9:8 PATENTS, DATA, AND COPYRIGHTS Secretary or his designee determines that it would not be in the public interest to acquire the license for the States and domestic municipal governments; and (ii) the right to sublicense any foreign government pursuant to any existing or future treaty or agreement if the Secretary or his designee determines it would be in the national interest to acquire the right; and (iii) the principal or exclusive rights to the invention in any country in which the contractor does not elect to secure a patent. (i) When the principal or exclusive rights in an invention are acquired by the Government, there normally will be reserved to the contractor a revocable, nonexclusive, royalty free license for the practice of the invention throughout the world, the right to revoke such license being reserved in order to grant an exclusive license when it is determined that some degree of exclusivity may be necessary to encourage further development and commercialization of the invention. When the Government has a right to acquire the principal or exclusive rights to an invention and does not elect to secure a patent in a foreign country, the contractor may be permitted to retain such rights in any foreign country in which he elects to secure a patent, subject to the Government's rights set forth in (h) above. (j) Nothing herein shall be construed to confer immunity upon any person from the antitrust laws or from a charge of patent misuse, and no person shall be immune from the operation of State or Federal law by reason of the retention and use of rights set forth herein. 9-107.3 Procedures. (a) Selection of Patent Rights Clause. (1) When a contract which is to be performed in the United States, its possessions, Puerto Rico, or the District of Columbia has as a purpose the conduct of experimental, developmental, or research work, the contracting officer, after consultation with cognizant legal, patent and technical advisors, shall apply the policy in 9-107.2 to the contracting situation and shall include in the contract a patent rights clause from 7-302.23(a), (b) or (c) or 7-302.23(h) or (i). The clauses in 7-302.23(a), (b) and (c) shall be used in contracts with industrial concerns, in contracts with nonprofit organizations (see 13-101.13) calling for developmental work, and, normally, in contracts calling for basic or applied research with nonprofit organizations. However, the clauses in 7-302.23(h) and (i) may be used in contracts calling for basic or applied research with nonprofit organizations when the Government's interest in inventions will not be impaired. The clauses in 7-302.23(a), (b) and (c) essentially differ from those in 7-302.23(h) and (i) in that the former include the following provisions which are not included in the latter: forfeiture of rights in unreported inventions; examination of records relating to inventions; withholding of payment; and subcontracts. The clauses in 7-302.23(h) and (i) are not appropriate for use in situations where the Secretary or his designee determines that a contractor is entitled to retention of greater rights upon a finding that "exceptional circumstances," as provided for in 9-107.2(a) are present. In this situation, an appropriate clause in 7-302.23(a), (b) or (c), suitably modified, shall be used. The Pre-Solicitation Patent Rights 9-107.3 ARMED SERVICES PROCUREMENT REGULATION PATENTS, DATA, AND COPYRIGHTS Documentation Checklist set forth in 9-107.3(b) normally will be completed by cognizant technical personnel to enable the contracting officer to determine the appropriate clause(s) to be incorporated in solicitations for such work. If either of the clauses in 7-302.23(a) or 7-302.23(h) is determined to be applicable, that clause alone shall be used in the solicitation. If these clauses are determined to be inapplicable, both of the clauses in 7-302.23(b) and 7-302.23(c) or the clauses in 7-302.23(b) and 7-302.23(i) shall be included in the solicitation together with the statement: "The Contracting Officer will determine during negotiation, in accordance with the guidelines of ASPR 9–107.3, which of these two clauses will be included in the contract." Except when the clause in 7-302.23(a) or 7-302.23(h) is determined to be applicable, DD Form 1564, “Pre-Award Patent Rights Documentation" normally will be included in each solicitation. In an unsolicited proposal situation, the proposer may be requested to complete DD Form 1564. The checklist and the form, if used, shall be made a part of the contract file (9-107.3(b)). When a determination to include the clause of 7-302.23(a) or 7-302.23(h) is based solely on the criterion of 9–107.2(a)(iii), a notice to that effect will be included in the solicitation, and the solicitation shall provide offerors with an opportunity to show that the selected clause proposed for a contract is inappropriate for the particular procurement situation. The contracting officer shall review the offeror's showing and if the contracting officer is not persuaded by the showing, he shall inform the offeror, in writing, of his conclusions and the reasons therefor. If the contracting officer and the offeror cannot then resolve the issue, the contracting officer will promptly forward the matter to the Chief of the Purchasing Office for resolution. If the award of the contract cannot be delayed, the contracting officer may proceed with the procurement pending resolution of the issue provided the clause of 7-302.23(a) or 7-302.23(h), as appropriate, is included in the contract accompanied by the statement: “Contractor agrees to accept the Patent Rights clause which is ultimately determined by the Chief of the Purchasing Office to be appropriate." This procedure is inapplicable to the "exceptional circumstances" situation of 9-107.2(a). In implementing 9-107.2(d), contractors in no event will be asked to state their willingness to grant the Government principal or exclusive patent rights prior to a