U.S. Department of
Energy
Small Business Innovation and Research Program
Small Business Technology Transfer Program
Terms and Conditions
Updated 8/09/04
GENERAL TERMS AND CONDITIONS FOR SBIR GRANTS
2. GRANTEE ADHERENCE TO GRANT TERMS AND CONDITIONS
3. DEFINITIONS
4. GRANTEE SUBMISSIONS INCLUDING PRIOR APPROVAL REQUESTS
5. ALLOWABLE COSTS/APPLICABLE COST PRINCIPLES
6. AUDITS
9. EXTENSIONS
10. MAXIMUM DEPARTMENTAL OBLIGATION
11. PROPERTY
12. PRINCIPAL INVESTIGATOR OR DESIGNATED KEY PERSONNEL
13. CHANGES IN OBJECTIVES OR SCOPE
14. TRANSFER OF SUBSTANTIVE PROGRAMMATIC EFFORT
15. RESEARCH EFFORT
16. FOREIGN TRAVEL
19. GENERALLY APPLICABLE REQUIREMENTS
21. PUBLIC ACCESS TO INFORMATION
23. NATIONAL SECURITY: CLASSIFIABLE RESULTS ORIGINATING UNDER AN AWARD
24. SUSPENSION AND TERMINATION
25. INTEREST
26. PATENT RIGHTS
27. RIGHTS IN DATA - SBIR/STTR PROGRAM
28. RIGHTS TO APPLICATION DATA
31. FEE
32. PAYMENT
GENERAL TERMS AND CONDITIONS APPLICABLE
TO PHASE I ONLY
GENERAL TERMS AND CONDITIONS APPLICABLE
TO PHASE II ONLY
1. REPORTING NON-FEDERAL SUPPORT
GENERAL TERMS AND CONDITIONS APPLICABLE
TO PHASE I AND PHASE II GRANTS
1.
EXPLANATION.
a. These general terms and conditions do not restate all the provisions
of applicable statutes and regulations, nor do they represent an exhaustive
listing of all requirements applicable to this grant.
Rather, they highlight and are consistent with those requirements which
are especially pertinent to research grants in general.
They are emphasized by inclusion here because: (1) they are invoked with
high frequency; (2) their violation is a matter of especially serious concern
(e.g., use of human subjects); (3) restating them in the research context will
allow them to be more easily understood by the research community.
b. In addition to these
general terms and conditions, the grantee must comply with all governing
requirements, including those identified in block 18 of DOE F 4600.1, “Notice
of Financial Assistance Award,” (NFAA) and those included in the “Special
Terms and Conditions” attached to this grant award.
2.
GRANTEE ADHERENCE TO GRANT TERMS AND CONDITIONS.
a. The grantee’s signature on the NFAA signifies the grantee’s agreement to all terms and conditions of the award. Should the grantee believe modification of any of the terms and conditions of this award is necessary, an authorized official of the grantee organization or, in the case of an individual, the grantee, must submit a written request on its own behalf or on behalf of any subgrant recipient or applicant for prior approval of the Contracting Officer named in block 21 of the NFAA.
b. Following this procedure
is very important because many of the terms and conditions of the grant are
required by statute and must be enforced by the Department of Energy.
3.
DEFINITIONS.
b. Grant Administrator.
This individual is named in block 12 of the NFAA.
c. Principal Investigator.
As used herein, the scientist or other programmatic expert named in block
8 of the NFAA, designated by the grantee organization to direct the
scientific/technical efforts being supported.
d. Prior Approval.
A written or electronically-transmitted statement from the Contracting Officer that a cost may be incurred or an
action may be taken. The approval
may take the form of a letter, e-mail message, or an amendment to the grant. If
actions or costs requiring prior approval are specified in the application and
are not expressly disapproved by DOE in the attached “Special Terms and
Conditions,” the award of the grant constitutes such prior approval.
e. Program Manager. The
DOE Headquarters line manager in charge of the SBIR/STTR program.
The Program Manager’s address is:
5.
