Page images
PDF
EPUB

Uruucu Ill Contract NO. ------------ which

The invention identified above is a "SubJect Invention" under Patent Rights Clause, ASPR 9---(Identify clause) ---- (--------------) in

(date) cluded in Contract No. (does) (does not) include Communication Satellite paragraph of ASPR 9-107.9

-----------). This document is con

(date) firmatory of all rights granted to the Government under such clause.

The contractor agrees that the Government is not estopped at any time to contest the enforceability, validity, or scope of or title to the patent application identified above or any patent resulting therefrom.

It is understood and agreed that this document does not preclude the Government from asserting rights under the provisions of said contract or of any other agreement between the Government and the Contractor, or any other rights of the Government with respect to each of the above-identified inventions.

Signed this ---- day of ----------, 19... (SEAL)

(Contractor) Attest:

By --------

(Business Address) (c) A contractor disclosing a Subject Invention pursuant to paragraph (c) (1) (i) of the clause in § 9.107-5(a) may, under paragraph (h) of said clause (or the alternate paragraph (h) in § 9.1075°c)), not later than three months after making such a disclosure, request greater rights than the license reserved to the contractor in paragraph (b) of said clause. Therefore, in the administration of these clauses the contractor shall not be required to execute an assignment until this three-month period has expired, and then usually only if the Government intends to file a patent application. 132 F.R. 529, Jan. 18, 1967, as amended at 35 F.R. 6833, Apr. 30, 1970] & 9.109-5 Register of Government

rights in inventions. (a) Licensés, assignments, or other documents evidencing any rights of the Government in inventions shall be reviewed by the Departments to assure that each such document fully confirms the rights to which the Government is entitled.

(b) The original and a copy of each such document shall be forwarded to the activity designated by Departmental regulations for receiving such documents. This latter activity shall forward the originals of all licenses, assignments, or other documents evidencing any rights

of the Government in or under any patents or applications for patents to the Commissioner of Patents for recording in accordance with Executive Order No. 9424 of February 18, 1944. (32 F.R. 530, Jan. 18, 1967] § 9.110 Reporting of royalties-antici

pated or paid. (a) (1) The term "royalties," as used in this subpart, refers to any costs or charges in the nature of royalties, license fees, patent or license amortization costs, or the like, for the use of or for rights in patents or patent applications.

(2) To determine whether royalties anticipated or actually paid under Govproper, or inconsistent with rights which ernment contracts are excessive, imthe Government may possess in particular inventions, patents, or patent applications, the Departments shall require royalty information and reports as prescribed below. See $ 9.112 for action to be taken to reduce or eliminate excessive or improper royalties.

(3) Royalty information should not be required in formally advertised contracts. When it is expected that work may be performed in the United States, its possessions, or Puerto Rico, any solicitation which may result in a negotiated contract for which royalty information is desired, or for which cost or pricing data are obtained under $ 3.8073 of this chapter, shall contain a special provision substantially as follows:

ROYALTY INFORMATION (1961 AUGUST) When the response to this solicitation contains costs or charges for royalties totaling more than $250, the following information shall be furnished with the offer, proposal, or quotation on each separate item of royalty or license fee:

(1) Name and address of licensor;
(11) Date of license agreement;

(iii) Patent numbers, patent application serial numbers or other basis on which the royalty is payable;

(iv) Brief description, including any part or model numbers of each contract item or component on which the royalty is payable;

(v) Percentage or dollar rate of royalty per unit;

(vi) Unit price or contract item;
(vii) Number of units; and

(vill) Total dollar amount of royalties. DD Form 783, Royalty Report, is approved for use in furnishing the above information. In addition, if specifically requested by the contracting officer prior to execution of the contract, a copy of the current license agreement and identification of applicable claims of specific patents shall be furnished.

(b) If the work is to be performed in the United States, its possessions or Puerto Rico, then upon receipt of an offer, proposal, or quotation which includes a charge for royalties, the contracting oficer shall, prior to award of the contract, forward the information called for by paragraph (a) of this section to the ofice having cognizance of patent matters for the procuring activity concerned. The cognizant office shall promptly advise the contracting officer of appropriate action. The contracting officer shall then take action with respect to such royalties, with due regard to all pertinent factors relating to the proposed procurement.

(c) Where subcontract work is to be performed in the United States, its possessions, or Puerto Rico, the contracting oficer, when considering approval of a subcontract, shall require the same information and take the same action with respect to such subcontracts in relation to royalties as required for prime contracts under paragraph (b) of this section. However, approval need not be withheld pending receipt of advice in regard to such royalties from the ofice having cognizance of patent matters.

