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The invention identified above is a "Sub- of the Government in or under any ject Invention" under Patent Rights Clause,

patents or applications for patents to the ASPR 9

(----
----) in-

Commissioner of Patents for recording in (Identify clause) (date)

accordance with Executive Order No. cluded in Contract No.

which (does) (does not) include Communication

9424 of February 18, 1944. Satellite paragraph of ASPR 9-107.9 (32 F.R. 530, Jan. 18, 1967) (----- ---). This document is con(date)

§ 9.110 Reporting of royalties—anticifirmatory of all rights granted to the Govern

pated or paid. ment under such clause.

(a) (1) The term “royalties," as used The contractor agrees that the Govern

in this subpart, refers to any costs or ment is not estopped at any time to contest the enforceability, validity, or scope of or

charges in the nature of royalties, license title to the patent application identified

fees, patent or license amortization above or any patent resulting therefrom.

costs, or the like, for the use of or for It is understood and agreed that this docu- rights in patents or patent applications. ment does not preclude the Government

(2) To determine whether royalties from asserting rights under the provisions of anticipated or actually paid under Govsaid contract or of any other agreement be- proper, or inconsistent with rights which tween the Government and the Contractor, or ernment contracts are excessive, imany other rights of the Government with re

the Government may possess in parspect to each of the above-identified inventions.

ticular inventions, patents, or patent apSigned this day of

19...

plications, the Departments shall re

quire royalty information and reports as (SEAL) (Contractor)

prescribed below. See $ 9.112 for action

to be taken to reduce or eliminate excesAttest: Ву

sive or improper royalties.

(3) Royalty information should not (Business Address)

be required in formally advertised con(c) A contractor disclosing a Subject tracts. When it is expected that work Invention pursuant to paragraph (c) (1) may be performed in the United States, (i) of the clause in § 9.107–5(a) may, un- its possessions, or Puerto Rico, any der paragraph (h) of said clause (or solicitation which may result in a negothe alternate paragraph (h) in § 9.107- tiated contract for which royalty infor51c)), not later than three months after mation is desired, or for which cost or making such a disclosure, request greater pricing data are obtained under $ 3.807rights than the license reserved to the 3 of this chapter, shall contain a special contractor in paragraph (b) of said provision substantially as follows: clause. Therefore, in the administration

ROYALTY INFORMATION (1961 AUGUST) of these clauses the contractor shall not be required to execute an assignment un

When the response to this solicitation til this three-month period has expired,

contains costs or charges for royalties total

ing more than $250, the following informaand then usually only if the Government

tion shall be furnished with the offer, prointends to file a patent application.

posal, or quotation on each separate item 132 F.R. 529, Jan. 18, 1967, as amended at of royalty or license fee: 35 F.R. 6833, Apr. 30, 1970]

(1) Name and address of licensor;

(ii) Date of license agreement; § 9.109-5 Register of Government

(iii) Patent numbers, patent application rights in inventions.

serial numbers or other basis on which the (a) Licensés, assignments, or other

royalty is payable;

(iv) Brief description, including any part documents evidencing any rights of the

or model numbers of each contract item or Government in inventions shall be re

component on which the royalty is payable; viewed by the Departments to assure that (v) Percentage or dollar rate of royalty each such document fully confirms the rights to which the Government is en- (vi) Unit price or contract item; titled.

(vii) Number of units; and

(viil) Total dollar amount of royalties. (b) The original and a copy of each such document shall be forwarded to the DD Form 783, Royalty Report, is approved activity designated by Departmental reg

for use in furnishing the above information.

In addition, if specifically requested by the ulations for receiving such documents.

contracting officer prior to execution of the This latter activity shall forward the

contract, a copy of the current license agreeoriginals of all licenses, assignments, or ment and identification of applicable claims other documents evidencing any rights of specific patents shall be furnished.

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(b) If the work is to be performed in port received in accordance with the the United States, its possessions or clause in subparagraph (1) of this parPuerto Rico, then upon receipt of an of- agraph to the office having cognizance of fer, proposal, or quotation which includes patent matters for the procuring activa charge for royalties, the contracting ity concerned. officer shall, prior to award of the con- [32 F.R. 530, Jan. 18 ,1967, as amended at; tract, forward the information called for 34 F.R. 9278, June 12, 1969) by paragraph (a) of this section to the

8 9.111 Refund of royalties. ofice having cognizance of patent matters for the procuring activity concerned. When a fixed-price-type contract is The cognizant office shall promptly ad- negotiated under circumstances which vise the contracting officer of appro

make it questionable whether or not subpriate action. The contracting officer stantial amounts of royalties will have shall then take action with respect to to be paid by the contractor or his subsuch royalties, with due regard to all contractors, such royalties may be inpertinent factors relating to the proposed

cluded in the target or contract price, procurement.

