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(short form). This clause may be used 41--Public Contracts, Property Management tively work, listing all Subject Inventions ar Ce) of certifying that there were no such Inventions, 107-5

(2) The Contractor agrees that the Gopatent

ernment may duplicate and disclose Subject Invention disclosures and all other re

ports and papers furnished or required to be terest furnished pursuant to this clause. r, the

(c) Allocation of principal rights. (1) The proval

Contractor agrees to assign to the Governelease

ment the entire right, title, and interest any throughout the world in and to each Subject Con

Invention, except to the extent that rights ehall.

are retained by the Contractor under para. 28068, graphs (c) (2) and (d) of this clause.

(2) The Contractor or the employee-inventor with authorization of the Contractor may retain greater rights than the noner.

clusive license provided in paragraph (d) o! rition this clause in accordance with the procelause dure and criteria of 41 CFR 1-9.109-6. A rese of quest for a determination of whether the ic or

Contractor or the employee-inventor is enniza

titled to retain such greater rights must be of a

submitted to the Contracting Officer at the

time of the first disclosure of the invention duc

pursuant to paragraph (b) (1) of this clause, or not later than 3 months thereafter or such longer period as may be authorized by the

Contracting Officer for good cause shown in neans

writing by the Contractor. The information to

be submitted for a greater rights determinaactor

tion is specified in 41 CFR 1-9.109-6. Each brac

determination of greater rights under the Fract,

contract shall be subject to the provisions

of paragraph (c) "Minimum rights acqulred ition cove

by the Government" of the clause in 41 CFR hich

1-9.107–6(a), and to the reservations and

conditions deemed appropriate by the agency. tent (d) Minimum rights to the Contractor

. any

The Contractor reserves a revocable, noner (1)

clusive, royalty-free license in each patent ting

application filed in any country on a Sub

ject Invention and any resulting patent in each which the Government acquires title

. Rey fter

ocation shall be in accordance with the

procedure of the clause in 41 CFR 1-9.107rac

(d) (2) and (3). urse ent

(e) Employee and Subcontractor agree ica

ments. Unless otherwise authorized in writPon ing by the Contracting Officer, the Contractar con

shall: atly

(1) Obtain patent agreements to effectupri

ate the provisions of this clause from all per on sons who perform any part of the work under the this contract except nontechnical personnel

such as clerical employees and manual the

laborers;

(2) Insert in each subcontract having ef. en perimental, developmental, or research work

as one of its purposes provisions making this 12 clause applicable to the Subcontractor and Ang his employees; and

(3) Promptly notify the Contracting of een cer of the award of any such subcontract by Ons providing him with a copy of the subcoz

tract and any amendments thereto. 23 ect (b) Patent Rights clause-Deferred

instead of the clause of 1-9.107-5(c) in 500

contracts for basic or applied research is documented with nonprofit organizations. When the such as licenses agency determines that & contract falls (e) Expeditio within 1-9.107-3(c) and that a short tion of such inve form Patent Rights clause is to be used pursuant to £ 1-9.107-4(a) (5), the Pat- $ 1-9.109–2 Fo

Each contract ent Rights clause set forth in {1-9.1076A) shall be included in the contract maintain effectiv except that the name of the clause shall that inventions r be changed to "Patent Rights-Deferred are identified, d (short form)"; and paragraph (c) (1) of propriate, paten that clause shall be replaced by the fol- that the Govern lowing paragraph (c) (1):

established and

determined after (1) After & Subject Invention is identified, the Contractor agrees to assign to the Gove

that the contract erament the entire right, title, and interest not have a clea thereln throughout the world except to the rights and obli extent that rights are retained by the Con- under a Patent tractor under paragraphs (c) (2) and (d) of award orientatic this clause.

should be used b: $1-9.107-7 Clause for foreign con

plain these right tracts

reviewing a co A Patent Rights clause shall be in

particular attent cluded in every contract having as one

certaining their of its purposes the conduct of experi

fying and disclos mental, developmental, or research work which is to be performed outside the

$ 1-9.109-3 F United States, its possessions, or Puerto

Each Govern Rico. The clauses authorized for do

take to ensure tractor with the

Patent subcontracts sho

mestic contracts in $$ 1-9.107–5 and Rights clause of 1-9.107–8 may be used or replaced by any should be directe other clause tailored to meet the require tracts and sub ments peculiar to the foreign procure- there is reason t ment.

may not be com $1-9.108 [Reserved]

tual obligations $1-9.109 Administration of

feasible. These Rights clauses.

include: $149.109-1 Patent rights follow-up.

