Appendix A to Subpart D of Part 600 - Patent and Data Provisions
10:4.0.1.3.9.4.25.37.4 : Appendix A
Appendix A to Subpart D of Part 600 - Patent and Data Provisions 1.
Patent Rights (Small Business Firms and Nonprofit Organizations) 2.
Patent Rights (Large Business Firms) - No Waiver 3. Rights in Data
- General 4. Rights in Data - Programs Covered Under Special
Protected Data Statutes Patent Rights (Small Business Firms and
Nonprofit Organizations) (a) Definitions
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.).
Made when used in relation to any invention means the
conception or first actual reduction to practice of such
invention.
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.
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.
Small business firm means a small business concern as
defined at section 2 of Public Law 85-536 (16 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 through 121.8 and 13 CFR 121.3
through 121.12, respectively, will be used.
Subject invention means any invention of the Recipient
conceived or first actually reduced to practice in the performance
of work under this award, 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 award performance.
(b) Allocation of Principal Rights
The Recipient may retain the entire right, title, and interest
throughout the world to each subject invention subject to the
provisions of this Patent Rights clause and 35 U.S.C. 203. With
respect to any subject invention in which the Recipient retains
title, the Federal Government shall have a non-exclusive,
nontransferable, irrevocable, paid-up license to practice or have
practiced for or on behalf of the U.S. the subject invention
throughout the world.
(c) Invention Disclosure, Election of Title and Filing of Patent
Applications by Recipient
(1) The Recipient will disclose each subject invention to DOE
within two months after the inventor discloses it in writing to
Recipient personnel responsible for the administration of patent
matters. The disclosure to DOE shall be in the form of a written
report and shall identify the award 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 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 DOE, the Recipient will promptly notify DOE of the
acceptance of any manuscript describing the invention for
publication or of any on sale or public use planned by the
Recipient.
(2) The Recipient will elect in writing whether or not to retain
title to any such invention by notifying DOE within two years of
disclosure to DOE. 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 U.S., the
period for election of title may be shortened by the agency to a
date that is no more than 60 days prior to the end of the statutory
period.
(3) The Recipient will file its initial patent application on an
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 U.S.
after a publication, on sale, or public use. The Recipient 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 when
permission is granted by the Commissioner of Patents and Trademarks
to file foreign patent applications when such filing has been
prohibited by a Secrecy Order.
(4) Requests for extension of the time for disclosure to DOE,
election, and filing under subparagraphs (c)(1), (2), and (3) of
this clause may, at the discretion of DOE, be granted.
(d) Conditions When the Government May Obtain Title
The Recipient will convey to DOE, upon written request, title to
any subject invention:
(1) If the Recipient fails to disclose or elect the subject
invention within the times specified in paragraph (c) of this
patent rights clause, or elects not to retain title; provided that
DOE may only request title within 60 days after learning of the
failure of the Recipient to disclose or elect within the specified
times;
(2) In those countries in which the Recipient fails to file
patent applications within the times specified in paragraph (c) of
this Patent Rights clause; provided, however, that if the Recipient
has filed a patent application in a country after the times
specified in paragraph (c) of this Patent Rights clause, but prior
to its receipt of the written request of DOE, the Recipient shall
continue to retain title in that country; or
(3) In any country in which the Recipient decides not to
continue the prosecution of any application for, to pay the
maintenance fees on, or defend in a reexamination or opposition
proceeding on, a patent on a subject invention.
(e) Minimum Rights to Recipient and Protection of the Recipient
Right To File
(1) The Recipient will retain a non-exclusive royalty-free
license throughout the world in each subject invention to which the
Government obtains title, except if the Recipient fails to disclose
the subject invention within the times specified in paragraph (c)
of this Patent Rights clause. The Recipient's license extends to
its domestic subsidiaries and affiliates, if any, within the
corporate structure of which the Recipient is a party and includes
the right to grant sublicenses of the same scope of the extent the
Recipient was legally obligated to do so at the time the award was
awarded. The license is transferable only with the approval of DOE
except when transferred to the successor of that part of the
Recipient's business to which the invention pertains.
(2) The Recipient'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 part 404 and the agency's licensing
regulation, if any. This license will not be revoked in that field
of use or the geographical areas in which the Recipient 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 discretion of
the funding Federal agency to the extent the Recipient, 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, the
funding Federal agency will furnish the Recipient a written notice
of its intention to revoke or modify the license, and the Recipient
will be allowed thirty days (or such other time as may be
authorized by DOE for good cause shown by the Recipient) after the
notice to show cause why the license should not be revoked or
modified. The Recipient has the right to appeal, in accordance with
applicable regulations in 37 CFR part 404 and the agency's
licensing regulations, if any, concerning the licensing of
Government-owned inventions, any decision concerning the revocation
or modification of its license.
(f) Recipient Action To Protect Government's Interest
(1) The Recipient 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 for which the
Recipient retains title; and
(ii) Convey title to DOE when requested under paragraph (d) of
this Patent Rights clause, and to enable the government to obtain
patent protection throughout the world in that subject
invention.
(2) The Recipient agrees to require, by written agreement, its
employees, other than clerical and non-technical employees, to
disclose promptly in writing to personnel identified as responsible
for the administration of patent matters and in a format suggested
by the Recipient each subject invention made under this award in
order that the Recipient can comply with the disclosure provisions
of paragraph (c) of this Patent Rights 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.
The disclosure format should require, as a minimum, the information
requested by paragraph (c)(1) of this Patent Rights clause. The
Recipient 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 U.S. or foreign statutory bars.
(3) The Recipient will notify DOE of any decision not to
continue 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 Recipient agrees to include, within the specification of
any U.S. patent application and any patent issuing thereon covering
a subject invention, the following statement: “This invention was
made with Government support under (identify the award) awarded by
(identify DOE). The Government has certain rights in this
invention.”
(g) Subaward/Contract
(1) The Recipient will include this Patent Rights clause,
suitably modified to identify the parties, in all
subawards/contracts, regardless of tier, for experimental,
developmental or research work to be performed by a small business
firm or nonprofit organization. The subrecipient/contractor will
retain all rights provided for the Recipient in this Patent Rights
clause, and the Recipient will not, as part of the consideration
for awarding the subcontract, obtain rights in the subcontractors'
subject inventions.
