[Federal Register Volume 59, Number 60 (Tuesday, March 29, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-7112]
[[Page Unknown]]
[Federal Register: March 29, 1994]
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DEPARTMENT OF ENERGY
48 CFR Parts 927, 952, and 970
RIN 1991-AA23
Acquisition Regulation; Updating of Patent Regulations
AGENCY: Department of Energy (DOE).
ACTION: Notice of proposed rule.
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SUMMARY: The Department proposes to amend the Department of Energy
Acquisition Regulation (DEAR) to base the DOE patent regulations on the
Federal Acquisition Regulation (FAR) patent regulations and associated
FAR patent clauses to the extent that the FAR coverage is consistent
with the DOE statutory patent requirements.
DATES: Written comments must be received by May 31, 1994.
ADDRESSES: Comments should be addressed to: Robert M. Webb, Procurement
Policy Division (PR-12), U.S. Department of Energy, 1000 Independence
Avenue SW., Washington, DC 20585.
FOR FURTHER INFORMATION CONTACT:
Robert M. Webb, Procurement Policy Division (PR-121), U.S. Department
of Energy, 1000 Independence Avenue SW., Washington, DC 20585, (202)
586-8264
Sue Hagarman, Office of the Assistant General Counsel for Intellectual
Property (GC-42), U.S. Department of Energy, 1000 Independence Avenue
SW., Washington, DC 20585, (202) 586-2802
SUPPLEMENTARY INFORMATION:
I. Background.
A. Discussion.
B. Section-by-Section Analysis.
II. Procedural Requirements.
A. Regulatory Review.
B. Review Under the Regulatory Flexibility Act.
C. Review Under the Paperwork Reduction Act.
D. Review Under the National Environmental Policy Act.
E. Review Under Executive Order 12612.
F. Review Under Executive Order 12778.
III. Public Comments.
I. Background
A. Discussion
Under the Atomic Energy Act (AEA) of 1954, as amended, 42 U.S.C.
2011 et seq., title to inventions conceived or first actually reduced
to practice in the course of or under Department of Energy (DOE)
contracts vests in DOE. By vesting title in DOE, the AEA helped ensure
that no one company gained a market advantage from a taxpayer-funded
invention. The AEA also gave DOE the discretion to waive title to such
inventions.
In 1974, Congress enacted the Federal Non-Nuclear Energy Research
and Development Act (Act), 42 U.S.C. 5901 et seq. This Act provided for
a similar disposition of title to inventions. In addition, the Act
provided explicit criteria which must be considered in waiver
determinations.
These statutory requirements were reflected in the DOE patent
regulations, which were last published in 1979 as part of the DOE
Procurement Regulations. In March of 1984, DOE published the Department
of Energy Acquisition Regulations (DEAR). The DEAR required that the
patent provisions of the DOE Procurement Regulations be used in all
contracts. The patent coverage for the uniform Federal procurement
regulation, the Federal Acquisition Regulation (FAR), was promulgated
in 1984 and underwent one major amendment, in 1989. Therefore, all DOE
contracts were additionally subject to the FAR.
Since publication of the DEAR patent regulations in 1979, Congress
has enacted two significant pieces of legislation affecting DOE patent
policy. Congress first enacted the Bayh-Dole Act in 1980 (35 U.S.C. 200
et seq.), which specifically overrode DOE previous statutory patent
policy legislation with respect to small business firms and non-profit
organizations by allowing them to elect title to any subject invention
arising under a funding agreement with the Government.
The second piece of legislation, the Trademark Clarification Act of
1984, amended the Bayh-Dole Act to extend its coverage to nonprofit
organizations managing and operating DOE research and development
facilities. These amendments set very precise limits on the
Department's ability to obtain title to inventions of the nonprofit
managing and operating contractors. The circumstances in which DOE
could take title to such inventions were limited to certain categories
of inventions, e.g., those involving nuclear weapons and naval nuclear
propulsion. These amendments gave the implementation authority to the
Department of Commerce.
The following proposed rule amends the DEAR to reflect the changes
necessitated by the intervening legislation. The rule is based on FAR
patent provisions, varying only to the extent necessary to fulfill DOE
statutory and programmatic duties.
B. Section-by-Section Analysis
A new section 927.200 is proposed to be added to reflect that the
DOE mission with regard to energy includes ``demonstration'' along with
``research and development'' or ``R&D'' as those terms are used in FAR
Subpart 27.200.
At 927.201-1 a paragraph is proposed to be added on authorization
and consent to allow modification of the clause for research and
development to deal with situations in which a contract may be affected
by a third party patent holder.
A new section 927.206 is proposed to be added to discuss the use of
the refund of royalties clause and to prescribe its use. Section
927.207-1 has been proposed to recognize the DOE authorities rising
from the Atomic Energy Act of 1954, as amended.
Paragraphs at 927.300 are proposed to be added to reflect the
research, development, demonstration, weapons, and environmental
missions of the Department, along with the system of patent waivers.
At 927.302 DOE statutory patent policy is proposed to be explained.
Also, there is proposed to be added a discussion on DOE need for
licenses to background patents. A new section 927.303 is proposed to be
added to direct the use of the appropriate patent rights clause.
A new section 927.304 is proposed to be added to provide for
retention of rights by the inventor where the contractor, under the
terms of the clause at 952.227-11, has elected not to retain title to a
subject invention.
At 952.227-9, a Refund of Royalties clause, is proposed to be
added. The clause is produced in full text; however, it consists of the
clause at FAR 52.227 with sentences added at the end of paragraphs (b)
and (d), respectively, to ensure that any royalties related to
technical data and copyrighted material are identified and to include a
disclaimer. Also, at 952.227-11 the patent clause for contracts with
small businesses and nonprofit organizations, formerly at 952.227-71,
is proposed. It would consist of the clause at FAR 52.227-11 with
changes made to tailor the clause to DOE, including the completion of
paragraph (l) and a minor change to paragraph (g)(2) affecting flowdown
of the clause.
At 952.227-13 the patent clause for use in all other contracts is
proposed. It would consist of the clause at FAR 52.227-13 by tailoring
it to DOE and replacing paragraph (d)(4) to recognize the DOE waiver
application process and the license required by sec. 9(h) of Pub. L.
93-577 (42 U.S.C. 5908(h)) in instances in which the Department has
waived title. An associated additions are proposed to be made at
(g)(1)(i) and (h)(5). A replacement subcontracting provision is
proposed for paragraph (h)(1). Also, proposed for addition are
paragraphs (j) dealing with atomic energy, (k) dealing with background
patents, (l) dealing with publication limitations, and (m) forfeiture
of rights in unreported inventions.
The coverage of patent rights for management and operating
contracts is proposed to be changed. Currently, the coverage consists
of a reference back to the Department of Energy Procurement
Regulations, the predecessor regulation to the DEAR. Current portions
of the DEAR at 970.2701 and 970.2702, dealing essentially with rights
in technical data under management and operating contracts, are
proposed to be redesignated as 970.2705 and 927.2706. There are no
changes to the text dealing with rights in technical data. Portions of
this material require updating and will be the subject of a subsequent
rulemaking.
At 970.2701 through 970.2704 regulatory discussion of patent rights
under DOE management and operating contracts is proposed to be added.
The treatment of Exceptional Circumstances Determinations and weapons
related and naval nuclear propulsion inventions when the contractor is
a nonprofit organization and the relationship of technology transfer
activities of the contractor to the patent rights clause are discussed
there.
The coverage at 970.5204-XX is proposed to be altered to prescribe
the patent clause for small businesses and nonprofit organizations of
the proposed 952.227-11 with the replacement of paragraph (e)(1) to
provide that a nonprofit managment and operating contractor must
request a license from DOE in instances in which it chooses not to
elect to take title originally. Also, paragraphs (m) and (n) are
proposed to be added to reflect the nature of all intellectual property
rights under management and operating contracts, i.e., that they exist
for the benefit of the laboratory as an institution, not the
contractor, by providing for assignment of patent rights and
obligations to a successor contractor and for a facilities license to
DOE. There is likewise proposed to be added a patent rights clause for
all other management and operating contracts at 970.5204-YY, which
would consist of the proposed clause at 952.227-13 with the addition of
a paragraph (j) requiring the assignment of patent related rights to a
successor contractor and paragraph (k) providing for a facilities
license to DOE.
II. Procedural Requirements
A. Regulatory Review
Today's regulatory action has been determined not to be a
``significant regulatory action'' under Executive Order 12866,
``Regulatory Planning and Review,'' (58 FR 51735, October 4, 1993).
Accordingly, today's action was not subject to review under the
Executive Order by the Office of Information and Regulatory Affairs.
B. Review Under the Regulatory Flexibility Act
This proposed rule was reviewed under the Regulatory Flexibility
Act of 1980, Public Law 96-354, which requires preparation of a
regulatory flexibility analysis for any rule which is likely to have
significant economic impact on a substantial number of small entities.
DOE certifies that this rule will not have a significant economic
impact on a substantial number of small entities and, therefore, no
regulatory flexibility analysis has been prepared.
C. Review Under the Paperwork Reduction Act
No new information collection or recordkeeping requirements are
imposed by this proposed rulemaking. Accordingly, no OMB clearance is
required by the Paperwork Reduction Act of 1980 (44 U.S.C. 3501 et
seq.).
D. Review Under NEPA
The DOE has concluded that promulgation of this rule would not
represent a major Federal action having significant impact on the human
environment under the National Environmental Policy Act (NEPA) of 1969
(42 U.S.C. 4321, 4331-4335, 4341-4347 (1976)), the Council on
Environmental Quality regulations (40 CFR parts 1500-1508), or the DOE
guidelines (10 CFR part 1021), and, therefore, does not require an
environmental impact statement or an environmental assessment pursuant
to NEPA.
