INVENTIONS, INNOVATIONS, AND PATENTS New Technology Representative all reports of reportable items and inventions made during the performance of work under such contracts and a copy of the contractor's interim and final reports for each contract as required by the New Technology clause included in the contract. (b) Whenever another Government agency requests NASA to perform experimental, developmental, or research work and NASA contemplates contracting for all or part of such work, a New Technology clause, selected pursuant to 9.107-4(a), may be used unless the other agency requests alterations thereto or a substitute clause. If alterations or a substitute clause are requested, the contracting officer shall consult with installation Patent Counsel as to the appropriateness of the use thereof. In some instances agreements will exist between NASA and another agency requiring special clauses and other provisions relating to patents and inventions to be included in any contract executed by NASA for or on behalf of the other agency. The contracting officer shall refer to such agreements prior to initiating procurement action for any such contracts and shall consult with installation Patent Counsel with respect to any question concerning the appropriate clauses to use or the interpretation, implementation, or departure from the provisions or clauses set forth in such agreements. 9.108 Reserved 7 9.109 Administration of New Technology Clause and Waiver of Rights to Inventions. 9.109-1 New Technology Clause Follow-Up; Designation of New Technology and Patent Representatives. Ta) It is important that the Government and the contractor know, protect, and exercise their rights in any inventions, discoveries, improvements or innovations made in the performance of work under contracts of NASA in order to ensure their expeditious availability to the public, to enable the Government, the contractor, and the public to avoid unnecessary payment of royalties, and to defend themselves against claims and suits for patent infringement. To attain these ends, contracts having a New Technology clause or other patent rights clause (hereinafter referred to as "the clause ") should be so administered that: (1) Reportable Items, as defined in the clause, are identified, disclosed, and reported as required by the clause; NASA PROCUREMENT REGULATION 9.109-1 PATENTS, DATA, AND COPYRIGHTS (2) The rights to the Government in such Reportable Items are established; (3) When appropriate, patent applications are timely filed and prosecuted by the Government or by contractors; (4) The filing of patent applications is documented by formal instruments such as licenses or assignments; and (5) Expeditious commercial utilization of such Reportable Items or Subject Inventions is achieved. (5) (1) For each contract containing the clause the contracting officer shall designate representatives (hereinafter referred to as the " New Technology Representative" and the " Patent Representative") to administer the clause, protect the Government's rights, and take actions in relation thereto. The respective responsibilities and authorities of these representatives in administering the clause is set forth in 9.109-3. Designation of these representatives shall be accomplished by incorporation of a provision into the contract schedule containing the following or similar statements: DESIGNATION OF NEW TECHNOLOGY REPRESENTATIVE AND PATENT REPRESENTATIVE (a) For purposes of administration of the clause of this contract entitled New Technology" (regardless of form), or other patent rights clause, whichever is included, the following named representatives are hereby designated by the Contracting Officer to administer such clause: representative... (Office... (Address including Patent representa tive.. Code) ZIP Code). (b) Reports of Reportable Items, interim reports, final reports, and other reports required by the clause, as well as any correspondence with respect to the clause, should be directed to the New Technology Representative unless transmitted in response to correspondence or request from the Patent Representative. This provision shall be included in any subcontract hereunder requiring a 9.109-1 CFR TITLE 41 CHAPTER 18 INVENTIONS, INNOVATIONS, AND PATENTS New Technology" clause or other patent rights clause unless otherwise authorized or directed by the Contracting Officer. The respective responsibilities and authorities of the above-named representatives is set forth in 9.109-3. (2) The New Technology Representative shall be the Technology Utilization Officer or the staff member (by titled position) having cognizance of technology utilization matters for the NASA installation concerned, and the Patent Representative shall be the Patent Counsel or the staff member (by titled position) having cognizance of tent matters for the NASA installation concerned. (3) The contracting officer shall: a (i) Furnish the New Technology Representative copy of each contract (and modifications thereto) containing the clause, copies of the final technical report, interim technical progress reports, and other pertinent material provided under the contract, unless the New Technology Representative indicates otherwise. (ii) Notify the New Technology Representative of the organizational element of the NASA installation having technical cognizance of the contract; and (iii) Furnish the Patent Representative a copy of each contract (and modifications thereto) containing the clause, copies of the final technical report, interim progress reports, and other pertinent material provided under the contract, unless the Patent Representative indicated otherwise. (4) The New Technology Representative and the Patent Representative shall maintain complete files of correspondence and other actions involving their respective administration of the clause. Copies of documents which are appropriate for inclusion in the general contract files shall be furnished to the contracting officer. 