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(1) files or causes to be filed a United States or foreign application thereon, or (i) submits the final report required by (c) (ul) of this clause, whichever is later: Provided, That the Contractor shall not forfeit rights in a Subject Invention 11 (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 (i) above, or (B) he 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 contained 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 Oficer 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, 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 C compliance by the Contractor with the rey quirements of this clause.
(c) Patent Rights (Deferred) Clause. Where the contracting officer has deterDimined that the proposed contract comes e within $ 9.107-4(d), he shall include in o the contract the Patent Rights (Title)
clause set forth in paragraph (a) of this II 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 at paragraph (h). The clause, when so ste modified, differs from the clause set forth c in paragraph (a) of this section only in I the circumstances under which the GovPec ernment may permit the contractor to
acquire greater rights than the license. Tale (n) 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 reserved to the Contractor in paragraph (b) of this clause. Each such request shall include, 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 Officer 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 FR. 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 experimental, 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 incorporares the principles of the clause being replaced. [29 F.R. 9760, July 21, 1964] $ 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;
(11) 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
determination of the Commission, made under (1) (1) above;
(111) Unless otherwise authorized in writing by the Commission to obtain patent agreements from all such employees to effectuate the purposes of this paragraph (1); and
(iv) Unless otherwise authorized in writing by the Commission, to insert this paragraph (1) in all subcontracts. No claim for pecuniary award or compensation under the provisions of the Atomic Energy Acts of 1946 and 1954 shall be asserted by the Contractor or his employees with respect to any Subject Invention covered by this paragraph (OCTOBER 1966).
(b) Where the work to be performed or the material or equipment to be furnished by the contractor is of such character that any such Subject Inventions that may be made will probably (1) relate only incidentally (and not directly) to some phase of the basic research or development work which the Atomic Energy Commission conducts or sponsors, (2) relate to a field or work in which the contractor has an established industrial and patent position, or (3) result from routine development or production work by the contractor, a provision authorizing the contractor to retain license rights may be incorporated in the paragraph set forth in paragraph (a) of this section. Any such provision or any deviation from the paragraph set forth in paragraph (a) of this section, which the Military Department concerned proposes to authorize, shall be forwarded in accordance with Departmental procedures to the Atomic Energy Commission for recommendation and shall not be authorized except with the concurrence of the Atomic Energy Commission. [29 F.R. 9760, July 21, 1964, as amended at 32 F.R. 528, Jan. 18, 1967] 8 9.107-8 Contracts placed for NASA.
(a) Patent Rights Clause. (1) The National Aeronautics and Space Administration (NASA) will from time to time request the Departments to place contracts on behalf of NASA. Such requests will state whether or not a NASA clause providing for property rights in inventions is required, and the request should have attached thereto the appropriate clause desired by NASA. If such clause is not furnished by NASA, it must be obtained from NASA and be included in the contract. The following rules amplify the use of patent rights clauses in such contracts.
(i) If the request states that the NASA clause is required in any resulting contract and the work to be performed is not severable and is funded wholly or in part by NASA, then the NASA clause and no other patent rights clause shall be included in the contract.
(ii) If the request states that the NASA clause is required in any resulting contract and the work to be performed under the contract is severable and is only in part for NASA, then the work which is on behalf of NASA shall be identified in the contract and the NASA clause shall be made applicable thereto. That portion of the work for a Department shall likewise be identified and the clause contained in g 9.107-5 or authorized in § 9.107–6, as appropriate, shall be made applicable to such portion if a patent rights clause is required by this subchapter.
(iii) If the request states that the NASA clause is not required in any resulting contract and the work to be performed under the contract is not wholly on behalf of NASA, then the clause contained in § 9.107-5 or authorized in $ 9.107-6, as appropriate, shall be used if a patent rights clause is required by this subchapter.
(iv) If the request states that the NASA clause is not required in any resulting contract and such contract is į wholly on behalf of NASA, then no patent rights clause shall be included in such contract.