(a) Reviewin It is important that the Government mitted by the co and the contractor know and exercise (b) Checking their rights in inventions conceived or sued to the cor Retually reduced to practice in the to his Governm course of or under Government con (c) Interview tracts in order to ensure their expedi- regarding work Hlous availability to the public, to enable serving the wol the Government, the contractor, and the laboratory note public to avoid unnecessary payment of of the contract royalties

, and to defend themselves the contract; a against claims and suits for patent in

(d) Intervie fringement. To attain these ends, con- personnel cor tracts having Patent Rights clauses ments in cont should be so administered that: (a) Inventions are identified, dis

zance. closed, and reported as required by the

[40 FR 19821, M

3, 1975] (b) The rights of the Government in

8 1-9.109-4 such inventions are established;

If the contr When appropriate, patent appli- Patent Rights cations are timely fled and prosecuted to establish, m by contractors or by the Government;

procedures for (d) The filing of patent applications inventions as

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clause- cations are timely filed and prosecuted

e non contracts for basic or applied research is documented by formal instruments Eres ter with nonprofit organizations. When the such as licenses or assignments; and

agency determines that a contract falls (e) Expeditious commercial utilizaes and at within § 1-9.107-3(c) and that a short tion of such inventions is achieved. ed er mange form Patent Rights clause is to be used

8 1-9.109–2 Follow-up by contractor. pursuant to § 1-9.107–4(a) (5), the Pat

Each contractor shall establish and ent Rights clause set forth in § 1-9.107sign to the

6(a) shall be included in the contract maintain effective procedures to ensure and te me except that the name of the clause shall that inventions made under the contract = extent d be changed to "Patent Rights—Deferred

are identified, disclosed, and when ap(short form)"; and paragraph (c) (1) of

propriate, patent applications filed, and " this dis that clause shall be replaced by the fol

that the Government's rights therein are of the clowing paragraph (c)(1):

established and protected. When it is

determined after the award of a contract (1) After a Subject Invention is identified, the Contractor agrees to assign to the Gov

that the contractor or subcontractor may ernment the entire right, title, and interest

not have a clear understanding of the CE with D

therein throughout the world except to the rights and obligations of the parties FR 143

extent that rights are retained by the Con under a Patent Rights clause, a postSon of the

tractor under paragraphs (c) (2) and (d) of award orientation conference or letter this clause.

should be used by the Government to exacting Cår § 1-9.107–7 Clause for foreign con

plain these rights and obligations. When tracts.

reviewing contractor's procedures, A Patent Rights clause shall be in

particular attention shall be given to ascluded in every contract having as one

certaining their effectiveness for identiof its purposes the conduct of experi

fying and disclosing inventions. -. The inita mental, developmental, or research work § 1-9.109–3 Follow-up by Government. er righter which is to be performed outside the

Each Government agency shall underCFR 1934 United States, its possessions, or Puerto take to ensure compliance by the cone rights o Rico. The clauses authorized for do

tractor with the obligations of the Patent et to the mestic contracts in $$ 1-9.107–5 and Rights clause of the contract. This effort zum nieli1-9.107-6 may be used or replaced by any should be directed primarily toward con

other clause tailored to meet the require tracts and subcontracts about which ments peculiar to the foreign procure there is reason to believe the contractors ment.

may not be complying with their contrac8 1-9.108 [Reserved]

tual obligations. Other contracts and 8 1-9.109 Administration

of
Patent

subcontracts should be spotchecked when Rights clauses.

feasible. These follow-up activities may

include: § 1-9.109-1 Patent rights follow-up.

(a) Reviewing technical reports subIt is important that the Government mitted by the contractor;

and the contractor know and exercise (b) Checking sources for patents isubcontracting their rights in inventions conceived or sued to the contractor in fields related authoriti actually reduced to practice in the to his Government contracts; Zicer , the most course of or under Government con (c) Interviewing contractor personnel

tracts in order to ensure their expedi regarding work under the contract, ob-
tious availability to the public, to enable serving the work on site, and inspecting
the Government, the contractor, and the laboratory notebooks and other records
public to avoid unnecessary payment of of the contractor related to work under
royalties, and to defend themselves the contract; and
against claims and suits for patent in (d) Interviewing agency technical
fringement. To attain these ends, con personnel concerning novel develop-
tracts having Patent Rights clauses ments in contracts under their cogni-
should be so administered that:

zance.
(a) Inventions are identified, dis (40 FR 19821, May 7, 1975; 40 FR 28068, July
closed, and reported as required by the 3, 1975)
contract clauses;

