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determination of the Commission, made (i) If the request states that the NASA under (1) (1) above;
clause is required in any resulting con(ii) 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. 129 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 8 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 s 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 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 In. vention (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, (il) in the use of any method, or (ill) 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) $ 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: (1) 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 as licenses or assignments; and
(d) When appropriate, patent applications on Subject Inventions are timely filed and prosecuted by contractors or by the Government. [32 F.R. 528, Jan. 18, 1967)
rights is deferred until the invention is mon principles and objectives, to the disclosed. This may be necessary where extent consistent with the missions of the the commercial interests of the con- respective agencies. The policy must tractor are not sufficiently established to recognize the need for flexibility to acgive title to the contractor at the time commodate special situations. of contracting. This brief general sum- (b) Availability of Government-owned mary of the Policy Statement does not patents. Government-owned patents attempt, of course, to define the cate shall be made available and the technogories with precision; and, in any event, logical advances covered thereby brought exceptions to the general rules are pro into being in the shortest time possible vided by the Policy for special situations. through dedication or licensing and shall (29 F.R. 9754, July 21, 1964)
be listed in official Government publica
tions or otherwise. $ 9.107–2 General.
(c) Definitions. As used in $ $ 9.107(a) Basic considerations. (1) The 9.107-9, the stated terms are defined as Government expends large sums for the follows: conduct of research and development (1) "Invention or invention or discovwhich results in a considerable number ery” includes any art, machine, manuof inventions and discoveries.
facture, design or composition of matter, (2) The inventions in scientific and or any new and useful improvement technological fields resulting from work thereof, or any variety of plant, which is performed under Government contracts or may be patentable under the Patent constitute a valuable national resource. Laws of the United States of America or
(3) The use and practice of these in any foreign country; ventions and discoveries should stimu (2) “Contractor" means any indilate inventors, meet the needs of the vidual, partnership, public or private Government, recognize the equities of corporation, association, institution, or the contractor, and serve the public other entity which is a party to the interest.
contract; (4) The public interest in a dynamic (3) “Contract” means any actual or and efficient economy requires that ef proposed contract, agreement, grant, or forts be made to encourage the expedi other arrangement, or subcontract entious development and civilian use of tered into with or for the benefit of the these inventions. Both the need for in Government where a purpose of the concentives to draw forth private initiatives tract is the conduct of experimental, deto this end and the need to promote velopmental, or research work; healthy competition in industry must be (4) “Made,” when used in relation to weighed in the disposition of patent any invention or discovery, means the rights under Government contracts. conception or first actual reduction to Where exclusive rights are acquired by practice of such invention in the course the contractor, he remains subject to the of or under the contract; provisions of the antitrust laws.
(5) "Governmental purpose" means (5) The public interest is also served the right of the Government of the by sharing of benefits of Government United States (including any agency financed research and development with thereof, state, or domestic municipal foreign countries to a degree consistent government) to practice and have pracwith our international programs and ticed (make or have made, use or have with the objectives of United States for
used, sell or have sold) throughout the eign policy.
world by or on behalf of the Government (6) There is growing importance at
of the United States.
(6) "To the point of practical applicataching to the acquisition of foreign
tion" means to manufacture in the case patent rights in furtherance of the inter
of a composition or product, to practice est of United States industry and the in the case of a process, or to operate in Government.
the case of a machine or system and, in (7) The prudent administration of each case, under such conditions as to Government research and development establish that the invention is being calls for a Government-wide policy on worked and that its benefits are reason. the disposition of inventions made underably accessible to the public. Government contracts reflecting com- (29 F.R. 9755, July 21, 1964)
§ 9.107–3 Policy.
(a) Category 1. The Government shall normally acquire or reserve the right to acquire the principal or exclusive rights throughout the world in and to any inventions made in the course of or under a contract where:
(1) A principal purpose of the contract is to create, develop or improve products, processes, or methods which are intended for commercial use (or which are otherwise intended to be made available for use) by the general public at home or abroad, or which will be required for such use by governmental regulations; or
(2) A principal purpose of the contract is for exploration into fields which directly concern the public health or public welfare; or
(3) The contract is in a field of science or technology in which there has been little significant experience outside of work funded by the Government, or where the Government has been the principal developer of the field, and the acquisition of exclusive rights at the time of contracting might confer on the contractor a preferred or dominant position; or
(4) The services of the contractor are
(i) For the operation of a Government-owned research or production facility; or
(i) For coordinating and directing the work of others. In exceptional circumstances, the contractor may acquire greater rights than a nonexclusive license at the time of contracting, where the Secretary certifies that such action will best serve the public interest. Greater rights than a nonexclusive license may be acquired by the contractor after the invention has been identified, where the invention when made in the course of or under the contract is not a primary object of the contract: Provided, The acquisition of such greater rights is consistent with the intent of this section and is a necessary incentive to call forth private risk capital and expense to bring the invention to the point of practical application.
