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(8) A list of all Government contracts under which the inventor, patent owner, or anyone in privity with him performed work relating to the patented subject matter.
(9) Evidence of title to the patent(s) alleged to be infringed or other right to make the claim.
(10) A copy of the Patent Office file of each patent if available to claimant.
(11) Pertinent prior art known to claimant, not contained in the Patent Office file, particularly publications and foreign art. In addition to the foregoing, if claimant can provide a statement that the investigation may be limited to the specifically identified accused articles or processes, or to a specific procurement, it may materially expedite determination of the claim.
(c) Military department receiving an allegation of patent infringement which meets the requirements of this section shall acknowledge the same and supply the other departmentswhich may have an interest therein with a copy of such communication and the acknowledgement thereof. [34 F.R. 13843, Aug. 29, 1969] 8 9.405 Indirect notice of patent in
fringement claims. (a) A communication by a patent owner to a Department of Defense contractor alleging that the contractor has committed acts of infringement in performance of a Government contract shall not be considered a claim within the meaning of $ 9.404 until it meets the requirements specified therein.
(b) Any Military Department receiving an allegation of patent infringement which meets the requirements of $ 9.404 shall acknowledge the same and supply the other Departments` which may have an interest therein with a copy of such communication and the acknowledgment thereof.
(c) If a communication covering an infringement claim or notice which does not meet the requirements of $ 9.404(a)
is received from a contractor, the patent owner shall be advised in writing as covered by the instructions of $ 9.404(d). 132 F.R. 534, Jan. 18, 1967, as amended at 34 F.R. 13844, Aug. 29, 1969) $ 9.406 Investigation and administrative
disposition of claims. An investigation and administrative determination (denial or settlement) of each claim shall be made in accordance with instructions and procedures established by each Military Department, subject to the following:
(a) Where the procurement responsibility for the alleged infringing item or process is assigned to a single Military Department or only one Military Department is the purchaser of the alleged infringing item or process, and the funds of that Department only are to be charged in the settlement of the claim, that Department shall have the sole responsibility for the investigation and administrative determination of the claim and for the execution of any agreement in settlement of the claim. Where, however, funds of another Department are to be charged, in whole or in part, the approval of such Department shall be obtained as required by $ 5.1102 of this chapter. Any agreement in settlement of the claim, approved pursuant to $ 5.1102 of this chapter, shall be executed by each of the Departments concerned.
(b) Where two or more Military Departments are the respective purchasers of alleged infringing items or processes and the funds of those Departments are to be charged in the settlement of the claim, the investigation and administrative determination shall be the responsibility of the Department having the predominant financial interest in the claim or of the Department or Departments as jointly agreed upon by the Departments concerned. The Department responsible for negotiation shall, throughout the negotiation, coordinate with the other Departments concerned and keep them advised of the status of the negotiation. Any agreement in the settlement of the claim shall be executed by each Department concerned. $ 9.407 Notification and disclosure to
claimants. When a claim is denied, the Department responsible for the administrative determination of the claim shall so notify the claimant or his authorized representative and provide the claimant
4 For the Department of the Army, Chief, Patents Division, Office of The Judge Advocate General; for the Department of the Navy, the Patent Counsel for Navy, Office of Naval Research; for the Department of the Air Force, Chief, Patents Division, Office of The Judge Advocate General; for the Defense Supply Agency, The Office of Counsel; and for the Defense communications Agency, the Counsel.
a reasonable rationale of the basis for denying the claim. Disclosure of information or the rationale referred to above shall be subject to applicable statutes, regulations, and directives pertaining to security, access to official records, and the rights of others. $ 9.408 Settlement of indemnified
claims. Settlement of claims involving payment for past infringement shall not be made without the consent of, and equitable contribution by, each indemnifying contractor involved, unless such settlement is determined to be in the best interests of the Government and is coordinated with the Department of Justice with a view to preserving any rights of the Government against the contractors involved. If consent of and equitable contribution by the contractors are obtained, the settlement need not be coordinated with the Department of Justice. $ 9.409 Patent releases, license agree
ments, and assignments. Sections 9.409—9.409-4 contain clauses for use in patent release and settlement agreements, license agreements, and assignments, executed by the Government, under which the Government acquires rights. $ 9.409–1 Required clauses.
Minor modifications of language (e.g., pluralization of "Secretary” or “Contracting Officer") in multidepartmental agreements may be made if necessary.
