**UNITED STATES DEPARTMENT OF ENERGY**

**PETITION FOR WAIVER OF RIGHTS TO**

**AN IDENTIFIED INVENTION UNDER 10 C.F.R. PART 784**

**DOE WAIVER NO.\_\_\_\_\_\_\_\_\_**

**(To be supplied by DOE)**

**DOE INVENTION NO.\_\_\_\_\_\_\_\_\_**

**(To be supplied by DOE)**

[Notice: If you need help in completing this form, contact the DOE
Patent Counsel assisting the activity that issued your award or the
Assistant General Counsel for Technology Transfer and Intellectual
Property in the Office of General Counsel in DOE Headquarters. Unless
exceptional circumstances have been determined to exist, parties which
qualify as Bayh-Dole entities under 35 U.S.C. 201 (h) or (i) are not
required to petition for title. Rather, they may elect to retain title
to subject inventions.]{.underline}

Title of Contract:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Contract No.:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Title of

Subject Invention:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Petitioner\'s Identification No.:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

(Name and Address of Petitioner)

does hereby petition the Secretary of the United States Department of
Energy for waiver of domestic and foreign rights of the United States of
America to the Subject Invention which was made in the performance of
work under the above-identified contract. It is understood that any

waiver of rights shall be subject to the Government license, march-in
rights, and preference for U.S. industry set forth in 35 U.S.C. 202, 203
and 204, as well as other provisions that may be required in accordance
with 10 C.F.R. 784.5(m), regardless of whether the Petitioner is a small
business or nonprofit organization.

In support of this petition, answers to the following questions are
submitted as an appendix hereto:

1\. Identify the specific rights which the Petitioner desires to obtain
in the Subject Invention. (Field of use, geographic area, exclusivity,
term, etc.)

2\. Give a brief description of the Subject Invention. Specify any known
or potential weapons fields of use, or weapons applications, or naval
nuclear propulsion use or application, or use in the production or
utilization of special nuclear material or atomic energy of the subject
invention. To your knowledge, are any fields of use or applications of
the invention classified or controlled or sensitive under Section 148 of
the Atomic Energy Act (dealing with unclassified, sensitive nuclear
information)?

3\. Give a brief description of the scope of the work of the above
contract. Specifically describe the source of funding, including the
name of the specific project under which the Subject Invention was made
and the name of the cognizant DOE program director. (Laboratory
operators furnish B&R code, if available).

4\. What is the dollar amount and period of performance of this contract
and the amount specifically expended in making the Subject Invention? Is
there further Governmental funding anticipated in the development of the
invention? Describe any continuing Government funding of the development
of the invention (including investigation of materials or processes for
use therewith), from whatever Government source whether direct or
indirect, and, to the extent known by Petitioner, any anticipated future
Government funding to further develop the invention.

5\. Briefly describe the Petitioner\'s technical competence in the field
of technology in which the Subject Invention lies or to which it relates
in terms of prior experience, know-how and patent position. (Attach
exhibits to substantiate your technical competence, e.g., patents,
technical publications, etc. If these are voluminous a representative
sample is sufficient.)

6\. Briefly describe the Petitioner\'s established non-governmental
commercial position in the field of technology in which the Subject
Invention lies or to which it relates. (Discuss in terms of selling
goods or providing services in such field outside of sales to the U.S.
Government. Attach exhibits to substantiate your commercial position,
e.g., sales brochures, etc. If these are voluminous a representative
sample is sufficient.)

7\. What is the financial and technological investment that has been
made by the Petitioner with regard to the field of technology in which
the invention lies or to which it relates and with regard to the making
and developing of the Subject Invention?

8\. To what extent will the Petitioner make a substantial investment of
financial resources or technology which will directly assist the further
development and promote the commercial utilization of the Subject
invention? Summarize Petitioner\'s plans, intentions and ability in
developing the Subject Invention to a point of commercialization. This
should include a description of the technical steps required, funds
necessary therefor and associated time periods necessary to develop the
invention to the point of readiness for commercialization, and a
statement by Petitioner that either it or its present or prospective
licensee will expend the necessary capital and resources.

