[If the contract contains clauses of this character inserted for reasons other than requirements of statutes or Executive orders, the suggested language should be appropriately modified.]

In Witness Whereof, etc.

§ 1-8.806-6 No-cost settlement agreement—partial termination.

THIS SUPPLEMENTAL AGREEMENT OF SETTLEMINT, entered into this day of 19., between the UNITED STATES OF AMERICA (hereinafter called "the Government”), represented by the Contracting Officer executing this contract, and

(a) A corporation organized and existing under the laws of the State of

(b) A partnership consisting of

(c) An individual doing business
---;

(hereinafter called "the Contractor").
WITNESSETH THAT:

WHEREAS, the Contractor and the Government have entered into Contract No. under date of ----------- 19-- which, together with any and all amendments, changes, modifications, and supplements thereto, is hereinafter referred to as "the contract"; and

WHEREAS, the contract provides that the performance of work thereunder may at the convenience or option of the Government be terminated by the Government in whole, or from time to time in part, whenever any such termination is determined to be for the best interest of the Government, and that the Contractor and Contracting Officer may agree upon the whole or any part of the amount or amounts to be paid to the Contractor by reason of such termination; and WHEREAS, by notice of termination dated

---, 19...-, the Government advised the Contractor of the partial termination of the contract for the convenience or at the option of the Government as of the date and to the extent provided in such notice, to which reference is hereby made as to the part terminated, and said part is hereinafter referred to as "the terminated portion of the contract"; and

WHEREAS, the Contractor is willing to waive unconditionally any claim against the Government by reason of such termination.

NOW, THEREFORE, the parties hereto agree as follows:

ARTICLE 1. The terminated portion of the contract is designated as follows: (Specify the terminated portion clearly as to items including (a) Item numbers, (b) descriptions, (c) quantity terminated, (d) unit price of items, (e) total price of terminated items, and (f) any other explanation necessary to avoid uncertainty or misunderstanding.)

ARTICLE 2. The Contractor hereby unconditionally waives any claim against the Government arising under the terminated portion of the contract or by reason of its termination including, without limitaton, all obligation of the Government to make

dertakings in connection with said termi further payments or to carry out other unnated portion, and the Government acknowledges that the Contractor has no obligation to perform further work or services or to make further deliveries of articles or materials under the terminated portion of the contract: Provided, however, That nothing herein contained shall impair or affect in any way any other covenants, terms or conditions of the contract: And provided fur. ther, That, with respect to the terminated portion of the contract, the following rights and liabilities of the parties are reserved:

[List reserved or excepted rights and liabilities; see 1-8.209-2 and Article 7 of the agreement set forth in § 1-8.806-2.] In Witness Whereof, etc.

§ 1-8.806-7 No-cost settlement agree. ment-complete termination.

THIS SUPPLEMENTAL AGREEMENT OF SETTLEMENT, entered into this

day of

----, 19. between the UNITED STATES OF AMERICA (hereinafter called "the Government"), represented by the Contracting Offcer executing this contract. and

(a) A corporation organized and existing under the laws of the State of.......... (b) A partnership consisting of (c) An individual doing business M

(hereinafter called "the Contractor”).
WITNESSETH THAT:

WHEREAS, the Contractor and the Government have entered into Contract No. under date of ---------, 19-- which, together with any and ail amendments, changes, modifications, and supplements thereto, is hereinafter referred to as "the contract"; and

WHEREAS, the contract provides that the performance of work thereunder may at the convenience or option of the Government be terminated by the Government in whole, or from time to time in part, whenever any such termination is determined to be for the best interest of the Government, and that the Contractor and Contracting Officer may agree upon the whole or any part of the amount or amounts to be paid to the Contractor by reason of such termination; and

WHEREAS, by notice of termination dated 19, the Government advised the Contractor of the termination of the contract for the convenience or at the option of the Government; and

WHEREAS, the Contractor is willing to waive unconditionally any claim against the Government by reason of such termination.

NOW, THEREFORE, the parties hereto agree as follows:

ARTICLE 1. The Contractor hereby unconditionally waives any claim against the Government by reason of the termination of the contract and, except as set forth below, releases it from any and all obligations arising under the contract or by reason of its termination; and the Government agrees that all obligations arising under the contract or

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sary were to call for private risk
capra and expense to bring the inven-
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or that the Government's contribution to
the invention, is small compared to that
of the contractor. Where an identified
invention made in the course of or under
the contract is not directly related to a
principal purpose of the contract, great-
er rights may also be retained by the
contractor under the criteria of para-
graph (c), of this section.

(b) In other situations, where the purpose of the contract is to build upon existing knowledge or technology to develop information, products, processes, or methods for use by the Government and the work called for by the contract is in a field of technology in which the contractor has acquired technical competence (demonstrated by factors such as know-how, experience, and patent position) directly related to an area in which the contractor has an established nongovernmental commercial position, the contractor shall normally retain the principal or exclusive rights throughout

prescrire or equation spok) 57610 when the punir meres, in the avaianity of the inventions won't best DE VEL DN permitting the contractor Tewal # the time of com BSIĘ Beater Digma that & mERDİNSİVE isense

In the situations specified in paraDID Rsertino, when TWI or more poena coMETRotors are judged u have presented proposals of equivalem men willingness to grant the Government princip or exclusive THE resulting inventions will be an Additional factor in the evaluation of The proposEJS

* Where the principal or exclusive TOMB irvenman remain in the contractor, he should agree to provide Wriken 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 or on terms that are reasonable in the circumstances, 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 applicant(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

of a nonexclusive or exclusive license to a responsible applicant(s) on terms that are reasonable in the circumstances (i) to the extent that the invention is required for public use by governmental regulations, or (ii) as may be necessary to fulfill health or safety needs, or (iii) for other public purposes stipulated in the contract.