(d) (1) In negotiated contracts to be performed outside the United States, its possessions and Puerto Rico, regardless of the place of delivery, the clause set forth below shall be included. See $ 16.806 for an approved form for optional use by contractors in submitting the required report. REPORTING OF ROYALTIES (FOREIGN) (OCTOBER

1966) (a) If this contract is in an amount which exceeds fifty thousand U.S. dollars (850,000), the Contractor shall report in writing to the Contracting Officer during the performance of this contract the amount of royalties paid or to be paid by the Contractor directly to others in the performance of this contract. The Contractor shall also (1) furnish in writing any additional information relating to such royalties as may be requested by the Contracting Officer, and (ii) insert a provision similar to this clause in any subcontract hereunder which involves an amount in excess of the equivalent of fifty thousand U.S. dollars ($50,000).

(b) The term "royalties" as used herein refers to any costs or charges in the nature of royalties, license fees, patent or license amortization costs, or the like for the use of or for rights in patents or patent applications.

(2) The contracting officer shall forward a copy of each positive royalty re

port received in accordance with the clause in subparagraph (1) of this paragraph to the office having cognizance of patent matters for the procuring activity concerned. [32 F.R. 530, Jan. 18 ,1967, as amended at; 34 F.R. 9278, June 12, 1969) 8 9.111 Refund of royalties.

When a fixed-price-type contract is negotiated under circumstances which make it questionable whether or not substantial amounts of royalties will have to be paid by the contractor or his subcontractors, such royalties may be included in the target or contract price, with provision made in the contract that the Government will be reimbursed the amount of such royalties if they are not paid. Such circumstances might include, for example, either a pending antitrust action by the Government or pending or prospective litigation challenging the validity of a patent or patents or the enforceability of an agreement upon which the contractor or subcontractor bases the asserted obligation to pay the royalties to be included in the target or contract price. In the event the contracting officer determines that a refund of royalties clause should be included, the following clause shall be used in firm fixed-price contracts. It shall be appropriately modified for use in incentive contracts.

REFUND OF ROYALTIES (FEBRUARY 1968)

(a) The contract price includes certain amounts for royalties payable by the Contractor or subcontractor or both, which amounts have been reported to the Contracting Officer.

(b) The term "royalties" as used in this clause refers to any costs or charges in the nature of royalties, Ucense fees, patent or license amortization costs, or the Uke, for the use or for rights in patents and patent applications in connection with the performance of this contract or any subcontract hereunder.

(c) The Contractor shall furnish to the Contracting Officer, before final payment under this contract, a statement of royalties paid or required to be paid in connection with the performance of this contract and subcontracts hereunder together with the reasons therefor.

(d) The Contractor will be compensated for royalties reported under (c) above only to the extent that such royalties were included in the contract price and are determined by the Contracting Officer to be properly chargeable to the Government and allocable to the contract. Therefore, to the extent that any royalties which are included

The invention identified above is a "Subject Invention" under Patent Rights Clause, ASPR 9--------------- |--------------) in

(Identify clause) (date) cluded in Contract No. -------------, which (does) (does not) include Communication Satellite paragraph of ASPR 9–107.9 -------------). This document is con

(date) firmatory of all rights granted to the Government under such clause.

The contractor agrees that the Government is not estopped at any time to contest the enforceability, validity, or scope of or title to the patent application identified above or any patent resulting therefrom.

It is understood and agreed that this document does not preclude the Government from asserting rights under the provisions of said contract or of any other agreement between the Government and the Contractor, or any other rights of the Government with respect to each of the above-identified inven. tions.

Signed this ---- day of ----------, 19... (SEAL)

-----

(Contractor) Attest: By --------

--

(Business Address) (c) A contractor disclosing a Subject Invention pursuant to paragraph (c) (1) (i) of the clause in $ 9.107-5(a) may, under paragraph (h) of said clause (or the alternate paragraph (h) in § 9.10754c)), not later than three months after making such a disclosure, request greater rights than the license reserved to the contractor in paragraph (b) of said clause. Therefore, in the administration of these clauses the contractor shall not be required to execute an assignment until this three-month period has expired, and then usually only if the Government intends to file a patent application. 132 F.R. 529, Jan. 18, 1967, as amended at 35 F.R. 6833, Apr. 30, 1970] $ 9.109-5 Register of Government

rights in inventions. (a) Licensés, assignments, or other documents evidencing any rights of the Government in inventions shall be reviewed by the Departments to assure that each such document fully confirms the rights to which the Government is entitled.