(2) The Recipient will include in all other subawards/contracts,
regardless of tier, for experimental, developmental or research
work, the patent rights clause required by 10 CFR 600.325(c).
(3) In the case of subawards/contracts at any tier, DOE, the
Recipient, and the subrecipient/contractor agree that the mutual
obligations of the parties created by this clause constitute a
contract between the subrecipient/contractor and DOE with respect
to those matters covered by the clause.
(h) Reporting on Utilization of Subject Inventions
The Recipient 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 Recipient 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 Recipient and such other data and information as
DOE may reasonably specify. The Recipient also agrees to provide
additional reports in connection with any march-in proceeding
undertaken by DOE in accordance with paragraph (j) of this Patent
Rights 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 the permission of the Recipient.
(i) Preference for United States Industry.
Notwithstanding any other provision of this Patent Rights
clause, the Recipient agrees that neither it nor any assignee will
grant to any person the exclusive right to use or sell any subject
invention in the U.S. 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 U.S.
However, in individual cases, the requirement for such an agreement
may be waived by DOE upon a showing by the Recipient 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 U.S. or that under
the circumstances domestic manufacture is not commercially
feasible.
(j) March-in-Rights
The Recipient agrees that with respect to any subject invention
in which it has acquired title, DOE has the right in accordance
with procedures at 37 CFR 401.6 and any supplemental regulations of
the Agency to require the Recipient, an assignee or exclusive
licensee of a subject invention to grant a non-exclusive, 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 Recipient, 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 Recipient 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 Recipient, 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 Recipient, assignee, or licensee;
or
(4) Such action is necessary because the agreement required by
paragraph (i) of this Patent Rights clause has not been obtained or
waived or because a licensee of the exclusive right to use or sell
any subject invention in the U.S. is in breach of such
agreement.
(k) Special Provisions for Awards With Nonprofit Organizations
If the Recipient is a nonprofit organization, it agrees
that:
(1) Rights to a subject invention in the U.S. 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 Recipient;
(2) The Recipient 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
Recipient 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 or engineering 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 preference to a small
business firm if the Recipient determines that the small business
firm has a plan or proposal for marketing the invention which, if
executed, is equally likely to bring the invention to practical
application as any plans or proposals from applicants that are not
small business firms; provided that the Recipient 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
Recipient. However, the Recipient agrees that the Secretary of
Commerce may review the Recipient's licensing program and decisions
regarding small business applicants, and the Recipient will
negotiate changes to its licensing policies, procedures or
practices with the Secretary when the Secretary's review discloses
that the Recipient could take reasonable steps to implement more
effectively the requirements of this paragraph (k)(4).
(l) Communications
All communications required by this Patent Rights clause should
be sent to the DOE Patent Counsel address listed in the Award
Document.
(m) Electronic Filing
Unless otherwise Specified in the award, the information
identified in paragraphs (f)(2) and (f)(3) may be electronically
filed.
(End of clause) Patent Rights (Large Business Firms) - No Waiver
(a) Definitions
DOE patent waiver regulations, as used in this clause,
means the Department of Energy patent waiver regulations in effect
on the date of award. See 10 CFR part 784.
Invention, as used in this clause, means any invention or
discovery which is or may be patentable of 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.).
Patent Counsel, as used in this clause, means the
Department of Energy Patent Counsel assisting the awarding
activity.
Subject invention, as used in this clause, means any
invention of the Recipient conceived or first actually reduced to
practice in the course of or under this agreement.
(b) Allocations of Principal Rights
(1) Assignment to the Government. The Recipient 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 Recipient under subparagraph (b)(2)
and paragraph (d) of this clause.
(2) Greater rights determinations. The Recipient, or an
employee-inventor after consultation with the Recipient, may
request greater rights than the nonexclusive license and the
foreign patent rights provided in paragraph (d) of this clause on
identified inventions in accordance with the DOE patent waiver
regulation. Each determination of greater rights under this
agreement shall be subject to paragraph (c) of this clause, unless
otherwise provided in the greater rights determination, and to the
reservations and conditions deemed to be appropriate by the
Secretary of Energy or designee.
(c) Minimum Rights Acquired by the Government
With respect to each subject invention to which the Department
of Energy grants the Recipient principal or exclusive rights, the
Recipient agrees to grant 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); “march-in rights” as set forth in 37 CFR
401.14(a)(J)); preference for U.S. industry as set forth in 37 CFR
401.14(a)(I); periodic reports upon request, no more frequently
than annually, on the utilization or intent of utilization of a
subject invention in a manner consistent with 35 U.S.C. 202(c)(50;
and such Government rights in any instrument transferring rights in
a subject invention.
(d) Minimum Rights to the Recipient
(1) The Recipient 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 Recipient fails to
disclose the subject invention within the times specified in
subparagraph (e)(2) of this clause. The Recipient's license extends
to its domestic subsidiaries and affiliates, if any, within the
corporate structure of which the Recipient is a part and includes
the right to grant sublicenses of the same scope to the extent the
Recipient was legally obligated to do so at the time the agreement
was awarded. The license is transferable only with the approval of
DOE except when transferred to the successor of that part of the
Recipient's business to which the invention pertains.
(2) The Recipient may request the right to acquire patent rights
to a subject invention in any foreign country where the Government
has elected not to secure such rights, subject to the minimum
rights acquired by the Government similar to paragraph (c) of this
clause. Such request must be made in writhing to the Patent Counsel
as part of the disclosure required by subparagraph (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.
(e) Invention Identification, Disclosures, and Reports
(1) The Recipient shall establish and maintain active and
effective procedures to assure that subject inventions are promptly
identified and disclosed to Recipient 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 agreement. 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 Recipient shall furnish the Contracting Officer a
description of such procedures for evaluation and for determination
as to their effectiveness.