E. Review Under Executive Order 12612
Executive Order 12612, 52 FR 41685 (October 30, 1987), requires
that regulations, rules, legislation, and any other policy actions be
reviewed for any substantial direct effects on States, on the
relationship between the national Government and the States, and in the
distribution of power and responsibilities among various levels of
Government. If there are sufficient substantial direct effects, then
the Executive Order requires preparation of a federalism assessment to
be used in all decisions involved in promulgating and implementing a
policy action.
Today's proposed rule, when finalized, will revise certain policy
and procedural requirements. However, DOE has determined that none of
the revisions will have a substantial direct effect on the
institutional interests or traditional functions of States.
F. Review Under Executive Order 12778
Section 2 of Executive Order 12778 instructs each agency subject to
Executive Order 12291 to adhere to certain requirements in promulgating
new regulations and reviewing existing regulations. These requirements,
set forth in sections 2 (a) and (b)(2), include eliminating drafting
errors and needless ambiguity, drafting the regulations to minimize
litigation, providing clear and certain legal standards for affected
conduct, and promoting simplification and burden reduction. Agencies
are also instructed to make every reasonable effort to ensure that the
regulation: Specifies clearly any preemptive effect, effect on existing
Federal law or regulation, and retroactive effect; describes any
administrative proceedings to be available prior to judicial review and
any provisions for the exhaustion of such administrative proceedings;
and defines key terms. This proposed rule would, when adopted as a
final rule, have no preemptive effect, will not have any effect on
existing Federal laws, and would only clarify the existing regulations
on this subject. The revised clauses would apply only to contracts
which would be awarded after the effective date of the final rule, and,
thus, would have no retroactive effect. Therefore, DOE certifies that
this final rule meets the requirements of sections 2 (a) and (b) of
Executive Order 12778.
III. Public Comments
Interested persons are invited to participate by submitting data,
views, or arguments with respect to the proposed DEAR amendments set
forth in this notice. Three copies of written comments should be
submitted to the address indicated in the ADDRESSES section of this
notice. All comments received will be available for public inspection
in the DOE Reading Room, Room 1E-190, Forrestal Building, 1000
Independence Avenue SW., Washington, DC 20585, between the hours of 9
a.m. and 4 p.m., Monday through Friday, except Federal holidays. All
written comments received by the date indicated in the DATES section of
this notice and all other relevant information will be fully considered
by DOE before taking final. Comments received after that date will be
considered to the extent that time allows. Any information considered
to be confidential must be so identified and submitted in writing, one
copy only. DOE reserves the right to determine the confidential status
of the information and to treat it according to our determinations.
DOE has concluded that this proposed rule does not involve a
substantial issue of fact or law, and that the proposed rule should not
have substantial impact on the nation's economy or a large number of
individuals or businesses. Therefore, pursuant to Public Law 95-91, the
DOE Organization Act, and the Administrative Procedure Act (5 U.S.C.
553), the Department does not plan to hold a public hearing on this
proposed rule.
List of Subjects in 48 CFR Parts 927, 952, 970
Government procurement, Patents.
For the reasons set out in the preamble, Chapter 9 of Title 48 of
the Code of Federal Regulations is proposed to be amended as set forth
below.
Issued in Washington, DC, on January 26, 1994.
G.L. Allen
Acting Deputy Assistant Secretary for Procurement and Assistance
Management.
PART 927--PATENTS, DATA, AND COPYRIGHTS
1. The authority citation continues to read as follows:
Authority: Sec. 644 of the Department of Energy Organization
Act, Pub. L. 95-91 (42 U.S.C. 7254); Sec. 148 of the Atomic Energy
Act of 1954, as amended (42 U.S.C. 2168); Federal Nonnuclear Energy
Research and Development Act of 1974, sec. 9, (42 U.S.C. 5908);
Atomic Energy Act of 1954, as amended, sec. 152, (42 U.S.C. 2182);
Department of Energy National Security and Military Applications of
Nuclear Energy Authorization Act of 1987, as amended, sec. 3131(a),
(42 U.S.C. 7261a.)
2. Subpart 927.2 is added to read as follows:
Subpart 927.2--Patents
Sec.
927.200 Scope of subpart.
927.201 Authorization and consent.
927.201-1 General.
927.206 Refund of royalties.
927.206-1 General.
927.206-2 Clause for refund of royalties.
927.207 Classified contracts.
927.207-1 General.
Subpart 927.2--Patents
927.200 Scope of subpart.
When consulting subpart 27.2 of the FAR, consider ``research,
development, and demonstration'' to replace the phrase ``research and
development'' or ``R&D,'' for the purposes of DOE actions.
927.201 Authorization and consent.
927.201-1 General.
In certain contracting situations, such as those involving
research, development, or demonstration projects, consideration should
be given to the impact of third party-owned patents covering technology
that may be incorporated in the project which patents may ultimately
affect widespread commercial use of the project results. In such
situations, Patent Counsel shall be consulted to determine what
modifications, if any, are to be made to the utilization of the
Authorization and Consent and Patent Indemnity provisions or what other
action might be deemed appropriate.
927.206 Refund of Royalties.
927.206-1 General.
The clause at 952.227-9, Refund of Royalties, obligates the
contractor to inform DOE of the payment of royalties pertaining to the
use of intellectual property, either patent or data related, in the
performance of the contract. This information may result in
identification of instances in which the Government already has a
license for itself or others acting in its behalf or the right to
sublicense others. Also, there may be pending anti-trust actions or
challenges to the validity of a patent or the proprietary nature of the
data, or the contractor may be able to gain unrestricted access to the
same data through other sources. In such situations the contractor may
avoid the payment of a royalty in its entirety or may be charged a
reduced royalty.
927.206-2 Clause for refund of royalties.
The contracting officer shall insert the clause at 952.227-9,
Refund of Royalties, in solicitations and contracts for experimental,
research, developmental, or demonstration work or other solicitations
and contracts in which the contracting officer believes royalties will
have to be paid by the contractor or a subcontractor of any tier.
927.207 Classified contracts.
927.207-1 General.
Unauthorized disclosure of classified subject matter, whether in a
patent application or resulting from the issuance of a patent, may be a
violation of the Atomic Energy Act of 1954, as amended, other laws
relating to espionage and national security, and provisions of the
proposed contract pertaining to disclosure of information.
3. Section 927.300 is revised to read as follows:
927.300 General.
(a) One of the primary missions of the Department of Energy is the
use of its procurement process to ensure the conduct of research,
development, and demonstration leading to the ultimate
commercialization of efficient sources of energy. Accordingly, DOE
mission is not generally oriented toward procurement for Government
use, except where procurements are involved with special classified
programs or the construction, improvement, or the environmental
restoration and waste management aspects of Government-owned
facilities. To accomplish its mission, DOE must work in cooperation
with industry in the development of new energy sources and in achieving
the ultimate goal of widespread commercial use of those energy sources.
To this end, Congress has provided DOE with the authority to invoke an
array of incentives to secure the commercialization of new technologies
developed for DOE. One such important incentive is provided by the
patent system.
(b) Pursuant to 42 U.S.C. 2182 and 42 U.S.C. 5908, DOE takes title
to all inventions conceived or first actually reduced to practice in
the course of or under contracts with large, for-profit companies,
foreign organizations, and others not beneficiaries of Pub. L. 96-517.
As set forth in regulations in this subpart, DOE may waive the
Government's patent rights in appropriate situations at the time of
contracting to encourage industrial participation, foster commercial
utilization and competition, and make the benefits of DOE activities
widely available to the public. In addition to considering the waiver
of patent rights at the time of contracting, DOE will also consider the
incentive of a waiver of patent rights upon the reporting of an
identified invention when requested by such entities or by the
employee-inventor with the permission of the contractor. These requests
can be made whether or not a waiver request was made at the time of
contracting. Waivers for identified inventions will be granted where it
is determined that the patent waiver will be a meaningful incentive to
achieving the development and ultimate commercial utilization of
inventions. Where DOE grants a waiver of the Government's patent
rights, either at the time of contracting or after an invention is
made, certain minimum rights and obligations will be required by DOE to
protect the public interest.
(c) Another major DOE mission is to manage the nation's nuclear
weapons and other classified programs, where research and development
procurements are directed toward processes and equipment not available
to the public. To accomplish DOE programs for bringing private industry
into these and other special programs to the maximum extent permitted
by national security and policy considerations, it is desirable that
the technology developed in these programs be made available on a
selected basis for use in the particular fields of interest and under
controlled conditions by properly cleared industrial and scientific
research institutions. To ensure such availability and control, the
grant of waivers in these programs may necessarily be more limited,
either by the imposition of field of use restrictions or national
security measures, than in other DOE programs.
4. Section 927.302 is added to read as follows:
927.302 Policy.
(a) In contracts having as a purpose the conduct of research,
development, or demonstration work and in other special contracts with
large, for-profit companies, foreign organizations, and others not
beneficiaries of Public Law 96-517, DOE shall normally acquire title in
and to any invention or discovery conceived or first actually reduced
to practice in the course of or under the contract, allowing the
contractor to retain a nonexclusive, revocable, paid-up license in the
invention and the right to request permission to file an application
for a patent and retain title to any ensuing patent in any foreign
country in which DOE does not elect to secure patent rights. DOE may
approve the request if it determines that such approval would be in the
national interest. The contractor's nonexclusive license may be revoked
or modified by DOE only to the extent necessary to achieve expeditious
practical application of the invention pursuant to any application for
and the grant of an exclusive license in the invention to another
party.