(a) Oficials not to benefit. Insert the clause in $ 7.103–19 of this chapter.
(b) Covenant against contingent fees. Insert the clause in $ 7.103–20 of this chapter.
(c) Gratuities. Insert the clause in $ 7.104–16 of this chapter.
(d) Assignment of claims. Insert the clause in $ 7.103-8 of this chapter.
(e) Disputes. In accordance with the provisions of $ 7.103–12 of this chapter, insert the appropriate clause set forth therein. (f) Nonestoppel.
NONESTOPPEL (OCTOBER 1966) The Government reserves the right at any time to contest the enforceability, validity, scope of, or the title to any patent or patent application herein licensed without waiving or forfeiting any right under this contract.
$9.409-2 Clauses to be used when ap
plicable. (a) Release of past infringement. The following clause is an example which may be modified or omitted as appropriate for particular circumstances, but only upon the advice of cognizant patent or legal counsel.
RELEASE OF PAST INFRINGEMENT The Contractor hereby releases each and every claim and demand which he now has or may hereafter have against the Government for the manufacture or use by or for the Government, prior to the effective date of this contract, of any inventions covered by (i) any of the patents and applications for patent identified in this contract, (and (11) any other patent or application for patent owned or hereafter acquired by him, insofar as and only to the extent that such other patent or patent application covers the manufacture, use, or disposition of (description of subject matter).]
(b) Readjustment of payments.
The following clause shall be inserted in contracts providing for payment of a running royalty: READJUSTMENT OF PAYMENTS (OCTOBER 1966)
(a) If any license, under substantially the same patents and authorizing substantially the same acts which are authorized under this contract, has been or shall hereafter be granted within the United States, on royalty terms which are more favorable to the licensee than those contained herein, the Government shall be entitled to the benefit of such more favorable terms with respect to all royalties accruing under this contract after the date such more favorable terms become effective, and the Contractor shall promptly notify the Secretary in writing of the granting of such more favorable terms.
(b) In the event any claim of any patent hereby licensed is construed or held invalid by decision of a court of competent jurisdiction, the requirement to pay royalties under this contract insofar as it arises solely by reason of such claim, and any other claim not materially different therefrom, shall be interpreted in conformity with the court's decision as to the scope or validity of such claims: Provided, however, That in the event such decision is modified or reversed on appeal, the requirement to pay royalties under this contract shall be interpreted in con
For the Department of the Army: Chief, Patents Division, Office of The Judge Advocate General; for the Department of the Air Force: Chief, Patents Division, Office of The Judge Advocate General; and for the Defense Supply Agency: The Patent Counsel.
Bracketed portions of the clause may be omitted when not appropriate or not encompassed by the release as negotiated.
formity with the final decision rendered on such appeal.
The following clause is an example for use in contracts providing for the payment of a running royalty. This clause may be modified or omitted as appropriate for particular circumstances, but only upon the advice of cognizant patent or legal counsel.'
TERMINATION Notwithstanding any other provision of this contract, the Government shall have the right to terminate the within license, in whole or in part, by giving the Contractor not less than thirty (30) days notice in writing of the date such termination is to be effective: Provided, however, That such termination shall not affect the obligation of the Government to pay royalties which have accrued prior to the effective date of such termination. $9.409-3 Additional clauses contracts
except running royalty contracts. The following clauses are examples for use in patent release and settlement agreements, and license agreements not providing for payment by the Government of a running royalty. (a) License grant.
LICENSE GRANT (a) The Contractor hereby grants to the Government an irrevocable, nonexclusive, nontransferable, and paid up license under the following patents, applications for patent, and any patents granted on such applications, and under any patents which may issue as the result of any reissue, division or continuation thereof, to practice by or cause to be practiced for the Government throughout the world, any and all of the inventions thereunder, in the manufacture and use of any article or material, in the use of any method or process, and in the disposition of any article or material in accordance with law:
U.S. Patent No. ---------- Date-------
Application Serial No. ---------- Filing Date---------- together with corresponding foreign patents and foreign applications for patents, insofar as the Contractor has the right to grant licenses thereunder without incurring an obligation to pay royalties or other compensation to others solely on account of such grant.
(b) No rights are granted or implied by the agreement under any other patents other than as provided above or by operation of law.
