$9-9.106 Classified inventions. Unauthorized disclosure of classified subject matter, whether in a patent application or resulting from the issuance of a patent, may be a violation of not only the Atomic Energy Act of 1954, as amended, and other laws relating to espionage and national security, but also provisions pertaining to disclosure of information incorporated in the contract. Accordingly, the following clause shall be included in every contract which covers or is likely to cover classified subject matter. CLASSIFIED INVENTIONS (a) The contractor shall not file or cause to be filed on any invention or discovery conceived or first actually reduced to practice in the course of or under this contract in any country other than the United States, an application or registration for a patent without first obtaining written approval of the contracting officer. (b) When filing a patent application in the United States on any invention or discovery conceived or first actually reduced to practice in the course of or under this contract the subject matter of which is classified for reasons of security, the contractor shall observe all applicable security regulations covering the transmission of classified subject matter. When transmitting the patent application to the United States Patent and Trademark Office, the contractor shall by separate letter identify by agency and number the contract or contracts which require security classification markings to be placed on the application. (c) The substance of this clause shall be included in subcontracts which cover or are likely to cover classified subject matter. $9-9.107 $9-9.107-1 Patent rights under contracts for research, develop- General. This section sets forth the policies, procedures and practices of ERDA in connection with inventions, patents, and related matters based upon the Atomic Energy Act of 1954, as amended (42 USC 2182), and Section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974 (42 USC 5908); and, to the extent not inconsistent with the foregoing statutes, the revised Presidential Memorandum and Statement of Government Patent Policy, August 23, 1971 (36 R.R. 1688716892). Section 152 of the Atomic Energy Act provides that the title to inventions useful in the nuclear energy field made or conceived in the course of or under a contract, subcontract, or arrangement entered into for the benefit of the Commission (now ERDA) shall be vested in the Government. Government rights in such an invention may be waived consistent with the policy of Section 152. In a similar manner, Section 9 of the Federal Nonnuclear Energy Research and Development Act provides that title to inventions made or conceived in the course of or under ERDA contracts other than in the nuclear energy field shall vest in the Government and that all or part of the rights of the Government in such inventions may be waived if it is determined, in conformity with the provisions of Section 9, that the interests of the United States and the general public will best be served by such waiver. $9-9.107-2 (Reserved) $9-9.107-3 Policy. (a) Whenever any invention is made or conceived in the course of or under any contract of ERDA, title to such invention shall vest in the United States unless the head of the agency or designee waives all or any part of the rights of the United States in the invention. While waivers are to be granted only in conformity with the specific minimum considerations and under the carefully delineated conditions set forth in §9-9.109-6, it is recognized that waivers comprise a necessary part of the commercialization incentives available to ERDA. It is intended, therefore, that waivers will be provided in appropriate situations to encourage industrial participation and foster rapid commercial utilization in the overall best interest of the United States and the general public. With regard to any waivers granted under this Part 9-9, ERDA shall maintain a publicly available, periodically updated record of such waiver determinations. (b) In contracts having as a purpose the conduct of research, development or demonstration work and in other special contracts, the Government shall normally acquire title in and to any invention or discovery conceived or first actually reduced to practice in the course of or under the contract, allowing the contractor to retain a nonexclusive, revocable, paid-up license in the invention and the right to file and retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor's nonexclusive license retained in the invention may be revoked or modified by ERDA only to the extent necessary to achieve expeditious practical application of the invention pursuant to an applicaton for and the grant of an exclusive license in the invention. (c) In contracts having as a purpose the conduct of research, development, or demonstration work and in other special contracts the Government may have to acquire the right to require licensing of background patent rights by the contractor to insure reasonable public availability and accessibility necessary to practice the subject of the contract in the fields of technology specifically contemplated in the contract effort. The need for background patent rights and the particular rights that should be obtained for either the Government or the public will depend upon the type, purpose, and scope of the contract effort, and the cost to the Government of obtaining such rights. Accordingly, the background patent rights provision which will be appropriate for many contract situations is included in the Patent Rights clause. (d) Nothing in this Part 9-9 shall be deemed to convey to any individual, corporation or other business organization immunity from civil or criminal liability, or to create defenses to actions under the antitrust laws. (1) Whenever a contract, subcontract or other arrangement has as a purpose the conduct of research, development, or demonstration work, the operation of a Government-owned research or production facility, the furnishing of architect-engineer, design or other special services, or the coordination and direction of the work of others, the contracting officer shall include in the proposed contract either the Patent Rights clause of §9-9.107-5(a), or the clause of $9-9.107-6. The clause set forth in §9-9.107-6 may be used only in contracts calling for basic or applied research work with nonprofit or educational