Government's contribution ention is small compared to e contractor.

cy determination-Domestic The agency shall notify the uesting a determination for tion of greater rights of its If the agency's determination extensive with the party's ree agency shall inform the the reasons on which the on is based.

to

ere the determination pror the requesting party le, the determination shall reat a domestic patent applicailed on the invention by the g party, and the following s shall apply:

e application shall be filed months from the date of the nation, or such longer period be authorized in writing by the for good cause shown in writne requesting party;

r each patent application filed, -y shall: Within

2 months after such r within 2 months after the a determination if such patent ion previously has been filed, to the agency a copy of the apn as filed, including the filing d serial number;

nclude the following statement second paragraph of the specifiof the application and any repatent: "The Government has in this invention pursuant to ct No. (or Grant No. awarded by (identify the

).";

Within 6 months after such or within 6 months after sub1 of the invention disclosure if tent application has been previfiled, deliver to the agency a executed and approved instruprepared by the Government confirmatory of all the rights to the Government is entitled, and le the agency an irrevocable to inspect and make copies of tent application filed;

Provide the agency with a copy patent within 2 months after a t is issued on the application;

(E) Not less than 30 days before the expiration of the response period for any action required by the Patent and Trademark Office, notify the agency of any decision not to continue prosecution of the application and deliver to the agency executed instruments granting the Government a power of attorney to prosecute the application; and

(iii) If the requesting party fails to file an application within the prescribed time periods, decides not to continue prosecution of the application, or no longer desires to retain title, he shall convey to the Government, upon request, his entire right, title, and interest in the invention, and to any corresponding patent application or patent. The conveyance shall be made by delivering to the agency duly executed instruments (prepared by the Government) and, if applicable, such other papers as are deemed necessary to vest in the Government the entire right, title, and interest in the invention and any corresponding patent application, and to enable the Government to prosecute the application.

(3) Where the determination provides for the requesting party to retain title, the determination shall be subject to a license to the Government, and the licensing and the commercial use reporting requirements of paragraph (c) "Minimum rights acquired by the Government," of the Patent Rights clauses of § 1-9.107-5. The determination normally shall also be subject to any other reservation or condition deemed to be appropriate by the agency.

(g) Agency determination-Foreign rights. (1) A contractor's request for a determination that he retain greater foreign rights in an invention under the Patent Rights clauses of either § 1-9.107-5 (a) or (c) or § 1-9.107-6 (a) or (b) may accompany a request for a determination that he retain greater domestic rights under § 1-9.109-6(a), or may be submitted independently thereof. The request shall contain the following information:

(i) The prime contract number and the subcontract number, if applicable, under which the invention was made

and an identification of the agency's contracting office;

(ii) A brief description of the invention or a copy of the invention disclosure;

(iii) The countries in which the requesting party intends to file a patent application; and

(iv) Other information required by the agency.

(2) If the Government determines not to file a patent application on a Subject Invention of the contractor in any foreign country, the agency may authorize the requesting party to file a patent application on the invention in such foreign country and to retain the entire right, title, and interest therein if it determines such authorization to be in the public interest, subject to the license to the Government provided in paragraph (c) of the Patent Rights clause in § 1-9.107-5(a) or § 1-9.107-6(a).

(3) Where the determination includes a requirement that the requesting party file and prosecute a foreign patent application on the invention, the following provisions shall apply:

(i) The requesting party shall file and prosecute a patent application on the invention in (identify the foreign countries) in accordance with applicable statutes and regulations and within one of the following periods:

(A) Eight months from the date the corresponding United States patent application is filed by or on behalf of the requesting party; or if such an application is not filed, 6 months from the date of this agreement;

(B) Six months from the date a license is granted by the Commissioner of Patents and Trademarks to file foreign applications where such filing has been prohibited by security reasons; or (C) Such longer period as may be approved by the agency;

(ii) The requesting party shall notify the agency promptly of each foreign application filed and upon written request of the agency shall furnish an English version of the foreign application without additional compensation; and

(iii) If the requesting party files or causes to be filed a patent application on a Subject Invention in any foreign country, or if a patent is obtained on

such application, the party shall notify the agency, not less than 60 days before the expiration period for any action required by the foreign patent office, of any decision not to continue prosecution of the application or not to pay any maintenance fee covering the invention, and within such period shall deliver to the agency:

(A) Executed instruments granting to the Government power of attorney in the application;

(B) An English version of the application, if not previously provided, to the agency; and

(C) Upon request, a conveyance of the party's entire right, title, and interest in the invention in the foreign country, and to any corresponding patent application.

§ 1-9.109-7 Negotiation of institutional patent agreements.

(a) Information to be submitted by nonprofit organization. A nonprofit organization desiring to enter into an Institutional Patent Agreement with an agency shall be required to provide the agency with the following information:

(1) General information concerning the organization including:

(i) A copy of the organization's Articles of Incorporation;

(ii) A statement of the organization's purpose and aims; and

(iii) A statement indicating the source of the organization's funds;

(2) A copy of the organization's established patent policy, together with the date and manner of its adoption;

(3) The name, title, address, and telephone number of the officer responsible for administration of patent and invention matters and a description of staffing in this area, including all offices which contribute to the organization's patent management capabilities;

(4) A description of the organization's procedures for (A) identifying and reporting inventions and (B) for the evaluation of such inventions for inclusion in the organization's promotional program;

(5) A copy of the agreement signed by employees engaged in research and development, indicating their obliga

tion with regard to inventions conceived or for the first time reduced to practice in the course of their assigned duties;

(6) A copy of the invention report form or outline utilized for preparation of invention reports;