(c) Nothing contained herein shall limit any rights which the Government may have obtained by virtue by prior contracts or by operation of law or otherwise.
(b) License term. One of the following clauses may be used as appropriate.
LICENSE TERM The license hereby granted shall remain in full force and effect for the full term of each of the patents referred to in the “License Grant" clause of this contract and any and all patents hereafter issued on applications for patent referred to in such "License Grant" clause,
LICENSE TERM The license hereby granted shall terminate on the ------ day of -------- ---- 19------; Provided, however, That said termination shall be without prejudice to the completion of any contract entered into by the Government prior to said date of termination or to the use or disposition thereafter of any articles or materials manufactured by or for the Government under this license. $ 9.409-4. Additional clauses-contracts
providing for payment of a running
royalty. The clauses set forth below are examples which may be used in patent release and settlement agreements, and license agreements, when it is desired to cover the subject matter thereof and the contract provides for payment of a running royalty.
(a) License grant. No Military Department shall be obligated to pay royalties unless the contract is signed on behalf of such Department. Accordingly, the following License Grant clause should be limited to the practice of the invention by or for the signatory Department or Departments:
LICENSE GRANT (a) The Contractor hereby grants to the Government, as represented by the Secretary of ------------------------, an irrevocable, nonexclusive, nontransferable license under the following patents, applications fo
patent, and any patents granted on such applications, and under any patents which may issue as the result of any reissue, division. or continuation thereunder to practice by, or cause to be practiced for the Department of ----------
--------, throughout the world, any and all of the inventions there
? For the Department of the Army: Chief, Patents Division, Office of The Judge Advocate General for the Department of the Air Force: Chief, Patents Division, Office of The Judge Advocate General; and for the Defense Supply Agency: The Patent Counsel.
under in the manufacture and use of any article or material, in the use of any method or process, and in the disposition of any article or material in accordance with law:
U.S. Patent No. ------ Date ----
Application Serial No. ------ Filing Date ------------ together with corresponding foreign patents and foreign applications for patent, insofar as the Contractor has the right to grant licenses thereunder without incurring an obligation to pay royalties or other compensation to others solely on account of such grant.
(b) No rights are granted or implied by the agreement under any other patents other than as provided above or by operation of law.
(c) Nothing contained herein shall limit any rights which the Government may have obtained by virtue of prior contracts or by operation of law or otherwise.
(b) License term. The following clause is a sample form for expressing the license term.
LICENSE TERM The license hereby granted shall remain in full force and effect for the full term of each of the patents referred to in the “License Grant" clause of this contract and any and all patents hereafter issued on applications for patent referred to above unless sooner terminated as elsewhere herein provided.
(c) Computation of royalties. The following clause, providing for the computation of royalties, may be of varying scope depending upon the nature of the royalty bearing article, the volume of procurement, and the type of contract pursuant to which the procurement is to be accomplished.
COMPUTATION OF ROYALTIES Subject to the conditions hereinafter stated, royalties shall accrue to the Contractor under this agreement on all articles or materials embodying, or manufactured by the use of, any or all inventions claimed under any unexpired U.S. patent licensed herein, upon acceptance thereof by the Department of -the rate of ------ percent of the net selling price of such articles or materials) ((amount) per (name of item) ] 8 whether manufactured by the Government or procured under a fixed price contract, and at the rate of (amount) per (name of item) acquired or manufactured by a Contractor performing under a cost-reimbursement con. tract. With respect to such articles or materials made by the Department of -------------------, “net selling price," as used
In this paragraph, means the actual cost of direct labor and materials without allowance for overhead and supervision.
(d) Reporting and payment of royalties. (1) The contract should contain a provision specifying the office designated within the specific Department involved to make any necessary reports to the contractor of the extent of use of the Licensed subject matter by the entire Department, and such office shall be charged with the responsibility of obtaining from all procuring offices of that Department the information necessary to make the required reports and corresponding vouchers necessary to make the required payments. The following clause is a sample for expressing reporting and payment of royalties requirements:
REPORTING AND PAYMENT OF ROYALTIES
(a) The (procuring office) shall, on or before the sixtieth (60th) day next following the end of each yearly' period ending -------------- during which royalties have accrued under this license, deliver to the Contractor, subject to military security regulations, a report in writing furnishing necessary information relative to royalties which have accrued under this contract.
