Page images
PDF
EPUB

(1) fles or causes to be filled a United States or foreign application thereon, or (b) submits the final report required by (c) (ul) of tibis clause, whichever is later: Provided, That the Contractor shall not forfeit rights in & Subject Invention if (A) contending that the invention is not a Subject Invention, he nevertheless reports the invention and all facts pertinent to his contention to the Contracting Officer within the time specified in (1) or (il) above, or (B) be establishes that the failure to report was due entirely to causes beyond his control and without his fault or negligence. The Contractor shall be deemed to hold any such forfeited Subject Invention, and the patent applications and patents pertaining thereto, in trust for the Government pending written assignment of the invention. The rights accruing to the Government under this paragraph shall be in addition to and shall not supersede any other rights which the Government may have in relation to unreported Subject Inventions. Nothing con. tained herein shall be construed to require the Contractor to report any invention which is not in fact a Subject Invention.

(k) Examination of records relating to inventions. The contracting Officer or his authorized representative shall, until the

expiration of three (3) years after final payE ment under this contract, have the right to

examine any books, records, documents, and other supporting data of the Contractor which the contracting Officer or his authorized representative shall reasonably deem directly pertinent to the discovery or identification of Subject Inventions or to compliance by the Contractor with the requirements of this clause.

(c) Patent Rights (Deferred) Clause. Where the contracting oficer has determined that the proposed contract comes

within $ 9.107-4(d), he shall include in 2: the contract the Patent Rights (Title)

clause set forth in paragraph (a) of this section, except that the name of the clause shall be changed to "Patent Rights (Deferred)” and paragraph (h) of that clause shall be replaced by the following

paragraph (h). The clause, when so te modified, differs from the clause set forth o in paragraph (a) of this section only in Dthe circumstances under which the Gov

ernment may permit the contractor to acquire greater rights than the license.

(b) Contractor's request for greater rights. The Contractor at the time of disclosing a Subject Invention pursuant to paragraph (c) of this clause, but not later than three (3) months thereafter, may submit in writing to the Contracting Officer, in accordance with applicable regulations, a request for greater

rights in such Invention than the license y reserved to the Contractor in paragraph (b)

of this clause. Each such request shall in clude, but need not be limited to, informa

tion concerning the Contractor's intention and plan to bring the Invention to the point of commercial application. The Contracting Oficer shall review the Contractor's request for greater rights and shall notify the Contractor whether, and the extent to which, such request is granted. Any rights granted to the Contractor shall be subject to the provisions of (1) of this clause (MAY 1964). (32 F.R. 524, Jan. 18, 1967, as amended at 32 F.R. 4260, Mar. 18, 1967; 33 F.R. 7399, May 18, 1968; 33 F.R. 19922, Dec. 28, 1968; 35 F.R. 6832, Apr. 30, 1970] § 9.107-6 Clause for foreign contracts.

A patent rights clause shall be included in every contract having as one of its purposes experimentad, developmental, or research work which is to be performed outside the United States, its possessions, or Puerto Rico. Except as provided in $ 9.107-8 with respect to contracts on behalf of the National Aeronautics and Space Administration, the clauses authorized in accordance with $ 9.107–5 may be used; however, any clause may be replaced by any other clause tailored to meet requirements peculiar to foreign procurement provided the replacement clause incorporates the principles of the clause being replaced. [29 F.R. 9760, July 21, 1964) 8 9.107–7 Contracts relating to atomic

energy. (a) Except as provided in paragraph (b) of this section, the following paragraph shall be inserted as a part of the Patent Rights clause set forth in § 9.1075(b) in all research or development contracts relating to atomic energy.

(1) With respect to any Subject Invention made by employees of the Contractor (except clerical and manual labor personnel who do not have access to technical data), and relating to the production or utilization of special nuclear material or atomic energy within the purview of the Atomic Energy Acts of 1946 (42 U.S.C. 1801-1819) and of 1954 (42 U.S.C. 2011-2296), the Contractor agrees:

(i) To furnish to the U.S. Atomic Energy Commission (hereinafter in this paragraph (1) referred to as “the Commission”) through the Contracting Officer complete information regarding such Subject Invention, the Commission to have the sole and conclusive power to determine whether and where a patent application shall be filed, and to determine the disposition of the title to and rights under any such application or any patent that may issue thereon;

(ii) To obtain the execution of and deliver to the Commission, all documents relating to each Subject Invention and to do all things necessary or proper to carry out any

o

[ocr errors]
[ocr errors][ocr errors]

determination of the Commission, made (1) If the request states that the NASA under (1) (1) above;

clause is required in any resulting con(111) Unless otherwise authorized in writ

tract and the work to be performed is ing by the Commission to obtain patent

not severable and is funded wholly or in agreements from all such employees to effectuate the purposes of this paragraph (1); and

part by NASA, then the NASA clause and (iv) Unless otherwise authorized in writ no other patent rights clause shall be ing by the Commission, to insert this para included in the contract. graph (1) in all subcontracts.