ALLOWABLE COSTS/APPLICABLE COST PRINCIPLES.
b. The allowability of costs
for work performed under this grant and any subsequent subaward will be
determined in accordance with the Federal cost principles applicable to the
grantee or subrecipient in effect on
the date of award or the date of the subaward, except as modified by other
provisions of this grant or the subaward. The
grantee or subrecipient shall specify in any cost-reimbursement contract
under the grant or subaward the applicable cost principles cited in this
provision that apply to the contractor.
c. The Federal cost
principles applicable to specific types of grantees, subrecipients, and
contractors under grants and subawards are as follows:
(1) Institutions of Higher
Education. Office of Management
and Budget (OMB) Circular A-21, “Cost Principles For Educational
Institutions,” is applicable to both public and private colleges and
universities.
(2)
State and Local Governments and Indian Tribal Governments.
OMB Circular A-87, “Cost Principles for State and Local
Governments,” is applicable to State, local, and Indian tribal governments.
(3) Hospitals.
Title 45 CFR Part 74, Appendix E, “Principles for Determining Costs
Applicable to Research and Development under Grants and Contracts with
Hospitals, “applies to nonprofit and for-profit hospitals.
(4) Other Nonprofit
Organizations and Individuals. OMB
Circular A-122, “Cost Principles for Nonprofit Organizations,” applies
to nonprofit organizations and individuals, except for those specifically
exempted by the terms of the circular or those nonprofit organizations and
individuals covered by the cost principles cited elsewhere in this term.
(5) Commercial Firms and Certain Nonprofit Organizations. Title 48 CFR Subpart 31.2, “Contracts with Commercial Organizations,” as supplemented by 48 CFR Subpart 931.2, applies to those nonprofit organizations not covered by OMB Circular A-122, and to all commercial organizations.
6. AUDITS
Recipients that expend $500,000 or more in a year under Federal awards are subject to the audit requirements of 10 CFR 600.316, Audits, and are responsible for compliance with those requirements. An electronic version of 10 CFR 600 may be accessed at http://www.gpoaccess.gov/ecfr/. Once at the website, select "Title 10 - Energy" at the "Browse" dropdown menu, "500-699" under "Browse Parts", and "600" under "Subchapter H--Assistance Regulations".)
7.
PREAWARD COSTS.
Recipients may incur preaward costs up to ninety (90) days prior to the effective date of an award. Preaward costs for periods preceding 90 days prior to the effective date of the award are allowable only if approved in writing, prior to incurrence, by a DOE Contracting Officer. Any preaward expenditures (including those made after DOE approval) are made at the recipient’s risk and do not impose any obligation on the DOE.
8.
REPORTING REQUIREMENTS.
9. EXTENSIONS
10.
MAXIMUM DEPARTMENTAL OBLIGATION.
DOE's maximum obligation to the recipient is the amount shown in block
16.b.(3) of the NFAA. DOE shall not
be obligated to make any additional, supplemental, continuation, renewal or
other award for the same or any other purpose.
11.
PROPERTY.
a. Real and Tangible Personal Property.
(2)
Equipment and supplies acquired by the grantee with Federal funds:
Equipment
The
grantee shall be accountable for equipment under the grant with a unit
acquisition cost of $5,000 or more, in accordance with 10 CFR 600.320 – 10 CFR
600.323.
Supplies
Any
unused supplies that exceed an aggregate fair market value of $5,000 must be
accounted for during closeout of the award.
The grantee may retain these supplies under the following conditions:
- Supplies are needed for other Federally sponsored projects or programs.
-
The grantee shall compensate DOE for its share for those supplies that are sold
or used on non-Federally sponsored activities.
(3) Title to equipment
purchased under this award lies with the government.
It may be transferred to the grantee where such transfer would be more
cost effective than recovery of the property by the government.
(4) All grantees shall follow
property management policies and procedures that provide for adequate control of
the acquisition and use of the assets acquired under the grant.
12.
PRINCIPAL INVESTIGATOR OR DESIGNATED KEY
PERSONNEL.
13.
CHANGES IN OBJECTIVES OR SCOPE.
Any change in the objective or scope of a grant-supported project
requires the prior approval of DOE. This includes changes in the phenomenon or
phenomena under study and in the methodologies or experiments if they are a
specific objective of the research work as stated in the application approved by
DOE.
14.
TRANSFER OF SUBSTANTIVE PROGRAMMATIC EFFORT.
