(2)

determine whether and where patent protection will be obtained on inventions;

(3)

represent ERDA before domestic and foreign patent offices;

(4) accept assignments and instruments confirmatory of the Government's rights to inventions; and

(5)

represent ERDA in patent and other intellectual property matters including those under these regulations.

$9-9.109-4 Remedies.

If a contractor operating under a Patent Rights clause fails to establish, maintain, or follow effective procedures for identifying and disclosing inventions as required by the Patent rights clause or fails to correct any deficiency after notice thereof, the contracting officer may require the contractor to make available for examination books, records, and documents relating to inventions in the same field of technology as the contract to enable an agency determination of whether there are such inventions, and may invoke the withholding of payments provision if a contractor fails to disclose an invention deemed by ERDA to be a subject invention.

$9-9.109-5 Conveyance of invention rights acquired by the Government.

Whenever the Government acquires the entire rights, title, and interest in an invention pursuant to a contract or by operation of law, assignments shall be obtained from the inventor to the Government with the consent of the contractors, to perfect or confirm the Government's rights. The form of conveyance of title from the inventor to the contractor must be legally sufficient to convey the rights the contractor as required to convey to the Government.

$9-9.109-6 Waivers

(a) General.

The head of the agency or designee may waive all or any part of the rights of the United States (other than certain rights prescribed in paragraph (i) of this section) with respect to any invention or class of inventions made or which may be made by any person or class of persons in the course of or under any contract of ERDA, if it is determined that the interests of the United States and the general public as set forth in the Atomic Energy Act of 1954, as amended (42 USC 2182), and the Federal Nonnuclear Energy Reserach and Development Act of 1974 (42 USC 5908), will best be served by such waivers. In making such determinations, the head of the agency or designee shall have the following objectives:

(1) making the benefits of the energy reserach, development, and demonstration program widely available to the public in the shortest practicable time;

(2) promoting the commercial utilization of such inventions;

(3) encouraging participation by private persons in ERDA's energy research, development, and demonstration program; and

(4) fostering competition and preventing undue market concentration or the creation or maintenance of other situations inconsistent with the antitrust laws.

If it is not possible to attain each of these objectives immediately and simultaneously for any one waiver determination, the head of the agency or designee will seek to reconcile these objectives in light of the overall purposes of the ERDA patent policy which is governed by Section 152 of the Atomic Energy Act of 1954, as amended, and Section 9 of the Federal Nonnuclear Energy Research and Development Act of 1974.

Over time, however, the application of this waiver policy is expected to attain each of these objectives. In addition to the patent policies provided by legislation, and where not inconsistent therewith, the waiver determinations will also be guided by the revised Presidential Memorandum and Statement of Government Patent Policy issued August 23, 1971 (36 F.R. 16887-16892).

(b) Advance waiver.

In determining whether a waiver to the contractor at the time of contracting will best serve the interests of the United States and the general public, the head of the agency or designee shall, as minimum specifically include as considerations the following:

(1) the extent to which the participation of the contractor will expedite the attainment of the purposes of the program;

(2) the extent to which the participation of the contractor will expedite the attainment of the purposes of the program;

(3) the extent to which the work to be performed under the contract is useful in the production or utilization of special nuclear material or atomic energy;

(4) the extent to which the contractor's commercial position may expedite utilization of the research, development and demonstration program results;

(5) the extent to which the Government has contributed to the field of technology to be funded under the contract;

(6) the purpose and nature of the contract, including the intended use of the results development thereunder;

(7) the extent to which the contractor has made or will make substantial investment of financial resources or technology developed at the contractor's private expense which will directly benefit the work to be performed under the contract;

(8) the extent to which the field of technology to be funded under the contract has been developed at the contractor's private

expense;

(9) the extent to which the Government intends to further develop to the point of commercial utilization the results of the contract effort;

(10) the extent to which the contract objectives are concerned with the public health, public safety, or public welfare; (11) the likely effect of the waiver on competition and market concentration;

(12) in the case of a nonprofit educational institution, the extent to which such institution has a technology transfer capability and program approved by the head of the agency or designee as being consistent with the applicable policies of this section; and

(13) the small business status of the contractor.