(2) The Recipient shall disclose each subject invention to the
DOE Patent Counsel with a copy to the Contracting Officer within 2
months after the inventor discloses it in writing to Recipient
personnel responsible for patent matters or, if earlier, within 6
months after the Recipient 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 Recipient. The
disclosure to DOE shall be in the form of a written report and
shall identify the agreement 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 Recipient
shall promptly notify Patent Counsel of the acceptance of any
manuscript describing the invention for publication or of any on
sale or public use planned by the Recipient. The report should also
include any request for a greater rights determination in
accordance with subparagraph (b)(2) of this clause. When an
invention is disclosed to DOE under this paragraph, it shall be
deemed to have been made in the manner specified in Sections (a)(1)
and (a)(2) of 42 U.S.C. 5908, unless the Recipient contends in
writing at the time the invention is disclosed that it was not so
made.
(3) The Recipient shall furnish the Contracting Officer a final
report, within 3 months after completion of the work listing all
subject inventions or containing a statement that there were no
such inventions, and listing all subawards/contracts at any tier
containing a patent rights clause or containing a statement that
there were no such subawards/contracts.
(4) The Recipient 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 Recipient each subject invention made under
subaward/contract in order that the Recipient 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 (e)(2) of this clause.
(5) The Recipient agrees, subject to FAR 27.302(j), 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 agreement, have
the right to examine any books (including laboratory notebooks),
records, and documents of the Recipient relating to the conception
or first actual reduction to practice of inventions in the same
field of technology as the work under this agreement to determine
whether -
(i) Any such inventions are subject inventions;
(ii) The Recipient has established and maintains the procedures
required by subparagraphs (e)(1) and (4) of this clause;
(iii) The Recipient and its inventors have complied with the
procedures.
(2) If the Contracting Officer learns of an unreported Recipient
invention which the Contracting Officer believes may be a subject
invention, the Recipient 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) Subaward/Contract
(1) The recipient shall include the clause PATENT RIGHTS (SMALL
BUSINESS FIRMS AND NONPROFIT ORGANIZATIONS) (suitably modified to
identify the parties) in all subawards/contracts, 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 subaward/contract is
subject to an Exceptional Circumstances Determination by DOE. In
all other subawards/contracts, regardless of tier, for
experimental, developmental, demonstration, or research work, the
Recipient shall include this clause (suitably modified to identify
the parties), or an alternate clause as directed by the contracting
officer. The Recipient shall not, as part of the consideration for
awarding the subaward/contract, obtain rights in the
subrecipient's/contractor's subject inventions.
(2) In the event of a refusal by a prospective
subrecipient/contractor to accept such a clause the Recipient:
(i) Shall promptly submit a written notice to the Contracting
Officer setting forth the subrecipient/contractor's reasons for
such refusal and other pertinent information that may expedite
disposition of the matter; and
(ii) Shall not proceed with such subaward/contract without the
written authorization of the Contracting Officer.
(3) In the case of subawards/contracts at any tier, DOE, the
subrecipient/contractor, and Recipient agree that the mutual
obligations of the parties created by this clause constitute a
contract between the subrecipient/contractor and DOE with respect
to those matters covered by this clause.
(4) The Recipient shall promptly notify the Contracting Officer
in writing upon the award of any subaward/contract at any tier
containing a patent rights clause by identifying the
subrecipient/contractor, the applicable patent rights clause, the
work to be performed under the subaward/contract, and the dates of
award and estimated completion. Upon request of the Contracting
Officer, the Recipient shall furnish a copy of such
subaward/contract, and, no more frequently than annually, a listing
of the subawards/contracts that have been awarded.
(5) The Recipient shall identify all subject inventions of a
subrecipient/contractor of which it acquires knowledge in the
performance of this agreement and shall notify the Patent Counsel,
with a copy to the contracting officer, promptly upon
identification of the inventions.
(h) 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 agreement.
(2) Except as otherwise authorized in writing by the Contracting
Officer, the Recipient will obtain patent agreements to effectuate
the provisions of subparagraph (h)(1) of this clause from all
persons who perform any part of the work under this agreement,
except nontechnical personnel, such as clerical employees and
manual laborers.
(i) Publication
It is recognized that during the course of the work under this
agreement, the Recipient 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 agreement. In order that
public disclosure of such information will not adversely affect the
patent interests of DOE or the Recipient, patent approval for
release of publication shall be secured from Patent Counsel prior
to any such release or publication.
(j) Forfeiture of Rights in Unreported Subject Inventions
(1) The Recipient 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 Recipient fails to report to Patent
Counsel within six months after the time the Recipient:
(i) Files or causes to be filed a United States or foreign
patent application thereon; or
(ii) Submits the final report required by subparagraph (e)(3) of
this clause, whichever is later.
(2) However, the Recipient shall not forfeit rights in a subject
invention if, within the time specified in subparagraph (e)(2) of
this clause, the Recipient:
(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 agreement and
delivers the decision to Patent Counsel, with a copy to the
Contracting Officer, or
(ii) Contending that the invention is not a subject invention,
the Recipient nevertheless discloses the invention and all facts
pertinent to this contention to the Patent Counsel, with a copy of
the Contracting Officer; or
(iii) Establishes that the failure to disclose did not result
from the Recipient's fault or negligence.
(3) Pending written assignment of the patent application and
patents on a subject invention determined by the Secretary of
Energy or designee to be forfeited (such determination to be a
final decision under the Disputes clause of this agreement), the
Recipient 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 (j) 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) Rights in Data - General (a) Definitions
Computer Data Bases, as used in this clause, means a
collection of data in a form capable of, and for the purpose of,
being stored in, processed, and operated on by a computer. The term
does not include computer software.
Computer software, as used in this clause, means (i)
computer programs which are data comprising a series of
instructions, rules, routines or statements, regardless of the
media in which recorded, that allow or cause a computer to perform
a specific operation or series of operations and (ii) data
comprising source code listings, design details, algorithms,
processes, flow charts, formulae, and related material that would
enable the computer program to be produced, created or compiled.
The term does not include computer data bases.
Data, as used in this clause, means recorded information,
regardless of form or the media on which it may be recorded. The
term includes technical data and computer software. The term does
not include information incidental to administration, such as
financial, administrative, cost or pricing, or management
information.
Form, fit, and function data, as used in this clause,
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, mating, 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, as used in this clause, means the rights
of the Government in limited rights data as set forth in the
Limited Rights Notice of subparagraph (g)(2) if included in this
clause.