(b) In contracts having as a purpose the conduct of research,
development, or demonstration work and in certain other contracts, DOE
may need to require those contractors that are not the beneficiaries of
Public Law 96-517 to license background patents to ensure reasonable
public availability and accessibility necessary to practice the subject
of the contract in the fields of technology specifically contemplated
in the contract effort. That need may arise where the contractor is not
attempting to take the technology resulting from the contract to the
commercial marketplace or is not meeting market demands. The need for
background patent rights and the particular rights that should be
obtained for either the Government or the public will depend upon the
type, purpose, and scope of the contract effort, impact on the DOE
program, and the cost to the Government of obtaining such rights.
(c) Provisions to deal specifically with DOE background patent
rights are contained in paragraph (k) of the clause at 952.227-13. That
paragraph may be modified with the concurrence of Patent Counsel in
order to reflect the equities of the parties in particular contracting
situations. Paragraph (k) should normally be deleted for contracts with
an estimated cost and fee or price of $250,000 or less and may not be
appropriate for certain types of study contracts, planning contracts,
contracts with educational institutions, or contracts for specialized
equipment for in-house Government use, for use by the public, or for
contracts where the contract work product will not be the subject of
future procurements by the Government or its contractors.
5. Section 927.303 is added to read as follows:
927.303 Contract clauses.
(a) In solicitations and contracts for experimental, research,
developmental, or demonstration work (but see (FAR) 48 CFR 27.304-3
regarding contracts for construction work or architect-engineer
services), the contracting officer shall include the clause: (1) At
952.227-13, Patent Rights Acquisition by the Government, in all such
contracts other than those described in paragraphs (a) (2) and (3) of
this section;
(2) At 952.227-11, Patent Rights by the Contractor (Short Form), in
contracts in which the contractor is a domestic small business or
nonprofit organization as defined at (FAR) 48 CFR 27.301, except where
the work of the contract is subject to an Exceptional Circumstances
Determination by DOE; and
(3) Discussed in 970.27, Patent, Data, and Copyrights, in contracts
for the management and operation of DOE laboratories and production
facilities.
(b) DOE shall not use the clause at (FAR) 48 CFR 52.227-12. In
instances in which DOE grants an advance waiver or waives its rights in
an identified invention, contracting officers shall consult with patent
counsel for the appropriate modifications to the clause at 952.227-13.
6. Section 927.304 is added to read as follows:
927.304 Procedures.
Where the contract contains the clause at 952.227-11 and the
contractor does not elect to retain title to a subject invention, DOE
may consider and, after consultation with the contractor, grant
requests for retention of rights by the inventor subject to the
provisions of 35 U.S.C. 200 et seq. This statement is in lieu of (FAR)
48 CFR 27.304-1(c).
PART 952--SOLICITATION PROVISIONS AND CONTRACT CLAUSES
7. The authority citation for part 952 continues to read as
follows:
Authority: 42 U.S.C. 7254; 40 U.S.C. 486(c).
8. Subsection 952.227-9 is added to read as follows:
952.227-9 Refund of royalties.
As prescribed in 927.206-2, insert the following clause:
Refund of Royalties (XXX 199X)
(a) The contract price includes certain amounts for royalties
payable by the Contractor or subcontractors or both, which amounts
have been reported to the Contracting Officer.
(b) The term ``royalties'' as used in this clause refers to any
costs or charges in the nature of royalties, license fees, patent or
license amortization costs, or the like, for the use of or for
rights in patents and patent applications in connection with
performing this contract or any subcontract hereunder. The term also
includes any costs or charges associated with the access to, use of,
or other right pertaining to data that is represented to be
proprietary and is related to the performance of this contract or
the copying of such data or data that is copyrighted.
(c) The Contractor shall furnish to the Contracting Officer,
before final payment under this contract, a statement of royalties
paid or required to be paid in connection with performing this
contract and subcontracts hereunder together with the reasons.
(d) The Contractor will be compensated for royalties reported
under paragraph (c) above, only to the extent that such royalties
were included in the contract price and are determined by the
Contracting Officer to be properly chargeable to the Government and
allocable to the contract. To the extent that any royalties that are
included in the contract price are not, in fact, paid by the
Contractor or are determined by the Contracting Officer not to be
properly chargeable to the government and allocable to the contract,
the contract price shall be reduced. Repayment or credit to the
Government shall be made as the Contracting Officer directs. The
approval by DOE of any individual payments or royalties shall not
prevent the Government from contesting at any time the
enforceability, validity, scope of, or title to, any patent or the
proprietary nature of data pursuant to which a royalty or other
payment is to be or has been made.
(e) If, at any time within 3 years after final payment under
this contract, the Contractor for any reason is relieved in whole or
in part from the payment of the royalties included in the final
contract price as adjusted pursuant to paragraph (d) above, the
Contractor shall promptly notify the Contracting Officer of that
fact and shall reimburse the Government in a corresponding amount.
(f) The substance of this clause, including this paragraph (f),
shall be included in any subcontract in which the amount of
royalties reported during negotiation of the subcontract exceeds
$250.
(End of clause)
9. Subsection 952.227-11 is added to read as follows:
952.227-11 Patent rights-retention by the contractor (short form).
As prescribed in 927.303(a), insert the following clause:
Patent Rights-Retention by the Contractor (Short Form) (XXX 19XX)
(a) Definitions. (1) Invention means any invention or discovery
which is or may be patentable or otherwise protectable under title
35 of the United States Code, or any novel variety of plant which is
or may be protected under the Plant Variety Protection Act (7 U.S.C.
2321, et seq.).
(2) Made when used in relation to any invention means the
conception of first actual reduction to practice of such invention.
(3) Nonprofit organization means a university or other
institution of higher education or an organization of the type
described in section 501(c)(3) of the Internal Revenue Code of 1954
(26 U.S.C. 501(c)) and exempt from taxation under section 501(a) of
the Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit
scientific or educational organization qualified under a state
nonprofit organization statute.
(4) Practical application means to manufacture, in the case of a
composition or product; to practice, in the case of a process or
method; or to operate, in the case of a machine or system; and, in
each case, under such conditions as to establish that the invention
is being utilized and that its benefits are, to the extent permitted
by law or Government regulations, available to the public on
reasonable terms.
(5) Small business firm means a small business concern as
defined at section 2 of Pub. L. 85-536 (15 U.S.C. 632) and
implementing regulations of the Administrator of the Small Business
Administration. For the purpose of this clause, the size standards
for small business concerns involved in Government procurement and
subcontracting at 13 CFR 121.3-8 and 13 CFR 121.3-12, respectively,
will be used.
(6) Subject invention means any invention of the contractor
conceived or first actually reduced to practice in the performance
of work under this contract, provided that in the case of a variety
of plant, the date of determination (as defined in section 41(d) of
the Plant Variety Protection Act, 7 U.S.C. 2401(d)) must also occur
during the period of contract performance.
(7) Agency licensing regulations and agency regulations
concerning the licensing of Government-owned inventions mean the
Department of Energy patent licensing regulations at 10 CFR part
781.
(b) Allocation of principal rights. The Contractor may retain
the entire right, title, and interest throughout the world to each
subject invention subject to the provisions of this clause and 35
U.S.C. 203. With respect to any subject invention in which the
Contractor retains title, the Federal Government shall have a
nonexclusive, nontransferable, irrevocable, paid-up license to
practice or have practiced for or on behalf of the United States the
subject invention throughout the world.
(c) Invention disclosure, election of title, and filing of
patent application by Contractor. (1) The Contractor will disclose
each subject invention to the Department of Energy (DOE) within 2
months after the inventor discloses it in writing to Contractor
personnel responsible for patent matters. The disclosure to DOE
shall be in the form of a written report and shall identify the
contract under which the invention was made and the inventor(s). It
shall be sufficiently complete in technical detail to convey a clear
understanding to the extent known at the time of the disclosure, of
the nature, purpose, operation, and the physical, chemical,
biological or electrical characteristics of the invention. The
disclosure shall also identify any publication, on sale or public
use of the invention and whether a manuscript describing the
invention has been submitted for publication and, if so, whether it
publication at the time of disclosure. In addition, after disclosure
to the DOE, the Contractor will promptly notify that agency of the
acceptance of any manuscript describing the invention for
publication or of any on sale or public use planned by the
Contractor.
(2) The Contractor will elect in writing whether or not to
retain title to any such invention by notifying DOE within 2 years
of disclosure to that agency. However, in any case where
publication, on sale or public use has initiated the l-year
statutory period wherein valid patent protection can still be
obtained in the United States, the period for election of title may
be shortened by DOE to a date that is no more than 60 days prior to
the end of the statutory period.
(3) The Contractor will file its initial patent application on a
subject invention to which it elects to retain title within 1 year
after election of title or, if earlier, prior to the end of any
statutory period wherein valid patent protection can be obtained in
the United States after a publication, on sale, or public use. The
Contractor will file patent applications in additional countries or
international patent offices within either 10 months of the
corresponding initial patent application or 6 months from the date
permission is granted by the Commissioner of Patents and Trademarks
to file foreign patent applications where such filing has been
prohibited by a Secrecy Order.
(4) Requests for extension of the time for disclosure election,
and filing under subparagraphs (c)(l), (2), and (3) of this clause
may, at the discretion of the agency, be granted.
