under ERDA's published licensing regulations (10 CFR 781), and only to the extent an exclusive license is actually granted. This license shall not be revoked in that field of use and/or the geographical areas in which the contractor, or its sublicensee, has brought the invention to the point of practical application and continues to make the benefits of the invention reasonably accessible to the public, or is expected to do so withn a reasonable time.

(3) Revocation procedures.

Before modification or revocation of the license or sublicense, pursuant to paragarph (c)(2) of this clause, ERDA shall furnish the contractor a written notice of its intention to modify or revoke the license and any sublicense thereunder, and the contractor shall be allowed 30 days, or such longer periods as may be authorized by the patent counsel (with notification by patent counsel to the contracting officer) for good cause shown in writing by the contractor, after such notice to show cause why the license or any sublicense should not be modified or revoked. The contractor shall have the right to appeal, in accordance with 10 CFR 718, any decision concerning the modification or revocation of his license or any sublicense.

(4) Foreign patent rights.

Upon written request to patent counsel (with notification by patent counsel to the contracting officer), and subject to ERDA security regulations and requirements, there shall be reserved to the contractor, or the employee inventor with authorization of the contractor, the patent rights a subject invention in any foreign country where the Government has elected not to secure such rights provided:

to

(i) The recipient of such rights, when specifically requested by ERDA and three years after issuance of a foreign patent disclosing said subject invention, shall furnish ERDA a report setting forth:

(A) The commercial use that is being made, or is intended to be made, of said invention, and

(B) The steps taken to bring the invention to the point of practical application or to make the invention available for licensing.

(ii) The Government shall retain at least an irrevocable, nonexclusive, paid-up license to make, use,

ป

and sell the invention throughout the work by or on behalf
of the Government (including any Government agency) and
States and domestic municipal governments, unless the
head of the agency or designee determines that it would
not be in the public interest to acquire the license
for the States and domestic municipal governments.

(iii) Subject to the rights granted in (c)(1), (2)

and (3) of this clause, the head of the agency or designee shall have the right to terminate the foreign patent rights granted in this paragraph (c)(4) in whole or in part unless the recipient of such rights demonstrates to the satisfaction of the head of the agency or designee that effective steps necessary to accomplish substantial utilization of the invention have been taken or within a reasonable time will be taken.

(iv) Subject to the rights granted in (c)(1), (2)

and (3) of this clause, the head of the agency or designee shall have the right, commencing four years after foreign patent rights are accorded under this paragraph (c)(4), to require the granting of a nonexclusive or partially exclusive license to a responsible applicant or applicants, upon terms reasonable under the circumstances and in appropriate circumstances to terminate said foreign patent rights in whole or in part, following a hearing upon notice thereof to the public, upon a petition by an interested person justifying such hearing:

(A) If the head of the agency or designee determines, upon review of such material as he deems relevant, and after the recipient of such rights or other interested person, has had the opportunity to provide such relevant and material information as the head of the agency or designee may require, that such foreign patent rights have tended substantially to lessen competition or to result in undue market concentration in any section of the United States in any line of commerce to which the technology relates;

or

(B) Unless the recipient of such rights demonstrates to the satisfaction of the head of the agency or designee at such hearing that the recipient has taken effective steps, or within a reasonable time thereafter is expected to take such steps, necessary to accomplish substantial utilization of the invention.

(d) Filing of patent applications.

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(1) With respect to each subject invention in which the contractor or the inventor requests foreign patent rights in accordance with paragraph (c) (4) of this clause, a request may also be made for the right to file and prosecute the U.S. application on behalf of the U.S. Government. If such request is granted, the contractor or inventor shall file a domestic patent application on the invention within 6 months after the request for foreign patent rights is granted, or such longer period of time as may be approved by the patent counsel for good cause shown in writing by the requestor. With respect to the invention, the requestor shall promptly notify the patent counsel (with notification by patent counsel to the contracting officer) of any decision not to file an application.

