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the situations covered by the two immediately preceding sentences, the Government shall be entitled to all right, title and interest in such Subject Inventions subject to the reservation to the grantee of a royalty-free, nonexclusive license therein.

(iv) The grantee shall, i requested by the Government, either before or after final closeout of this grant, furnish written reports at reasonable intervals, as to:

(a) The commercial use that is being made or is intended to be made of such invention;

(b) The steps taken by the grantee to bring such invention to the point of practical application, or to make the invention available for licensing.

C. Foreign rights and obligations: (1) Subject to the waiver provisions of paragraph (2) of this section, it is agreed that the entire foreign right, title and interest in any subject invention shall be in the Government, as represented for this purpose by the Administrator. The Government agrees to grant and does hereby grant to the grantee & royalty-free nonexclusive license to practice the invention under any patent obtained on such subject invention in any foreign country. The license shall extend to existing and any future companies controlled by controlling or under common control with the grantee, and shall be assignable to the successor of the part of the grantee's business to which such invention pertains.

(2) The grantee may request the foreign rights to a subject invention at any time subsequent to the reporting of such invention. The response to such request and notifcation thereof to the grantee will not be unreasonably delayed. The Government will walve title to the grantee to such subject invention in foreign countries in which the Government will not file an application for a patent for such invention, or otherwise secure protection therefor. Whenever the grantee is authorized to file in any foreign country the Government will not thereafter proceed with filing in such country except on the written agreement of the grantee, unless such authorization has been revoked pursuant to paragraph (3) of this section.

(3) In the event the grantee is authorized to file & foreign patent application on a subject invention, the Government agrees that it will use its best efforts not to publish & description of such invention until a United States or foreign application on such invention is filed, whichever is earlier, but neither the Government, its oficers, agents or employees shall be liable for an inadvertent publication thereof. If the grantee is authorized to file in any foreign country, he shall, on request of the Grants Officer, furnish to the Government a patent specification in English within six (6) months after such authorization is granted, prior to any foreign filing and without additional compensation. The Grants Officer may revoke such authorization on failure on the part of the grantee to file any such foreign applica.

tion within nine (9) months after such authorization has been granted,

(4) If the grantee files patent applications in foreign countries pursuant to authorization granted under paragraph (2) of this section, the grantee agrees to grant to the Government an irrevocable, nonexclusive, paid-up license to practice by or on its behalf the invention under any patents which may issue thereon in any foreign country. Such license shall include the right to issue sublicenses pursuant to any existing or future treaties or agreements between the Government and a foreign government for uses of such foreign government, provided the Administrator determines that it is in the national interest to acquire such right to sublicense. The grantee further agrees to grant under such foreign patents & nonexclusive royalty-free license (1) to sell and to use, but not to make, any composition of matter, article of manufacture, apparatus or system, made under a license granted by the Government to practice the Subject Invention in the United States, and (11) to practice any process comprising the Subject Invention. Said licensees must be U.S. citizens or U.S. corporations in which 75 percent of the voting stock is owned by U.S. citizens.

(5) In the event the Government or the grantee elects not to continue prosecuting any foreign application or to maintain any foreign patent on a Subject Invention, the other party shall be notified no less than sixty (60) days before the expiration of the response period or maintenance tax due date, and upon written request, shall execute such instruments (prepared by the party wishing to continue the prosecution or to maintain such patent) as are necessary to enable such party to carry out its wishes in this regard.

D. Licenses under Background Patents: (1) The grantee agrees that he will make his Background Patent(s) available for use in conjunction with & Subject Invention or Specified Work Object for use in the specific field of technology in which the purpose of this grant or the work called for or required thereunder falls. This may be done (1) by making available, in quality, quantity, and price all of which are reasonable to the circumstances, an embodiment of the Subject Invention or Specified Work Object, which Incorporates the invention covered by such Background Patent, as & Commercial Item, or (11), by the sale or an embodiment of such Background Patent as & Commercial Item in a form which can be employed in the practice of a Subject Invention or specified Work Object or can be so employed with relatively minor modifications, or (111) by the licensing of the domestic Background Patent(s) at reasonable royalty to responsible applicants on their request.

