which the clause in § 14R-9.102-2 is required.

AUTHORIZATION AND CONSENT

The Government hereby gives its authorization and consent (without prejudice to any rights of indemnification) for all use and manufacture, in the performance of this contract or any part hereof or any amendment hereto or any subcontract hereunder (including any lower-tier subcontract), of any invention described in and covered by a patent of the United States (a) embodied in the structure of composition of any article the delivery of which is accepted by the Government under this contract or (b) utilized in the machinery, tools or methods the use of which necessarily results from compliance by the Contractor or the using subcontractor with (i) specifications or written provisions now or hereafter forming a part of this contract, or (ii) specific written instructions given by the Contracting Officer directing the manner of performance. The entire liability to the Government for infringement of a patent of the United States shall be determined solely by the provisions of the indemnity clauses, if any, included in this contract or any subcontract hereunder (including all lower-tier subcontracts), and the Government assumes liability for all other infringement to the extent of the authorization and consent hereinabove granted.

§ 14R-9.102-2 Authorization and consent in contracts for research, development, or demonstration.

Greater latitude in the use of patented inventions may be necessary in a contract for research, development, or demonstration work than in a contract for supplies. Unless prohibited by § 14R-9.102(c), the following clause shall be included in all contracts calling exclusively for research, development, or demonstration work and may be included in contracts calling for both supplies and research, development, or demonstration work where the latter work is a primary purpose of the contract. In all other contracts for both supplies and research, development, or demonstration work, the Authorization and Consent clause § 14R9.102-1 shall be used. If the following clause is included in a contract, the clause in § 14R-9.102-1 shall not be included.

AUTHORIZATION AND CONSENT

The Government hereby gives its authorization and consent for all use and manufac

In order that the Government may be reimbursed for liability for patent infringement arising out of or resulting from the performance of construction contracts or contracts for supplies, including standard parts and components which normally are or have been sold or offered for sale to the public in the commercial open market, or which are the same as such supplies with a relatively minor modification thereof, a clause providing for indemnification of the Government shall be included in such contracts as well as in subcontracts, as appropriate, in accordance with the instructions set forth below. However, a Patent Indemnity clause normally shall not be used in contracts or subcontracts:

(a) When the Authorization and Consent clause in § 14R-9.102-2 applicable to research, development, or demonstration contracts is authorized, except that in contracts calling also for supplies of the kind described above, or for supplying standard parts or components, the Patent Indemnity clause in § 14R-9.103-3(b) may be used with respect to such supplies; in subcontracts thereunder, the Patent Indemnity clause of § 14R-9.103-1 or § 14R-9.103-3(b) shall be used as appropriate:

(b) When the contract is for supplies which clearly are not, or have not, been sold or offered for sale to the public in the commercial open market;

(c) When both performance and delivery are to be outside the United States, its possessions, or Puerto Rico, unless the contract indicates that the supplies are ultimately to be shipped into the United States, its possessions, or Puerto Rico, in which case the instruction of § 14R-9.103-1 or § 14R9.103-3 are applicable; or

(d) When the contract is for an amount of $10,000 or less (as a matter of administrative convenience, however, the clause need not be deleted

where it is a part of a standard form being used for such contracts since it is self-deleting).

§ 14R-9.103-1 Patent indemnification in formally advertised contracts-commercial status predetermined.

Except as prohibited by § 14R-9.103, the following clause is appropriate in formally advertised construction contracts and shall be included in formally advertised contracts for supplies when it has been determined in advance of issuing the invitation for bids that the supplies (or such supplies apart from relatively minor modification to be made thereto) normally are or have been sold or offered for sale by any supplier to the public in the commercial open market.