(ii) If the request states that the No claim for pecuniary award or compensa

NASA clause is required in any resulting tion under the provisions of the Atomic contract and the work to be performed Energy Acts of 1946 and 1954 shall be asserted under the contract is severable and is by the Contractor or his employees with only in part for NASA, then the work respect to any Subject Invention covered by which is on behalf of NASA shall be this paragraph (OCTOBER 1966).

identified in the contract and the NASA (b) Where the work to be performed clause shall be made applicable thereto. or the material or equipment to be fur That portion of the work for a Departnished by the contractor is of such char ment shall likewise be identified and the acter that any such Subject Inventions clause contained in g 9.107-5 or authorthat may be made will probably (1) re ized in § 9.107-6, as appropriate, shall be late only incidentally (and not directly) made applicable to such portion if a to some phase of the basic research or patent rights clause is required by this development work which the Atomic subchapter. Energy Commission conducts or spon

(iii) If the request states that the sors, (2) relate to a field or work in which NASA clause is not required in any rethe contractor has an established in sulting contract and the work to be perdustrial and patent position, or (3) re- formed under the contract is not wholly sult from routine development or on behalf of NASA, then the clause conproduction work by the contractor, a tained in $ 9.107-5 or authorized in provision authorizing the contractor to $ 9.107-6, as appropriate, shall be used retain license rights may be incorporated if a patent rights clause is required by in the paragraph set forth in paragraph this subchapter. (a) of this section. Any such provision (iv) If the request states that the or any deviation from the paragraph NASA clause is not required in any reset forth in paragraph (a) of this sec- sulting contract and such contract is tion, which the Military Department wholly on behalf of NASA, then no concerned proposes to authorize, shall patent rights clause shall be included in be forwarded in accordance with De such contract. partmental procedures to the Atomic

(2) The price of any contract deEnergy Commission for recommendation scribed in subparagraph (1) of this paraand shall not be authorized except with graph shall in no event be increased by the concurrence of the Atomic Energy reason of the inclusion of any patent Commission

rights clause in the contract. [29 F.R. 9760, July 21, 1964, as amended at (b) Deviations. No deviations shall 32 F.R. 528, Jan. 18, 1967)

be made under $ 1.109 of this chapter in § 9.107-8 Contracts placed for NASA. any NASA clause providing for property

rights in inventions except with the prior (a) Patent Rights Clause. (1) The

approval of NASA. Requests for such National Aeronautics and Space Admin

deviations, whether individual or blanket, istration (NASA) will from time to time

shall be processed in accordance with request the Departments to place con § 1.109-3 of this chapter. tracts on behalf of NASA. Such re 129 F.R. 9761, July 21, 1964) quests will state whether or not a NASA

§ 9.107-9 Contracts relating to space. clause providing for property rights in

In order that inventions arising out of inventions is required, and the request

Department of Defense sponsored space should have attached thereto the appro

research and development may be availpriate clause desired by NASA. If such

able for use for the benefit of the general clause is not furnished by NASA, it must

public in communications satellite sysbe obtained from NASA and be included tems, whether such systems are operated in the contract. The following rules by or for the Government or by private amplify the use of patent rights clauses enterprise for the transmission of comin such contracts.

mercial or Government traffic, the para

graph set forth below, in lieu of para. (b) Where it is contemplated that regraph (b) (1) of the Patent Rights clause search, experimental, or developmental prescribed in $ 9.107-5(b) shall be in work will not be involved, paragraph (b) serted, except as provided in $ 9.107-8, of the clause may be omitted. Upon in any contract having as one of its pur written request by the prospective conposes the performance of research and tractor and approval by the Head of the development work under a space pro- Procuring Activity or his authorized repgram, project, or task:

resentative, the clause may be modified (b) Rights granted to the Government.

or omitted where: (1) The Contractor agrees to and does hereby

(1) The period of employment is to be grant to the Government an irrevocable, not more than 90 days in any 1 calendar nonexclusive, and royalty-free license to year; or practice and have practiced each Subject In (2) (i) The period of employment vention (made by the Contractor) through

called for in the contract or in any reout the world for Governmental purposes,

newal thereof is more than 90 days but including the practice of each such Subject Invention (1) in the manufacture, use, and

not more than 1 year of full-time service, disposition of any article or material, (il) in

and the use of any method, or (111) in the per (ii) The prospective contractor is formance of any service, acquired by or for bound by an obligation which existed the Government or with funds derived prior to entering into the proposed conthrough the Military Assistance Program of tract with the Government and which the Government or funds otherwise derived

was not entered into in contemplation through the Government. In addition, the

thereof, and the discharge of which Government shall have the right to grant licenses to others, under such terms and

would be inconsistent with the discharge conditions as may be prescribed, for the prac of any obligation arising under Executice of such Subject Invention throughout tive Order 10096. the world in the design, development, man 132 F.R. 528, Jan. 18, 1967) ufacture, operation, maintenance, and testing of communications satellite systems, and of

