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CHAPTER 14R-OFFICE OF WATER

RESEARCH AND TECHNOLOGY,
DEPARTMENT OF THE INTERIOR

Part 14R-9

Page 314

Patents, data, and copyrights........

PART 14R-9-PATENTS, DATA, AND

COPYRIGHTS

Sec. 14R-9.000 Scope of part.

Sec. 14R-9.202-4 Procedures (Government

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

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

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

Subpart 14R-9.1-Patents

§ 14R-9.000 Scope of part.

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

Subpart 14R-9.1—Patents

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

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

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

contracts for research, development or

demonstration. 14R-9.103 Patent indemnification of Gov

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

mally advertised contracts-commercial

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

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

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

for research, development, and demon

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

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

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

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

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

§ 14R-9.100 Scope of subpart.

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

Subpart 14R-9.2- Technical Data and

Copyrights

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

data. 14R-9.202-1 General. 14R-9.202-2 Policy. 14R-9.202-3 Procedures (supply, research,

development, or demonstrations contracts).

centive of a waiver of patent rights use by or for the United States of an upon the reporting of an identified in- invention described in and covered by vention when requested by the con- a patent of the United States by a contractor, or the employee-inventor with tractor or by a subcontractor (at any the permission of the contractor. tier) can be maintained only against These requests can be made whether

the Government in Court of Claims, or not a waiver request was made at

and not against the contractor or subthe time of contracting. Waivers for

contractor, in those cases where the an identified invention will be provid

Government has authorized or coned where it is determined that the

sented to the manufacture or use of patent waiver will be a real incentive

the patented invention. Accordingly, to achieving the development and ulti

to insure that work by a contractor or mate commercial utilization. Where a

subcontractor under a Government waiver of Government patent rights is

contract may not be enjoined by granted, either at the time of contract

reason of patent infringement, authoring or upon request after an invention

ization and consent shall be given as is made, certain safeguards will be required by OWRT to protect the public provided below. The liability of the interest.

Government for damages in any such

suit against it may, however, ultimate$ 14R-9.101 Contracting Officer to consult ly be borne by a contractor of subconwith Solicitor.

tractor in accordance with the terms (a) Except as is otherwise provided of any patent indemnity clause also inin this subpart, all authority of the

cluded in the contract, and an authoriSecretary of the Department of the

zation and consent clause does not deInterior with respect to patent policies

tract from any patent indemnification and procedures has been delegated to commitment by a contractor or subthe Solicitor of the Department (De- contractor. Therefore, both a patent partmental Manual, Part 210, Chapter indemnity clause and an authorization 2, paragraph 210.2.2A(5)). Therefore, and consent clause may be included in any action under any contract provi- the same contract. sion required of the Contracting Offi- (b) In certain contracting situation, cer (or other official having adminis- such as those involving demonstration trative authority over the contract) projects, consideration must be given which affects the disposition of rights to the impact of third party-owned in inventions and in related area of patents covering technology that may data, shall be taken only after consul

be incorporated in the project which tation with and approval of the Solici

may ultimately affect widespread comtor of the Department. No modifica

mercial use of the project results. In tion or alteration of any contract pro

such situations, the Interior Departvision in these areas shall be made by

ment's Solicitor (Division of General the Contracting Officer without the

Law) should be consulted to determine express written authorization of the

what modifications, if any, should be Solicitor. Requests for deviation shall be submitted to the Solicitor and the

made to the utilization of the Authorireasons for the actions requested set

zation and Consent and Indemnity forth.

provisions or what other action might (b) The Office of the Solicitor shall

be deemed appropriate. be consulted for policies, instructions,

(c) An Authorization and Consent and contract clauses concerning inven

clause shall not be used in contracts tions, patents, and data for use in con

where both complete performance and tracts which are to be performed out

delivery are to be outside the United side the United States, its possessions,

States, its possessions or Puerto Rico. and Puerto Rico.

8 14R-9.102-1 Authorization and consent $ 14R-9.102 Authorization and consent.

in contracts for supplies or services. (a) Under 28 U.S.C. 1498, any suit The following contract clause shall for infringement of a United States be included in all contracts for suppatent based on the manufacture or plies or services except:

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 manufacture of any invention described in and covered by a patent of the United States in the performance of this contract or any part hereof or any amendment hereto or any subcontract hereunder (including all lowertier subcontracts).

or

8 14R-9.103 Patent indemnification of

Government by contractor. 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 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 modi. fication 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 in

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

(b) In contracts for research, development, or demonstration work in which the clause in § 14R-9.102-2 is required.

AUTHORIZATION AND CONSENT The Government hereby gives its authori. zation 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

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.

8 14R-9.103-2 (Reserved)

struction 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.

8 14R-9.103-3 Patent indemnity in negoti

ated 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 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: (1) 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

PATENT INDEMNITY

The Contractor shall indemnify the Gov. ernment 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 supply. ing 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, compo

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