(d) Conditions when the Government may obtain title. The
Contractor will convey to the Federal agency, upon written request,
title to any subject invention--
(1) If the Contractor fails to disclose or elect title to the
subject invention within the times specified in paragraph (c) of
this clause, or elects not to retain title; provided, That DOE may
only request title within 60 days after learning of the failure of
the Contractor to disclose or elect within the specified times.
(2) In those countries in which the Contractor fails to file
patent applications within the times specified in paragraph (c) of
this clause; provided, however, That if the Contractor has filed a
patent application in a country after the times specified in
paragraph (c) of this clause, but prior to its receipt of the
written request of the Federal agency, the Contractor shall continue
to retain title in that country.
(3) In any country in which the Contractor decides not to
continue the prosecution of any application for, to pay the
maintenance fees on, or defend in reexamination or opposition
proceeding on, a patent on a subject invention.
(e) Minimum rights to Contractor and protection of the
Contractor right to file. (1) The Contractor will retain a
nonexclusive royalty-free license throughout the world in each
subject invention to which the Government obtains title, except if
the Contractor fails to disclose the invention within the times
specified in paragraph (c) of this clause. The Contractor's license
extends to its domestic subsidiary and affiliates, if any, within
the corporate structure of which the Contractor is a party and
includes the right to grant sublicenses of the same scope to the
extent the Contractor was legally obligated to do so at the time the
contract was awarded. The license is transferable only with the
approval of the Federal agency, except when transferred to the
successor of that part of the Contractor's business to which the
invention pertains.
(2) The Contractor's domestic license may be revoked or modified
by DOE to the extent necessary to achieve expeditious practical
application of subject invention pursuant to an application for an
exclusive license submitted in accordance with applicable provisions
at 37 CFR part 404 and agency licensing regulations. This license
will not be revoked in that field of use or the geographical areas
in which the Contractor has achieved practical application and
continues to make the benefits of the invention reasonably
accessible to the public. The license in any foreign country may be
revoked or modified at the discretion of DOE to the extent the
Contractor, its licensees, or the domestic subsidiaries or
affiliates have failed to achieve practical application in that
foreign country.
(3) Before revocation or modification of the license, DOE will
furnish the Contractor a written notice of its intention to revoke
or modify the license, and the Contractor will be allowed 30 days
(or such other time as may be authorized by DOE for good cause shown
by the Contractor) after the notice to show cause why the license
should not be revoked or modified. The Contractor has the right to
appeal, in accordance with applicable regulations in 37 CFR part 404
and agency regulations concerning the licensing of Government owned
inventions, any decision concerning the revocation or modification
of the license.
(f) Contractor action to protect the Government's interest. (1)
The Contractor agrees to execute or to have executed and promptly
deliver to DOE all instruments necessary to (i) establish or confirm
the rights the Government has throughout the world in those subject
inventions to which the Contractor elects to retain title, and (ii)
convey title to DOE when requested under paragraph (d) of this
clause and to enable the government to obtain patent protection
throughout the world in that subject invention.
(2) The Contractor agrees to require, by written agreement, its
employees, other than clerical and nontechnical employees, to
disclose promptly in writing to personnel identified as responsible
for the administration of patent matters and in a format suggested
by the Contractor each subject invention made under contract in
order that the Contractor can comply with the disclosure provisions
of paragraph (c) of this clause, and to execute all papers necessary
to file patent applications on subject inventions and to establish
the Government's rights in the subject inventions. This disclosure
format should require, as a minimum, the information required by
subparagraph (c)(1) of this clause. The Contractor shall instruct
such employees, through employee agreements or other suitable
educational programs, on the importance of reporting inventions in
sufficient time to permit the filing of patent applications prior to
U.S. or foreign statutory bars.
(3) The Contractor will notify DOE of any decisions not to
continue the prosecution of a patent application, pay maintenance
fees, or defend in a reexamination or opposition proceeding on a
patent, in any country, not less than 30 days before the expiration
of the response period required by the relevant patent office.
(4) The Contractor agrees to include, within the specification
of any United States patent application and any patent issuing there
on covering a subject invention, the following statement, ``This
invention was made with Government support under (identify the
contract) awarded by the United States Department of Energy. The
Government has certain rights in the invention.''
(g) Subcontracts. (1) The Contractor will include this clause,
suitably modified to identify the parties, in all subcontracts,
regardless of tier, for experimental, developmental, or research
work to be performed by a small business firm or domestic nonprofit
organization. The subcontractor will retain all rights provided for
the Contractor in this clause, and the Contractor will not, as part
of the consideration for awarding the subcontract, obtain rights in
the subcontractor's subject inventions.
(2) The contractor shall include in all other subcontracts,
regardless of tier, for experimental, developmental, demonstration,
or research work the patent rights clause at 952.227-13.
(3) In the case of subcontracts, at any tier, DOE,
subcontractor, and the Contractor agree that the mutual obligations
of the parties created by this clause constitute a contract between
the subcontractor and DOE with respect to the matters covered by the
clause; provided, however, that nothing in this paragraph is
intended to confer any jurisdiction under the Contract Disputes Act
in connection with proceedings under paragraph (j) of this clause.
(h) Reporting on utilization of subject inventions. The
Contractor agrees to submit, on request, periodic reports no more
frequently than annually on the utilization of a subject invention
or on efforts at obtaining such utilization that are being made by
the Contractor or its licensees or assignees. Such reports shall
include information regarding the status of development, date of
first commercial sale or use, gross royalties received, by the
Contractor, and such other data and information as DOE may
reasonably specify. The Contractor also agrees to provide additional
reports as may be requested by DOE in connection with any march-in
proceeding undertaken by that agency in accordance with paragraph
(j) of this clause. As required by 35 U.S.C. 202(c)(5), DOE agrees
it will not disclose such information to persons outside the
Government without permission of the Contractor.
(i) Preference for United States industry. Notwithstanding any
other provision of this clause, the Contractor agrees that neither
it nor any assignee will grant to any person the exclusive right to
use or sell any subject invention in the United States unless such
person agrees that any product embodying the subject invention or
produced through the use of the subject invention will be
manufactured substantially in the United States. However, in
individual cases, the requirement for such an agreement may be
waived by DOE upon a showing by the Contractor or its assignee that
reasonable but unsuccessful efforts have been made to grant licenses
on similar terms to potential licensees that would be likely to
manufacture substantially in the United States or that under the
circumstances domestic manufacture is not commercially feasible.
(j) March-in rights. The Contractor agrees that, with respect to
any subject invention in which it has acquired title, DOE has the
right in accordance with the procedures in 37 CFR 401.6 and any
supplemental regulations of the agency to require the Contractor, an
assignee or exclusive licensee of a subject invention to grant a
nonexclusive, partially exclusive, or exclusive license in any field
of use to a responsible applicant or applicants, upon terms that are
reasonable under the circumstances, and, if the Contractor,
assignee, or exclusive licensee refuses such a request, DOE has the
right to grant such a license itself if DOE determines that--
(1) Such action is necessary because the Contractor or assignee
has not taken, or is not expected to take within a reasonable time,
effective steps to achieve practical application of the subject
invention in such field of use;
(2) Such action is necessary to alleviate health or safety needs
which are not reasonably satisfied by the Contractor, assignee, or
their licensees;
(3) Such action is necessary to meet requirements for public use
specified by Federal regulations and such requirements are not
reasonably satisfied by the Contractor, assignee, or licensees; or
(4) Such action is necessary because the agreement required by
paragraph (i) of this clause has not been obtained or waived or
because a licensee of the exclusive right to use or sell any subject
invention in the United States is in breach of such agreement.
(k) Special provisions for contracts with nonprofit
organizations. If the Contractor is a nonprofit organization, it
agrees that--
(1) Rights to a subject invention in the United States may not
be assigned without the approval of the Federal agency, except where
such assignment is made to an organization which has as one of its
primary functions the management of inventions; provided, that such
assignee will be subject to the same provisions as the Contractor;
(2) The Contractor will share royalties collected on a subject
invention with the inventor, including Federal employee co-inventors
(when DOE deems it appropriate) when the subject invention is
assigned in accordance with 35 U.S.C. 202(e) and 37 CFR 401.10;
(3) The balance of any royalties or income earned by the
Contractor with respect to subject inventions, after payment of
expenses (including payments to inventors) incidental to the
administration of subject inventions will be utilized for the
support of scientific research or education; and
(4) It will make efforts that are reasonable under the
circumstances to attract licensees of subject inventions that are
small business firms, and that it will give a preference to a small
business firm when licensing a subject invention if the Contractor
determines that the small business firm has a plan or proposal for
marketing the invention which, if executed, is equally as likely to
bring the invention to practical application as any plans or
proposals from applicants that are not small business firms;
provided, that the Contractor is also satisfied that the small
business firm has the capability and resources to carry out its plan
or proposal. The decision whether to give a preference in any
specific case will be at the discretion of the contractor. However,
the Contractor agrees that the Secretary of Commerce may review the
Contractor's licensing program and decisions regarding small
business applicants, and the Contractor will negotiate changes to
its licensing policies, procedures, or practices with the Secretary
of Commerce when that Secretary's review discloses that the
Contractor could take reasonable steps to more effectively implement
the requirements of this subparagraph (k)(4).
(l) Communications. (1) The contractor shall direct any
notification, disclosure, or request to DOE provided for in this
clause to the DOE patent counsel assisting the DOE contracting
activity, with a copy of the communication to the Contracting
Officer.
(2) Each exercise of discretion or decision provided for in this
clause, except paragraph (k)(4), is reserved for the DOE Patent
Counsel and is not a claim or dispute and is not subject to the
Contract Disputes Act of 1978.
