(E) number of nonexclusive licenses, other than those to sponsoring Government agencies, issued during each of the past 10 years;

years and

(F) gross royalty income during each of the past 10

(G) a general description of royalties charged, in

cluding 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 §9-9.109-6(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 §9-9.109-6(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 $9-9.109-6(c) unless it is indicated that under one or more of the criteria the presumption is inapplicable.

(i) Terms and conditions of waivers.

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

(iii) 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 $9-9.107-5(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

after submission of the invention disclosure if the patent application previously has been filed, deliver to patent counsel a copy of the application as filed including the filing date and serial number;

(B) include the following statement in the second paragraph of the specification of the application and any patents issued on a subject invention, "The Government has rights in this invention pursuant to Contract No. (or Grant No. ) awarded by the U.S. Energy Research and Development Administration.";

(c) 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 instrument fully confirmatory of all rights to which the Government is entitled, and provide ERDA an irrevocable power to inspect and make copies of the patent application filed;

(D) provide the patent counsel with a copy of the patent within 2 months after a patent is issued on the application; and

(E) 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 and deliver to the patent counsel executed instruments granting the Government a power of attorney.

(iii) For each invention in which the contractor initially elects pursuant to (i)(1) of this section not to retain the rights waived, the contractor shall inform the patent counsel promptly in writing of the date and identity of any on sale, public use, or public disclosure of the invention which may constitute a statutory bar under 35 U.S.C. 102, which was authorized by or known to the contractor, or any contemplated action of this nature.

(6)(i) With respect to each invention in which the contractor elects pursuant to (i)(1) of this section to retain the rights waived in a foreign country, or in which the contractor or inventor has obtained a waiver of foreign rights on an identified invention, the contractor or inventor shall have a patent application filed on the invention in that country, in accordance with applicable statutes and regulations, and within one of the following periods:

(A) eight months from the date of a corresponding United States application filed by the contractor or inventor, or if such an application is not filed, 6 months from the date the invention is submitted in a disclosure pursuant to paragraph (e)(2)(i) of the clause of $9-9.107-5(a);

(B) six months from the date a license is granted by

the Commissioner of Patents and Trademarks to file foreign applications where such filing has been prohibited by security reasons; or

counsel.

(c) such longer period as may be approved by the patent

(ii) The contractor or inventor shall notify the patent counsel promptly of each foreign application filed and upon written request shall furnish an English version of the application without additional compensation.

(7) The contractor or inventor shall, three years after a waiver is effective as to an invention, and at three-year intervals thereafter, and when specifically requested by the patent counsel, furnish patent counsel a report setting forth:

(i) the commercial use that is being made, or is intended

to be made, of said invention, and

(ii) the steps taken to bring the invention to the point of practical application or to make the invention available for licensing;

(8) The Government's retention of at least an irrevocable, nonexclusive, paid-up license to make, use, and sell the invention throughout the world 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.

(9) The right in the head of the agency or designee to require the granting of a nonexclusive, exclusive, or partially exclusive license to a responsible applicant or applicants, upon terms reasonable under the circumstances:

(i) to the extent that the invention is required for public use by Governmental regulations;

(ii) as may be necessary to fulfill health, safety or energy needs; or

(iii) or such other purposes as may be stipulated in the applicable agreement.

(10) The right of the head of the agency or designee to terminate such waiver in whole or in part unless the recipient of such