None of the substantive effort of the project may be transferred by
contract or subgrant to another organization or person without the prior
approval of DOE. This provision does not apply to the procurement of equipment,
supplies, materials, or general support services; these services may, however,
be subject to other prior approval requirements (e.g., those found in the
applicable cost principles or procurement standards).
15.
RESEARCH EFFORT.
For both SBIR and STTR, there are requirements on the amount of the
funded research or analytical effort that must be performed by the small
business. The funded research or
analytical effort is defined as the total requested funding minus the cost of
any purchased or leased equipment, materials, or supplies (whether purchased by
the grantee or a subcontractor). These
requirements are:
a.
SBIR:
(1)
Phase I: A minimum of
two-thirds of the funded research or
analytical effort must be performed
by the grantee; a maximum of one-third of the effort may be performed by
consultants or subcontractors.
(2)
Phase II: A minimum of
one-half of the research and analytical effort of Phase II must be performed
by the grantee; up to one-half of the research or analytical effort may be
performed by consultants or subcontractors.
b.
STTR:
(1)
Phase I: A minimum of
40% of the work must be performed by the small business and at least
30% of the work must be performed by the non-profit research institution
partner. Such institutions include
Federally funded research and development centers, universities, teaching
hospitals, and other non-profits. A
minimum of 40% of the funding, excluding any purchased or leased equipment,
materials, and supplies, must be allocated to the small business; a minimum of
30% of the funding, excluding any purchased or leased equipment, materials, and
supplies, must be allocated to the research institution.
(2)
Phase II: The same as
STTR Phase I.
16.
FOREIGN TRAVEL.
17.
CONSULTANT SERVICES.
Costs of consultant services are allowable in accordance with the
applicable cost principles. These
principles include the requirement that the consultant not be an employee of the
grantee organization; the one exception to this requirement applies to colleges
and universities.
18.
PAPERWORK REDUCTION.
a. The award is subject to
the requirements of the Paperwork Reduction Act of 1980 as implemented by the
Office of Management and Budget rules, “Controlling Paperwork Burdens on the
Public" published as 5 CFR 1320 (48 FR 13666, 3-31-83).
These requirements apply if the grantee will collect information from ten
or more respondents at the specific request of DOE, or if the award requires
specific DOE approval of the information collection or the collection
procedures.
b. The grantee shall submit
any proposed sponsored information collection under paragraph a. of this term to
the Contracting Officer named on the NFAA. The
proposal shall be submitted at least 120 days prior to the intended date of
information collection. DOE will
seek the requisite approval from the Office of Management and Budget and will
promptly notify the grantee of the disposition of the request.
19.
GENERALLY APPLICABLE REQUIREMENTS.
In accordance with 10 CFR 600.12, this grant is subject to a number of
statutory and other generally applicable requirements.
Those requirements most pertinent to research projects are highlighted
below:
a. Research Involving
Vertebrate Animals. Any recipient performing research on vertebrate animals
shall comply with the Laboratory Animal Welfare Act of 1966, as amended (7
U.S.C. 2131 et seq.), and the regulations promulgated thereunder by the
Secretary of Agriculture (9 CFR) pertaining to the care, handling, and treatment
of vertebrate animals held or used for research, teaching, or other activities
supported by Federal awards. The recipient is expected to ensure that the
guidelines described in Department of Health and Human Services (DHHS)
Publication No. (NIH) 85-23, “Guide for the Care and Use of Laboratory
Animals,” are followed and to comply with the U.S. Government Principles for
the Utilization and Care of Vertebrate Animals Used in Testing, Research and
Training (included as an Appendix to the NIH Guide).
b. Research Involving
Recombinant DNA Molecules. Any
grantee performing research involving recombinant DNA molecules and/or organisms
and viruses containing recombinant DNA molecules agrees by acceptance of this
grant to comply with the National Institutes of Health
“Guidelines for Research Involving Recombinant DNA Molecules,”
6-83 (48 FR 24556) or such later revision to those guidelines as may be
published in the Federal Register.
20.
NONDISCRIMINATION.
The grant is subject to the provisions of 10 CFR 1040, Nondiscrimination
in Federally Assisted Programs.
21.
