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PATENTS, DATA, AND COPYRIGHTS

(e) Petitions for advance waiver of rights prior to execution of the contract submitted by organizations selected for negotiation of a contract and petitions for advance waiver of rights submitted by contractors within 30 days after execution of a contract, will be considered by the Board. Contracting officers should forward petitions submitted prior to execution of the contract to the installation Patent Counsel for processing; the Patent Counsel will then forward the petitions to the Board. If the Board finds that a petition submitted prior to execution of the contract qualified under the criteria set forth in Section 1245.104 of the regulations, it will recommend to the Administrator that waiver be granted and shall informa the contracting officer of the Administrator's determination with respect thereto. Should the Board, in considering a

petition for advance waiver of rights prior to the execution of the contract, determine that there is insufficient time or information or other reasons to permit it to make its findings and recommendations to the Administrator without unduly delaying execution of the contract, the Board, through installation Patent Counsel, will informa the contracting officer of its action and request him to notify the petitioner. The contractor may, within 30 days following execution of a contract, request the Board to reconsider the petition, either on the record or with any additional information which the contractor may care to furnish in

support of the original petition. Contractors that have submitted petitions within 30 days after contract execution will be notified directly by Board of its findings and proposed recommendation.

(9) Petitions for advance waiver should include sufficient information to permit the Board to make the specific findings under Section 1245.104(c)

(a) of the regulations. These findings relate to the purpose of the contract, the field of science or technology of the contract, the relative commercial versus Government funding in the identified field of science, the commercial position of the contractor relative to the contract work Or, if the contractor has not established such a commercial position, other facts which

may, nevertheless, qualify the contractor under the "special situations provisions of the regulations. addition, Section 1245, 104(b) of these regulations permit the Board to recommend

to

the

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INVENTIONS, INNOVATIONS, AND PATENTS

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Administrator the grant of waiver in exceptional circumstances when the Board is unable to make soma of the specific findings required by the regulations. In the event the petitioner seeks qualify his advance waiver under the exceptional circumstances provision of the regulations, sufficient information should be submitted

to

ade. quately support this finding.

(g) Advanced waiver of invention rights granted under Section 1245.104 of the regulations shall apply only to those inventions reported during the term of the applicable contract and upon which the contractor indicates that he has filed or intends to file an application for U. S. patent. The waiver shall extend to any division or continuation patent application provided the scope of the invention remains substantially the same that of the reported invention. An advance waiver of rights shall also extend to any contract changes, modifications or supplemental agreements so long as the purpose of the contract or

the scope

of work to be performed is not substantially altered.

(h) When the " New Technology clause of 9.107-5 is to be applicable to the procurement, the following provision will be included in the request for proposals :

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WAIVER OF RIGHTS TO INVENTIONS (FEBRUARY 1977)

(a) In accordance with the NASA Patent Waiver Regulations, 14 CFR Section 1245, Subpart 1, waiver of rights to any or all inventions made or which may be made under a NASA contract or subcontract may be requested at different time periods. Under Section 1245.104 of the regulations, advance waiver of rights to any or all inventions which may be made under a contract or subcontract may be requested prior to the execution of the contract or subcontract, or within 30 days after execution by the selected Contractor. Waiver of rights to an identified invention made and reported under contract or subcontract may be requested under 14 CFR Section 1245.105, even though a request for an advance waiver was not made or, if made, was not granted.

(5) If a proposer intends to petition NASA for the waiver of invention rights prior to contract execution, the petition for waiver should be presented wits the proposal. Forms which may be used in petitioning for waiver may be obtained from the

a

NASA PROCUREMENT REGULATION

9.109-6 PATENTS, DATA, AND COPYRIGHTS

NASA Inventions and contributions Board , National Aeronautics and Space Administration, Washington, DC 20546. The findings which must be made by the Board in order

to

recommend that a waiver be granted are set forth in 14 CFR Section 1245, Subpart 1.

