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able steps to implement more effectively the requirements of this paragraph (k)(4).
(1) Communications. All communications required by this Patents Rights clause should be sent to: Patent Assistant, Office of the General Counsel, National Science Foundation, 4201 Wilson Boulevard, Arlington, VA 22230.
(b) When the above Patent Rights clause is used in a funding agreement other than a grant, “grant” and “grantee” may be replaced by “contract” and “contractor" or other appropriate terms.
(Approved by the Office of Management and Budget under control number 3145-0084) [57 FR 18053, Apr. 28, 1992, as amended at 59 FR 37438, July 22, 1994; 62 FR 49938, Sept. 24, 1997]
(2) Such action is necessary to alleviate health or safety needs which are not reasonably satisfied by the grantee, assignee, or their licensees;
(3) Such action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the grantee, assignee, or licensee; or
(4) Such action is necessary because the agreement required by paragraph (i) of this Patents Rights clause has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject invention in the United States is in breach of such agreement.
(k) Special Provisions for Grants with Nonprofit Organizations. If the grantee is a nonprofit organization, it agrees that:
(1) Rights to a subject invention in the United States may not be assigned without the approval of NSF, except where such assignment is made to an organization which has as one of its primary functions the management of inventions, provided that such assignee will be subject to the same provisions as the grantee;
(2) The grantee will share royalties collected on a subject invention with the inventor, including Federal employee co-inventors (when NSF deems it appropriate) when the subject invention is assigned in accordance with 35 U.S.C. 202(e) and 37 CFR 401.10;
(3) The balance of any royalties or income earned by the grantee with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, will be utilized for the support of scientific research or education; and
(4) It will make efforts that are reasonable under the circumstances to attract licensees of subject inventions that are small business firms and that it will give preference to a small business firm if the grantee determines that the small business firm has a plan or proposal for marketing the invention which, if executed, is equally likely to bring the invention to practical application as any plans or proposals from applicants that are not small business firms; provided that the grantee is also satisfied that the small business firm has the capability and resources to carry out it plan or proposal. The decision whether to give a preference in any specific case will be at the discretion of the grantee. However, the grantee agrees that the Secretary of Commerce may review the grantee's licensing program and decisions regarding small business applicants, and the grantee will negotiate changes to its licensing policies, procedures, or practices with the Secretary when the Secretary's review discloses that the grantee could take reason
$ 650.5 Special patent provisions.
At the request of the prospective awardee or on recommendation from NSF staff, a Grants or Contracts Officer, with the concurrence of the cognizant Program Manager, may negotiate special patent provisions when he or she determines that exceptional circumstances require restriction or elimination of the right of a prospective awardee to retain title to any subject invention in order to better promote the policy and objectives of chapter 18 of title 35 of the United States Code or the National Science Foundation Act. The Grants or Contracts Officer will prepare the written determination required by $ 401.3(e) of title 37 of the Code of Federal Regulations and assure that appropriate reports are made to the Secretary of Commerce and Chief Counsel for Advocacy of the Small Business Administration as required in § 401.3(f). Unless doing so would be inconsistent with an obligation imposed on the Foundation by statute, international agreement, or pact with other participants in or supporters of the research, every special patent provision will allow the awardee, after an invention has been made, to request that it be allowed to retain principal rights to that invention under $ 650.12(e) of this regulation.
$ 650.6 Awards not primarily for re. ask the Program Manager to provide search.
them with copies of the identified (a) Awards not primarily intended to international agreements before or support scientific or engineering re after accepting an award. search need contain no patent provision. Examples of such awards are trav
$ 650.8 Retention of rights by inventor. el and conference grants.
