The contractor, or the employee-inventor with authorization of the contractor, may request greater rights than the nonexclusive license and the foreign patent rights provided in paragraph (d) of this clause on identified inventions in accordance with the procedure and criteria of 41 CFR $9-9.109-6. A request for a determination of whether the contractor or the employee-inventor is entitled to retain such greater rights must be submitted to the patent counsel (with notification by patent counsel to the contracting officer) at the time of the first disclosure of the invention pursuant to paragraph (b)(1) of this clause or not later than 9 months after conception or first actual reduction to practice, whichever occurs first, or such longer period as many be authorized by the patent counsel (with notification by patent counsel to the contracting officer) for good cause shown in writing by the contractor. The information to be submitted for a greater rights determination is specified in 41 CFR §9-9.109-6(e).

(d) Minimum rights to the contractor.

The contractor reserves a revocable, nonexclusive, paid-up license in each patent application filed in any country on a subject invention and any resulting patent in which the Government acquires title. Revocation shall be in accordance with the procedure of paragraphs (c)(2) and (3) of the clause in 41 CFR §9-9.107-5(a). The contractor also has the right to request foreign rights in accordance with the procedures of paragarphs (c)(4) of the clause in 41 CFR $9-9.107-5(a).

(e) Employee and subcontractor agreements.

Unless otherwise authorized in writing by the contracting officer, the contractor shall:

(1) Obtain patent agreements to effectuate the provisions of the Patent Rights clause from all persons who perform any part of the work under this contract except nontechnical personnel, such as clerical employees and manual laborers.

(2) Unless otherwise authorized or directed by the contracting officer, the contractor shall include the Patent Rights clause of 41 CFR §9-9.107-5(a) or 41 CFR §9-9.107-6, as appropriate, mmodified to identify the parties in any

subcontract hereunder having as a purpose the conduct of research development or demonstration work; and

(3) Promptly notify the contracting officer in writing upon the award of any subcontract containing a Patent Rights clause by identifying the subcontractor, the work to be performed under the subcontract, and the dates of award and estimated completion. Upon the request of the contracting officer the contractor shall furnish a copy of the subcontract to such requester.

(f) Atomic energy.

(1) No claim for pecuniary award or compensation under the provisions of the Atomic Energy Act of 1954, as amended, shall be asserted by the contractor or its employees with respect to any inventions or discovery made or conceived in the course of or under this contract.

(2) Except as otherwise authorized in writing by the contracting officer, the contractor will obtain patent agreements to effectuate the provisions of paragraph (f)(1) of the clause from all persons who perform any part of the work under this contract, except nontechnical personnel, such as clerical employees and manual laborers.

(g) Publication.

In order that information concerning scientific or technical developments conceived or first actually reduced to practice in the course of or under the contract is not prematurely published so as to adversely affect patent interest of ERDA, the contractor agrees to submit to the patent counsel for patent review a copy of each paper 60 days prior to its intended publication date. The contractor may publish such information after expiration of a 60-day period following such submission or prior thereto if specifically approved by patent counsel, unless the contractor is informed that in order to protect patentable subject matter, publication must be further delayed.

$9-9.107-7 Foreign contracts.

The clauses authorized for contracts in §9-9.107-5(a) and §99.107-6 may be modified by the contracting officer in consultation with patent counsel to meet the requirements peculiar to foreign procurement.

It is important that the Government and the contractor know and exercise their rights in inventions conceived or first actually reduced to practice in the course of or under Government contracts in order to ensure their expeditious availability to the public, to enable the Government, the contractor, and the public to avoid unnecessary payment of royalties and to defend themselves against claims and suits for patent infringement. To attain these ends, contracts having Patent Rights clauses should be so administered that:

(a) Inventions are identified, disclosed, and reported as required by the contract claims;

(b) The rights of the Government in such inventions are established;

(c) When appropriate, patent applications are timely filed and prosecuted by the contractor, the inventor, or by the Government as appropriate;

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

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

$9-9.109-2 Follow-up by contractor.