8 1-9.109-4 Remedies.
(b) The rights of the Government in
such inventions are established;

If the contractor operating under the (c) When appropriate, patent appli

Patent Rights clauses of $ 1-9.107-5 fails

to establish, maintain, or follow effective by contractors or by the Government: procedures for identifying and disclose (d) The filing of patent applications

inventions as required by the P

che clone

priate by the

to the et & reposh

country resultibes acquires !

cordant

eemena 1 clause fra t of the me cechnical

Jees ud!

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from such patent application, subject to the
reservation of the following license, If any, to
the Contractor.

The license reserved to the Contractor shall
extend to the Contractor's domestic subsidi-
aries and affiliates, if any, within the cor-
porate structure of which the Contractor is
a part and shall include the right to grant
sublicenses of the same scope to the extent
the Contractor was legally obligated to do so
at the time the contract was awarded. The
license shall be transferable only with ap-
proval of the agency except when transferred
to the successor of that part of the Contrac-
tor's business to which such Invention per-
tains.

The Inventor(s) further agrees (agree) to
assist the Contractor and the Government
upon request by furnishing any available in.
formation and documents, performing al
acts, and doing all things which may be reg.
sonably necessary to make this assignment
effective.

The Contractor joins in and agrees to this
assignment and except for the above reserva-
tion of a license, if any, relinquishes and
assigns the entire right, title, and interest
in and to such inventions, and further agrees
to furnish to the Government upon request
any available information and documents
necessary for the prosecution of the above-
identified application for patent.
Signed this

day of
(SEAL)

(Inventor)
Attest:
Repeat above for each inventor.
Signed this

day of

19... (Contractor's Oficial and Title) Attest:

Accepted and agreed to on behalf of the Government

ion ent. ires

an gn

to tor tor

of che che

of cor he

Signed this 19.......

Government agency
.....) Included in Contract No. -----
date)

tion permits access
rith

§ 1-9.109–6 Rete
(speclfy agency)
This document is confirmatory of the

(a) Request for t
peld-up license granted to the Government

er domestic rights
in this invention, patent application, and
any resulting patent, and all other rights quest for a determi
acquired by the Government under the greater domestic r
referenced contract.

invention under
It is understood and agreed that this clauses of $ 1-9.1
document does not preclude the Govern-

§ 1-9.107-6 shall b
ment from asserting rights under the pro-

ing to the agency.
Tisions of sald contract or of any other

(1) The request
tereement between the Government and the
Contractor, or any other rights of the Gov- lowing information
erament with respect to the above-identified

(i) The prime
intention.

the subcontract n
The Government is hereby granted an ir under which the in
ferocable power to inspect and make coples
d the above-Identified patent application. tracting office;

an identification
day of

(ii) A brief desc

tion or a copy of th Applicant or Assignee (Recorded)

(iii) The natur By...

rights desired;

(iv) A descriptic

risk capital and Business Address

quired to bring the (C) Assignments, licenses, confirma

of practical applic tory instruments, and other papers evi

(V) A statemer dencing any rights of the Government plans and intentic in patents or patent applications shall

tion to the point
including:

(A) If further
keting are to be
tractor, a descrip

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(Agency Omicial)

(Date) (b) When the clause of 8 1-9.107-5 (b) is included in a contract or when 8 party retains title to an identified invention and the right to file a patent application pursuant to a greater rights determination of $1–9.109-6, the op. tional form of Confirmatory Instrument set forth hereinafter is approved for use by the contractor or by the party retaining title.

