Page images
PDF
EPUB

CONTRACT CLAUSES AND SOLICITATION PROVISIONS

terms that are reasonable in the circumstances, or can show cause why the prin

cipal or exclusive rights should be retained for a further period of time; or (B) to the extent that the invention is required for public use by governmental regu

lations or as may be necessary to fulfill public health, welfare or safety needs, or

for other public purposes stipulated in this contract;
(iii) shall submit written reports at reasonable intervals, upon request of the Government,

during the term of the patent on the Subject Invention, regarding:
(A) the commercial use that is being made or is intended to be made of such inven-

tion; and
(B) the steps taken by the Contractor or his transferee to bring the invention to the

point of practical application, or to make the invention available for licensing; (iv) agrees to arrange, when licensing any subject inventions, to avoid royalty charges on

procurements involving Government funds, including funds derived through the Military Assistance Program of the Government or otherwise derived through the Government, and to refund any amounts received as royalty charges on any Subject Invention in procurements for, or on behalf of, the Government, and to provide for

such refund in any instrument transferring rights in such invention to any party; and (v) agrees to provide for the Government's paid-up license pursuant to paragraph (c)(i)

of this clause in any instrument transferring rights in a Subject Invention and to provide for the granting of licenses as required by (c)(ii) of this clause, and for the reporting of utilization information as required by paragraph (c)(iii) of this clause whenever the instrument transfers principal or exclusive rights in any Subject Inven

tion. Nothing contained in this paragraph (c) shall be deemed to grant to the Government any rights with respect to any invention other than a Subject Invention. (d) Minimum rights to the Contractor.

(1) The Contractor reserves a revocable, nonexclusive, royalty-free license in each patent application filed in any country on a Subject Invention and any resulting patent in which the Government acquires title. The license shall extend to the Contractor's domestic subsidiaries and affiliates, if any, within the corporate structure of which the Contractor is a part and shall include the right to grant sublicenses of the same scope to the extent the Contractor was legally obligated to do so at the time the contract was awarded. The license shall be transferable only with approval of the Contracting Officer, except when transferred to the successor of that part of the Contractor's business to which the invention pertains.

(2) The Contractor's domestic nonexclusive license retained pursuant to paragraph (d)(1) of this clause may be revoked or modified to the extent necessary to achieve expeditious practical application of the Subject Invention. The license shall not be revoked in that field of use and/or the geographical areas in which the contractor has brought the invention to the point of practical application and continues to make the benefits of the invention reasonably accessible to the public. The Contractor's nonexclusive license in any foreign country reserved pursuant to paragraph (d)(1) of this clause may be revoked or modified at the discretion of the Contracting Officer to the extent the Contractor or his domestic subsidiaries or affiliates have failed to achieve the practical application of the invention in such foreign country.

(3) Before modification or revocation of the license, pursuant to paragraph (d)(2) of this clause, the Contractor shall be given written notice of the intent to modify or revoke the license and shall be allowed thirty (30) days or such longer period as may be authorized by the Contracting Officer for good cause shown in writing by the Contractor after such notice to show cause why the license should not be modified or revoked. The Contractor shall have the right to contest any decision concerning the modification or revocation of the license in accordance with Departmental inventions licensing regulations. (e) Invention identification, disclosures and reports.

(1) The Contractor shall establish and maintain active and effective procedures to assure that Subject Inventions are promptly identified and timely disclosed. These procedures shall include the maintenance of laboratory notebooks or equivalent records and other records as are rcasonably necessary to document the conception and/or the first actual reduction to practice of Subject Inventions, and records which show that the procedures for identifying and disclosing the inventions are followed. Upon request, the Contractor shall furnish the Contracting Officer a dcscription of such procedures so that he may evaluate and determine their effectiveness.

7-302.23

ARMED SERVICES PROCUREMENT REGULATION

[ocr errors]

CONTRACT CLAUSES AND SOLICITATION PROVISIONS

(2) The Contractor shall furnish the Contracting Officer: (i) a complete technical disclosure for each Subject Invention, within six (6) months

after conception or first actual reduction to practice, whichever occurs first in the course of or under the contract, but in any event prior to any on sale, public use, or publication of such invention known to the Contractor. The disclosure shall identify the contract and inventor(s) and 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 charac

teristics of the invention;
(ii) interim reports, preferably on DD Form 882, at least every twelve (12) months from

the date of the contract listing Subject Inventions during that period and certifying
that:
(A) the Contractor's procedures for identifying and disclosing Subject Inventions as

required by this paragraph (e) have been followed throughout the reporting

period; and (B) all Subject Inventions have been disclosed or that there are no such inventions;

and (iii) a final report, preferably on DD Form 882, within three (3) months after completion

of the contract work, listing all Subject Inventions or certifying that there were no

such inventions. (3) The Contractor shall obtain patent agreements to effectuate the provisions of this clause from all persons in his employ who perform any part of the work under this contract except nontechnical personnel, such as clerical and manual labor personnel.