PUBLIC ACCESS TO INFORMATION.
a.
The Freedom of Information Act, as amended, and the DOE implementing
regulations (10 CFR 1004), require DOE to release certain documents and records
regarding grants to any person who provides a written request.
The intended use of the information will not be a criterion for release.
These requirements apply to information held by DOE and do not require
grantees, their subgrantees, or their contractors to permit public access to
their records.
22.
ACKNOWLEDGMENT OF SUPPORT.
Publication of the results of the grant is encouraged subject to any
applicable restrictions in 10
CFR 600.325, Intellectual Property.
Any article published shall include an acknowledgment that the research
was supported, in whole or in part, by a DOE grant (with the grant number) and a
statement that such support does not constitute an endorsement by DOE of the
views expressed in the article.
23.
NATIONAL SECURITY: CLASSIFIABLE RESULTS ORIGINATING UNDER AN AWARD
a. The awardee
will not be granted access to classified information.
In addition, DOE does not expect that this research will generate
information that would require classification.
Under certain circumstances, however, a classification review of
information originated under the award may be required.
b. Executive Order 12958 (60
Fed. Reg. 19,825 (1995)) states that basic scientific research information not
clearly related to the national security may not be classified. Nevertheless,
some information concerning (among other things) scientific, technological, or
economic matters relating to national security or cryptology may require
classification. If an awardee
originates information during the course of this award that it believes requires
classification under this Executive Order, the awardee must promptly:
c. If the awardee originates
information concerning the production or utilization of special nuclear material
(i.e., plutonium, uranium enriched in the isotope 233 or 235, and any other
material so determined under section 151 of the Atomic Energy Act) or atomic
energy, the awardee must:
d. If DOE determines any of the information requires classification, the awardee agrees that the Government may terminate the award by mutual agreement in accordance with 10 CFR 600.25(d). If the award is terminated, all material deemed to be classified must be forwarded to the DOE, in a manner specified by DOE.
e. If DOE does not
respond within the specified time periods, the awardee is under no further
obligation to restrict access to the information.
24.
SUSPENSION AND TERMINATION.
a. Under the provisions of 10
CFR 600.25 and 600.351,
DOE may suspend or terminate the award, in whole or in part (1) when the grantee
has materially failed to comply with the terms and conditions of the award or
(2) for any reason by mutual agreement between DOE and the grantee upon the
request of either party.
d. Final allowable costs
under a termination settlement shall be in accordance with the terms of the
award, including this term, and the appropriate Federal cost principles.
In no event will the total of payments under a terminated award exceed
the amount obligated by DOE or the DOE pro rata share when cost-sharing
was required, whichever is less.
e. Within 90 days after the
termination of the grant, the grantee shall submit any final financial,
performance, and other reports required by the terms and conditions of the
award. (See 10 CFR 600.341)
f. A notice of termination
other than by mutual agreement may be subject to review according to the
provisions of 10 CFR 600.22, Disputes and appeals.
25.
INTEREST.
The requirements of this paragraph are not applicable when the
Contracting Officer affirmatively determines that its inclusion would not be in
the best interests of the Government.
a. Notwithstanding any other
term or condition of the grant, all amounts that become payable by the recipient
to the Government under the grant shall bear simple interest from the date due
until paid unless paid within 30 days of becoming due.
The interest rate shall be the interest rate established by the Secretary
of the Treasury (Secretary) as provided in Section 11 of the Debt Collection Act
of 1982 (31 U.S.C. 3717), 10 CFR 600.363,
which is applicable to the period in which the amount becomes due, as provided
in paragraph b. below, and then at the rate applicable for each 3-month
period as fixed by the Secretary until the amount is paid.
b. Amounts shall be due at
the earliest of the following dates:
(1) The date fixed under the grant.
(2) The date of the first written demand for payment consistent with the
grant, including any demand resulting from a termination.
(3) The date the Government transmits to the recipient a proposed
agreement to confirm completed negotiations establishing the amount of debt.
c. The interest charge made
under this provision may be reduced in accordance with the procedures prescribed
in 4 CFR 102.13 or in accordance with agency regulations in effect on the date
of original award of the grant.
26.
PATENT RIGHTS.
