INVENTIONS, INNOVATIONS, AND PATENTS

9.110 Payment of Royalties. The Government has acquired license and other rights under a large number of inventions as the result of Government-sponsored research and development. In order that the Government may determine whether the approval as an item of allowable cost of the payment of royalties by the contractor under license agreement is consistent with the rights which the Government has acquired, these payments of royalties by the contractor are allowable only to the extent authorized by the contracting officer. Accordingly, the Payment of Royalties" clause set forth in 9.110 shall be included in all NASA cost-reimbursement type contracts.

"

PAYMENT OF ROYALTIES (SEPTEMBER 1962)

Payment by the Contractor of any sum for royalties or patent rights not included in the ordinary purchase price of supplies, materials, or components shall not constitute items of Allowable Cost hereunder, unless and until approved by the Contracting Officer. Reimbursement to the Contractor on account of any such payments shall not be construed as an admission by the Government of the enforceability, validity or scope of, or title to any of the patents involved, nor shall any such reimbursement constitute a waiver of any rights or defenses respecting such patents.

9.111 Reserved 7

9.112 Reserved

9.113 Proposal of Equivalent Merit.

When two ΟΙ more potential contractors are judged to have presented proposals of equivalent merit, willingness to permit the Government to acquire and retain title to resulting inventions will be an additional factor in the evaluation of the proposals. However, in no event will potential contractors be asked to state their willingness to grant the Government principal or exclusive patent rights prior to a determination that proposals of equivalent rerit have been presented.

are

9.114 Facilities License. Where facilities being constructed or acquired for the first time under a contract, the following clause shall be included therein.

LICENSE FOR SUBSEQUENT USE (AUGUST 1963)

Whenever the Contractor directly or by any subcontractor intends under this contract either (i)

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9.114

PATENTS, DATA, AND COPYRIGHTS

to acquire facilities for the account of the Government and to install such facilities or (ii) to fabricate facilities, or to do both (i) and (ii), which facilities are for the purpose either (1) of producing a patented product, or (2) of producing a product in accordance with a patented or proprietary process, the Contractor, before doing so, shall notify the Contracting Officer of his intention, so that consideration can be given to negotiating a license agreement for the use of such facilities by persons to whom the Government may subsequently sell or transfer the facilities. Such negotiation shall be for the purpose of determining the terms and conditions under which the Contractor will grant to or obtain for the Government (in addition to the rights granted by any clause which may be included in this contract entitled "New Technology") the right to convey purchaser or transferee of all or a part of the facilities under this contract an irrevocable license to practice and cause to be practiced solely in the maintenance or operation of the facilities any and all inventions (whether or not patented) of the Contractor or a subcontractor hereunder incorporated in, or used by the Contractor or subcontractor in the operation of, the facilities acquired or fabricated by the Contractor for the account of the Government under this contract.

to any

9.114

CFR TITLE 41 CHAPTER 18

Subpart 2-Data and Copyrights

9.200 Scope of Subpart. This Subpart sets forth NASA policy, implementing procedures, and contract clauses with respect to acquisition of data, rights in data, and copyrights.

9.201 Definitions. For the purpose of this Subpart, the following terms have the meanings set forth below: (a) "Data" means recorded information, such as but not limited to writings, drawings, recordings, and pictorial representations, regardless of form or the media on which it may be recorded. The term does not include information incidental to contract administration, such as financial and business reports. (b) "Computer Software" means data in the form of computer programs, computer data bases, and documentation thereof.

(c) "Subject Data" me ans data specified to be or which are in fact delivered pursuant to a contract, and data first produced in performance of a contract.

(d) "Protectible Data" means:

(1) Data which constitute a contractor's trade secrets, but only to the extent that such data relate to items, components, or processes, including minor modifications thereof, which were developed at private expense; and

(2) Computer software developed at private expense which has been protected by a contractor from unrestricted use, duplication, or disclosure by others. However, as to (d) (1) above, the term "protectible data" does not include training manuals, or instructional material for installation, operation, routine maintenance or repair.

