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SUBCHAPTER A-ARMED SERVICES PROCUREMENT

REGULATIONS- (Continued)

PART 9--PATENTS, DATA, AND

COPYRIGHTS Sec. 9.000 Scope of part.

Subpart A-Patents 9.100 Scope of subpart. 9.101 (Reserved] 9.102 Authorization and consent. 9.102–1 Authorization and consent in con

tracts for supplies or services. 9.102–2 Authorization and consent in con

tracts for research or develop

ment. 9.103 Patent indemnification of Govern.

ment by contractor. 9.103-1 Patent indemnification in formally

advertised contracts-commercial

status predetermined. 9.103-3 Patent indemnification in negoti

ated contracts. 9.103-4 Waiver of indemnity by the Govern.

ment. 9.104 Notice and assistance. 9.106 Classified contracts. 9.106-1 Patent applications. 9.106-2 Classified contracts relating to

atomic energy. 9.107 Patent rights under contracts for

research and development. 9.107-1 Introduction. 9.107-2 General. 9.107–3 Policy. 9.107-4 Procedures. 9.107-5 Clauses for domestic contracts. 9.107–6 Clause for foreign contracts. 9.107-7 Contracts relating to atomic energy. 9.107–8 Contracts placed for NASA. 9.107-9 Contracts relating to space. 9.108 Patent rights under contracts for

personal services. 9.109 Administration of patent rights

clauses. 9.109-1 Applicability. 9.109–2 Follow-up by Government. 9.109-3 Maintenance and use of records of

performance. 8.109-4 Conveyance of invention rights to

Government. 9.109-5 Register of Government rights in

inventions. 9.110 Reporting of royalties-anticipated

or paid. 9.111 Refund of royalties. 9.112 Adjustment of royalties.

Subpart B-Data and Copyrights 9.200 Scope of subpart. 9.201 Definitions. 9.202 Acquisition of rights in technical

data. 9.202–1 Background. 9.202–2 Policy. 9.202-3 Procedures.

Scc. 9.203 Contract clauses. 9.204 Contract clauses; specia). 9.204-1 Limitation on Government's right of

publication for sale to the general

public. 9.204–2 Production of motion pictures, his

tories, and other works. 9.204-3 Histories and other works. 9.205 Contracts for acquisition of existing

works. 9.205-1 Off-the-shell purchase of books and

similar items. 9.205–2 Purchase of existing motion pic

tures or television recordings. 9.206 Contracts to be performed outside

the United States. 9.207 Data—Withholding of payment. 9.207-1 General. 9.207-2 Clauses. Subpart C-Foreign License and Technical

Assistance Agreements 9.301 General. 9.301-1 Background. 9.301–2 Policy. 9.302 Foreign license and technical assist

ance agreements between the Government and domestic con

cerns. 9.303 Supply contracts between the Gov

ernment and a foreign govern

ment or concern. 9.304 Foreign license and technical as

sistance agreements between domestic concern and foreign gov

ernment or concern. 9.304-1 International Traffic in Arms Regu

lations. 9.304–2 Review of agreements. Subpart D--Processing of Licenses, Assignments,

and Infringement Claims 9.401 Policy. 9.402 Statutes pertaining to administra

tive claims of infringement. 9.403 Claims for copyright infringement. 9.404 Requirements for filing an admin

istrative claim for patent infringe

ment. 9.405 Indirect notice of patent infringe

ment claims. 9.406 Investigation and administrative

disposition of claims. 9.407 Notification and disclosure to

claimants. 9.408 Settlement of indemnified claims. 9.409 Patent releases, license agreements,

and assignments. 9.409–1 Required clauses. 9.409-2 Clauses to be used when applicable. 9.409-3 Additional clauses-contracts ex

cept running royalty contracts. 9.409-4 Additional clauses-contracts pro

viding for payment of a running royalty.

Sec. 9.410 Assignments. 9.411 Procurement of rights in inven

tions, patents and copyrights. 9.412 Contract format. 9.413 Recordation.

AUTHORITY: The provisions of this Part 9 Issued under 10 U.S.C. 2202, 2301-2314, E.O. 9001, 6 F.R. 6787, as amended by E.O. 9296, 8 F.R. 1429, 3 CFR, 1943 Cum. Supp. $ 9.000 Scope of part.

