52.227-13 Patent Rights-Ownership by the

Government.

As prescribed at 27.303(e), insert the following clause:

Patent Rights-Ownership by the Government (Dec 2007)

(a) Definitions. As used in this clauseInvention means any invention or discovery that is or may be patentable or otherwise protectable

under title 35 of the U.S. Code or any variety of plant that is or may be protectable under the Plant

Variety Protection Act (7 U.S.C. 2321, et seq.)

Made means-

(1) When used in relation to any invention other than a plant variety, means the conception or first

actual reduction to practice of the invention; or

(2) When used in relation to a plant variety, means that the Contractor has at least tentatively

determined that the variety has been reproduced with recognized characteristics.

"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.

Subject invention means any invention of the Contractor made in the performance of work under

this contract.

(b) Ownership.

(1) Assignment to the Government. The Contractor shall assign to the Government title throughout

the world to each subject invention, except to the extent that rights are retained under paragraphs

(b)(2) and (d) of this clause.

(2) Greater rights determinations.

(i) The Contractor, or an employee-inventor after consultation with the Contractor, may request

greater rights than the nonexclusive license provided in paragraph (d) of this clause. The request for

a greater rights must be submitted to the Contracting Officer at the time of the first disclosure of the

subject invention pursuant to paragraph (e)(2) of this clause, or not later than 8 months thereafter,

unless a longer period is authorized in writing by the Contracting Officer for good cause shown in

writing by the Contractor. Each determination of greater rights under this contract normally shall be

subject to paragraph (c) of this clause, and to the reservations and conditions deemed to be

appropriate by the agency.

(ii) Upon request, the Contractor shall provide the filing date, serial number and title, a copy of the

patent application (including an English-language version if filed in a language other than English),
and patent number and issue date for any subject invention in any country for which the Contractor

has retained title.

(iii) Upon request, the Contractor shall furnish the agency an irrevocable power to inspect and make

copies of the patent application file.

(c) Minimum rights acquired by the Government.

(1) Regarding each subject invention to which the Contractor retains ownership, the Contractor

agrees as follows:

(i) The Government will have a nonexclusive, nontransferable, irrevocable, paid-up license to

practice, or have practiced for or on its behalf, the subject invention throughout the world.

(ii) The agency has the right to require licensing pursuant to 35 U.S.C. 203 and 210(c) and in

accordance with the procedures set forth in 37 CFR 401.6 and any supplemental regulations of the

agency in effect on the date of the contract award.

(iii) Upon request, the Contractor shall submit periodic reports no more frequently than annually on

the utilization, or efforts to obtain utilization, of a subject invention by the Contractor or its licensees

or assignees. The reports shall include information regarding the status of development, date of first

commercial sale or use, gross royalties received by the Contractor, and any other data and

information as the agency may reasonably specify. The Contractor also shall provide additional

reports as may be requested by the agency in connection with any march-in proceedings undertaken

by the agency in accordance with paragraph (c)(1)(ii) of this clause. To the extent data or

information supplied under this section is considered by the Contractor, or its licensees, or

assignees to be privileged and confidential and is so marked, the agency, to the extent permitted by

law, will not disclose such information to persons outside the Government.

(iv) When licensing a subject invention, the Contractor shall-

(A) Ensure that no royalties are charged on acquisitions involving Government funds, including

funds derived through a Military Assistance Program of the Government or otherwise derived

through the Government;

(B) Refund any amounts received as royalty charges on a subject invention in acquisitions for, or on

behalf of, the Government;

(C) Provide for this refund in any instrument transferring rights in the subject invention to any party.

(v) When transferring rights in a subject invention, the Contractor shall provide for the

Government’s rights set forth in paragraphs (c)(1)(i) through (c)(1)(iv) of this clause.

(2) Nothing contained in paragraph (c) of this clause shall be deemed to grant to the Government

rights in any invention other than a subject invention.

(d) Minimum rights to the Contractor.

