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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 as provided in paragraph (2) below.
(2) A nonprofit educational institution desiring to obtain approval of its technology transfer program and accepability shall provide the agency with the following information:
(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;
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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 during each of the past 10 years;
(B) number of patent applications filed during each of the past 10 years;
(C) number of patents obtained during each of the past
(D) number of exclusive licenses 188ued during each of the past 10 years;
(E) number of nonexclusive licenses, other than those to sponsoring Government agencies, issued during each of the past 10 years;
(F) gross royalty income during each of the past 10
(G) a general description of royalties charged, including minimum and maximum royalty rates;
(x) a list of subsidiary or affiliate institutions which would be covered by an agreement signed by the institution;
(xi) if the institution is a subsidiary or affiliate organization, the name of the other related organization and a description of the relationship;
(xii) the amount of Government support for research and development activities currently being administered by the institution, giving Government agency and breakdown;
(xiii) a statement of the institution's policies with respect to the sharing of royalties with employees; and
(xiv) a description of the uses made of any net income generated by the institution's patent management program.
(3) Before an institution's technology transfer program and capabilities are approved, the institution shall have a technology transfer program which, as a minimum shall include the five criteria listed below. In addition to these criteria, consideration will be given to whether or not other Government agencies have approved an institutional patent agreement with the requesting institution. The five criteria are:
(i) an established patent policy which is consistent with the four policy objectives in 59-9.109-6(a) and is administered on a continuous basis by an officer or organization responsible to the institution;
(ii) agreements with employees requiring them to assign to the instituion or its designee or the Government any invention conceived or first actually reduced to practice by them in the course of or under Government contracts and awards or assurance that such agreements are obtained prior to the assignment of personnel to Government-supported research and development projects;
(iii) procedures for insuring that inventions are promptly identified and timely disclosed to the officer or organization administering the patent policy of the institution;
(iv) procedures for insuring that inventions disclosed to the institution are evaluated for inclusion in the institution's promotional program; and
(v) an active and effective promotional program for the licensing and marketing of inventions.
(4) In considering approval of technology transfer programs and capabilities in connection with requests for advance waivers, such approval shall be considered in the lieu of commercial, manufacturing, and marketing capabilities which normally reside in industry. Such approval shall not be considered sufficient in and or itself as justifying the granting of an advance waiver to an institution. Approval of the grant of an advance waiver must be viewed in light of the considerations of $9-9.109-6(b) above and the four objectives set forth in 59-9.109-6(a) above.
(5) In requests for identified waivers, however, the fact that an institution with an approved technology transfer program and capabilities has identified an invention and has expressed a desire to commercialize it through a request for a waiver therefor shall normally constitute a presumption that the institution has met the criteria of 89-9.109-6(c) unless it is indicated that under one or more of the criteria the presumption is inapplicable.
Each waiver shall contain, as a minimum, provisions covering each of the following:
(1) Advance waivers shall apply only to inventions reported in accordance with paragraph(e) (2) (i) of the clause of $9-9.107-5(a) and with which is included an election as to whether the contractor will retain the rights waived in the invention, and specifying those countries in which .rights will be retained.
(2) Subject to the rights granted in paragraphs (c) (1), (2) and (3) of the Patent Rights clause of $9-9.107-5(a), the contractor or inventor shall agree to convey to the Government, upon request, the entire domestic right, title, and interest in any subject invention when the contractor or inventor as appropriate:
(i) does not elect, in accordance with (i)(1) of this section to retain such rights; or
(ii) fails to have a United States patent application
filed on the invention in accordance with paragraph (i)(5) of this section, or decides not to continue prosecution of such application; or
at any time, no longer desires to retain title.
(3) Subject to the rights granted in paragraph (c)(1), (2) and (3) of the Patent Rights clause of 89-9.107-5(a), the contractor or inventor shall agree to convey to the Government, upon request, the entire right, title and interest in any subject invention in any foreign country if the contractor or inventor, as appropriate:
(i) does not elect, in accordance with paragraph (i)(1) of this section, to retain such rights in the country; or
(ii) fails to have a patent application filed in the country on the invention in accordance with paragraph (i)(6) of this section, or decides not to continue prosecution or to pay any maintenance fees covering the invention. To avoid forfeitures of the patent application or patent, the contractor or inventor shall notify the patent counsel not less than 60 days before the expiration period for any action required by the foreign patent office.
(4) Conveyances requested pursuant to paragraph (i)(2) or (3) of this section shall be made by delivering to the patent counsel duly executed instruments and such other papers as are deemed necessary to vest in the Government the entire right, title, and interest in the invention to enable the Government to apply for and prosecute patent applications covering the invention in this or the foreign country, respectively, or otherwise establish its ownership of the invention.
(5)(i) With respect to each invention in which the contractor has an advance waiver and elects to retain domestic rights pursuant to paragraph (i)(1) of this section, the contractor shall have a domestic patent application filed within 6 months after submission of the invention disclosure pursuant to paragraph (e)(2)(i) of the clause of $9-9.107-5(a) or such longer period as may be approved by the patent counsel for good cause shown in writing by the contractor or inventor. For identified inventions waived to the contractor or inventor, the contractor or inventor shall have a domestic patent application filed within 6 months after the waiver has become effective. With respect to such inventions, the contractor or inventor shall promptly notify the patent counsel of any decision not to file an application.
(ii) for each subject invention on which a patent application is filed by the contractor or inventor, the contractor or inventor shall:
(A) within 2 months after the filing or within 2 months