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 (U.S.C.) 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) “Subject Invention” means any invention of the grantee conceived
or first actually reduced to practice in the performance of work under this
grant, provided that in the case of a variety of plant the date of determination
(as defined in section 44(d) of the Plant Variety Protection Act, 7 U.S.C.
2401(d)) must also occur during the period of grant performance.
(3) “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 utilized and that its benefits
are, to the extent permitted by law or Government regulations, available to the
public on reasonable terms.
(4) “Made” when used in relation to any invention means the
conception or first actual reduction to practice of such invention.
(5) “Small Business Firm” means a small business concern as defined
in 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 standard 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) “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.
(7) “Patent Counsel” means the Department of Energy (DOE) Patent
Counsel assisting the DOE contracting activity.
b. Allocation of Principal
Rights.
(1) The grantee 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 grantee 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
(2) (Reserved)
c. Invention Disclosure,
Election of Title and Filing of Patent Application By Grantee.
(1) The grantee will disclose
each subject invention to the Patent Counsel within two months after the
inventor discloses it in writing to grantee personnel responsible for patent
matters. The disclosure to the
Patent Counsel shall be in the form of a written report and shall identify the
grant 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 has been accepted for publication at the
time of disclosure. In addition,
after disclosure to the Patent Counsel, the grantee will promptly notify the
Patent Counsel of the acceptance of any manuscript describing the invention for
publication or of any on sale or public use planned by the grantee.
(2) The grantee will elect in
writing whether or not to retain title to any such invention by notifying the
Patent Counsel within two years of disclosure to the Patent Counsel.
However, in any case where publication, on sale or public use has
initiated the one-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 Patent Counsel to a date that is no more than sixty days prior
to the end of the statutory period.
(3) The grantee will file its
initial patent application on a subject invention to which it elects to retain
title within one 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 grantee will file patent applications in additional countries or
international patent offices within either ten months of the corresponding
initial patent application or six 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 Secretary Order.
(4) Requests for extension of
the time for disclosure to the Patent Counsel, election, and filing, under
subparagraphs (1), (2), and (3) may, at the discretion of the Patent Counsel, be
granted.
d. Conditions When the
Government May Obtain Title.
The grantee will convey to the DOE, upon written request, title to any
subject invention:
(1) If the grantee fails to
disclose or elect title to the subject invention within the times specified in
c. above, or elects not to retain title; provided that the DOE may only request
title within 60 days after learning of the failure of the grantee to disclose or
elect within the specified times;
(2) In those countries in
which the grantee fails to file patent applications within the times specified
in c. above, provided, however, that if the grantee has filed a patent
application in a country after the time specified in c. above prior to its
receipt of the written request of the Patent Counsel, the grantee shall continue
to retain title in that country; or
(3) In any country in which the grantee decides not to continue the
prosecution of any application for, to pay the maintenance fees on, or defend in
a reexamination or opposition proceeding, a patent on a subject invention.
e. Minimum Rights to
Grantee and Protection of the Grantee Right to File.
(1) The grantee will retain a
nonexclusive, royalty‑free license throughout the world in each subject
invention to which the Government obtains title except if the grantee fails to
disclose the subject invention within the times specified in c. above. The
grantee’s license extends to its domestic subsidiaries and affiliates, if any,
within the corporate structure of which the grantee is a part and includes the
right to grant sublicenses of the same scope to the extent the grantee was
legally obligated to do so at the time the grant was awarded.
The license is transferable only with the approval of DOE except when
transferred to the successor of the part of the grantee’s business to which
the invention pertains.
(2) The grantee'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 at 37 CFR 404 and 10 CFR 781. This license will not be revoked in
that field of use or the geographical areas in which the grantee 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 grantee, 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 grantee a written notice of
its intention to revoke or modify the license, and the grantee will be allowed
thirty days (or such other time as may be authorized by DOE for good cause shown
by the grantee) after the notice to show cause why the license should not be
revoked or modified. The grantee has
the right to appeal, in accordance with 37 CFR 404 and 10 CFR Part 781, any
decision concerning the revocation or modification of its license.