institutions or in certain consultant contracts as set forth in paragraph (a)(5) of this section. (2) The Patent Rights clauses of §9-9.107-5(a) and §9-9.107-6 provide that the Government shall acquire title to each invention made (i.e., conceived or first actually reduced to practice) in the course of or under the contract. However, the contractor shall retain in such invention a nonexclusive, revocable license, and subject to ERDA security requirements and regulations, may file and retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor or the inventor may also retain greater rights than these after an invention has been identified and reported to ERDA if the head of the agency or designee determines that the interests of the United States and the general public will best be served by a waiver of such rights, utilizing the considerations set forth in §9-9.109-6. (3) The Patent Rights clauses shall normally include the provisions set forth in paragraph (1) of the clause in $9-9.107-5(a) and paragraph (f) of the clause in $9-9.107-6. If the contracting officer determines that the work to be performed under the contract would not be useful in the production or utilization of special nuclear material or atomic energy, paragraphs (1) or (f) may be omitted. (4) The primary missions of ERDA may require that certain rights in the contractor's privately developed background patents be acquired for the Government's future production, research, development, and demonstration projects. Similar rights may also be required to enable private parties to utilize a subject of the contract in the fields of technology specifically contemplated in this contract effort. To this end, subject to specified exceptions and negotiations, the Patent Rights clause in contracts over $250,000 shall normally include provisions obtaining rights of the type specified in $9-9.107-5 to such background patents. It is recognized that the precise rights to be acquired will depend upon the facts of each situation and are a matter for determination by ERDA and for negotiation with the contractor. General guidelines for use by contracting officers and contract negotiators are provided in §9-9.107-5(b). (5) The short form Patent Rights clause in §9-9.107-6 may be used in contracts calling for basic or applied research where the contractor is a non-profit or educational institution, and in special situations such as consultant contracts. However, this clause will not be used in contracts in which an advance waiver or greater rights has been granted, in certain consultant contracts as explained in $9-9.107-6, or in other special contracts. (6) Solicitations and proposed contracts shall provide offerors and prospective contractors with notice of and the right to request, in advance of or within 30 days after the effective date of contracting, a waiver of all or any part of the rights of the United States with respect to subject inventions. In no event will the fact that an offeror has requested such a waiver be a consideration in the evaluation of the offer or the determination of its acceptability. If an advance waiver is granted, the Patent Rights clause of $9-9.107-5(a) shall be used and appropriately modified in accordance with the terms of such waiver. To provide adequate notice to prospective contractors or offerors, the following provision will be inserted in all solicitations which may result in contracts calling for research, development, or demonstration: Offerors and prospective contractors in accordance with applicable statutes and ERDA Regulations (41 CFR 9-9. 109-6) have the right to request in advance of or within 30 days after the effective date of contracting a waiver of all or any part of the rights of the United States in subject inventions. (7) Under its access permit program, ERDA may make Restricted Data applicable to civil uses of atomic energy available to persons requiring such data for use in their business, trade, or profession. Under such programs, the special terms and conditions of the type set forth in 10 CFR 725.23(b) and (d) should be used instead of the provision set forth in this part. (b) License for the Government, States, and domestic municipal governments. When a waiver is granted or foreign rights are retained by either the contractor or the inventor, the Government shall retain for the United States, States, and domestic municipal governments at least a paid-up, nonexclusive, irrevocable license in all applicable inventions unless the head of the agency or designee determines that it would not be in the public interest to acquire such rights for the States and domestic municipal governments. Requests by contractors for such determinations, together with a justification therefor, shall be submitted to the contracting officer. The contracting officer shall refer such requests to the patent counsel assisting the procuring activity for forwarding the request, along with appropriate comments and recommendations, to the Assistant General Counsel for Patents to serve as a basis for the determination by the head of the agency or designee. (c) Right to sublicense foreign Governments. The Patent Rights clause does not provide the Government with the right to grant sublicenses to a foreign government pursuant to any treaty or agreement in subject inventions to which the contractor has been granted greater or foreign rights. The head of the agency or designee may determine at the time of contracting that it would be in the national interest to acquire this right, or the head of the agency may reserve the right to make this determination after the invention is identified When such a determination is made or such right is reserved, the Patent Rights clause should be amended as set forth in $9-9.107-5(d). (d) License rights (upon request) to the contractor. contractor Paragraph (c) of the Patent Rights (long form) clause of §9-9. 107-5(a) specifies the license rights retained by the in inventions made in the course of or under the contract. priate circumstances, such as in contracts for the operation of Government-owned facilities or special long term, cost-reimbursement Government-funded research, development, or demonstration work, this provision shall be modified to provide a revocable, nonexclusive, royalty-free license in inventions only upon request by the contractor for reservation of such license. In such situations, the paragraph |