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 United
States the subject invention
throughout the world.
(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 United States Industry.
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
United States may not be assigned without the approval of DOE, 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 grantee.
(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).