(1) The grantee agrees to
execute or to have executed and promptly deliver to the Patent Counsel all
instruments necessary to:
(a) Establish or confirm the
rights the Government has throughout the world in those subject inventions to
which the grantee elects to retain title, and
(b) Convey title to DOE when
requested under d. above and to enable the Government to obtain patent
protection throughout the work in that subject invention.
(2) The grantee agrees to
require, by written agreement, its employees, other than clerical and
nonclerical employees, to disclose promptly in writing to personnel identified
as responsible for the administration of patent matters and in a format
suggested by the grantee each subject invention made under this grant in order
that the grantee can comply with the disclosure provisions of 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.
The disclosure format should require, as a minimum, the information
required by c.(1) above. The grantee
shall instruct such employees through the 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
(3) The grantee will notify
the Patent Counsel of any decision not to continue prosecution of a patent
application, pay maintenance fees, or defend in reexamination or opposition
proceeding on a patent, in any country, not less than thirty days before the
expiration of the response period required by the relevant patent office.
(4) The grantee agrees to
include, within the specification of any United States patent applications and
any patent issuing thereon covering a subject invention, the following statement
“This invention was made with Government support under (identify the grant)
awarded by the Department of Energy. The
Government has certain rights in this invention.”
(5) The grantee agrees to:
(a) Upon request, provide a report prior to the closeout of the grant
listing all subject inventions or stating that there were none;
(b) Provide, upon request, 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 grantee has applied for a patent; and
(c) Provide upon request, but not more than annually, listings of all
subject inventions which were disclosed to DOE during the applicable reporting
period.
g. Contracts and Subgrants under Grants.
(1) The grantee will include this clause, suitably modified to identify
the parties in all contracts and subgrants under grants regardless of tier for
experimental, developmental or research work to be performed by a small business
firm or a domestic nonprofit organization. The
lower tier recipient will retain all rights provided for the grantee in this
clause, and the grantee will not as part of the consideration for awarding the
contract or subgrant obtain rights in the lower tier recipient’s subject
inventions.
(2) The grantee will include in all other contracts or subgrants,
regardless of tier for experimental, developmental, demonstration, or research
work this patent rights clause as appropriate, modified to identify the parties.
(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 grantee 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 grantee 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 grantee, and such other
date and information as DOE may reasonably specify.
The grantee also agrees to provide additional reports as may be requested
by DOE in connection with any march-in-proceeding undertaken by DOE
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 grantee.
i. Preference for
Notwithstanding any other provision of this term, the grantee agrees that
neither it nor any assignee will grant to any person the exclusive right to use
or sell any subject inventions in the United States unless such person agrees
that any products 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 grantee 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.
(1) Such action is necessary because the grantee 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 grantee, 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 grantee, assignee, or licensee; or
(4) Such action is necessary because the agreement required by paragraph
I. of this term 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.
(1) Rights to a subject invention in the
(2) The grantee 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 grantee 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 grantee 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 grantee 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 grantee. However,
the grantee agrees that the Secretary of Commerce may review the grantee’s
licensing program and decisions regarding small business applicants, and the
grantee will negotiate changes to its licensing policies, procedures, or
practices with the Secretary of Commerce when the Secretary of Commerce’s
review discloses that the grantee could take reasonable steps to implement more
effectively the requirements of this paragraph k.(4).
a. Definitions.
“Computer software” as used in this term, means computer programs,
computer databases, and documentation thereof.
"Data" as used in this term, means recorded
information, regardless of form or the media on which it may be recorded.
The "Data" includes technical data and computer software.
The "Data" does not include information incidental to grant
administration, such as financial, administrative, cost or pricing or management
information.
“Form, fit and function data" as used in this term, means data
relating to items, components, or processes that are sufficient to enable
physical and functional interchangeability as well as data identifying source,
size, configuration, matching and attachment characteristics, functional
characteristics, and performance requirements except that for computer software
it means data identifying source, functional characteristics, and performance
requirements, but specifically excludes the source code, algorithm, process,
formulae, and flow charts of the software.
“Limited rights data” as used in this term, means data (other than
computer software) developed at private expense that embody trade secrets or are
commercial or financial and confidential or privileged.
“Restricted computer software” as used in this term, means computer
software developed at private expense and that is a trade secret; is commercial
or financial and confidential or privileged; or is published copyrighted
computer software; including modifications of such computer software.