CONFIRMATORY INSTRUMENT

(License to the Government) Application for:

(Title of Invention) Inventor(s): Serial No.:

Contract No.: Filing Date:

Contractor:. The Invention identified above 18 a "Subject Invention" under Patent Rights clause,

be recorded in the Statutory Register and/or documented in the Governmental Register maintained by the U.S. Patent and Trademark Office pursuant personnel, and m to Executive Order 9424, February 18, able for that purr 1944. Such documents shall be sent to which such develo the Commissioner of Patents and Trade taken by the cont marks, Attention: Assignment Branch, behalf and/or; Washington, DC 20231, and when the (B) If licensin document is to be recorded in the Statu- intended, a brief tory Register, shall be accompanied by tractor's licensing the required fee. When the document is

(vi) A stateme recorded in the Statutory Register, the

falls within 1-9 Patent and Trademark Office places a

tractor's contribu

tion is made that copy of this recording in the Govern

tribution to the
mental Register. If the agency does not
have the document recorded in the Stat-

pared to his cont

(2) Agencies utory Register, it shall send two copies

information whi of the document to the Commissioner of

termination tha Patents and Trademarks and request

be retained by that these documents be filed in a desig- tions of such iter nated section of the Governmental Reg the following: ister. The Governmental Register con

(i) The relat tains several sections including a secret, to a principal p departmental, and public section. The (il) Any fact secret section is for applications bear

to the contract ing a security classification; the depart vention is inten mental section is for documents which Government fo are avallable to the Government and to be required for the public only upon approval of the regulation;

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(--------) included in Contract No.

Government agency; and the public sec(date)

tion permits access to the public. with (specify agency)

8 1-9.109–6 Retention of greater rights. This document is confirmatory of the

(a) Request for the retention of greatpald-up license granted to the Government les in this invention, patent application, and

er domestic rights. A contractor's reany resulting patent, and all other rights

quest for a determination that he retain Tento acquired by the Government under the greater domestic rights in an identified at referenced contract.

invention under the Patent Rights It is understood and agreed that this clauses of $ 1-9.107-5 (a) or (c) 5 37 document does not preclude the Govern § 1-9.107-6 shall be submitted in writcatement from asserting rights under the probeamu vistons of sald contract or of any other

ing to the agency. il the agreement between the Government and the

(1) The request shall contain the follorez Contractor, or any other rights of the Gov

lowing information: ernment with respect to the above-identified (i) The prime contract number and The invention.

the subcontract number, if applicable, The Government is hereby granted an ir under which the invention was made and EAT Brad revocable power to inspect and make copies an identification of the agency's conperleme of the above-identified patent application. tracting office; Signed this day of

(ii) A brief description of the invenhis 19. SEAL)

tion or a copy of the invention disclosure; Applicant or Assignee (Recorded)

(iii) The nature and extent of the abores By

rights desired; ATTEST:

(iv) A description of the development,

risk capital and expense, and time refuren Business Address

quired to bring the invention to the point (c) Assignments, licenses, confirma

of practical application; of tens tory instruments, and other papers evi

(v) A statement of the contractor's dencing any rights of the Government

plans and intentions to bring the invenin patents or patent applications shall

tion to the point of practical application be recorded in the Statutory Register

including: and/or documented in the Governmen

(A) If further development and martal Register maintained by the U.S.

keting are to be conducted by the conPatent and Trademark Office pursuant

tractor, a description of the facilities,

personnel, and marketing outlets availto Executive Order 9424, February 18, able for that purpose, and the extent to dal s 1944. Such documents shall be sent to which such development is to be under

the Commissioner of Patents and Trade taken by the contractor or others on his marks, Attention: Assignment Branch, behalf and/or;

Washington, DC 20231, and when the (B) If licensing of the invention is dical document is to be recorded in the Statu

intended, a brief description of the contory Register, shall be accompanied by

tractor's licensing program; and the required fee. When the document is

(vi) A statement, where the invention 11 recorded in the Statutory Register, the

falls within § 1-9.107–3(a), of the conct on the Patent and Trademark Office places a

tractor's contribution when the conten

tion is made that the Government's concopy of this recording in the Governile 5. mental Register. If the agency does not

tribution to the invention is small comreate. I have the document recorded in the Stat

pared to his contribution.

(2) Agencies may request additional utory Register, it shall send two copies information which would facilitate a deof the document to the Commissioner of termination that greater rights should Patents and Trademarks and request be retained by the contractor. Illustrathat these documents be filed in a desig tions of such items of information include nated section of the Governmental Reg the following: ister. The Governmental Register con

(i) The relationship of the invention tains several sections including a secret,

to a principal purpose of the contract; departmental, and public section. The

(ii) Any facts or information known secret section is for applications bear

to the contractor about whether the inIng a security classification; the depart vention is intended to be developed by the mental section is for documents which

Government for commercial use or is to are available to the Government and to be required for such use by governmental the public only upon approval of the regulation;

