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(1) files or causes to be filed a United States tion concerning the Contractor's intention or foreign application thereon, or (u) sub- and plan to bring the Invention to the point mits the final report required by (c) (ul) of commercial application. The Contracting of this clause, whichever is later: Provided, Oficer shall review the Contractor's request That the Contractor shall not forfeit rights for greater rights and shall notify the Conin & Subject Invention 1 (A) contending tractor whether, and the extent to which, that the invention is not a Subject In- such request is granted. Any rights granted vention, he nevertheless reports the inven- to the Contractor shall be subject to the protion and all facts pertinent to his contention visions of (1) of this clause (MAY 1964). to the Contracting Officer within the time
(32 F.R. 524, Jan. 18, 1967, as amended at specified in (1) or (1) above, or (B) be 32 F.R. 4260, Mar. 18, 1967; 33 F.R. 7399, May establishes that the failure to report was due 18, 1968; 33 F.R. 19922, Dec. 28, 1968; 35 F.R. entirely to causes beyond his control and
6832, Apr. 30, 1970] without his fault or negligence. The Contractor shall be deemed to hold any such
$ 9.107–6 Clause for foreign contracts. forfeited Subject Invention, and the patent
A patent rights clause shall be included applications and patents pertaining thereto, in trust for the Government pending written
in every contract having as one of its assignment of the invention, The rights
purposes experimental, developmental, accruing to the Government under this para
or research work which is to be pergraph shall be in addition to and shall not formed outside the United States, its supersede any other rights which the Gov
possessions, or Puerto Rico. Except as ernment may have in relation to unre- provided in $ 9.107-8 with respect to conported Subject Inventions. Nothing con
tracts on behalf of the National Aerotained herein shall be construed to require
nautics and Space Administration, the the Contractor to report any invention which 1 is not in fact a Subject Invention.
clauses authorized in accordance with (k) Examination of records relating to
§ 9.107–5 may be used; however, any inventions. The Contracting Oficer or his clause may be replaced by any other authorized representative shall, until the clause tailored to meet requirements peexpiration of three (3) years after final pay- culiar to foreign procurement provided ment under this contract, have the right to the replacement clause incorporates the examine any books, records, documents, and
principles of the clause being replaced. other supporting data of the Contractor which the contracting Officer or his au
[29 F.R. 9760, July 21, 1964) thorized representative shall reasonably deem
$ 9.107-7 Contracts relating to atomic directly pertinent to the discovery or i identification of Subject Inventions or to
energy. compliance by the Contractor with the re- (a) Except as provided in paragraph quirements of this clause.
(b) of this section, the following para(c) Patent Rights (Deferred) Clause.
graph shall be inserted as a part of the Where the contracting officer has deter
Patent Rights clause set forth in $ 9.107mined that the proposed contract comes
5(b) in all research or development conwithin $ 9.1074(d), he shall include in
tracts relating to atomic energy. the contract the Patent Rights (Title) (1) With respect to any Subject Invention clause set forth in paragra (a) of this made by employees of the Contr or (except section, except that the name of the
clerical and manual labor personnel who do clause shall be changed to “Patent Rights
not have access to technical data), and relat(Deferred)” and paragraph (h) of that
ing to the production or utilization of special
nuclear material or atomic energy within the clause shall be replaced by the following
purview of the Atomic Energy Acts of 1946 di paragraph (h). The clause, when so
(42 U.S.C. 1801-1819) and of 1954 (42 U.S.C. te modified, differs from the clause set forth 2011-2296), the Contractor agrees:
in paragraph (a) of this section only in (i) To furnish to the U.S. Atomic Energy
the circumstances under which the Gov- Commission (hereinafter in this paragraph EC
ernment may permit the contractor to (1) referred to as “the Commission') acquire greater rights than the license. through the Contracting Officer complete
information regarding such Subject Inven(h) Contractor's request for greater rights.
tion, the Commission to have the sole and The Contractor at the time of disclosing a Subject Invention pursuant to paragraph (c)
conclusive power to determine whether and of this clause, but not later than three (3)
where a patent application shall be filed, and months thereafter, may submit in writing to determine the disposition of the title to to the Contracting Officer, in accordance with and rights under any such application or any applicable regulations, a request for greater patent that may issue thereon; rights in such Invention than the license (il) To obtain the execution of and deliver reserved to the Contractor in paragraph (b) to the Commission, all documents relating of this clause. Each such request shall in- to each Subject Invention and to do all clude, but need not be limited to, informa- things necessary or proper to carry out any
determination of the Commission, made (i) If the request states that the NASA under (1) (1) above;
clause is required in any resulting con(lil) Unless otherwise authorized in writ
tract and the work to be performed is ing by the Commission to obtain patent
not severable and is funded wholly or in agreements from all such employees to effectuate the purposes of this paragraph (1); and
part by NASA, then the NASA clause and (iv) Unless otherwise authorized in writ- no other patent rights clause shall be ing by the Commission, to insert this para- included in the contract. graph (1) in all subcontracts.