$ 9.109 Administration of patent rights equipment, components, and ground track

clauses. ing, transmitting and receiving facilities

The President's Statement of Governtherefor (OCTOBER 1966).

ment Patent Policy (see $ 9.107) pro(32 F.R. 528, Jan. 18, 1967]

vides that every appropriate effort should 8 9.108 Patent rights under contracts be made to realize for the Government for personal services.

and the public the benefit of inventions (a) Except as provided in paragraph and discoveries resulting from experi(b) of this section, the following clause, mental, research and development conwhich is based on Executive Order 10096, tracts even where the inventions are an shall be inserted in all contracts with in incidental product of the work. It is dividuals who are to render personal important that the Government be in a services.

position to know and exercise its rights PATENTS (DECEMBER 1953)

in order to avoid payment of royalties on

inventions in which it has rights and to (a) For the purpose of determining the

defend itself against unjustified claims rights of the Government and the Contractor in and to inventions, the Contractor agrees

and suits for patent infringement. To to be bound by all provisions of Executive attain these ends, contracts having patOrder 10096, dated January 23, 1950, and any ent rights clauses should be so adminorders, rules, regulations, or the like issued istered that: thereunder,

(a) Subject Inventions are identified (b) The Contractor shall: (1) Make written disclosure promptly to the Contracting

and reported as required by the contract Officer of all inventions of the Contractor

clauses; which are conceived or first reduced to prac (b) The rights of the Government in tice during the term of this contract, and

such Inventions are established; sign and execute all papers necessary for con

(c) The rights of the Government are veying to the Government the right to which the Government is entitled in accordance

documented by formal instruments such with the determination made under the pro as licenses or assignments; and visions of Executive Order 10096, or (ii) cer (d) When appropriate, patent applitify to the Contracting Officer that, to the

cations on Subject Inventions are timely best of the Contractor's knowledge and belief, no inventions have been conceived or first

filed and prosecuted by contractors or by reduced to practice during the term of this the Government. contract.

(32 F.R. 528, Jan. 18, 1967)

$ 9.109-1 Applicability.

failures by the contractor to comply with The following policies and procedures

his obligations under the patent rights apply to all contracts having patent

clauses, such as failures to disclose and

report Subject Inventions, both before rights clauses, except that these policies and procedures may be modified in their

and after the contract otherwise has application to a foreign contract so as

been performed. This effort should be

directed primarily towards contracts to be consistent with local law and custom and the provisions of the patent

which because of the nature of the work

or the large dollar amount spent are rights clause of the particular contract

Jikely to result in Subject Inventions sig(see $ $ 1.109 and 9.107–6).

nificant in number or quality, and (32 F.R. 528, Jan. 18, 1967)

towards contracts where there is reason 8 9.109–2 Follow-up by Government. to believe the contractors may not be (a) Each Department shall maintain

complying with their contractual obliga"followup” systems to assure that Sub

tions. Other contracts should be spotject. Inventions are identified and that

checked when feasible. As a minimum, the Government's rights therein are es

appropriate followup shall include the tablished and protected. Followup ac

investigation or review of selected contivities for contracts which include as

tracts or contractors by an individual or part of a patent rights clause either the

team qualified in patent and technical paragraph set forth in .9.107–7(a) or

matters. the NASA clause referenced in 9.107-8

(e) Followup activities may include (a) shall be coordinated with the Atomic

use of Government patent and technical Energy Commission and the National

personnel: Aeronautics and Space Administration,

(1) To review technical reports sub

mitted by the contractor; respectively.

(2) To check the Official Gazette of (b) When it is determined after the award of a contract that the contractor

the U.S. Patent Office and other sources

for patents issued to the contractor in or subcontractor may not have a clear understanding of the rights and obliga

fields related to his Government con

tracts; and tions of the parties under a patent rights

(3) If additional information is reclause, a postaward orientation conference or letter should be used to explain

quired, to interview contractor personnel these rights and obligations (see Sub

as to work under the contract involved, part R, Part 1 of this chapter).

observe the work on site, and inspect

laboratory notebooks and other records (c) The contracting officer adminis

of the contractor related to work under tering the contract shall be responsible

the contract. for receiving invention disclosures, re

(f) In the administration of a subports, confirmatory instruments, notices,

contractor's obligations under a patent requests, and other documents and in

rights clause, the procedures outlined formation submitted by the contractor pursuant to a patent rights clause.