(a) The Patent Rights clause requires contractors to 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 Governments'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 ERDA 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.

(b) A qualified representative of the contractor shall furnish to the patent counsel (with notification by patent counsel to the contracting officer) interim reports upon request, and, upon completion of the contract work, a final report setting forth:

(1) A list of all subject inventions made during the reporting period;

(2) A certification that all subject inventions have been disclosed or that there were no such inventions, and that the contractor's procedures for identifying and disclosing inventions have been followed throughout the period;

(3) A list of all subcontracts entered into during the reporting period which contain a Patent Rights clause, together with copies of such subcontracts (if not earlier furnished to ERDA), or a statement that there were no such subcontracts.

(c) Ordinarily, inventions and discoveries will be reported on a form designated by patent counsel. Reporting of inventions promptly and before the completion of the work under the respective contracts will aid patent clearance. Submission of annual interim reports where contracts cover an extended period, will also facilitate the disposition of patent matters and expedite the issuance of final patent clearance.

$9-9.109-3 Follow-up by Government.

(a) With respect to each contract, subcontract, or other agreement under their jurisdiction, the heads of procuring activities are responsible:

(1) For assuring compliance with the provisions of Part 9-9 in executing or approving any contracts, subcontracts, other agreements, understandings, or other arrangements, or any supplements thereto. The patent counsel assisting their activity should be consulted to ensure that only authorized departure is made from the requirements set forth in these regulations and that all substantive and procedural rights required by section 152 of the Atomic Energy Act of 1954, as amended, or section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974, are obtained;

(2) For transmitting the information requested on the Patent Information Sheet (Form ERDA 242) to the Assistant General Counsel for Patents;

(3) For reviewing, in consultation with the contractor, subcontractor, or vendor, arrangements for obtaining adequate patent agreements from employees and others performing work under any contract, subcontract, or other agreements containing patent provisions in favor of the Government. (The form of such patent agreement actually in use or proposed for use shall be forwarded for approval to the patent counsel assisting the procuring activity.)

(4) For forwarding a notice of completion or termination of the work and a request for patent clearance to the Assistant General Counsel for Patents for each contract, subcontract, or other agreement containing patent provisions giving rise to rights in the Government;

and

(5) For withholding payments due to contractors in accordance with paragraph (i) of the Patent Rights clause of §9-9.107-5(a) until, in the case of interim reports, a determination has been made in consultation with patent counsel that existing deficiencies have been corrected or that delivery of all reports, disclosures, and other information have been made, or, in the case of final reports, receipt of written patent clearance certification from the Assistant General Counsel for Patents.

(b) The Assistant General Counsel for Patents, upon receipt of the ERDA-approved Patent Information Sheet, will assign the patent responsibility and notify the person who transmits the information sheet of the patent counsel assigned to conduct the patent surveillance of the reported contract, subcontract, or other agreement. Upon receipt of the notice of completion or termination as provided in paragraph (a)(4) of this section, a notice of patent clearance will be issued by the Assistant General Counsel for Patents when there has been to his best knowledge and belief compliance with the patent provisions.

(c) The patent counsel assigned to assist the procuring activity will assist contracting officers in selecting and negotiating patent provisions, and in the case of field procuring activities, will coordinate such assistance with the Chief Counsel in accordance with established local procedures. Patent counsel will generally submit Patent Information sheets and otherwise assist heads of procuring activities, contractors, contracting officers, subcontractors and vendors in: reporting of inventions and discoveries; reviewing and providing patent clearance prior to publication or release of reports and proposed technical articles and prior to public release or disclosure of information regarding scientific and technical developments made in the course of or under the contract; handling claims for patent and copyright infringement; the preparation of certificates to initiate patent clearance; and the handling of other patent matters.

(d) Patent application filing and determination of
rights to inventions and discoveries.

The Assistant General Counsel for Patents or designee shall:

(1) make the determination that inventions reported under subparagraph (e)(2)(i) of the Patent Rights clause are Subject Inventions under the contract;