This part sets forth policies, instructions and contract clauses pertaining to patents and copyrights in connection with the procurement of supplies and services. (25 F.R. 14242, Dec. 31, 19601

Subpart A-Patents $ 9.100 Scope of subpart. This subpart

prescribes contract clauses and instructions which define and implement the policy of the Department of Defense with respect to

(a) Inventions made in the course of experimental, developmental, or research work performed under Government contracts;

(b) Patent infringement liability resulting from work performed by or for the Government;

(c) Royalties payable in connection with the performance of Government contracts;

(d) Security requirements covering patent applications containing classified subject matter filed by contractors. (29 F.R. 14833, Oct. 31, 1964) $ 9.101 [Reserved] § 9.102 Authorization and consent.

(a) Under 28 U.S.C. 1498, any suit for infringement of a United States patent based on the manufacture or use by or for the United States of an invention described in and covered by a patent of the United States by a contractor or by a subcontractor (including lower-tier subcontractors) can be maintained only against the Government in the Court of Claims, and not against the contractor or subcontractor, in those cases where the Government has authorized or consented to the manufacture or use of the patented invention. Accordingly, to insure that work by a contractor or subcontractor under a Government contract may not be enjoined by reason of patent infringement, authorization and consent shall be given as herein pro

vided. The liability of the Government for damages in any such suit against it may, however, ultimately be borne by the contractor or subcontractor in accordance with the terms of any patent indemnity clause also included in the contract, and an authorization and consent clause does not detract from any patent indemnification commitment by the contractor or subcontractor. Therefore, both a patent indemnity clause and an authorization and consent clause may be included in the same contract.

(b) Any provision whereby the GovErnment expressly agrees to indemnify the contractor against liability for patent infringement shall not be inincluded in a contract.

(c) An authorization and consent clause shall not be used in contracts where both complete performance and delivery are to be outside the United States, its possessions, or Puerto Rico. (29 F.R. 14833, Oct. 31, 1964) § 9.102–1 Authorization and consent in

contracts for supplies or services. The contract clause set forth below may be included in all contracts for supplies or services (including construction or architect-engineering work, see § 18.902–1 of this chapter) except:

(a) When prohibited by $ 9.102(c); or

(b) In contracts for experimental, developmental, or research work in which the clause of $ 9.102–2 is required. AUTHORIZATION AND CONSENT (MAR. 1964)

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 amend. ment hereto or any subcontract hereunder (including any lower-tier subcontract), of any invention described in and covered by a patent of the United States (1) embodied in the structure or composition of any article the delivery of which is accepted by the Government under this contract, or (ii) utilized in the machinery, tools, or methods the use of which necessarily results from compliance by the Contractor or the using subcontractor with (a) specifications or written provisions now or hereafter forming a part of this contract, or (b) 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 any lower-tier subcontract), and the Government assumes liability for all other

infringement to the extent of the authorization and consent hereinabove granted. [29 F.R. 6932, May 27, 1964, as amended at 29 F.R. 14833, Oct. 31, 1964; 32 F.R. 522, Jan. 18, 1967) $ 9.102-2 Authorization and consent in

contracts for research or develop

ment. Greater latitude in the use of patented inventions may be necessary in a contract for experimental, developmental, or research work than in a contract for supplies. Unless prohibited by $ 9.102 (c), the clause set forth below shall be included in all contracts calling exclusively for experimental, developmental, or research work, and may be included in contracts calling for both supplies and experimental, developmental, or research work where the latter work is a primary purpose of the contract. In all other contracts for both supplies and experimental, developmental, or research work, the Authorization and Consent clause of $ 9.102–1 shall be used. If the clause set forth below is included in a contract, the clause in § 9.102–1 shall not be included. AUTHORIZATION AND CONSENT (JAN. 1961)

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 any lowertier subcontract). [26 F.R. 2613, Mar. 28, 1961, as amended at 29 F.R. 14833, Oct. 31, 1964) $ 9.103 Patent indemnification of Gov

ernment 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 which normally are or 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 modification thereof a clause providing for indemnification of the Government is to be included in such contracts in accordance with the instructions set forth below. A patent indemnity clause shall not be used in contracts:

