Page images

manner sufficiently complete as to tech- determination, either granting the request nical details to convey to one skilled in the in whole or in part, or denying the request in art to which the invention pertains & clear its entirety. The grantee will be notified understanding of the nature, purpose, opera

of such determination, tion and, as the case may be, the physical, (4) In the event greater rights in any Subchemical, biological, or electrical character- ject Invention are vested in or granted to 1stics of the invention. However, if any Sub- the grantee pursuant to paragraph (3) of Ject Invention is obviously unpatentable this section: under the patent laws of the United States, (1) The grantee's rights in such invensuch disclosure need not be made thereon. tions shall, as a minimum, be subject to a On request of the Grants Officer, the grantee nonexclusive, nontransferable, paid-up 11shall comment respecting the differences or cense to the Government to practice the similarities between the invention and the invention throughout the world by or on closest prior art drawn to his attention. behalf of the Government (including any

(2) Except in the instance of a determina- Government agency) and States and dotion, pursuant to paragraph (3) of this sec- mestic municipal governments, unless the tion, by the Administrator to leave to the Administrator determines that it would not grantee, rights greater than & nonexclusive be in the public interest to acquire the ulicense, the grantee agrees to grant and does cense for the States and domestic municipal hereby grant to the Government the full governments; and said license shall include and entire domestic right, title, and interest the right to sublicense any foreign governin the Subject Invention, The Government ment pursuant to any existing or future may upon written request, grant to the treaty or agreement 1 the Administrator grantee a revocable

or Irrevocable, as determines it would be in the national indeemed appropriate, royalty-free and non- terest to acquire this right; and exclusive license to practice the Subject (4) The grantee further agrees to and Invention. Any such license granted shall ex- does hereby grant to the Government the tend to any existing and future companies, right to require the granting of & License controlled by, controlling or under com- to a responsible applicant(8) under any such mon control with the grantee and shall

invention: be assignable to the successor of the part of

(a) On & nonexclusive or exclusive basis the grantee's business to which such inven.

on terms that are reasonable under the cirtion pertains.

cumstances, unless the grantee, its licensees (3) Not later than (3) months after the

or its assignees demonstrate to the Governdisclosure of a Subject Invention pursuant

ment, at the Government's request, that to paragraph (1) of this section, and with

effective steps have been taken within three out regard to whether the invention is a

(8) years after a patent issued on any such

invention to bring it to the point of practical primary object of this grant, the grantee

application or that it has been made avail. may submit a request in writing to the Grants Officer for a determination by the

able for licensing royalty-free or on terms

that are reasonable in the circumstances, or Administrator leaving the grantee greater rights than that reserved to the grantee in

can show cause why the time period should

be extended or paragraph (2) of this section. Such request

(6) On a nonexclusive or exclusive basis should set forth information and facts which

on terms that are reasonable in the circumin the grantee's opinion, would justify a

stances to the extent that the invention determination that:

is required for public use by Governmental (1) In the case of a Subject Invention

regulations or as may be necessary to fulfill which is clearly & primary object of this

health or safety needs or for such other pubgrant, the acquisition of such greater rights

lic purposes as are stipulated in this grant by the grantee is both consistent with the

and intent of section 1(a) of the Statement and

(111) The grantee shall file in due form is either, a necessary incentive to call forth

and within six (6) months of the granting private risk capital and expense to bring

of such greater rights & U.S. patent applicathe invention to the point of practical ap

tion claiming the Subject Invention and plication or is justified because the Gov

shall furnish, as soon as practicable, the inernment's contribution to such invention is

formation and materials required under small compared to that of the grantee; or

paragraph (2) of section F. As to each Subthat

Ject Invention in which the grantee has (ii) The Subject Invention is not a pri- been given greater rights, the grantee shall mary object of this grant, and that the ac- notify the Grants Officer at the end of six quisition of such greater rights will serve the

(6) months period if he has failed to file public interest as expressed in the State- or caused to be filed a patent application ment, particularly when taking into account covering such invention. If the grantee has the scope and nature of the grantee's stated filed or caused to be filled such an applicaintentions to bring the invention to the tion within six (6) month period but elects point of commercial application and the not to continue prosecution of such applicaguidelines of section 1(a) of the Statement. tion, he shall so notify the Grants Officer The Administrator will review the grantee's not less than sixty (60) days before the exrequest for greater rights and will make a piration of the response period. In either of

