graph should be added as a consecutively () In order to protect the patent interest § 1-9.107-6 Clauses for domestic con- (a) Patent Rights clause-Acquisition PATENT RIGHTS-ACQUISITION BY THE GOVERN- (a) Definitions. "Subject Invention" means any invention or discovery of the Contractor conceived or first actually reduced to practice in the course of or under this contract, and includes any art, method, process, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant which is or may be patentable under the Patent Laws of the United States of America or any foreign country. (b) Invention disclosures and reports. (1) The Contractor shall furnish the Contracting Officer: (1) A complete technical disclosure for each Subject Invention, within 6 months after conception or first actual reduction to practice, whichever occurs first in the course of or under the contract, but in any event prior to any on sale, public use, or publication of the invention known to the Contractor. The disclosure shall identify the contract and inventor, and shall be sufficiently complete in technical detail and appropriately illustrated by sketch or diagram to convey to one skilled in the art to which the invention pertains a clear understanding of the nature, purpose, operation, and to the extent known, the physical, chemical, biological, or electrical characteristics of the invention; (11) Interim reports at least every 12 months from the date of the contract listing Subject Inventions for the period and certifying that all Subject Inventions have been disclosed or that there are no such inventions and (iii) An acceptable final report1 within 3 months after completion of the contract 1 Agency may specify a form. work, listing all Subject Inventions a certifying that there were no such inventions (2) The Contractor agrees that the Goernment may duplicate and disclose Subject Invention disclosures and all other r ports and papers furnished or required to be furnished pursuant to this clause. (c) Allocation of principal rights. (1) The Contractor agrees to assign to the Govern ment the entire right, title, and interest throughout the world in and to each Subject Invention, except to the extent that righte are retained by the Contractor under pari 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) of this clause in accordance with the proce dure and criteria of 41 CFR 1-9.109-6. A request for a determination of whether the Contractor or the employee-inventor is en titled to retain such greater rights must be submitted to the Contracting Officer at the time of the first disclosure of the invention 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 writing by the Contractor. The information to be submitted for a greater rights determina tion is specified in 41 CFR 1-9.109-6, Each determination of greater rights under this contract shall be subject to the provisions of paragraph (c) "Minimum rights acquired by the Government" of the clause in 41 CFR 1-9.107-5(a), and to the reservations and conditions deemed appropriate by the agency. (d) Minimum rights to the Contractor. The Contractor reserves a revocable, nonex clusive, royalty-free license in each patent application filed in any country on a Subject Invention and any resulting patent in which the Government acquires title. Rev ocation shall be in accordance with the procedure of the clause in 41 CFR 1-9.107-5 (d) (2) and (3). (e) Employee and Subcontractor agreements. Unless otherwise authorized in writ ing by the Contracting Officer, the Contractor shall: (1) Obtain patent agreements to effectuate the provisions of this clause from all per sons who perform any part of the work under this contract except nontechnical personnel. as clerical employees and manual laborers; such (2) Insert in each subcontract having ex as one of its purposes provisions making this perimental, developmental, or research work clause applicable to the Subcontractor and his employees; and (3) Promptly notify the Contracting Omcer of the award of any such subcontract by providing him with a copy of the subcontract and any amendments thereto. (b) Patent Rights clause--Deferred (short form). This clause may be used instead of the clause of § 1-9.107-5(c) in Chapter 1-Federal Procurement Regulations contracts for basic or applied research with nonprofit organizations. When the agency determines that a contract falls within § 1-9.107-3(c) and that a short form Patent Rights clause is to be used pursuant to § 1-9.107-4(a) (5), the Patent Rights clause set forth in § 1-9.1076(a) shall be included in the contract except that the name of the clause shall be changed to "Patent Rights-Deferred (short form)"; and paragraph (c) (1) of that clause shall be replaced by the following paragraph (c)(1): (1) After a Subject Invention is identified, the Contractor agrees to assign to the Government the entire right, title, and interest therein throughout the world except to the extent that rights are retained by the Contractor under paragraphs (c) (2) and (d) of this clause. §1-9.107-7 Clause for foreign con tracts. § 1-9.109 Administration Rights clauses. of Patent § 1-9.109-1 Patent rights follow-up. It is important that the Government and the contractor know and exercise their rights in inventions conceived or actually reduced to practice in the course of or under Government contracts in order to ensure their expeditious availability to the public, to enable the Government, the contractor, and the public to avoid unnecessary payment of royalties, and to defend themselves against claims and suits for patent infringement. To attain these ends, contracts having Patent Rights clauses should be so administered that: (a) Inventions are identified, disclosed, and reported as required by the contract clauses; (b) The rights of the Government in such inventions are established; (c) When appropriate, patent applications are timely filed and prosecuted by contractors or by the Government; (d) The filing of patent applications is documented by formal instruments Each contractor shall establish and maintain effective procedures to ensure that inventions made under the contract are identified, disclosed, and when appropriate, patent applications filed, and that the Government's rights therein are established and protected. When it is determined