If an awardee elects not to retain (b) NSF fellowships and traineeships rights to an invention, the inventor are primarily intended to support edu
may request the NSF Patent Assistant cation or training, not particular re
for permission to retain principal patsearch. Therefore, in accordance with
ent rights. Such requests should be section 212 of title 35 of the United
made as soon as possible after the States Code, the Foundation claims no
awardee notifies the Patent Assistant rights to inventions made by fellows or
that it does not want to patent the intrainees. The following provision will be included in each fellowship or
vention. Such requests will normally traineeship program
be granted unless either the awardee or
announcement and made part of the award:
the employer of the inventor shows
that it would be harmed by that acINTELLECTUAL PROPERTY RIGHTS tion. As required by $ 401.9 of the imple
menting regulations for the Bayh-Dole The National Science Foundation claims
Act (37 CFR 401.9), the inventor will be no rights to any inventions or writings that might result from its fellowship or
subject to the same conditions that the traineeship awards. However, fellows and awardee would have been, except that trainees should be aware that the NSF, an the special restrictions imposed on other Federal agency, or some private party nonprofit organizations will not apply may acquire such rights through other sup- to the inventor. port for particular research. Also, fellows and trainees should note their obligation to
$ 650.9 Unwanted inventions. include an Acknowledgment and Disclaimer in any publication.
(a) The Foundation will normally $ 650.7 Awards
allow any patent rights not wanted by affected by inter
the awardee or inventor to be dedicated national agreements.
to the public through publication in (a) Some NSF awards are made as
scientific and engineering journals or part of international cooperative re
as a statutory invention registration search programs. The agreements or
under section 157 of title 35 of the treaties underlying many of these pro
United States Code. Except as provided grams require an allocation of patent
in paragraph (b) of this section, the rights different from that provided by
NSF Patent Assistant will acknowlthe Patent Rights clause in $ 650.4(a).
edge a negative election by encourTherefore, as permitted by $ 401.5(d) of
aging the awardee and inventor to the implementing regulations for the Bayh-Dole Act (37 CFR 401.5(d)), para
promptly make all research results graph (b) of the standard Patent Rights
available to the scientific and engiclause in 8 650.4(a) has been modified to
neering community. provide that the Foundation may re
(b) If the NSF Patent Assistant bequire the grantee to transfer to a for
lieves that another Federal agency is eign government or research performer
interested in the relevant technology, such rights in any subject invention as he or she may, after receiving the are contemplated in the international awardee's election not to patent and agreement. The award instrument will ascertaining that the inventor also identify the applicable agreement or
does not want to patent, send a copy of treaty.
the invention disclosure to that agency (b) After an invention is disclosed to to give it an opportunity to review and the Patent Assistant, the recipient of patent the invention. Unless the agenan award subject to an international cy expresses an interest in the invenagreement will be informed as to what tion within thirty days, the Patent Asrights, if any, it must transfer to for- sistant will acknowledge the awardee's eign participants. Recipients may also negative election by encouraging
prompt publication of all research re- or unacceptably restrict the publicasults. If the agency does express an in- tion of the results of the NSF-supterest in patenting the invention, the ported research. Patent Assistant will transfer to it all (b) Approval of assignments by nonrights to the invention.
profit organizations (required by sub
paragraph (k)(1) of the Patent Rights $ 650.10 Inventions also supported by
clause in $ 650.4(a)) will be given by the another Federal Agency.
Patent Assistant unless he or she deSection 401.13(a) of the implementing termines that the interests of the regulation for the Bayh-Dole Act (37 United States Government will be adCFR 401.13(a)) provides that in the versely affected by such assignment. event that an invention is made under (c) Approval of long-term exclusive funding agreements of more than one licensing of NSF-assisted inventions by federal agency, the agencies involved nonprofit organizations (restricted by will, at the request of the grantee or earlier versions of the NSF Patents contractor or on their own initiative, Rights clause and by pre-Bayh-Dole Indesignate one agency to be responsible
stitutional Patent Agreements and for the administration of the inven
waiver conditions) will be given by the tion. Whenever the NSF Patent Assist
Patent Assistant unless he or she deant finds that another agency also sup termines that the interests of the ported an NSF subject invention, he or United States Government will be adshe will consult with the grantee or
versely affected by such waiver. contractor and appropriate personnel
(d) The preference for United States in the other agency to determine if a
industry imposed by paragraph (i) of single agency should be designated to
the Patent Rights clause in $ 650.4(a) administer the Government's rights in
may be waived by the NSF Patent Asthe invention. The Patent Assistant
sistant as provided in that paragraph. may transfer to, or accept from, any
(e) Special restrictions on or limitaother Federal agency, responsibility
tion of the right of an awardee to refor administering a jointly-supported
tain title to subject inventions imposed invention.