(2) If the Administrator determines after a hearing that the quality, quantity, or price of embodiments of the Subject Invention or Specified Work Object sold or otherwise made available commercially as set forth in (D)

(1) (1) is unreasonable in the circumstances, he may require the grantee to license such domestic Background Patent to a responsible applicant at reasonable terms, including a reasonable royalty, for use in the specific field of technology in which the purpose of this grant or the work called for thereunder falls, and for use in connection with (1) a Specified Work Object, or (11) & Subject Invention.

(3) (1) When a license to practice a domestic Background Patent in conjunction with & Subject Invention or Specified Work Object is requested, in writing by a responsible applicant, for use in the specific field of technology in which the purpose of this grant or the work called for thereunder falls, and such Background Patent is not available as set forth in D(1) (1) or (11), the grantee shall have six (6) months from the date of his receipt of such request to decide whether to make such Background Patent so available. The grantee shall promptly notify the Grants Officer of any request in writing for a license to practice a Background Patent in conjunction with & Subject Invention or Specified Work Object, which the grantee or his exclusive licensee wish to attempt to make available as set forth in D(1) (1) or (11).

(ii) If the grantee decides to make such domestic Background Patent so available either by himself or by an exclusive licensee, he shall so notify the Administrator within the said six (6) months, whereupon the Administrator shall then designate the reasonable time within which the grantee must make such Background Patent available in reasonable quantity and quality, and at a reasonable price. If the grantee or his exclusive licensee decides not to make such Background Patent so available, or fails to make it available within the time designated by the Administrator, the Background Patent shall be licensed to a responsible applicant at reasonable terms, including a reasonable royalty, in conjunction with (a) & Specified Work Object, or (b) a Subject Invention, and may be limited to the specific field of technology in which the purpose of this grant or the work called for thereunder falls.

(111) The grantee agrees to grant or have granted to a designated applicant, upon the written request of the Government, a nonexclusive license at reasonable terms, including reasonable royalties, under any foreign Background Patent in furtherance of any treaty or agreement between the Government of the United States and a foreign government for practice by or on the behall of such foreign government, if an embodiment of the Background Patent is not commercially available in that country: Provided, however, That no such license will be required unless the Administrator determines that issuance of such license is in the national interest. Such license may be limited by the licensor to the practice of such Background Patent in conjunction with a subject

Invention or à Specified Work Object and for use in only the specific field of technology in which the purpose of this grant or the work called for thereunder falls.

(iv) The grantee agrees it will not seek injunctive relief or other prohibition of the use of the invention in enforcing its rights against any responsible applicant for such license and that it will not join with others in any such action. It is understood and agreed that the foregoing shall not affect the grantee's right to injunctive relief or other prohibition of the use of Background Patents in areas not connected with the practice of a Subject Invention or Specified Work Object in the specific field of technology in which the purpose of this grant or the work called for thereunder falls, or where the grantee has made available & Commercial Item as set out in paragraph D(1) (1) or (ii).

(4) For use in the specific field of technology in which the purpose of this grant or the work called for thereunder falls, and in conjunction with a subject Invention or a Specified Work Object, the grantee agrees to grant to the Government a license under any Background Patent. Such license shall be nonexclusive. nontransferable. rovalty-free and worldwide to practice such patent which is not available as a Commercial Item as specified in paragraph D(1) (il) for use of the Federal Government in connection with pi. lot plants, demonstration plants, test beds, and test modules. For all other Government uses, any royalty charged the Government under such license shall be reasonable and shall give due credit and allowance for the Government's contribution, if any, toward the making, commercial development or enhancement of the invention(s) covered by the Background Patent.

(5) Any license granted under a process Background Patent for use with a specified Work Object shall be additionally limited to employment of the Background Patent under conditions and parameters reasonably equiyalent to those called for or employed under this grant.