with provision made in the contract (c) Where subcontract work is to be that the Government will be reimbursed performed in the United States, its pos

the amount of such royalties if they are sessions, or Puerto Rico, the contracting

not paid. Such circumstances might inofficer, when considering approval of a

clude, for example, either a pending antisubcontract, shall require the same in- trust action by the Government or pendformation and take the same action with ing or prospective litigation challenging respect to such subcontracts in relation

the validity of a patent or patents or the to royalties as required for prime con- enforceability of an agreement upon tracts under paragraph (b) of this sec

which the contractor or subcontractor tion. However, approval need not be

bases the asserted obligation to pay the withheld pending receipt of advice in re

royalties to be included in the target or gard to such royalties from the office contract price. In the event the conhaving cognizance of patent matters. tracting officer determines that a re(d) (1) In negotiated contracts to be

fund of royalties clause should be inperformed outside the United States, its

cluded, the following clause shall be used possessions and Puerto Rico, regardless

in firm fixed-price contracts. It shall of the place of delivery, the clause set be appropriately modified for use in inforth below shall be included. See centive contracts. $ 16.806 for an approved form for op- REFUND OF ROYALTIES (FEBRUARY 1968) tional use by contractors in submitting the required report.

(a) The contract price includes certain

amounts for royalties payable by the ConREPORTING OF ROYALTIES (FOREGN) (OCTOBER tractor or subcontractor or both, which 1966)

amounts have been reported to the Contract

ing Officer. (a) If this contract 18 in an amount which

(b) The term "royal es” as used in this exceeds fifty thousand U.S. dollars ($50,000),

clause refers to any costs or charges in the the Contractor shall report in writing to the

nature of royalties, license fees, patent or Contracting Officer during the performance

license amortization costs, or the like, for of this contract the amount of royalties paid

the use or for rights in patents and patent or to be paid by the Contractor directly to

applications in connection with the performothers in the performance of this contract.

ance of this contract or any subcontract The Contractor shall also (1) furnish in writ

hereunder. ing any additional information relating to

(C) The Contractor shall furnish to the such royalties as may be requested by the

Contracting Officer, before final payment Contracting Officer, and (il) insert a provi

under this contract, a statement of royalties sion similar to this clause in any subcontract bereunder which involves an amount

paid or required to be paid in connection

with the performance of this contract and in excess of the equivalent of fifty thousand

subcontracts hereunder together with the U.S. dollars ($50,000).

reasons therefor. (b) The term “royalties" as used herein

(d) The Contractor will be compensated refers to any costs or charges in the nature of royalties, license fees, patent or license

for royalties reported under (c) above only amortization costs, or the like for the use

to the extent that such royalties were inof or for rights in patents or patent appli

cluded in the contract price and are detercations.

mined by the Contracting Officer to be prop

erly chargeable to the Government and allo(2) The contracting officer shall for- cable to the contract. Therefore, to the ward a copy of each positive royalty re- extent that any royalties which are included The invention identified above is a "Sub- of the Government in or under any Ject Invention" under Patent Rights Clause,

patents or applications for patents to the ASPR 9--(-------- ----) in

Commissioner of Patents for recording in (Identify clause) (date) cluded in Contract No.

which

accordance with Executive Order No. (does) (does not) include Communication

9424 of February 18, 1944. Satellite paragraph of ASPR 9-107.9 (32 F.R. 530, Jan. 18, 1967] (--------------). This document is con(date)

8 9.110 Reporting of royalties—anticifirmatory of all rights granted to the Govern

pated or paid. ment under such clause.

(a) (1) The term “royalties," as used The contractor agrees that the Govern

in this subpart, refers to any costs or ment is not estopped at any time to contest

charges in the nature of royalties, license the enforceability, validity, or scope of or title to the patent application identified

fees, patent or license amortization above or any patent resulting therefrom.

costs, or the like, for the use of or for It is understood and agreed that this docu- rights in patents or patent applications. ment does not preclude the Government (2) To determine whether royalties from asserting rights under the provisions of anticipated or actually paid under Govsaid contract or of any other agreement be- proper, or inconsistent with rights which tween the Government and the Contractor, or ernment contracts are excessive, imany other rights of the Government with re

the Government may possess in parspect to each of the above-identified inven

ticular inventions, patents, or patent aptions. Signed this day of

19...

plications, the Departments shall re(SEAL)

quire royalty information and reports as (Contractor)

prescribed below. See $ 9.112 for action

to be taken to reduce or eliminate excesAttest: By

sive or improper royalties.

(3) Royalty information should not (Business Address)

be required in formally advertised con(c) A contractor disclosing a Subject tracts. When it is expected that work Invention pursuant to paragraph (c) (1) may be performed in the United States, (i) of the clause in $ 9.107-5(a) may, un- its possessions, or Puerto Rico, any der paragraph (h) of said clause (or solicitation which may result in a negothe alternate paragraph (h) in $ 9.107- tiated contract for which royalty infor51c)), not later than three months after mation is desired, or for which cost or making such a disclosure, request greater pricing data are obtained under $ 3.807– rights than the license reserved to the 3 of this chapter, shall contain a special contractor in paragraph (b) of said provision substantially as follows: clause. Therefore, in the administration

ROYALTY INFORMATION (1961 AUGUST) of these clauses the contractor shall not be required to execute an assignment un

