nents, practices, or methods to the extent to which the Contractor has secured indemnification from liability. The foregoing indemnity shall not apply unless the Contractor shall have been informed as soon as practicable by the Government of the suit or action alleging such infringement, and shall have been given such opportunity as is afforded by applicable laws, rules, or regulations to participate in the defense thereof; and further, such indemnity shall not apply to a claimed infringement which is settled without the consent of the Contractor, unless required by final decree of a court of competent jurisdiction or to an infringement resulting from addition to or change in such supplies or components furnished on construction work performed which addition or change was made subsequent to deliver or performance by the Contractor.

§ 14R-9.103-4 Waiver of indemnity by the Government.

If it is desired to exempt one or more specified United States patents from the Patent Indemnity clause in § 14R-9.103-1 and § 14R-9.103-3(b), concurrence for such exemption shall be obtained from the Solicitor, and the following clause shall be included in the contract, in addition to the Patent Indemnity clause.

WAIVER OF INDEMNITY

Any provision of this contract to the contrary notwithstanding, the Government hereby authorizes and consents to the use and manufacture, solely in the performance of this contract, of any invention covered by the United States patents indentified as listed below, and waives indemnification by the Contractor with respect to such patents: (Identify the patents by number or by other means if more appropriate).

§ 14R-9.104 Notice and assistance.

The Government should be notified by the contractor of all claims of infringement in connection with the performance of a Government contract which come to the contractor's attention. The contractor should also assist the Government, to the extent of evidence and information in the possession of the contractor, in connection with any suit against the Government, or any claims against the Government made before suit has been instituted, on account of any alleged patent or copyright infringement arising out of or resulting from the performance of the contract. Accordingly, the follow

ing clause shall be included in all contracts in excess of $10,000 for supplies, services, construction, research, development, or demonstration work. However, that the clause shall not be included in contracts:

(a) Where both performance and delivery are to be outside the United States, its possessions, or Puerto Rico, unless the contract indicates that the supplies are ultimately to be shipped into the United States, its possessions, or Puerto Rico; or

(b) Of $10,000 or less (as a matter of administrative convenience, however, the clause need not be deleted when it is part of a standard form being used for such contracts since it is self-deleting).

NOTICE AND ASSISTANCE REGARDING PATENT AND COPYRIGHT INFRINGEMENT

The provisions of this clause shall be applicable only if the amount of this contract exceeds $10,000.

(a) The Contractor shall report to the Contracting Officer, promptly and in reasonable written detail, each notice or claim of patent or copyright infringement based on the performance of this contract of which the Contractor has knowledgement.

(b) In the event of any claim or suit against the Government on account of any alleged patent or copyright infringement arising out of the performance of this contract or out of the use of any supplies furnished or work services performed hereunder, the Contractor shall furnish to the Government when requested by the Contracting Officer, all evidence and information in possession of the Contractor pertaining to such suit or claim. Such evidence and information shall be furnished at the expense of the Government except where the Contractor has agreed to indemnify the Government.

(c) This clause shall be included in all subcontracts.

88 14R-9.105-14R-9.106 [Reserved]

8 14R-9.107 Patent rights under contracts for research, development, and demonstration, and under special contracts. 814R-9.107-1 General.

This section sets forth the policies, procedures, and practices of OWRT in connection with inventions, patents, and related matters based upon section 408 of the Water Research and

Development Act of 1978, Pub. L. 95467 of October 17, 1978, citing sections 9 and 10 of the Federal Nonnuclear Energy Research and Development Act of 1974 (42 U.S.C. 5908, 5909); and, to the extent not inconsistent with the foregoing statutes, the revised Presidential Memorandum and Statement of Government Patent Policy, August 23, 1971 (36 FR 16887-16892). Pursuant to the foregoing statutes, title to inventions conceived or otherwise made in the course of or under OWRT contracts shall vest in the Government, and that all or part of the rights of the Government in such inventions may be waived if it is determined, in conformity with the provisions of section 9 of the Federal Nonnuclear Energy Research and Development Act, that the interests of the United States and the general public will best be served by such waiver.