(6) It is understood and agreed that the grantee's obligation to grant licenses under Background Patents shall be limited to the extent of the grantee's right to grant the same without breaching any unexpired contract it had entered into prior to this grant or prior to the identification of a Background Patent, or without incurring any obligation to another solely on account of said grant. However, where such obligation is the payment of royalties or other compensation, the grantee's obligation to license his Background Patents shall continue and the reasonable license terms shall include such payments by the applicant as will at least fully compensate the grantee under said obligation to another.

(7) On the request of the Grants Officer the grantee shall identity and describe any license agreement which would limit bis

right to grant licenses under any Back- vention is not a subject Invention. Il such ground Patent.

evidence is not then presented the invention (8) In the event the grantee has a parent shall be deemed to be a Subject Invention. or an affiliated company, which has the right After receipt of information furnished purto license & patent which would be a Back suant hereto, the Grants Officer shall not ground Patent it owned by the grantee, but unduly delay rendering his opinion on the which is not avallable as a Commercial Item matter. The Grants Officer's decision shall be as specified in paragraph D(1) (1) or (11), subject to the Disputes Clause of the grant. and a qualified applicant requests a license The grantee may furnish the information under such patent for use in the specific required under this section E as grantee confield of technology in which the purpose of fidential information, which shall be identithis contract or the work called for there fied as such. under falls, and in connection with the use F. General provisions: (1) The grantee of a Subject Invention or specified Work shall obtain the execution of and deliver to Object, the grantee shall, at the written re the Grants Officer any document relating to quest of the Government, recommend to his Subject Inventions as the Grants Officer may parent company, or amillated company, as require under the terms hereot to enable the the cage may be the granting of the re Government to Ale and prosecute patent quested license on reasonable terms, includ applications therefor in any country and to ing reasonable royaltles, and actively assist evidence and preserve its rights. Each party and participate with the Government and hereto agrees to execute and deliver to tho such applicant, as to technical matters and other party on its request suitable documents in laison functions between the parties, as to evidence and preserve license rights demay reasonably be required in connection rived from this appendix. with any negotiations for issuance of such (2) The Government and the grantee shall license. For the purpose of this subpara promptly notify each other of the filing of a graph, (1) & parent company is one which patent application on a Subject Invention in owns or controls, through direct or indirect any country, identifying the country or ownership of more than 60 percent of the countries in which such Aling occurs and the outstanding stock entitled to vote for the date and serial number of the application, election of directors, another company or and on request shall furnish a copy of such other entity and, (11) amliated companies application to the other party and a copy of are companies or other entities owned or any action on such patent application by any controlled by the same parent company. Patent Office and the responses thereto. Any

E. Related inventions: The grantee shall applications or responses furnished shall be submit to the Grants Omcer within six (6) kept confidential. months after the submission of the final

(3) Any other provisions of this appendix Invention report submitted pursuant to notwithstanding, the Grants Officer, or his paragraph P(6), written information con

authorized representative shall, until the excerning the conception or actual reduction to piration of three (3) years after final paypractice, or both, as may be applicable, of ment under this grant, have the right to every Invention made by the grantee pertain examino in confidence any books, records, ing to the work called for in this grant which documents, and other supporting data of the was conceived or first actually reduced to grantee which the Grants Officer or his aupractice within the period of three (3) thorized representative shall reasonably deem months prior, during, or three (3) months directly pertinent to the discovery or identif. subsequent to the term of this grant, which cation of Subject Inventions or to the comInvention would be & Subject Invention 11 pllance by the grantee with the requirements made under this grant, but which the grantes of this appendix. believes was made outside the performance (4) Notwithstanding the grant of a license Of work required under this grant. The under any patents to the Government Grants Officer may require additional infor pursuant to any provisions of this appendix, mation to be furnished in confidence by tho the Government shall not be prevented from grantee. At the request of the Grants Oficer contesting the validity, enforceability, scope, made during or subsequent to the term of or title of such licensed patent. this grant including any extensions for addi (5) The grantee shall furnish to the Grants tional research and development work, the Oficer every 12 months, or earlier as may be grantee shall furnish information concerning agreed in this grant (the initial period shall any other invention which appears to the commence with the date of award of this Grants Omcer to reasonably have the possi grant) a interim report listing all Subject blity of being a Subject Invention.