App. E the situations covered by the two immedi- tion within nine (9) months after such ately preceding sentences, the Government authorization has been granted. shall be entitled to all right, title and inter- (4) If the grantee files patent applications est in such Subject Inventions subject to the in foreign countries pursuant to authorizareservation to the grantee of a royalty-free, tion granted under paragraph (2) of this nonexclusive license therein.

section, the grantee agrees to grant to the (lv) The grantee shall, if requested by Government an irrevocable, nonexclusive, the Government, either before or after Anal paid-up license to practice by or on its behall closeout of this grant, furnish written reports the invention under any patents which may at reasonable intervals, as to:

Issue thereon in any foreign country. Such (a) The commercial use that is being made license shall include the right to issue subor is intended to be made of such invention; licenses pursuant to any existing or future

(b) The steps taken by the grantee to treaties or agreements between the Governbring such invention to the point of prac- ment and a foreign government for uses of tical application, or to make the invention

such foreign government, provided the Adavailable for licensing.

ministrator determines that it is in the naC. Foreign rights and obligations: (1) tional interest to acquire such right to subSubject to the waiver provisions of para- license. The grantee further agrees to grant graph (2) of this section, it is agreed that

under such foreign patents a nonexclusive the entire foreign right, title and interest in

royalty-free license (1) to sell and to use, any subject invention shall be in the Gov

but not to make, any composition of matter, ernment, as represented for this purpose by article of manufacture, apparatus or system, the Administrator. The Government agrees made under a license granted by the Governto grant and does hereby grant to the

ment to practice the Subject Invention in grantee a royalty-free nonexclusive license to

the United States, and (11) to practice any practice the invention under any patent ob

process comprising the Subject Invention. tained on such subject invention in any

Said licensees must be U.S. citizens or U.S. foreign country. The license shall extend to

corporations in which 75 percent of the votexisting and any future companies controlled

ing stock is owned by U.S. citizens. by controlling or under common control

(5) In the event the Government or the with the grantee, and shall be assignable to

grantee elects not to continue prosecuting the successor of the part of the grantee's

any foreign application or to maintain any business to which such invention pertains.

foreign patent on a Subject Invention, the (2) The grantee may request the foreign

other party shall be notified no less than rights to a subject invention at any time

sixty (60) days before the expiration of the subsequent to the reporting of such inven

response period or maintenance tax due date, tion. The response to such request and notif

and upon written request, shall execute such cation thereof to the grantee will not be

Instruments (prepared by the party wishing unreasonably delayed. The Government will

to continue the prosecution or to maintain waive title to the grantee to such subject in

such patent) as are necessary to enable such vention in foreign countries in which the

party to carry out its wishes in this regard. Government will not file an application for

D. Licenses under Background Patents: & patent for such invention, or otherwise

(1) The grantee agrees that he will make his secure protection therefor. Whenever the

Background Patent(8) available for use in grantee is authorized to file in any foreign

conjunction with a Subject Invention or country the Government will not thereafter

Specified Work Object for use in the specific proceed with filing in such country except

field of technology in which the purpose of on the written agreement of the grantee,

this grant or the work called for or required unless such authorization has been revoked

thereunder falls. This may be done (1) by pursuant to paragraph (3) of this section.

making available, in quality, quantity, and (3) In the event the grantee is authorized

price all of which are reasonable to the cirto file a foreign patent application on a

cumstances, an embodiment of the Subject subject invention, the Government agrees

Invention or specified Work Object, which that it will use its best efforts not to publish

Incorporates the invention covered by such a description of such invention until a United

Background Patent, as & Commercial Item, States or foreign application on such inven

or (11), by the sale or an embodiment of such tion is filed, whichever is earlier, but neither

Background Patent as a Commercial Item the Government, its officers, agents or em- in a form which can be employed in the ployees shall be liable for an inadvertent

practice of a Subject Invention or Specified publication thereof. If the grantee is au- Work Object or can be so employed with thorized to file in any foreign country, he relatively minor modifications, or (ill) by shall, on request of the Grants Officer, fur- the licensing of the domestic Background nish to the Government a patent specifica- Patent(s) at reasonable royalty to responsible tion in English within six (6) months after applicants on their request. such authorization is granted, prior to any (2) If the Administrator determines after foreign illing and without additional com- a hearing that the quality, quantity, or price pensation. The Grants Officer may revoke of embodiments of the Subject Invention or such authorization on failure on the part of Specified Work Object sold or otherwise made the grantee to file any such foreign applica- available commercially as set forth in (D)