Limited rights data, as used in this clause, 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 clause,
means computer software developed at private expense and that is a
trade secret; is commercial or financial and is confidential or
privileged; or is published copyrighted computer software;
including minor modifications of such computer software.
Restricted rights, as used in this clause, means the
rights of the Government in restricted computer software, as set
forth in a Restricted Rights Notice of subparagraph (g)(3) if
included in this clause, or as otherwise may be provided in a
collateral agreement incorporated in and made part of this
contract, including minor modifications of such computer
software.
Technical data, as used in this clause, means data (other
than computer software) which are of a scientific or technical
nature. Technical data does not include computer software, but does
include manuals and instructional materials and technical data
formatted as a computer data base.
Unlimited rights, as used in this clause, 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, and to have or
permit others to do so.
(b) Allocations of Rights
(1) Except as provided in paragraph (c) of this clause regarding
copyright, the Government shall have unlimited rights in -
(i) Data first produced in the performance of this
agreement;
(ii) Form, fit, and function data delivered under this
agreement;
(iii) Data delivered under this agreement (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 agreement; and
(iv) All other data delivered under this agreement unless
provided otherwise for limited rights data or restricted computer
software in accordance with paragraph (g) of this clause.
(2) The Recipient shall have the right to -
(i) Use, release to others, reproduce, distribute, or publish
any data first produced or specifically used by the Recipient in
the performance of this agreement, unless provided otherwise in
paragraph (d) of this clause;
(ii) Protect from unauthorized disclosure and use those data
which are limited rights data or restricted computer software to
the extent provided in paragraph (g) of this clause;
(iii) Substantiate use of, add or correct limited rights,
restricted rights, or copyright notices and to take over
appropriate action, in accordance with paragraphs (e) and (f) of
this clause; and
(iv) Establish claim to copyright subsisting in data first
produced in the performance of this agreement to the extent
provided in subparagraph (c)(1) of this clause.
(c) Copyright
(1) Data first produced in the performance of this agreement.
Unless provided otherwise in paragraph (d) of this clause, the
Recipient may establish, without prior approval of the Contracting
Officer, claim to copyright subsisting in data first produced in
the performance of this agreement. When claim to copyright is made,
the Recipient shall affix the applicable copyright notices of 17
U.S.C. 401 or 402 and acknowledgement of Government sponsorship
(including agreement 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. For such copyrighted data, including computer
software, the Recipient grants to the Government, and others acting
on its behalf, a paid-up nonexclusive, irrevocable worldwide
license in such copyrighted data to reproduce, prepare derivative
works, distribute copies to the public, and perform publicly and
display publicly, by or on behalf of the Government.
(2) Data not first produced in the performance of this
agreement. The Recipient shall not, without prior written
permission of the Contracting Officer, incorporate in data
delivered under this agreement any data not first produced in the
performance of this agreement and which contains the copyright
notice of 17 U.S.C. 401 or 402, unless the Recipient 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 clause; provided, however, that if such data are computer
software the Government shall acquire a copyright license as set
forth in subparagraph (g)(3) of this clause if included in this
agreement or as otherwise may be provided in a collateral agreement
incorporated in or made part of this agreement.
(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) Release, Publication and Use of Data
(1) The Recipient shall have the right to use, release to
others, reproduce, distribute, or publish any data first produced
or specifically used by the Recipient in the performance of this
agreement, except to the extent such data may be subject to the
Federal export control or national security laws or regulations, or
unless otherwise provided in this paragraph of this clause or
expressly set forth in this agreement.
(2) The Recipient agrees that to the extent it receives or is
given access to data necessary for the performance of this award,
which contain restrictive markings, the Recipient shall treat the
data in accordance with such markings unless otherwise specifically
authorized in writing by the contracting officer.
(e) Unauthorized Marking of Data
(1) Notwithstanding any other provisions of this agreement
concerning inspection or acceptance, if any data delivered under
this agreement are marked with the notices specified in
subparagraph (g)(2) or (g)(3) of this clause and use of such is not
authorized by this clause, or if such data bears any other
restrictive or limiting markings not authorized by this agreement,
the Contracting Officer may at any time either return the data to
the Recipient or cancel or ignore the markings. However, the
following procedures shall apply prior to canceling or ignoring the
markings.
(i) The Contracting Officer shall make written inquiry to the
Recipient affording the Recipient 30 days from receipt of the
inquiry to provide written justification to substantiate the
propriety of the markings;
(ii) If the Recipient fails to respond or fails to provide
written justification to substantiate the propriety of the markings
within the 30-day period (or a longer time not exceeding 90 days
approved in writing by the Contracting Officer for good cause
shown), the Government shall have the right to cancel or ignore the
markings at any time after said period and the data will no longer
be made subject to any disclosure prohibitions.
(iii) If the Recipient provides written justification to
substantiate the propriety of the markings within the period set in
subparagraph (e)(1)(i) of this clause, the Contracting Officer
shall consider such written justification and determine whether or
not the markings are to be cancelled or ignored. If the Contracting
Officer determines that the markings are authorized, the Recipient
shall be so notified in writing. If the Contracting Officer
determines, with concurrence of the head of the contracting
activity, that the markings are not authorized, the Contracting
Officer shall furnish the Recipient a written determination, which
determination shall become the final agency decision regarding the
appropriateness of the markings unless the Recipient files suit in
a court of competent jurisdiction within 90 days of receipt of the
Contracting Officer's decision. The Government shall continue to
abide by the markings under this subparagraph (e)(1)(iii) until
final resolution of the matter either by the Contracting Officer's
determination becoming final (in which instance the Government
shall thereafter have the right to cancel or ignore the markings at
any time and the data will no longer be made subject to any
disclosure prohibitions), or by final disposition of the matter by
court decision if suit is filed.
(2) The time limits in the procedures set forth in subparagraph
(e)(1) of this clause may be modified in accordance with agency
regulations implementing the Freedom of Information Act (5 U.S.C.
552) if necessary to respond to a request thereunder.
