waiver demonstrates to the satisfaction of the head of the agency or designee that effective steps have been taken, or within a reasonable time thereafter are expected to be taken, necessary to accomplish substantial utilization of the invention.

(11) The right in the head of the agency or designee commencing four years after a waiver is effective as to an invention, to require the granting of a nonexclusive or partially exclusive license to a responsible applicant or applicants, upon terms reasonable under the circumstances, and in appropriate circumstances to terminate the waiver in whole or in part, following a hearing upon notice thereof to the public, upon a petition by an interested person justifying such hearing:

(i) If the head of the agency or designee determines upon review of such material as is relevant, and after the recipient of the waiver or other interested person has had the opportunity to provide such relevant and material information as the head of the agency or designee may require that such waiver has tended substantially to lessen competition or to result in undue market concentration in any section of the United States in any line of commerce to which the technology relates; or

(ii) Unless the recipient of the waiver demonstrates to the satisfaction of the head of the agency or designee at such hearing that has taken effective steps, or within a reasonable time thereafter is expected to take such steps, necessary to accomplish substantial utilization of the invention.

(j) Termination.

(1) Any waiver may be terminated at the discretion of the head of the agency or designee, in whole or in part, if the request for waiver is found to contain false material statements or nondisclosure of material facts, and such were specifically relied upon in reaching the waiver determination.

(2) Any waiver, as applied to particular inventions, may be terminated at the discretion of the head of the agency or designee, in whole or in part, if the requirements set forth in paragraph (i) of this section (terms and conditions of the waivers) have not been fulfilled and such failure is determined by the head of the agency or designee to be material and detrimental to the interests of the United States and the general public.

(3) Prior to terminating a waiver under paragraph (j)(1) or (j)(2) of this section the recipient of the waiver will be given written notice of the intention to terminate the waiver, the extent of

such proposed termination and the reason therefor, and a period of 30 days, or such longer period as the head of the agency or designee shall determine for good cause shown in writing, to show cause why the waiver should not be so terminated.

(4) All terminations of waivers shall be subject to the rights granted in paragraph (c)(1) of the clause of $9-9.107-5(f), and termination shall normally be partial in nature, requiring the waiver recipient to grant nonexclusive or partially nonexclusive licenses to responsible applicants upon terms reasonable under the circumstances.

(k) Effective date.

Waivers shall be effective on the following dates:

(1) For advance waivers of identified inventions, i.e., inventions conceived prior to the effective date of the contract, on the effective date of the contract even though the advance waiver may have been requested after that date;

(2) For identified inventions under advance waivers, i.e., inventions conceived or first actually reduced to practice after the effective date of the contract, on the date the invention is reported with the election to retain rights as to that invention; and

(3) For waivers of identified inventions (other than under an advance waiver), on the date of the letter notifying the requestor that the waiver has been granted.

$9-9.110 Reporting of royalties.

In order that ERDA may be informed regarding royalty payments to be made by a contractor in connection with any procurement, construction, or operation where the amount of the royalty payment is reflected in the contract price, or is to be reimbursed by the Government, the negotiator shall (a) obtain from the offeror information concerning any royalty payments expected to be made in connection with the proposed procurement, construction, or operation, together with the names of the licensors and either the patent numbers involved or such other information as will permit identification of the patents and patent applications as well as the basis on which the royalties are to be paid, or (b) obtain from the offeror a certificate that the contract price includes no amount representing the payment of royalty by the offeror directly to others in connection with the performance of the contract, or (c) insert in the contract the clause set forth below:

or

REPORTING OF ROYALTIES

If this contract is in an amount which exceeds $10,000 and if any royalty payments are directly involved in the contract are reflected in the contract price to the Government, the contractor agrees to report in writing to the patent counsel (with notification by Patent Counsel to the contracting officer) during the performance of this contract and prior to its completion or final settlement the amount of any royalties or other payments paid or to be paid by it directly to others in connection with the performance of this contract together with the names and addresses of licensors to whom such payments are made and either the patent numbers involved or such other information as will permit the identification of the patents or other basis on which the royalties are to be paid. The approval of ERDA of any individual payments or royalties shall not stop the Government at any time from contesting the enforceability, validity or scope of, or title to, any patent under which a royalty or payments are made.

Subpart 9-9.2 Technical Data and Copyrights

$9-9.200 Scope of subpart.

This subpart sets forth ERDA's policy, procedures, and contract clauses with respect to the acquisition and use of technical data and copyrights in contracts or subcontracts entered into, with or for the benefit of the Government.

$9-9.201 Definitions.