PATENT INDEMNITY

If the amount of this contract is in excess of $10,000, the Contractor shall indemnify the Government and its officers, agents, and employees against liability, including costs, for infringement of any United States Letters Patent (except Letters Patent issued upon an application which is now or may hereafter be kept secret or otherwise withheld from issue by order of the Government) arising out of the manufacture or delivery of supplies or out of construction, alteration, modification, or repair of real property (hereinafter referred to as "construction work") under this contract, or out of the use or disposal by or for the account of the Government of such supplies or construction work. The foregoing indemnity shall not apply unless the Contractor shall have been informed as soon as practicable by the Government of the suit or action alleging such infringement, and shall have been given such opportunity as is afforded by applicable laws, rules, or regulations to participate in the defense thereof; and further, such indemnity shall not apply to: (i) an infringement resulting from compliance with specific written instructions of the Contracting Officer directing a change in the supplies to be delivered or in the materials or equipment to be used, or directing a manner of performance of the contract not normally used by the contractor; (ii) an infringement resulting from addition to, or change in, such supplies or components furnished or construction work performed which addition or change was made subsequent to delivery or performance by the Contractor; or (iii) a claimed infringement which is settled without the consent of the Contractor, unless required by final decree of a court of competent jurisdiction.

§ 14R-9.103-2 [Reserved]

§ 14R-9.103-3 Patent indemnity in negotiated contracts.

The fact that a contract is negotiated does not preclude inclusion of a Patent Indemnity clause in such a contract, and such clause may be included in negotiated construction contracts and in contracts for supplies when such supplies normally are or have been sold or offered for sale to the public in the commercial open market, or are such supplies with relatively minor modifications made thereto, or in contracts for supplying standard parts or components.

(a) Subject to the foregoing and to the prohibitions in § 14R-9.103, the clause in § 14R-9.103-1 is approved for use in negotiated contracts for construction work or supplies.

(b) Except as prohibited by § 14R9.103, the following clause is appropriate in research, development, or demonstration contracts when it has been determined by OWRT in any particular contracting situation that the contract will require standard supplies sold or offered for sale to the public on the commercial open market or utilize the contractor's practices or methods which normally are or have been used in providing goods and services on the commercial open market.

PATENT INDEMNITY

The Contractor shall indemnify the Government and its officers, agents, and employees against liability, including costs, for infringement of U.S. Letters Patent (except Letters Patent issued upon an application which is now or may hereafter be kept secret or otherwise withheld from issue by order of the Government) resulting from the Contractor's: (a) furnishing or supplying standard parts or components which have been sold or offered for sale to the public on the commercial open market; or (b) utilizing its normal practices or methods which normally are or have been used in providing goods and services in the commercial open market, in the performance of the contract; or (c) utilizing any parts, components, practices, or methods to the extent to which the Contractor has secured indemnification from liability. The foregoing indemnity shall not apply unless the Contractor shall have been informed as soon as practicable by the Government of the suit or action alleging such infringement, and shall

have been given such opportunity as is afforded by applicable laws, rules, or regulations to participate in the defense thereof; and further, such indemnity shall not apply to a claimed infringement which is settled without the consent of the Contractor, unless required by final decree of a court of competent jurisdiction or to an infringement resulting from addition to or change in such supplies or components furnished on construction work performed which addition or change was made subsequent to deliver or performance by the Contractor.

§ 14R-9.103-4 Waiver of indemnity by the Government.

If it is desired to exempt one or more specified United States patents from the Patent Indemnity clause in § 14R-9.103-1 and § 14R-9.103-3(b), concurrence for such exemption shall be obtained from the Solicitor, and the following clause shall be included in the contract, in addition to the Patent Indemnity clause.

WAIVER OF INDEMNITY

Any provision of this contract to the contrary notwithstanding, the Government hereby authorizes and consents to the use and manufacture, solely in the performance of this contract, of any invention covered by the United States patents indentified as listed below, and waives indemnification by the Contractor with respect to such patents: (Identify the patents by number or by other means if more appropriate).

§ 14R-9.104 Notice and assistance.