(3) Upon request of the DOE Patent Counsel or the contracting
officer, the contractor shall provide any or all of the following:
(i) A copy of the patent application, filing date, serial number
and title, patent number, and issue date for any subject invention
in any country in which the contractor has applied for a patent;
(ii) A report, not more often than annually, summarizing all
subject inventions which were disclosed to DOE individually during
the reporting period specified; or
(iii) A report, prior to closeout of the contract, listing all
subject inventions or stating that there were none.
(End of clause)
10. Subsection 952.227-13 is added to read as follows: 952.227-13
Patent Rights-Acquisition by the Government. As prescribed at
927.303(c), insert the following clause:
Patent Rights-Acquisition by the Government (XXX 199X)
(a) Definitions. Invention, as used in this clause, means any
invention or discovery which is or may be patentable or otherwise
protectable under title 35 of the United States Code or any novel
variety of plant that is or may be protectable under the Plant
Variety Protection Act (7 U.S.C. 2321, et seq.).
Practical application, as used in this clause, means to
manufacture, in the case of a composition or product; to practice,
in the case of a process or method; or to operate, in the case of a
machine or system; and, in each case, under such conditions as to
establish that the invention is being utilized and that its benefits
are, to the extent permitted by law or Government regulations,
available to the public on reasonable terms.
Subject invention, as used in this clause, means any invention
of the Contractor conceived or first actually reduced to practice in
the performance of work under this contract; provided, that in the
case of a variety of plant, the date of determination (as defined in
section 41(d) of the Plant Variety Protection Act, 7 U.S.C. 2401(d))
must also occur during the period of contract performance.
Head of the Contracting Agency means the Secretary of Energy.
Agency licensing regulations and applicable agency licensing
regulations mean the Department of Energy patent licensing
regulations at 10 CFR part 781.
(b) Allocations of principal rights--(1) Assignment to the
Government. The Contractor agrees to assign to the Government the
entire right, title, and interest throughout the world in and to
each subject invention, except to the extent that rights are
retained by the Contractor under subparagraph (b)(2) and paragraph
(d) below.
(2) Greater rights determinations. (i) The Contractor, or an
employee-inventor after consultation with the Contractor, may retain
greater rights than the nonexclusive license provided in paragraph
(d) below, in accordance with the procedures of paragraph 27.304-
1(a) of the Federal Acquisition Regulation (FAR). A request for a
determination of whether the Contractor or the employee-inventor is
entitled to retain such greater rights must be submitted to the
Secretary of Energy or designee at the time of the first disclosure
of the invention pursuant to subparagraph (e)(2) below, or not later
than 8 months thereafter, unless a longer period is authorized in
writing by the Contracting Officer for good cause shown in writing
by the Contractor. Each determination of greater rights under this
contract normally shall be subject to paragraph (c) below, and to
the reservations and conditions deemed to be appropriate by the
Secretary of Energy or designee.
(ii) Upon request, the Contractor shall provide the filing date,
serial number and title, a copy of the patent application (including
an English-language version if filed in a language other than
English), and patent number and issue date for any subject invention
in any country for which the Contractor has retained title.
(iii) Upon request, the Contractor shall furnish the Government
an irrevocable power to inspect and make copies of the patent
application file.
(c) Minimum rights acquired by the Government. (1) With respect
to each subject invention to which the Contractor retains principal
or exclusive rights, the Contractor agrees as follows:
(i) The Contractor hereby grants to the Government a
nonexclusive, nontransferable, irrevocable, paid-up license to
practice or have practiced each subject invention throughout the
world by or on behalf of the Government of the United States
(including any Government agency).
(ii) The Contractor agrees that with respect to any subject
invention in which it has acquired title, DOE has the right in
accordance with the procedures in (FAR) 48 CFR 27.304-1(g) to
require the Contractor, an assignee, or exclusive licensee of a
subject invention to grant a nonexclusive, partially exclusive, or
exclusive license in any field of use to a responsible applicant or
applicants, upon terms that are reasonable under the circumstances,
and if the Contractor, assignee, or exclusive licensee refuses such
a request, DOE has the right to grant such a license itself if it
determines that--
(A) Such action is necessary because the Contractor or assignee
has not taken, or is not expected to take within a reasonable time,
effective steps to achieve practical application of the subject
invention in such field of use;
(B) Such action is necessary to alleviate health or safety needs
which are not reasonably satisfied by the Contractor, assignee, or
their licensees;
(C) Such action is necessary to meet requirements for public use
specified by Federal regulations and such requirements are not
reasonably satisfied by the Contractor, assignee, or licensees; or
(D) Such action is necessary because the agreement required by
paragraph (i) of this clause has neither been obtained nor waived or
because a licensee of the exclusive right to use or sell any subject
invention in the United States is in breach of such agreement
(iii) The Contractor agrees to submit on request periodic
reports no more frequently than annually on the utilization of a
subject invention or on efforts at obtaining such utilization of a
subject invention or on efforts at obtaining such utilization that
are being made by the Contractor or its licensees or assignees. Such
reports shall include information regarding the status of
development, date of first commercial sale or use, gross royalties
received by the Contractor, and such other data and information as
DOE may reasonably specify. The Contractor also agrees to provide
additional reports as may be requested by DOE in connection with any
march-in proceedings undertaken by that agency in accordance with
subdivision (ii) above. To the extent data or information supplied
under this section is considered by the Contractor, its licensee, or
assignee to be privileged and confidential and is so marked, the
Department of Energy agrees that, to the extent permitted by law, it
will not disclose such information to persons outside the
Government.
(iv) The Contractor agrees, when licensing a subject invention,
to arrange to avoid royalty charges on acquisitions involving
Government funds, including funds derived through a Military
Assistance Program of the Government or otherwise derived through
the Government, to refund any amounts received as royalty charges on
a subject invention in acquisitions for, or on behalf of, the
Government, and to provide for such refund in any instrument
transferring rights in the invention to any party.
(v) The Contractor agrees to provide for the Government's paid-
up license pursuant to subdivision (i) above in any instrument
transferring rights in a subject invention and to provide for the
granting of licenses as required by subdivision (ii) above, and for
the reporting of utilization information as required by subdivision
(iii) above, whenever the instrument transfers principal or
exclusive rights in a subject invention.
(2) Nothing contained in this paragraph (c) shall be deemed to
grant to the Government any rights with respect to any invention
other than a subject invention.
(d) Minimum rights to the Contractor. (1) The Contractor is
hereby granted a revocable nonexclusive, royalty-free license in
each patent application filed in any country on a subject invention
and any resulting patent in which the Government obtains title,
unless the Contractor fails to disclose the subject invention within
the times specified in subparagraph (e)(2) below. The Contractor's
license extends to its domestic subsidiaries and affiliates, if any,
within the corporate structure of which the Contractor is a part and
includes the right to grant sublicenses of the same scope to the
extent the Contractor was legally obligated to do so at the time the
contract was awarded. The license is transferable only with the
approval of DOE except when transferred to the successor of that
part of the Contractor's business to which the invention pertains.
(2) The Contractor's domestic license may be revoked or modified
by DOE to the extent necessary to achieve expeditious practical
application of the subject invention pursuant to an application for
an exclusive license submitted in accordance with applicable
provisions in 37 CFR Part 404 and agency licensing regulations. This
license will not be revoked in that field of use or the geographical
areas in which the Contractor has achieved practical applications
and continues to make the benefits of the invention reasonably
accessible to the public. The license in any foreign country may be
revoked or modified at the discretion of DOE to the extent the
Contractor, its licensees, or its domestic subsidiaries or
affiliates have failed to achieve practical application in that
foreign country.
(3) Before revocation or modification of the license, DOE will
furnish the Contractor a written notice of its intention to revoke
or modify the license, and the Contractor will be allowed 30 days
(or such other time as may be authorized by DOE for good cause shown
by the Contractor) after the notice to show cause why the license
should not be revoked or modified. The Contractor has the right to
appeal, in accordance with applicable agency licensing regulations
and 37 CFR part 404 concerning the licensing of Government-owned
inventions, any decision concerning the revocation or modification
of its license.
(4) The Contractor may request the right to retain patent rights
to a subject invention in any foreign country where the Government
has elected not to secure such rights, subject to the conditions in
paragraphs (d)(4)(i) through (d)(4)(vii) of this clause. Such
request must be made in writing to the Patent Counsel as part of the
disclosure required by paragraph (e)(2) of this clause, with a copy
to the DOE contracting officer. DOE approval, if given, will be
based on a determination that this would best serve the national
interest.
(i) The recipient of such rights, when specifically requested by
DOE, and three years after issuance of a foreign patent disclosing
the subject invention, shall furnish DOE a report stating:
(A) The commercial use that is being made, or is intended to be
made, of said invention, and
(B) The steps taken to bring the invention to the point of
practical application or to make the invention available for
licensing.
(ii) The Government shall retain at least an irrevocable,
nonexclusive, paid-up license to make, use, and sell the invention
throughout the world by or on behalf of the Government (including
any Government agency) and States and domestic municipal
governments, unless the Secretary of Energy or designee determines
that it would not be in the public interest to acquire the license
for the States and domestic municipal governments.
(iii) If noted elsewhere in this contract as a condition of the
grant of an advance waiver of the Government's title to inventions
under this contract, or, if no advance waiver was granted but a
waiver of the Government's title to an identified invention is
granted pursuant to paragraph (d)(2) of this contract upon a
determination by the Secretary of Energy that it is in the
Government's best interest, this license shall include the right of
the Government to sublicense foreign governments pursuant to any
existing or future treaty or agreement with such foreign
governments.