§ 14R-9.107-2 [Reserved]

§ 14R-9.107-3 Policy.

(a) Whenever any invention is conceived or otherwise made in the course of or under any contract of OWRT, title to such invention shall vest in the United States unless the Secretary of the Interior, or his designee, waives all or any part of the rights of the United States. While waivers are to be granted only in conformity with the specific minimum considerations and under the carefully delineated conditions set forth in § 14R-9.109-6, it is recognized that waivers comprise a necessary part of the commercialization incentives available to OWRT. It is intended, therefore, that waivers will be provided in appropriate situations; to encourage industrial participation and foster rapid commercial utilization in the overall best interest of the United States and the general public. With regard to any waivers granted under this Part 14R-9, OWRT shall maintain a publicly available, periodically updated record of such waiver determinations.

(b) In contracts having as a purpose the conduct of research, development, or demonstration work and in other special contracts, the Government shall normally acquire title in and to any invention or discovery conceived

or first actually reduced to practice in the course of or under the contract, allowing the contractor to retain a nonexclusive, revocable, paid-up license in the invention, and upon written request to OWRT, the right to file and retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor's nonexclusive license retained in the invention may be revoked or modified by OWRT only to the extent necessary to achieve expeditious practical application of the invention pursuant to an application for and the grant of an exclusive license in the invention.

(c) In contracts having as a purpose the conduct of research, development, or demonstration work and in other special contracts the Government may have to acquire the right to require licensing of background patent rights to insure reasonable public availability and accessibility necessary to practice the results of the contract in the field of technology specifically contemplated in the contract effort. The need for background patent rights and the particular rights that should be obtained for either the Government or the public will depend upon the type, purpose, and the scope of the contract effort, and the cost to the Government of obtaining such rights. Accordingly, the background patent rights provision which will be appropriate for many contract situations is included in the Patent Rights clause.

(d) Nothing in this Part 14R-9 shall be deemed to convey to any individual, corporation, or other business organization immunity from civil or criminal liability, or to create defenses to actions under the antitrust laws.

§ 14R-9.107-4 Procedures.

(a) Selection of Patent Rights clause. (1) Whenever a contract, subcontract, or other arrangement has as a purpose the conduct of research, development, or demonstration work, the operation of a Government-owned research and production facility, the furnishing of architect-engineer, design or other special services, or the coordination and direction of the work of others, and in other special situations involving the use of Government-owned ma

terials, equipment, or classified technical data and information, the Contracting Officer shall include in the proposed contract either the Patent Rights clause of § 14R-9.107-5(a), or the clause of § 14R-9.107-6. The clause set forth in § 14R-9.107-6 may be used only in contracts calling for basic or applied research work with nonprofit or educational institutions, or in certai consultant contracts as set forth in paragraph (a)(5) of this section.

(2) The Patent rights clause of § 14R-9.107-5(a) and § 14R-9.107-6 provide that the Government shall acquire title to inventions made (i.e. conceived or first actually reduced to practice) in the course of or under the contract. However, the contractor shall retain a nonexclusive, revocable license, and subject to OWRT requirements and regulations, may request the right to file and retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor or the inventor may also retain greater rights than these after an invention has been identified and reported to OWRT if the Secretary or his designee determines that the interests of the United States and the general public will best be served by a waiver of such rights, utilizing the considerations set forth in § 14R-9.109-6.

(3) The primary missions of OWRT may require that certain rights in the contractor's privately developed background patents be acquired for the Government's future production, research, development, and demonstration projects. Similar rights may also be required to enable private parties to utilize the technology developed or demonstrated with Government assistance in the field of technology specifically contemplated in the contract effort. To this end, subject to specified exceptions and negotiations, the Patent Rights clause in OWRT contracts shall normally include provisions obtaining rights of the type specified in § 14R-9.107-5 to such background patents, except that for contracts up to $50,000, a determination may be made by the Solicitor to omit such provisions upon the contractor's request therefor to OWRT. This determination will be particularly con

cerned with the implications of the contract's potential for technological advances to any intentions or plans which the Government may have to additionally fund research and development for such advances. It is recognized that the precise rights to be acquired under the provisions will depend upon the facts of each situation and are a matter for determination by OWRT and for negotiation with the contractor. General guidelines for use by Contracting Officers and contract negotiators are provided in § 14R-9.107-5(b).

