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nt

State or Fede of & nonexclusive or exclusive license to

retention and
a responsible applicant(s) on terms that

this subpart.
are reasonable in the circumstances (i)
to the extent that the invention is re-

8 1-9.1074
quired for public use by governmental

(a) Selectio regulations, or (ii) as may be necessary

(1) Whenever
to fulfill health or safety needs, or (iii)

performed in
for other public purposes stipulated in
the contract.

sessions, Puer
(h) Whenever the principal or exclu Columbia has
sive rights in an invention remain in the of experiment
contractor, the Government shall nor-

search work, t
mally acquire:

policy in § 1-3 (1) At least a nonexclusive, nontrans- situation and ferable, pald-up license to make, use, and

tract a Patent sell the invention throughout the world

9.107–5 or 1by or on behalf of the Government of $ 1-9.107–5 she the United States (including any Gov

in contracts w emment agency) and States and do

in contracts wi mestic municipal governments, unless

calling for de the agency head or his designee deter clauses specif mines that it would not be in the public 1-9.107–6 may Interest to acquire the license for the ing for basic States and domestic municipal govern

nonprofit org ments; and

shall provide o (2) The right to sublicense any for- nity to show the elen government pursuant to any exist- posed for a con ing or future treaty or agreement if the

a particular p agency head or his designee determines

no event will it would be in the national interest to

state their willi

ernment princi (3) The principal or exclusive rights rights prior to a to the invention in any country in which posals of equiva

sented.

(2) The Pate

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or

reg the world in and to any resulting inven

tions. ract (c) Where the commercial interests

di of the contractor are not sufficiently blic

established to be covered by the criteria

specified in paragraph (b) of this sec-nce

tion, the allocation of rights shall be een made by the agency after the invention of has been identified, in a manner deemed

most likely to serve the public interest as -in

expressed in this policy, taking particu

larly into account the intentions of the me

contractor to bring the invention to a on

point of commercial application and the
guidelines of paragraph (a) of this sec.

tion, provided that the agency may ce: prescribe by regulation special situa

tions where the public interest in the y; availability of the inventions would best

be served by permitting the contractor he

to retain at the time of contracting greater rights than a nonexclusive

license. n

(d) In the situations specified in para1

graphs (b) and (c) of this section, when two or more potential contractors are judged to have presented proposals of equivalent merit, willingness to grant the Government principal

exclusive rights in resulting inventions will be an additional factor in the evaluation of the proposals.

(e) Where the principal or exclusive rights in an invention remain in the contractor, he should agree to provide written reports at reasonable intervals

, when requested by the Government, on the commercial use that is being made or is intended to be made of inventions made under Government contracts.

(f) Where the principal or exclusive rights in an invention remain in the contractor, unless the contractor, his licensee, or his assignee has taken effective steps within 3 years after a patent issues on the invention to bring the invention to the point of practical ap. plication, or has made the invention available for licensing royalty-free of on terms that are reasonable in the cir• cumstances, or can show cause why he should retain the principal or exclusive rights for a further period of time, the Government shall have the right to require the granting of a nonexclusive or exclusive license to a responsible appll. cant(s) on terms that are reasonable under the circumstances.

(g) Where the principal or exclusive rights to an invention are retained by the contractor, the Government shall have the right to require the granting

5

acquire the right; and

the contractor does not elect to secure
a patent.

D) Whenever the principal or exclu- 107-5(a), excep
sve rights in an invention are acquired by

in $ 1-9.107-6(a the Government, there may be reserved the agency dete to the contractor a revocable or irrevo- mental, develop cable, nonexclusive, royalty-free license to be performed here the practice of the invention within $ 1-9.107 throughout the world; an agency may

vides that the C eserve the right to revoke such license title, under certe 10 that it might grant an exclusive li- ventions made i cense when it determines that some de- the contract sub are of exclusivity may be necessary to nonexclusive lic encourage further development and tractor. The ammercialization of the invention. greater rights t Where the Government acquires the