(a) Where the Authorization and Consent clause of $ 9.102–2 applicable to research and development contracts is

authorized, except that in contracts calling also for supplies of the kind described above, a patent indemnity clause may be used with respect to such supplies;

(b) Where 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. However, even in the foregoing instance, a patent indemnity clause may be included where (1) in the case of contracts to be awarded by formal advertising it is desired to obtain an indemnity as to specific components or spare parts so sold or offered for sale, in which case the clause shall be modified pursuant to $ 9.103–1(b); or (2) in the case of contracts to be awarded either by formal advertising (see $ 2.407-8 of this chapter) or negotiation, a patent owner contends that the prospective procurement would infringe his patent and the low bidder or offeror is willing to indemnify the Government as to such patent either (1) without increase in price on the basis that the patent is invalid or not infringed, or (ii) for other good reasons;

(c) Where 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 instructions of $ 9.1031 or $ 9.103–3 are applicable; or

(d) Where the contract is for an amount of $5,000 or less, except that, as a matter of administrative convenience, the clause need not be deleted where it is a part of a standard form being used for contracts of $5,000 or less, since it is selfdeleting as to such contracts. (29 F.R. 14834, Oct. 31, 1964) § 9.103-1 Patent indemnification in for.

mally advertised contracts

cial status predetermined. (a) Except as prohibited by $ 9.103 the clause set forth below 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 modifications 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.

commer

PATENT INDEMNITY (SEPTEMBER 1964) If the amount of this contract is in excess of $5,000, 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, inodification, 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 Gov. ern ent of the suit or action all ng 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 construction work performed which addition or change was made subsequent to delivery or performance by the Contractor; or (111) a claimed infringement which is settled without the consent of the Contractor, unless required by final decree of a court of competent jurisdiction.

(b) Where & supply contract calls in part for specific components or spare parts which normally are or have been sold or offered for sale by any supplier to the public in the commercial open market, or such items with relatively minor modifications, the Patent Indemnity clause of paragraph (a) of this section shall be modified by adding to the end of the clause either of the following sentences:

The foregoing shall not apply to the fol. lowing:

(Specifically identify the items to be excluded from the Patent Indemnity clause) (Sept. 1964)

8 9.103–3 Patent indemnification in ne

gotiated contracts. A patent indemnity clause is not required to be included in negotiated contracts, but may be included in negotiated construction contracts, as authorized in § 9.103(b) (2), and in negotiated contracts for supplies where 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. Ordinarily, the contracting, Officer, in consultation with the contractor, should be able to determine whether the supplies being purchased normally are on sale or have been sold or offered for sale to the public in the commercial open market.

(a) Subject to the foregoing and to the prohibitions in § 9.103, the clause set forth in § 9.103–1(a) is approved for use in negotiated contracts for construction work or supplies.

(b) Where a supply contract calls in part for specific components or spare parts which normally are or have been sold or offered for sale to the public in the commercial open market, or such items with relatively minor modifications, the patent indemnity clause of $ 9.103–1(a) shall be modified by adding to the end of the clause either of the following sentences:

(SEPTEMBER 1964) The foregoing shall not apply to the following: (Specifically identify the items to be excluded from the Patent Indemnity clause).

or

or

(SEPTEMBER 1964) The foregoing shall apply only to the following: (Specifically identify the items to which the Patent Indemnity clause applies). (33 F.R. 7399, May 18, 1968] $ 9.103-4 Waiver of indemnity by the

Government. In the event that it is desired to exempt one or more specified United States patents from the patent indemnity clause of $ 9.103–1, authority shall first be obtained from the Secretary concerned or his authorized representative, and the following clause shall be included in the contract, in addition to the patent indemnity clause:

WAIVER OF INDEMNITY (JAN. 1958) Any provision of this contract to the contrary notwithstanding, the Government hereby authorizes and consents to the use

or

The foregoing shall apply only to the following:

(Specifically identify the items to which the Patent Indemnity clause applies) (Sept. 1964) (29 F.R. 14834, Oct. 31, 1964, as amended at 30 F.R. 1743, Feb. 9, 1965)

