Government-owned facility or undertaking other special contracts, the following considerations apply to the granting of advance and identified waivers to educational institutions having an approved technology transfer program and capability. To obtain approval of its technology transfer program, educational institutions shall forward their requests to OWRT as provided in paragraph (h)(2) of this section.

(2) A nonprofit educational institution desiring to obtain approval of its technology transfer program and capability shall provide OWRT at the time of contracting with the following information:

(i) General information concerning the institution, including:

(A) A copy of its Articles of Incorporation;

(B) A statement of the institution's purposes and aims; and

(C) A statement indicating the source of the institution's funds.

(ii) A copy of the institution's established patent policy, together with the date and manner of its adoption;

(iii) The name, title, address, and telephone number of the officer responsible for administration of patent and invention matters and a description of staffing in this area, including all offices which contribute to the institution's patent management capabilities;

(iv) A description of the institution's procedures for identifying and reporting inventions and a description of the procedures for evaluation of such inventions for inclusion in the institution's promotional program;

(v) A copy of the agreement signed by employees engaged in research and development, indicating their obligation in regard to inventions conceived or first actually reduced to practice in the course of their assigned duties;

(vi) A copy of the invention report form or outline utilized for preparation of invention reports;

(vii) A statement of whether the institution has an agreement with any patent management organizations or consultants and a copy of any such agreements;

(viii) A description of the plans and intentions of the institution to bring

inventions

to

to the marketplace which it retains title including a description of the efforts typically undertaken by the institution to license its inventions together with copies of earnest offers or proposals to the institution from identified prospective licensee(s) to commit funds, facilities, proprietary background technology and know-how, and the services of personnel, to bring to the marketplace an invention or inventions to which the institution retains title;

(ix) A description of the institution's past patent application and patent licensing activities, including the following:

(A) Number of inventions reported to the institution during each of the past ten (10) years;

(B) Number of patent applications filed during each of the past ten (10) years;

(C) Number of patents obtained during each of the past ten (10) years;

(D) Number of exclusive licenses issued during each of the past ten (10) years;

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

(F) Gross royalty income during each of the past ten (10) years;

(G) A general description of royalties charged, including 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

33-139 0-84--23

are approved for the contracting, the institution shall have a technology transfer program which, as a minimum shall include the five (5) criteria listed below:

(i) An established patent policy which is consistent with the four policy objectives in § 14R-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 institution 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 institutions are evaluated for inclusion in the institution's promotional program for the licensing and marketing of inventions.

(4) In considering approval of technology transfer programs and capabilities in connection with requests for waivers, such approval shall be considered in lieu of commercial, manufacturing, and marketing capabilities which normally reside in industry. Such approval shall not be considered sufficient in and of itself as justifying the granting of a waiver to an institution. Approval of the grant of a waiver must be viewed in light of the considerations of § 14R-9.106(b) or (c) above, as applicable, and the four objectives set forth in § 14R-9.109-6(a) above.

(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 § 14R-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 specify

ing those countries in which rights will be retained.

(2) Subject to the rights granted in paragraphs (c)(1), (2), and (3) of the clause of § 14R-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 clause of § 14R-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 forfeiture of the patent application or patent, the contractor or inventor shall notify the contracting officer or 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 Solicitor 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 § 14R-9.107-5(a) or such longer period as may be approved by the Solicitor 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 Solicitor 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 the Solicitor 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 Office of Water Research and Technology of the United States Department of the Interior."

(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 Solicitor a duly executed and approved instrument fully confirmatory of all rights to which the Government is entitled, and provide the Solicitor an irrevocable power to inspect and made copies of the patent application filed;

(D) Provide the Solicitor 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 Solicitor of any decision not to continue prosecution of the application and deliver to the Solicitor executed instruments granting the Government a power of attorney.

(iii) For each invention in which the contractor initially elects pursuant to paragraph (i)(1) of this section not to retain the rights waiver, the contractor shall inform the Solicitor 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 paragraph (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 (8) months from the date of a corresponding United States patent application filed by the contractor or inventor, of 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 § 14R9.107.5(a);

(B) Six (6) 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

(C) Such longer period as may be approved by the Solicitor.

(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 Solicitor, furnish the Solicitor 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 invention available for licensing.

(8) The Government's retention of at least a nonexclusive, irrevocable, paid-up license to make, use, and sale the invention throughout the world by or on behalf of the Government (including any Government agency) and States and domestic municipal governments, unless the Secretary or his 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 of the Secretary or his designee to require the granting of 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 Government regulations;

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

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

(10) The right of the Secretary or his designee to terminate such waiver in whole or in part unless the recipient of such waiver demonstrates to the satisfaction of the Secretary or his 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 of the Secretary, or his 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 Secretary or his designee determines upon review of such material as he deems 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 Secretary or his 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 Secretary or his designee at such hearing the he 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) Terminations. (1) Any waiver may be terminated at the discretion of the Secretary, or his 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 invention, may be terminated at the discretion of the Secretary, or his designee, in whole or in part, if the requirements set forth in paragraph (i) of this section (Terms and conditions of waivers) have not been fulfilled, and such failure is determined by the Secretary or his 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 Secretary or his 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 § 14R-9.107-5(a), and when justified by equitable considerations termination shall normally be partial in nature, requiring the waiver recipient to grant nonexclusive or partially exclusive licenses to responsible appli

cants upon terms reasonable under the circumstances.

(k) Effective date. Waivers shall be effective on the following dates:

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

(2) For identified inventions under advance waivers, i.e., invention 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.

§ 14R-9.110 Reporting of royalties.

In order that OWRT 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 payments 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 any 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:

REPORTING OF ROYALTIES

If this contract is in an amount which exceed $10,000 and if any royalty payments are directly involved in the contract or are reflected in the contract price to the Government, the Contractor agrees to report in writing 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 identification of the patents or other basis on which the royalties are to be paid. The approval of OWRT 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 14R-9.2—Technical Data and Copyrights

§ 14R-9.200 Scope of subpart.

This subpart sets forth OWRT'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. The policy, as implemented by the procedures and contract clauses, is promulgated to comply with section 408, of the Water Research and Development Act of 1978, Public Law 95-467, which in a concluding proviso states:

That, subject to the patent policy of section 408, all research or development contracted for, sponsored, cosponsored, or authorized under authority of this Act, shall be provided in such manner that all information, data, and know-how, regardless of their nature or mediums, resulting from such research and development will (with such exceptions and limitations, if any, as the Secretary may find to be necessary in the interest of national defense) be usefully available for practice by the general public consonant with the purpose of this Act.

Thus, the statutorily mandated availability for practical utility of the contract's resulting informational products is carried out by this Subpart with provisions requiring acquisition by the unlimited Government of rights in all technical data produced in the performance of the contract, which are supplemented with further provisions ensuring compliance with the mandate by requiring where essential for use in connection with the practice of the informational products,