suits for patent infringement. To attain these ends, contracts having Patent Rights clauses should be so administered that:

(1) Inventions are identified, disclosed, and reported as required. by the contract clauses;

(2) The rights of the Government in such inventions are established; (3) When appropriate, patent applications are timely filed and prosecuted by contractors or by the Government;

(4) The filing of patent applications is documented by formal instruments such as licenses or assignments; and

(5) Expeditious commercial utilization of such inventions is achieved.

§ 1-9.109-2 Follow-up by contractor.

Each contractor shall establish and maintain effective procedures to ensure that inventions made under the contract are identified, disclosed, and when appropriate, patent applications filed, and that the Government's rights therein are established and protected. 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 post-award orientation conference or letter should be used by the Government to explain these rights and obligations. When reviewing a contractor's procedures, particular attention shall be given to ascertaining their effectiveness for identifying and disclosing inventions.

§ 1-9.109-3 Follow-up by Government.

Each Government agency shall undertake to ensure compliance by the contractor with the obligations of the Patent Rights clause of the contract. This effort should be directed primarily toward contracts and subcontracts about which there is reason to believe the contractors may not be complying with their contractual obligations. Other contracts and subcontracts should be spotchecked when feasible. These follow-up activities may include:

(1) Reviewing technical reports submitted by the contractor;

(2) Checking sources for patents issued to the contractor in fields. related to this Government contracts;

(3) Interviewing contractor personnel regarding work under the contract, observing the work on site, and inspecting laboratory notebooks and other records of the contractor related to work under the contract; and

(4) Interviewing agency technical (SIC) ments in contracts under their cognizance.

§ 1-9.109-4 Remedies.

If the contractor operating under the Patent Rights clauses of § 1-9.107-5 fails to establish, maintain, or follow effective procedures for identifying and disclosing inventions as required by the Patent Rights clause or fails to correct any deficiency after notice thereof, the contracting officer may require the contractor to make available for examination books, records and documents relating to inventions in the same field of technology as the contract to enable an agency determination of whether there are such inventions, and may invoke the withholding of payments provision. Further, the contracting officer may invoke the withholding of payments provision if the contracts fails to disclose an invention deemed by the agency to be a Subject Invention.

§ 1-9.109-5 Conveyance of invention rights acquired by the Government.

(a) Where the Government acquires the entire right, title, and interest in an invention pursuant to a contract, assignments are required from the inventor to the contractor and from the contractor to the Government, or from the inventor to the Government with the consent of the contractor, 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 optional form of assignment set forth hereinafter provides the complete chain of title in a single instrument and may be used to convey title to the Government. Alternatively, if separate assignments are used, both documents shall be forwarded simultaneously to the agency for recording.

Inventor(s):

Contractor:

Contracting Government Agency:
Contract No.:

Application Title:

ASSIGNMENT

Contractor's Invention Docket No.:
Agency Invention Docket No.:
Serial No.:

Date(s) Inventor(s) Executed Oath:

Filing Date:

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, as represented by the above-identified agency, the entire right, title, and interest in and to each invention disclosed and claimed in the above U.S. patent application 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, subject to the reservation of the following license, if any, to the Contractor.

The license reserved to the Contractor shall extend to the Contractor's domestic subsidiaries and affiliates, if any, within the corporate structure of which the Contractor is a part and shall include the right to grant sublicenses of the same scope to the extent the Contractor was legally obligated to do so at the time the contract was awarded. The license shall be transferable only with approval of the agency except when transferred 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, performing all acts, and doing all things which may be reasonably necessary to make this assignment effective.

The Contractor joins in and agrees to this assignment and except for the above reservation of a license, if any, relinquishes and assigns the entire right, title, and interest in and to such inventions, and further agrees to furnish to the Government upon request any available information and documents necessary for the prosecution of the above-identified application for patent.

(b) When the clause of § 1-9.107-5(b) is included in a contract or when a party retains title to an identified invention and the right to file a patent application pursuant to a greater rights determination of § 1-9.109-6, the optional form of confirmatory Instrument set forth hereinafter is approved for use by the contractor or by the party retaining title.

Application for:

CONFIRMATORY INSTRUMENT

(License to the Government)

Inventor(s):

Serial No.:

Filing Date:

(Title of invention)

Contract No.:
Contractor:

The invention identified above is a "Subject Invention" under Patent Rights clause,

This document is confirmatory of the paid-up license granted to the Government in this invention, patent application, and any resulting patent, and all other rights acquired by the Government under the referenced contract.

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 the above-identified invention.

The Government is hereby granted an irrevocable power to inspect and make copies of the above-identified patent application. day of 19

Signed this

[SEAL]

By.