The Government should be notified by the contractor of all claims of infringement in connection with the performance of a Government contract which come to the contractor's attention. The contractor should also assist the Government, to the extent of evidence and information in the possession of the contractor, in connection with any suit against the Government, or any claims against the Government made before suit has been instituted, on account of any alleged patent or copyright infringement arising out of or resulting from the performance of the contract. Accordingly, the following clause shall be included in all contracts in excess of $10,000 for supplies, services, construction, research, development, or demonstration work. However, that the clause shall not be included in contracts:

(a) Where both performance and delivery are to be outside the United States, its possessions, or Puerto Rico, unless the contract indicates that the supplies are ultimately to be shipped into the United States, its possessions, or Puerto Rico; or

(b) Of $10,000 or less (as a matter of administrative convenience, however, the clause need not be deleted when it is part of a standard form being used for such contracts since it is self-deleting).

NOTICE AND ASSISTANCE REGARDING PATENT AND COPYRIGHT INFRINGEMENT

The provisions of this clause shall be applicable only if the amount of this contract exceeds $10,000.

(a) The Contractor shall report to the Contracting Officer, promptly and in reasonable written detail, each notice or claim of patent or copyright infringement based on the performance of this contract of which the Contractor has knowledgement.

(b) In the event of any claim or suit against the Government on account of any alleged patent or copyright infringement arising out of the performance of this contract or out of the use of any supplies furnished or work services performed hereunder, the Contractor shall furnish to the Government when requested by the Contracting Officer, all evidence and information in possession of the Contractor pertaining to such suit or claim. Such evidence and information shall be furnished at the expense of the Government except where the Contractor has agreed to indemnify the Government.

(c) This clause shall be included in all subcontracts.

88 14R-9.105-14R-9.106 [Reserved]

§ 14R-9.107 Patent rights under contracts for research, development, and demonstration, and under special contracts.

8 14R-9.107-1 General.

This section sets forth the policies, procedures, and practices of OWRT in connection with inventions, patents, and related matters based upon section 408 of the Water Research and Development Act of 1978, Pub. L. 95467 of October 17, 1978, citing sections 9 and 10 of the Federal Nonnuclear Energy Research and Development Act of 1974 (42 U.S.C. 5908, 5909); and, to the extent not inconsistent with the

foregoing statutes, the revised Presidential Memorandum and Statement of Government Patent Policy, August 23, 1971 (36 FR 16887-16892). Pursuant to the foregoing statutes, title to inventions conceived or otherwise made in the course of or under OWRT contracts shall vest in the Government, and that all or part of the rights of the Government in such inventions may be waived if it is determined, in conformity with the provisions of section 9 of the Federal Nonnuclear Energy Research and Development Act, that the interests of the United States and the general public will best be served by such waiver.

§ 14R-9.107-2 [Reserved]

§ 14R-9.107-3 Policy.

(a) Whenever any invention is conceived or otherwise made in the course of or under any contract of OWRT, title to such invention shall vest in the United States unless the Secretary of the Interior, or his designee, waives all or any part of the rights of the United States. While waivers are to be granted only in conformity with the specific minimum considerations and under the carefully delineated conditions set forth in § 14R-9.109-6, it is recognized that waivers comprise a necessary part of the commercialization incentives available to OWRT. It is intended, therefore, that waivers will be provided in appropriate situations; to encourage industrial participation and foster rapid commercial utilization in the overall best interest of the United States and the general public. With regard to any waivers granted under this Part 14R-9, OWRT shall maintain a publicly available, periodically updated record of such waiver determinations.

(b) In contracts having as a purpose the conduct of research, development, or demonstration work and in other special contracts, the Government shall normally acquire title in and to any invention or discovery conceived or first actually reduced to practice in the course of or under the contract, allowing the contractor to retain a nonexclusive, revocable, paid-up license in the invention, and upon written request to OWRT, the right to file and

retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor's nonexclusive license retained in the invention may be revoked or modified by OWRT only to the extent necessary to achieve expeditious practical application of the invention pursuant to an application for and the grant of an exclusive license in the invention.

(c) In contracts having as a purpose the conduct of research, development, or demonstration work and in other special contracts the Government may have to acquire the right to require licensing of background patent rights to insure reasonable public availability and accessibility necessary to practice the results of the contract in the field of technology specifically contemplated in the contract effort. The need for background patent rights and the particular rights that should be obtained for either the Government or the public will depend upon the type, purpose, and the scope of the contract effort, and the cost to the Government of obtaining such rights. Accordingly, the background patent rights provision which will be appropriate for many contract situations is included in the Patent Rights clause.

