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REF ID:A68976 

SECTION IX-PATENTS AND COPYRIGH'fS 

Table or Contents 

I 

Paragraph Page 

9-001 Effective D!lte of Section---------------------------------- 901 

PART 1-PATENTS 

9-100 Scope of Po.rt-----------------------------~·--""''-'---------- 901 

9-101 Definitions-------------------------~-~------------------ 901 

9-101. 1 Research or Development Contract____________ 901 

9-101.2 Supply Contract _________ a------------------ 901 

9-101. 3 Foreground Patent__ -----~-----L--- _ __ _ _____ 901 

9-101. 4 Background Patent__________________________ 901 

9-102 Notice and Assistance_____________________________________ 901 

9-103 Reporting of Royalties-----------------------------------~ 902 

9-104 Classified Contracts _______ -------- __ -----_------ __ -------- 903 

9-105 Patent Indemnification of Government by Contractor_________ 904 

9-106 Authorization and Consent ___________ ------------:...________ 905 

9-107 Patent Rights Under Research or Development Contracts_____ 905 

9-107. 1 License under Foreground Patents_____________ 905 

9-107. 2 Tille to Foreground Patents__________________ 908 

9-107. 3 Reproduction Rights under Background Patents_ 910 

9-107. 4 Foreign Patent Rights_---------------------- 911 

9-107. 5 Contracts Relating to Atomic Energy__________ 912 

9-108 Follmv-up of Patent Rights _______________________ ._________ 912 

9-109 .Adjustment of Royalties __________________ ... _______________ 913 

9-110 Patent Interchange Agreement ____________________ .._________ 913 

9-111 Processing of Infringement Claims___________________________ 913 

PART 2-COPYRIGHTS 

9-200 Scope of Part __________________________________ ..:._________ 914 

9-201 Government Use and Publication of Copyrighted Material____ 914 

9-202 License Under Copyrightable Material______________________ 914 

9-203 Material in which NoAdverseCopyrightShouldBe Established_ 915 

9-204 Contracts for Motion Pictures_____________________________ 915 

U S. GOVERNMENT PRINTING OFFICE1 1141 

For sale by tho Superintendent of Dooumcnts..1. U.S. Government Printing Office, "Washington 25, D. C 

rrico 10 cents 

ARMED SERVICES PROCUREMENT REGULATIONS 

822904-49-1 
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REF ID:A68976 

SECTION IX 

PATENTS AND COPYRIGHTS 

901 

9-001 Effective Date of Section. This section shall be complied with 

on and after 1 July 1949; and the contract clauses set forth in this section 

shall be inserted, whenever applicable, in all contracts executed as of a date 

on or after 1July1949. Compliance with this section, and use of the contract 

clauses set forth herein, is authorized from the date of issuance. 

Part 1-Patents 

9-100 Scope of Part. This part sets forth the policy of the Departments 

in connection with patents and related matters, and prescribes contract clauses 

for the purposes of protecting the Government against patent risks in supply 

contracts and securing to the Government the patent rights to which it is 

entitled under research or development contracts. 

9-101 Definitions. As used in this part, the following terms have the 

meanings set forth below, irrespective of the type or form of contract, the 

method of contracting, or the source of funds obligated thereby: 

9-101.1 Research or Development Contract. The term "research or development contract" means any contract under which payment is to be made 

for experimental, developmental or research work. 

9-101.2 Supply Oontract. The term "supply contract" means any contract for supplies as defined in paragraph 1-201.8 of this regulation, but does 

not include any research or deYelopment contract as defined in paragraph 

9-101.1. 

9-101.3 Foreground Patent. The term "foreground patent" means a 

patent based upon inventions, improvements or discoveries conceived or first 

actually reduced to practice in the course of performing a research or development contract, or in the course of performing any prior e::s:perimental, developmental or research work done upon tl1e understanding that a contract 

would be a \Varded. 

