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Part 14R-9

Patents, data, and copyrights....

Page 312



AUTHORITY: 5 U.S.C. 1976 ed., 301; sec. 2, Reorganization Plan No. 3 of 1950, 15 FR 3174; 42 U.S.C. 7879.

SOURCE: 45 FR 31066, May 12, 1980, unless otherwise noted.

Sec. 14R-9.000 Scope of part.

Subpart 14R-9.1-Patents

8 14R-9.000 Scope of part.

This part sets forth policies, instructions, and contract clauses pertaining to patents, data, and copyrights in connection with the procurement of supplies and services.

Subpart 14R-9.1–Patents

14R-9.100 Scope of subpart. 14R-9.101 Contracting Officer to consult

with Solicitor. 14R-9.102 Authorization and consent. 14R-9.102-1 Authorization and consent for

supplies or services. 14R-9.102–2 Authorization and consent in

contracts for research and development

or demonstration. 14R-9.103 Patent indemnification of Gov

ernment by contractor. 14R-9.103-1 Patent indemnification in for

mally advertised contracts-commercial

status predetermined. 14R-9.103-2 (Reserved) 14R-9.103-3 Patent indemnification in ne

gotiated contracts. 14R-9.103-4 Waiver of indemnity by the

Government. 14R-9.104 Notice and assistance. 14R-9.105-14R-9.106 (Reserved) 14R-9.107 Patent rights under contracts

for research, development, and demon

stration, and under special contracts. 14R-9.107-1 General. 14R-9.107-2 [Reserved] 14R-9.107-3 Policy. 14R-9.107-4 Procedures. 14R-9.107-5 Clause for contracts (long

form). 14R-9.107-6 Clause for contracts (short

form). 14R-9.107-7 Foreign contracts. 14R-9.108 [Reserved) 14R-9.109 Administration of patent

clauses. 14R-9.109-1 Patent rights follow-up. 14R-9.109-2 Follow-up by contractor. 14R-9.109-3 Follow-up by Government. 14R-9.109–4 Remedies. 14R-9.109-5 Conveyance of invention

rights acquired by the Government. 14R-9.109-6 Waivers. 14R-9.110 Reporting of royalties.

§ 14R-9.100 Scope of subpart.

This subpart sets forth policies, procedures, and contract clauses with respect to inventions made or utilized in connection with any contracts, grants, agreements, understandings, or other arrangements entered into with or for the benefit of OWRT. OWRT'S primary mission in its R&D procurement process is not oriented toward procurement for Government use, but rather toward the development and ultimate utilization of methodologies and technologies to assure efficient sources of water and water resources. OWRT must work in cooperation with industry in the development of new water sources and resources and in achieving a goal of widespread commercial use. To this end, Congress has provided OWRT with an array of incentives to secure the adoption of new technology developed fo OWRT. An important incentive in commercializing technology is that provided by the patent system. As set forth in these regulations, patent incentives, including the Secretary of the Interior's authority to waive the Government's patent rights to the extent provided for by the statute, will be utilized in appropriate situations to encourage industri. al participation, foster commercial utilization and competition, and make the benefits of OWRT's activities widely available to the public. In addition to considering the waiver of patent rights at the time of contracting, OWRT will also consider the incentive of a waiver of patent rights upon the reporting of an identified invention when requested by the contractor, or the employee-inventor with

Subpart 14R-9.2—Technical Data and

Copyrights 14R-9.200 Scope of subpart. 14R-9.201 Definitions. 14R-9.202 Acquisition and use of technical

data. 14R-9.202-1 General. 14R-9.202-2 Policy. 14R-9.202-3 Procedures. 14R-9.202-4 Procedures (Government

owned, contractor operated facilities). 14R-9.202-5 Negotiations and deviations.

the permission of the contractor. These requests can be made whether or not a waiver request was made at the time of contracting. Waivers for an identified invention will be provided where it is determined that the patent waiver will be a real incentive to achieving the development and ultimate commercial utilization. Where a waiver of Government patent rights is granted, either at the time of contracting or upon request after an invention is made, certain safeguards will be required by OWRT to protect the public interest.

8 14R-9.101 Contracting Officer to consult

with Solicitor. (a) Except as is otherwise provided in this subpart, all authority of the Secretary of the Department of the Interior with respect to patent policies and procedures has been delegated to the Solicitor of the Department (Departmental Manual, Part 210, Chapter 2, paragraph 210.2.2A(5)). Therefore, any action under any contract provision required of the Contracting Officer (or other official having administrative authority over the contract) which affects the disposition of rights in inventions and in related area of data, shall be taken only after consultation with and approval of the Solici. tor of the Department. No modification or alteration of any contract provision in these areas shall be made by the Contracting Officer without the express written authorization of the Solicitor. Requests for deviation shall be submitted to the Solicitor and the reasons for the actions requested set forth.

(b) The Office of the Solicitor shall be consulted for policies, instructions, and contract clauses concerning inventions, patents, and data for use in contracts which are to be performed outside the United States, its possessions, and Puerto Rico.

tier) can be maintained only against the Government in Court of Claims, and not against the contractor or subcontractor, in those cases where the Government has authorized or consented to the manufacture or use of the patented invention. Accordingly, to insure that work by a contractor or subcontractor under a Government contract may not be enjoined by reason of patent infringement, authorization and consent shall be given as provided below. The liability of the Government for damages in any such suit against it may, however, ultimately be borne by a contractor of subcontractor in accordance with the terms of any patent indemnity clause also included in the contract, and an authorization and consent clause does not detract from any patent indemnification commitment by a contractor or subcontractor. Therefore, both a patent indemnity clause and an authorization and consent clause may be included in the same contract.

(b) In certain contracting situation, such as those involving demonstration projects, consideration must be given to the impact of third party-owned patents covering technology that may be incorporated in the project which may ultimately affect widespread commercial use of the project results. In such situations, the Interior Department's Solicitor (Division of General Law) should be consulted to determine what modifications, if any, should be made to the utilization of the Authori. zation and Consent and Indemnity provisions or what other action might be deemed appropriate.

(c) An Authorization and Consent clause shall not be used in contracts where both complete performance and delivery are to be outside the United States, its possessions or Puerto Rico.

8 14R-9.102 Authorization and consent.

(a) Under 28 U.S.C. 1498, any suit for infringement of a United States patent based on the manufacture or use by or for the United States of an invention described in and covered by a patent of the United States by a contractor or by a subcontractor (at any

8 14R-9.102-1 Authorization and consent

in contracts for supplies or services. The following contract clause shall be included in all contracts for supplies or services except:

(a) When prohibited by $ 14R9.102(c); or

(b) In contracts for research, development, or demonstration work in

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