(c) Waiver of identified inventions.

In determining whether a waiver to the contractor or inventor of rights to an identified invention will best serve the interests of the United States and the general public, the head of the agency or designee shall, as a minimum, specifically include as considerations the following:

(1) the extent to which such waiver is a reasonable and necessary incentive to call forth private risk capital for the development and commercialization of the invention;

(2) the extent to which the plans, intentions, and ability of the contractor or inventor will obtain expeditious commercialization of such invention;

(3) the extent to which the invention is useful in the production or utilization of special nuclear material or atomic energy; (4) the extent to which the Government has contributed to the field of technology of the invention;

(5) the purpose and nature of the invention, including the anticipated use thereof;

(6) the extent to which the contractor has made or will make substantial investment of financial resources or technology developed at the contractor's private expense which will directly benefit the commercialization of the inventor;

(7) the extent to which the field of technology of the invention has been developed at the contractor's expense;

(8) the extent to which Government intends to further develop the invention to the point of commercial utilization;

(9)

the extent to which the invention is concerned with the public health, public safety, or public welfare;

(10) the likely effect of the waiver on competition and market concentration;

(11) in the case of a nonprofit educational institution, the extent to which such institution has a technology transfer capability and program approved by the head of the agency or designee as being consistent with the applicable policies of this section; and

(d)

(12) the small business status of the contractor.

Procedures

(1) All waiver determinations shall be initiated by a written request. Such requests may be submitted by existing or potential contractors in the case of requests for an advance waiver and by contractors or employee-inventors in the case of requests for waiver for identified inventions. A request for an advance waiver may also be made for an identified invention which has already been conceived and which reasonably may be first actually reduced to practice in the course of or under an ERDA contract. Such waiver requests must include a copy of the patent or patent application covering the identified invention.

(2)

A request for an advance waiver shall be submitted to the contracting officer or to contractors for their subcontractors at any

time prior to execution of the contract or within thirty days thereafter, but should normally be submitted as part of the contract proposal. Advance waivers may also be requested where the purpose or scope of work of an existing contract is to be substantially altered. When advance waivers are granted, the rights set forth in paragraphs (b), (c) and (d) of the clause of $9-9.107-5(a) should be modified to conform to the waiver granted.

(3) A request for waiver (other than advance waivers) for an identified invention shall be submitted to the patent counsel (with notification by patent counsel to the contracting officer) at the time the invention is reported to ERDA, or not later than nine months after conception or first actual reduction to practice, whichever occurs first, or such longer period 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 or in

ventor.

(4) All requests for waiver received by ERDA or its contractors will be forwarded promptly to the patent counsel assisting the procuring activity, together with any reference or supporting documents provided by the requestor and any documents or comments provided by the staff of the activity. If the request for waiver appears to contain insufficient information, the patent counsel may seek additional information from the requestor to supplement the request and may also seek additional information from other sources. The patent counsel will thoroughly analyze the request in view of each of the objectives and considerations set forth in this §9-9.109-6 and shall also consider the overall rights obtained by the Government in the patent, coyright, and data clauses of the contract. Where it appears that a lesser part of the rights of the United States than requested would be more appropriate in view of the policies set forth in this $9-9.109-6, the patent counsel should attempt to negotiate a compromise acceptable to both the requestor and ERDA.

(5) The patent counsel will prepare and recommend a statement of considerations setting forth the rationale for either accepting or rejecting the waiver request. While the statement need not make specific findings as to each and every consideration of paragraph (b) or (c) of ths section, it will cover those that raise significant issues and those that are decisive, and it will explain the basis for the recommmended determination. There may be occasions when the application of the various considerations in (b) or (c) of this section to a particular case could cause conflicting results, and in those instances the differences will be reconciled giving due regard to the overall policies set forth in this $9-9.109-6. Field patent counsel will coordinate actions on advance waivers with the Chief Counsel of the field procuring activity concerned as required by local proce

dures.