(4) 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 this clause. (f) Forfeiture of rights in unreported Subject Inventions.

(1) The Contractor shall forfeit to the Government all rights in any Subject Invention which he fails to disclose to the Contracting Officer within six (6) months after the time he:

(i) files or causes to be filed a United States or foreign application thereon, or
(ii) submits the final report required by paragraph (e)(2)(iii) of this clause, whichever is

later. (2) However, the Contractor shall not forfeit rights in a Subject Invention if, within the time specified in ( 1 )(i) or (1)(ii) of this paragraph (f), the Contractor:

(i) prepared a written decision based upon a review of the record that the invention was

neither conceived nor first actually reduced to practice in the course of or under the

contract; or (ii) contending that the invention is not a Subject Invention, he nevertheless discloses the

invention and all facts pertinent to his contention to the Contracting Officer; or (iii) establishes that the failure to disclose did not result from his fault or negligence.

(3) Pending written assignment of the patent applications and patents on a Subject Invention determined by the Contracting Officer to be forfeited (such determination to be a final decision under the Disputes clause), the Contractor shall be deemed to hold the invention and the patent applications and patents pertaining thereto in trust for the Government. The forfeiture provision of this paragraph (f) shall be in addition to and shall not supersede other rights and remedies which the Government may have with respect to Subject Inventions. (8) Examination of records relating to inventions.

(1) The Contracting Officer or his authorized representative shall, until the expiration of three (3) years after final payment under this contract, have the right to examine any books (including laboratory notebooks), records, documents, and other supporting data of the Contractor which the Contracting Officer reasonably deems pertinent to the discovery or identification of Subject Inventions or to determine compliance with the requirements of this clause.

(2) The Contracting Officer or his authorized representative shall have the right to examine all books (including laboratory notebooks), records, and documents of the Contractor relating to the conception or first actual reduction to practice of inventions in the same field of technology as the work under this contract, to determine whether any such inventions are Subject Inventions if the Contractor refuses or fails to:

7-302.23

ARMED SERVICES PROCUREMENT REGULATION

CONTRACT CLAUSES AND SOLICITATION PROVISIONS

(i) establish the procedures of paragraph (e)(1) of this clause; or
(ii) maintain and follow such procedures; or
(iii) correct or eliminate any material deficiency in the procedures within thirty (30) days

after the Contracting Officer notifies the Contractor of such a deficiency. (h) Withholding of payment (not applicable to subcontracts).

(1) Any time before final payment of the amount of this contract, the Contracting Officer may, if he deems such action warranted, w'thhold payment until a reserve not exceeding $50,000 or five percent (5%) of the amount of this contract, whichever is less, shall have been set aside if in his opinion the Contractor fails to:

(i) establish, maintain and follow effective procedures for identifying and disclosing Sub

ject Inventions pursuant to paragraph (e)(1) of this clause; or (ii) disclose any Subject Invention pursuant to paragraph (e)(2)(i) of this clause; or (iii) deliver acceptable interim reports pursuant to paragraph (e)(2)(ii) of this clause; or (iv) provide the information regarding subcontracts pursuant to paragraph (i)(5) of this

clause. Such reserve or balance shall be withheld until the Contracting Officer has determined that the Contractor has rectified whatever deficiencies exist and has delivered all reports, disclosures, and other information required by this clause.

(2) Final payment under this contract shall not be made before the Contractor delivers to the Contracting Officer all disclosures of Subject Inventions required by paragraph (e)(2)(i) of this clause, an acceptable final report pursuant to (e)(2)(iii) of this clause and all past due confirmatory instruments.