(f) Omitted or Incorrect Markings
(1) Data delivered to the Government without either the limited
rights or restricted rights notice as authorized by paragraph (g)
of this clause, or the copyright notice required by paragraph (c)
of this clause, 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 has not been disclosed without restriction outside
the Government, the Recipient may request, within 6 months (or a
longer time approved by the Contracting Officer for good cause
shown) after delivery or such data, permission to have notices
placed on qualifying data at the Recipient's expense, and the
Contracting Officer may agree to do so if the Recipient:
(i) Identifies the data to which the omitted notice is to be
applied;
(ii) Demonstrates that the omission of the notice was
inadvertent;
(iii) Establishes that the use of the proposed notice is
authorized; and
(iv) Acknowledges that the Government has no liability with
respect to the disclosure, use, or reproduction 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:
(i) Permit correction at the Recipient's expense of incorrect
notices if the Recipient identifies the data on which correction of
the notice is to be made, and demonstrates that the correct notice
is authorized, or
(ii) Correct any incorrect notices.
(g) Protection of Limited Rights Data and Restricted Computer
Software
When data other than that listed in subparagraphs (b)(1)(i),
(ii), and (iii) of this clause are specified to be delivered under
this agreement and qualify as either limited rights data or
restricted computer software, if the Recipient desires to continue
protection of such data, the Recipient shall withhold such data and
not furnish them to the Government under this agreement. As a
condition to this withholding, the Recipient shall identify the
data being withheld and furnish form, fit, and function data in
lieu thereof. Limited rights data that are formatted as a computer
data base for delivery to the Government are to be treated as
limited rights data and not restricted computer software.
(h) Subaward/Contract
The Recipient has the responsibility to obtain from its
subrecipients/contractors all data and rights therein necessary to
fulfill the Recipient's obligations to the Government under this
agreement. If a subrecipient/contractor refuses to accept terms
affording the Government such rights, the Recipient shall promptly
bring such refusal to the attention of the Contracting Officer and
not proceed with the subaward/contract award without further
authorization.
(i) Additional Data Requirements
In addition to the data specified elsewhere in this agreement to
be delivered, the Contracting Officer may, at anytime during
agreement performance or within a period of 3 years after
acceptance of all items to be delivered under this agreement, order
any data first produced or specifically used in the performance of
this agreement. This clause is applicable to all data ordered under
this subparagraph. Nothing contained in this subparagraph shall
require the Recipient to deliver any data the withholding of which
is authorized by this clause, or data which are specifically
identified in this agreement as not subject to this clause. When
data are to be delivered under this subparagraph, the Recipient
will be compensated for converting the data into the prescribed
form, for reproduction, and for delivery.
(j) The recipient agrees, except as may be otherwise specified
in this award for specific data items listed as not subject to this
paragraph, that the Contracting Officer or an authorized
representative may, up to three years after acceptance of all items
to be delivered under this award, inspect at the Recipient's
facility any data withheld pursuant to paragraph (g) of this
clause, for purposes of verifying the Recipient's assertion
pertaining to the limited rights or restricted rights status of the
data or for evaluating work performance. Where the Recipient whose
data are to be inspected demonstrates to the Contracting Officer
that there would be a possible conflict of interest if the
inspection were made by a particular representative, the
Contracting Officer shall designate an alternate inspector.
As prescribed in 600.325(d)(1), the following Alternate I and/or
II may be inserted in the clause in the award instrument.
Alternate I:
(g)(2) Notwithstanding subparagraph (g)(1) of this clause, the
agreement may identify and specify the delivery of limited rights
data, or the Contracting Officer may require by written request the
delivery of limited rights data that has been withheld or would
otherwise be withholdable. If delivery of such data is so required,
the Recipient may affix the following “Limited Rights Notice” to
the data and the Government will thereafter treat the data, in
accordance with such Notice:
LIMITED RIGHTS NOTICE
(a) These data are submitted with limited rights under
Government agreement No. ____ (and subaward/contract No. ____, if
appropriate). These data may be reproduced and used by the
Government with the express limitation that they will not, without
written permission of the Recipient, be used for purposes of
manufacture nor disclosed outside the Government; except that the
Government may disclose these data outside the Government for the
following purposes, if any, provided that the Government makes such
disclosure subject to prohibition against further use and
disclosure:
(1) Use (except for manufacture) by Federal support services
contractors within the scope of their contracts;
(2) This “limited rights data” may be disclosed for evaluation
purposes under the restriction that the “limited rights data” be
retained in confidence and not be further disclosed;
(3) This “limited rights data” may be disclosed to other
contractors participating in the Government's program of which this
Recipient is a part for information or use (except for manufacture)
in connection with the work performed under their awards and under
the restriction that the “limited rights data” be retained in
confidence and not be further disclosed;
(4) This “limited rights data” may be used by the Government or
others on its behalf for emergency repair or overhaul work under
the restriction that the “limited rights data” be retained in
confidence and not be further disclosed; and
(5) Release to a foreign government, or instrumentality thereof,
as the interests of the United States Government may require, for
information or evaluation, or for emergency repair or overhaul work
by such government. This Notice shall be marked on any reproduction
of this data in whole or in part.
(b) This Notice shall be marked on any reproduction of these
data, in whole or in part.
(End of notice) Alternate II:
(g)(3)(i) Notwithstanding subparagraph (g)(1) of this clause,
the agreement may identify and specify the delivery of restricted
computer software, or the Contracting Officer may require by
written request the delivery of restricted computer software that
has been withheld or would otherwise be withholdable. If delivery
of such computer software is so required, the Recipient may affix
the following “Restricted Rights Notice” to the computer software
and the Government will thereafter treat the computer software,
subject to paragraphs (e) and (f) of this clause, in accordance
with the Notice.
RESTRICTED RIGHTS NOTICE
(a) This computer software is submitted with restricted rights
under Government Agreement No. ____ (and subaward/contract ____, if
appropriate). It may not be used, reproduced, or disclosed by the
Government except as provided in paragraph (b) of this Notice or as
otherwise expressly stated in the agreement.