after the award of a contract that the contractor or subcontractor may not have a clear understanding of the rights and obligations of the parties under a Patent Rights clause, a postaward orientation conference or letter should be used by the Government to explain these rights and obligations. When reviewing a contractor's procedures, particular attention shall be given to ascertaining their effectiveness for identifying and disclosing inventions. § 1-9.109-3 Follow-up by Government. Each Government agency shall undertake to ensure compliance by the contractor with the obligations of the Patent Rights clause of the contract. This effort should be directed primarily toward contracts and subcontracts about which there is reason to believe the contractors may not be complying with their contractual obligations. Other contracts and subcontracts should be spotchecked when feasible. These follow-up activities may include: (a) Reviewing technical reports submitted by the contractor; (b) Checking sources for patents issued to the contractor in fields related to his Government contracts; (c) Interviewing contractor personnel regarding work under the contract, observing the work on site, and inspecting laboratory notebooks and other records of the contractor related to work under the contract; and (d) Interviewing agency technical personnel concerning novel developments in contracts under their cogni zance. (iii) The relationship, if any, of the invention to the public health, safety, or welfare; and (iv) The field of science and technology of the invention and whether the Government has been the principal developer of this field. (3) The contractor's employee(s) who made an invention in the course of or under a contract may also request, with proper authorization from his employer, a determination that he retain greater rights whenever the contract so provides. A copy of the authorization of the contractor-employer should be submitted with the employee-inventor's request for such a determination. In submitting the information required for a determination for the retention of greater rights as provided in § 1-9.109-6(a) (1), and in applying the other provisions of this paragraph, the term contractor shall be understood to also mean the employeeinventor. (b) Reimbursement of costs for filing patent applications. In order to protect the interest of the Government and the party submitting a request for a determination that greater rights be retained, the filing of a United States patent application prior to the agency's determination is permissible. If an application on a Subject Invention is filed during the pendency of the determination, or within 60 days prior to the receipt of a request by the agency, the agency shall reimburse the party filing the application for the reasonable filing costs and for any patent prosecution as may have occurred as provided by § 1-15.205-26 or § 1-15.309-22. Whenever such costs are not covered by § 1-15.205-26 or § 1-15.309-22, the agency may nevertheless reimburse the party causing the application to be filed for the reasonable costs of such filing and for any patent prosecution that may have occurred, subject to the availability of funds, provided: (1) The agency determines that the party is not entitled to the retention of greater rights which are coextensive with the party's request; and (2) Prior to reimbursement the party requesting such determination assigns the application to a Government agency and the agency accepts the assignment of the application. (c) Agency consideration. The agency shall consider each request for a deter mination for the retention of greater de mestic rights which was submitted within the period specified in the Patent Rights clause and shall make the determination in accordance with the criteria set out in paragraphs (d) or (e) of this section as applicable. (d) Criteria for a determination fo the retention of greater rights-Acquisi tion by the Government clause. Whe the request for a determination for the retention of greater rights relates to invention reported under the Patent Rights clause of §1-9.107-5(a) or § 1-9.107-6(a): (1) The requesting party may retain greater rights regardless of whether the invention is or is not directly related to principal purpose of the contract whe the agency finds that the invention comes within the criteria of § 1-9.107-3(a) (1) through (4); and (i) The retention of greater rights is a necessary incentive to call forth private risk capital and expense to bring the invention to the point of practical applica tion; or (ii) The Government's contribution to the invention is small compared to that of the contractor. (2) The requesting party also may retain greater rights when the agency finds that: (i) The invention is not directly related to a principal purpose of the contract and 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 ing party than by the activities of the Government. (e) Criteria for a determination for the retention of greater rights-Deferred clause. When the request for a determination for the retention of greater rights relates to an invention reported under the Patent Rights clause of § 19.107-5 (c) or § 1-9.107-6(b), (1) The requesting party may retain greater rights where the agency finds: (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 or (ii) The Government's contribution to the invention is small compared to that of the contractor. (f) Agency determination—Domestic rights. (1) The agency shall notify the party requesting a determination for the retention of greater rights of its decision. If the agency's determination is not coextensive with the party's request, the agency shall inform the party of the reasons on which the final action is based. (2) Where the determination provides for the requesting party to retain title, the determination shall require that a domestic patent application be filed on the invention by the requesting party, and the following provisions shall apply: (i) The application shall be filed within 6 months from the date of the determination, or such longer period as may be authorized in writing by the agency for good cause shown in writing by the requesting party; (ii) For each patent application filed, the party shall: (A) Within 2 months after such filing or within 