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INVENTIONS, INNOVATIONS, AND PATENTS

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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 patent matters for the NASA installation concerned.

(3) The contracting officer shall:

(i) Furnish the New Technology Representative a copy of each contract (and modifications thereto) containing the clause, copies of the final technical report, interim technical progress reports,

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 ing their respective administration of the clause, Copies of documents which are appropriate for clusion in the general contract files shall be furnished to the contracting officer.

9.109-2 Follow-Up by Contractor.

Ta Each contractor is required to establish and maintain effective procedures to ensure that Reportable Itens made in the performance of work under contracts of NASA are identified, reported, and when appropriate, patent applications filed, and that the Government'g rights therein are established and protected. When it is determine. after the award of a contract that the contractor or subcontractor riay not have a clear understanding of the rights and obligations of the parties

NASA PROCUREMENT REGULATION

9.109-2

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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, interin 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 aic 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 contractor with the obligations of the clause:

(a) The New Technology Representative shall review, 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 performed, or the dollar amounts involved, are likely to produce Reportable Items of significant quantity or quality, or toward contracts and subcontracts where there is reason to believe tha 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,

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(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 conceming 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.

(b) The New Technology Representative shall forward to the Patent Ropresentative 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 each Reportable Item to ascertain whether it is to be considered a Subject Invention, obtain any determinations 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 contract work 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

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PATENTS, DATA, AND COPYRIGHTS

Representative's concurrence with such certification, and forward the certification to the contracting officer. Such determinations generally will require consultation with cognizant technical personnel.

(e) Either the New Technology Representative or the Patent Representative, in consultation with the other, may prepare opinions, maka determinations and otherwise advise the contracting officer with respect to any withholding of payment under paragraph (h) of the clause of 9.107-5. Either the New Technology Representative or the Patent Representative may represent the contracting officer for the purpose of examining

of examining the contractors books, records and other documents in accordance with paragraph (g) of the clause of 9.10 7-5, and take other authorized actions with respect to the rights of the Government under the clause of either 9.107-5 or 9.10 7-6. However, no action shall be taken by either the New Technology Representative or the Patent Representative which would constitute a final decision under the Disputes clause or involve a change or an increase in the work required to be performed under the contract, or which otherwise is outside the scope of obligations imposed upon the contractor by the contract.

(f) Release of final payment under the contract, and if applicable any reserve set aside under the withholding provisions of the clause for deficiencies and delinquent reporting not corrected as of the time of the submission of the final report by the contractor, shall not be approved by the tracting officer until receipt of the New Technology Representative's certification of compliance, and the Patent Representative's concurrence therewith, as specified in paragraph (d), above.

9.109-4 Remedies.

Ta) the contractor, for a contract containing the New Technology clause of 9.107-5, fails to establish, maintain, or

follow effective procedures for identifying and disclosing Reportable Items or other reports and information or fails to correct any deficiency after notice thereof, the contracting officer may require the contractor to make available for examination, books, records and documents relating to inventions, discoveries, improvements, or innovations in the same field of technology as the contract to enable a determination of whether there are such Reportable

Items, and may invoke the withholding provisions of the

con

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clause. Further, the contracting officer may invoke the withholding provisions of the clause if the contractor fails to report any reportable Item as required by the clause,

9.10 9-5 Reserved
9.109-6 Waiver of Rights to Inventions

Tal Pursuant to the NASA Patent Walver Regulations, 14 CFR Section 1245, Subpart 1, the Administrator may, in appropriate cases, grant a request for the waiver of rights to any or all inventions made or which may be made under a TIASA contract or subcontract. The conditions, reservations, and obligations of a waiver are set forth in the Waiver Regulations and will be included in the Instrument of Waiver.

(b) Under Section 1245. 104 of the Waiver Regulations, advance waiver of rights to any or all inventions which may be made under a contract may be requested prior to the execution of the contract, or within 30 days after execution of the contract by the contractor. Waiver of rights to an identified invention made and reported under a contract may be requested under 14 CFR Section 1245.105. Waiver of rights may be requested under any of these provisions even though a request under different provision was not made, of if made, was not granted. Waiver of foreign rights under 14 CFR Section 1245.106 may be requested concurrently with domestic rights or independently thereof.

(c) A request for the waiver of invention rignts is made in the form of a petition, the requirenents of which are specified in 14 CFR Section 1245.110. Petitions for advance waiver of rights presented prior to contract execution must be submitted through the contracting officer to the Inventions and Contributions board, National Aeronautics and Space Aciministration, Washington, DC 20546. All other petitions shall be submitted directly to this Board. Forms which may be used in petitioning for waiver of invention rights an: otier general infortilation pertaining there to may be obtained from the Board,

(d) Subcontractors and prospective subcontracwurs may petition for waivist of invention rights in the same manner as described in this Subpart for prime contractors. Petitions by subcontractors or prospective subcontractors may be silmitted directly to the Board, except that when a petition is made prior to the execution of a contract, it must be submitteri to the Board through the IASA contracting officer.

NASA PROCUREMENT REGULATION

9.109-6

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