For the purpose of this subpart, the following terms have meanings set forth below:

the

(a) "Technical data" me ans recorded information, regardless of form or characteristic, of a scientific or technical nature. It may, for example, document research, experimental, developmental, demonstration, or engineering work or be usable or used to define a design or process or to procure, produce, support, maintain, or operate material. The data may be graphic or pictorial delineations in media such as drawings or photographs, text in specifications or related performance or design type documents, or computer software (including computer programs, computer software data bases, and computer software documentation). Examples of technical data include research and engineering data, engineering drawings and associated lists, specifications, standards, process sheets, manuals, technical reports, catalog item identification, and related information. Technical data as used in this subpart does not include financial

reports, cost analyses, and other information incidental to contract

administration.

(b) "Proprietary data" means technical data which embody trade secrets developed at private expense, such as design procedures or techniques, chemical composition of materials, or manufacturing methods, processes, or treatments, including minor modifications thereof, provided that such data:

(1) are not generally known or available from other sources without obligation concerning their confidentiality,

(2) have not been made available by the owner to others without obligation concerning their confidentiality, and

(3) are not already available to the Government without obligation concerning their confidentiality.

(c) "Contract data" means technical data first produced in the performance of the contract, technical data which are specified to be delivered under the contract, technical data that may be called for under the Additional Technical Data Requirements clause of the contract, if any, or technical data actually delivered in connection with the contract.

(d) "Unlimited rights" means rights to use, duplicate or disclose technical data, in whole or in part, in any manner and for

any purpose whatsoever, and to permit others to do so.

$9-9.202 Acquisition and use of technical data.

$9-9.202-1 General.

(a) The provisions herein pertain to research, development, demonstration and supply contracts, and contracts for the operation, design, or construction of Government-owned facilities which are covered by $9-9.202-4. Under ERDA's broad charter to perform research, development, and demonstration work in both nuclear and nonnuclear fields, and to meet the objectives stated in $9-9.202-2 below, ERDA has extensive needs for technical data. The satisfaction of these needs and the achievement of ERDA's objectives through a sound data policy are found in the balancing of the needs and equities of the Government, its contractors, and the general public.

(b) It is important to keep a clear distinction between contract requirements for the delivery of technical data on the one hand, and rights in technical data on the other. The legal rights which the Government acquires in technical data in ERDA contracts (other than

a

"facilities" contracts) are set forth in the Rights in Technical Data (long form) clause of §9-9.202-3(e)(2). However, this clause does not obtain for the Government the delivery of any data whatsoever. Rather, known requirements for the technical data to be delivered by the contractor shall be set forth as part of the contract (e.g. in the statement of work). An Additional Technical Data Requirements clause is included in this subpart to enable the contracting officer to require the contractor to furnish additional technical data, the requirement for which was not known at the time of contracting. There is, however, a built-in limitation on the kind of technical data which contractor may be required to deliver under either the contract statement of work or the Additional Technical Data Requirements clause. This limitation is found in the withholding provision of paragraph (e) of the Rights in Technical Data (long form) clause of $9-9.202-3(e)(2) which provides that the contractor need not furnish "proprietary data". It is specifically intended that the contractor may withhold "proprietary data" even though a requirement for technical data specified in the Statement of Work or called for pursuant to the Additional Technical Data Requirements clause would seemingly require the furnishing of proprietary data. This withholding of proprietary data is the primary means by which the contractor protect its proprietary position.

may

(c) There are, however, two situations where the Government, or its representative, may need to have limited access to a contractor's proprietary data. First, paragraph (f) of the Rights in Technical Data (long form) clause gives the contracting officer's representatives the limited right to inspect at the contractor's facility the contractor's proprietary data which was withheld from delivery under paragraph (e) of the clause for the purpose of verifying that such data were properly withheld or to evaluate work performance. In carrying out the inspection, normally the contracting officer's representative is an ERDA employee although he may be an employee of an ERDA contractor acting under an agreement to treat in confidence the proprietary data to be inspected. However, where the contractor whose data are to be inspected demonstrates that there would be a possible conflict of interest if the inspection were made by such a contractor employee, the contracting officer's representative may be limited to an ERDA employee. Paragraph (f) has a built-in exclusion from these inspection rights for "specific items of proprietary data" when they are so specified in the contract schedule. Such exclusions limit even ERDA's minimum rights of evaluating contract work performance and verifying that technical data withheld by the contractor is proprietary in fact. Such exclusions should be sparingly used, and only in situations where program personnel stipulate to the fact that ERDA has no need for access to the specified items to be excluded from paragraph (f), i.e., that the nondisclosure and nonaccessibility will not adversely affect the ERDA program involved. It should also be noted