(4) The short form Patent Rights clause in § 14R-9.107-6 may be used in contracts calling for basic or applied research where the contractor is a nonprofit or educational institution, and in special situations such as consultant contracts. However, this clause will not be used in contracts calling for the operation of Government-owned facilities, contracts in which an advance waiver or greater rights has been granted, in certain consultant contracts as explained in § 14R-9.1076, or in other special contracts.

(5) Solicitations and proposed contracts shall provide offerors and prospective contractors with notice of and the right to request, in advance of or within 30 days after the effective date of contracting, a waiver of all or any part of the rights of the United States with respect to subject inventions. In no event will the fact that an offeror has requested such a waiver be a consideration in the evaluation of his offer or the determination of his acceptability. If an advance waiver is granted, the Patent Rights clause of

14R-9.107-5(a) shall be utilized and appropriately modified in accordance with the terms of such waiver. To provide adequate notice to prospective contractors or offerors, the following provision will be inserted in all solicitations which may result in contracts calling for research, development, or demonstration:

Offerors and prospective contractors in accordance with applicable statutes and OWRT Regulations (41 CFR 14R-9.109-6) have the right to request in advance of or within 30 days after the effective date of contracting a waiver of all or any part of

the rights of the United States in subject inventions.

(b) License for the Government, States and domestic municipal governments. When a waiver is granted or foreign rights are retained by either the contractor or the inventor, the Government shall retain for the United States, and domestic municipal governments at least a paid-up, nonexclusive, irrevocable license in all applicable inventions unless the Secretary or his designee determines that it would not be in the public interest to acquire such rights for the States and domestic municipal governments. Requests by contractors for such determinations, together with a justification therefor shall be submitted to the Contracting Officer. The Contracting Officer shall refer such requests, along with appropriate comments and recommendations, to the Solicitor to serve as a basis for a determination by the Secretary or his designee.

(c) Right to sublicense foreign governments. The Patent Rights clause does not provide the Government with the right to grant sublicenses to a foreign government pursuant to any treaty or agreement in subject inventions to which the contractor has been granted greater or foreign rights. The Secretary or his designee may determine at the time of contracting that it would be in the national interest to acquire this right, or he may reserve the right to make this determination after the invention is identified. When such a determination is made or such right is reserved, the Patent Rights clause should be amended as set forth in § 14R-9.107-5(d).

(d) License rights (upon request) to the contractor. Paragraph (c) of the Patent Rights (long form) clause of § 14R-9.107-5(a) specifies the license rights retained by the contractor in inventions made in the course of or under the contract. In appropriate circumstances, such as in contracts for the operation of Government-owned facilities or special long term, cost reimbursement Government-funded research, development, or demonstration work, this provision shall be modified to provide a revocable, nonexclusive, royalty-free license in inventions only upon request by the contractor for res

ervation of such license. In such situations, the paragraph set forth in § 14R-9.107-5(e) shall be substituted for paragraph (c)(1) of the Patent Rights (long form) clause.

(e) License rights to contractor (Irrevocable). Paragraph (c)(1) of the Patent Rights clauses specifies that the license rights retained by the contractor in such inventions are revocable. In special circumstances, the license may be irrevocable, in which case the paragraph (c)(1) set forth in § 14R-9.107-5(f) shall be substituted for paragraph (c)(1), (c)(2), and (c)(3) of the Patent Rights (long form) clause. Since granting irrevocable licenses may interfere with OWRT's licensing program, which is intended to promote the commercial utilization of inventions resulting from its research, development, or demonstration programs, contractors desiring irrevocable licenses shall submit a written request with a justification to the Contracting Officer. The Contracting Officer shall refer such requests, along with appropriate comments and recommendations, to the Solicitor to serve as a basis for approval by the Secretary or his designee.