(ii) If the request states that the No claim for pecuniary award or compensa
NASA clause is required in any resulting tion under the provisions of the Atomic contract and the work to be performed Energy Acts of 1946 and 1954 shall be asserted under the contract is severable and is by the Contractor or his employees with only in part for NASA, then the work respect to any Subject Invention covered by
which is on behalf of NASA shall be this paragraph (OCTOBER 1966).
identified in the contract and the NASA (b) Where the work to be performed clause shall be made applicable thereto. or the material or equipment to be fur- That portion of the work for a Departnished by the contractor is of such char- ment shall likewise be identified and the acter that any such Subject Inventions clause contained in g 9.107-5 or authorthat may be made will probably (1) re- ized in § 9.107–6, as appropriate, shall be late only incidentally (and not directly) made applicable to such portion if a to some phase of the basic research or patent rights clause is required by this development work which the Atomic subchapter. Energy Commission conducts or spon- (iii) If the request states that the sors, (2) relate to a field or work in which NASA clause is not required in any rethe contractor has an established in- sulting contract and the work to be perdustrial and patent position, or (3) re- formed under the contract is not wholly sult from routine development or on behalf of NASA, then the clause conproduction work by the contractor, a tained in $ 9.107-5 or authorized in provision authorizing the contractor to § 9.107-6, as appropriate, shall be used retain license rights may be incorporated if a patent rights clause is required by in the paragraph set forth in paragraph this subchapter. (a) of this section. Any such provision (iv) If the request states that the or any deviation from the paragraph NASA clause is not required in any reset forth in paragraph (a) of this sec- sulting contract and such contract is tion, which the Military Department wholly on behalf of NASA, then no concerned proposes to authorize, shall patent rights clause shall be included in be forwarded in accordance with De- such contract. partmental procedures to the Atomic
(2) The price of any contract deEnergy Commission for recommendation scribed in subparagraph (1) of this paraand shall not be authorized except with graph shall in no event be increased by the concurrence of the Atomic Energy reason of the inclusion of any patent Commission.
rights clause in the contract. [29 F.R. 9760, July 21, 1964, as amended at (b) Deviations. No deviations shall 32 F.R. 528, Jan. 18, 1967]
be made under $ 1.109 of this chapter in 8 9.107-8 Contracts placed for NASA.
any NASA clause providing for property
rights in inventions except with the prior (a) Patent Rights Clause. (1) The
approval of NASA. Requests for such National Aeronautics and Space Admin
deviations, whether individual or blanket, istration (NASA) will from time to time shall be processed in accordance with request the Departments to place con- $ 1.109-3 of this chapter. tracts on behalf of NASA. Such re- [29 F.R. 9761, July 21, 1964) quests will state whether or not a NASA
Contracts relating to space. clause providing for property rights in
In order that inventions arising out of inventions is required, and the request
Department of Defense sponsored space should have attached thereto the appro
research and development may be availpriate clause desired by NASA. If such
able for use for the benefit of the general clause is not furnished by NASA, it must
public in communications satellite sysbe obtained from NASA and be included
tems, whether such systems are operated in the contract. The following rules by or for the Government or by private amplify the use of patent rights clauses enterprise for the transmission of comin such contracts.
mercial or Government traffic, the para
graph set forth below, in lieu of paragraph (b) (1) of the Patent Rights clause prescribed in $ 9.107-5(b) shall be inserted, except as provided in $ 9.107-8, in any contract having as one of its purposes the performance of research and development work under a space program, project, or task:
(b) Rights granted to the Government. (1) The Contractor agrees to and does hereby grant to the Government an irrevocable, nonexclusive, and royalty-free license to practice and have practiced each Subject Invention (made by the Contractor) throughout the world for Governmental purposes, including the practice of each such Subject Invention (1) in the manufacture, use, and disposition of any article or material, (ii) in the use of any method, or (111) in the performance of any service, acquired by or for the Government or with funds derived through the Military Assistance Program of the Government or funds otherwise derived through the Government. In addition, the Government shall have the right to grant licenses to others, under such terms and conditions as may be prescribed, for the practice of such Subject Invention throughout the world in the design, development, manufacture, operation, maintenance, and testing of communications satellite systems, and of equipment, components, and ground tracking, transmitting and receiving facilities therefor (OCTOBER 1966). (32 F.R. 528, Jan. 18, 1967) § 9.108 Patent rights under contracts
for personal services. (a) Except as provided in paragraph (b) of this section, the following clause, which is based on Executive Order 10096, shall be inserted in all contracts with individuals who are to render personal services.