66-071-72

and manufacture, solely in the performance in possession of the Contractor pertaining of this contract, of any invention covered to such suit or claim. Such evidence and in. by the United States patents identified and formation shall be furnished at the expense Usted below, and waives indemnification by of the Government except where the Conthe Contractor with respect to such patents: tractor has agreed to indemnify the Gov(Identify the patents by number or by other ernment. means if more appropriate)

(C) This clause shall be included in all (25 F.R. 14243, Dec. 31, 1960, as amended at

subcontracts. 29 F.R. 14834, Oct. 31, 1964)

For proper action to be taken by the $ 9.104 Notice and assistance.

contracting officer with respect to reports

of notices or claims of patent infringeThe Government should be notified by

ment received by him under the provithe contractor of all claims of infringe

sions of this section, see Subpart D of ment in connection with the performance

this part. of a Government contract which come to the contractor's attention. The con

(30 F.R. 6003, Apr. 29, 1965, as amended at

32 F.R. 522, Jan. 18, 1967) tractor should also assist the Government, to the extent of evidence and in- § 9.106 Classified contracts. formation in the possession of the con

Unauthorized disclosure of classified tractor, in connection with any suit

subject matter, whether in patent appliagainst the Government, or any claims

cations or resulting from the issuance of against the Government made before

a patent, may be a violation of 18 U.S.C. suit has been instituted, on account of

792 et seq. (Espionage and Censorship) any alleged patent or copyright infringe

and related statutes and may be conment arising out of or resulting from the

trary to the interests of national secuperformance of the contract. Accord

rity. Accordingly, except as otherwise ingly, the clause set forth below shall be

provided in § 9.106–2, the following clause included in all contracts in excess of

shall be included in every classified con$10,000 for supplies, construction, or ex

tract (see $ $ 1.201.34 and 1.320 of this perimental, developmental, or research

chapter). work: Provided, That the clause set forth below shall not be included in contracts:

FILING OF PATENT APPLICATIONS (a) Where both performance and de

(DECEMBER 1969) livery are to be outside the United States, (a) Before filing or causing to be filed a its possessions, or Puerto Rico, unless the patent application in the United States discontract indicates that the supplies are

closing any subject matter of this contract,

which subject matter is classified “Secret" ultimately to be shipped into the United

or higher, the Contractor shall, citing the States, its possessions, or Puerto Rico; or

thirty (30) day provision below, transmit the (b) of $10,000 or less, except that as

proposed application to the Contracting Ofa matter of administrative convenience, ficer for determination whether, for reasons the clause need not be deleted when it is of national security, such application should a part of a standard form being used for be placed under an order of secrecy or sealed such contracts, since it is self-deleting:

in accordance with the provisions of 35 U.S.C.

181–188 or the issuance of a patent should NOTICE ASSISTANCE REGARDING PATENT

be otherwise delayed under pertinent U.S. AND COPYRIGHT INFRINGEMENT (JANUARY

statutes or regulations; and the Contractor 1965)

shall observe any instructions of the ConThe provisions of this clause shall be ap

tracting Officer with respect to the manner plicable only if the amount of this contract

of delivery of the patent application to the exceeds $10,000.

U.S. Patent Office for iling, but the Contrac(a) The Contractor shall report to the

tor shall not be denied the right to file Contracting Officer, promptly and in reason

such patent application. If the Contracting able written detail, each notice or claim of

Ofñcer shall not have given any such instrucpatent or copyright infringement based on tions within thirty (30) days from the date the performance of this contract of which

of mailing or other transmittal of the prothe Contractor has knowledge.

posed application, the Contractor may file

the application. (b) In the event of any claim or suit

(b) The Contractor shall furnish to the against the Government on account of any

Contracting Officer, at the time of or prior to alleged patent or copyright infringement

the time when the Contractor files or causes arising out of the performance of this con

to be filed a patent application in the United tract or out of the use of any supplies fur- States disclosing any subject matter of this nished or work or services performed here- contract, which subject matter is classified under, the Contractor shall furnish to the "Confidential," a copy of such application for Government, when requested by the Con- determination whether, for reasons of natracting Officer, all evidence and information tional security, such application should be

AND

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