“SBIR/STTR data” as used in this term, means data first produced by a
grantee that is a small business firm in performance of a small business
innovation research grant issued under the authority of 15 U.S.C. 631 (Pub. L.
102-564, Small Business Research and Development Enhancement Act of 1992), which
data are not generally known, and which data without obligation to its
confidentiality have not been made available to others by the grantee or are not
already available to the Government.
“SBIR/STTR rights” as used in this term, means the rights in
SBIR/STTR data set forth in the SBIR/STTR Rights Notice of paragraph d. of this
term.
“Technical data” as used in this term, means that data which are of a
scientific or technical nature.
“Unlimited rights” as used in this term, means the right of the
Government to use, disclose, reproduce, prepare derivative works, distribute
copies to the public, and perform publicly and display publicly, in any manner
and for any purpose whatsoever, and to have or permit others to do so.
b. Allocation of Rights.
(1) Except as provided in paragraph c. of this term regarding copyright,
the Government shall have unlimited rights in -
(a) Data specifically identified in this grant as data to be delivered
without restriction;
(b) Form, fit, and function data delivered under this grant;
(c) Data delivered under this grant (except for restricted computer
software) that constitute manuals or instructional and training material for
installation, operation, or routine maintenance and repair of items, components,
or processes delivered or furnished for use under this grant; and
(d) All other data delivered under this grant unless provided otherwise
for SBIR/STTR data in accordance with paragraph d. of this term or for limited
rights data or restricted computer software in accordance with paragraph g. of
this term.
(2) The grantee shall have the right to -
(a) Protect SBIR/STTR rights in SBIR/STTR data delivered under this grant
in the manner and to the extent provided in paragraph d. of this term.
(b) Withhold from delivery those data which are limited rights data or
restricted computer software to the extent provided in paragraph g. of this
term.
(c)
Substantiate use of, add, or correct SBIRSTTR rights of copyright notices and to
take other appropriate actions, in accordance with paragraph e. of this term;
and
(d) Establish claim to copyright subsisting in data first produced in the
performance of this grant to the extent provided in subparagraph c. (1) of this
term.
c. Copyrights.
(1)
Data first produced in the
performance of this grant. Except
as otherwise specifically provided in this grant, the grantee may establish
claim to copyright subsisting in any data first produced in the performance of
this grant. If claim to copyright is
made, the grantee shall affix the applicable copyright notice of 17 U.S.C. 401
and 402 and acknowledgment of Government sponsorship (including grant number) to
the data when such data are delivered to the Government, as well as when the
data are published or deposited for registration as published work in the U.S.
Copyright Office. For data other
than computer software the grantee grants to the Government, and others acting
on its behalf, a paid-up nonexclusive, irrevocable worldwide license to
reproduce, prepare derivative works, distribute copies to the public, and
perform publicly and display publicly, by or on behalf of the Government for all
such data. For computer software,
the grantee grants to the Government, and others acting on its behalf, a
paid-up nonexclusive, irrevocable worldwide license for all such computer
software to reproduce, prepare derivative works, and perform publicly and
display publicly, by or on behalf of the Government.
(2) Data not first produced in the performance of this grant.
The grantee shall not, without prior written permission of the
Contracting Officer, incorporate in data delivered under this grant; and that
contain the copyright notice of 17 U.S.C. 401 and 402, unless the grantee
identifies such data and grants to the Government, or acquires on its behalf, a
license of the same scope as set forth in subparagraph c. (1) of this term.
(3) Removal of copyright notices. The
Government agrees not to remove any copyright notices placed on data pursuant to
this paragraph c., and to include such notices on all reproductions of the data.
d. Rights to SBIR/STTR
Data.
(1) The grantee is authorized to affix the following
SBIR/STTR Rights Notice to SBIR/STTR data delivered under this grant and
the Government will thereafter treat the data, subject to the provisions of
paragraphs e. and f. of this term, in accordance with such Notice:
SBIR/STTR
RIGHTS NOTICE
These
SBIR/STTR data are furnished with SBIR/STTR rights under Grant No.___________
(and subcontract ______________ if
appropriate). For a period of 4
years after acceptance of all items to be delivered under this grant, the
Government agrees to use these data for Government purposes only, and they shall
not be disclosed outside the Government (including disclosure for procurement
purposes) during such period without permission of the grantee, except that,
subject to the foregoing use and disclosure prohibitions, such data may be
disclosed for use by support contractors. After
the aforesaid 4‑year period the Government has a royalty-free
license to use, and to authorize others to use on its behalf, these data for
Government purposes, but is relieved of all disclosure prohibitions and assumes
no liability for unauthorized use of these data by third parties.