Inventions required to be disclosed which All information supplied by the grantee were made during the interim reporting hereunder shall be of such nature and char period or certify that there are no such unreacter as to enable the Grants Officer reason ported inventions. ably to ascertain whether or not the invention (6) The grantee shall submit a final report concerned is a Subject Invention. Failure to under this grant listing all Subject Invenfurnish such information called for herein tions required to be disclosed which were shall, in any subsequent proceeding, place made in the course of the work perform on the grantee the burden of going forward under this grant, and all subagreements subwith the evidence to establish that such in ject to this appendix. Il to the best of the

97-025—73_ 13

grantee's knowledge and belief, no Subject Inventions have resulted from this grant, the grantee shall so certify to the Grants Officer. If there are no such subagreements, a negative report is required.

(7) The interim and final reports submitted under F (5) and (6) and Subject Invention disclosures required under B(1) shall be submitted on EPA forms which will be furnished by the Grants Officer on request. Any equivalent form approved by the Grants Officer may be used in lieu of EPA forms. Such reports and disclosures shall be submitted in triplicate.

(8) Any action required by or of the Government under this patent provision shall be undertaken by the Grants Officer as its duly authorized representative unless otherwise stated.

(9) The Government may duplicate and disclose reports and disclosures of Subject Inventions required to be furnished by the grantee pursuant to this appendix without additional compensation

(10) The grantee shall furnish to the Grants Officer, in writing, and as soon as practicable, information as to the date and identity of any first public use, sale or publication of any Subject Invention made by or known to the grantee, or of any contemplated publication of the grantee.

(11) The Administrator shall determine the responsibility of an applicant for a 11cense under any provision of this patent provision when this matter is in dispute and his detremination thereof shall be final and binding.

(12) The grantee shall furnish promptly to the Grants Officer on request an irrevocable power to inspect and make copies of each U.S. patent application filed by or on behalf of the grantee covering any Subject Invention.

(13) The grantee shall include in the first paragraph in any U.S. patent application which it may file on a Subject Invention the following statement:

This invention resulted from work done under Grant No. ------------ with the Environmental Protection Agency and is subject to the terms and provisions of said Grant.

(14) All information furnished in confi. dence pursuant to this appendix shall be clearly identified by an apppropriate written legend. Such information shall be subject to the provisions of the Freedom of Information Act, 5 U.S.C, 552 and shall in any event cease to be confidential if it is or becomes generally available to the public, or has been made or becomes available to the Government (1) from other sources, or (11) by the grantee without limitation as to use, or was already known to the Government when furnished to it.

(15) Any action by the Grants Officer affecting the disposition of rights to patents or inventions pursuant to this appendix shall be taken only after review by the Office of General Counsel.

G. Warranties: (1) The grantee warrants that whenever be bas divested himself of the right to license any Background Patent (or any invention owned by the grantee which could become the subject of & Background Patent) prior to the date of this grant, such divestment was not done to avoid the licensing requirements set forth in section D of this appendix. After a Background Patent, or invention which could become the subject of a Background Patent, is identified, the grantee shall take no action which shall impair the performance of his obligation to issue Background Patent licenses pursuant to this grant.

(2) The grantee warrants that he will take no action which will impair his obligation to assign to the Government any invention first actually conceived or reduced to practice in the course of or under this grant.

(3) The grantee warrants that he has full authority to make obligations of this appendix effective, by reason of agreements with all of the personnel, including consult. ants who might reasonably be expected to make inventions, and who will be employed in work on the project for which the grant has been awarded, to assign to the grantee all discoveries and inventions made within the scope of their employment.

