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provisions set forth in paragraph (1) of the clause in $9-9.107-5(a) and paragraph (f) of the clause in 89-9.107-6. 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 89-9.107-5 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 89-9.107-5(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 99-9.107-6, 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 designet 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 reservi 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.
Paragraph (c) of the Patent Rights (long form) clause of 89-9. 107-5(a) specifies the license rights retained by the contractor in inventions made in the course of or under the contract. In appropriate 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
set forth in 89-9.107-5(e) shall be substituted for paragraph (c)(1) of the Patent Rights (long form) clause. However, in programs of the type discussed in 89-9.107-4(a)(7), or in certain contracts or subcontracts involving access to Restricted Data, royalty free licenses shall not necessarily be granted with respect to inventions or discoveries resulting from the contractor's or subcontractor's access to Restricted Data.
Paragraph (c)(1) of the Patent Rights (long form) clause specifies that the license rights retained by the contractor in such inventions are revocable. In special circumstances the license may be irrevocable, in which case the paragraph (c)(1) set forth in $9-9.107-5(f) shall be substituted for paragraphs (c)(1), (c)(2) and (c)(3) of the Patent Rights (long form) clause. Because granting irrevocable licenses may interfere with ERDA's licensing program which is intended to promote the commercial utilization of inventions resulting from its research, development, or demonstration programs, contractors desiring irrevocable licenses shall submit a written request with a justification to the contracting officer. The contracting officer shall refer such request 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 approval by the head of the agency or designee.
(f) Contractor sublicensing.
The rights of a contractor having a license as set forth in paragraphs (d) and (e) above to grant a revocable license to one or more sublicenses may be considered appropriate by the head of the agency or designee in certain circumstances, such as, for example, where the contractor is cost sharing; where the contractor's control or involvement in the technology which is the subject of the contract is substantial; where the reservation of licensing rights in the contractor would best promote commercialization or utilization of the technology; or where substantial segments of the user population already have licenses or would othewise be licensed. In such situations, the paragraph in $9-9.107-5(g)(1) may be substituted for paragraph (c)(1) of $9-9.107-5(a), or the paragraphs in $9-9.107-5(g)(2) may be substituted for paragraphs (c)(1), (c)(2), and (c)(3) of $9-9.107-5(a), as appropriate.
(8) Facilities license.
Whenever a contract has as a purpose the design, construction, or operation of a Government-owned research, development, demonstration or production facility, 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 a contract. Accordingly, the paragraph $9-9.107-5(h) shall be used in all such contracts in addition to the provisions of the "long form" Patent Rights clause. .
(1) The policy expressed in $9-9.107-3 is applicable to prime contracts and to subcontracts regardless of tier. The Patent Rights clause of $9-9.107-5(a) or $9-9.107-6 shall be included in all subcontracts having as a purpose the conduct of research, development, or demonstration work. However, the Patent Rights clause contained in the prime contract is not to be deemed automatically appropriate for subcontracts. For example, it would not be appropriate to the extent that waivers have been granted the prime contractor at the time of contracting. A separate waiver, if any, must be obtained by subcontractors. Further, 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 special contracting situations in which cases the withholding of payment provision may be flowed down to the first tier subcontractor only. Whenever either the prime contractor or a proposed subcontractor considers the inclusion of the Patent Rights clause of 19-9. 107-5(a) or $9-9.107-6 to be inappropriate, or the subcontractor refuses to accept such a clause in its subcontract, the matter shall be referred, prior to award of the subcontract, to the contracting officer for a resolution in accordance with $9-9.107-4(k). Upon such referral, the same considerations and procedures followed in selecting the appropriate Patent Rights clause included in the prime contract shall be used in selecting the subcontractor clause.
(2) Contractors shall not use their ability to award subcontracts as economic leverage to acquire rights for themselves in the inventions resulting from subcontracts, and a waiver granted to a prime contractor is not normally applicable to inventions of subcontractors. However, in appropriate circumstances the prime contractor's waiver may be made applicable to the inventions of any or all subcontractors, such as, for example, where there are pre-existing special research and development arrangements between the prime contractor and subcontractor, or where the prime contractor and subcontractor are partners in a cooperative effort. In addition, in such circumstances the prime contractor may be permitted to acquire nonexclusive licenses in the subcontractor's inventions when a waiver for subcontractor inventions is not applicable.
(i) Record of decisions.
Patent counsel assisting the procuring activity shall record the basis for the following actions: (1) waivers at the time of contracting; (2) waivers granted on identified inventions; (3) determinations that no license need be obtained for States or domestic municipal governments; (4) determinations that the right to sublicense foreign governments should be obtained; and (5) the grant of irrevocable license.
The Patent Rights clauses specify that the Government may duplicate and disclose invention disclosures reported under the contract, although it is not ERDA's practice to publish invention disclosures. Because public disclosure before the filing of a U.S. patent application may create a bar to filing certain foreign applications, the clauses also require that patent approval for release or publication of information relating to the contract work be secured from patent counsel prior to any such release or publication. When the contractor has requested or obtained a waiver, or has advised of. its interest in obtaining certain foreign filing rights, provision is made for ERDA to use its best efforts to withhold release or publication of such information for a specified time period in accordance with paragraph(d)(1) of the clause in 89-9.107-5(a) to permit the timely filing of a U.S. patent application by the contractor.
(k) Negotiations and deviations.
Contracting officers shall contact the field patent counsel assisting their procuring activity or the Assistant General Counsel for Patents, for assistance to the contracting officer in selecting negotiating, or approving appropriate patent, copyright, and data clauses. It should be noted that such clauses may be involved in and affected by the negotiations for a patent waiver. In the case of field procuring activities, Patent counsel will coordinate such review and assistance with the Chief Counsel in accordance with established local procedures. Any intended departures or deviations from the policy, procedures, or the clauses specified in this Part 9-9 which shall constitute a deviation from these regulations or from the Federal Procurement Regulations shall be referred by the contracting officer to the Assistant General Counsel for Patents for review and concurrence prior to obtaining approval in accordance with $9-1.009-2. A deviation amounting to a class deviation to the FPR or the ERDA-PR shall be forwarded through the Assistant General Counsel for Patents to the senior procurement official, Headquarters.