°00' W.; then along the 24 degree lel to 24°00′ N., 97°00′ W. (point of ning).

graph (f) added by Amdt. 6, 23 F. R. , Dec. 25, 1958]

20.23 Defense areas.

yoked by Amdt. 7, 14 F.R. 2520, Apr. 591

Prior Amendments

1958: 23 F.R. 6493, Aug. 22; 23 F.R. 6773, Sept. 3.

NOTE: Unless specifically stated otherwise, the lines between points herein described are great circles except those Mnes between adjacent points on the same parallel of latitude. In this latter case, the lines are rhumb lines.

(a) This subpart prescribes contract clauses and instructions which define and implement the policy of the National Aeronautics and Space Administration (NASA) with respect to:

(1) Inventions made in the performance of work under contract with NASA; (2) Patent infringement liability of the United States resulting from work performed under contract with NASA;

(3) Security requirements covering patent applications containing classified subject matter; and

(4) Patent royalties payable in connection with the performance of contracts with NASA.

(b) The policies, instructions, and contract clauses prescribed by this subpart are applicable to contracts which are to be performed within the United States, its territories, its possessions, or Puerto Rico. The Office of the General Counsel, NASA, should be consulted concerning the policies, instructions, and contract clauses to be used in contracts other than those specified in the preceding sentence.

§ 1201.101 Property rights in inventions made in the performance of work under NASA contracts.

It is the policy of the National Aeronautics and Space Administration, except as to any invention made in the performance of any work under any contract with NASA of the type described in § 1201.101-2, to pay reasonable compensation for the acquisition of rights in any invention covered by a valid patent issuing thereon and enforceable against the Government. Such rights in "background" patents will not be acquired in contracts for supplies and services except by specific negotiation for such rights, unless the patents and the rights thereunder are listed and priced as a separate contract item. Questions of validity, enforceability and infringement of patents will be determined by the Office of the General Counsel, NASA. It is also the policy of NASA to refer to

the Inventions and Contributions Board for consideration for an award each invention made by an employee of a NASA contractor or subcontractor to which NASA has acquired title and with respect to which an application for patent by NASA has been authorized. The Administrator, upon his own initiative, may make monetary award on any such invention in such amount and upon such terms as he shall determine to be warranted.

§ 1201.101-2

Use of "Property Rights

in Inventions" clause.

(a) A "Property Rights in Inventions" clause shall be included in every NASA contract or modification thereof which entails technical, scientific, or engineering work of a kind performed in a contract having as one of its purposes (1) the conduct of basic or applied research, (2) the design or development, or manufacture for the first time, of any machine, article of manufacture, or composition of matter to satisfy NASA's specifications or special requirements, (3) the development of any process or technique for attaining a NASA objective not readily attainable through the practice of a previously developed process or technique, or (4) the testing or experimenting with a machine, process, or technique to determine whether the same is suitable or could be made suitable for a NASA objective. The price of any NASA contract shall in no event be increased merely by reason of the inclusion of a "Property Rights in Inventions" clause in such contract.

(b) The "Property Rights in Inventions" clause (IX-A) shall be used in all contracts for work of the kind described in paragraph (a) of this section, except as otherwise provided in §§ 1201.101-6 and 1201.101-7.

§ 1201.101-3 Contract administration of "Property Rights in Inventions" clause (ÏX-A).

The following paragraphs of this section provide interpretations and pro

1 It is considered that a contract made by another Government agency on behalf of NASA is a "contract of the Administration" within the meaning of subsection 305(a) of Pub. Law 85-568.

The "Property Rights in Inventions" clause and all other clauses referred to subsequently herein are set forth in Appendix A (§ 1201.190) and are designated by numbers, IX-A, IX-B, etc.

cedures to be used in the administration of clause IX-A.

(a) The term "invention" is defined in clause IX-A as including a discovery, improvement, or innovation, since each may include an invention susceptible of protection under the United States Patent System. The contractor is not required to report every trifling discovery, improvement, or innovation that may be made under a NASA contract. However, those discoveries, improvements, and innovations which appear to fall within a statutory class of patentable subject matter (see 35 U.S.C. 101 or 171) and which have a reasonable probability of being patentable are required to be reported under paragraph (b) of clause IX-A. Any doubts respecting patentability should be resolved in favor of furnishing the report. It is not necessary that the contractor determine that the invention is patentable prior to furnishing such report.

(b) In complying with the obligation imposed by paragraph (b) of clause IX-A, the contractor may initially furnish to the contracting officer only such technical information as is required for the purpose of identifying the invention and determining its utility in the conduct of aeronautical and space activities. When requested by the contracting officer, the contractor shall prepare and furnish such additional technical descriptions of the invention as will be adequate for ready transposition to patent specification form and for effective prosecution of a patent application.

(c) If the contractor desires to avail itself of the hearing provided by subsection 305(d) of Public Law 85-568 before the Board of Patent Interferences with respect to an invention made in the performance of work under a NASA contract containing clause IX-A, the contractor must file a United States patent application for the invention in accordance with procedures set forth in paragraphs (d) and (e) of such clause and take the other appropriate actions therein specified.

