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thes in the art to which the invention pertains & a clear understanding of the nature, purpose, is months from the date of the contract listing

(d)(1) of this clause may be revoked or mod (111) A inal report 1 within 3 months after Selfiled at the discretion of the agency to the completion of the contract work, listing all

extent the Contractor or his domestic subsid Subject Inventions or certifying that there

Taries or affiliates have falled to achieve the were no such Inventions. a practical application of the invention in that (3) The Contractor shall obtain patent 2t, foreign country.

agreements to effectuate the provisions of (3) Before modification or revocation of this clause from all persons in his employ the license, pursuant to paragraph (d) (2) of who perform any part of the work under this this clause, the agency shall furnish the Con contract except nontechnical personnel, such

tractor a written notice of its intention to as clerical employees and manual laborers. a modify or revoke the license, and the Con (4) The Contractor agrees that the Gov

tractor shall be allowed 30 days (or such ernment may duplicate and disclose Subject longer period as may be authorized by the Invention disclosures and all other reports agency for good cause shown in writing by and papers furnished or required to be fur

the contractor) after the notice to show nished pursuant to this clause. 400 cause why the license should not be modified

(f) Forfeiture of rights in unreported SubDic or revoked. The Contractor shall have the

ject Inventions. (1) The Contractor shall forright to appeal, in accordance with pro feit to the Government all rights in any 2231 cedures prescribed by the agency, any deci Subject Invention which he falls to disclose

slon concerning the modification or revoca to the Contracting Officer within 6 months tion of his license.

after th time he: 31 (e) Invention, identification, disclosures, (1) Files or causes to be filed & United se poa' and reports. (1) The Contractor shall estaba

States or foreign application thereon; or 14323i lish and maintain active and effective pro

(11) Submits the final report required by 2321 cedures to ensure that Subject Inventions

paragraph (e) (2) (111) of this clause, which . are promptly identified and timely disclosed,

ever is later. 140. These procedures shall include the main

(2) However, the Contractor shall not foran tenance of laboratory notebooks or equiva

felt rights in a Subject Invention 11, within que : lent records and any other records that are

the time specified in (1) (1) or (1) (11) of Es reasonably necessary to document the con

this paragraph (f), the Contractor: 2 ception and/or the first actual reduction to

(1) Prepared a written decision based upon practice of Subject Inventions, and records

a review of the record that the invention which show that the procedures for identify= wing and disclosing the inventions are fol

was neither conceived nor first actually re3:2** lowed. Upon request, the Contractor shall

duced to practice in the course of or under ceci al furnish the Contracting Officer a description

the contract; or Een of these procedures so that he may evaluate

(11) Contending that the invention is not is and determine their effectiveness.

a Subject Invention, he nevertheless dis(2) The Contractor shall furnish the Con

closes the invention and all facts pertinent Ex: tracting Officer:

to his contention to the Contracting Officer;

or (1) A complete technical disclosure for each - Subject Invention within 6 months after

(111) Establishes that the failure to dis2292) conception or first actual reduction to prac

close did not result from his fault or CORTI tice whichever occurs first in the course of or

negligence. 2:under the contract, but in any event prior

(3) Pending written assignment of the be to any on sale, public use, or publication of

patent applications and patents on a Sub- such invention known to the Contractor. The

ject Invention determined by the Contracting escopera disclosure shall identify the contract and in

Officer to be forfeited (such determination en ventor and shall be sufficiently complete in

to be & final decision under the Disputes technical detall and appropriately illustrated

Clause), the Contractor shall be deemed to at by sketch or diagram to convey to one skilled

hold the invention and the patent applications and patents pertaining thereto in trust

for the Government. The forfeiture provision operation, and, to the extent known, the

of this paragraph (1) shall be in addition to physical, chemical, biological, or electrical

and shall not supersede other rights and characteristics of the invention;

remedies which the Government may have (11) Interim reports 1 at least every 12

with respect to Subject Inventions.