(2) The price of any contract de. scribed in subparagraph (1) of this paragraph shall in no event be increased by reason of the inclusion of any patent rights clause in the contract.
(b) Deviations. No deviations shall be made under § 1.109 of this chapter in any NASA clause providing for property rights in inventions except with the prior approval of NASA. Requests for such deviations, whether individual or blanket, shall be processed in accordance with $ 1.109-3 of this chapter. 129 F.R. 9761, July 21, 1964) § 9.107–9 Contracts relating to space.
In order that inventions arising out of Department of Defense sponsored space research and development may be available for use for the benefit of the general public in communications satellite systems, whether such systems are operated by or for the Government or by private enterprise for the transmission of commercial or Government traffic, the para- N
graph set forth below, in lieu of paragraph (b) (1) of the Patent Rights clause prescribed in $ 9.107-5(b) shall be inserted, except as provided in $ 9.107-8, in any contract having as one of its purposes the performance of research and development work under a space program, project, or task:
(b) Rights granted to the Government. (1) The Contractor agrees to and does hereby grant to the Government an irrevocable, nonexclusive, and royalty-free license to practice and have practiced each Subject Invention (made by the Contractor) throughout the world for Governmental purposes, including the practice of each such Subject Invention (1) in the manufacture, use, and disposition of any article or material, (ii) in the use of any method, or (iii) in the performance of any service, acquired by or for the Government or with funds derived through the Military Assistance Program of the Government or funds otherwise derived through the Government. In addition, the Government shall have the right to grant licenses to others, under such terms and conditions as may be prescribed, for the practice of such subject Invention throughout the world in the design, development, manufacture, operation, maintenance, and testing of communications satellite systems, and of equipment, components, and ground tracking, transmitting and receiving facilities therefor (OCTOBER 1966). (32 F.R. 528, Jan. 18, 1967) 8 9.108 Patent rights under contracts
for personal services. (a) Except as provided in paragraph (b) of this section, the following clause, which is based on Executive Order 10096, shall be inserted in all contracts with individuals who are to render personal services.
PATENTS (DECEMBER 1953) (a) For the purpose of determining the rights of the Government and the Contractor in and to inventions, the Contractor agrees to be bound by all provisions of Executive Order 10096, dated January 23, 1950, and any orders, rules, regulations, or the like issued thereunder.
(b) The Contractor shall: (i) Make written disclosure promptly to the Contracting Oficer of all inventions of the Contractor which are conceived or first reduced to practice during the term of this contract, and sign and execute all papers necessary for conveying to the Government the right to which the Government is entitled in accordance with the determination made under the provisions of Executive Order 10096, or (ii) certify to the Contracting Officer that, to the best of the Contractor's knowledge and belief, no inventions have been conceived or first reduced to practice during the term of this contract.
(b) Where it is contemplated that research, experimental, or developmental work will not be involved, paragraph (b) of the clause may be omitted. Upon written request by the prospective contractor and approval by the Head of the Procuring Activity or his authorized representative, the clause may be modified or omitted where:
(1) The period of employment is to be not more than 90 days in any 1 calendar year; or
(2) (i) The period of employment called for in the contract or in any renewal thereof is more than 90 days but not more than 1 year of full-time service, and
(ii) The prospective contractor is bound by an obligation which existed prior to entering into the proposed contract with the Government and which was not entered into in contemplation thereof, and the discharge of which would be inconsistent with the discharge of any obligation arising under Executive Order 10096. 132 F.R. 528, Jan. 18, 1967) $ 9.109 Administration of patent rights
clauses. The President's Statement of Government Patent Policy (see § 9.107) provides that every appropriate effort should be made to realize for the Government and the public the benefit of inventions and discoveries resulting from experimental, research and development contracts even where the inventions are an incidental product of the work. It is important that the Government be in a position to know and exercise its rights in order to avoid payment of royalties on inventions in which it has rights and to defend itself against unjustified claims and suits for patent infringement. To attain these ends, contracts having patent rights clauses should be so administered that:
(a) Subject Inventions are identified and reported as required by the contract clauses;
(b) The rights of the Government in such Inventions are established;
(c) The rights of the Government are documented by formal instruments such documented by formal instruments S as licenses or assignments; and
(d) When appropriate, patent applications on Subject Inventions are timely filed and prosecuted by contractors or by the Government. 132 F.R. 528, Jan. 18, 1967)
$ 9.109-1 Applicability.