(1) The Contractor is hereby granted a revocable, nonexclusive, paid-up 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 Contractor fails to disclose the subject invention within the
times specified in paragraph (e)(2) of this clause. The Contractor’s license extends to any of its

domestic subsidiaries and affiliates within the corporate structure of which the Contractor is a part,

and includes the right to grant sublicenses to the extent the Contractor was legally obligated to do

so at contract award. The license is transferable only with the written approval of the agency except

when transferred to the successor of that part of the Contractor’s business to which the subject

invention pertains.

(2) The Contractor’s license may be revoked or modified by the agency to the extent necessary to

achieve expeditious practical application of the subject invention in a particular country in

accordance with the procedures in FAR 27.302(i)(2) and 27.304-1(f).

(3) When the Government elects not to apply for a patent in any foreign country, the Contractor

retains rights in that foreign country to apply for a patent, subject to the Government’s rights in

paragraph (c)(1) of this clause.

(e) Invention identification, disclosures, and reports.

(1) The Contractor shall establish and maintain active and effective procedures to educate its

employees in order to assure that subject inventions are promptly identified and disclosed to

Contractor personnel responsible for patent matters. The 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 the procedures for identifying and disclosing subject inventions are followed.

Upon request, the Contractor shall furnish the Contracting Officer a description of these procedures

for evaluation and for a determination as to their effectiveness.

(2) The Contractor shall disclose in writing each subject invention to the Contracting Officer within 2

months after the inventor discloses it in writing to Contractor personnel responsible for patent

matters or, if earlier, within 6 months after the Contractor becomes aware that a subject invention

has been made, but in any event before any on sale (i.e., sale or offer for sale), public use, or

publication of the subject invention known to the Contractor. The disclosure shall identify the

contract under which the subject invention was made and the inventor(s). It shall be sufficiently

complete in technical detail to convey a clear understanding of the subject invention. The disclosure

shall also identify any publication, on sale, or public use of the subject invention and whether a

manuscript describing the subject invention has been submitted for publication and, if so, whether it

has been accepted for publication. In addition, after disclosure to the agency, the Contractor shall

promptly notify the Contracting Officer of the acceptance of any manuscript describing the subject

invention for publication and any on sale or public use.

(3) The Contractor shall furnish the Contracting Officer the following:

(i) Interim reports every 12 months (or a longer period as may be specified by the Contracting

Officer) from the date of the contract, listing subject inventions during that period, and stating that

all subject inventions have been disclosed (or that there are none) and that the procedures required

by paragraph (e)(1) of this clause have been followed.

(ii) A final report, within 3 months after completion of the contracted work, listing all subject

inventions or stating that there were none, and listing all subcontracts at any tier containing a

patent rights clause or stating that there were none.

(4) The Contractor shall 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 the Contractor’s format each subject invention in order that

the Contractor 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 paragraph (e)(2) of this clause. The Contractor shall instruct such

employees, through employee agreements or other suitable educational programs, as to the

importance of reporting inventions in sufficient time to permit the filing of patent applications prior

to U.S. or foreign statutory bars.

(5) Subject to FAR 27.302(i), the Contractor agrees 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 contract, have the right to examine any books (including laboratory notebooks), records,

and documents of the Contractor relating to the conception or first actual reduction to practice of

inventions in the same field of technology as the work under this contract to determine whether-

(i) Any inventions are subject inventions;

(ii) The Contractor has established and maintains the procedures required by paragraphs (e)(1) and

(e)(4) of this clause; and

(iii) The Contractor and its inventors have complied with the procedures.

(2) The Contractor shall disclose to the Contracting Officer, for the determination of ownership

rights, any unreported invention that the Contracting Officer believes may be a subject invention.

(3) Any examination of records under paragraph (f) of this clause will be subject to appropriate

conditions to protect the confidentiality of the information involved.

(g) Withholding of payment. (This paragraph does not apply to subcontracts.)