(g) Examination of records relating to Subject Inventions for that period and certi

inventions. (1) The Contracting Officer or fying that:

his authorized representative until the ex(A) The Contractor's procedures for iden

piration of 3 years after final payment under tifying and disclosing subject Inventions as

this contract shall have the right to examine required by this paragraph (e) have been

any books (including laboratory notebooks). followed throughout the reporting period;

records, documents, and other supporting and

data of the Contractor which the Contract(B) All Subject Inventions have been dis

ing Officer reasonably deems pertinent to closed or that there are no such inventions;

the discovery or identification of Subject and

Inventions to determine compliance with the requirements of this clause.

(2) The Contracting Officer shall have the * Agency may specify form,

right to review all books (including labora

$ 1-9.107-5

Title 41—Public Contracts, Property Management

tory notebooks), records and documents of being awarded a subcontract, regardless of the Contractor relating to the conception or tier. first actual reduction to practice of inven (2) Unless otherwise authorized or die tions in the same field of technology as the rected by the Government Contracting work under this contract to determine Officer, the Contractor shall include this whether any such Inventions are Subject Patent Rights clause modified to identify the Inventions I the Contractor refuses or falls parties in any subcontract hereunder if & to:

purpose of the subcontract 18 the conduct of (1) Establish the procedures of paragraph experimental, developmental, or research (e) (1) of this clause; or

work. In the event of refusal by a Subcon(11) Maintain and follow such procedures; tractor to accept this clause, or if in the or

opinion of the Contractor this clause is in(111) Corrector eliminate any material consistent with the policy set forth in 41 deficiency in the procedures within thirty CFR 1-9.107-3, the Contractor: (30) days after the contracting Officer noti

(1) Shall promptly submit & written des the Contractor of such a deficiency. notice to the Government Contracting Officer

(h) Withholding of payment (Not appli setting forth reasons for the Subcontractor's cable to Subcontracts). (1) Any time before refusal and other pertinent Information final payment of the amount of this con which may expedite disposition of the tract, the Contracting Officer may, 11 he matter; and deems such action warranted, withhold pay (11) Shall not proceed with the subconment until a reserve not exceeding $50,000 tract without the written authorization of or 5 percent of the amount of this contract, the Government Contracting Officer. whichever is less, shall have been set aside

(3) The Contractor shall not, in any sub11 in his opinion the Contractor falls to:

contract or by using a subcontract as con(1) Establish, maintain, and follow effec sideration therefor, acquire any rights in his tive procedures for identifying and disclos Subcontractor's Subject Invention for his ing Subject Inventions pursuant to para own use (as distinguished from such rights graph (e) (1) of this clause; or

as may be required solely to fulfill his con(11) Disclose any Subject Invention pur tract obligations to the Government in the suant to paragraph (e) (2) (1) of this clause; performance of this contract). or

(4) All invention disclosures, reports, in(111) Deliver acceptable interim reports struments, and other information required pursuant to paragraph (e) (2) (11) of this to be furnished by the Subcontractor to the clause; or

Government Contracting Officer under the (lv) Provide the information regarding provisions of a Patent Rights clause in any subcontracts pursuant to paragraph (i) (5) of subcontract hereunder may, in the discretion this clause.

of the Government Contracting Officer, be The reserve or balance shall be withheld furnished to the Contractor for transmission until the Contracting Officer has determined to the Government Contracting Officer. that the Contractor has rectified whatever (5) The Contractor shall promptly notify deficiencies exist and has delivered all re the Government Contracting Officer in writports, disclosures, and other information re ing upon the award of any subcontract conquired by this clause.

taining a Patent Rights clause by identifying (2) Final payment under this contract the Subcontractor, the work to be pershall not be made before the Contractor de formed under the subcontract, and the dates llvers to the Contracting Officer all disclo of award and estimated completion. Upon sures of Subject Inventions required by request of the Government Contracting paragraph (e) (2) (1) of this clause, and an Officer, the Contractor shall furnish a copy acceptable final report pursuant to (e) (2) of the subcontract. If there are no subcon(111) of this clause.