cense after an in principal or exclusive rights to an in- fied if the agen

criteria of $ 1-9. patent in a foreign country, the contrac- agency head

0. tor may retain such rights in any foreign

designee determi country in which he elects to secure &

cumstances exis patent

, subject to the Government's $ 1-9.107–3(a), rights set forth in paragraph (h) of this of the clause pres

may be appropria contractor retair nonexclusive lice specific inventior

(3) The Pat

vention and does not elect to secure &

section. 0) Nothing in this subpart shall be construed to confer immunity upon any Derson from the antitrust laws or from a charge of patent misuse, and no person ball be immune from the operation of $ 1-9.107–5(b) si

of a nonexclusive or exclusive license to State or Federal law by reason of the a responsible applicant(s) on terms that retention and use of rights pursuant to are reasonable in the circumstances (i) this subpart. to the extent that the invention is re

§ 1-9.107-4 Procedures. quired for public use by governmental regulations, or (ii) as may be necessary

(a) Selection of Patent Rights clause. to fulfill health or safety needs, or (iii) (1) Whenever a contract which is to be for other public purposes stipulated in

performed in the United States, its posthe contract.

sessions, Puerto Rico, or the District of (h) Whenever the principal or exclu Columbia has as a purpose the conduct sive rights in an invention remain in the of experimental, developmental, or recontractor, the Government shall nor search work, the agency shall apply the mally acquire:

policy in § 1-9.107-3 to the contracting (1) At least a nonexclusive, nontrans

situation and shall include in the conferable, paid-up license to make, use, and

tract a Patent Rights clause from 88 1sell the invention throughout the world 9.107-5 or 1-9.107–6. The clauses in by or on behalf of the Government of

§ 1-9.107-5 shall be used as appropriate the United States (including any Gov

in contracts with industrial concerns or ernment agency) and States and do

in contracts with nonprofit organizations mestic municipal governments, unless

calling for developmental work. The

clauses specified in the agency head or his designee deter

$8 1-9.107-5 or mines that it would not be in the public

1-9.107–6 may be used in contracts callinterest to acquire the license for the

ing for basic or applied research with States and domestic municipal govern

nonprofit organizations. Solicitations ments; and

shall provide offerors with an opportu(2) The right to sublicense any for

nity to show that the selected clause proeign government pursuant to any exist

posed for a contract is inappropriate for ing or future treaty or agreement if the

a particular procurement situation. In agency head or his designee determines

no event will contractors be asked to it would be in the national interest to

state their willingness to grant the Govacquire the right; and

ernment principal or exclusive patent (3) The principal or exclusive rights

rights prior to a determination that proto the invention in any country in which

posals of equivalent merit have been prethe contractor does not elect to secure

sented. & patent.

(2) The Patent Rights clause in 1-9.(1) Whenever the principal or exclu

107–5(a), except as otherwise provided sive rights in an invention are acquired by

in § 1-9.107-6(a), shall be used whenever the Government, there may be reserved

the agency determines that the experito the contractor a revocable or irrevo

mental, developmental, or research work cable, nonexclusive, royalty-free license

to be performed under the contract falls for the practice of the invention

within $ 1-9.107-3(a). This clause prothroughout the world; an agency may

vides that the Government shall acquire reserve the right to revoke such license

title, under certain circumstances, to inso that it might grant an exclusive li

ventions made in the course of or under cense when it determines that some de

the contract subject to the reservation of gree of exclusivity may be necessary to

nonexclusive license rights to the conencourage further development and

tractor. The contractor may retain commercialization of the invention.

greater rights than a nonexclusive liWhere the Government acquires the

cense after an invention has been identiprincipal or exclusive rights to an in

fied if the agency determines that the vention and does not elect to secure &

criteria of $ 1-9.109-6 are met. When the patent in a foreign country, the contrac

agency head or his duly authorized tor may retain such rights in any foreign

designee determines that exceptional circountry in which he elects to secure &

cumstances exist as provided for in patent, subject to the Government's

§ 1-9.107–3(a), paragraphs (b) and (1) rights set forth in paragraph (h) of this

of the clause prescribed in § 1-9.107–5(a) section.