(1) (1) is unreasonable in the circumstances, Invention or a Specified Work Object and he may require the grantee to license such for use in only the specific field of technology domestic Background Patent to a responsible in which the purpose of this grant or the applicant at reasonable terms, including a work called for thereunder falls. reasonable royalty, for use in the specific (iv) The grantee agrees it will not seek field of technology in which the purpose of injunctive relief or other prohibition of the this grant or the work called for thereunder use of the invention in enforcing its rights falls, and for use in connection with (i) against any responsible applicant for such a Specified Work Object, or (11) a Subject license and that it will not join with others Invention,

in any such action. It is understood and (3) (1) When a license to practice a domes- agreed that the foregoing shall not affect the tic Background Patent in conjunction with grantee's right to injunctive relief or other a Subject Invention or Specified Work Object prohibition of the use of Background Patents is requested, in writing by a responsible ap

in areas not connected with the practice plicant, for use in the specific field of tech- of a Subject Invention or specified Work nology in which the purpose of this grant Object in the specific field of technology or the work called for thereunder falls, and in which the purpose of this grant or the such Background Patent is not available as work called for thereunder falls, or where set forth in D(1) (1) or (ii), the grantee the grantee has made available a Commershall have six (6) months from the date of cial Item as set out in paragraph D(1) (1) his receipt of such request to decide whether or (11). to make such Background Patent so avail- (4) For use in the specific field of techable. The grantee shall promptly notify the nology in which the purpose of this grant or Grants Officer of any request in writing for the work called for thereunder falls, and in a license to practice & Background Patent in conjunction with a Subject Invention or a conjunction with a Subject Invention or Specified Work Object, the grantee agrees to Specified Work Object, which the grantee grant to the Government a license under any or his exclusive licensee wish to attempt to Background Patent. Such license shall be make available as set forth in D(1) (1) nonexclusive, nontransferable, royalty-free or (11).

and worldwide to practice such patent which (ii) If the grantee decides to make such is not available as a commercial Item as domestic Background Patent so available specified in paragraph D(1) (11) for use of the either by himself or by an exclusive licensee, Federal Government in connection with ple he shall so notify the Administrator within lot plants, demonstration plants, test beds, the said six (6) months, whereupon the and test modules. For all other Government Administrator shall then designate the rea- uses, any royalty charged the Government sonable time within which the grantee must under such license shall be reasonable and make such Background Patent available in shall give due credit and allowance for the reasonable quantity and quality, and at a Government's contribution, if any, toward reasonable price. If the grantee or his ex- the making, commercial development or enclusive licensee decides not to make such hancement of the invention(s) covered by Background Patent so available, or fails to the Background Patent. make it available within the time designated (5) Any license granted under a process by the Administrator, the Background Pat- Background Patent for use with a specified ent shall be licensed to a responsible appli- Work Object shall be additionally limited to cant at reasonable terms, including a rea- employment of the Background Patent under sonable royalty, in conjunction with (a) & conditions and parameters reasonably equivSpecified Work Object, or (b) a Subject In- alent to those called for or employed under vention, and may be limited to the specific

this grant. field of technology in which the purpose of (6) It is understood and agreed that the this grant or the work called for thereunder grantee's obligation to grant licenses under falls.

Background Patents shall be limited to the (iii) The grantee agrees to grant or have extent of the grantee's right to grant the granted to a designated applicant, upon the same without breaching any unexpired conwritten request of the Government, a non- tract it had entered into prior to this grant exclusive license at reasonable terms, in

or prior to the identification of a Backcluding reasonable royalties, under any for

ground Patent, or without incurring any obeign Background Patent in furtherance of

ligation to another solely on account of sald any treaty or agreement between the Gov

grant. However, where such obligation is the ernment of the United States and a foreign

payment of royalties or other compensation, government for practice by or on the behall of such foreign government, if an embodi- the grantee's obligation to license his Backment of the Background Patent is not com- ground Patents shall continue and the reamercially available in that country: Pro- sonable license terms shall include such payvided, however, That no such license will be ments by the applicant as will at least fully required unless the Administrator determines compensate the grantee under said obligathat Issuance of such license is in the na- tion to another. tional interest. Such license may be limited (7) On the request of the Grants Officer by the licensor to the practice of such Back- the grantee shall identify and describe any ground Patent in conjunction with a Subject license agreement which would limit his

Chapter Environmental Protection Agency

App. E

right to grant licenses under any Back-
ground Patent.