9-101.4 Baclr.·g1•ound Patent. The term "background patent" means a 

patent, other than a foreground patent, based upon inventions which relate 

specifically to tl1e manufacture, construction or use of the subject matter of the 

contract and under which tl1e contractor has acquired, or prior to completion 

or final settlement of the contract may acquire, the right to grant a license 

without obligation to pay compensation to others solely on account of such 

grant. 

9-102 Notice and Assistance. In order that the Government may be 

notified of claims of infringement asserted against a contractor or its subcontractor in connection with the performance of Government contracts, and 

in order that the Government may obtain necessnry assistance from a contractor in the event of patent infringement litigation, the follO\ving clause shall 

ARMED SERVICES PROCUREMENT REGULATION 1[9-102 
REF ID:A68976 

902 PATENTS AND COPYRIGHTS 

be included in all research or development contracts and all supply contracts, 

in excess of $1,000: 

NOTICE AND ASSISTANCE REGARDING PATENT INFRINGEMENT 

(a) The Contractor agrees to report to the Contracting Officer, promptly 

and in reasonable written detail, each claim of patent infringement based 

on the performance of this contract and asserted against it, or against any 

of its subcontractors if it has notice thereof. 

(b) In the event of litigation against the Government on account of 

any claim of infringement arising out of the performance of this contract 

or out of the use of any supplies fUrnished or construction work performed 

hereunder, the Contractor agrees that it will furnish to the Government, 

upon request, all evidence and information in its possession pertaining 

to the defense of such litigation. Such information shall be furnished 

at the expense of the Government except in those cases in which the 

Contractor has agreed to indemnify the Gove1·nment against the claim 

being asserted. 

9-103 Reporting of Royalties. The Government has acquired patent 

rights under a large number of inventions as a result of Government-sponsored 

research and development or by other means. It is not equitable that royalties 

be charged to the Government in connection with procurement by the Departments where the Government has a license or other patent rights under the 

inventions for which the royalties are charged. In order that the Departments 

may be informed regarding royalty payments to be made by a contractor in 

connection with any procurement in excess of $10,000, the amount of which 

royalty payments is reflected in the contract price to the Government or is 

to be reimbursed by the Government, the Contracting Officer shall, in the case 

of negotiated contracts in excess of $10,000, either (i) obtain from the contractor information concerning royalty payments expected to be made in 

connection with the proposed procurement, together with the names of the 

licensors and either the patent nwnbers involved or such other information 

as will permit identification of the patents or other basis on which royalties 

are to be paid, or (ii) obtain from the contractor a certificate tliat the contract 

price includes no amount representing the payment of any royalty by the 

contractor directly to others in connection with the performance of the contract, or (iii) insert in the contract the clause set forth below, entitled "Reporting of Royalties." With respect to any advertised contract which may 

involve the payment of royalties by a contractor in the performance thereof, 

the clause set forth below, entitled "Reporting of Royalties", shall be included 

in the solicitation of bids as one of the general contract provisions or conditions. 

The clause referred to is as follows: 

REPORTING OF ROYALTIES 

If this contract is in an amount which exceeds $10,000, the Contractor 

agrees to report in writing to the Contracting Officer, during the performance of this contract and prior to its completion or final settlement, 

tl1e amount o:f any royalties or royalty rates paid or to be paid by it directly 

to others in cQJll1ection with the performance o:C this contract, together 

with the names and addresses of licensors to ·whom such payments are made 

and either the patent numbers involved or such other information as will 

U9-103 AR...'\llED SERVICES PROCUREllENT REGULATION 

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REF ID:A68976 

PATENTS 903 

permit identification of the patents or other basis on which royalties are 

to be paid. Where the Contractor's compliance with the foregoing reporting requirement is found by the Contracting Officer to be impracticable 

because of the size of the Contractor's business or because of the nature of 

its accounting procedures, the Contractor may furnish one or more reports, based on its established accounting periods and covering the entire 