(3) The Contracting Officer may, in his discretion, decrease or increase the sums withheld up to the maximum authorized above. If the Contractor is a nonprofit organization, the maximum amount that may be withheld under this paragraph shall not exceed $50,000 or one percent (1%) of the amount of this contract, whichever is less. No amount shall be withheld under this paragraph while the amount specified by this paragraph is being withheld under other provisions of the contract. The withholding of any amount or subsequent payment thereof shall not be construed as a waiver of any rights accruing to the Government under this contract. (i) Subcontracts.

(1) For the purpose of this paragraph, the term “Contractor" means the party awarding a subcontract and the term "Subcontractor" means the party being awarded a subcontract, regardless of tier.

(2) The Contractor shall include an ASPR patent rights clause determined by the Contractor to be in accordance with the policy expressed in ASPR 9--107.2 in every subcontract hereunder having as a purpose the conduct of experimental, developmental, or research work, unless the Contractor is directed by the Government Contracting Officer to include a particular clause. In the event of refusal by a subcontractor to accept such clause, the Contractor:

(i) shall promptly submit a written notice to the Government Contracting Officer setting

forth the subcontractor's reasons for such refusal and other pertinent information

which may expedite disposition of the matter; and (ii) shall not proceed with the subcontract without the written authorization of the

Government Contracting Officer. (3) The Contractor shall not, in any subcontract or by using a subcontract as consideration therefor, acquire any rights in his subcontractor's Subject Invention for his own use (as distinguished from such rights as may be required solely to fulfill his contract obligations to the Government in the performance of this contract).

(4) All invention disclosures, reports, instruments, and other information required to be furnished by the subcontractor to the Government Contracting Officer under the provisions of a patent rights clause in any subcontract hereunder may, in the discretion of the Government Contracting Officer, be furnished to the Contractor for transmission to the Government Contracting Officer.

(5) The Contractor shall promptly notify the Government Contracting Officer in writing upon the award of any subcontract containing a patent rights clause by identifying the subcontractor, the applicable patent rights clause, the work to be performed under the subcontract, and the dates of award and estimated completion. Upon request of the Government Contracting Officer, the Contractor shall furnish a copy of the subcontract. If there are no subcontracts contain

[ocr errors][merged small]
[ocr errors]

CONTRACT CLAUSES AND SOLICITATION PROVISIONS

ing patent rights clauses, a negative report shall be included in the final report submitted pursuant to paragraph (e)(2)(iii) of this clause.

(6) The Contractor shall identify all Subject Inventions of the Subcontractor of which he acquires knowledge in the performance of this contract and shall notify the Government Contracting Officer promptly upon the identification of the inventions.

(7) It is understood that the Government is a third party beneficiary of any subcontract clause granting rights to the Government in Subject Inventions, and the Contractor hereby assigns to the Government all rights that he would have to enforce the subcontractor's obligations for the benefit of the Government with respect to Subject Inventions. The Contractor shall not be obligated to enforce the agreements of any subcontractor hereunder relating to the obligations of the subcontractor to the Government in regard to Subject Inventions. (j) Filing of domestic patent applications.

(1) With respect to each Subject Invention in which the Contractor elects to retain domestic rights pursuant to paragraph (b) of this clause, the Contractor shall have a domestic patent application filed within six (6) months after submission of the invention disclosure pursuant to paragraph (e)(2)(i) of this clause, or such longer period as may be approved in writing by the Contracting Officer for good cause shown in writing by the Contractor. With respect to such invention, the Contractor shall promptly notify the Contracting Officer of any decision not to file an application.

(2) For each Subject Invention on which a patent application is filed by or on behalf of the Contractor, the Contractor shall:

(i) within two (2) months after such filing, or within two (2) months after submission of

the invention disclosure if the patent application previously has been filed, deliver to the Contracting Officer a copy of the application as filed, including the filing date

and serial number; (ii) include the following statement in the second paragraph of the specification of the

application and any patents issued on the Subject Invention, "The Government has rights in this invention pursuant to Contract (or Grant) No. ...................... awarded

by (identify the Departmeni)"; (iii) within six (6) months after filing the application, or within (6) months after sub

mitting the invention disclosure if the application has been filed previously, deliver to the Contracting Officer a duly executed and approved instrument on the form specified in ASPR 9-109.5(b) fully confirmatory of all rights to which the Government is.entitled, and provide the Government an irrevocable power to inspect and

make copies of the patent application file: (iv) provide the Contracting Officer with a copy of the patent within two (2) months

after a patent issues on the application; and (v) not less than thirty (30) days before the expiration of the response period for any ac

tion required by the Patent and Trademark Office, notify the Contracting Officer of any decision not to continue prosecution of the application and deliver to the Con

tracting Officer executed instruments granting the Government a power of attorney. (3) For each Subject Invention in which the Contractor initially elects not to retain principal domestic rights, the Contractor shall inform the Contracting Officer promptly in writing of the date and identity of any on sale, public use, or publication of such 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. (k) Filing of foreign patent applications.