right of a contractor having a license as set forth in paragraphs (d) and (e) of this section to grant a revocable license to one or more sublicensees may be considered appropriate by the Secretary or his designee in certain circumstances, such as, for example, where the contractor is cost sharing; where the contractor's control or involvement in the technology which is the subject of the contract is substantial; where the reservation of licensing rights in the contractor would best promote commercialization or utilization of the technology, or where substantial segments of the user population already have licenses or would otherwise be licensed. In such situations, the paragraph in § 14R-9.1075(g)(1) may be substituted for paragraph (c)(1) of § 14R-9.107-5(a), or the paragraphs in § 14R-9.107-5(g)(2) may be substituted for paragraphs (c)(1), (c)(2), and (c)(3) of § 14R-9.107-5(a), as appropriate.

(g) Facilities license. Whenever a contract has as a purpose the design,

construction, or operation of a Government-owned research, development, demonstration, or production facility, it is necessary that the Government be accorded certain rights with respect to further use of the facility by or on behalf of the Government upon termination of the contract, including the right to make, use, transfer, or otherwise dispose of all articles, materials, products, or processes embodying inventions or discoveries used or embodied in the facility regardless of whether or not conceived or actually reduced to practice under or in the course of such a contract. Accordingly, the paragraph of § 14R9.107-5(h) shall be used in all such contracts in addition to the provision of the "long form" Patent Rights clause.

(h) Subcontracts. (1) The policy expressed in § 14R-9.107-3 is applicable to prime contracts and to subcontracts regardless of tier. The Patent Rights clause of § 14R-9.107-5(a) or § 14R9.107-6 shall be included in all subcontracts having as a purpose the conduct of research, development, or demonstration work. However, the Patent Rights clause contained in the prime contract is not to be deemed automatically appropriate for subcontracts. For example, it would not be appropriate to the extent that waivers have been granted the prime contractor at the time of contracting. A separate waiver, if any, must be obtained by subcontractors. Further, the withholding of payment provision of the prime contract will normally not be included in a subcontract except that upon request of the Contracting Officer in special contracting situations the withholding of payment provision may be flowed down to subcontractor. Whenever either the prime contractor or a proposed subcontractor considers the inclusion of the Patent Rights clause of § 14R-9.107-5(a) or § 14R-9.107-6 to be inappropriate, or the subcontractor refuses to accept such a clause in its subcontract, the matter shall be referred prior to award of the subcontract to the Contracting Officer for resolution in accordance with § 14R9.107-4(k). Upon such referral, the same considerations and procedures followed in selecting the appropriate

Patent Rights clause included in the prime contract shall be used in selecting the subcontract clause.

(2) Contractors shall not use their ability to award subcontracts as economic leverage to acquire rights for themselves in the inventions resulting from subcontracts, and a waiver granted to a prime contractor is not normally applicable to inventions of subcontractors. However, in appropriate circumstances, the prime contractor's waiver may be made applicable to the inventions of any or all subcontractors, such as, for example, where there are pre-existing special research and development arrangements between the prime contractor and subcontractor, or where the prime contractor and subcontractor, are partners in a cooperative effort. In addition, in such circumstances the prime contractor may be permitted to acquire nonexclusive licenses in the subcontractor's inventions when a waiver for subcontractor inventions is not applicable.

(i) Record of decisions. The Solicitor shall record the basis for the following actions: (1) Waivers at the time of contracting; (2) waivers granted on identified inventions; (3) determinations that no license need be obtained for States or municipal governments; (4) determinations that the right to sublicense foreign governments should be obtained; and (5) the grant of irrevocable licenses.

(j) Publication of invention disclosures. The Patent Rights clauses specify that the Government may duplicate and disclose invention disclosures reported under the contract, although it is not OWRT's practice to publish invention disclosures. Since public disclosure before the filing of a U.S. patent application may create a bar to filing certain foreign applications, the clauses also require that patent approval for release or publication of information relating to the contract work be secured from the Solicitor prior to any such release or publication. When the contractor has requested or obtained a waiver, or has advised of its interest in obtaining certain foreign filing rights, provision is made for OWRT to use its best efforts to withhold release or publication of such information for a specified time period