Page images
PDF
EPUB
[blocks in formation]
[blocks in formation]

9-9.202-4

9-9.202-5

Scope of subpart

Definitions

Acquisition and use of technical data

General

Policy

Procedures

Procedures (Government-owned contractor operated facilities)
Negotiations and deviations

$9-9.000 Scope of part.

This part sets forth policies, instructions, and contract clauses pertaining to patents, data, and copyrights in connection with the procurement of supplies and services.

It is noted that $9-9.107-4(d) entitled "License rights (upon request) to the Contractor" pertains to contracts for the operation of Government-owned facilities or special long term, cost-reimbursement Government-funded research, development, or demonstration work. It provides that in such contracts, the paragraph set forth in $9-9.1075(e) shall be substituted for paragraph (c)(1) of the Patent Rights (long form) clause of $9-9.107-5(a) to provide a revocable, nonexclusive, royalty-free license in inventions only upon request by the contractor for reservation of such license.

Also, $9-9.107-4(g) entitled "Facilities license" covers a contract which has as a purpose the design, construction, or operation of a Government-owned research, development, demonstration, or production facility. It states that the paragraph of $9-9.107-5(h) shall be used in all such contracts, in addition to the provisions of the Patent Rights (long form) clause, since it is necessary that the Government be accorded certain rights with respect to further use of the facility by or on behalf of the Government upon termination of the contract, including the right to make, use, transfer, or otherwise dispose of all articles, materials, products, or processes embodying inventions or discoveries used or embodied in the facility regardless of whether or not conceived or actually reduced to practice under or in the course of such contracts. Further, $9-9.107-4(h) entitled "Subcontracts" states that the withholding of payment provision of the prime contract will not normally be included in a subcontract except upon request of the contracting officer and except for subcontracts awarded by contractors who operate Government-owned facilities and for other special contracting situations in which cases the withholding of payment provision may be flowed down to the first tier subcontractor only.

With respect to technical data and copyrights, §9-9.202-4 applies to a contract which has as a purpose the operation of a Governmentowned contractor-operated research or production facility. This section sets forth the Rights in Technical Data-Facility clause which shall normally be included in such a contract.

[blocks in formation]

This subpart sets forth policies, procedures, and contract

clauses with respect to inventions made, conceived, or utilized in the course of or under any contracts, grants, agreements, understandings or other arrangements entered into with or for the benefit of ERDA. One of ERDA's primary missions requires the use of its procurement process to insure the conduct of research, development, and demonstration leading to the ultimate commercial utilization of all efficient sources of energy. Accordingly, ERDA's mission is not oriented toward procurement for Government use, except where procurements are involved with special classified programs or the construction or improvement of Government-owned facilities. To accomplish its mission, ERDA must work in cooperation with industry in the development of new energy sources and in achieving the ultimate goal of widespread commercial use. To this end, Congress has provided ERDA with an array of incentives to secure the adoption of the new technology developed for ERDA. An important incentive in commercializing technology is that provided by the patent system. As set forth in these regulations, patent incentives, including ERDA's authority to waive the Government's patent rights to the extent provided for by statute, will be utilized in appropriate situations at the time of contracting to encourage industrial participation, foster commercial utilization and competition, and make the benefits of ERDA's activities widely available to the public. In addition to considering the waiver of patent rights at the time of contracting, ERDA will also consider the incentive of a waiver of patent rights upon the reporting of an identified invention when requested by the contractor or the employee-inventor with the permission of the contractor. These requests can be made whether or not a waiver request was made at the time of contracting. Waivers for identified inventions will be provided where it is determined that the patent waiver will be a real incentive to achieving the development and ultimate commercial utilization of inventions. Where a waiver of the Government patent rights is granted, either at the time of contracting or upon request or after an invention is made, certain safeguards will be required by ERDA to protect the public

interest.

Another major ERDA mission is to manage the nation's uranium enrichment and other classified programs, where R&D procurements are directed toward processes and equipment not available to the public. To accomplish ERDA's programs for bringing private industry into these and other special programs to the maximum extent permitted by national security and policy considerations, it is desirable that the technology developed in these programs be made available on a selected basis for use in the particular fields of interest and under controlled conditions by properly cleared industrial and scientific research institutions. To insure such availability and control, the grant of waivers in these programs may necessarily be more limited than in other ERDA programs.

[blocks in formation]
[blocks in formation]

(a) Under 28 USC 1498, any suit for unauthorized use of a United States patent based on the manufacture or use by or for the United States of an invention described in and covered by a patent of the United States by a contractor or by a subcontractor (at any tier) can be maintained only against the Government in the Court of Claims, and not against the contractor or subcontractor, in those cases where the Government has authorized or consented to the manufacture or use of the patented invention. Accordingly, to insure that work by a contractor or subcontractor under a Government contract may not be enjoined by reason of patent infringement, authorization and consent shall be given in the prime contract and shall apply to all subcontracts thereunder as provided below. The liability of the Government for damages in such suit against it may, however, ultimately be borne by a contractor or subcontractor in accordance with the terms of any patent indemnity clause also included in the contract or subcontract, and an authorization and consent clause may be included in the same contract or subcontract.

(b) In certain contracting situations, such as those involving demonstration projects, consideration should be given to the impact of third party-owned patents covering technology that may be incorporated in the project which may ultimately affect widespread commercial use of the project results. In such situations, patent counsel should be consulted to determine what modifications, if any, should be made to the utilization of the Authorization and Consent and Patent Indemnity provisions or what other action might be deemed appropriate.

(c) An Authorization and Consent clause shall not be used in contracts where both complete performance and delivery are to be outside the United States, its possessions or Puerto Rico.

[blocks in formation]

The following contract clause shall be included in all contracts for supplies or services except when prohibited by §9-9.102(c) or in contracts for research, development, or demonstration work and in subcontracts thereunder in which the clause in §9-9.102-2 is required.

AUTHORIZATION AND CONSENT

The Government hereby gives its authorization and consent (without prejudice to any rights of indemnification) for all use and manufacture, in the performance of this contract or any part hereof or any amendment hereto or any subcontract hereunder (including any lower-tier subcontract), of any invention described

« PreviousContinue »