(h) Whenever the principal or exclusive rights in an invention remain in the contractor, the Government shall normally acquire:

(1) At least a nonexclusive, nontransferable, paid-up license to make, use, and sell the invention throughout the world by or on behalf of the Government of the United States (including any Government agency) and States and domestic municipal governments, unless the agency head or his designee determines that it would not be in the public interest to acquire the license for the States and domestic municipal governments; and

(2) The right to sublicense any foreign government pursuant to any existing or future treaty or agreement if the agency head or his designee determines it would be in the national interest to acquire the right; and

(3) The principal or exclusive rights to the invention in any country in which the contractor does not elect to secure a patent.

(1) Whenever the principal or exclusive rights in an invention are acquired by the Government, there may be reserved to the contractor a revocable or irrevocable, nonexclusive, royalty-free license for the practice of the invention throughout the world; an agency may reserve the right to revoke such license so that it might grant an exclusive license when it determines that some degree of exclusivity may be necessary to encourage further development and commercialization of the invention. Where the Government acquires the principal or exclusive rights to an invention and does not elect to secure a patent in a foreign country, the contractor may retain such rights in any foreign country in which he elects to secure a patent, subject to the Government's rights set forth in paragraph (h) of this section.

(j) Nothing in this subpart shall be construed to confer immunity upon any person from the antitrust laws or from a charge of patent misuse, and no person shall be immune from the operation of

State or Federal law by reason of the retention and use of rights pursuant to this subpart.

§ 1-9.107-4 Procedures.

(a) Selection of Patent Rights clause. (1) Whenever a contract which is to be performed in the United States, its possessions, Puerto Rico, or the District of Columbia has as a purpose the conduct of experimental, developmental, or research work, the agency shall apply the policy in § 1-9.107-3 to the contracting situation and shall include in the contract a Patent Rights clause from §§ 19.107-5 or 1-9.107-6. The clauses in § 1-9.107-5 shall be used as appropriate in contracts with industrial concerns or in contracts with nonprofit organizations calling for developmental work. The clauses specified in §§ 1-9.107-5 or 1-9.107-6 may be used in contracts calling for basic or applied research with nonprofit organizations. Solicitations shall provide offerors with an opportunity to show that the selected clause proposed for a contract is inappropriate for a particular procurement situation. In no event will contractors be asked to state their willingness to grant the Government principal or exclusive patent rights prior to a determination that proposals of equivalent merit have been presented.

(2) The Patent Rights clause in § 1-9.107-5(a), except as otherwise provided in § 1-9.107-6(a), shall be used whenever the agency determines that the experimental, developmental, or research work to be performed under the contract falls within § 1-9.107-3(a). This clause provides that the Government shall acquire title, under certain circumstances, to inventions made in the course of or under the contract subject to the reservation of nonexclusive license rights to the contractor. The contractor may retain greater rights than a nonexclusive license after an invention has been identified if the agency determines that the criteria of § 1-9.109-6 are met. When the agency head or his duly authorized designee determines that exceptional circumstances exist as provided for in § 1-9.107-3(a), paragraphs (b) and (i) of the clause prescribed in § 1-9.107-5(a) may be appropriately modified so that the contractor retains greater rights than a nonexclusive license concerning all or specific inventions.

(3) The Patent Rights clause in § 1-9.107-5(b) shall be used whenever

5. A short form Patent Rights clanse to 11-9.177-8 (a) or (b) may be used by the agency instead of the clase in § 1-9

197-5 (a) or (c), respectively, where the contract calls for base or applied research and the contractor is a nonprofit organization for other than the operation of a Government-owned research or production facility. These clauses are not appropriate for use where the agency head determines that the contractor is

entitled to retention of greater rights upon a finding that exceptional circumstances as provided for in § 1-9.107-3(a) are present or where the contract falls

De te pini merest to acquire Buct & breise for States and municipal EvecTmes to my reserve the right to MARK TOP dezenamento after the inTeacht ber been decided. When the Dec 3 mide or the right to IBLE TDE DERECONEIN Ís reserved, parBERE of the Patent Rights chases in 2-4-217-5 shall be replaced with the scpropriate paragraph in Fars

Rapha to mhdcense foreign gosCAMEL PE of the Patent Bagira clanses1-9.100-5 does not promde the Government with the right to grant a sublicense in any inventions restling 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 be 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) shin be included as part of paragraph (0) 5 the Patent Rights clauses of § 1-9.107-5. (e) Minimum rights to contractor.

within the special situations criteria of Paragraph (d) of the Patent Rights

$1-9.107-3(c). In either event, a Patent Rights clause in 1-9.107-5, appropriately modified, shall be used.

(b) Record of decisions. Agencies shall record the basis for the following ac

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

tions: (1) Selection of a Patent Rights Rights provision, whereby, the contrac

clause; (2) finding of exceptional circumstances in 1-9.107-3 (a) or of special situations in § 1-9.107-3(c); (3) retention of greater rights pursuant to 1-9.109-6; and (4) determinations under 1-9.107-4 (c) and (d)

(c) License for the Government, States, and municipal governments. The policy set forth in § 1-9.107-3(h) (1) provides that the Government shall normally acquire a paid-up license in any invention resulting from the contract for

tor 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

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