(b) Royalties which have accrued under this contract during the yearly 10 period ending -------------- shall be paid to the Contractor (if appropriations therefor are available or become available) within sixty (60) days next following the receipt of a voucher from the Contractor submitted in accordance with the report referred to in (a) of this clause: Provided, That the Government shall not be obligated to pay, in respect of any such yearly period, on account of the combined royalties accruing under this contract directly and under any separate licenses granted pursuant to the "License to Other Government Agencies” clause (if any) of this contract, an amount greater than -------------- ($------------) dollars; and if such combined royalties exceed the said maximum yearly obligation, each departo ment or agency shall pay & pro rata share of the said maximum yearly obligation as determined by the proportion its accrued royalties bear to the combined total of accrued royalties.
(2) Where more than one Department or Government Agency is licensed and
The frequency, date, and length of reporting periods should be selected as appropriate to the particular circumstances of the contract.
10 The frequency, date, and length of reporting periods should be selected as appropriate to the particular circumstances of the contract.
& Use bracketed matter as appropriate.
there is a ceiling on the royalties payable in any reporting period, the licensing Departments or Agencies shall coordinate with respect to the pro rata share of royalties to be paid by each.
(e) License to other Government agencies. When it is intended that a License on the same terms and conditions be available to other departments and agencies of the Government, the following clause is an example which may be used: LICENSE TO OTHER GOVERNMENT AGENCIES
The Contractor hereby agrees to grant a separate license under the patents, applications for patents, and improvements referred to in the "License Grant" clause of this contract, on the same terms and conditions as appear in this license contract, to any other department or agency of the Government at any time on receipt of a written request for such a license from such department or agency: Provided, however, That as to royalties which accrue under such separate 11censes, reports and payments shall be made directly to the Contractor by each such other department or agency pursuant to the terms of such separate licenses. The Contractor shall notify the Licensee hereunder promptly upon receipt of any request for license hereunder.
(b) To facilitate proof of contracts of assignments, the acknowledgement of the contractor should be executed before & notary public or other officer authorized to administer oaths (35 U.S.C. 261). $ 9.411 Procurement of rights in inven.
tions, patents and copyrights. Even though no infringement has occurred or been alleged, it is the policy of the Department of Defense to procure rights under patents, patent applications, and copyrights whenever it is in the Government's interest to do so and the desired rights can be obtained at a fair price. The required and suggested clauses in 88 9.409 and 9.410 shall be required and suggested clauses, respectively, for license agreements and assignments made under this paragraph. The instructions in $$ 9.409 and 9.410 concerning the applicability and use of those clauses shall be followed insofar as they are pertinent. [35 F.R. 6833, Apr. 30, 1970] $ 9.412 Contract format.
The following format, appropriately modified where necessary, may be used for contracts of release, license, or assignment:
Contract No -------PATENT LICENSE AND RELEASE CONTRACT
This contract 16 effective as of the ---day of ---------- 19.-, between the United States of America (hereinafter called the Government), and ---------- (hereinafter called the Contractor), (a corporation organized and existing under the laws of the State of ----------,) (a partnership consisto ing of ----------,) (an individual trading as ----------,) ) of the City of -------the State of --------
Whereas, Contractor warrants that he has the right to grant the within license and release, and the Government desires to procure the same, and
Whereas, this contract is authorized by law, including 10 U.S.C. 2386,
Now therefore, in consideration of the grant, release and agreements hereinafter recited, the parties have agreed as follows: Article 1. License Grant.u1
(Insert the clause in 9-409.3(a) for a paid up license, or the clause in 9-409.4(a) for a license on a running royalty basis.)
Article 2. License Term.u
$ 9.410 Assignments.
(a) The following clause is an example which may be used in contracts of assignment of patent rights to the Government:
The Contractor hereby conveys to the Government, as represented by the Secretary of ---------, the entire right, title, and Interest in and to the following patents (and applications for patent), in and to the inventions thereof, and in and to all claims and demands whatsoever for infringement thereof heretofore accrued, the same to be held and enjoyed by the Government through its duly appointed representatives to the full end of the term of said patents (and to the full end of the terms of all patents which may be granted upon said applications for patent, or upon any division, continuation-in-part or continuation thereof): U.S. Patent No. Date Name of Inventor
uIt only a release is procured delete this article; 1 an assignment is procured, use the clause in 9-410.