(b) This computer software may be -
(1) Used or copies for use in or with the computer or computers
for which it was acquired, including use at any Government
installation to which such computer or computers may be
transferred;
(2) Used or copied for use in a backup computer if any computer
for which it was acquired is inoperative;
(3) Reproduced for safekeeping (archiv3es) or backup
purposes;
(4) Modified, adapted, or combined with other computer software,
provided that the modified, combined, or adapted portions of the
derivative software are made subject to the same restricted
rights;
(5) Disclosed to and reproduced for use by support service
Recipients in accordance with subparagraph (b)(1) through (4) of
this clause, provided the Government makes such disclosure or
reproduction subject to these restricted rights; and
(6) Used or copied for use in or transferred to a replacement
computer.
(c) Notwithstanding the foregoing, if this computer software is
published copyrighted computer software, it is licensed to the
Government, without disclosure prohibitions, with the minimum
rights set forth in paragraph (b) of this clause.
(d) Any other rights or limitations regarding the use,
duplication, or disclosure of this computer software are to be
expressly stated, in, or incorporated in, the agreement.
(e) This Notice shall be marked on any reproduction of this
computer software, in whole or in part.
(End of notice)
(ii) Where it is impractical to include the Restricted Rights
Notice on restricted computer software, the following short-form
Notice may be used in lieu thereof:
RESTRICTED RIGHTS NOTICE
Use, reproduction, or disclosure is subject to restrictions set
forth in agreement No. ____ (and subaward/contract ____, If
appropriate) with ____ (name of Recipient and
subrecipient/contractor).
(End of notice)
(iii) If restricted computer software is delivered with the
copyright notice of 17 U.S.C. 401, it will be presumed to be
published copyrighted computer software licensed to the government
without disclosure prohibitions, with the minimum rights set forth
in paragraph (b) of this clause, unless the Recipient includes the
following statement with such copyright notice: “Unpublished -
rights reserved under the Copyright Laws of the United States.”
(End of clause) Rights in Data - Programs Covered Under Special
Data Statutes (a) Definitions
Computer Data Bases, as used in this clause, means a
collection of data in a form capable of, and for the purpose of,
being stored in, processed, and operated on by a computer. The term
does not include computer software.
Computer software, as used in this clause, means (i)
computer programs which are data comprising a series of
instructions, rules, routines, or statements, regardless of the
media in which recorded, that allow or cause a computer to perform
a specific operation or series of operations and (ii) data
comprising source code listings, design details, algorithms,
processes, flow charts, formulae and related material that would
enable the computer program to be produced, created or compiled.
The term does not include computer data bases.
Data, as used in this clause, means recorded information,
regardless of form or the media on which it may be recorded. The
term includes technical data and computer software. The term does
not include information incidental to administration, such as
financial, administrative, cost or pricing or management
information.
Form, fit, and function data, as used in this clause,
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, mating 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 clause, 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 clause,
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.
Protected data, as used in this clause, means technical
data or commercial or financial data first produced in the
performance of the award which, if it had been obtained from and
first produced by a non-federal party, would be a trade secret or
commercial or financial information that is privileged or
confidential under the meaning of 5 U.S.C. 552(b)(4) and which data
is marked as being protected data by a party to the award.
Protected rights, as used in this clause, mean the rights
in protected data set forth in the Protected Rights Notice of
paragraph (g) of this clause.
Technical data, as used in this clause, means that data
which are of a scientific or technical nature. Technical data does
not include computer software, but does include manuals and
instructional materials and technical data formatted as a computer
data base.
Unlimited rights, as used in this clause, 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 clause regarding
copyright, the Government shall have unlimited rights in -
(i) Data specifically identified in this agreement as data to be
delivered without restriction;
(ii) Form, fit, and function data delivered under this
agreement;
(iii) Data delivered under this agreement (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 agreement; and
(iv) All other data delivered under this agreement unless
provided otherwise for protected data in accordance with paragraph
(g) of this clause or for limited rights data or restricted
computer software in accordance with paragraph (h) of this
clause.
(2) The Recipient shall have the right to -
(i) Protect rights in protected data delivered under this
agreement in the manner and to the extent provided in paragraph (g)
of this clause;
(ii) Withhold from delivery those data which are limited rights
data or restricted computer software to the extent provided in
paragraph (h) of this clause;
(iii) Substantiate use of, add, or correct protected rights or
copyrights notices and to take other appropriate action, in
accordance with paragraph (e) of this clause; and
(iv) Establish claim to copyright subsisting in data first
produced in the performance of this agreement to the extent
provided in subparagraph (c)(1) of this clause.
(c) Copyright
(1) Data first produced in the performance of this agreement.
Except as otherwise specifically provided in this agreement, the
Recipient may establish, without the prior approval of the
Contracting Officer, claim to copyright subsisting in any data
first produced in the performance of this agreement. If claim to
copyright is made, the Recipient shall affix the applicable
copyright notice of 17 U.S.C. 401 or 402 and acknowledgment of
Government sponsorship (including agreement 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. For such copyrighted data,
including computer software, the Recipient 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.
(2) Data not first produced in the performance of this
agreement. The Recipient shall not, without prior written
permission of the Contracting Officer, incorporate in data
delivered under this agreement any data that are not first produced
in the performance of this agreement and that contain the copyright
notice of 17 U.S.C. 401 or 402, unless the Recipient 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 clause; provided, however, that if such data are computer
software, the Government shall acquire a copyright license as set
forth in subparagraph (h)(3) of this clause if included in this
agreement or as otherwise may be provided in a collateral agreement
incorporated or made a part of this agreement.
(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) Release, Publication and Use of Data
(1) The Receipt shall have the right to use, release to others,
reproduce, distribute, or publish any data first produced or
specifically used by the Recipient in the performance of this
contract, except to the extent such data may be subject to the
Federal export control or national security laws or regulations, or
unless otherwise provided in this paragraph of this clause or
expressly set forth in this contract.
(2) The Recipient agrees that to the extent it receives or is
given access to data necessary for the performance of this
agreement which contain restrictive markings, the Recipient shall
treat the data in accordance with such markings unless otherwise
specifically authorized in writing by the Contracting Officer.