(8) In the event the grantee has a parent
or an affiliated company, which has the right
to license a patent which would be a Back-
ground Patent owned by the grantee, but
which is not available as a Commercial Item
as specified in paragraph D(1) (1) or (11),
and a qualified applicant requests a license
under such patent for use in the specific
feld of technology in which the purpose of
this contract or the work called for there-
under falls, and in connection with the use
of a Subject Invention or specified Work
Object, the grantee shall, at the written re-
quest of the Government, recommend to his
parent company, or affiliated company, as
the case may be, the granting of the re-
quested license on reasonable terms, includ-
ing reasonable royalties, and actively assist
and participate with the Government and
such applicant, as to technical matters and
in Ilalson functions between the parties, as
may reasonably be required in connection
with any negotiations for issuance of such
license. For the purpose of this subpara-
graph, (1) a parent company is one which
owns or controls, through direct or indirect
ownership of more than 60 percent of the
outstanding stock entitled to vote for the
election of directors, another company or
other entity and, (1) affiliated companies
are companies or other entities owned or
controlled by the same parent company.

E. Related Inventions: The grantee shall submit to the Grants Officer within six (6) months after the submission of the final invention report submitted pursuant to paragraph F(6), written information concerning the conception or actual reduction to practice, or both, as may be applicable, of every Invention made by the grantee pertain. ing to the work called for in this grant which was conceived or first actually reduced to practice within the period of three (3) months prior, during, or three (3) months subsequent to the term of this grant, which Invention would be a Subject Invention 11 made under this grant, but which the grantee belleves was made outside the performance of work required under this grant. Tho Grants Officer may require additional information to be furnished in confidence by the grantee. At the request of the Grants Officer made during or subsequent to the term of this grant including any extensions for additional research and development work, the grantee shall furnish Information concerning any other invention which appears to the Grants Officer to reasonably have the possibility of being a Subject Invention.

All Information supplied by the grantee hereunder shall be of such nature and character as to enable the Grants Officer reasonably to ascertain whether or not the invention concerned is a Subject Invention. Fallure to furnish such information called for herein shall, in any subsequent proceeding, place on the grantee the burden of going forward with the evidence to establish that such in

vention is not a subject Invention. If such evidence is not then presented the invention shall be deemed to be & Subject Invention. After receipt of information furnished pursuant hereto, the Grants Officer shall not unduly delay rendering his opinion on the matter. The Grants Oficer's decision shall be subject to the Disputes Clause of the grant. The grantee may furnish the information required under this section E as grantee confidential information, which shall be identifled as such.

F. General provisions: (1) The grantee shall obtain the execution of and deliver to the Grants Officer any document relating to Subject Inventions as the Grants Officer may require under the terms hereof to enable the Government to file and prosecute patent applications therefor in any country and to evidence and preserve its rights. Each party hereto agrees to execute and deliver to tho other party on its request suitable documents to evidence and preserve Ucense rights derived from this appendix.

(2) The Government and the grantee shall promptly notify each other of the filing of a patent application on a Subject Invention in any country, identifying the country or countries in which such allng occurs and tho date and serlal number of the application, and on request shall furnish a copy of such application to the other party and a copy of any action on such patent application by any Patent Office and the responses thereto. Any applications or responses furnished shall be kept confidential.

(3) Any other provisions of this appendix notwithstanding, the Grants Officer, or his authorized representative shall, until the expiration of three (3) years after final payment under this grant, have the right to examine in confidence any books, records, documents, and other supporting data of the granteo which the Grants Omcer or his authorized representative shall reasonably deem directly pertinent to the discovery or identif. cation of Subject Inventions or to the compllance by the grantee with the requirements of this appendix.

(4) Notwithstanding the grant of a license under any patents to the Government pursuant to any provisions of this appendix, the Government shall not be prevented from contesting the validity, enforceability, scope, or title of such licensed patent.

(5) The grantee shall furnish to the Grants Officer every 12 months, or earlier as may be agreed in this grant (the initial period shall commence with the date of award of this grant) & interim report listing all Subject Inventions required to be disclosed which were made during the interim reporting period or certify that there are no such unreported inventions.

(6) The grantee shall submit a final report under this grant listing all Subject Inventions required to be disclosed which were made in the course of the work performed under this grant, and all subagreements subJect to this appendix. I to the best of the



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 lie cense 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 avallable to the Government (1) from other sources, or (ii) 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 he has divested himsell of the right to license any Background Patent (or any invention owned by the grantee which could become the subject of a 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 prectice 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 consulte 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 Gov. ernment's rights. [36 F.R. 22725, Nov. 27, 1971) Appendix C-Rights In Data and

Copyrights 1. The term "Subject Data" as used herein Includes writings, sound recordings, mag. netic 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,

« PreviousContinue »