contract period, of royalties in excess of $1,000 (if computed on an annual 

basis) paid or to be paid to each licensor on the Contractor's over-all 

business, together with such other information as will permit identification of the patents or other basis on which roy-alties are to be paid, in 

which event the Contractor shall furnish the Contracting Officer, upon his request and at Government expense, an allocation of sucl1 royalty payments to Government business or to the work or supplies covered by this 

contract; reference to any such periodic royalty reports, previously 

furnished to any Government agency and covering the period of performance of this contract, shall constitute compliance with the reporting 

requirement of this clause. 

The following provision may be added to the above clause, at the option of the 

Contracting Officer: 

"If this contract is in an amount which exceeds $10,000, and no royalties 

or royalty rates are paid or to be paid directly to others under the circumstances set forth above, the Contractor agrees so to report in writing to 

the Contracting Officer prior to completion or final settlement of this 

contract." 

9-104 Classified Contracts. Unauthorized disclosure of classified subject matter, whether in a patent application or resulting from the issuance of 

a patent, may be a violation of the Espionage .Act {18 U.S. Code, Chapter 37) 

and related statutes, and may be contrary to the interests of national security • 

In order that necessary security may be adequately preserved, the following 

clause shall be included in every classified research or development contract 

and every classified supply contract: 

FILING OF P .A.TENT APPLICATIONS 

(a) While and so long as the subject matter of this contract is classified 

"Secret" or higher, the Contractor agrees that, before filing or causing 

to be filed a patent application disclosing any of said subject matter, it 

will refer the proposed application to the Contracting Officer for determination whether, for reasons of national security, such application 

should be kept secret or the issuance of a patent thereunder otherwise 

delayed, under .Pertinent statutes or regulations; and the Contractor agrees 

to observe any mstructions given by the Contracting Officer in this regard, 

which instructions may inClude a direction not to file such application 

so long as the Contracting Officer considers that such filing would jeopardize national security. 

(b) While and so long as the subject matter of this contract is classified 

"Corifidential" or higher, and if the Contractin~ Officer determines that 

there is no other practical means for maintaimng the security of said 

subject matter, the Contractor agrees to assi~ and conve:y to the Government upon request the entire right, title and mterest in ana to each United 

States patent application discloi¥ng said subject matter and filed by or on 

behalf of the Contractor, the title to the assigned patent application to be 

h;eld in t:r:ust by the G?vernment subject to .reversion of the entire right, 

title and mterest therem to the C'ontractor (1) UP.on allowance of the said 

apJ_?lication and payment of the final fee, or (ii) upon the mailin~ of 

notice by the Contracting Officer to the Contractor that disclosure of the 

subject matter of the application will no longer jeopardize security . 

ARMED SERVICES PROCUREMENT REGULATION U9-104 
904 

REF ID:A68976 

PATENTS AND COPYRIGHTS 

Nothing contained in this _paragraph shall (A) ap)_)ly to any ,Patent application assigEed to the Government under any other prov1s1on of this 

contract or (J:S) enlarge or diminish the rights granted to or reserved 

by the Government or the Contractor \Yith respect to said application or 

the invention covered thereby, except to the extent expressly provided in 

this clause. 

(c) While and so long as lhe subjecL mutter of this contract is classified 

"Corifidential," the Contractor agrees to furnish to ihe Contracting Officer, 

at the time of or prior to filing or causing to be filed a patent npplication 

disclosing any of said subject matter, a copy of such application for determination whether, for reasons of national security, such application 

should be kept secret or the issuance of a patent thereunder otherwise delayed, under pertinent statutes or regulations; and the Contractor agrees 

to observe any instructions of the Contracting Officer in this regard. (d) While and so long as the subject matter of this contract is classified 

"Restricted," the Contractor shall be governed by the provisions of the 

clause of this contract entitled "Military Security Requirements." 

