(6) The statement shall be forwarded to the Assistant General Counsel for Patents to serve as a recommended basis for the waiver determination. The Assistant General Counsel for Patents will also obtain comments from the appropriate ERDA program organization to assist the head of the agency or designee in the waiver determination. In situations where time does not permit a delay in contract negotiations for the preparation and mailing of a full written statement, field patent counsel may submit a recommendation on the waiver verbally to the Assistant General Counsel for Patents and request a verbal determination from the head of the agency or designee. action shall be promptly confirmed in writing.

Such

(7) In making waiver determinations, the head of the agency or designee shall objectively review all requests for waiver in view of the objectives and considerations set forth in this §9-9.109-6. If this determination and the rationale therefor is not accurately reflected in the recommended statement of considerations, a new statement shall be prepared.

(8) Where the request for advance waiver has not been approved prior to the effective date of the contract and the terms and conditions of the waiver have thus not been made a part of the contract, the contracting officer shall promptly notify the requestor by letter of the determination of the head of the agency or designee, and the basis therefor. If the advance waiver is approved, the letter shall state the scope, terms, and conditions of such waiver. Where the terms and conditions of an approved advance waiver have not been made a part of the contract, the letter shall inform the requestor that the advance waiver shall be effective (a) as of the effective date of the contract for an advance waiver of inventions identified, i.e., conceived prior to the effective date of the contract, or (b) as of the date the invention is reported with an election by the contractor to retain rights therein, i.e., for an invention conceived or first actually reduced to practice after the effective date of the contract; provided a copy of the letter is signed and returned to the contracting officer by the requestor acknowledging the acceptance of the scope, terms and conditions of the advance waiver. After the acceptance by the contractor of an advance waiver, the contracting officer shall cause a unilateral no-cost modification to be made to the contract incorporating the terms and conditions of the waiver in lieu of previous patent provisions. Whenever a requested determination has been denied, the request or may, within thirty days, request reconsideration. Such a request shall include any additional facts and rationale not previously submitted which support the request. Requests for reconsideration shall be submitted and processed in accordance with the procedures set forth in paragraph (d) of this section.

(e) Content of waiver requests.

(1) All requests for waiver shall include the following information:

(i) the requestor's identification, business address, and, if represented by counsel, the counsel's name and address;

(ii) an identification of the pertinent contract or proposed contract and a copy of the contract statement of work or a non-proprietary statement which fully describes the proposed work to be performed;

(iii) the nature and extent of waiver requested;

(iv) a full and detailed statement of facts, to the extent known by or available to the requestor, directed to each of the considerations set forth in paragraph (b) or (c) of this section, as applicable, and a statement applying such facts and considerations to the policies set forth in paragraph (a) of this section. It is important that this submission be tailored to the unique aspects of each request for waiver, and be as complete as feasible; and

(v) the signature of the requestor or authorized represen

tative with the following statement:

(2)

The facts set forth in this request for waiver
are within the knowledge of the requestor and
are submitted with the intention that the head
of the agency or designee rely on them in reach-
ing the waiver determination.

Requests for waiver identified inventions shall, in addi

tion to items (1)(i)(v) above, include:

(i) the full names of all inventors;

(ii) a statement of whether a patent application has been filed on the invention, together with a copy of such application if filed, or if not filed, a complete description of the inventor;

(iii) if a patent application has not been filed, any information which may indicate a potential statutory bar to the patenting of the invention under 35 USC 102 or a statement that no such bar is known to exist; and

(iv) where the requestor is the inventor, written authorization from the applicable contractor or subcontractor permitting the inventor to request a waiver.

(3) Subject to ERDA regulations, requirements, and restrictions on the treatment of proprietary and classified information, all material submitted in requests for waiver or in support thereof will be made available to the public after a determination on the waiver request has been made, regardless of whether a waiver is granted. Accordingly, requests for waiver should not contain information or data that the requestor is not willing to have made public. If proprietary or classified information is needed to make the waiver determination, such information shall not be submitted unless specifically requested by the patent counsel.

(f) Record of waiver determinations.

