§ 600.27
Patent and data provisions.
(a) General. Financial assistance shall be awarded and administered by DOE in compliance with the patent and data provisions of this section (See also §§ 600.136 and 600.234.) To the extent not otherwise provided in this part, the policies, procedures and clauses referenced for contracts in 48 CFR part 927 and 41 CFR part 9-9 shall normally be applicable to the award and administration of Departmental grants and cooperative agreements. Copies of 41 CFR part 9-9 are available by contacting the DOE Patent Counsel.
(b) Required clauses. In all solicitations and awards both for the support of research, development, and demonstration and for other efforts, the DOE Contracting Officer shall consult the DOE Patent Counsel for applicable patent and data clauses from those listed below and/or for modifications thereto. In reading each 48 CFR part 27 and 48 CFR part 952 patent and data clause selected for inclusion in a solicitation or award, the term “contract” when referring to a prime contract shall be read as “award.” The term “contractor” shall be read as referring to the “awardee.” The term “subcontract” shall be read as “subaward or a procurement contract under an award or subaward and/or a procurement subcontract under an awardee's or subawardee's contract.” The term “Acquisition” with respect to the Long Form Patent Rights Clause shall be read as “Retention.” The terms “offerors” and “quoters” shall be read as “applicants,” and “proposal” and “quotation” shall be read as “application.”
(1) Patent clauses—(i) (Short Form Patent Clause). Incorporate the clause at 48 CFR 952.227-11 for awards to a domestic small business firm or nonprofit organization as defined at 48 CFR 27.301. In accordance with 35 U.S.C. 202(a)(ii), the DOE may issue an exceptional circumstances determination. To implement any exceptional circumstances determination, DOE will modify 48 CFR 952.227-11 to retain greater rights in subject inventions. Such modifications will be only to the extent necessary to implement the exceptional circumstances determination.
(ii) (Long Form Patent Clause). For awards to a large business firm or other organization, other than a domestic small business firm or nonprofit organization as set forth in 48 CFR 27.301, incorporate the clause at 48 CFR 952.227-13.
(iii) The notice of Right to Request Patent Waiver at 48 CFR 952.227-84 shall also be inserted in all solicitations to advise applicants of their rights to request in advance of, or within 30 days after the award is signed, a waiver of all or any part of the rights of the United States with respect to subject inventions. For unsolicited applications, DOE shall provide this notice to the applicant prior to award.
(2) Data clauses (includes copyright provisions)—(i) Rights in data—General. (A) Incorporate 48 CFR 52.227-14 with its Alternate V and with the definitional paragraph (a) and paragraph (d)(3) of 48 CFR 927.409(a)(1). Solicitations shall also include the Representation of Limited Rights Data and Restricted Computer Software provision at 48 CFR 52.227-15. Contracting officers shall treat rights in data matters in accordance with 48 CFR 927.4.
(B) In awards for grants and cooperative agreements with institutions of higher education, hospitals, and other non-profit organizations, the clause referred to in paragraph (b)(2)(i)(A) of this section shall be revised by deleting paragraph (d)(3) and inserting the following paragraph (c) in lieu of paragraph (c) of that clause:
(c) Copyright. (1) Data first produced in the performance of the award. Except as otherwise specifically provided in this award, the recipient may establish claim to copyright subsisting in any data first produced in the performance of this award. When claim to copyright is made, the Recipient shall affix the applicable copyright notice of 17 U.S.C. 401 or 402 and acknowledgement of Government sponsorship (including award 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 a published work in the U.S. Copyright Office. The recipient grants to the Government a royalty-free, nonexclusive and irrevocable right to reproduce, publish, or otherwise use the work for Federal purposes, and to authorize others to do so. The right to publish includes the right to publicly distribute. The right to use the work for Federal purposes includes the right to prepare derivative works.
(C) If programmatic needs on a particular award require the delivery to the Government of limited rights data or restricted computer software, Alternates II or III of 48 CFR 52.227-14 shall also be added.
(ii) Restriction on disclosure and use of data. Insert the Notice at § 600.15(b)(1) in all solicitations.
(iii) Rights to application data. As discussed at § 600.15(b)(5), incorporate 48 CFR 52.227-23.
(iv) Additional data requirements. Incorporate 48 CFR 52.227-16. In the event all technical data requirements are known in advance of and are set forth in the agreement or, the award is for the performance of basic or applied research and is to be performed solely by a university or college as discussed in 48 CFR 27.406(b), 48 CFR 52.227-16 does not need to be incorporated.
(3) Authorization and consent. Incorporate 48 CFR 52.227-1 or Alternates I or II, as appropriate, in accordance with the guidance in 48 CFR 927.201-1 and 48 CFR 27.201.
(4) Patent indemnity. Incorporate the clause set forth in 48 CFR 52.227-3, as appropriate, in accordance with the guidance in 48 CFR 27.203-1 and 48 CFR 27.203-3.
(5) Filing of patent applications—Classified subject matter. Incorporate the following paragraphs in any solicitation or award which covers, or is likely to cover, classified subject matter:
Classified Inventions
(a) The recipient shall not file or cause to be filed on any invention or discovery conceived or first actually reduced to practice in the course of or under this award in any country other than the United States, an application or registration for a patent without first obtaining written approval of the Contracting Officer.
(b) When filing a patent application in the United States on any invention or discovery conceived of or first actually reduced to practice in the course of or under this award, the subject matter of which is classified for reasons of security, the awardee shall observe all applicable security regulations covering the transmission of classified subject matter. When transmitting the patent application to the United States Patent and Trademark Office, the awardee shall, by separate letter, identify by agency and agreement number the award(s) which require security classification markings to be placed on the application.
(6) Notice and assistance regarding patent and copyright infringement. Incorporate the clause at 48 CFR 52.227-2, in accordance with the guidance in 48 CFR 27.202, in all awards in excess of $100,000 for construction, research, development, and demonstration work which is to be performed within the United States, its possessions, or Puerto Rico.
(7) Royalty information. Incorporate 48 CFR 52.227-6.
(8) Refund of royalties. As discussed in 48 CFR 927.206, incorporate the clause at 48 CFR 952.227-9 in solicitations and awards where the Contracting Officer believes royalties will have to be paid by the awardees or subawardee or contractor at any tier.
(9) Subawards and contracts under award. The recipient shall include the applicable clauses of this section in any subaward or contract awarded under the award and assure that the applicable clauses are also included by subrecipients in contracts.
[61 FR 7166, Feb. 26, 1996, as amended at 63 FR 10503, Mar. 4, 1998; 64 FR 4029, Jan. 27, 1999]