(b) The original and a copy of each such document shall be forwarded to the activity designated by Departmental regulations for receiving such documents. This latter activity shall forward the originals of all licenses, assignments, or other documents evidencing any rights

of the Government in or under any patents or applications for patents to the Commissioner of Patents for recording in accordance with Executive Order No. 9424 of February 18, 1944. 132 F.R. 530, Jan. 18, 1967) 8 9.110 Reporting of royalties—antici.

pated or paid. (a) (1) The term "royalties," as used in this subpart, refers to any costs or charges in the nature of royalties, license fees, patent or license amortization costs, or the like, for the use of or for rights in patents or patent applications.

(2) To determine whether royalties anticipated or actually paid under Govproper, or inconsistent with rights which ernment contracts are excessive, imthe Government may possess in particular inventions, patents, or patent applications, the Departments shall require royalty information and reports as prescribed below. See $ 9.112 for action to be taken to reduce or eliminate excessive or improper royalties.

(3) Royalty information should not be required in formally advertised contracts. When it is expected that work may be performed in the United States, its possessions, or Puerto Rico, any solicitation which may result in a negotiated contract for which royalty information is desired, or for which cost or pricing data are obtained under $ 3.8073 of this chapter, shall contain a special provision substantially as follows:

ROYALTY INFORMATION (1961 AUGUST) When the response to this solicitation contains costs or charges for royalties totaling more than $250, the following information shall be furnished with the offer, proposal, or quotation on each separate item of royalty or license fee:

(1) Name and address of licensor;
(11) Date of license agreement;

(il) Patent numbers, patent application serial numbers or other basis on which the royalty is payable;

(iv) Brief description, including any part or model numbers of each contract item or component on which the royalty is payable;

(v) Percentage or dollar rate of royalty per unit;

(vi) Unit price or contract item;
(vii) Number of units; and

(viil) Total dollar amount of royalties. DD Form 783, Royalty Report, is approved for use in furnishing the above information. In addition, if specifically requested by the contracting officer prior to execution of the contract, a copy of the current license agreement and identification of applicable claims of specific patents shall be furnished.

(b) If the work is to be performed in the United States, its possessions or Puerto Rico, then upon receipt of an offer, proposal, or quotation which includes a charge for royalties, the contracting oficer shall, prior to award of the contract, forward the information called for by paragraph (a) of this section to the office having cognizance of patent matters for the procuring activity concerned. The cognizant ofice shall promptly advise the contracting officer of appropriate action. The contracting officer shall then take action with respect to such royalties, with due regard to all pertinent factors relating to the proposed procurement.

(C) Where subcontract work is to be performed in the United States, its possessions, or Puerto Rico, the contracting oficer, when considering approval of a subcontract, shall require the same information and take the same action with respect to such subcontracts in relation to royalties as required for prime contracts under paragraph (b) of this section. However, approval need not be withheld pending receipt of advice in regard to such royalties from the office having cognizance of patent matters.

(d) (1) In negotiated contracts to be performed outside the United States, its possessions and Puerto Rico, regardless of the place of delivery, the clause set forth below shall be included. See $ 16.806 for an approved form for optional use by contractors in submitting the required report. REPORTING OF ROYALTIES (FOREIGN) (OCTOBER

1966) (a) If this contract 18 in an amount which exceeds fifty thousand U.S. dollars ($50,000), the Contractor shall report in writing to the Contracting Officer during the performance of this contract the amount of royalties paid or to be paid by the Contractor directly to others in the performance of this contract The Contractor shall also (i) furnish in writing any additional information relating to such royalties as may be requested by the Contracting Officer, and (11) insert a provision similar to this clause in any subcontract hereunder which involves an amount in excess of the equivalent of fifty thousand U.S. dollars ($50,000).

(b) The term “royalties" as used herein refers to any costs or charges in the nature of royalties, license fees, patent or license amortization costs, or the like for the use of or for rights in patents or patent applications.

(2) The contracting officer shall for ward a copy of each positive royalty re

port received in accordance with the clause in subparagraph (1) of this paragraph to the office having cognizance of patent matters for the procuring activity concerned. (32 F.R. 530, Jan. 18 ,1967, as amended at; 34 F.R. 9278, June 12, 1969) 8 9.111 Refund of royalties.

When a fixed-price-type contract is negotiated under circumstances which make it questionable whether or not substantial amounts of royalties will have to be paid by the contractor or his subcontractors, such royalties may be included in the target or contract price, with provision made in the contract that the Government will be reimbursed the amount of such royalties if they are not paid. Such circumstances might include, for example, either a pending antitrust action by the Government or pending or prospective litigation challenging the validity of a patent or patents or the enforceability of an agreement upon which the contractor or subcontractor bases the asserted obligation to pay the royalties to be included in the target or contract price. In the event the contracting officer determines that a refund of royalties clause should be included, the following clause shall be used in firm fixed-price contracts. It shall be appropriately modified for use in incentive contracts.