503

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of the mination for the retention of greater do. ety, or mestic rights which was submitted within

the period specified in the Patent Rights hnol

clause and shall make the determination r the

in accordance with the criteria set out cipal

in paragraphs (d) or (e) of this section,

as applicable. who (d) Criteria for a determination for of or the retention of greater rights-Acquisiwith tion by the Government clause. When oyer, the request for a determination for the eater retention of greater rights relates to an -ides. invention reported under the Patent con Rights clause of $ 1-9.107-5(a) or itted § 1-9.107-6(a): t for (1) The requesting party may retain - the greater rights regardless of whether the tion invention is or is not directly related to a S as principal purpose of the contract when ap

the agency finds that the invention comes ara within the criteria of $ 1-9.107-3(a) (1)

be through (4); and vee (i) The retention of greater rights is

a necessary incentive to call forth private Zing risk capital and expense to bring the intect

vention to the point of practical applicathe

tion; or cer (ii) The Government's contribution to ned, the invention is small compared to that ap

of the contractor. ni (2) The requesting party also may reion tain greater rights when the agency finds the

that: nin (1) The invention is not directly related

to a principal purpose of the contract and rse does not come within the criteria of he $ 1–9.107–3(a) (1) through (4); and nt (il) The likelihood is that the inven

tion will be more expeditiously developed 22. to the point of practical application by by

the intentions and plans of the requestсу ing party than by the activities of the ty Government. he (e) Criteria for a determination for the or retention of greater rightsDeferred се clause. When the request for a deterof mination for the retention of greater

rights relates to an invention reported ne under the Patent Rights clause of $ 1of 9.107–5(c) or 1-9.107–6(b), h (1) The requesting party may retaln

greater rights where the agency finds: y (1) The invention does not come within

the criteria of $ 1-9.107-3(a) (1) through
(4); and

(ii) The likelihood is that the inven.
tion will be more expeditiously developed
to the point of practical application by
the intentions and plans of the request-

ocable power to ing party than by the activities of the

of the patent ap Government.

(D) Provide th (2) The requesting party may retain greater rights when an agency finds that the patent withi

ent is issued on the invention comes within the criteria of $1–9.107-3(a) (1) through (4); and (E) Not less t

(1) The retention of greater rights is a expiration of t1 necessary incentive to call forth risk

any action requ capital and expense to bring the inven Trademark Offic tion to the point of practical application; any decision not

of the applicati (i) The Government's contribution to agency executed the invention is small compared to that the Government of the contractor.

prosecute the api (0) Agency determination-Domestic

(iii) If the regi rights. (1) The agency shall notify the an application wi party requesting a determination for the periods, decides n retention of greater rights of its decision. tion of the applic If the agency's determination is not co sires to retain ti extensive with the party's request, the the Government, agency shall inform the party of the rea right, title, and in sons on which the final action is based. and to any corre

(2) Where the determination provides cation or patent. for the requesting party to retain title, made by deliveri: the determination shall require that a executed instrum domestic patent application be filed on Government) an the invention by the requesting party, other papers as a and the following provisions shall apply: vest in the Gover

D) The application shall be filed title, and interest within 6 months from the date of the determination, or such longer period as

any correspondin

and to enable the may be authorized in writing by the agency for good cause shown in writing

ecute the applicat

(3) Where the

est

by the requesting party;

for the requesting (i) For each patent application filed, the determination the party shall:

license to the Go (A) Within 2 months after such filing censing and the c or within 2 months after the date of a ing requirements determination if such patent application “Minimum rights previously has been filed, deliver to the ernment,” of the agency a copy of the application as filed,

of $ 1-9.107-5. Th Ineluding the filing date and serial num

mally shall also be

reservation or coi B) Include the following statement to the second paragraph of the specifica- appropriate by the tion of the application and any resulting

(g) Agency de patent: "The Government has rights in rights. (1) A cont tiis inention pursuant to Contract

No. determination tha . (or Grant No. --.--) awarded

eign rights in an

Patent Rights clau (0) Within 6 months after such filing, 5 (a) or (c) or § 1-9 or within 6 months after submission of

accompany a requ the invention disclosure if the patent tion that he ret application has been previously filed, de- rights under $ 1-9 her to the agency a duly executed and submitted indepe approved instrument prepared by the request shall cont

formation:

(1) The prime the subcontract r

by (Identify the agency).";

S

Colemment fully confirmatory of all the rights to which the Government is enteled, and provide the agency an irrev

504

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