tracts containing Patent Rights Clauses, a (3) The Contracting Officer may, in his negative report shall be included in the final discretion, decrease or increase the sums report submitted pursuant to paragraph (e) withheld up to the maximum authorized (2) (111) of this clause. above. If the Contractor is a nonprofit or (6) The Contractor shall identify all subganization the maximum amount that may ject Inventions of the Subcontractor of be withheld under this paragraph shall not which he acquires knowledge in the perexceed $50,000 or 1 percent of the amount of formance of this contract and shall notify this contract whichever is less. No amount the Government Contracting Officer shall be withheld under this paragraph while promptly upon the identification of the the amount specified by this paragraph is inventions. being withheld under other provisions of the (7) It is understood that the Government contract. The withholding of any amount is a third party beneficiary of any subconor subsequent payment thereof shall not be tract clause granting rights to the Governconstrued as a walver of any rights accruing ment in Subject Inventions, and the Conto the Government under this contract.

tractor hereby assigns to the Government all (1) Subcontracts. (1) For the purpose of rights that he would have to enforce this paragraph the term "Contractor" the Subcontractor's obligations for the benemeans the party awarding a subcontract and fit of the Government with respect to Subthe term "Subcontractor" means the party ject Inventions. The Contractor shall not

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Fact, it be obligated to enforce the agreements of the Gorernment) and such other papers &

any Subcontractor hereunder relating to the are deemed necessary to rest in the Gorerne

obligations of the Subcontractor to the Gor ment the entire richi, tite, and interest eint en ernment in regard to Subject Inventions. enable the Gorernment to app's for and

prosecute patent applications crering the (b) Patent Rights clause-Retention

invention in this or the foreign weaty. by the Contractor. When the agency has

respectively, or otherwise esta dish its own. determined that a contract falls within ership of the invention, Hal, $ 1-9.107-4(a)(3), the Patent Rights (1) Füing of domestic patent applicata Ell bill clause in § 1-9.107-5(a) shall be in (1) With respect to each Subject areasioa 32,6! cluded in the contract, except that the

in which the contractor elects to rssin de name of the clause shall be changed to

mestic rights pursuant to paragraph of

this clause, the Contractor shall hare s do"Patent Rights—Retention by the Con

mestic patent application Aled within 6 tractor", paragraph (b) of that clause

months after submission of the inrention shall be replaced by the following para disciosure pursuant to paragraphie (21) graph (b), and the following paragraphs of this clause or such longer period as may (j) and (k) shall be added:

be approved by the Contracting Oncer for

good cause shown in writing by the Con(b) Allocation of principal rights. (1) The

tractor. With respect to the invention, the Contractor may retain the entire right, title,

Contractor shall promptly notify the Con. to thi and interest throughout the world or in any

tracting Officer of any decision not to file an arthrie country thereof in and to each Subject In

application. Ofte vention disclosed pursuant to paragraph (e)

(2) For each Subject Inrention on which a not tr (2) (1) of this clause, subject to the rights

patent application is filed by or on behalt obtained by the Government in paragraph

of the Contractor, the Contractor shall: Dret (c) of this clause. The Contractor shall in

(1) Within 2 months after the fling or clude with each Subject Invention disclosure an election as to whether he will retain the

within 2 months after submission of the

invention disclosure if the patent applicaentire right, title, and interest in the inven

tion previously has been fled, deliver to the tion throughout the world or any country

Contracting Omcer a copy of the application thereof. (2) Subject to the license specified in para

as filed including the aling date and serial

number; natas graph (d) of this clause, the Contractor

(11) Include the following statement in the agrees to convey to the Government, upon

second paragraph of the specification of the request, the entire domestic right, title, and Interest in any Subject Invention when the

application and any patents issued on a

Subject Invention, "The Government has Contractor: (1) Does not elect under paragraph (b) (1)

rights in this invention pursuant to Contract No.