(b) Category II. In other situations, where the purpose of the contract is to build upon existing knowledge or technology to develop information, products, processes, or methods for use by the Government, and the work called for by
the contract is in a field of technology in which the contractor has acquired technical competence (demonstrated by factors such as know-how, experience, and patent position) directly related to an area in which the contractor has an established nongovernmental commercial position, the contractor shall normally acquire the principal or exclusive rights throughout the world in and to any resulting inventions, subject to the Government's acquiring at least an irrevocable nonexclusive royalty-free license throughout the world for governmental purposes.
(c) Category III. Where the commercial interests of the contractor are not sufficiently established to be covered by the criteria specified in paragraph (b) of this section, the final determination of rights shall be made by the contracting officer after the invention has been identified, in a manner deemed most likely to serve the public interest as expressed in this Policy Statement (see $ 9.107-2 and other paragraphs of this section), taking particularly into account the intentions of the contractor to bring the invention to a point of commercial application and the guidelines of paragraph (a) of this section: Provided, That in the special situations set forth in § 9.107-4(c) (2), the contractor may acquire at the time of contracting greater rights than a nonexclusive license. In any case, the Government shall acquire at least a nonexclusive royalty-free license throughout the world for Governmental purposes.
(d) In the Category II and Category III situations, when two or more potential contractors are judged to have presented proposals of equivalent merit, willingness to grant the Government principal or exclusive rights in resulting inventions will be an additional factor in the evaluation of the proposals. In no event will contractors 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.
(e) Where the principal or exclusive (except as against the Government) rights in an invention remain in the contractor, he should agree to provide written reports at reasonable intervals, when requested by the Government, on the commercial use that is being made or is
intended to be inade of inventions made making of this determination. The under Government contracts.
Preaward Patent Rights Documentation (f) Where the principal or exclusive Checklist set forth in paragraph (h) of (except as against the Government) this section may be used in determining rights in an invention remain in the con- the appropriate Patent Rights clause to tractor, unless the contractor, his licen- be incorporated in a request for proposals see, or his assignee has taken effective in procurements involving experimental, steps within three years after a patent developmental, or research work. If issues on the invention to bring the in the contracting officer determines that vention to the point of practical appli the Patent Rights (Title) clause (§ 9.107– cation or has made the invention avail 5(a)) is applicable, that clause shall be able for licensing royalty-free or on the only Patent Rights clause used. If terms that are reasonable in the circum- it is determined that the Patent Rights stances, or can show cause why he should (Title) clause (§ 9.107-5(a)) is not apretain the principal or exclusive rights plicable, the contracting officer shall infor a further period of time, the Gov- clude both the Patent Rights (License) ernment shall have the right to require ($ 9.107-5(b)) and Patent Rights (Dethe granting of a license to an applicant ferred) (§ 9.107-5 (c)) clauses in the reon a nonexclusive royalty-free basis. quest for proposals together with the
(g) Where the principal or exclusive statement: "The contracting officer will (except as against the Government) determine during negotiation which of rights to an invention are acquired by these two patent rights clauses will be the contractor, the Government shall used in the contract, and the determinahave the right to require the granting tion will be made in accordance with the of a license to an applicant royalty-free guidelines set forth in ASPR 9-107.” or on terms that are reasonable in the Except where the Patent Rights (Title) circumstances to the extent that the in clause is applicable, DD Form 1564, ”Prevention is required for public use by gov award Patent Rights Documentation”, ernmental regulations or as may be nec may be included in each request for proessary to fulfill health needs, or for posal. In the case of an unsolicited proother public purposes stipulated in the posal, the contractor may be requested to contract.
complete that DD Form. The Checklist (h) Where the Government may ac and the DD Form, if used, shall be made quire the principal rights and does not a part of the contract file. elect to secure a patent in a foreign (b) Category I-Where the contractcountry, the contractor may file and ing officer determines that proposed exretain the principal or exclusive foreign perimental, developmental, or research rights subject to retention by the Gov work falls within Category I set forth ernment of at least a royalty-free license in $ 9.107-3(a), the Patent Rights (Title) for governmental purposes and on behalf clause set forth in § 9.107-5(a) shall be of any foreign government pursuant to included in the contract. When said deany existing or future treaty or agree termination is based on § 9.107-3(a) (3) ment with the United States.
notice to that effect will be included in [29 F.R. 9755, July 21, 1964, as amended at
the solicitation. If the contractor to 30 F.R. 6003, Apr. 29, 1965)
whom the award is to be made challenges
the applicability of this provision, the $ 9.107–4 Procedures.
contracting officer will review the basis (a) After appropriate consultation for his determination and provide the with legal, patent, and technical ad contractor with the reason for his convisors, the contracting officer shall deter- clusion. If the contracting officer and mine whether the Government or the the contractor cannot then resolve the contractor should acquire the principal issue, the contracting officer will promptor exclusive rights (hereafter these ly forward the problem to the Head of rights are referred to as “title") to any the Procuring Activity for resolution. If or all inventions made in the course of award of the contract cannot be deor under each contract and shall doc layed, the contracting officer may proument the contract file to support his ceed with the procurement pending resodetermination. The basic considerations lution of the issue, provided the contract and policy set forth above together with contains the Patent Rights (Title) clause procedures in this part shall govern the set forth in § 9.107–5(a), accompanied by