(2) For each subject invention on which a domestic patent application is filed by the contractor or inventor, the contractor or inventor shall:

(i) Within 2 months after the filing or within 2 months after submission of the invention disclosure if the patent application is filed by the contractor or inventor, the contractor or inventor shall:

(ii) Within 6 months after filing the application or within 6 months after submitting the invention disclosure if the application has been filed previously, deliver to the patent counsel a duly executed and approved assignment to the Government, on a form specified by the Government;

(iii) Provide the patent counsel with the original patent grant promptly after a patent is issued on the application; and

(iv) Not less than 30 days before the expiration of the response period for any action required by the Patent and Trademark Office, notify the patent counsel of any decision not to continue prosecution of the application.

(3) With respect to each subject invention in which the contractor or inventor has requested foreign patent rights, the contractor or inventor shall file a patent application on the invention in each foreign country in which such request is granted in accordance with the applicable statutes and regulations and within one of the following periods:

(i) Eight months from the date of filing a corresponding United States application, or if such an application

is not filed, six months from the date the request was granted.

(ii) Six months from the date a license is granted by the Commissioner of Patents and Trademarks to file the foreign patent application where such filing has been prohibited by security reasons; or

(iii) Such longer periods as may be approved by the patent counsel for good cause shown in writing by the contractor or inventor.

(4) Subject to the license specified in paragraphs (c)(1), (2) and (3) of this clause, the contractor or inventor agrees to convey to the Government, upon request, the entire right, title, and interest in any foreign country in which the contractor or inventor fails to have a patent application filed in accordance with paragraph (d)(3) of this clause, or decides not to continue prosecution or to pay any maintenance fees covering the invention. To avoid forfeiture of the patent application or patent the contractor or inventor shall, not less than 60 days before the expiration period for any action required by any patent office, notify the patent counsel of such failure or decision, and deliver to the patent counsel the executed instruments necessary for the conveyance specified in this paragraph.

(e) Invention identification, disclosures, and reports.

(1) The contractor shall establish and maintain active and effective procedures to ensure that subject inventions are promptly identified and timely disclosed. These procedures shall include the maintenance of laboratory notebooks or equivalent records and other records that are reasonably necessary to document the conception and/or the first actual reduction to practice of subject inventions, and records which show that the procedures for identifying and disclosing the inventions are followed. Upon request, the contractor shall furnish the contracting officer a description of these procedures so that he may evaluate and determine their effectiveness.

(2) The contractor shall furnish the patent counsel (with notification by patent counsel to the contracting officer) on an ERDA-approved form:

(i) A written report containing full and complete

contractor.

technical information concerning each subject invention within 6 months after conception or first actual reduction to practice whichever occurs first in the course of or under this contract, but in any event prior to any on sale, public use, or public disclosure of such invention known to the The report shall identify the contract and inventor and shall be sufficiently complete in technical detail and appropriately illustrated by sketch or diagram to convey to one skilled in the art to which the invention pertains a clear understanding of the nature, purpose, operation, and to the extent known, the physical, chemical, biological, or electrical characteristics of the invention. The report should also include any request for foreign patent rights under paragraph (c)(4) of this clause and any request to file a domestic patent application made within the period set forth in pararaph (b)(2) of this clause. When an invention is reported under this paragraph (e)(2)(i), it shall be presumed to have been conceived or first actually reduced to practice in the course of or under the contract unless the contractor contends it was not so made in accordance with paragraph (g)(2)(ii) of this clause.

(ii) Upon request, but not more than annually, interim reports on an ERDA-approved form listing subject inventions and subcontracts award containing a Patent Rights clause for that period and certifying that:

(A) The contractor's procedures for identifying and disclosing subject inventions as required by this paragraph (e) have been followed throughout the reporting period;

(B) All subject inventions have been disclosed or that there are no such inventions;

(c) All subcontracts containing a Patent Rights clause have been reported or that no such subcon tracts have been awarded; and

(iii) A final report on an ERDA-approved form within three months after completion of the contract work listing all subject inventions and all subcontracts awarded containing a Patent Rights clause and certifying that:

(A) All subject inventions have been disclosed or

that there were no such inventions; and

(B) All subcontracts containing a Patent Rights