PATENTS (DECEMBER 1953) (a) For the purpose of determining the rights of the Government and the Contractor in and to inventions, the Contractor agrees to be bound by all provisions of Executive Order 10096, dated January 23, 1950, and any orders, rules, regulations, or the like issued thereunder.
(b) The Contractor shall: (1) Make written disclosure promptly to the Contracting Officer of all inventions of the Contractor which are conceived or first reduced to practice during the term of this contract, and sign and execute all papers necessary for conveying to the Government the right to which the Government is entitled in accordance with the determination made under the provisions of Executive Order 10096, or (ii) certify to the Contracting Officer that, to the best of the Contractor's knowledge and belief, no inventions have been conceived or first reduced to practice during the term of this contract.
(b) Where it is contemplated that research, experimental, or developmental work will not be involved, paragraph (b) of the clause may be omitted. Upon written request by the prospective contractor and approval by the Head of the Procuring Activity or his authorized representative, the clause may be modified or omitted where:
(1) The period of employment is to be not more than 90 days in any 1 calendar year; or
(2) (i) The period of employment called for in the contract or in any renewal thereof is more than 90 days but not more than 1 year of full-time service, and
(ii) The prospective contractor is bound by an obligation which existed prior to entering into the proposed contract with the Government and which was not entered into in contemplation thereof, and the discharge of which would be inconsistent with the discharge of any obligation arising under Executive Order 10096. (32 F.R. 528, Jan. 18, 1967) § 9.109 Administration of patent rights
clauses. The President's Statement of Government Patent Policy (see § 9.107) provides that every appropriate effort should be made to realize for the Government and the public the benefit of inventions and discoveries resulting from experimental, research and development contracts even where the inventions are an incidental product of the work. It is important that the Government be in a position to know and exercise its rights in order to avoid payment of royalties on inventions in which it has rights and to defend itself against unjustified claims and suits for patent infringement. To attain these ends, contracts having patent rights clauses should be so administered that:
(a) Subject Inventions are identified and reported as required by the contract clauses;
(b) The rights of the Government in such Inventions are established;
(c) The rights of the Government are documented by formal instruments such as licenses or assignments; and
(d) When appropriate, patent applications on Subject Inventions are timely filed and prosecuted by contractors or by the Government. (32 F.R. 528, Jan. 18, 1967]
& 9.109-1 Applicability.
The following policies and procedures apply to all contracts having patent rights clauses, except that these policies and procedures may be modified in their application to a foreign contract so as to be consistent with local law and custom and the provisions of the patent rights clause of the particular contract (see $ $ 1.109 and 9.107–6). (32 F.R. 528, Jan. 18, 1967) § 9.109–2 Follow-up by Government.
(a) Each Department shall maintain "followup" systems to assure that Subject. Inventions are identified and that the Government's rights therein are established and protected. Followup activities for contracts which include as part of a patent rights clause either the paragraph set forth in $.9.107–7(a) or the NASA clause referenced in $ 9.107-8 (a) shall be coordinated with the Atomic Energy Commission and the National Aeronautics and Space Administration, respectively.
(b) When it is determined after the award of a contract that the contractor or subcontractor may not have a clear understanding of the rights and obligations of the parties under a patent rights clause, a postaward orientation conference or letter should be used to explain these rights and obligations (see Subpart R, Part 1 of this chapter).
(c) The contracting officer administering the contract shall be responsible for receiving invention disclosures, reports, confirmatory instruments, notices, requests, and other documents and information submitted by the contractor pursuant to a patent rights clause. Where the contractor fails to furnish documents or information called for by the clause within the time required by the clause, the contracting officer administering the contract shall promptly request the contractor to supply the required documents or information and, if the failure persists, shall take appropriate action to secure compliance. Invention disclosures, reports, confirmatory instruments, notices, requests, and other documents and information relating to patent rights clauses shall be sent by the contracting officer administering the contract to the procuring Department for appropriate action.