(e) Unauthorized Marking of Data
(1) Notwithstanding any other provisions of this agreement
concerning inspection or acceptance, if any data delivered under
this agreement are marked with the notices specified in
subparagraph (g)(2) or (g)(3) of this clause and use of such is not
authorized by this clause, or if such data bears any other
restrictive or limiting markings not authorized by this agreement,
the Contracting Officer may at any time either return the data to
the Recipient or cancel or ignore the markings. However, the
following procedures shall apply prior to canceling or ignoring the
markings.
(i) The Contracting Officer shall make written inquiry to the
Recipient affording the Recipient 30 days from receipt of the
inquiry to provide written justification to substantiate the
propriety of the markings;
(ii) If the Recipient fails to respond or fails to provide
written justification to substantiate the propriety of the markings
within the 30-day period (or a longer time not exceeding 90 days
approved in writing by the Contracting Officer for good cause
shown), the Government shall have the right to cancel or ignore the
markings at any time after said period and the data will no longer
be made subject to any disclosure prohibitions.
(iii) If the Recipient provides written justification to
substantiate the propriety of the markings within the period set in
subdivision (e)(1)(i) of this clause, the Contracting Officer shall
consider such written justification and determine whether or not
the markings are to be cancelled or ignored. If the Contracting
Officer determines that the markings are authorized, the Recipient
shall be so notified in writing. If the Contracting Officer
determines, with concurrence of the head of the contracting
activity, that the markings are not authorized, the Contracting
Officer shall furnish the Recipient a written determination, which
determination shall become the final agency decision regarding the
appropriateness of the markings unless the Recipient files suit in
a court of competent jurisdiction within 90 days of receipt of the
Contracting Officer's decision. The Government shall continue to
abide by the markings under this subdivision (e)(1)(iii) until
final resolution of the matter either by the Contracting Officer's
determination become final (in which instance the Government shall
thereafter have the right to cancel or ignore the markings at any
time and the data will no longer be made subject to any disclosure
prohibitions), or by final disposition of the matter by court
decision if suit is filed.
(2) The time limits in the procedures set forth in subparagraph
(e)(1) of this clause may be modified in accordance with agency
regulations implementing the Freedom of Information Act (5 U.S.C.
552) if necessary to respond to a request thereunder.
(f) Omitted or Incorrect Markings
(1) Data delivered to the Government without either the limited
rights or restricted rights notice as authorized by paragraph
(g) of this clause, or the copyright notice required by
paragraph (c) of this clause, 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 has not been disclosed without
restriction outside the Government, the Recipient may request,
within 6 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
Recipient's expense, and the Contracting Officer may agree to do so
if the Recipient -
(i) Identifies the data to which the omitted notice is to be
applied;
(ii) Demonstrates that the omission of the notice was
inadvertent;
(iii) Establishes that the use of the proposed notice is
authorized; and
(iv) Acknowledges that the Government has no liability with
respect to the disclosure, use, or reproduction 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:
(i) Permit correction at the Recipient's expense of incorrect
notices if the Recipient identifies the data on which correction of
the notice is to be made, and demonstrates that the correct notice
is authorized; or
(ii) Correct any incorrect notices.
(g) Rights to Protected Data
(1) The Recipient may, with the concurrence of DOE, claim and
mark as protected data, any data first produced in the performance
of this award that would have been treated as a trade secret if
developed at private expense. Any such claimed “protected data”
will be clearly marked with the following Protected Rights Notice,
and will be treated in accordance with such Notice, subject to the
provisions of paragraphs (e) and (f) of this clause.
PROTECTED RIGHTS NOTICE
These protected data were produced under agreement no. ___ with
the U.S. Department of Energy and may not be published,
disseminated, or disclosed to others outside the Government until
(Note:) The period of protection of such data is fully negotiable,
but cannot exceed the applicable statutorily authorized maximum),
unless express written authorization is obtained from the
recipient. Upon expiration of the period of protection set forth in
this Notice, the Government shall have unlimited rights in this
data. This Notice shall be marked on any reproduction of this data,
in whole or in part.
(End of notice)
(2) Any such marked Protected Data may be disclosed under
obligations of confidentiality for the following purposes:
(a) For evaluation purposes under the restriction that the
“Protected Data” be retained in confidence and not be further
disclosed; or
(b) To subcontractors or other team members performing work
under the Government's (insert name of program or other applicable
activity) program of which this award is a part, for information or
use in connection with the work performed under their activity, and
under the restriction that the Protected Data be retained in
confidence and not be further disclosed.
(3) The obligations of confidentiality and restrictions on
publication and dissemination shall end for any Protected Data.
(a) At the end of the protected period;
(b) If the data becomes publicly known or available from other
sources without a breach of the obligation of confidentiality with
respect to the Protected Data;
(c) If the same data is independently developed by someone who
did not have access to the Protected Data and such data is made
available without obligations of confidentiality; or
(d) If the Recipient disseminates or authorizes another to
disseminate such data without obligations of confidentiality.
(4) However, the Recipient agrees that the following types of
data are not considered to be protected and shall be provided to
the Government when required by this award without any claim that
the data are Protected Data. The parties agree that notwithstanding
the following lists of types of data, nothing precludes the
Government from seeking delivery of additional data in accordance
with this award, or from making publicly available additional
non-protected data, nor does the following list constitute any
admission by the Government that technical data not on the list is
Protected Data. (Note: It is expected that this paragraph will
specify certain types of mutually agreed upon data that will be
available to the public and will not be asserted by the
recipient/contractor as limited rights or protected data).
(5) The Government's sole obligation with respect to any
protected data shall be as set forth in this paragraph (g).
(h) Protection of Limited Rights Data
When data other than that listed in subparagraphs (b)(1)(i),
(ii), and (iii) of this clause are specified to be delivered under
this agreement and such data qualify as either limited rights data
or restricted computer software, the Recipient, if the Recipient
desires to continue protection of such data, shall withhold such
data and not furnish them to the Government under this agreement.
As a condition to this withholding the Recipient shall identify the
data being withheld and furnish form, fit, and function data in
lieu thereof.
(i) Subaward/Contract
The Recipient has the responsibility to obtain from its
subrecipients/contractors all data and rights therein necessary to
fulfill the Recipient's obligations to the Government under this
agreement. If a subrecipient/contractor refuses to accept terms
affording the Government such rights, the Recipient shall promptly
bring such refusal to the attention of the Contracting Officer and
not proceed with subaward/contract award without further
authorization.