9-105 Patent Indemnification of Government by Contractor. In order 

that the Govermnent may be protected :Crom liability for patent infringement, 

a contract clause providing for appropriate indemnification shall be used in 

accordance with the provisions set forth below : 

(a) The following clause shall be included in every supply contract in 

excess of $1,000 which calls exclusively for standard commercial supplies: 

PATENT INDEMNITY 

The Contract.or agrees to indemnify the Government and its officers, 

agents and employees against liability, including costs and expenses, for 

infringement upon any Letters Patent of the United States (except Letters 

Patent issued upon an aJ?plication which is now or may hereafter be, for 

reasons of national security, ordered by the Government to be kept secret 

or otherwise withheld from issue) arising out of the performance of this 

contract or out of the use or disposal by or for the account of the Government of su,Pplies furnished or construction work performed hereunder. 

The foregomg indemnity shall not apply unless the Contractor shall have 

been informed as soon as practicable by the Government of the suit or 

action alleging such infringement, and shall have been given an opportunity to present recommendations as to the defense thereof; and further, 

such indemnity shall not avply in any one of the following situations: 

(i) any infringement resultmg from the addition to any such supplies of 

other supplies not furnished by the Contractor for the purpose of such 

addition; (ii) :my settlement of a claim of infringement made without 

the consent of the Contractor, unless required by final decree of a court 

of competent jurisdiction; (iii) any claim of infringement arising from 

use or disposal outside the sco_I!e of any license limitation under which 

the Contractor is bound, :erov1ded that the Contractor has notified the 

Government of the limitation prior to first delivecy under this contract; 

(iv) any infringement necessarily resulting from clianges (other than the 

substitution of another standard commercial part or component manufactured or sur,plied by the Contractor) ordered pursuant to this contract, 

or from spec1ffo \vritten instructions given by the Contractin« Officer 

directing a manner of performing the contract not normally utilized by the Contractor. 

(b) Certain supply contracts call for items or part.s thereof which are 

standard commercial supplies and also for items or parts thereof which are 

not standard commercial supplies. In any such contract the indemnity 

clause set forth in (a) above shall be inserted, and the following paragraph 

1(9-105 ARMED SERVICES PROCUREMENT REGULATION 

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REF ID:A68976 

PATENTS 905 

shall be added at the end of such clause, for the purpose of excluding from 

its application such specific items or parts thereof as are not standard 

commercial supplies: 

"The foregoing shall not apply to the followin~ contract items or parts thereof, which are not slandard commercial supplies: 

(List the items or parts thereof to be excluded.)" 

9-106 Authorization and Consent. Under the Act of June 25, 1948 (28 

U.S. Code 1498) which replaces the Act of June 25, 1910, as amended (35 U.S. 

Code 28), ai~y suit. for infringement of a patent by a contractor or by any subcontractor (including lower-tier subcontractors) in the performance of a Government contract must be brought against the Government in the Court of 

Claims, and not against the contractor, if the Government gives its authorization or consent to the manufacture or use of t11e patented inYention. The contractor is thereby protected from injunctive action in the performance of a 

Government contract, although the Government may not bear the ultimate 

liability in the event of recovery in the Court of Claims, such liability being 

dependent upon whether or not there is a Patent Indemnity clause in the contract. Therefore, both a Patent Indemnity clause (as set forth in paragraph 

9-105) and an Authorization and Consent clause may be included in the same 

contract. The following Authorization and Consent clause is approved for 

use in any contract: 

AUTHORIZATION ~t\.ND CONSENT 

The Government hereby gives its authorization and consent (without 

_prejudice to its rights of mdemnification, if such rights are provided for 

m this contract) for all use and manufacture, in the performance of this 

contract or an:y part 11ereo£ or any amendment hereto or any subcontract 

hereunder (including any lower-tier subcontract), of any patented invention (i) embodied in the structure or composition of any article the delivecy of which is accepted by the Government under this contract, or (ii) utilizea 

in the machinery, tools or methods the use of which necessarily results from 

compliance by the Contractor or the using subcontractor with (a) specifica- tions or written provisions now or hereafter forming a part of this contract, or (b) specific written instructions given by the Contracting Officer 

directing the manner of performance. 