The following policies and procedures apply to all contracts having patent rights clauses, except that these policies and procedures may be modified in their application to a foreign contract so as to be consistent with local law and custom and the provisions of the patent rights clause of the particular contract (see $ $ 1.109 and 9.107–6). (32 F.R. 528, Jan. 18, 1967) & 9.109–2 Follow-up by Government.
(a) Each Department shall maintain "followup" systems to assure that Subject. Inventions are identified and that the Government's rights therein are established and protected. Followup activities for contracts which include as part of a patent rights clause either the paragraph set forth in 8.9.107-7(a) or the NASA clause referenced in $ 9.107-8 (a) shall be coordinated with the Atomic Energy Commission and the National Aeronautics and Space Administration, respectively.
(b) When it is determined after the award of a contract that the contractor or subcontractor may not have a clear understanding of the rights and obligations of the parties under a patent rights clause, a postaward orientation conference or letter should be used to explain these rights and obligations (see Subpart R, Part 1 of this chapter).
(c) The contracting officer administering the contract shall be responsible for receiving invention disclosures, reports, confirmatory instruments, notices, requests, and other documents and information submitted by the contractor pursuant to & patent rights clause. Where the contractor fails to furnish documents or information called for by the clause within the time required by the clause, the contracting officer administering the contract shall promptly request the contractor to supply the required documents or information and, if the failure persists, shall take appropriate action to secure compliance. Invention disclosures, reports, confirmatory instruments, notices, requests, and other documents and information relating to patent rights clauses shall be sent by the contracting officer administering the contract to the procuring Department for appropriate action.
(d) The procuring Department shall establish a method to detect and correct
failures by the contractor to comply with his obligations under the patent rights clauses, such as failures to disclose and report Subject Inventions, both before and after the contract otherwise has been performed. This effort should be directed primarily towards contracts which because of the nature of the work or the large dollar amount spent are Jikely to result in Subject Inventions significant in number or quality, and towards contracts where there is reason to believe the contractors may not be complying with their contractual obligations. Other contracts should be spotchecked when feasible. As a minimum, appropriate followup shall include the investigation or review of selected contracts or contractors by an individual or team qualified in patent and technical matters.
(e) Followup activities may include use of Government patent and technical personnel:
(1) To review technical reports submitted by the contractor;
(2) To check the Official Gazette of the U.S. Patent Ofice and other sources for patents issued to the contractor in fields related to his Government contracts; and
(3) If additional information is required, to interview contractor personnel as to work under the contract involved, observe the work on site, and inspect laboratory notebooks and other records of the contractor related to work under the contract.
(f) In the administration of a subcontractor's obligations under a patent rights clause, the procedures outlined above shall be followed by the Government. (32 F.R. 529, Jan. 18, 1967) 8 9.109_3 Maintenance and use of rec.
ords of performance. (a) Significant or repeated failures by a contractor to comply with the patent rights clauses of his contracts shall be documented (see $$ 1.308 and 1.9051(c)).
(b) Where a contract is subject to the Contractor Performance Evaluation Program ($ 1.908–1 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 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) $ 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.
The undersigned Inventor(s), in recognition 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 license 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 business 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 application and any application for reissue of any patent resulting from such patent application.
Signed this .--. day of
(Inventor(s)) ATTEST: By
(Address) Signed this ---- day of ----------, 19 ---ATTEST:
(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.
(Title of Invention)