The Assistant General Counsel for Patents shall maintain and periodically update a publicly available record of waiver determinations.

(g) Waiver situations and types of waivers.

(1) The various factual situations which are appropriate for waivers cannot be categorized precisely inasmuch as the appropriateness of a waiver will depend upon the manner in which the considerations set forth in paragraph (b) or paragraph (c) of this section relate to the facts and circumstances surrounding the particular contracting situation or the particular invention in order to best achieve the objectives set forth in paragraph (a) of this section. However, some examples where waivers might be apropriate are in the following:

(i) cost sharing contracts;

(ii)

situations in which ERDA is providing increased funding to a specific ongoing privately sponsored research, development, or demonstration project;

(iii) situations involving the private use of Government facilities and the contractor is funding all or a part of such costs;

are

(iv) situations in which the equities of the contractor so substantial in relation of that of the Government that the

waiver is necessary to obtain the participation of the contractor;

and

(v) situations involving contracts with small business

concerning their privately developed technology.

(2) As stated in paragraph (a) of this section, waivers may be granted as to all or any part of the rights of the United States to

an invention except for certain rights as set forth in paragraph (i) in this section. Accordingly, the waiver of all patent rights that are inherent to an invention, rather than part of the rights, will not necessarily be appropriate. The scope of the waiver will depend upon the relationship of the contractual situation or identified invention to the considerations set forth in paragraph (b) or (c) in order to best achieve the objectives set forth in paragraph (a) of this section. For examples, waivers may be restricted to a particular field of use in which the contractor has substantial equities or a commercial position, or restricted to those uses that are not the primary object of the contract effort. Waivers may also be limited to particular geographical locations, may be made effective only for a specified duration of time, or may require the contractor to license others at reduced royalties in consideration of the Government's contribution to the research, development of demonstration effort.

(3) In advance waivers of identified inventions, the invention will be deemed to be a subject invention and the waiver will be considered as being effective as of the effective date of the contract. This will be true regardless of whether the identified invention had been first actually reduced to practice prior to the time of contracting or would be reduced to practice under the contract. A purpose of such waivers is to clarify and definitize the rights of the parties to such inventions when the facts surrounding the first actual reduction to practice prior to or during the contract are or will be difficult to establish.

(h) Waivers to educational institutions.

(1) Except to the extent that a nonprofit educational institution may be engaged as a contractor operating a Government-owned facility or undertaking other special contracts, the following considerations apply to granting of advance and identified waivers to educational institutions having an approved technology transfer program capabiity. To obtain approval of its technology transfer program, educational institutions shall forward their requests to ERDA provided in paragraph (2) below.

as

(2) A nonprofit educational institution desiring to obtain approval of its technology transfer program and accepability shall provide the agency with the following information:

cluding:

(i) general information concerning the institution, in

(A) a copy of its articles of incorporation;

(B) a statement of the institutions's purpose and aims;

and

90-136 - 77 - 21

tion's funds;

(c) a statement indicating the source of the institu

(ii) a copy of the institution's established patent policy, together with the date and manner of its adoption;

(iii) the name, title, address, and telephone number of the officer responsible for administration of patent and invention matters and a description of staffing in this area, including all offices which contribute to the institution's patent management capabilities;

(iv) a description of the institution's procedures for identifying and reporting inventions and a description of the procedures for evaluation of such inventions for inclusion in the institution's promotional program;

(v) a copy of the agreement signed by employees engaged in research and development, indicating their obligation in regard to inventions conceived or first actually reduced to practice in the course of their assigned duties;

(vi) a copy of the invention report form or outlines utilized for preparation of invention reports;

(vii) a statement of whether the institution has an agreement with any patent management organizations or consultants and a copy of any such agreements;

(viii) a description of the plans and intentions of the institution to bring to the marketplace inventions to which it retains title, including a description of the efforts typically undertaken by the institution to license its inventions.

(ix) a

description of the institution's past patent application and patent licensing activities, including the following: (A) number of inventions reported to the institution

(D) number of exclusive licenses issued during each of the past 10 years;