(1) With respect to each Subject Invention in which the Contractor elects to retain principal rights in a foreign country pursuant to paragraph (b)(1) of this clause, the Contractor shall have a patent application filed on the invention in such country, in accordance with applicable statutes and regulations, and within one of the following periods:

(i) eight (8) months from the date of a corresponding United States application filed by

or on behalf of the Contractor; or if such an application is not filed, six (6) months from the date the invention is submitted in a disclosure pursuant to paragraph

(e)(2)(i) of this clause; (ii) six (6) months from the date a license is granted by the Commissioner of Patents and

Trademarks to file foreign applications when such filing has been prohibited by security reasons, or

7-302.23
ARMED SERVICES PROCUREMENT REGULATION

[ocr errors]

CONTRACT CLAUSES AND SOLICITATION PROVISIONS

(iii) such longer period as may be approved in writing by the Contracting Officer. (2) The Contractor shall notify the Contracting Officer promptly of each foreign application filed and, upon written request, shall furnish an English version of such foreign application without additional compensation.

(End of clause)

(c) Patent Righis Clause - Deferred (Long Form). When a contract is determined to fall within 9-107.3(a)(4), the following clause shall be included in the contract.

PATENT RIGHTS - DEFERRED (LONG FORM) (1977 AUG) (a) Definitions

(1) “Subject Invention" means any invention or discovery of the Contractor conceived or first actually reduced to practice in the course 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 plant, which is or may be patentable under the Patent Laws of the United States of America or any foreign country.

(2) “Contract" means any contract, agreement, grant, or other arrangement, or subcontract entered into with or for the benefit of the Government where a purpose of the contract is the conduct of experimental, developmental, or research work.

(3) "States und domestic municipal governments" means the States of the United States, the District of Columbia, Puerto Rico, the Virgin Islands, American Samoa, Guam, the Trust Territory of the Pacific Islands, and any political subdivision and agencies thereof.

(4) "Government agency" includes an executive department, independent commission, board, office, agency, administration, authority, Government corporation, or other Government establishment of the executive branch of the Government of the United States of America.

(5) "To bring to the point of practical applicution" means to manufacture in the case of a composition or product, to practice in the case of a process, or to operate in the case of a machine and under such conditions as to establish that the invention is being worked and that its benefits are reasonably accessible to the public. (b) Allocation of principal rights.

(1) Assignment to the Government. After a Subject Invention is identified, the Contractor agrees to assign to the Government the entire right, title, and interest throughout the world in and to the Subject Invention except to the extent that greater rights are retained under paragraphs (b)(2) and (d) of this clause.

(2) Greater Righis Determinations. The Contractor, or the employee-inventor with authorization of the Contractor, may retain greater rights than the nonexclusive license provided in paragraph (d) of this clause in accordance with the procedure and criteria of ASPR 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 Contracting Officer at the time of the first disclosure of the invention pursuant to paragraph (e)(2)(i) of this clause, or not later than three (3) months thereafter, or such longer period as may be authorized in writing by the Contracting Of. ficer for good cause shown in writing by the Contractor. The information to be submitted for a greater rights determination is specified in ASPR 9-109.6(a). Each determination of greater rights under this contract normally shall be subject to paragraph (c) of this clause and to the reservations and conditions deemed to be appropriate by the Contracting Officer.

(c) Minimum righis acquired by the Governmeni. With respect to each Subject Invention to which the Contractor retains principal or exclusive rights, the Contractor:

(i) hereby grants to the Government a nonexclusive, nontransferable, paid-up license to

make, use, and sell each Subject Invention throughout the world by or on behalf of the Government of the United States (including any Government agency) and the

States and domestic municipal governments; (ii) agrees to grant to responsible applicants, upon request of the Government, a license

on terms that are reasonable under the circumstances;

7-302.23

ARMED SERVICES PROCUREMENT REGULATION

« PreviousContinue »