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SUBCHAPTER A-ARMED SERVICES PROCUREMENT
REGULATIONS— (Continued) PART 9-PATENTS, DATA, AND
9.203 Contract clauses. COPYRIGHTS
9.204 Contract clauses; specia).. Sec.
9.204-1 Limitation on Government's right of 9.000 Scope of part.
publication for sale to the general Subpart A-Patents
9.204–2 Production of motion pictures, his9.100 Scope of subpart.
tories, and other works. 9.101 (Reserved]
9.204-3 Histories and other works. 8.102 Authorization and consent.
9.205 Contracts for acquisition of existing 9.102-1 Authorization and consent in con
works. tracts for supplies or services. 9.205–1 Off-the-shelf purchase of books and 9.102-2 Authorization and consent in con
similar items. tracts for research or develop 9.205–2 Purchase of existing motion picment.
tures or television recordings. 9.103 Patent indemnification of Govern. 9.206 Contracts to be performed outside ment by contractor.
the United States. 9.103-1 Patent indemnification in formally 9.207 Data-Withholding of payment.
advertised contracts—commercial 9.207-1 General.
9.207-2 Clauses. 9.103-3 Patent indemnification in negoti
Subpart C-Foreign License and Technical ated contracts. 9.103-4 Waiver of indemnity by the Govern.
Assistance Agreements ment.
9.301 General. 9.104 Notice and assistance.
9.301-1 Background. 9.106 Classified contracts.
9.301-2 Policy. 9.106-1 Patent applications.
9.302 Foreign license and technical assist9.106-2 Classified contracts relating to
ance agreements between the atomic energy.
Government and domestic con9.107 Patent rights under contracts for
cerns. research and development.
9.303 Supply contracts between the Gov9.107-1 Introduction.
ernment and a foreign govern9 107-2 General.
ment or concern. 9.107–3 Policy.
9.304 Foreign license and technical as9.1074 Procedures.
sistance agreements between 9.107-5 Clauses for domestic contracts.
domestic concern and foreign gov9.107-6 Clause for foreign contracts.
ernment or concern. 9.107-7 Contracts relating to atomic energy. 9.304–1 International Traffic in Arms Regu9.107-8 Contracts placed for NASA.
lations. 9.107-9 Contracts relating to space.
9.304–2 Review of agreements. 9.108 Patent rights under contracts for
Subpart D-Processing of Licenses, Assignments, personal services. 9.109 Administration of patent rights
and Infringement Claims clauses.
9.401 Policy. 9.109–1 Applicability.
9.402 Statutes pertaining to administra9.109-2 Follow-up by Government.
tive claims of infringement. 9.109–3 Maintenance and use of records of 9.403 Claims for copyright infringement. performance.
9.404 Requirements for filing an admin8.109-4 Conveyance of invention rights to
istrative claim for patent infringeGovernment.
ment. 9.109-5 Register of Government rights in 9.405 Indirect notice of patent infringeinventions.
ment claims. 9.110 Reporting of royalties-anticipated 9.406 Investigation and administrative or paid.
disposition of claims. 9.111 Refund of royalties.
9.407 Notification and disclosure tu
claimants. 9.112 Adjustment of royalties.
9.408 Settlement of indemnified claims. Subpart B-Data and Copyrights
9.409 Patent releases, license agreements,
and assignments. 9.200 Scope of subpart.
9.409–1 Required clauses. 9.201 Definitions
9.409-2 Clauses to be used when applicable. 9.202 Acquisition of rights in technical
9.409-3 Additional clauses-contracts exdata.
cept running royalty contracts. 9.202–1 Background.
9.409-4 Additional clauses-contracts pro9.202-2 Policy.
viding for payment of a running 9.202-3 Procedures.
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. 129 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 in fringement 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 $ 9.103 1 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-commer
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.
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 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 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 sen. tences:
The foregoing shall not apply to the following:
(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
(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 8
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 bereby authorizes and consents to the use
and manufacture, solely in the performance of this contract. of any invention covered by the United States patents identified and listed below, and waives indemnification by the Contractor with respect to such patents: (Identify the patents by number or by other means it more appropriate) [25 F.R. 14243, Dec. 31, 1960, as amended at 29 F.R. 14834, Oct. 31, 1964) $ 9.104 Notice and assistance.
The Government should be notified by the contractor of all claims of infringement in connection with the performance of a Government contract which come to the contractor's attention. The contractor should also assist the Government, to the extent of evidence and information in the possession of the contractor, in connection with any suit against the Government, or any claims against the Government made before suit has been instituted, on account of any alleged patent or copyright infringement arising out of or resulting from the performance of the contract. Accordingly, the clause set forth below shall be included in all contracts in excess of $10,000 for supplies, construction, or experimental, developmental, or research work: Provided, That the clause set forth below shall not be included in contracts:
(a) 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; or
(b) Of $10,000 or less, except that as a matter of administrative convenience, the clause need not be deleted when it is a part of a standard form being used for such contracts, since it is self-deleting: NOTICE AND ASSISTANCE REGARDING PATENT
AND COPYRIGHT INFRINGEMENT (JANUARY 1965)
The provisions of this clause shall be applicable only if the amount of this contract exceeds $10,000.
(a) The Contractor shall report to the Contracting Officer, promptly and in reasonable written detail, each notice or claim of patent or copyright infringement based on the performance of this contract of which the Contractor has knowledge.
(b) In the event of any claim or suit against the Government on account of any alleged patent or copyright infringement arising out of the performance of this contract or out of the use of any supplies furnished or work or services performed hereunder, the Contractor shall furnish to the Government, when requested by the Contracting Officer, all evidence and information
in possession of the Contractor pertaining to such suit or claim. Such evidence and in formation shall be furnished at the expense of the Government except where the Con. tractor has agreed to indemnify the Government.
(c) This clause shall be included in all subcontracts. For proper action to be taken by the contracting officer with respect to reports of notices or claims of patent infringement received by him under the provisions of this section, see Subpart D of this part. (30 F.R. 6003, Apr. 29, 1965, as amended at 32 F.R. 522, Jan. 18, 1967] 8 9.106 Classified contracts.
Unauthorized disclosure of classified subject matter, whether in patent applications or resulting from the issuance of a patent, may be a violation of 18 U.S.C. 792 et seq. (Espionage and Censorship) and related statutes and may be contrary to the interests of national security. Accordingly, except as otherwise provided in § 9.106–2, the following clause shall be included in every classified contract (see $ $ 1.201.34 and 1.320 of this chapter). FILING OF PATENT APPLICATIONS
(DECEMBER 1969) (a) Before filing or causing to be filed a patent application in the United States disclosing any subject matter of this contract, which subject matter is classified “Secret" or higher, the Contractor shall, citing the thirty (30) day provision below, transmit the proposed application to the Contracting Officer for determination whether, for reasons of national security, such application should be placed under an order of secrecy or sealed in accordance with the provisions of 35 U.S.C. 181-188 or the issuance of a patent should be otherwise delayed under pertinent U.S. statutes or regulations; and the Contractor shall observe any instructions of the Contracting Officer with respect to the manner of delivery of the patent application to the U.S. Patent Office for filing, but the Contractor shall not be denied the right to file such patent application. If the Contracting Officer shall not have given any such instructions within thirty (30) days from the date of mailing or other transmittal of the proposed application, the Contractor may file the application.
(b) The Contractor shall furnish to the Contracting Officer, at the time of or prior to the time when the Contractor files or causes to be filed a patent application in the United States disclosing any subject matter of this contract, which subject matter is classified “Confidential,” a copy of such application for determination whether, for reasons of national security, such application should be