2 months after the date of a determination if such patent application previously has been filed, deliver to the agency a copy of the application as filed, including the filing date and serial number; (B) Include the following statement in the second paragraph of the specification of the application and any resulting patent: "The Government has rights in this invention pursuant to Contract No. (or Grant No. ‒‒‒‒‒‒‒) awarded by (identify the agency)."; (C) Within 6 months after such filing, or within 6 months after submission of the invention disclosure if the patent application has been previously filed, deliver to the agency a duly executed and approved instrument prepared by the Government fully confirmatory of all the rights to which the Government is entitled, and provide the agency an irrev ocable power to inspect and make copies of the patent application filed; (D) Provide the agency with a copy of the patent within 2 months after a patent is issued on the application; and (E) Not less than 30 days before the expiration of the response period for any action required by the Patent and Trademark Office, notify the agency of any decision not to continue prosecution of the application and deliver to the agency executed instruments granting the Government a power of attorney to prosecute the application; and (iii) If the requesting party fails to file an application within the prescribed time periods, decides not to continue prosecution of the application, or no longer desires to retain title, he shall convey to the Government, upon request, his entire right, title, and interest in the invention, and to any corresponding patent application or patent. The conveyance shall be made by delivering to the agency duly executed instruments (prepared by the Government) and, if applicable, such other papers as are deemed necessary to vest in the Government the entire right, title, and interest in the invention and any corresponding patent application, and to enable the Government to prosecute the application. (3) Where the determination provides for the requesting party to retain title, the determination shall be subject to a license to the Government, and the licensing and the commercial use reporting requirements of paragraph (c) "Minimum rights acquired by the Government," of the Patent Rights clauses of 1-9.107-5. The determination normally shall also be subject to any other reservation or condition deemed to be appropriate by the agency. (g) Agency determination-Foreign rights. (1) A contractor's request for a determination that he retain greater foreign rights in an invention under the Patent Rights clauses of either § 1-9.1075 (a) or (c) or § 1-9.107-6 (a) or (b) may accompany a request for a determination that he retain greater domestic rights under § 1-9.109-6(a), or may be submitted independently thereof. The request shall contain the following information: (i) The prime contract number and the subcontract number, if app under which the invention was made and an identification of the agency's contracting office; (ii) A brief description of the invention or a copy of the invention disclosure; (iii) The countries in which the requesting party intends to file a patent application; and (iv) Other information required by the agency. (2) If the Government determines not to file a patent application on a Subject Invention of the contractor in any foreign country, the agency may authorize the requesting party to file a patent application on the invention in such foreign country and to retain the entire right, title, and interest therein if it determines such authorization to be in the public interest, subject to the license to the Government provided in paragraph (c) of the Patent Rights clause in § 1-9.107-5(a) or § 1-9.107-6(a). (3) Where the determination includes a requirement that the requesting party file and prosecute a foreign patent application on the invention, the following provisions shall apply: (i) The requesting party shall file and prosecute a patent application on the invention in (identify the foreign countries) in accordance with applicable statutes and regulations and within one of the following periods: (A) Eight months from the date the corresponding United States patent application is filed by or on behalf of the requesting party; or if such an application is not filed, 6 months from the date of this agreement; (B) Six months from the date a license is granted by the Commissioner of Patents and Trademarks to file foreign applications where such filing has been prohibited by security reasons; or (C) Such longer period as may be approved by the agency; (ii) The requesting party shall notify the agency promptly of each foreign application filed and upon written request of the agency shall furnish an English version of the foreign application without additional compensation; and (iii) If the requesting party files or causes to be filed a patent application on a Subject Invention in any foreign country, or if a patent is obtained on such application, the party shall notify the agency, not less than 60 days before the expiration period for any action required by the foreign patent office, of any decl sion not to continue prosecution of the application or not to pay any maintenance fee covering the invention, and within such period shall deliver to the agency: (A) Executed instruments granting to the Government power of attorney in the application; (B) An English version of the applica tion, if not previously provided, to the agency; and (C) Upon request, a conveyance of the party's entire right, title, and interest in the invention in the foreign country, and to any corresponding patent application. 1-10.102-5 1-10.102-6 Advance payment bond. Patent infringement bond. 1-10.102-7 1-10.102-8 1-10.102-9 1-10.102-10 1-10.102-11 1-10.103 1-10.103-1 1-10.103-2 1-10.103-3 1-10.103-4 1-10.104 Applicability. Definitions. Bond. Performance bond. Payment bond. Construction contract. Annual performance bond. Penal sum or amount. Bid guarantees. Policy on use. Amount required. Invitation for bids provisions. Failure to submit proper bid guarantee. Performance bonds. Construction contracts. 1-10.104-1 1-10.104-2 Other than construction con 1-10.104-3 1-10.105-1 1-10.105-2 1-10.105-3 1-10.106 1-10.107 1-10.108 1-10.109 |