(or Grant No. of this clause to retain such rights; or

---a) awarded (11) Fails to have a United States patent

by (identify the agency).";

(11) within 6 months after Aling the apapplication filed on the invention in accord

plication or within 6 months after submitance with paragraph (1) of this clause, or decides not to continue prosecution of such

ting the invention disclosure if the applionapplication; or

tion has been filed previously, dellver to the

Contracting Officer a duly executed and ap(111) At any time, no longer desires to retain title.

proved Instrument on a form specified by the (3) Subject to the license specified in para

Government fully conärmatory of all rights

to which the Government is entitled, and graph (d) of this clause, the Contractor agrees to convey to the Government upon

provide the agency an irrevocable power to request the entire right, title, and interest

inspect and make copies of the patent apin any Subject Invention in any foreign

plication filed; country if the Contractor:

(iv) Provide the Contracting Omeer with (1) Does not elect under paragraph (b) (1)

& copy of the patent within 2 months after of this clause to retain such rights in the

a patent is issued on the application; and country; or

(v) Not less than 30 days before the ox(11) Falls to have a patent application filed

piration of the response period for any 10In the country on the invention in accord

tion required by the Patent and Trademark ance with paragraph (k) of this clause, or

Office, notify the agency of any doolsion not decides not to continue prosecution or to pay

to continue prosecution of tho application any maintenance fees covering the invention.

and deliver to the agency executed instruTo avoid forfeiture of the patent application

ments granting the Government a power of or patent, the Contractor shall notify the

attorney. Contracting Officer not less than 60 days

(8) For each Subject Invention in which before the expiration period for any action

the Contractor initially elects not to retain required by the foreign patent office.

principal domestic rights, the Contractor (4) A conveyance requested pursuant to

shall inform the Contracting Oncer promptparagraph (b) (2) or (3) of this clause shall

ly in writing of the date and Identity of any be made by delivering to the Contracting Officer duly executed Instruments (prepared by

on sale, public use, or publication of the

invention which may constituto a statutory

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within the corporate structure of which the Centractor is & part and shall include the

& cor

ligated to do so at (2) When the agency head wishes to

awarded. This lice reserve the right to make the determina

only with approv tion to sublicense foreign governments

when transferred t pursuant to any treaty or agreement of the Contractor's until after the invention has been iden

vention pertains. tified, a sentence shall be added to the

(h) Irrevocabl end of paragraph (c)(1) of the Patent

ventions previou Rights clauses in $ 1-9.107-5 as follows:

duced to practic This license shall include the right of cides that the cos the Government to sublicense foreign gov

irrevocable, non truments pursuant to any treaty or agree

free license for meat 1 the agency head determines after

of each invention the invention has been identified that it Tald be in the national Interest to acquire

to practice unde this right

conceived and co

practice by the (1) Minimum rights to Contractor

effective date of (1pon request). When the agency deter

tract, the follow mines that the contractor may reserve a

shall be added to revocable, nonexclusive, royalty-free 11cense in inventions made in the course

Patents Rights cl d'or under the contract, only upon a re

(4) In addition quest by the contractor for the reten

graph (d) (1) of th tam of such a license, paragraph (d) (1)

reserves an irrevoca of the clauses in $ 1-9.107-5 shall be re

free license in each placed with the following paragraph

in any country and each Subject Inve

duced to practice k (4) Minimum rights to the Contractor. (1)

the effective date of The Contractor may reserve upon request &

shall extend to ti pTocable, nonexclusive, royalty-free license

subsidiaries and af In each patent application illed in any coun

corporate structure is a part and shall sublicenses of the the Contractor was at the time the co license shall be assi by the agency excer part of the Contra

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author Contractor. The information to be submitted or any for a greater rights determination is spect

iled in 41 CFR 1-9.109–8. Each determingcations. tion of greater rights under this contract vention normally shall be subject to paragraph (c) n prin

of this clause and to the reservations and arsuant conditions deemed to be appropriate by the Le Con agency. -n filed accord