(d) Nothing in this Part 14R-9 shall be deemed to convey to any individual, corporation, or other business organization immunity from civil or criminal liability, or to create defenses to actions under the antitrust laws.

§ 14R-9.107-4 Procedures.

(a) Selection of Patent Rights clause. (1) Whenever a contract, subcontract, or other arrangement has as a purpose the conduct of research, development, or demonstration work, the operation of a Government-owned research and production facility, the furnishing of architect-engineer, design or other special services, or the coordination and direction of the work of others, and in other special situations involving the use of Government-owned materials, equipment, or classified technical data and information, the Contracting Officer shall include in the proposed contract either the Patent Rights clause of § 14R-9.107-5(a), or the clause of § 14R-9.107-6. The clause

set forth in § 14R-9.107-6 may be used only in contracts calling for basic or applied research work with nonprofit or educational institutions, or in certain consultant contracts as set forth in paragraph (a)(5) of this section.

(2) The Patent rights clause of § 14R-9.107-5(a) and § 14R-9.107-6 provide that the Government shall acquire title to inventions made (i.e. conceived or first actually reduced to practice) in the course of or under the contract. However, the contractor shall retain a nonexclusive, revocable license, and subject to OWRT requirements and regulations, may request the right to file and retain title in any foreign country in which the Government does not elect to secure patent rights. The contractor or the inventor may also retain greater rights than these after an invention has been identified and reported to OWRT if the Secretary or his designee determines that the interests of the United States and the general public will best be served by a waiver of such rights, utilizing the considerations set forth in § 14R-9.109-6.

the

(3) The primary missions of OWRT may require that certain rights in the contractor's privately developed background patents be acquired for the Government's future production, research, development, and demonstration projects. Similar rights may also be required to enable private parties to utilize the technology developed or demonstrated with Government assistance in the field of technology specifically contemplated in the contract effort. To this end, subject to specified exceptions and negotiations, Patent Rights clause in OWRT contracts shall normally include provisions obtaining rights of the type specified in § 14R-9.107-5 to such background patents, except that for contracts up to $50,000, a determination may be made by the Solicitor to omit such provisions upon the contractor's request therefor to OWRT. This determination will be particularly concerned with the implications of the contract's potential for technological advances to any intentions or plans which the Government may have to additionally fund research and development for such advances. It is recog

nized that the precise rights to be acquired under the provisions will depend upon the facts of each situation and are a matter for determination by OWRT and for negotiation with the contractor. General guidelines for use by Contracting Officers and contract negotiators are provided in § 14R-9.107-5(b).

(4) The short form Patent Rights clause in § 14R-9.107-6 may be used in contracts calling for basic or applied research where the contractor is a nonprofit or educational institution, and in special situations such as consultant contracts. However, this clause will not be used in contracts calling for the operation of Government-owned facilities, contracts in which an advance waiver or greater rights has been granted, in certain consultant contracts as explained in § 14R-9.1076, or in other special contracts.

(5) Solicitations and proposed contracts shall provide offerors and prospective contractors with notice of and the right to request, in advance of or within 30 days after the effective date of contracting, a waiver of all or any part of the rights of the United States with respect to subject inventions. In no event will the fact that an offeror has requested such a waiver be a consideration in the evaluation of his offer or the determination of his acceptability. If an advance waiver is granted, the Patent Rights clause of § 14R-9.107-5(a) shall be utilized and appropriately modified in accordance with the terms of such waiver. To provide adequate notice to prospective contractors or offerors, the following provision will be inserted in all solicitations which may result in contracts calling for research, development, or demonstration:

Offerors and prospective contractors in accordance with applicable statutes and OWRT Regulations (41 CFR 14R-9.109-6) have the right to request in advance of or within 30 days after the effective date of contracting a waiver of all or any part of the rights of the United States in subject inventions.

(b) License for the Government, States and domestic municipal governments. When a waiver is granted or foreign rights are retained by either