may be appropriately modified so that the (j) Nothing in this subpart shall be

contractor retains greater rights than a construed to confer immunity upon any

nonexclusive license concerning all or person from the antitrust laws or from a specific inventions. charge of patent misuse, and no person (3) The Patent Rights clause in shall be immune from the operation of $ 1-9.107–5(b) shall be used whenever

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with paragraph (d) (1) in § 1-9.107-5

er

-S

e

ri the Government, States, and municipal erk governments. Paragraph (c)(1) in the pes Patent Rights clauses in § 1-9.107–5 sets

is forth such a license. When the agency 0

determines that it would not be in the

public interest in a particular contractn

ing situation to acquire a license for the r

Government of the scope in paragraph it.

(c) (1), this paragraph may be appro-
priately modified. The agency head or his
duly authorized designee may determine
at the time of contracting that it would

not be in the public interest to acquire k

such a license for States and municipal governments or may reserve the right to make this determination after the invention has been identified. When the determination is made or the right to make the determination is reserved, par. agraph (c) (1) of the Patent Rights clauses in § 1-9.107-5 shall be replaced with the appropriate paragraph in § 1-9.107-5(d).

(d) Right to sublicense foreign governments. Paragraph (c) of the Patent Rights clauses in § 1-9.107–5 does not provide the Government with the right to grant a sublicense in any inventions resulting from the contract to any foreign government pursuant to any treaty or agreement. The agency head or his duly authorized 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 has been identified. When the agency head makes or reserves the right to make this determination, the appropriate sentence in § 1-9.107–5(e) shall be included as part of paragraph (c) in the Patent Rights clauses of $ 1-9.107–5.

(e) Minimum rights to contractor. Paragraph (d) of the Patent Rights clauses of $ 1-9.107-5 specify the minimum rights retained by the contractor in inventions made in the course of or under the contract. Where appropriate, the agency may modify this Minimum Rights provision, whereby, the contractor reserves:

(1) A revocable, nonexclusive, royaltyfree license in the inventions, in which case paragraph (d) of $ 1-9.107–5(a) shall be included in the Patent Rights clauses in § 1-9.107–5;

(2) A revocable, nonexclusive, royalty-free license in the inventions only upon request by the contractor for reservation of such a license, in which case paragraph (d) (1) of the Patent Rights clauses in § 1-9.107-5 shall be replaced

tion by the cc tect the intere

the contractor (3) An irrevocable, nonexclusive, roy

ents by adding alty-free license in the inventions, in

by $ 1–9.107-5 which case paragraph (d) of the Patent

numbered pare Rights clauses in $ 1-9.107–5 shall be

(4) of the cle replaced with paragraph (d) in § 1-9.107-5(8); or

after paragrar (1) An irrevocable, nonexclusive, roy of $ 1-9.107-6.

been authorize alty-free license in inventions constructirely reduced to practice prior to the applications, ti efective date of the contract, in which restrict its puk mase paragraph (d) (4) of $ 1-9.107–5(h) tion in the rel shall be added to the Patent Rights in order to pr clauses in $ 1-9.107–5.

foreign applica () Subcontracts. (1) The policy ex In this event, tr pressed in $ 1-9.107-3 is applicable to (1) (1) should be prime contracts and to subcontracts re (4) of the Pater gardless of tier. The appropriate Patent 107–5, and to pay Rights clause prescribed by this subpart Rights clauses ir shall be included in all subcontracts hav (h) Deviation ng as a purpose the conduct of experi- the policy, proc mental, developmental, or research work. this subpart sha In general, the Patent Rights clause in visions of $ 1-1.0 the prime contract, with the exception of the withholding provision, will be ap