determination that proposals of equivalent merit have been presented. (2) The Patent Rights clause in 7-302.23(a) shall be used, except when the clause in 7-302.23(h) is used pursuant to 9–107.3(a)(1), if it is determined that the experimental, developmental or research work to be performed under the contract falls within 9-107.2(a). This clause provides that the Government shall acquire title, under certain circumstances, to inventions made in the course of or under the contract, subject to the reservation of nonexclusive license rights to the contractor. For the contract work to be determined as falling within 9-107.2(a)(ii), a principal purpose of the contract must be directly concerned with the public health, public welfare or public safety (e.g., drugs, medical instruments, water desalinization, environmental protection and weather modification.) The determination should not be influenced by the sole military application of such work. For the contract work to be determined as falling within 9–107.2(a)(iii), the contract must be for an end item in a field of science or technology in which there is little or no significant experience outside of work 9-107.3 ARMED SERVICES PROCUREMENT REGULATION 9:8 PATENTS, DATA, AND COPYRIGHTS Secretary or his designee determines that it would not be in the public interest to acquire the license for the States and domestic municipal governments; and (ii) the right to sublicense any foreign government pursuant to any existing or future treaty or agreement if the Secretary or his designee determines it would be in the national interest to acquire the right; and (iii) the principal or exclusive rights to the invention in any country in which the contractor does not elect to secure a patent. (i) When the principal or exclusive rights in an invention are acquired by the Government, there normally will be reserved to the contractor a revocable, nonexclusive, royalty free license for the practice of the invention throughout the world, the right to revoke such license being reserved in order to grant an exclusive license when it is determined that some degree of exclusivity may be necessary to encourage further development and commercialization of the invention. When the Government has a right to acquire the principal or exclusive rights to an invention and does not elect to secure a patent in a foreign country, the contractor may be permitted to retain such rights in any foreign country in which he elects to secure a patent, subject to the Government's rights set forth in (h) above. (j) Nothing herein shall be construed to confer immunity upon any person from the antitrust laws or from a charge of patent misuse, and no person shall be immune from the operation of State or Federal law by reason of the retention and use of rights set forth herein. 9-107.3 Procedures. (a) Selection of Patent Rights Clause. (1) When a contract which is to be performed in the United States, its possessions, Puerto Rico, or the District of Columbia has as a purpose the conduct of experimental, developmental, or research work, the contracting officer, after consultation with cognizant legal, patent and technical advisors, shall apply the policy in 9-107.2 to the contracting situation and shall include in the contract a patent rights clause from 7-302.23(a), (b) or (c) or 7-302.23(h) or (i). The clauses in 7-302.23(a), (b) and (c) shall be used in contracts with industrial concerns, in contracts with nonprofit organizations (see 13-101.13) calling for developmental work, and, normally, in contracts calling for basic or applied research with nonprofit organizations. However, the clauses in 7-302.23(h) and (i) may be used in contracts calling for basic or applied research with nonprofit organizations when the Government's interest in inventions will not be impaired. The clauses in 7–302.23(a), (b) and (c) essentially differ from those in 7-302.23(h) and (i) in that the former include the following provisions which are not included in the latter: forfeiture of rights in unreported inventions; examination of records relating to inventions; withholding of payment; and subcontracts. The clauses in 7-302.23(h) and (i) are not appropriate for use in situations where the Secretary or his designee determines that a contractor is entitled to retention of greater rights upon a finding that "exceptional circumstances," as provided for in 9-107.2(a) are present. In this situation, an appropriate clause in 7-302.23(a), (b) or (c), suitably modified, shall be used. The Pre-Solicitation Patent Rights 9-107.3 ARMED SERVICES PROCUREMENT REGULATION PATENTS, DATA, AND COPYRIGHTS Documentation Checklist set forth in 9–107.3(b) normally will be completed by cognizant technical personnel to enable the contracting officer to determine the appropriate clause(s) to be incorporated in solicitations for such work. If either of the clauses in 7-302.23(a) or 7-302.23(h) is determined to be applicable, that clause alone shall be used in the solicitation. If these clauses are determined to be inapplicable, both of the clauses in 7–302.23(b) and 7–302.23(c) or the clauses in 7-302.23(b) and 7–302.23(i) shall be included in the solicitation together with the statement: "The Contracting Officer will determine during negotiation, in accordance with the guidelines of ASPR 9–107.3, which of these two clauses will be included in the contract." Except when the clause in 7-302.23(a) or 7-302.23(h) is determined to be applicable, DD Form 1564, "Pre-Award Patent Rights Documentation” normally will be included in each solicitation. In an unsolicited proposal situation, the proposer may be requested to complete DD Form 1564. The checklist and the form, if used, shall be made a part of the contract file (9-107.3(b)). When a determination to include the clause of 7–302.23(a) or 7-302.23(h) is based solely on the criterion of 9–107.2(a)(iii), a notice to that effect will be included in the solicitation, and the solicitation