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§ 14R-9.103-4

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.

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).

8 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).

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 hereun. der, the Contractor shall furnish to the Government when requested by the Contracting Officer, all evidence and information in possession of the Contractor pertain. ing 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-9.104 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

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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

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.

or

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 organi. zation immunity from civil or criminal liability, or to create defenses to actions under the antitrust laws.

$ 14R-9.107-2 (Reserved)

8 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

8 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 techni cerned with the implications of the cal data and information, the Con contract's potential for technological tracting Officer shall include in the advances to any intentions or plans proposed contract either the Patent which the Government may have to Rights clause of $ 14R-9.107-5(a), or additionally fund research and develthe clause of § 14R-9.107-6. The clause opment for such advances. It is recogset forth in § 14R-9.107-6 may be used nized that the precise rights to be aconly in contracts calling for basic or

quired under the provisions will applied research work with nonprofit depend upon the facts of each situaor educational institutions, or in cer tion and are a matter for determinatai consultant contracts as set forth

tion by OWRT and for negotiation in paragraph (a)(5) of this section.

with the contractor. General guide(2) The Patent rights clause of

lines for use by Contracting Officers $ 14R-9.107-5(a) and $ 14R-9.107-6

and contract negotiators are provided provide that the Government shall ac

in § 14R-9.107-5(b). quire title to inventions made (i.e. con

(4) The short form Patent Rights ceived or first actually reduced to

clause in § 14R-9.107-6 may be used in practice) in the course of or under the

contracts calling for basic or applied contract. However,

the contractor

research where the contractor is a shall retain a nonexclusive, revocable

nonprofit or educational institution, license, and subject to OWRT require

and in special situations such as conments and regulations, may request

sultant contracts. However, this clause the right to file and retain title in any

will not be used in contracts calling for foreign country in which the Government does not elect to secure patent

the operation of Government-owned

facilities, contracts in which an adrights. The contractor or the inventor may also retain greater rights than

vance waiver or greater rights has these after an invention has been iden

been granted, in certain consultant tified and reported to OWRT if the

contracts as explained in § 14R-9.107Secretary or his designee determines

6, or in other special contracts. that the interests of the United States

(5) Solicitations and proposed conand the general public will best be

tracts shall provide offerors and proserved by a waiver of such rights, uti spective contractors with notice of and lizing the considerations set forth in the right to request, in advance of or $ 14R-9.109-6.

within 30 days after the effective date (3) The primary missions of OWRT of contracting, a waiver of all or any may require that certain rights in the part of the rights of the United States contractor's privately developed back with respect to subject inventions. In ground patents be acquired for the

no event will the fact that an offeror Government's future production, re has requested such a waiver be a consearch, development, and demonstra sideration in the evaluation of his tion projects. Similar rights may also offer or the determination of his acbe required to enable private parties to ceptability. If an advance waiver is utilize the technology developed or granted, the Patent Rights clause of demonstrated with Government assist $ 14R-9.107-5(a) shall be utilized and ance in the field of technology specific appropriately modified in accordance cally contemplated in the contract with the terms of such waiver. To proeffort. To this end, subject to specified vide adequate notice to prospective exceptions and negotiations, the contractors or offerors, the following Patent Rights clause in OWRT con provision will be inserted in all solici. tracts shall normally include provi tations which may result in contracts sions obtaining rights of the type spec calling for research, development, or ified in § 14R-9.107-5 to such back demonstration: ground patents, except that for contracts up to $50,000, a determination

Offerors and prospective contractors in

accordance with applicable statutes and may be made by the Solicitor to omit

OWRT Regulations (41 CFR 14R-9.109-6) such provisions upon the contractor's

have the right to request in advance of or request therefor to OWRT. This de

within 30 days after the effective date of termination will be particularly con 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.

(f) Contractor sublicensing. The 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

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