(d) License rights of States and muregula

nicipal governments. lowing (1) When the agency head or his duly

authorized designee determines at the

time of contracting that it would not be e filed

in the public interest to acquire a paid-up I such

license in inventions made in the course from a dis

of or under the contract for States and (1) of domestic municipal governments, para

graph (c) (1) of the Patent Rights ase is clauses in § 1-9.107-5 shall be replaced s and with the following paragraph (c) (1): tions d by

(1) Hereby grants to the Government a nonexclusive, nontransferable, pald-up 1 cense to make, use, and sell each Subject Invention throughout the world by or on

behalf of the Government of the United Con

States (including any Government agency). shall (2) When the agency head or bis eign duly authorized designee decides to recion.

serve the right to make the determina. red.

tion that it would not be in the public chat

interest to acquire a paid-up license in s

Subject Invention for States and do-7-5

mestic municipal governments until af. ex

ter the invention has been identified, I be paragraph (c) (1) of the Patent Rights ed"

clauses in § 1-9.107-5 shall be replaced mall with the following paragraph - (c)(1): eph (1) Hereby grants to the Government 8

nonexclusive, nontransferable, pald-up

cense to make, use, and sell each Subject AS

Invention throughout the world by or on b

behalf of the Government of the United tor

States (including any Government agency),
States and domestic municipal governments

, h

unless the agency head determines after the nat

invention has been identified that it would

not be in the public interest to acquire the 1s

license for States and domestic municipal

governments.
he
th (e) Right to sublicense foreign gove

ernments. (1) When the agency head of
his duly authorized designee determines

at the time of contracting that it would
la be in the national interest to acquire
r-

the right to sublicense foreign govern
ha

ments pursuant to any treaty or agree.
ment, a sentence shall be added to the
end of paragraph (c) (1) of the Patent
Rights clauses in § 1-9.107-5 as follows:

This license shall include the right of the
Government to sublicense foreign govern:
ments pursuant to any treaty or agreement

with such foreign governments. 498

(4),

cor

try on a Subject Invention and any resulting patent in which the Government acquires tole. The license shall extend to the Connector's domestic subsidiaries and afillst28any, within the corporate structure which the Contractor 18 a part and shall melude the right to grant sublicenses of the Invention perta the same scope to the extent the Contractor Tu legally obligated to do so at the time the

(1) Publication contract was awarded. The license shall be

Sures. (1) When signable only with approval of the agency

that it is in the szent to the successor of that part of the

parties to withhol Contractor's business to which the invention

cation of inform

disclosure so that (e) Minimum riohts to Contractor (tt- foreign patent app Pepocable). When the agency determines

tion, the followi that the contractor may reserve an irrev added to paragrar cable. nonexclusive, royalty-free li- Rights clauses in 3 ense in the inventions resulting from graph (b) (2) De contract

, paragraph (d) of the Path clauses in § 1-9.10 ent Rights clauses of $ 1-9.107-5 shall

If the Contractor e replaced with the following paragraph application on a Sut

ernment agrees, upc (0) The Contractor reserves an irrevocable,

Contractor, to use it Seaclusive, royalty-free license in each

publication of suc until & patent app! but in no event sha employees bellabl

thereof. any, (2) When the

restrict the contr invention disclosur

patent application

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patent application filed in any country on a Subject Invention and any resulting patent a whileh the Government acquires title. The bease shall extend to the Contractor's domasthe subsidiarles and affiliates, 11

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Fight to grant sublicenses of the same scope to the extent the Contractor was legally ob

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atral patent application filed in any country on a

(2) When the agency head wishes to ligated to do so at the time the contract was reserve the right to make the determina

awarded. This license shall be transferable tion to sublicense foreign governments

only with approval of the agency, except

when transferred to the successor of that part pursuant to any treaty or agreement

of the Contractor's business to which the inuntil after the invention has been iden vention pertains. * Spring tified, a sentence shall be added to the