(7) A statement indicating whether the organization has an agreement with any patent management organizations or consultants and a copy of any such agreements;

(8) A description of the plans and intentions of the organization to bring inventions to the market place to which it retains title, including a description of the efforts typically undertaken by the organization to license its inventions;

(9) A description of the organization's past patent application and patent licensing activities, including the following:

(i) Number of inventions reported to the organization during each of the past 5 years;

(ii) Number of patent applications filed during each of the past 5 years;

(iii) Number of patents obtained during each of the past 5 years;

(iv) Number of exclusive licenses issued during each of the past 5 years; (v) Number of nonexclusive licenses, other than those to sponsoring Federal agencies, issued during each of the past 5 years;

(vi) Gross royalty income during each of the past 5 years;

(vii) A general description of royalties charged, including minimum and maximum royalty rates;

(10) A list of subsidiary or affiliate organizations, which would be covered by an agreement signed by the organization;

(11) If the organization is a subsidiary or affiliate organization, the name of the other organization and a description of the relationship;

(12) The amount of support from each Federal agency for research and development activities currently being administered by the organization;

(13) A statement of the organization's policies with respect to the sharing of royalties with employees; and

(14) A description of the uses made of any net income generated by the or

ganization's patent management program.

(b) Criteria for evaluation of a technology transfer program. Before an Institutional Patent Agreement is entered into with a nonprofit organization, the organization shall have a technology transfer program which, as a minimum, shall include:

(1) An established patent policy which is consistent with the policy in § 1-9.107-3 and is administered on a continuous basis by an officer or an organization responsible to the organization;

(2) Agreements with employees requiring them to assign to the organization, its designee, or the Government any invention conceived or first actually reduced to practice in the course of or under Government contracts or assurance that such agreements will be obtained from employees prior to the assignment of employees to Government-supported research and development projects;

(3) Procedures for prompt invention identification and timely disclosure to the officer or organization administering the patent policy of the institution;

(4) Procedures for invention evaluation; and

(5) An active and effective promotional program for the licensing and marketing of inventions.

(c) Federal Coordinating Council for Science, Engineering, and Technology List. A list of organizations that have technology transfer programs meeting the critieria set forth in § 1-9.109-7(b), prepared by a subcommittee of the Committee on Intellectual Property and Information of the Federal Coordinating Council for Science, Engineering, and Technology, may be used in lieu of individual agency determinations of eligibility for Institutional Patent Agreements. However, the inclusion of an organization on the list will not preclude the agency from declining an application for an Institutional Patent Agreement. It is also expected that the list may be used by some agencies in connection with greater rights determinations or requests for the inclusion of clauses in contracts giving the nonprofit organization the first option to principal

tised procurements. In its application to negotiated procurements, the terms "bid" and "invitations for bids" used in this subpart shall be construed to include their counterparts, i.e., "proposal" and "request for proposals", and the substitution of the latter terms whenever appropriate is authorized.

§ 1-10.102 Definitions.

As used in this subpart, the following terms have the meanings set forth in this § 1-10.102.

§ 1-10.102-1 Bond.

"Bond" means a written instrument executed by a bidder or contractor, identified in the instrument as the "principal", together with a third party, identified in the instrument as the "surety", to secure fulfillment by the bidder or contractor of his obligations as set out in the bond and, in the event of his failure so to do, to assure payment of any loss sustained by the party for whose protection the bond (including any necessary coinsurance or reinsurance agreements) was furnished, to the extent provided in the bond.

[42 FR 56116, Oct. 21, 1977]

§ 1-10.102-2 Bid guarantee.

"Bid guarantee" means a firm commitment, such as a bid bond, postal money order, certified check, cashier's check, irrevocable letter of credit, or certain bonds or notes of the United States, accompanying a bid as assurance that the bidder will, upon acceptance of his bid, execute such contractual documents as may be required, if any, and give bond(s) within the time specified after the forms are presented to him.

§ 1-10.102-3 Performance bond.

"Performance bond" means a bond executed in connection with a contract to secure fulfillment of all the contractor's obligations under such contract.

§ 1-10.102-4 Payment bond.

"Payment bond" means a bond executed in connection with a contract to assure payment as required by law of all persons supplying labor and ma

terial in the prosecution of the work provided for in the contract.

§ 1-10.102-5 Advance payment bond.

"Advance payment bond" means a bond executed in connection with a contract to secure fulfillment of the contractor's obligations under an advance payments provision.

§ 1-10.102-6 Patent infringement bond.

"Patent infringement bond" means a bond executed in connection with a contract to secure fulfillment of the contractor's obligation under a patent clause.

§ 1-10.102-7 Construction contract.

"Construction contract" means any contract for construction, alteration, or repair as provided in §§ 1-12.402-1 and 1-18.101-1.

[33 FR 14287, Sept. 21, 1968]

§ 1-10.102-8 Annual bid bond.

"Annual bid bond" means a single bond furnished by a bidder, in lieu of separate bid bonds, to serve as his bid guarantee in connection with bids submitted during a specific fiscal year of the Government.

§ 1-10.102-9 Annual performance bond.

"Annual performance bond" means a single bond furnished by a contractor, in lieu of separate performance bonds, to secure fulfillment of all of the contractor's obligations under contracts entered into during a specific fiscal year of the Government.

§ 1-10.102-10 Consent of surety.

"Consent of surety" means an acknowledgement by a surety that its bond given in connection with a contract continues to apply to the contract as modified.

§ 1-10.102-11 Penal sum or amount.

"Penal sum" or "penal amount" means the amount specified in a bond (expressed in terms of dollars or, in the case of a bid bond, as a percentage of the bid price) as the maximum payment for which the surety is obligated.