under $ 650.5 of this regulation may be $ 650.11 Utilization reports.
waived by the Grants or Contracting
Officer whenever he or she determines, Paragraph (h) of the standard Patent
after consultation with the cognizant Rights clause set forth in $ 650.4 obliges
Program Manager, that the reasons for grantees “to submit on request peri
imposing the restrictions or limitaodic reports no more frequently than
tions do not require their application annually on the utilization of a subject
to a particular invention. invention or on efforts at obtaining
(f) Requests for approvals and waiver such utilization”. At this time, the
under this section should be addressed Foundation does not plan to request
to the NSF Patent Assistant as prosuch reports except in connection with
vided in paragraph (1) of the Patent march-in investigations conducted
Rights clause in $650.4(a). Requests under $ 650.13. This section will be
under paragraph (a) of this section for amended to describe periodic reporting
extensions of time to disclose, elect, or requirements if such are ever estab
file may be made by telephone or eleclished.
tronic mail as well as in writing. A [57 FR 18053, Apr. 28, 1992, as amended at 59 written request for extension of time FR 37438, July 22, 1994]
to disclose, elect, or file can be as
sumed to have been approved unless $ 650.12 Waivers and approvals.
the Patent Assistant replies negatively (a) Requests for extension of time to within ten business days of the date disclose to the NSF Patent Assistant, such request was mailed, telecopied, or make an election to retain title to, or otherwise dispatched. Requests for apfile a patent on a subject invention will provals or waivers under paragraphs be granted by the NSF Patent Assist- (b), (c), (d), and (e) of this section must ant unless he or she determines that be in writing and should explain why such an extension would either imperil an approval or waiver is justified under the securing of valid patent protection the stated criteria. The requester will be given a written explanation of the fact-finding panel, which will establish reasons for denial of a request covered its own fact-finding procedures within by this section.
the requirements of $ 401.6(e) of the im
plementing regulation based on the di8 650.13 Exercise of march-in rights. mensions of the particular dispute. The
(a) The procedures established by Patent Assistant will serve as secthis section supplement those pre retary to the panel, but will not take scribed by $ 401.6 of the implementing part in its deliberations. Written findregulation for the Bayh-Dole Act (37 ings of facts will be submitted to the CFR § 401.6) and apply to all march-in General Counsel, sent by certified mail rights held by NSF including those re- to the patent holder, and made availsulting from funding agreements not able to all other interested parties. covered by the Bayh-Dole Act.
(e) The NSF General Counsel will de(b) Petitions requesting that the NSF termine whether and how the Foundaexercise a march-in right should be ad- tion should exercise a march-in right dressed to the NSF Patent Assistant. as provided in $ 401.6(g) of the impleSuch petitions should:
menting regulation. (1) Identify the patent or patent application involved and the relevant 8650.14
$ 650.14 Request for conveyance of fields of use of the invention;
title to NSF. (2) State the grounds for the proposed (a) The procedures established by march-in;
this section apply to the exercise of the (3) Supply evidence that one or more Foundation's right under paragraph (d) of the four conditions creating a of the Patent Rights clause in $650.4(a) march-in right (lack of practical appli- to request conveyance of title to a subcation, unsatisfied health or safety ject invention if certain conditions needs, unmet requirements for public exist. use, or failure to prefer United States (b) The NSF Patent Assistant may industry) is present; and
request the recipient of an NSF award (4) Explain what action by the Foun to convey to the Foundation or a desdation is necessary to correct that con ignee title in one or more countries to dition.
