inventor has obtained a waiver of foreign rights on an identified invention, the contractor or inventor shall have a patent application filed on the invention in that country, in accordance with applicable statutes and regulations, and within one of the following periods: (A) Eight months from the date of a corresponding United States application filed by the contractor or inventor, or if such an application is not filed, 6 months from the date the invention is submitted in a disclosure pursuant to paragraph (e)(2)(i) of the clause of §99.107-5(a); (B) Six months from the date a license is granted by the Commissioner of Patents and Trademarks to file foreign applications where such filing has been prohibited by security reasons; or (C) Such longer period as may be approved by the Patent Counsel. (ii) The contractor or inventor shall notify the Patent Counsel promptly of each foreign application filed and, upon written request, shall furnish an English version of the application without additional compensation. (7) The contractor or inventor shall, three years after a waiver is effective as to an invention, and at three-year intervals thereafter, and when specifically requested by the Patent Counsel, furnish Patent Counsel a report setting forth: and (i) The commercial use that is being made, or is intended to be made, of said invention, (ii) The steps taken to bring the invention to the point of practical application or to make the invention available for licensing. (8) 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. (9) The Head of the Agency or designee has the right to require the granting of a nonexclusive, exclusive, or partially exclusive license to a responsible applicant or applicants, upon terms reasonable under the circumstances: tions; (i) To the extent that the invention is required for public use by Governmental regula (ii) As may be necessary to fulfill health, safety or energy needs; or (iii) Such other purposes as may be stipulated in the applicable agreement. (10) The Head of the Agency or designee has the right to terminate such waiver in whole or in part unless the recipient of such waiver demonstrates to the satisfaction of the Head of the Agency or designee that effective steps have been taken, or within a reasonable time thereafter are expected to be taken, necessary to accomplish substantial utilization of the invention. (11) The Head of the Agency or designee has the right, commencing four years after a waiver is effective as to an invention, 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 the waiver in whole or in part, following a hearing upon notice thereof to the public, upon a petition by an interested person justifying such hearing; (i) If the Head of the Agency or designee determines upon review of such material as is relevant, and after the recipient of the waiver 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 waiver has 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 (ii) The recipient of the waiver demonstrates to the satisfaction of the Head of the Agency or designee at such hearing that effective steps have been taken, or within a reasonable time thereafter are expected to be taken, necessary to accomplish substantial utilization of the invention. (j) Termination. (1) Any waiver may be terminated at the discretion of the Head of the Agency or designee, in whole or in part, if the request for waiver is found to contain false material statements or nondisclosure of material facts, and such were specifically relied upon in reaching the waiver determination. (2) Any waiver, as applied to particular inventions, may be terminated at the discretion of the Head of the Agency or designee, in whole or in part, if the requirements set forth in paragraph (i) of this section (terms and conditions of the waivers) have not been fulfilled and such failure is determined by the Head of the Agency or designee to be material and detrimental to the interests of the United States and the general public. (3) Prior to terminating a waiver under paragraph (j)(1) or (j)(2) of this section, the recipient of the waiver will be given written notice of the intention to terminate the waiver, the extent of such proposed termination and the reason therefor, and a period of 30 days, or such longer period as the Head of the Agency or designee shall determine for good cause shown in writing, to show cause why the waiver should not be so terminated. (4) All terminations of waivers shall be subject to the rights granted in paragraph (c)(1) of the clause of §9-9.107-5(f), and termination shall normally be partial in nature, requiring the waiver recipient to grant nonexclusive or partially nonexclusive licenses to responsible applicants upon terms reasonable under the circumstances. (k) Effective date. Waivers shall be effective on the following dates: (1) For advance waivers of identified inventions, i.e., inventions conceived prior to the effective date of the contract, on the effective date of the contract, even though the advance waiver may have been requested after that date; (2) For identified inventions under advance waivers, i.e., inventions conceived or first actually reduced to practice after the effective date of the contract, on the date the invention is reported with the election to retain rights as to that invention; and (3) For waivers of identified inventions (other than under an advance waiver), on the date of the letter notifying the requestor that the waiver has been granted. §9-9.110 Reporting of royalties. In order that DOE may be informed regarding royalty payments to be made by a contractor in connection with any procurement, construction, or operation where the amount of the royalty payment is reflected in the contract price, or is to be reimbursed by the Government, the negotiator shall: (a) Obtain from the offeror information concerning any royalty payments expected to be made in connection with the proposed procurement, construction, or operation, together with the names of the licensors and either the patent numbers involved or such other information as will permit identification of the patents and patent applications as well as the basis on which the royalties are to be paid; (b) Obtain from the offeror a certificate that the contract price includes no amount representing the payment of royalty by the offeror directly to others in connection with the performance of the contract; or (c) Insert in the contract the clause set forth below: REPORTING OF ROYALTIES If this contract is in an amount which exceeds $10,000 and if any royalty payments Subpart 9-9.2 Technical Data and Copyrights $9-9.200 Scope of subpart. This subpart sets forth DOE's policy, procedures, and contract clauses with respect to the acquisition and use of technical data and copyrights in contracts or subcontracts entered into, with or for the benefit of the Government. §9-9.201 Definitions. For the purpose of this subpart, the following terms have the meanings set forth below: (a) "Technical data” means recorded information, regardless of form or characteristic, of a scientific or technical nature. It may, for example, document research, experimental, developmental, demonstration, or engineering work or be usable or used to define a design or process or to procure, produce, support, maintain, or operate material. The data may be graphic or pictorial delineations in media such as drawings or photographs, text in specifications or related performance or design type documents, or computer software (including computer programs, computer software data bases, and computer software documentation). Examples of technical data include research and engineering data, engineering drawings and associated lists, specifications, standards, process sheets, manuals, technical reports, catalog item identification, and related information. Technical data, as used in this subpart, do not include financial reports, cost analyses, and other information incidental to contract administration. (b) "Proprietary data” means technical data which embody trade secrets developed at private expense, such as design procedures or techniques, chemical composition of materials, or manufacturing methods, processes, or treatments, including minor modifications thereof, provided that such data: (1) Are not generally known or available from other sources without obligation concerning their confidentiality; (2) Have not been made available by the owner to others without obligation concerning their confidentiality; and (3) Are not already available to the Government without obligation concerning their confidentiality. (c) "Contract data” means technical data first produced in the performance of the contract, technical data which are specified to be delivered under the contract, technical data that may be called for under the Additional Technical Data Requirements clause of the contract, if any, or technical data actually delivered in connection with the contract. (d) "Unlimited rights" means rights to use, duplicate or disclose technical data, in whole or in part, in any manner and for any purpose whatsoever, and to permit others to do so. §9-9.202 Acquisition and use of technical data. §9-9.202-1 General. (a) The provisions herein pertain to research, development, demonstration and supply contracts, and contracts for the operation, design, or construction of Government-owned facilities which are covered by §9-9.202-4. Under DOE's broad charter to perform research, development, and demonstration work, in both nuclear and nonnuclear fields, and to meet the objectives stated in §9-9.202-2 below, DOE has extensive needs for technical data. The satisfaction of these needs and the achievement of DOE's objectives through a sound data policy are found in the balancing of the needs and equities of the Government, its contractors, and the general public. |