9.109-2 Follow-Up by Contractor. (a) Each contractor is required to establish and maintain effective procedures to ensure that Reportable Items made in the performance of work under contracts of NASA are identified, reported, and when appropriate, patent applications filed, and that the Government's rights therein are established and protected. When it is determine after the award of a contract that the contractor or subcontractor may not have a clear understanding of the rights and obligations of the parties NASA PROCUREMENT REGULATION 9.109-2 9-1:34 PATENTS, DATA, AND COPYRIGHTS under the clause, a post-award orientation conference or letter should be used to explain these rights and obligations. When reviewing a contractor's procedures, particular attention shall be given to ascertaining their effectiveness for identifying and disclosing Reportable Items and Subject Inventions. (b) During the period of performance of each contract or subcontract the contractor or subcontractor shall submit to the New Technology Representative (or any other representative designated by the contracting officer) all reports of Reportable Items, interim reports, subcontract identification, and other information in the manner required by the clause; and upon the completion of the work under the contract or subcontract the final report as required by the clause. Reporting of Reportable Items promptly and before the com pletion of contract work, and the prompt submission of the final report upon completion of contract work, will aid New Technology clearance, Timely submission of annual interim reports, where contracts cover a period of more than one year, will also facilitate clause administration and expedite final clearance. 9.109-3 Follow-Up by Government. In order to ensure compliance by the with the obligations of the clause: contractor re (a) The New Technology Representative shall view, as necessary, the technical progress of work performed under the contract to ascertain whether the contractor and his subcontractors, where appropriate, are complying with the reporting requirements of the clause. This effort should be directed primarily toward contracts and subcontracts which, by the nature of the experimental, developmental, research, or other work to be formed, or the dollar amounts involved, are likely to produce Reportable Items of significant tity or quality, or toward contracts and subcontracts where there is reason to believe the contractors may not be complying with their contractual obligations. Other contracts and subcontracts should be spot-checked when feasible. These follow-up activities may include: (1) Reviewing technical reports submitted by the contractor; (2) Requesting the Patent Representative to check sources for patents issued to the contractor in fields related to his Government contracts; 9.109-3 30-156 0-79-27 CFR TITLE 41 CHAPTER 18 INVENTIONS, INNOVATIONS, AND PATENTS (3) Interviewing contractor personnel regarding work under the contract, observing the work onsite, and inspecting laboratory notebooks and other records of the contractor related to work under the contract; (4) Interviewing agency technical personnel concerning novel developments, in contracts under their cognizance; and (5) Ensuring that the contractor is prompt in submitting the reports of Reportable Items, interim reports, subcontract identification, and final reports required by the clause. a each (b) The New Technology Representative shall forward to the Patent Representative copies of all contractors' and subcontractors' written reports of Reportable Items, and a copy of the written statement, if any, submitted with the report of the Reportable Item. The New Technology Representative shall consult with the Patent Representative whenever a question arises as to whether given Reportable Item is to be considered a Subject Invention or whether it was made in the performance of work under the contract. All correspondence relating to inventions and waivers will also be forwarded to the Patent Representative. (c) The Patent Representative shall review Reportable Item to ascertain whether it is to be considered a Subject Invention, obtain any minations required by paragraph (b) of the clause, and so notify the contractor. As to any Subject Invention, the Patent Representative shall ensure that the contractor has provided sufficient information to protect the Government's rights and interests therein, including, as required, information and documents necessary for the preparation, filing, and prosecution of patent applications, determinations of inventorship, and the preparation of instruments establishing the Government's rights therein. The Patent Representative shall also, as necessary, conduct selected reviews of the nature set forth in paragraph (a), above, to ensure that Subject Inventions are identified, adequately documented, and timely reported. (d) Upon receipt of the final report required by the clause, and upon determination that the conwork is complete, the New Technology Representative shall determine whether the contractor has complied with the reporting requirements of the clause. If so, the New Technology Representative shall certify compliance, obtain the Patent NASA PROCUREMENT REGULATION 9.109-3 |