(e) "Form, Fit, and Function Data" means data pertaining to items, components, ΟΙ processes which identify sources, size, configuration, mating and attachment characteristics, functional characteristics and performance requirements; except that for computer software it means source, function, and performance ċata.

(f) "Unlimited Rights" means the right to use, duplicate, and disclose, in whole or in part, in any manner and for any purpose whatsoever, and have others so do.

(9) "Limited Rights" means the right to duplicate and use noncomputer software type of protectible data with the express limitation that such data will not be disclosed outside the Government nor used for purpose s of manufacture without permission of the contractor; provided, however, that the Government may disclose

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PATENTS, DATA AND COPYRIGHTS

this data for use by onsite employees of support agreed

service contractors where such contractors have

to protect this data from unauthorized use or

ċisclosure.

(h) "Restricted Rights" means that the Government may not duplicate, use, nor disclose computer software type cf protectible data except as provided in the minimum rights set forth below or such additional rights as may be provided in the contract.

The Governmant may:

(1) Use computer software with the computer for which it was acquired, including use at any Government installation to which the computer may be transferred; (2) Use computer software with a backup computer if the computer for which it was acquired is inoperative; (3) Copy computer software for safekeeping (archives) cr backup purposes;

(4) Modify computer software or combine it with other software, subject to the provision that where the derivative software contains portions which remain identifiable as protectible data, such portions shall be subject to the same restricted rights;

(5) Disclose computer software for use by onsite employees of support service contractors, providing such contractors agree to protect such computer | software frcm unauthorized use, duplication or ċisclosure; and

(6) Treat computer software, if it bears a copyright notice, as a published copyrighted work licensed | without disclosure prohibitions to the Government with minimum rights in accordance with subparagraphs (1) through (4) above.

9.202 Acquisition of Data and Rights in Data.

9.202-1 Background.In order for NASA tc carry out its statutory responsibility to perform re search and development in the fields of aeronautics and space and to provide for the widest practicable and appropriate dissemination of the results of these activities, it is necessary that NASA acquire many kinds of data developed under or used in the performance of its contracts. At the same time NASA recognizes that its contractors have a valid economic interest in data resulting from private investment. The protection of this data is desirable in order to encourage qualified contractors to participate in NASA programs. The policies, procedures, and clauses set forth herein strike a balance between NASA's needs and a contractor's equities.

CFR TITLE 41 CHAPTER 18

DATA AND COPYRIGHTS

9.202-2 Policy.

(a) Acquisition of Data-General.

(1) Distinction Between Data Acquisition and Data Fights. It is important to recognize and maintain the conceptual distinction between contract provisions whose purpose is to identify data to be delivered or furnished to the Government, and other contract provisions whose purpose is to specify the respective legal rights of the Government and the contractor in such data. Paragraphs (a), (b), and (c) herein pertain to policy dealing with acquisition of data. Paragraphs (d) and (e) pertain to policy dealing with rights in data.

(2) Known Requirements for Data. It is NASA's policy to determine, to the extent feasible, its known requirements for data in time for inclusion in Requests for Proposals and Invitations for Bids. Such requirements for data will be further considered during regotiations and included in any resulting contract.

(3) Optional Data Requirements. Recognizing that NASA's requirements for data may not be determinable fully at the time of contracting, it is NASA's policy to preserve a contractual right tc later acquire additional data when such requirements have been determined.

(b) Limitation on Acquisition.

(1) When privately-developed items, components, or processes are involved in the performance of work under à contract, and the contractor has related protectible data, it is NASA's policy normally to permit the contractor to meet NASA's requirements for data by furnishing form, fit, and function data for such items, ccmponents, or processes in lieu of providing the protectible data. This policy of normally permitting the contractor to withhold its protectible data is the primary means by which the contractor may protect its equitable position.

(2) In order to ascertain whether form, fit, and function data will be adequate to satisfy NASA's needs, prospective contractors will be required to identify in their proposals, to the extent feasible, a ny of the required data which qualifies as protectible data.

The contractor's response will assist NASA in determining, prior to contracting, whether its procurement needs can be satisfied with form, fit, and function data, or whether arrangements must be made for access to such protectible data.

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