any invention to which the awardee (C) If evidence received from a peti- has elected not to retain title. The tioner or from the Foundation's admin- NSF Patent Assistant may request imistration of the Patent Rights clause mediate conveyance of title to a subindicates that one or more of the four ject invention if the awardee fails (1) to conditions creating a march-in right submit a timely invention disclosure, might exist, the NSF Patent Assistant (2) to make a timely election to retain will informally review the matter as patent rights, or (3) to file a timely provided in $401.6(b) of the imple- patent application; but only if he or menting regulation. If that informal she determines that such action is rereview indicates that one or more of quired to preserve patent rights. the four conditions creating a march-in (c) The NSF Patent Assistant will inright probably exists, the Patent As- formally review any apparent failure sistant will initiate a formal march-in by an awardee to comply with the reproceeding by issuing a written notice quirements of paragraph (c) of the Patto the patent holder. That notice will ent Rights clause in $ 650.4(a). The inprovide all the information required by terested institution, the inventor, the $ 401.6(c) of the implementing regula patent holder, and any other interested tion. The patent holder may submit in party will be given an opportunity to formation and argument in opposition explain why a particular invention was to the proposed march-in in person, in not disclosed, why an election was not writing, or through a representative. made, or why a patent application was
(d) If the NSF Patent Assistant de- not filed. If the Patent Assistant detertermines that a genuine dispute over mines that a genuine dispute over mamaterial facts exists, he or she will terial facts exists, a cross-directorate identify the disputed facts and notify fact-finding panel will be appointed by the NSF General Counsel. The General the General Counsel. The panel will esCounsel will create a cross-directorate tablish its own fact-finding procedures
based on the dimensions of the particular dispute. Written findings of facts will be submitted to the General Counsel, sent by certified mail to the patent holder, and made available to all other interested parties.
(d) The NSF General Counsel will determine whether the Foundation should request conveyance of title or if it should retain title obtained under $ 650.14(b).
and objectives of the Foundation and, if applicable, the Bayh-Dole Act (35 U.S.C. 200–212) and implementing regulations at part 401 of title 37 of the Code of Federal Regulations. [57 FR 18053, Apr. 28, 1992, as amended at 61 FR 51022, Sept. 30, 1996] 8650.16 Background rights.
The Foundation will acquire rights to a research performer's pre-existing technology only in exceptional circumstances where, due to the nature of the research being supported, the Foundation requires greater control over resulting inventions. The NSF Grants or Contracts Officer, with concurrence of the cognizant Program Manager, will negotiate a background rights provision. If the affected awardee is a small business firm or nonprofit organization, the provision will conform to the requirements of the BayhDole Act (35 U.S.C. 202(f)) as implemented by 37 CFR 401.12).
(a) All actions by the NSF Patent Assistant under $ 650.8 denying an inventor's request to retain rights to a subject invention, under $ 650.12 denying a request for waiver, or under $ 650.14(d) denying the existence of a material dispute may be appealed to the Director of the NSF Division of Grants and Contracts by an affected party within thirty days. A request under $ 650.14(b) to immediately convey title to the Foundation may be appealed to the DGC Director by the title holder within five days.
(b) All actions by a Grants and Agreements Officer or Contracting Officer refusing to eliminate restrictions on or limitation of the right of an awardee to retain title to subject inventions imposed under $650.5 of this regulation may be appealed to the Director of the NSF Division of Contracts, Policy, and Oversight (CPO) by an affected party within thirty days.
(c) A decision by the General Counsel to exercise a march-in right or to request conveyance of title may be appealed by the patent holder or any affected licensee to the NSF Deputy Director within thirty days. When a march-in was initiated in response to a petition, the General Counsel's decision not to exercise a march-in right or to exercise it in a manner different from that requested in the petition may be appealed by the petitioner to the NSF Deputy Director within thirty days.
(d) In reviewing the actions of the NSF Patent Assistant, a Grants and Agreements Officer, a Contracting Officer, or the General Counsel, the CPO Director or NSF Deputy Director will consider both the factual and legal basis for the action or determination and its consistency with the policies
$ 650.17 Subcontracts.
As provided in paragraph (g) of the Patent Rights clause in $650.4(a), awardees should normally use that clause in all subcontracts. At the request of the awardee or subcontractor or on recommendation from NSF staff, the cognizant Grants or Contracts Officer may direct the awardee to insert into subcontracts relating to scientific research a special patent provision negotiated under $ 650.5.
$ 650.18 Delegation of authority.
The General Counsel is responsible for implementing this regulation and is authorized to make any exceptions to or extensions of the NSF Patent Policy as may be required by particular circumstances. The General Counsel will designate the NSF Patent Assistant and that individual is authorized to carry out the functions assigned by this regulation. $ 650.19 Electronic invention handling.
(a) Grantees are encouraged to use the Edison Invention Information Management System maintained by the National Institutes of Health to disclose NSF subject inventions. Detailed instructions for use of that system are