above shall be followed by the GovernWhere the contractor fails to furnish

ment. documents or information called for by

[32 F.R. 529, Jan. 18, 1967] the clause within the time required by $ 9.109_3 Maintenance and use of rece clause, the contracting omncer ad

ords of performance. ministering the contract shall promptly request the contractor to supply the re

(a) Significant or repeated failures by

a contractor to comply with the patent quired documents or information and, if the failure persists, shall take appropri

rights clauses of his contracts shall be ate action to secure compliance. Inven

documented (see $$ 1.308 and 1.905tion disclosures, reports, confirmatory

1(c)). instruments, notices, requests, and other

(b) Where a contract is subject to the documents and information relating to Contractor Performance Evaluation Propatent rights clauses shall be sent by the gram (§ 1.908–1 of this chapter), the procontracting officer administering the curing activity shall report to the project contract to the procuring Department manager any significant or repeated failfor appropriate action.

ure to comply with the patent right (d) The procuring Department shall clause. The project manager shall note establish a method to detect and correct in the Contractor Performance Evalu

ation Reports any such information which he has received relating to the contractor's meeting his obligations under the "required clauses." (32 F.R. 529, Jan. 18, 1967, as amended at 33 F.R. 15391, Oct. 17, 1968]

(b) Where a contract is subject to the contractor performance evaluation program (§ 4.117 of this chapter), the procuring activity shall report to the project manager any significant or repeated failure to comply with the patent right clause. The project manager shall note in the contract or performance evaluation reports any such information which he has received relating to the contractor's meeting his obligations under the “required clauses.” [32 F.R. 529, Jan. 18, 1967, as amended at 32 F.R. 10172, July 11, 1967) 8 9.1094 Conveyance of invention

rights to Government. (a) Where the Government is entitled to the conveyance of the entire right, title, and interest in a subject invention pursuant to a contract, assignments are required from the inventor to the contractor and from the contractor to the Government, to establish clearly the chain of title from the inventor to the Government. The form of conveyance of title from the inventor to the contractor must be legally sufficient to convey the rights the contractor is required to convey to the Government. The format set forth below, which provides the complete chain of title in a single instrument, is approved for use by the contractor to convey title to the Government pursuant to paragraphs (b) and (c) (1) (v) of the clause in $ 9.107–5(a), and paragraphs (d) (iii) (B) and (d) (v) of the clause in $ 9.107-5(b). The contractor shall forward either the preferred single instrument assignment or, if separate documents are used, both assignments at the same time for recording as required by $ 9.109-5.

ASSIGNMENT
Inventor(s): ----------------
Contractor:
Contract No.----------------
Government Agency----------
Application Title: ------
Contractor's Invention Docket No.
Serial No.-------
Filing Date: ------
Date Inventor(s) Executed Oath: -----

The undersigned Inventor(s), in recogni. tion of his (their) obligation as employee(s)

of the Contractor to assign inventions to the Contractor, and pursuant to the obligations of the Contractor to the Government under the above contract, hereby assigns (assign) to the United States of America, subject to a nonexclusive and royalty-free Ucense which is hereby reserved to the Contractor, all right, title and interest in and to each invention disclosed and claimed in the above U.S. patent application.

The license reserved to the Contractor shall extend to all existing and future associated and affiliated companies, if any, within the corporate structure of which the Contractor is a part and shall be assignable to the successor of that part of the Contractor's busiDess to which such invention pertains.

The Inventor(s) further agrees (agree) to assist the Contractor, and the Government, upon request, by furnishing any available information and documents, and by performing all acts and doing all things which may be reasonably necessary to make this assignment effective.

The Contractor joins in and agrees to the foregoing assignment, and except for the above reservation of a license relinquishes and assigns all rights, title and interest in and to such inventors, and further agrees to furnish to The United States of America, upon request, any available information and documents necessary for the prosecution of the above-identified application for patent (including prosecution and settlement of interferences), and any substitution, division, continuation-in-part, or continuation of such patent appucation and any application for reissue of any patent resulting from such patent application.

Signed this .--. day of .. (SEAL)

(Inventor(s)) ATTEST: By

(Address) Signed this ---- day of .. ATTEST:

1

(Contractor) (b) Where the Government is entitled to a royalty-free license in and to a Subject Invention pursuant to contractual provisions (see paragraphs (1) (1) of the clause in $ 9.107-5(a) and (b) (1) of the clause in $ 9.107-5(b)), the format set forth below is approved for use by the contractor in making such a grant.

CONFIRMATORY LICENSE
Application for: -----

(Title of Invention)
Inventor (8): --------
Serial No.:
Contract No.:
Contractor:
Filing Date: ----

[ocr errors]
[ocr errors]
[ocr errors]
[ocr errors]
[ocr errors]
« PreviousContinue »