H. Subagreements: This appendix shall be included in any subagreement over $10,000 under this grant where a purpose of the subagreement is the conduct of experimental, developmental or research work, unless the Grants Officer authorizes the omission or modification of this appendix. The grantee shall not acquire any rights to Subject Inventions made under such subagreement for his own use (as distinguished from such rights as may be required solely to fulfill his grant obligations to the Government in performance of this grant). Upon completion of work under such & subagreement, the grantee shall promptly notify the Grants Officer in writing of such completion, and shall upon request furnish a copy of the subagreement to the Grants Officer. The grantee hereby assigns to the Government all rights of the grantee to enforce the obligations of the party to such subagreement with respect to Subject Inventions, Background Patents, and pursuant to section E of this appendix. The grantee shall cooperate with the Government at the Government's request and expense in any legal action to secure the Government's rights. 136

v. 27.1
Appendix C-Rights In Data and

Copyrights 1. The term "Subject Data" as used herein Includes writings, sound recordings, magnetic recordings, pictorial reproductions, drawings, or other graphical representations, and works of any similar nature (whether or not copyrighted) which are specified to be delivered under this grant. The term does not include financial reports, cost analyses, and other information Incidental to grant administration

2. Except as may otherwise be provided in the grant agreement, when publications, films, or similar materials are developed directiy or indirectly from & project supported by the Bavironmental Protection Agency, the author is free to arrange for copyright without approval. However, such materials shall Include acknowledgement of EPA grant assistance. The grantee agrees to and does hereby grant to the Government, and to its officers, agents, and employees acting within the scope of their oficial duties, a royaltyfree, nonexclusive, and irrevocable license throughout the world for Government purposes to publish, translate, reproduce, deliver, perform, dispose of, and to authorize other so to do, all Subject Data, or copyrightable material based on such data, now or hereafter covered by copyright.

3. The grantee shall not include in the Subject Data any copyrighted matter, without the written approval of the Grants Of. Acer, unless he provides the Government with the written permission of the copyright owner for the Government to use such copyrighted matter in the manner provided in article 2 above.

4. The grantee shall report to the Grants Oficer, promptly and in reasonable written detail, each notice or claim of copyright Infringement received by the grantee with respect to all Subject Data delivered under this grant.

5. Nothing contained in this appendix sball imply & license to the Government under any patent or be construed as affecting the scope of any license or other rights otherwise granted to the Government under any patent.

6. Unless otherwise limited below, the Government may, without additional compensation to the grantee, duplicate, use, and disclose in any manner and for any purpose whatsoever, and have others so do, all Subject Data delivered under this contract.

7. Notwithstanding any provisions of this grant concerning inspection and acceptance, the Government shall have the right at any time to modify, remove, obliterate, or ignore any marking not authorized by the terms of this grant on any piece of Subject Data furnished under this grant.

8. Data need not be furnished for standard commercial items or services which are normally or have been sold or offered to the public commercially by any supplier and which are incorporated as component parts in or to be used with the product or process being developed or investigated, it in lieu thereof identification of source and characteristics (including performance specifications, when necessary) suficient to enable the Government to procure the part or an adequate substitute, are furnished; and further, proprietary data need not be furnished for other items or processes which were developed at private expense and previously sold or offered for sale or commercially practiced in the case of & process, including minor modifications thereof, which are incorporated as component parts in or to be used with the product or proc. ess being developed or investigated, 11 in lieu thereof the grantee shall identify such other items or processes and that "proprie. tary data" pertaining thereto which is nec. essary to enable reproduction or manufacture of the item or performance of the process. For the purpose of this clause, 'proprietary data" means data providing information concerning the details of a grantee's secrets of manufacture, such as may be contained in but not limited to his manufacturing methods or processes, treatment and chemical composition of materials, plant layout and tooling, to the extent that such information is not readily disclosed by inspection or analysis of the product itself and to the extent that the grantee has protected such information from unrestricted use by others. (36 F.R. 22728, Nov. 27, 1971)


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