(iv) Subject to the rights granted in paragraphs (d)(1), (2),
and (3) of this clause, the Secretary of Energy or designee shall
have the right to terminate the foreign patent rights granted in
this paragraph (d)(4) in whole or in part unless the recipient of
such rights demonstrates to the satisfaction of the Secretary of
Energy or designee that effective steps necessary to accomplish
substantial utilization of the invention have been taken or within a
reasonable time will be taken.
(v) Subject to the rights granted in paragraphs (d)(1), (2), and
(3) of this clause, the Secretary of Energy or designee shall have
the right, commencing four years after foreign patent rights are
accorded under this paragraph (d)(4), to require the granting of a
nonexclusive or partially exclusive license to a responsible
applicant or applicants, upon terms reasonable under the
circumstances, and in appropriate circumstances to terminate said
foreign patent rights in whole or in part, following a hearing upon
notice thereof to the public, upon a petition by an interested
person justifying such hearing: (A) If the Secretary or designee
determines, upon review of such material as he deems relevant, and
after the recipient of such rights or other interested person has
had the opportunity to provide such relevant and material
information as the Secretary or designee may require, that such
foreign patent rights have tended substantially to lessen
competition or to result in undue market concentration in any
section of the United States in any line of commerce to which the
technology relates; or
(B) Unless the recipient of such rights demonstrates to the
satisfaction of the Secretary or designee at such hearing that the
recipient has taken effective steps, or within a reasonable time
thereafter is expected to take such steps, necessary to accomplish
substantial utilization of the invention.
(vi) If the contractor is to file a foreign patent application
on a subject invention, the Government agrees, upon written request,
to use its best efforts to withhold publication of such invention
disclosures until the expiration of the time period specified in
paragraph (d)(1) of this clause, but in no event shall the
Government or its employees be liable for any publication thereof.
(vii) Subject to the license specified in paragraphs (d)(1),
(2), and (3) of this clause, the contractor or inventor agrees to
convey to the Government, upon request, the entire right, title, and
interest in any foreign country in which the contractor or inventor
fails to have a patent application filed in accordance with
paragraph (d)(3) of this clause, or decides not to continue
prosecution or to pay any maintenance fees covering the invention.
To avoid forfeiture of the patent application or patent, the
contractor or inventor shall, not less than 60 days before the
expiration period for any action required by any patent office,
notify the Patent Counsel of such failure or decision, and deliver
to the Patent Counsel, the executed instruments necessary for the
conveyance specified in this paragraph.
(e) Invention identification, disclosures, and reports. (1) The
Contractor shall establish and maintain active and effective
procedures to assure that subject inventions are promptly identified
and disclosed to Contractor personnel responsible for patent matters
within 6 months of conception and/or first actual reduction to
practice, whichever occurs first in the performance of work under
this contract. These procedures shall include the maintenance of
laboratory notebooks or equivalent records and other records as are
reasonably necessary to document the conception and/or the first
actual reduction to practice of subject inventions, and records that
show that the procedures for identifying and disclosing the
inventions are followed. Upon request, the Contractor shall furnish
the Contracting Officer a description of such procedures for
evaluation and for determination as to their effectiveness.
(2) The Contractor shall disclose each subject invention to the
Contracting Officer within 2 months after the inventor discloses it
in writing to Contractor personnel responsible for patent matters
or, if earlier, within 6 months after the Contractor becomes aware
that a subject invention has been made, but in any event before any
on sale, public use, or publication of such invention known to the
Contractor. The disclosure to DOE shall be in the form of a written
report and shall identify the contract under which the invention was
made and the inventor(s). It shall be sufficiently complete in
technical detail to convey a clear understanding, to the extent
known at the time of the disclosure, of the nature, purpose,
operation, and physical, chemical, biological, or electrical
characteristics of the invention. The disclosure shall also identify
any publication, on sale, or public use of the invention and whether
a manuscript describing the invention has been submitted for
publication and, if so, whether it has been accepted for publication
at the time of disclosure. In addition, after disclosure to DOE, the
Contractor shall promptly notify that agency of the acceptance of
any manuscript describing the invention for publication or of any on
sale or public use planned by the Contractor.
(3) The Contractor shall furnish the Contracting Officer the
following: (i) Interim reports every 12 months (or such longer
period as may be specified by the Contracting Officer) from the date
of the contract, listing subject inventions during that period, and
certifying that all subject inventions have been disclosed (or that
there are not such inventions) and that the procedures required by
subparagraph (e)(1) above have been followed.
(ii) A final report, within 3 months after completion of the
contracted work listing all subject inventions or certifying that
there were no such inventions, and listing all subcontracts at any
tier containing a patent rights clause or certifying that there were
no such subcontracts.
(4) The Contractor agrees to require, by written agreement, its
employees, other than clerical and nontechnical employees, to
disclose promptly in writing to personnel identified as responsible
for the administration of patent matters and in a format suggested
by the Contractor each subject invention made under contract in
order that the Contractor can comply with the disclosure provisions
of paragraph (c) above, and to execute all papers necessary to file
patent applications on subject inventions and to establish the
Government's rights in the subject inventions. This disclosure
format should require, as a minimum, the information required by
subparagraph (2) above.
(5) The Contractor agrees subject to (FAR) 48 CFR 27.302(i) that
the Government may duplicate and disclose subject invention
disclosures and all other reports and papers furnished or required
to be furnished pursuant to this clause.
(f) Examination of records relating to inventions. (1) The
Contracting Officer or any authorized representative shall, until 3
years after final payment under this contract, have the right to
examine any books (including laboratory notebooks), records, and
documents of the Contractor relating to the conception or first
actual reduction to practice of inventions in the same field of
technology as the work under this contract to determine whether--
(i) Any such inventions are subject inventions;
(ii) The Contractor has established and maintains the procedures
required by subparagraphs (e)(1) and (4) of this clause; and
(iii) The Contractor and its inventors have complied with the
procedures.
(2) If the Contracting Officer learns of an unreported
Contractor invention which the Contracting Officer believes may be a
subject invention, the Contractor may be required to disclose the
invention to DOE for a determination of ownership rights.
(3) Any examination of records under this paragraph will be
subject to appropriate conditions to protect the confidentiality of
the information involved.
(g) Withholding of payment (this paragraph does not apply to
subcontracts). (1) Any time before final payment under this
contract, the Contracting Officer may, in the Government's interest,
withhold payment until a reserve not exceeding $50,000 or 5 percent
of the amount of this contract, whichever is less, shall have been
set aside if, in the Contracting Officer's opinion, the Contractor
fails to--
(i) Convey to the Government, using a DOE-approved form, the
title and/or rights of the Government in each subject invention as
required by this clause.
(ii) Establish, maintain, and follow effective procedures for
identifying and disclosing subject inventions pursuant to
subparagraph (e)(1) above;
(iii) Disclose any subject invention pursuant to subparagraph
(e)(2) above;
(iv) Deliver acceptable interim reports pursuant to subdivision
(e)(3)(i) above; or
(v) Provide the information regarding subcontracts pursuant to
subparagraph (h)(4) below.
(2) Such reserve or balance shall be withheld until the
Contracting Officer has determined that the Contractor has rectified
whatever deficiencies exist and has delivered all reports,
disclosures, and other information required by this clause.
(3) Final payment under this contract shall not be made before
the Contractor delivers to the Contracting Officer all disclosures
of subject inventions required by subparagraph (e)(2) above, and
acceptable final report pursuant to subdivision (e)(3)(ii) above,
and all past due confirmatory instruments.
(4) The Contracting Officer may decrease or increase the sums
withheld up to the maximum authorized above. No amount shall be
withheld under this paragraph while the amount specified by this
paragraph is being withheld under other provisions of the contract.
The withholding of any amount or the subsequent payment thereof
shall not be construed as a waiver of any Government rights.
(h) Subcontracts. (1) The contractor shall include the clause at
48 CFR 952.227-11 (suitably modified to identify the parties) in all
subcontracts, regardless of tier, for experimental, developmental,
demonstration, or research work to be performed by a small business
firm or domestic nonprofit organization, except where the work of
the subcontract is subject to an Exceptional Circumstances
Determination by DOE. In all other subcontracts, regardless of tier,
for experimental, developmental, demonstration, or research work,
the contractor shall include this clause (suitably modified to
identify the parties). The contractor shall not, as part of the
consideration for awarding the subcontract, obtain rights in the
subcontractor's subject inventions.
(2) In the event of a refusal by a prospective subcontractor to
accept such a clause the Contractor--
(i) Shall promptly submit a written notice to the Contracting
Officer setting forth the subcontractor's reasons for such refusal
and other pertinent information that may expedite disposition of the
matter; and
(ii) Shall not proceed with such subcontract without the written
authorization of the Contracting Officer.
(3) In the case of subcontracts at any tier, DOE, the
subcontractor, and Contractor agree that the mutual obligations of
the parties created by this clause constitute a contract between the
subcontractor and DOE with respect to those matters covered by this
clause.
(4) The Contractor shall promptly notify the Contracting Officer
in writing upon the award of any subcontract at any tier containing
a patent rights clause by identifying the subcontractor, the
applicable patent rights clause, the work to be performed under the
subcontract, and the dates of award and estimated completion. Upon
request of the Contracting Officer, the Contractor shall furnish a
copy of such subcontract, and, no more frequently than annually, a
listing of the subcontracts that have been awarded.
(5) The contractor shall identify all subject inventions of the
subcontractor of which it acquires knowledge in the performance of
this contract and shall notify the Patent Counsel, with a copy to
the contracting officer, promptly upon identification of the
inventions.