REFUND OF ROYALTIES (FEBRUARY 1968)

(a) The contract price includes certain amounts for royalties payable by the Contractor or subcontractor or both, which amounts have been reported to the Contracting Officer.

(b) The term "royalties” as used in this clause refers to any costs or charges in the nature of royalties, License fees, patent or license amortization costs, or the like, for the use or for rights in patents and patent applications in connection with the performance of this contract or any subcontract hereunder.

(C) The Contractor shall furnish to the Contracting Officer, before final payment under this contract, a statement of royalties paid or required to be paid in connection with the performance of this contract and subcontracts hereunder together with the reasons therefor.

(d) The Contractor will be compensated for royalties reported under (c) above only to the extent that such royalties were included in the contract price and are determined by the Contracting Officer to be properly chargeable to the Government and allocable to the contract. Therefore, to the extent that any royalties which are included in the contract price are not in fact paid by the Contractor or are determined by the Contracting Officer not to he properly charge able to the Government and allocable to the contract, the contract price shall be reduced. Repayment or credit to the Government shall be made as the Contracting Officer directs.

(e) If, at any time within three (3) years subsequent to final payment under this contract, the Contractor for any reason is relieved in whole or in part from the payment of the royalties included in the final contract price as adjusted pursuant to paragraph (d) above, the Contractor shall promptly notify the Contracting Officer of that fact and shall reimburse the Government in a corresponding amount.

(f) The substance of this clause, including tibis paragraph (f), shall be included in any subcontract in which the amount of royalties reported during negotiation of the subcontract exceeds two hundred and fifty dollars ($250). (32 F.R. 530, Jan. 18, 1967, as amended at 33 F.R. 7400, May 18, 1968] § 9.112 Adjustment of royalties.

(a) If at any time the contracting officer has reason to believe that any royalties paid, or to be paid, under an existing or prospective contract or subcontract are inconsistent with Government rights, excessive, or otherwise improper, he shall promptly report the facts to the office having cognizance of patent matters for the procuring activity concerned. The cognizant office shall review the royalties thus reported and such royalties as are reported under $$ 9.110 and 9.111. In coordination with the contracting officer, the cognizant office shall:

(1) Take prompt action to protect the Government against payment of royalties on supplies or services (i) with respect to which the Government has a royalty-free license, or (ii) at a rate in excess of the rate at which the Government is licensed, or (iii) when the royalties in whole or in part otherwise constitute an improper charge; and

(2) In appropriate cases obtain a refund pursuant to a “Refund of Royalties” clause or enter into negotiation for a reduction of royalties.

(b) For guidance in evaluating information furnished pursuant to $ 9.110 and paragraph (a) of this section, see 8 8 15.205-36 and 15.309-33 of this chapter. Also see § 15.107 of this chapter regarding advance understandings on particular cost items, including royalties. (32 F.R. 531, Jan. 18, 1967)

Subpart B-Data and Copyrights $ 9.200 Scope of subpart.

This subpart sets forth the Department of Defense policy, implementing instructions, and contract clauses with respect to acquisition of rights in techni. cal and other data and copyrights. It relates only to the acquisition of rights in data and does not establish requirements for data. [30 F.R. 6968, May 25, 1965) $ 9.201 Definitions.

For the purposes of this subpart the following terms have the meanings set forth below:

(a) "Data" means writings, sound recordings, pictorial reproductions, drawings, or other graphic representations and works of similar nature, whether or not copyrighted. The term does not include financial reports, cost analyses, and other information incidental to contract administration.

(b) "Limited rights" means rights to use, duplicate, or disclose technical data, in whole or in part, by or for the Government, with the express limitation that such technical data shall not, without the written permission of the party furnishing such technical data, be released or disclosed in whole or in part outside the Government, used in whole or in part by the Government for manufacture, or used by a party other than the Government, except for:

(1) Emergency repair or overhaul work only, by or for the Government, where the item or process concerned is not otherwise reasonably available to enable timely performance of the work: Provided, That the release or disclosure thereof outside the Government shall be made subject to a prohibition against further use, release or disclosure; or

(2) Release to a foreign government, as the interest of the United States may require, only for information or evaluation within such government or for emergency repair or overhaul work by or for such government under the conditions of subparagraph (1) of this paragraph.

(c) “Unlimited rights" means rights to use, duplicate, or disclose technical data in whole or in part, in any manner and for any purpose whatsoever, and to have or permit others to do so. (30 F.R. 6969, May 25, 1965, as amended at 34 F.R, 17897, Nov. 5, 1969)

« PreviousContinue »