This Notice shall be affixed to any reproductions of these data in whole
or in part.
(End of Notice)
(2)
The Government’s sole obligation with respect to any SBIR/STTR data shall be
as set forth in this paragraph d.
e. Omitted or Incorrect
Markings.
(1) Data delivered to the Government without any notice authorized by
paragraph d. of this term, and without a copyright notice, shall be deemed to
have been furnished with unlimited rights, and the Government assumes no
liability for the disclosure, use, or reproduction of such data.
However, to the extent the data have not been disclosed without
restriction outside the Government, the grantee may request within six months
(or a longer time approved by the Contracting Officer for good cause shown)
after delivery of such data, permission to have notices placed on qualifying
data at the grantee’s expense, and the Contracting Officer may agree to do so
if the grantee –
(a) Identifies the data to which the omitted notice is to be applied;
(b) Demonstrates that the omission of the notice was inadvertent;
(c) establishes that the use of the proposed notice is authorized; and
(d)
Acknowledges that the Government has no liability with respect to the disclosure
or use of any such data made prior to the addition of the notice or resulting
from the omission of the notice.
(2) The Contracting Officer may also (a) permit correction, at the
grantee's expense, of incorrect notices if the grantee identifies the data on
which correction of the notice is to be made and demonstrates that the correct
notice is authorized, or (b) correct any incorrect notices.
28.
RIGHTS TO APPLICATION DATA.
Except for data contained on pages ____________________, it is agreed
that as a condition of award of this grant, and notwithstanding the conditions
of any notice appearing thereon, the Government shall have unlimited rights (as
defined in the “Rights in Data – SBIR/STTR Program” term contained in this
grant) in and to the technical data contained in the application dated
_____________, upon which this grant is based.
29.
OTHER RESEARCH SUPPORT.
a. The recipient represents
that it has disclosed to the Contracting Officer any applications made or
contemplated at the time of award of this grant to be made by it to any public
or private entity for performance of the same or similar work.
b. The recipient agrees to
inform the Contracting Officer of any application submitted to any public or
private entity for the same or essentially the same project throughout the
period of performance of this award.
c. The recipient further
agrees that it has not accepted and will not be a party to any contractual
arrangement for the duration of this project for the same or essentially the
same work as contemplated by this award.
d. Failure of the recipient
to adhere to paragraphs a., b., and c. above shall constitute a basis for a
determination of noncompliance under 10 CFR 600.24.
If the recipient will not complete the project or complete the project
within the established time frame, the Contracting Officer should be notified as
soon as that circumstance becomes apparent.
31.
FEE.
SBIR/STTR recipients may be paid a fee or profit.
32.
PAYMENT
GENERAL TERMS AND CONDITIONS APPLICABLE
TO PHASE I ONLY
1.
FIXED OBLIGATION.
a. Awards will be made on a
"fixed obligation" basis in accordance with 10 CFR 600.381(b).
b.
The Contracting Officer may approve lump-sum payments in circumstances
deemed appropriate by DOE.
If a lump-sum payment is made, such payment is subject to the
condition that the recipient will return
to the DOE amounts remaining unexpended at the end of the project if those
amounts exceed $500 in accordance
with 10 CFR 600.381(b)5.
2.
PREAWARD COSTS.
Preaward expenditure approval as stated in the term entitled, “Preaward
Costs” of these General Terms and Conditions, is not required for Phase I
awards.
GENERAL TERMS AND CONDITIONS APPLICABLE
TO PHASE II ONLY
1.
REPORTING NON-FEDERAL SUPPORT.
The recipient agrees to provide the SBIR Program Manager an annual report
during Phase II and for five years after completion of this project detailing
the sources and amounts of non-Federal funding used to continue support or
commercialization of the research funded under this award.