8 1-9.107–5 CI propriate for inclusion in such subcon

tracts (long tracts. Whenever the prime contractor

(a) Patent Ric Or a subcontractor considers the inclu- by the Governm son of the Patent Rights clause of the

has determined prime contract in a subcontract to be

within $ 1-9.107clause shall be in PATENTS RIGHTS

Go (a) Definitions. means any invent Contractor conceive to practice in the contract, and includ ess, machine, manu position of matter, improvement thereo

inconsistent with the policy expressed in 11-9.107-3, or a subcontractor refuses to accept & Patent Rights clause in his subcontract

, the matter shall be referred
to the agency contracting officer for reso-
bation prior to the award of the sub-
contract

. Upon such referral, the same
considerations and procedures followed
by the contracting officer in selecting the
Patent Rights clause included in the
prime contract shall be used in selecting
the Patent Rights clause to be included
in the subcontract.

(2) Contractors shall not use their
delity to award subcontracts as eco-
tomic leverage to acquire rights for
themselves in the inventions resulting

from subcontracts.

(D) Publication of invention disclo-
pures. The Patent Rights clauses of
11-9.107–5 and $1-9.107-6 specify in
Paragraph (e) (4) and (b) (2), respec-
trely

, that the Government may dupli-
late and disclose invention disclosures
temported under the contract. However,
the publication of the information in
en lovention disclosure by any party
bklore the filing of a patent application
bay create a bar to the filing of foreign
alent applications. The agency may re-
pret the publication of such informa-

which is or may b Patent Laws of the or any foreign count.

(2) "Contract" me ment, grant, or othe contract entered into of the Government contract is the condu velopmental, or resea

(3) "States and de ernments" means th States, the District of the Virgin Islands, A the Trust Territory and any political su thereof.

(4) "Government a ecutive department, slon, board, office, a authority, Governmer Government establish branch of the Gover States of America.

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with paragraph (d) (1) in 1-9.107–5 tion by the contractor in order to pro(f);

tect the interests of the Government or (3) An irrevocable, nonexclusive, roy the contractor in obtaining foreign patalty-free license in the inventions, in ents by adding the paragraph prescribed which case paragraph (d) of the Patent by $ 1-9.107-5(1) (2) as a consecutivelyRights clauses in $ 1-9.107–5 shall be numbered paragraph after pargraph (e) replaced with paragraph (d) in § 1-9. (4) of the clauses of g 1-9.107–5, and 107-5(g); or

after paragraph (b) (2) of the clauses (4) An irrevocable, nonexclusive, roy of § 1-9.107–6. Where the contractor has alty-free license in inventions construc been authorized to file foreign patent tively reduced to practice prior to the applications, the agency may desire to effective date of the contract, in which restrict its publication of the informacase paragraph (d) (4) of § 1-9.107-5(h) tion in the related invention disclosure shall be added to the Patent Rights in order to protect the filing of such clauses in § 1-9.107–5.

foreign applications by the contractor. (f) Subcontracts. (1) The policy ex In this event, the sentence in § 1-9.107-5 pressed in § 1-9.107-3 is applicable to (1) (1) should be added to paragraph (e) prime contracts and to subcontracts re (4) of the Patent Rights clauses in § 1-9. gardless of tier. The appropriate Patent 107–5, and to paragraph (b) (2) of Patent Rights clause prescribed by this subpart Rights clauses in 8 1-9.107–6. shall be included in all subcontracts hav (h) Deviations. Any departures from ing as a purpose the conduct of experi the policy, procedures, and clauses of mental, developmental, or research work. this subpart shall be subject to the proIn general, the Patent Rights clause in visions of § 1-1.009. the prime contract, with the exception

8 1-9.107-5 Clauses for domestic con. of the withholding provision, will be ap

tracts (long form). propriate for inclusion in such subcontracts. Whenever the prime contractor (a) Patent Rights clause-Acquisition or a subcontractor considers the inclu

by the Government. When the agency sion of the Patent Rights clause of the

has determined that a contract falls prime contract in a subcontract to be

within 1-9.107-4(a) (2), the following Inconsistent with the policy expressed in

clause shall be included in the contract. § 1-9.107–3, or a subcontractor refuses PATENTS RIGHTS-ACQUISITION BY THE to accept a Patent Rights clause in his