9\. Why will the grant of the above-requested waiver more effectively
promote the development and commercial utilization of the Subject
Invention? Specifically, identify any potential licensees or joint
ventures interested in further development of the invention to
commercialization. If the invention will be commercialized by a
licensee, summarize the licensee\'s plans and intentions to develop the
invention to a point of commercialization.

10\. What will be the effect on competition and market concentration if
the above-requested waiver is granted? Describe any competitive
technologies or other factors which would reduce any anticompetitive
effects of granting the waiver. Would the acquisition of the waiver
rights requested be likely to place the Petitioner in a preferred or
dominant position in this field? Give reasons for your conclusions.

11\. Under what other contracts has the Petitioner worked or what other
contracts has the Petitioner had with any branch or agency of the U.S.
Government which include all or a part of the scope of work covered by
this contract or which deal with the field of technology in which the
Subject Invention lies or to which it relates?

12\. If the Government has already prepared a patent application, is
Petitioner willing to reimburse the Government for its expended costs,
if any, in the preparation, filing and prosecution of patent
application(s) on the Subject Invention?

13\. If this request for waiver has not been submitted to the Patent
Counsel within the time frames specified in 10 C.F.R. 784.8 (c), and if
the period for submission has not already been extended by the Patent
Counsel for good cause in writing, provide a statement of the reasons
why the petition was not timely filed.

14\. Is the Petitioner aware of any governmental regulations which
require or which might require the use of the subject matter of the
Subject Invention by the general public or a segment thereof? (If yes,
explain.)

15\. Does the Subject Invention lie in or relate to a field of
technology which concerns the public health, safety or welfare (for
example, the development of drugs, medical or safety instruments,
anti-pollution devices or such other products that may have a bearing on
health, safety or welfare of the general public)? If yes, explain.

16\. If the invention was made in the course of or under a contract or
subcontract of the Naval Nuclear Propulsion Program or the weapons
programs or other atomic energy defense activities of the Department of
Energy, the considerations of paragraph (b) of Section 3131 of the 1987
Defense Authorization Act shall also be addressed. These are as follows:

> \(a\) whether national security will be compromised;
>
> \(b\) whether sensitive technical information (whether classified or
> unclassified) under the Naval Nuclear Propulsion Program or the
> nuclear weapons programs or other atomic energy defense activities of
> the Department of Energy for which dissemination is controlled under
> Federal statutes and regulations will be released to unauthorized
> persons;
>
> \(c\) whether an organizational conflict of interest contemplated by
> Federal statutes and regulations will result; and
>
> \(d\) whether waiving such rights will adversely affect the operation
> of the Naval Nuclear Propulsion Program or the nuclear weapons
> programs or other atomic energy defense activities of the Department
> of Energy.

17\. State below the name, address and telephone number of the person to
whom correspondence is to be directed.

18\. If a patent application has not yet been filed, provide information
on any statutory bar to the patenting of the invention under 35 U.S.C.
102, or confirm that no bar is known to exist.

19\. Where the Petitioner is the inventor, provide written authorization
from the applicable contractor or subcontractor permitting the inventor
to request a waiver.

20\. Is the Petitioner a small business or nonprofit organization not
eligible to elect title to subject inventions under the provisions of 35
U.S.C. 200 *et seq.*?

21\. Give any other facts the Petitioner believes will establish that
the interests of the United States and the general public will best be
served by the granting of this waiver. Sufficient information is
required so that the Secretary can consider specifically each of the
areas and objectives covered in subsections (c) and (e) of 42 U.S.C.
5908.

The facts set forth in this request for waiver are within the knowledge
of the requestor and are submitted with the intention that the Secretary
or his designee will rely on them in reaching the waiver determination.

> Respectfully submitted,
>
> \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
>
> (Signature)
>
> \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
>
> (Name and title of authorized representative)

Date submitted: \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_