(d) The procuring Department shall establish a method to detect and correct
failures by the contractor to comply with his obligations under the patent rights clauses, such as failures to disclose and report Subject Inventions, both before and after the contract otherwise has been performed. This effort should be directed primarily towards contracts which because of the nature of the work or the large dollar amount spent are Jikely to result in Subject Inventions significant in number or quality, and towards contracts where there is reason to believe the contractors may not be complying with their contractual obligations. Other contracts should be spotchecked when feasible. As a minimum, appropriate followup shall include the investigation or review of selected contracts or contractors by an individual or team qualified in patent and technical matters.
(e) Followup activities may include use of Government patent and technical personnel:
(1) To review technical reports submitted by the contractor;
(2) To check the Oficial Gazette of the U.S. Patent Ofice and other sources for patents issued to the contractor in fields related to his Government contracts; and
(3) If additional information is required, to interview contractor personnel as to work under the contract involved, observe the work on site, and inspect laboratory notebooks and other records of the contractor related to work under the contract.
(f) In the administration of a subcontractor's obligations under a patent rights clause, the procedures outlined above shall be followed by the Govern. ment. (32 F.R. 529, Jan. 18, 1967) $ 9.109-3 Maintenance and use of rec
ords of performance. (a) Significant or repeated failures by a contractor to comply with the patent rights clauses of his contracts shall be documented (see $$ 1.308 and 1.905– 1(c)).
(b) Where a contract is subject to the Contractor Performance Evaluation Program (§ 1.908–1 of this chapter), the procuring activity shall report to the project manager any significant or repeated failure to comply with the patent right clause. The project manager shall note in the Contractor Performance Evalu
ation Reports any such information which he has received relating to the contractor's meeting his obligations under the "required clauses." (32 F.R. 529, Jan. 18, 1967, as amended at 33 F.R. 15391, Oct. 17, 1968]
(b) Where a contract is subject to the contractor performance evaluation program (§ 4.117 of this chapter), the procuring activity shall report to the project manager any significant or repeated failure to comply with the patent right clause. The project manager shall note in the contract or performance evaluation reports any such information which he has received relating to the contractor's meeting his obligations under the “required clauses.” (32 F.R. 529, Jan. 18, 1967, as amended at 32 F.R. 10172, July 11, 1967] § 9.109_4 Conveyance of invention
rights to Government. (a) Where the Government is entitled to the conveyance of the entire right, title, and interest in a subject invention pursuant to a contract, assignments are required from the inventor to the contractor and from the contractor to the Government, to establish clearly the chain of title from the inventor to the Government. The form of conveyance of title from the inventor to the contractor must be legally sufficient to convey the rights the contractor is required to convey to the Government. The format set forth below, which provides the complete chain of title in a single instrument, is approved for use by the contractor to convey title to the Government pursuant to paragraphs (b) and (c) (1) (v) of the clause in $ 9.107–5(a), and paragraphs (d) (iii) (B) and (d) (v) of the clause in $ 9.107–5(b). The contractor shall forward either the preferred single instrument assignment or, if separate documents are used, both assignments at the same time for recording as required by § 9.109–5.
The undersigned Inventor(s), in recognition of his (their) obligation as employee(s)
of the Contractor to assign inventions to the Contractor, and pursuant to the obligations of the Contractor to the Government under the above contract, hereby assigns (assign) to the United States of America, subject to a nonexclusive and royalty-free Ucense which is hereby reserved to the Contractor, all right, title and interest in and to each invention disclosed and claimed in the above U.S. patent application.
The license reserved to the Contractor shall extend to all existing and future associated and affiliated companies, if any, within the corporate structure of which the Contractor 1s a part and shall be assignable to the successor of that part of the Contractor's business to which such invention pertains.
The Inventor(s) further agrees (agree) to assist the Contractor, and the Government, upon request, by furnishing any available information and documents, and by performing all acts and doing all things which may be reasonably necessary to make this assignment effective.
The Contractor joins in and agrees to the foregoing assignment, and except for the above reservation of a license relinquishes and assigns all rights, title and interest in and to such inventors, and further agrees to furnish to The United States of America, upon request, any available information and documents necessary for the prosecution of the above-identified application for patent (including prosecution and settlement of interferences), and any substitution, division, continuation-in-part, or continuation of such patent application and any application for reissue of any patent resulting from such patent application. Signed this day of
(Inventor(s)) ATTEST: By
(Contractor) (b) Where the Government is entitled to a royalty-free license in and to a Subject Invention pursuant to contractual provisions (see paragraphs (1) (1) of the clause in $ 9.107-5(a) and (b) (1) of the clause in $ 9.107-5(b)), the format set forth below is approved for use by the contractor in making such a grant.
(Title of Invention)