(1) Any time before final payment under this contract, the Contracting Officer may, in the

Government's interest, withhold payment until a reserve not exceeding $50,000 or 5 percent of the

amount of this contract, whichever is less, shall have been set aside if, in the Contracting Office’s

opinion, the Contractor fails to-

(i) Establish, maintain, and follow effective procedures for identifying and disclosing subject

inventions pursuant to paragraph (e)(1) of this clause;

(ii) Disclose any subject invention pursuant to paragraph (e)(2) of this clause;

(iii) Deliver acceptable interim reports pursuant to paragraph (e)(3)(i) of this clause; or

(iv) Provide the information regarding subcontracts pursuant to paragraph (i)(4) of this clause.

(2) The Contracting Officer will withhold the reserve or balance until the Contracting Officer has

determined that the Contractor has rectified whatever deficiencies exist and has delivered all

reports, disclosures, and other information required by this clause.
(3) The Contracting Officer will not make final payment under this contract before the Contractor

delivers to the Contracting Officer, as required by this clause, all disclosures of subject inventions,

an acceptable final report, and all due confirmatory instruments.

(4) The Contracting Officer may decrease or increase the sums withheld up to the maximum

authorized. The Contracting Officer will not withhold any amount under this paragraph while the

amount specified by this paragraph is being withheld under other provisions of the contract. The

withholding of any amount or the subsequent payment shall not be construed as a waiver of any

Government rights.

(h) Preference for United States industry. Unless provided otherwise, neither the Contractor nor any

assignee shall grant to any person the exclusive right to use or sell any subject invention in the

United States unless the person agrees that any products embodying the subject invention or

produced through the use of the subject invention will be manufactured substantially in the United

States. However, in individual cases, the requirement may be waived by the agency upon a showing

by the Contractor or assignee that reasonable but unsuccessful efforts have been made to grant

licenses on similar terms to potential licensees that would be likely to manufacture substantially in

the United States or that, under the circumstances, domestic manufacture is not commercially

feasible.

(i) Subcontracts.

(1) The Contractor shall include the substance of the patent rights clause required by FAR subpart 

27.3 in all subcontracts for experimental, developmental, or research work. The prescribed patent

rights clause must be modified to identify the parties as follows: references to the Government are

not changed, and the subcontractor has all rights and obligations of the Contractor in the clause.

The Contractor shall not, as part of the consideration for awarding the subcontract, obtain rights in

the subcontractor’s subject inventions.

(2) In the event of a refusal by a prospective subcontractor to accept the clause, the Contractor-

(i) Shall promptly submit a written notice to the Contracting Officer setting forth the subcontractor’s

reasons for such refusal and other pertinent information that may expedite disposition of the matter;

and

(ii) Shall not proceed with such subcontract without the written authorization of the Contracting

Officer.

(3) In subcontracts at any tier, the agency, the subcontractor, and the Contractor agree that the

mutual obligations of the parties created by the patent rights clause constitute a contract between

the subcontractor and the agency with respect to those matters covered by this clause.

(4) The Contractor shall promptly notify the Contracting Officer in writing upon the award of any

subcontract at any tier containing a patent rights clause by identifying the subcontractor, the

applicable patent rights clause, the work to be performed under the subcontract, and the dates of

award and estimated completion. Upon request of the Contracting Officer, the Contractor shall

furnish a copy of such subcontract, and, no more frequently than annually, a listing of the

subcontracts that have been awarded.

(End of clause)
Alternate I (Jun 1989). As prescribed in 27.303 (e) (4), add the following sentence at the end of

paragraph (c)(1)(i) of the basic clause:

The license will include the right of the Government to sublicense foreign governments, their

nationals, and international organizations pursuant to the following treaties or international

agreements: _____________________* [*Contracting Officer complete with the names of applicable

existing treaties or international agreements. The above language is not intended to apply to treaties

or agreements that are in effect on the date of the award but are not listed.]

Alternate II (Dec 2007). As prescribed in 27.303 (e)(5), add the following sentence at the end of

paragraph (c)(1)(i) of the basic clause:

The agency reserves the right to unilaterally amend this contract to identify specific treaties or

international agreements entered into by the Government before or after the effective date of this

contract, and effectuate those license or other rights that are necessary for the Government to meet

its obligations to foreign governments, their nationals, and international organizations under treaties

or international agreements with respect to subject inventions made after the date of the

amendment.

Parent topic: 52.227 [Reserved]