GOVERNMENT subcontract, the matter shall be referred

(a) Definitions. (1) "Subject Invention" to the agency contracting officer for reso

means any invention or discovery of the lution prior to the award of the sub Contractor conceived or first actually reduced contract. Upon such referral, the same to practice in the course of or under this considerations and procedures followed

contract, and includes any art, method, procby the contracting officer in selecting the

ess, machine, manufacture, design, or comPatent Rights clause included in the

position of matter, or any new and useful prime contract shall be used in selecting

Improvement thereof, or any variety of plant,

which is or may be patentable under the the Patent Rights clause to be included

Patent Laws of the United States of America in the subcontract.

or any foreign country. (2) Contractors shall not use their (2) "Contract" means any contract, agreeability to award subcontracts as eco ment, grant, or other arrangement, or subnomic leverage to acquire rights for

contract entered into with or for the benefit themselves in the inventions resulting

of the Government where a purpose of the from subcontracts.

contract is the conduct of experimental, de(g) Publication of invention disclo

velopmental, or research work. sures. The Patent Rights clauses of

(3) "States and domestic municipal gov

ernments" means the States of the United $ 1-9.107-5 and 81-9.107-6 specify in States, the District of Columbia, Puerto Rico, paragraph (e) (4) and (b) (2), respec the Virgin Islands, American Samoa, Guam, tively, that the Government may dupli the Trust Territory of the Pacific Islands, cate and disclose invention disclosures and any political subdivision and agencies reported under the contract. However,

thereof. the publication of the information in

(4) "Government agency" Includes an exan invention disclosure by any party

ecutive department, Independent commisbefore the Aling of a patent application

sion, board, office, agency, administration, may create a bar to the filling of foreign

authority, Government corporation, or other

Government establishment of the executive patent applications. The agency may re branch of the Government of the United strict the publication of such informa States of America.

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[graphic]

Chapter 1–Federal Procurement Regulations

ne en

ably accessible to the public. The Contrac

country reserved pursuant to paragraph 41–Public Contracts, Property Management ation" other public purposes stipulated in this 3 com contract; Le case (3) Shall submit written reports st reae of a

sonable intervals upon request of the Gores to

ernment during the term of the patent on Forked the Subject Invention regarding: ecessi

(1) The commercial use that is being made

or is intended to be made of the invention; !) As

and ractor

(H) The steps taken by the Contractor er

his transferee to bring the intention to the at the

point of practical application or to make the n, ex Invention available for icensing: ained b) (2)

(4) Agrees to refund any amounts received es royalty charges on any Subject Invention

in procurements for or on behalf of the Gove The

ernment and to provide for that refund in with

any instrument transferring rights to any retain

party in the invention; and lause

(5) Agrees to provide for the Governo

ment's paid-up license pursuant to parsIteria

graph (c)(1) of this clause in any instru• ermi.

ment transferring rights in a Subject Ingen

tion and to provide for the granting of Lo such

censes as required by (2) of this clause, and the first

for the reporting of utilization Information

as required by paragraph (c)(3) of this later

clause whenever the instrument transfers

principal or exclusive rights in any Subject -nger

Invention. cactIting Nothing contained in this paragraph (c)

be shall be deemed to grant to the Government -tion any rights with respect to any invention eter other than & Subject Invention. con (d) Minimum rights to the Contractor. (1) caph The Contractor reserves & revocable, noneto and clusive, royalty-free license in each patent the

application filed in any country on & Subject

Invention and any resulting patent in which Fou the Government scquires title. The license

In shall extend to the Contractor's domestie rin subsidiaries and affiliates, if any, within the

corporate structure of which the Contractor

is a part and shall include the right to grant 11 sublicenses of the same scope to the extent In.

the Contractor was legally obligated to do so

at the time the contract was awarded. The in license shall be transferable only with sp; tes

proval of the agency except when transferred

to the successor of that part of the Contracoli. tor's business to which the invention pero 11. tains. the (2) The Contractor's nonexclusive domes.