The word "necessarily" in "(ii)'' of the above clause may be deleted in any 

research or development contract, or in any contract which includes a pat.ent 

indemnity clause as set forth in paragraph 9-105. 

9-107 Patent Rights Under Research or Development Contracts. 

9-107.1 License Under F01·eground Patents. Under any resea1·ch or 

development contract, the Government should receive at least a royalty-free 

license to practice or have practiced any invention conceived or first actually 

reduced to practice in the course of performing the contxact or in the course 

of performing any prior e::s:perimental, developmental or research work done 

upon the understanding that a contract would be awarded. In certain circumstauces, however, as where (i) a contractor has sp"ent large sums of money 

in developing an imention to the point ihat its practicability has been estabARMED SERVICES PROCUREMENT REGULATION u 9-107.1 
REF ID:A68976 

906 PATENTS AND COPYRIGHTS 

lished or has otherwise established its practicability as by engineering design, 

or (ii) the use of a basic material developed entirely outside of any Government contract is involved, it is proper to exclude any such invention or material from• a general license to the Govermnent or otherwise to negotiate with 

respect to the Goven1ment's rights in such invention or material. The contract 

cost or price should in no event be increased merely by reason of the inclusion 

of a Patent Rights clause. For the purposes of this paragraph, the following clause shall be included in all research or development contracts except 

as is proT"ided in paragraph 9-107.2: 

PATENT RIGHTS 

(a) As used in this clause, the following terms shall have the meanings 

set :forth below : 

(i) The term "Subject Invention" means 9:ny invention, impro,•ement 

or discovery {whether or not patentable) concelved or first actually reduced 

to practice either (A.} in the performance of the experimental, developmental or research work called for under this contract, or (B) in the 

performance of any experimental, developmental or research work relatmg to the subject matter of this contract which was done upon the understanding that a contract would be awarded. 

(ii) The term "Technical Personnel" means any person employed by 

or working under contract with the Contractor (other than a subcontractor 

whose res:ponsibilities with respect to rights accruing to the Government 

in inventions arising under subcontracts are set forth in paragraphs 

(f), (g) and (h) of this clause), provided that such person, by reason oft.he 

nature of his duties in connection with the J.lerformance of this contract, 

would reasonably be expected to make inventions. 

(iii) The tenns "subcontraet" and "subcontractor" mean any subcontract or subcontractor of the contractor, and any lower-tier subcontract 

or subcontractor under this contract. 

(b) The Contractor agrees to and does hereby grant to the Government 

an irrevocable, nonexclusive, nontransferable and royalty-free license to 

practice, and cause to be practiced for the Govermnents throu~hout the 

world, eacb. Subject Invention in the manufacture, use, and disposition 

according lo law, of any article or material, and in the use of any method; 

proiiided, however that with respect to (i) any Subject Invention made 

by other than Technical Personnel, (ii) any Subject Invention conceived 

prior to any performance of this contract as set forth in pamgraph (a) 

above but first actually reduced to practice in the course of any such 

performance, and (iii) the practice of any Subject Invention in foreign 

countries, the said license and other rights hereinafter provided shall be 

to the extent of the Contractor's right to grant the same without incurring 

any obligation to pav royalties or other compensation to others solely on 

account of said grant. Nothing_ contained in this paragraph shall be 

deemed to grant any license under any invention other than a Subject 

Invention. Any license granted herein shall not convey any ri_ght to 

the Government to manufacture, have manufactured, or use any Subject 

Invention for the J!Urpose of providing services or supplies to the general 

public in competition with tl1e Contractor or the Contractor's commercial 

licensees in the licensed fields. 