(c) Petitions submitted with proposals selected for negotiation of a contract will be forwarded by the Contracting officer to the installation Patent Counsel and then to the Inventions and contributions Board. The Board will consider these petitions and where the Board makes the findings to support the waiver, the Board will recommend to the Administrator that waiver be granted, and will notify the petitioner and the contracting Officer of the Administrator's determination. The Contracting Officer will be informed by

the

Board whenever there is insufficient time or information or other reasons to permit a decision to be made without unduly delay ing the execution of the contract. In the latter event, the petitioner will be so notified by the contracting Officer. The petitioner may within 30 days following execution of the contract request the Board to reconsider the petition on the record or with any additional information he may care to furnish. The Board shall notify the petitioner of its action and if waiver is granted, the conditions, reservations, and ligations thereof will be included in the Instrument of Waiver.

(1) When NASA requests another government agency to perform work, of a type defined in 9.10 7-4, on behalf of NASA and it is contemplated that a contract will be awarded, instructions for transmito tal of petitions for waiver shall be provided to the other agency in accordance with 9.107-9(a) (5). The NASA Inventions and contributions Board will consider any petitions and recommend to the Administrator whether or not waiver should be granted. The Administrator's determination will be transmitted to the contractor and the contracting officor of the other agency.

(j) The Board shali inform the installation Patent Counsel of the decision of the Administrator to either grant or deny advance waiver of patent rights. The installation Patent Counsel shall notify the contracting officer and the New Technology Represontative of the Administrator's action.

9.109-6

CFR TITLE 41 CHAPTER 18

INVENTIONS, INNOVATIONS, AND PATENTS

9.110 Payment of Royalties,
The Government has acquired license

other rights under a large number of inventions as the result of Government-sponsored research and development. In order that the Government may determine whether the approval as an item of allowable cost of the payment of royalties by the contractor under license agreement is consistent with the rights which the Government has acquired, these payments of royalties by the contractor are allowable only to the extent authorized by the

the contracting officer. Accordingly, the Payment of Royalties clause set forth in

9.110 shall be included in all NASA cost-reimbursement type contracts.

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PAYMENT OF ROYALTIES (SEPTEMBER 1962)

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any

Payment by the Contractor of any sum for royalties or patent rights not included in the ordinary purchase price of supplies, materials, or components shall not constitute items of Allowable cost hereunder, unless and until approved by the Contracting Officer. Reimbursement to the Contractor on account of any such payments shall not be construed as

admission by the Government of the enforce ability, validity or scope of, or title

to of the patents involved, nor shall any such reimbursement constitute a waiver of any rights or defenses respecting such patents.

9.111 Reserved 7
9.112 Areserved
9.113 Proposal of Equivalent Merit.

When two ΟΙ more potential contractors are judged to have presented proposals of equivalent merit, willingness to permit the Government to acquire and retain title to resulting inventions will be an additional factor in the evaluation of the proposals. However, in no event will potential contractors be asked to state their willingness to grant the Government principal or exclusive patent rights prior to a determination that proposals

of equivalent rerit have been presented.

9.114 Facilities License. Where facilities are being constructed or acquIred for the first time under a contract, the following clause shall be included therein.

LICENSE FOR SUBSEQUENT USE (AUGUST 1963)

Whenever the contractor directly or by any

subcontractor intends under this contract either (1)

412

PATENTS, DATA, AND COPYRIGHTS

to acquire facilities for the account of the Government and to install such facilities or (11) to fabricate facilities, or to do both (1) and (ii), which facilities are for the purpose either (1) of producing a patented product, or (2) of producing a product in accordance with a patented or proprietary process, the Contractor, before doing so, shali notify the contracting Officer of his intention, so that consideration can be given to negotiating a license agreement for the use of such facilities by persons to whom the Government may subsequently sell or transfer the facilities. Such negotiation shall be for the purpose of determining the terms and conditions under which the contractor will grant to or obtain for the Government (in addition to the rights granted by any clause which may be included in this contract entitled " New Technology ") the right to convey to any purchaser or trans feree of all or a part of the facilities under this contract an irrevocable liconse to practice and cause to be practiced solely in the maintenance or operation of the facilities any and all inventions (whether or not patented) of the Contractor or a subcontractor hereunder incorporated in, or used by the Contractor or subcontractor in the operation of, the facilities acquired or fabricated by the Contractor for the account of the Government under this contract.

9.114

CFR TITLE 41 CHAPTER 18

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