(h) Irrevocable license on Subject Inend of paragraph (c)(1) of the Patent

ventions previously constructively reRights clauses in § 1-9.107-5 as follows:

duced to practice. When an agency deThis license shall include the right of cides that the contractor may reserve an y her the Government to sublicense foreign gove

irrevocable, nonexclusive and royaltyernments pursuant to any treaty or agree

free license for practice in this country ment 11 the agency head determines after the invention has been identified that it

of each invention first actually reduced acquisit would be in the national Interest to acquire

to practice under a contract which was this right.

conceived and constructively reduced to

practice by the contractor prior to the (f) Minimum rights to Contractor

effective date of execution of the con(upon request). When the agency deter

tract, the following paragraph (d) (4) mines that the contractor may rve a

shall be added to paragraph (d) of the revocable, nonexclusive, royalty-free 1

Patents Rights clauses in § 1-9.107-5: cense in inventions made in the course the Cee of or under the contract, only upon a re

(4) In addition to the provisions of paraTable , y quest by the contractor for the reten

graph (d) (1) of this clause, the Contractor

reserves an irrevocable, nonexclusive, royaltytion of such a license, paragraph (d) (1)

free license in each patent application filed of the clauses in 8 1-9.107-5 shall be re in any country and any resulting patent on placed with the following paragraph each Subject Invention constructively re(d) (1):

duced to practice by the Contractor prior to

the effective date of this contract. The license (d) Minimum rights to the Contractor. (1)

shall extend to the Contractor's domestic The Contractor may reserve upon request & subsidiaries and affiliates, if any, within the revocable, nonexclusive, royalty-free license

corporate structure of which the Contractor In each patent application Alled in any coun is a part and shall include the right to grant 3-up le try on a Subject Invention and any resulting sublicenses of the same scope to the extent Statai patent in which the Government acquires the Contractor was legally obligated to do so mente title. The license shall extend to the Con. at the time the contract was awarded. The been tractor's domestic subsidiaries and amil license shall be assignable only with approval

ates, if any, within the corporate structure by the agency except to the successor of that of which the Contractor is a part and shall part of the Contractor's business to which include the right to grant sublicenses of the invention pertains. the same scope to the extent the Contractor was legally obligated to do so at the time the

(1) Publication of invention discloble , contract was awarded. The license shall be

sures. (1) When the agency determines Ell est assignable only with approval of the agency

that it is in the best interest of the except to the successor of that part of the parties to withhold the release or publiContractor's business to which the invention cation of information in an invention pertains.

disclosure so that the contractor may file (g) Minimum rights to Contractor (ir

foreign patent applications on the invenrevocable). When the agency determines

tion, the following sentence shall be that the contractor may reserve an irrev

added to paragraph (e) (4) of the Patent ocable. nonexclusive,

royalty-free li

Rights clauses in § 1-9.107-5 and to paracense in the inventions resulting from

graph (b) (2) of the Patent Rights the contract. paragraph (d) of the Pat

clauses in § 1-9.107–6: ent Rights clauses of $ 1--9.107-5 shall If the Contractor is to file a foreign patent be replaced with the following paragraph

application on a Subject Invention, the Gov

ernment agrees, upon written request of the (d) The Contractor reserves an Irrevocable,

Contractor, to use its best efforts to withhold nonexclusive, royalty-free license in each

publication of such invention disclosures

until a patent application is filed thereon, Subject Invention and any resulting patent

but in no event shall the Government or its in which the Government acquires title. The

employees bellable for any publication license shall extend to the Contractor's do

thereof. mestic subsidiaries and affiliates, if any, within the corporate structure of which the

(2) When the agency determines to Contractor is a part and shall include the

restrict the contractor's publication of right to grant sublicenses of the same scope

invention disclosures prior to the filing of to the extent the Contractor was legally ob

patent applications, the following para

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