When the response to this solicitation til this three-month period has expired,

contains costs or charges for royalties total

ing more than $250, the following informaand then usually only if the Government

tion shall be furnished with the offer, prointends to file a patent application. posal, or quotation on each separate item 132 F.R. 529, Jan. 18, 1967, as amended at of royalty or license fee: 35 F.R. 6833, Apr. 30, 1970)

(1) Name and address of licensor;

(11) Date of license agreement; $ 9.109–5 Register of Government

(iil) Patent numbers, patent application rights in inventions.

serial numbers or other basis on which the (a) Licensés, assignments, or other

royalty is payable; documents evidencing any rights of the

(iv) Brief description, including any part

or model numbers of each contract item or Government in inventions shall be re

component on which the royalty is payable; viewed by the Departments to assure that (v) Percentage or dollar rate of royalty each such document fully confirms the

per unit; rights to which the Government is en- (vi) Unit price or contract item; titled.

(vii) Number of units; and

(vill) Total dollar amount of royalties. (b) The original and a copy of each such document shall be forwarded to the

DD Form 783, Royalty Report, is approved

for use in furnishing the above information. activity designated by Departmental reg

In addition, if specifically requested by the ulations for receiving such documents.

contracting officer prior to execution of the This latter activity shall forward the

contract, a copy of the current license agreeoriginals of all licenses, assignments, or ment and identification of applicable claims other documents evidencing any rights 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 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 officer, 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 is 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 (1) 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 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) $ 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 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

contracts 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 Subpart B-Data and Copyrights the Contractor or are determined by the Contracting Officer not to he properly charge- $ 9.200 Scope of subpart. able to the Government and allocable to the contract, the contract price shall be re

This subpart sets forth the Departduced. Repayment or credit to the Govern- ment of Defense policy, implementing ment shall be made as the Contracting instructions, and contract clauses with Officer directs.

respect to acquisition of rights in techni(e) If, at any time within three (3) years cal and other data and copyrights. It subsequent to final payment under this con

relates only to the acquisition of rights tract, the Contractor for any reason is relieved in whole or in part from the payment

in data and does not establish requireof the royalties included in the final con

ments for data. tract price as adjusted pursuant to paragraph (30 F.R. 6968, May 25, 1965) (d) above, the Contractor shall promptly notify the Contracting Officer of that fact

§ 9.201 Definitions. and shall reimburse the Government in a For the purposes of this subpart the corresponding amount.

following terms have the meanings set (f) The substance of this clause, including

forth below: this paragraph (f), shall be included in any subcontract in which the amount of royalties

(a) “Data" means writings, sound rereported during negotiation of the subcon

lings, pictorial reproductions, drawtract exceeds two hundred and fifty dollars

ings, or other graphic representations ($250).

and works of similar nature, whether or [32 F.R. 530, Jan. 18, 1967, as amended at

not copyrighted. The term does not in33 F.R. 7400, May 18, 1968]

clude financial reports, cost analyses, and

other information incidental to contract $ 9.112 Adjustment of royalties.

administration. (a) If at any time the contracting (b) "Limited rights" means rights to officer has reason to believe that any use, duplicate, or disclose technical data, royalties paid, or to be paid, under an in whole or in part, by or for the Governexisting or prospective contract or sub- ment, with the express limitation that contract are inconsistent with Govern- such technical data shall not, without ment rights, excessive, or otherwise im- the written permission of the party furproper, he shall promptly report the nishing such technical data, be released facts to the office having cognizance

or disclosed in whole or in part outside of patent matters for the procuring ac

the Government, used in whole or in tivity concerned. The cognizant office shall review the royalties thus reported

part by the Government for manufacand such royalties as are reported under

ture, or used by a party other than the $$ 9.110 and 9.111. In coordination with

Government, except for: the contracting officer, the cognizant

(1) Emergency repair or overhaul work office shall:

only, by or for the Government, where (1) Take prompt action to protect the

the item or process concerned is not Government against payment of royal- otherwise reasonably available to enable ties on supplies or services (i) with re- timely performance of the work: Prospect to which the Government has a vided, That the release or disclosure royalty-free license, or (ii) at a rate in thereof outside the Government shall be excess of the rate at which the Govern- made subject to a prohibition against ment is licensed, or (iii) when the royal- further use, release or disclosure; or ties in whole or in part otherwise consti- (2) Release to a foreign government, tute an improper charge; and

as the interest of the United States may (2) In appropriate cases obtain a re

require, only for information or evaluafund pursuant to a “Refund of Royal- tion within such government or for emerties” clause or enter into negotiation for gency repair or overhaul work by or for a reduction of alties.

such government under the conditions (b) For guidance in evaluating infor- of subparagraph (1) of this paragraph. mation furnished pursuant to $ 9.110 and (c) “Unlimited rights" means rights paragraph (a) of this section, see to use, duplicate, or disclose technical 88 15.205-36 and 15.309–33 of this chap- data in whole or in part, in any manner ter. Also see $ 15.107 of this chapter

and for any purpose whatsoever, and to regarding advance understandings on

have or permit others to do so. particular cost items, including royalties.

(30 F.R. 6969, May 25, 1965, as amended at (32 F.R. 531, Jan. 18, 1967]

34 F.R. 17897, Nov. 5, 1969)

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