Applicant or Assignee (Recorded)

ATTEST:

Business Address

(c) Assignments, licenses, confirmatory instruments, and other papers evidencing any rights of the Government in patents or patent applications shall be recorded in the Statutory Register and/or documented in the Governmental Register maintained by the U.S. Patent and Trademark Office pursuant to Executive Order 9424, February 18, 1944. Such documents shall be sent to the Commissioner of Patents and Trademarks, Attention: Assignment Branch, Washington, DC 20231, and when the document is to be recorded in the Statutory Register, shall be accompanied by the required fee. When the document is recorded in the Statutory Register, the Patent and Trademark Office places a copy of this recording in the Governmental Register. If the agency does not have the document recorded in the Statutory Register, it shall send two copies of the document to the Commissioner of Patents and Trademarks and request that these documents be filed in a designated section of the Governmental Register. The Governmental Register contains several sections including a secret, departmental, and public section. The secret section is for applications bearing a security classification; the departmental section is for documents which are available to the Government and to the public only upon approval of the Government agency; and the public section permits access to the public.

§ 1-9.109-6 Retention of greater rights.

(a) Request for the retention of greater domestic rights. A contractor's request for a determination that he retain greater domestic rights in an identified invention under the patent Rights clauses of § 1-9.107-5 (a) or (c) or § 1-9.107-6 shall be submitted in writing to the agency. (1) The request shall contain the following information:

(i) The prime contract number and the subcontract number, if applicable, under which the invention was made and an identification of the agency's contracting office;

(ii) A brief description of the invention or a copy of the invention disclosure;

(iii) The nature and extent of the rights desired;

(iv) A description of the development, risk capital and expense, and time required to bring the invention to the point of practical application;

(v) A statement of the contractor's plans and intentions to bring the invention to the point of practical application including:

(A) If further development and marketing are to be conducted by the contractor, a description of the facilities, personnel, and marketing outlets available for that purpose, and the extent to which such development is to be undertaken by the contractor or others on his behalf and/or;

(B) If licensing of the invention is intended, a brief description of the contractor's licensing program; and (vi) A statement, where the invention falls within § 1-9.1073(a), of the contractor's contribution when the contention is made that the Government's contribution to the invention is small compared to his contribution.

(2) Agencies may request additional information which would facilitate a determination that greater rights should be retained by the contractor. Illustrations of such items of information include the following:

(i) The relationship of the invention to a principal purpose of the contract;

(ii) Any facts or information known to the contractor about whether the invention is intended to be developed by the Government for commercial use or is to be required for such use by governmental regulation;

(iii) The relationship, if any, of the invention to the public health, safety, or welfare; and

(iv) The field of science and technology of the invention and whether the Government has been the principal developer of this field.

(3) The contractor's employee(s) who made an invention in the course of or under a contract may also request, with proper authorization from his employer, a determination that he retain greater rights whenever the contract so provides. A copy of the authorization of the contractor-employer should be submitted with the employee-inventor's request for such a determination. In submitting the information required for a determination for the retention of greater rights as provided in § 1-9.9.109-6(a)(1), and in applying the other provisions of this paragraph, the term contractor shall be understood to also mean the employee-inventor.

(b) Reimbursement of costs for filing patent applications. In order to protect the interest of the Government and the party submitting a request for a determination that greater rights be retained, the filing of a United States patent application prior to the agency's determination is permissible. If an application on a Subject Invention is filed during the pendency of the determination, or within 60 days prior to the receipt of a request by the agency, the agency shall reimburse the party filing the application for the reasonable filing costs and for any patent prosecution as may have occurred as provided by § 1-15.20526 or 1-15.309-22. Whenever such costs are not covered by § 115.205-26 or § 1-15.309-22, the agency may nevertheless reimburse the party causing the application to be filed for the reasonable costs of such filing and for any patent prosecution that may have occurred, subject to the availability of funds, provided:

(1) The agency determines that the party is not entitled to the retention of greater rights which are coextensive with the party's request; and

(2) Prior to reimbursement the party requesting such determination assigns the application to a Government agency and the agency accepts the assignment of the application.

(c) Agency consideration. The agency shall consider each request for a determination for the retention of greater domestic rights which was submitted within the period specified in the Patent Rights clause and shall make the determination in accordance with the criteria set out in paragraphs (d) or (e) of this section, as applicable.

(d) Criteria for a determination for the retention of greater rights— Acquisition by the Government clause. When the request for a determination for the retention of greater rights relates to an invention reported under the Patent Rights clause of 81-9.107-5(a) or §1-9.107-6(a):

(1) The requesting party may retain greater rights regardless of whether the invention is or is not directly related to a principal purpose of the contract when the agency finds that the invention comes within the criteria of § 1-9.107-3 (a) (1) through (4); and

(i) The retention of greater rights is a necessary incentive to call forth private risk capital and expenses to bring the invention to the point of practical application; or

(ii) The Government's contribution to the invention is small compared to that of the contractor.

(2) The requesting party also may retain greater rights when the agency finds that:

(i) The invention is not directly related to a principal purpose of the contract and does not come within the criteria of § 1-9.1073(a) (1) through (4); and

(ii) The likelihood is that the invention will be more expeditiously developed to the point of practical application by the intions and plans of the requesting party than by the activities of the Government.

(e) Criteria for a determination for the retention of greater rightsDeferred clause. When the request for a determination for the retention of greater rights relates to an invention reported under the Patent Rights clause of § 1-9.107-5(c) or § 1-9.107-6(b),