(c) The Contractor agrees as follows: (i) to make written disclosure 

promptly to the Contracting Officer of eaCh Subject Invention which 

reasonably a_ppears to be patentable and to exert all reasonable effort to 

make such disclosure not later than six months after first publication, 

public use or sale; (ii) to specify, at the time of such disclosure, whether 

or not said Subject Invention has been or will be claimed in a United States 

patent application and unless it thereafter notifies the Government to the 

1!'9-107.1 ARMED SERVICES PROCURID.IENT REGULATION 

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REF ID:A68976 

PATENTS 907 

contrary not later than eight months after first publication, _public use 

or sale, to file or cause to be filed in due form and time a Umted States 

patent application covering each Subject Invention so specified; (iii) to 

the extent of the Contractor's right to do so, to deliver to the Contracting 

Officer such duly executed instruments (prepared by the Government) of 

assignment, application _pnpers nnd rightful oaths as are necessary to 

vest in t11e Government the sole and exclusive ownership, and the right to 

apply for and prosecute patent applications covering, each Subject Invention which the Contractor does not specify as aforesaid (or hnvin~ so 

specified, thereafter notifies the Government to the contrary), subJect, 

however, to the reservation o:f a nonexclusive and r(,>yalty-:free license 

thereunder to the Contractor (and to its associated and affiliated companies, if any, within the conwrate structure o:f which the Contractor is a part), 

which license shall be assigti;able to the successor of that part of the 

Contractor's business to which it pertains; (iv) to :furnish promptly to 

the Contracting Officer on request an irrevocable power of attorney to 

inspect and make copies of each United States patent application as filed 

by or on behalf of the Contractor covering any Subject Invention; (v) in 

the event the Contractor elects not to continue prosecution of anY. such 

United States patent application filed by the Contractor, to so notify the 

Contracting Officer not less than sixty days before the expirntion of the 

response period, and upon written request, to deliver to the Contracting 

Officer, to the extent of the Contractor's right to do so, a duly executed 

assignment to the Government of the entire ri~hts to such patent application and any Subject Invention claimed therem subject to a reservation 

as specified in (iii) above; and (vi) to deliver to the Contracting Officer 

duly executed instruments :fully cori.firmatory of any license rights herein 

agreed to be granted to the Government. If, to the best of the Contractor's 

knowledge and belief, no inventions have been conceived or first actually 

reduced to practice under this contract, the Contractor shall so certify to 

the Contracting Officer. 

(d) The Contractor agrees to and does hereby grant to the Government 

to the full extent of the Contractor's right to do so without payment of 

compensation to others, the right to reproduce, use and disclose for governmental purposes (including the right to give to :foreign governments for 

their use as the national interest of the United States may demand) all 

or any part o:f the reports, drawings, blueprints, data and technical 

information specified to be delivered by the Contractor to the Government 

under this contract· provided, however, that nothing contained in this 

paragraph shall be deemed, directly or by implication, to want any license 

under any patent now or hereafter issued or to grant any right to reproduce anythi~g else called for by this contract. 

( e) Until the Contractor has delivered to the Government the disclosures 

required by paragraph (c) (i) of this clause and the information as to 

any subcontractor required by paragraph (g) of this clause, there shall 

be withheld :from final payment under this contract ten percent (10%) 

of the contract price, or $5,000, whichever is smaller; provided however, 

that the withholding o:f the aforesaid amount, or subsequent payment 

thereof to the Contractor, shall not be construed as a waiver of any rights 

accruing to the Govemment under this contract; and provided further, 

that any amount so witJ1held under t11is paragraph shall not be in addition 

to any amounts withheld under other provisions of this contract. This 

paragraph shall not be construed as requiring the Contractor to withhold 

any nmounts :from a subcontractor to enforce compliance with the patent 

provisions of a subcontract. 