(i) Preference United States industry. Unless provided
otherwise, no Contractor that receives title to any subject
invention and no assignee of any such Contractor shall grant to any
person the exclusive right to use or sell any subject invention in
the United States unless such person agrees that any products
embodying the subject invention will be manufactured substantially
in the United States. However, in individual cases, the requirement
may be waived by the Government upon a showing by the Contractor or
assignee that reasonable but unsuccessful efforts have been made to
grant licenses on similar terms to potential licensees that would be
likely to manufacture substantially in the United States or that
under the circumstances domestic manufacture is not commercially
feasible.
(j) Atomic energy. (1) No claim for pecuniary award of
compensation under the provisions of the Atomic Energy Act of 1954,
as amended, shall be asserted with respect to any invention or
discovery made or conceived in the course of or under this contract.
(2) Except as otherwise authorized in writing by the Contracting
Officer, the Contractor will obtain patent agreements to effectuate
the provisions of paragraph (e)(1) of this clause from all persons
who perform any part of the work under this contract, except
nontechnical personnel, such as clerical employees and manual
laborers.
(k) Background patents. (1) Background Patent means a domestic
patent covering an invention or discovery which is not a subject
invention and which is owned or controlled by the Contractor at any
time through the completion of this contract: (i) Which the
contractor, but not the Government, has the right to license to
others without obligation to pay royalties thereon, and
(ii) Infringement of which cannot reasonably be avoided upon the
practice of any specific process, method, machine, manufacture, or
composition of matter (including relatively minor modifications
thereof) which is a subject of the research, development, or
demonstration work performed under this contract.
(2) The Contractor agrees to and does hereby grant to the
Government a royalty-free, nonexclusive license under any background
patent for purposes of practicing a subject of this contract by or
for the Government in research, development, and demonstration work
only.
(3) The Contractor also agrees that upon written application by
DOE, it will grant to responsible parties, for purposes of
practicing a subject of this contract, nonexclusive licenses under
any background patent on terms that are reasonable under the
circumstances. If, however, the Contractor believes that exclusive
rights are necessary to achieve expeditious commercial development
or utilization, then a request may be made to DOE for DOE approval
of such licensing by the contractor.
(4) Notwithstanding paragraph (k)(3) of this clause, the
contractor shall not be obligated to license any background patent
if the Contractor demonstrates to the satisfaction of the Secretary
of Energy or designee that: (i) A competitive alternative to the
subject matter covered by said background patent is commercially
available or readily introducible from one or more other sources; or
(ii) The Contractor or its licensees are supplying the subject
matter covered by said background patent in sufficient quantity and
at reasonable prices to satisfy market needs, or have taken
effective steps or within a reasonable time are expected to take
effective steps to so supply the subject matter.
(l) Publication. It is recognized that during the course of the
work under this contract, the Contractor or its employees may from
time to time desire to release or publish information regarding
scientific or technical developments conceived or first actually
reduced to practice in the course of or under this contract. In
order that public disclosure of such information will not adversely
affect the patent interests of DOE or the Contractor, patent
approval for release of publication shall be secured from Patent
Counsel prior to any such release or publication.
(m) Forfeiture of rights in unreported subject inventions. (1)
The Contractor shall forfeit and assign to the Government, at the
request of the Secretary of Energy or designee, all rights in any
subject invention which the Contractor fails to report to Patent
Counsel (with notification by Patent Counsel to the Contracting
Officer) within six months after the time the Contractor: (i) Files
or causes to be filed a United States or foreign patent application
thereon; or
(ii) Submits the final report required by paragraph (e)(2)(ii)
of this clause, whichever is later.
(2) However, the Contractor shall not forfeit rights in a
subject invention if, within the time specified, in paragraph
(m)(1)(i) or (m)(1)(ii) of this clause, the Contractor: (i) Prepares
a written decision based upon a review of the record that the
invention was neither conceived nor first actually reduced to
practice in the course of or under the contract and delivers the
decision to Patent Counsel (with notification by Patent Counsel to
the Contracting Officer); or
(ii) Contending that the invention is not a subject invention,
the Contractor nevertheless discloses the invention and all facts
pertinent to this contention to the Patent Counsel (with
notification by Patent Counsel to the Contracting Officer); or
(iii) Establishes that the failure to disclose did not result
from the Contractor's fault or negligence.
(3) Pending written assignment of the patent application and
patents on a subject invention determined by the Secretary or
designee to be forfeited (such determination to be a final decision
under the Disputes clause of this contract), the Contractor shall be
deemed to hold the invention and the patent applications and patents
pertaining thereto in trust for the Government. The forfeiture
provision of this paragraph (m) shall be in addition to and shall
not supersede other rights and remedies which the Government may
have with respect to subject inventions.
(End of clause)
11. Remove and reserve 952.227-71.
PART 970--DOE MANAGEMENT AND OPERATING CONTRACTS
Subpart 970.27--Patents, Data, and Copyrights
12. The authority citation for Part 970 continues to read as
follows:
Authority: Sec. 161 of the Atomic Energy Act of 1954 (42 U.S.C.
2201), sec. 644 of the Department of Energy Organization Act, Pub.
L. 95-91 (42 U.S.C. 7254), sec. 201 of the Federal Civilian Employee
and Contractor Travel Expenses Act of 1985 (41 U.S.C. 420) and sec.
1534 of the Department of Defense Authorization Act, 1986, Pub. L.
99-145 (42 U.S.C. 7256a), as amended.
13. Revise section 970.2701 to read as follows:
970.2701 General.
This subpart applies to negotiation of patent rights and rights in
technical data provisions for the Department of Energy contracts for
the management and operation of its research and development and
production facilities.
14. Revise 970.2702 to read as follows:
970.2702 Patent rights.
(a) Whenever a contract has as a purpose, the design, construction,
or operation of a Government-owned research, development, demonstration
or production facility, it is necessary that the Government be accorded
certain rights with respect to further use of the facility by or on
behalf of the Government upon termination of the contract, including
the right to make, use, transfer, or otherwise dispose of all articles,
materials, products, or processes embodying inventions or discoveries
used or embodied in the facility regardless of whether or not conceived
or first actually reduced to practice under or in the course of such a
contract. Thus, both versions of the patent rights clause for managment
and operating contracts contain a facilities license.
(b) In the case of contractors operating and managing DOE research
and development or production facilities, that are not the
beneficiaries of Public Law 96-517, the Department is statutorily
obligated to take title to inventions conceived or first actually
reduced to practice in the performance of the contracts. Here, as in
all other circumstances, the contractors may request a waiver at the
time of contracting for a class of inventions or during contract
performance for identified inventions. DOE includes the considerations
at 927.300 in its determination as to whether to approve the request.
(c) While no contractor that manages and operates a DOE research
and development or production facility is a small business, several
have historically been nonprofit organizations. As such, they are the
beneficiaries of Bayh-Dole Act (35 U.S.C. 200 et seq., as amended) and,
therefore, receive the right to acquire title to inventions conceived
or first actually reduced to practice in the performance of their
contracts with the Department, except in areas of technology covered by
Exceptional Circumstances Determinations made by DOE or of nuclear
weapons and naval nuclear propulsion. In these latter two areas, the
contractor may request that the Department waive its title and,
therefore, subject to the exceptions identified below, receive the
right to acquire title to inventions conceived or first actually
reduced to practice in the performance of its contract with the
Department.
(d) DOE has exercised statutory authority granted under 35 U.S.C.
202(a)(ii) and 202(a)(iv). In accordance with 35 U.S.C. 202(a)(ii), DOE
has issued several Exceptional Circumstances Determinations pursuant to
which DOE nonprofit management and operating contractors have no right
to elect title to inventions within areas of technology described
therein, conceived or first actually reduced to practice in the course
of or under their contracts. However, those contractors may be given
some lesser property right in an invention within limits set by DOE in
a particular Exceptional Circumstances Determination so that the
contractor can effectively assist with a mission of DOE, such as
technology transfer. As new technologies evolve, DOE will issue
additional Exceptional Circumstances Determinations, as appropriate.
(e) In accordance with 35 U.S.C. 202(a)(iv), the Department of
Energy has exempted its weapons related and naval nuclear propulsion
programs from the broad Bayh-Dole right of its management and operating
contractors to elect title to inventions conceived or first actually
reduced to practice in the course of or under their contracts. The
effect of this exemption is that the contractors' right of election is
subject to a case-by-case determination by DOE that the contractor has
met all procedural requirements unilaterally set by DOE to insure that
all national security concerns of DOE relating to the contractor's use
of an invention in either of these two areas for commercialization have
been met.
15. Section 970.2703 is added to read as follows:
970.2703 Technology transfer.
The National Competitiveness Technology Transfer Act of 1989
(NCTTA) (Pub. L. 101-189) established technology transfer as a mission
for Government-owned, contractor-operated laboratories and authorizes
those laboratories to negotiate and award cooperative research and
development agreements with public and private entities for purposes of
conducting research and development and transferring technology beyond
the assignments made by this Department. In implementing the NCTTA, DOE
has negotiated technology transfer clauses with the contractors
managing and operating its laboratories. Those technology transfer
clauses must be read in concert with the patent rights clause required
by this subpart. Thus, each management and operating contractor holds
title to subject inventions for the benefit of the laboratory or
facility being managed and operated by that contractor.
16. Section 970.2704 is added to read as follows:
970.2704 Patent clauses.
(a) Contracting officers shall insert the clause at 970.5204-XX in
all management and operating contracts with nonprofit organizations.
(b) Contracting officers shall insert the clause at 970.5204-YY in
all management and operating contracts with profit-making entities.