(d) Contractors will be notified, by an instrument in writing, within six months from the date of receipt of written statements described in paragraph (d) (i) of clause IX-A and submitted pursuant to provisions of paragraphs (d) and (e) of said clause, of the Administrator's determination as to whether the invention was made under the circumstances set

forth in paragraphs (1) and (2) of subsection 305(a) of Public Law 85-568. Where the presumption set forth in paragraph (d) of clause IX-A takes effect under any of the conditions prescribed in paragraphs (d) and (e) of said clause, the contractor will be notified promptly thereafter by an instrument in writing that the Administrator has made the determination that the invention was made under the circumstances set forth in paragraphs (1) and (2) of subsection 305(a) of Public Law 85-568. Where the contractor has filed, or caused to be filed, a patent application in accordance with the procedure set forth in paragraph (e) (v) of clause IX-A and the written statement specified therein, the contractor will be notified by an instrument in writing, within 90 days after receipt by the Administrator of such written statement, of the Administrator's decision as to whether the invention was made under the circumstances of paragraphs (1) and (2) of subsection 305(a) of Public Law 85-568, and, if it was so made, that the Administrator intends to request that the patent be issued to him on behalf of the United States when the Patent Office determines that the invention is patentable.

§ 1201.101-4 Contracts atomic energy.

relating to

Paragraph (1) of clause IX-A is included for the purpose of determining the disposition of the title to and rights under any application for patents or any patent that may issue on any invention made by employees of the contractor and relating to the production or utilization of special nuclear material or atomic energy within the purview of the Atomic Energy Act, 1946 (42 U.S.C. 18011819) and of 1954, as amended (42 U.S.C. 2011-2296). This paragraph of clause IX-A will become effective as a part of clause IX-A only in those contracts which entail the performance of technical, scientific, or engineering work relating to atomic energy. It is suggested that the schedule of the contract recite whether the contract calls for such work. § 1201.101-5 Short form "Property Rights in Inventions" clause.

The "Property Rights in Inventions (Short Form)" clause (IX-B) is authorized for use in lieu of clause IX-A in contracts made with an approved NASA contract form including clause IX-B. Such NASA forms using clause IX-B will

generally be limited to use in contracts with non-profit organizations for basic and applied research which do not call for the delivery to the Government of supplies, models, or prototypes.

§ 1201.101-6 Patent rights under contracts for personal services.

The "Property Rights in Inventions" clause (IX-C) shall be used in contracts entered into with an individual for personal services to be performed by that individual under Government supervision and paid for on a time basis.

§ 1201.101-7 Patent rights under product improvement programs or independent research programs.

Where NASA under its established procedures provides, as an item in the computation of overhead, financial support to (a) a contractor's product improvement program, or (b) a contractor's independent research program, the inventions resulting from such programs are not subject to the "Property Rights in Inventions" clauses IX-A, B, or C merely by virtue of the provisions of such financial support. Clause IX-D may be included in the Schedule of a contract wherein NASA is providing such support to the contractor's product improvement program or independent research program.

§ 1201.102 Follow-up of property rights

in inventions.

Appropriate systems of follow-up in connection with the administration of contracts of NASA containing a "Property Rights in Inventions" clause will be maintained by the Office of the General Counsel, NASA, in order that (a) inventions in which the Government may have an interest may be properly identified, (b) suitable and necessary steps may be taken to protect the Government's interest in such inventions, and (c) formal agreements may be obtained evidencing the Government's interest.

§ 1201.103 Authorization and consent.

(a) Under 28 U.S.C. 1498, any suit for infringement of a patent based on the manufacture or use of a patented invention for the Government by a contractor or by a subcontractor (including lower-tier subcontractors) can be maintained only against the Government in the Court of Claims, and not against the contractor or subcontractor, in those cases where the Government has author

ized or consented to the manufacture or use of the patented invention. Accordingly, in order that work by a contractor or subcontractor under a Government contract may not be enjoined by reason of patent infringement, authorization and consent shall be given as herein provided. The "Authorization and Consent" clause (IX-E) may be included in any contract for supplies, including construction work.

(b) Greater latitude in the use of patented inventions is to be allowed in a contract for experimental, developmental, or research work than in a contract for supplies. The "Authorization and Consent" clause (IX-F) shall be included in all contracts calling exclusively for experimental, developmental, or research work, except that it need not be included in contracts made with an approved NASA contract form which omits the clause.

§ 1201.104

Patent indemnification of Government by contractor.

(a) NASA's mission is directed to (1) research into the solution of problems of flight within and outside the atmosphere, (2) the development, construction, testing, and operation for reseach purposes of aeronautical and space vehicles, and (3) such other activities as may be required for the exploration of space. Since a patent indemnity clause is not appropriate in contracts for experimental, developmental, or reseach work, such a clause is not included in this regulation.

(b) In cases where it is known that an item being procured is protected by a United States patent or patents, the inclusion of a patent indemnity clause may be appropriate. In such case, where the patent owner informs a prospective bidder or otherwise contends that the item being procured would infringe his patent or patents, the question of patent indemnification should be referred promptly to the Office of the General Counsel, NASA.

§ 1201.105 Notice and assistance.

The Government should be notified by the contractor of all claims of infringement in connection with the performance of a contract which comes to the contractor's attention, especially where the Government has given its authorization and consent for the use and manufacture in the performance of the contract of any patented invention or where the con