tic license retained pursuant to paragraph

(d)(1) of this clause may be revoked or ent modified by the agency to the extent necesnin sary to achieve expeditious practical applica

tion of the Subject Invention under 41 CPB of 101-4.103-3 pursuant to an application for on exclusive license submitted in accordance

with
41 CFR 101-4.104

3. This license shall he

not be revoked in that field of use and/or he the geographical areas in which the Contracre tor has brought the invention to the point

of practical application and continues to 1s make the benefits of the invention regson3

tor's nonexclusive license in any foreign

(d) (1) of this clause may be revoked or modited at the discretion of the agency to the extent the Contractor or his domestic subsidjarles or affiliates have failed to achieve the practical application of the invention in that foreign country.

(3) Before modlication or revocation of the license, pursuant to paragraph (d) (2) of this clause, the agency shall furnish the Con. tractor & written notice of Its intention to modify or revoke the license, and the Contractor shall be allowed 30 days (or such longer period as may be authorized by the Agency for good cause shown in writing by the Contractor) after the notice to show cause why the license should not be modified ar revoked. The Contractor shall have the right to appeal, in accordance with procedures prescribed by the agency, any deci. slon concerning the modification or revocation of his license.

(e) Invention, identification, disclosures, chd reports. (1) The Contractor shall estabfish and maintain active and effective procedures to ensure that Subject Inventions are promptly identified and timely disclosed. These procedures shall include the maintenance of laboratory notebooks or equivalent records and any other records that are reasonably necessary to document the conception and/or the first actual reduction to practice of Subject Inventions, and records

(111) A final re completion of Subject Inventic were no such inv

(3) The Cont agreements to this clause fron who perform any contract excepti as clerical emplo

(4) The Conts ernment may du Invention disclo and papers furn nished pursuant

(f) Forfeiture ject Inventions. felt to the Gov Subject Inventio to the Contracti after the time he

(1) Files or ce States or foreign

(11) Submits t paragraph (e) (2 ever is later.

(2) However, t. felt rights in a the time specific

cense

em.

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this paragraph (

(1) Prepared a

& review of the which show that the procedures for identify

was neither cond ng and disclosing the inventions are fol

duced to practice lowed. Upon request, the Contractor shall

the contract; or furnish the Contracting Officer a description

(11) Contendin of these procedures so that he may evaluate and determine their effectiveness.

& Subject Inver

closes the invent (2) The Contractor shall furnish the Con

to his contention tracting Officer:

ΟΓ
(1) A complete technical disclosure for each
Bubject Invention within 6 months after

(111) Establishe

close did not conception or first actual reduction to pracHce whichever occurs Arst in the course of or

negligence. under the contract, but in any event prior

(3) Pending w to any on sale, public use, or publication of

patent applicatio such Invention known to the Contractor. The

ject Invention det disclosure shall identify the contract and in

Officer to be forf Tentor and shall be sufficiently complete in

to be a final de technical detall and appropriately Illustrated

Clause), the Con by sketch or diagram to convey to one skilled

hold the inventio In the art to which the invention pertains &

tions and patents clear understanding of the nature, purpose,

for the Governme operation, and, to the extent known, the

of this paragraph physical , chemical, biological, or electrical

and shall not si remedies which with respect to s

(8) Examinati inventions. (1) his authorized r piration of 3 year this contract shal any books (inclu records, docume: data of the Cont Ing Officer reasc the discovery or Inventions to d the requirements

(2) The Contr right to review a

or

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characteristics of the invention;

(11) Interim reports ? at least every 12
months from the date of the contract listing
Subject Inventions for that period and certi-
lying that:
(A) The Contractor's procedures for iden-
tulging and disclosing subject Inventions as
required by this paragraph (e) have been
lollowed throughout the reporting perlod;
.(B) All Subject Inventions have been dis-
closed or that there are no such Inventions;

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'Agency may specify form.

or

494

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