17. Add section 970.2705, Rights in Technical Data--General, and
section 970.2706, Rights in Technical Data--Procedures, as follows:
970.2705 Rights in technical data--general.
(a) A management and operating contractor's obligations for
protection of information and data received from DOE and other
contractors or subcontractors, and for the contractor's private use of
contract data first produced in the performance of the contract, are
set forth in paragraph (b)(2) of each Rights in Technical Data clause
in 952.227. This subparagraph provides that the contractor may, subject
to patent, security, or other provisions of the contract, use for its
private purposes, contract data it first produces in the performance of
the contract, provided that the contractor has met its data
requirements (e.g., delivery of data in the form of progress or status
reports specified to be delivered) as of the date of private use of
such data. It is not necessary that a ``Final Report'' be submitted in
order to privately use data if all required progress and interim
reports and other technical data then due have been delivered.
Paragraph (b)(2) further provides that technical or other data received
by the contractor in the performance of the contract must be held in
confidence by the contractor in accordance with restrictions
accompanying the data.
(b) Contractors should be aware that technical information which is
reported to DOE by DOE contractors may be disseminated by DOE to
others, subject to the restrictions included in the ``Rights to
Technical Data'' clause.
(c) Employees of contractors operating DOE facilities may not be
used to assist in the preparation of a proposal or bid for the
performance of private commercial services similar or related to those
being performed under the DOE contract unless such employee has been
separated, with DOE approval, from performance of work under the DOE
contract for such period as the Head of the Contracting Activity or
designee shall direct consistent with the purpose of this section.
(d) Contractors operating DOE facilities and performing services as
a part of their contract work for other Government agencies or private
organizations should not be permitted to utilize information which is
furnished by such customers for their own private activities unless it
is generally available to others, or unless the customer authorizes
such use.
970.2706 Rights in technical data--procedures.
(a) General. It is essential that DOE maintain continuity in its
programs which are implemented by contracts for the operation of
Government-owned facilities. Contract data first produced or
specifically used in the performance of such contracts must be
considered as integral to and remaining with the facility or plant
after termination of such contracts and thus available to DOE and its
future contractors for the continued use of the facility or plant.
However, it is recognized that these contracts by their nature cannot
always be subject to one set of prescribed contract provisions which
will always apply. Accordingly, the Rights in Technical Data--Facility
clause set forth in 952.227-78 is to be used as a basic or minimal
clause which may be modified or expanded with the concurrence of patent
counsel to meet particular contract situations.
(b) Whenever a contract has as a purpose the operation of a
Government-owned research or production facility, the clause set forth
at 952.227-78 shall normally be included in the contract. Inasmuch as
this clause secures to the Government ownership, access to, and, if
requested, delivery of all technical data first produced in the
performance of the contract and access to and delivery of technical
data which are specifically used in the performance of the contract,
there is no need to include the Additional Technical Data Requirements
Clause of 952.227-73.
(c) Subcontracting. Unless otherwise directed by the contracting
officer, the contractor shall be required to follow the policy and
procedures of 927.402-1, 927.402-2, and 927.402-3 and shall employ the
provisions of the Additional Technical Data Requirements clause of
952.227-73 and the Rights in Technical Data (Long Form) clause of
952.227-75, where appropriate, except in subcontracts for the design of
special production plants or facilities or specially designed equipment
for facilities or plants, in which instances contractors shall include
the provisions of the Rights in Technical Data--Facility clause of
952.227-78.
(d) Optional clause--Limited rights in proprietary data. In
contracts where it is determined that delivery of proprietary data is
necessary with limited rights in the Government, the Rights in
Technical Data clause of this section shall be supplemented by the
additional paragraph (e), set forth in 952.227-79. Paragraph (e)
provides that technical data may be specified in the contract as being
excluded from the delivery requirements thereof. Alternatively,
paragraph (e) may be limited or made applicable to only those classes
of proprietary data determined as being necessary for delivery with
limited rights. In addition, when furnishing proprietary data with the
limited rights legend, paragraphs (a), (b) and (c) thereunder may be
modified as follows. When proprietary data is to be furnished only for
evaluation, paragraph (a) of the limited rights legend shall be used,
and paragraphs (b) and (c), if otherwise inapplicable, may be deleted.
When there is a programmatic requirement that proprietary data be
disclosed to other DOE contractors only for information or use in
connection with work performed under their contracts, paragraph (b) of
the limited rights legend shall be used, and paragraphs (a) and (c) may
be deleted if otherwise inapplicable. In either of the foregoing
examples, the contractor may, if it can show the possibility of a
conflict of interest because of disclosure of such data to certain
contractors or evaluators, exclude contractors or evaluators from
paragraph (a) or (b). If the data is required solely for emergency
repair or overhaul, paragraph (c) of the limited rights legend shall be
retained, and paragraphs (a) and (b) may, unless otherwise applicable,
be deleted. In the event that it is determined that all of the
paragraphs (a), (b) and (c) of the limited rights legend are to be
deleted, the word ``none'' shall be inserted in the legend after the
colon (:).
(e) For contracts involving access to certain categories of DOE-
owned restricted data, as set forth in 10 CFR part 725, see 927.402-
1(h).
18. Subsection 970.5204-XX is added to read as follows:
970.5204-XX Patent Rights--Nonprofit Management and Operating
Contractors
As prescribed at 970.2703, insert the clause at 952.227-11, Patent
Rights-Retention by the Contractor (Short Form) with the following
changes:
Patent Rights--Nonprofit Management and Operating Contractors (XXX
199X)
1. Replace paragraph (e)(1) with the following:
(e)(1) The contractor may request the right to reserve a
revocable, nonexclusive, royalty-free license throughout the world
in each subject invention to which the Government obtains title,
except if the contractor fails to disclose the invention within the
times specified in paragraph (c) of this clause. When DOE approves
such reservation, the contractor's license will extend to its
domestic subsidiary and affiliates, if any, within the corporate
structure of which the contractor is a party and includes the right
to grant sublicenses of the same scope to the extent the contractor
was legally obligated to do so at the time the contract was awarded.
The license is transferable only with the approval of DOE, except
when transferred to the successor of that part of the contractor's
business to which the invention pertains.
2. Add the following paragraphs (m) and (n):
(m) Transfer to successor contractor. (1) In the event of
termination or expiration of this contract, the contractor shall
transfer any unexpended balance of income received relating to
intellectual property, in accordance with instructions from the
contracting officer, to a successor contractor, or in the absence of
a successor contractor, to such other entity as designated by the
contracting officer. The contractor shall also transfer title, as
one package, in all patents and patent applications, license
agreements, accounts containing royalty revenues from such license
agreements, including equity positions in third-party entities, and
other intellectual property that arose under the performance of this
contract, to the successor contractor or to the Government, as
directed by the contracting officer.
(2) The Government agrees that the recipient of such title shall
assume any remaining obligations and liabilities in connection with
the patents and patent applications.
(n) Facilities license. In addition to the rights of the parties
with respect to inventions or discoveries conceived or first
actually reduced to practice in the course of or under this
contract, the contractor agrees to and does hereby grant to the
Government an irrevocable, nonexclusive, paid-up license in and to
any inventions or discoveries regardless of when conceived or
actually reduced to practice or acquired by the contractor at any
time through completion of this contract and which are incorporated
or embodied in the construction of the facility or which are
utilized in the operation of the facility or which cover articles,
materials, or products manufactured at the facility (1) to practice
or have practiced by or for the Government at the facility, and (2)
to transfer such license with the transfer of that facility. The
acceptance or exercise by the Government of these rights shall not
prevent the Government at any time from contesting the
enforceability, validity or scope of, or title to, any rights or
patents herein licensed.
19. Subsection 970.5204-YY is added to read as follows:
970.5204-YY Patent Rights--Profit-Making Management and Operating
Contractors
As prescribed at 970.2703, insert the clause at 952.227-13, Patent
Rights--Retention by the Government, with the following changes:
Patent Rights--Profit-Making Management and Operating Contractors (XXX
199X)
1. Add the following paragraphs (j) and (k):
(j) Transfer to successor contractor.
(1) In the event of termination or expiration of this contract,
the contractor shall transfer any unexpended balance of income
received relating to intellectual property, in accordance with
instructions from the contracting officer, to a successor
contractor, or in the absence of a successor contractor, to such
other entity as designated by the contracting officer. The
contractor shall also transfer title, as one package, in all patents
and patent applications, license agreements, accounts containing
royalty revenues from such license agreements, including equity
positions in third-party entities, and other intellectual property
that arose under the performance of this contract, to the successor
contractor or to the Government, as directed by the contracting
officer.
(2) The Government agrees that the recipient of such title shall
assume any remaining obligations and liabilities in connection with
the patents and patent applications.
(k) Facilities license.
In addition to the rights of the parties with respect to
inventions or discoveries conceived or first actually reduced to
practice in the course of or under this contract, the contractor
agrees to and does hereby grant to the Government an irrevocable,
nonexclusive, paid-up license in and to any inventions or
discoveries regardless of when conceived or actually reduced to
practice or acquired by the contractor at any time through
completion of this contract and which are incorporated or embodied
in the construction of the facility or which are utilized in the
operation of the facility or which cover articles, materials, or
products manufactured at the facility (1) to practice or have
practiced by or for the Government at the facility, and (2) to
transfer such license with the transfer of that facility. The
acceptance or exercise by the Government of these rights shall not
prevent the Government at any time from contesting the
enforceability, validity or scope of, or title to, any rights or
patents herein licensed.
[FR Doc. 94-7112 Filed 3-28-94; 8:45 am]
BILLING CODE 6450-01-P