shall provide offerors with an opportunity to show that the selected clause proposed for a contract is inappropriate for the particular procurement situation. The contracting officer shall review the offeror's showing and if the contracting officer is not persuaded by the showing, he shall inform the offeror, in writing, of his conclusions and the reasons therefor. If the contracting officer and the offeror cannot then resolve the issue, the contracting officer will promptly forward the matter to the Chief of the Purchasing Office for resolution. If the award of the contract cannot be delayed, the contracting officer may proceed with the procurement pending resolution of the issue provided the clause of 7-302.23(a) or 7-302.23(h), as appropriate, is included in the contract accompanied by the statement: "Contractor agrees to accept the Patent Rights clause which is ultimately determined by the Chief of the Purchasing Office to be appropriate.” This procedure is inapplicable to the "exceptional circumstances" situation of 9-107.2(a). In implementing 9-107.2(d), contractors in no event will be asked to state their willingness to grant the Government principal or exclusive patent rights prior to a determination that proposals of equivalent merit have been presented. (2) The Patent Rights clause in 7-302.23(a) shall be used, except when the clause in 7-302.23(h) is used pursuant to 9–107.3(a)(1), if it is determined that the experimental, developmental or research work to be performed under the contract falls within 9–107.2(a). This clause provides that the Government shall acquire title, under certain circumstances, to inventions made in the course of or under the contract, subject to the reservation of nonexclusive license rights to the contractor. For the contract work to be determined as falling within 9-107.2(a)(ii), a principal purpose of the contract must be directly concerned with the public health, public welfare or public safety (e.g., drugs, medical instruments, water desalinization, environmental protection and weather modification.) The determination should not be influenced by the sole military application of such work. For the contract work to be determined as falling within 9-107.2(a)(iii), the contract must be for an end item in a field of science or technology in which there is little or no significant experience outside of work 9-107.3 ARMED SERVICES PROCUREMENT REGULATION 9:10 PATENTS, DATA, AND COPYRIGHTS funded by the Government at the time the contract is entered into, or when at such time the Government has been the principal developer. For the contract work to be determined as falling within 9-107.2(a)(iv)(A), the contract must call for experimental, developmental or research work at the Government-owned facility. The expression "coordinating and directing the work of others" in 9-107.2(a)(iv)(B) does not refer to the normal prime contractor-subcontractor relationship, but instead refers to a relationship which may give rise to a potential organizational conflict-of-interest (see 1-113.2). The contractor may retain greater rights than a nonexclusive license after an invention has been identified if the contracting officer determines that the criteria of 9-109.6(c) are met. When the Secretary or his designee determines that exceptional circumstances exist as provided for in 9–107.2(a), paragraphs (b) and (i) of the clause prescribed in 7-302.23(a) may be appropriately modified so that the contractor retains greater rights than a nonexclusive license to all or specific inventions. (3) The Patent Rights clause in 7-302.23(b) shall be used when it is determined that the experimental, developmental or research work to be performed under the contract does not come within 9-107.2(a) but is within 9-107.2(b). This clause provides that title to any inventions resulting from the contract remains in the contractor, subject to the acquisition of certain specified rights by the Government. In determining whether the contract falls within 9-107.2(b), the contracting officer shall first determine whether the work to be performed under the contract is in a field of technology directly related to an area in which the contractor has an established nongovernmental commercial position. In this determination, the phrase "field of technology" plays a significant role and should be interpreted in the light of the broad engineering principles and techniques involved in the research and/or development work to be performed under the contract rather than the nature of the end product or its intended governmental application. In determining whether the prospective contractor has an established nongovernmental commercial position, any of the following activities of the contractor directly related to a field of technology involved in the procurement can be considered as qualifying: (i) regular engagement as a manufacturer or source of products or services to the general domestic public, or to foreign governments, nationals or businesses, or to multi-national organizations; or (ii) development within the immediate past five years of non-governmental markets for inventions; or (iii) an effective program for the transfer of technology as by the licensing of inventions. (4) The Patent Rights clause in 7-302.23(c) shall be used, except when the clause in 7-302.23(i) is used pursuant to 9-107.3(a)(1), when it is determined that the experimental, developmental or research work to be performed under the contract does not come within 9-107.2(a) or (b), but is within 9-107.2(c). The clause in 7-302.23(c) provides that the allocation of rights in inventions resulting from the contract shall be deferred until after an invention has been identified in accordance with the criteria of 9–109.6(d). (5) In the special cases covered by the paragraphs below, the contracting officer shall follow the instructions and include the clauses required in such paragraphs: 9-107.3 ARMED SERVICES PROCUREMENT REGULATION |