(j) Additional Data Requirements
In addition to the data specified elsewhere in this agreement to
be delivered, the Contracting Officer may, at anytime during
agreement performance or within a period of 3 years after
acceptance of all items to be delivered under this agreement, order
any data first produced or specifically used in the performance of
this agreement. This clause is applicable to all data ordered under
this subparagraph. Nothing contained in this subparagraph shall
require the Recipient to deliver any data the withholding of which
is authorized by this clause or data which are specifically
identified in this agreement as not subject to this clause. When
data are to be delivered under this subparagraph, the Recipient
will be compensated for converting the data into the prescribed
form, for reproduction, and for delivery.
(k) The Recipient agrees, except as may be otherwise specified
in this agreement for specific data items listed as not subject to
this paragraph, that the Contracting Officer or an authorized
representative may, up to three years after acceptance of all items
to be delivered under this contract, inspect at the Recipient's
facility any data withheld pursuant to paragraph (h) of this
clause, for purposes of verifying the Recipient's assertion
pertaining to the limited rights or restricted rights status of the
data or for evaluating work performance. Where the Recipient whose
data are to be inspected demonstrates to the Contracting Officer
that there would be a possible conflict of interest if the
inspection were made by a particular representative, the
Contracting Officer shall designate an alternate inspector.
As prescribed in 600.325(e)(2), the following Alternate I and/or
II may be inserted in the clause in the award instrument.
Alternate I:
(h)(2) Notwithstanding subparagraph (h)(1) of this clause, the
agreement may identify and specify the delivery of limited rights
data, or the Contracting Officer may require by written request the
delivery of limited rights data that has been withheld or would
otherwise be withholdable. If delivery of such data is so required,
the Recipient may affix the following “Limited Rights Notice” to
the data and the Government will thereafter treat the data, in
accordance with such Notice:
LIMITED RIGHTS NOTICE
(a) These data are submitted with limited rights under
Government agreement No. ____ (and subaward/contract No. ____, if
appropriate). These data may be reproduced and used by the
Government with the express limitation that they will not, without
written permission of the Recipient, be used for purposes of
manufacture nor disclosed outside the Government; except that the
Government may disclose these data outside the Government for the
following purposes, if any, provided that the Government makes such
disclosure subject to prohibition against further use and
disclosure:
(1) Use (except for manufacture) by Federal support services
contractors within the scope of their contracts;
(2) This “limited rights data” may be disclosed for evaluation
purposes under the restriction that the “limited rights data” be
retained in confidence and not be further disclosed;
(3) This “limited rights data” may be disclosed to other
contractors participating in the Government's program of which this
Recipient is a part for information or use (except for manufacture)
in connection with the work performed under their awards and under
the restriction that the “limited rights data” be retained in
confidence and not be further disclosed;
(4) This “limited rights data” may be used by the Government or
others on its behalf for emergency repair or overhaul work under
the restriction that the “limited rights data” be retained in
confidence and not be further disclosed; and
(5) Release to a foreign government, or instrumentality thereof,
as the interests of the United States Government may require, for
information or evaluation, or for emergency repair or overhaul work
by such government. This Notice shall be marked on any reproduction
of this data in whole or in part.
(b) This Notice shall be marked on any reproduction of these
data, in whole or in part.
(End of notice) Alternate II:
(h)(3)(i) Notwithstanding subparagraph (h)(1) of this clause,
the agreement may identify and specify the delivery of restricted
computer software, or the Contracting Officer may require by
written request the delivery of restricted computer software that
has been withheld or would otherwise be withholdable. If delivery
of such computer software is so required, the Recipient may affix
the following “Restricted Rights Notice” to the computer software
and the Government will thereafter treat the computer software,
subject to paragraphs (d) and (e) of this clause, in accordance
with the Notice:
RESTRICTED RIGHTS NOTICE
(a) This computer software is submitted with restricted rights
under Government Agreement No. ____ (and subaward/contract ____, if
appropriate). It may not be used, reproduced, or disclosed by the
Government except as provided in paragraph (c) of this Notice or as
otherwise expressly stated in the agreement.
(b) This computer software may be -
(1) Used or copied for use in or with the computer or computers
for which it was acquired, including use at any Government
installation to which such computer or computers may be
transferred;
(2) Used or copies for use in a backup computer if any computer
for which it was acquired is inoperative;
(3) Reproduced for safekeeping (archives) or backup
purposes;
(4) Modified, adapted, or combined with other computer software,
provided that the modified, combined, or adapted portions of the
derivative software are made subject to the same restricted
rights;
(5) Disclosed to and reproduced for use by Federal support
service Contractors in accordance with subparagraphs (b)(1) through
(4) of this clause, provided the Government makes such disclosure
or reproduction subject to these restricted rights; and
(6) Used or copies for use in or transferred to a replacement
computer.
(c) Notwithstanding the foregoing, if this computer software is
published copyrighted computer software, it is licensed to the
Government, without disclosure prohibitions, with the minimum
rights set forth in paragraph (b) of this clause.
(d) Any other rights or limitations regarding the use,
duplication, or disclosure of this computer software are to be
expressly stated in, or incorporated in, the agreement.
(e) This Notice shall be marked on any reproduction of this
computer software, in whole or in part.
(End of notice)
(ii) Where it is impractical to include the Restricted Rights
Notice on restricted computer software, the following short-form
Notice may be used in lieu thereof:
RESTRICTED RIGHTS NOTICE
Use, reproduction, or disclosure is subject to restrictions set
forth in Agreement No. ____ (and subaward/contract ____, if
appropriate) with ____ (name of Recipient and
subrecipient/contractor).
(End of notice)
(iii) If restricted computer software is delivered with the
copyright notice of 17 U.S.C. 401, it will be presumed to be
published copyrighted computer software licensed to the Government
without disclosure prohibitions, with the minimum rights set forth
in paragraph (b) of this clause, unless the Recipient includes the
following statement with such copyright notice: “Unpublished -
rights reserved under the Copyright Laws of the United States.”
(End of clause)