[Code of Federal Regulations]
[Title 48, Volume 1]
[Revised as of October 1, 2002]
From the U.S. Government Printing Office via GPO Access
[CITE: 48CFR27.208]

[Page 496]
 
            TITLE 48--FEDERAL ACQUISITION REGULATIONS SYSTEM
 
                CHAPTER 1--FEDERAL ACQUISITION REGULATION
 
PART 27--PATENTS, DATA, AND COPYRIGHTS--Table of Contents
 
                          Subpart 27.2--Patents
 
Sec. 27.208  Use of patented technology under the North American Free Trade Agreement.

    (a) The requirements of this section apply to the use of technology 
covered by a valid patent when the patent holder is from a country that 
is a party to the North American Free Trade Agreement (NAFTA).
    (b) Article 1709(10) of NAFTA generally requires a user of 
technology covered by a valid patent to make a reasonable effort to 
obtain authorization prior to use of the patented technology. However, 
NAFTA provides that this requirement for authorization may be waived in 
situations of national emergency or other circumstances of extreme 
urgency, or public noncommercial use.
    (c) Section 6 of Executive Order 12889 of December 27, 1993, waives 
the requirement to obtain advance authorization for--
    (1) An invention used or manufactured by or for the Federal 
Government, except that the patent owner must be notified whenever the 
agency or its contractor, without making a patent search, knows or has 
demonstrable reasonable grounds to know that an invention described in 
and covered by a valid U.S. patent is or will be used or manufactured 
without a license; and
    (2) The existence of a national emergency or other circumstances of 
extreme urgency, except that the patent owner must be notified as soon 
as it is reasonably practicable to do so.
    (d) Section 6(c) of Executive Order 12889 provides that the notice 
to the patent owner does not constitute an admission of infringement of 
a valid privately owned patent.
    (e) When addressing issues regarding compensation for the use of 
patented technology, Government personnel should be advised that NAFTA 
uses the term ``adequate remuneration.'' Executive Order 12889 equates 
``remuneration'' to ``reasonable and entire compensation'' as used in 28 
U.S.C. 1498, the statute which gives jurisdiction to the U.S. Court of 
Federal Claims to hear patent and copyright cases involving infringement 
by the U.S. Government.
    (f) Depending on agency procedures, either the technical/requiring 
activity or the contracting officer shall ensure compliance with the 
notice requirements of NAFTA Article 1709(10). A contract award should 
not be suspended pending notification to the right holder.
    (g) When questions arise regarding the notice requirements or other 
matters relating to this section, the contracting officer should consult 
with legal counsel.

[61 FR 31648, June 20, 1996]