( f) The Contractor agrees to exert all reasonable effort to negotiate for 

the inclusion in any subcontract hereunder of $3,000 or more, in which 

payment is to be made for experimental, developmental or research work, 

of this patent rights clause or one approved by the Contracting Officer. In 

ARMED SERVICES PROCUREMENT REGULATION 

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REF ID:A68976 

PATENTS AND COPYRIGHTS 

the event of refusal by a subcontractor to accept such patent rights clause, 

the Contractor shall obtain the written authorization of the Contracting Officer (which authorization may be granted with respect to a particular 

subcontract) to proceed with the subcontract, an<l shall cooperate with the 

Government in the negotiation with such subcontractor of a mutually 

acceptable pntent rights clause; provided however, that the Contraclor 

shall in any event require the suocontractor to grant to the Government 

patent rights under Subject Inventions of no less scope and on no less 

favorable terms than those which the Contractor has under such subcontracts, exc~pt that in no event shall the subcontractor be required to 

grant to the Government patent rights in excess of those herein agreed 

to be granted to the Government by the Contractor. 

(g) The Contractor agrees to notify the Contracting Officer in writing 

of any subcontract containing a patent rights clause, to fumish to the 

Contracting Officer a copy of such clause, and promptly to notify the 

Contracting Officer when such subcontract is completed. It is understood 

1.hat with respect to such subcontract clause, the Government is a third 

party beneficiary; and the Contractor hereby assigns to the Government 

all the rights that the Contractor would have to enforce the obligations 

of the suocontractor with respect to Subject Inventions. The Contractor 

shall not be obligated to enforce the agreements of any subcontractor hereunder relating to a patent rights clause in any subcontract. 

(h) When the Contractor shows that it has been delayed in the performance of this contract by reason of its inability to obtain, under terms 

that include a suitable patent rights clause, a qualified subcontractor fo:r 

any particular part, item or function of this contract for which the Conractor itself does not have available facilities or qualified personnel, the 

Contractor's delivery dates shall be extended for a period of time equal 

to the duration of such delay; and, upon request of the Contractor, the 

Contracting Officer shall determine to what extent, if any, an additional 

extension of the delivery dates, and an increase in contract price based upon 

additional costs incurred,, are proper under the circumstances; and the 

contract shall be modified accordingly. If the Contractor, after exerting 

all reasonable effort, is unable to ol>tain a qualified subcontractor as set 

forth above, the Contractor may submit to the Contracting Officer a written 

request for we.iver or modification of the requirement that a suitable patent 

rights clause be included in the subcontract. Such request shall specifically 

state that the Contractor has used all reasonable efforts to ootain such 

qualified subcontractor and shall cite the waiver or termination provision 

liereinafter set forth. If, within thirty-five (35) days after the date of 

receipt of such request for a waiver or modification of said requirement, 

the Contracting Officer shall fail to w-ant such request, the requirement 

shall be deemed to have been waived by the Government. If 'vithin such 

period the Contractor shall receive a written denial of such request by 

the Contracting Officer, this contract shall thereupon automatically terminate and the rights and obligations of the parties shall be governed by 

the provisions of the clause of this contract entitled "Termination for the 

Convenience of the Government" just as if a notice of termination had 

been delivered to the Contractor s_pecifying that the contract was terminated for the convenience of the Government. 

9-107.?J Title to ForcgrO'lllnd Patents. Although with respect to foreground patents it is the policy of the Departments normally to acquire only 

license rights thereunder, nevertheless in some circumstances the Government 

should obtain full title to such patents, subject in most cases to a license to the 

contractor. Ordinarily, ho\'\"ever, in such circumstances there should be no 

increase in the contract cost or price, n1erely because the Government acquires 

title. 

~9-107.2 ARMED SERVICES PROCUREMENT REGULATION 

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REF ID:A68976 

PATENTS 909 

Examples of instances where it is proper and desirable for the Government 

to acquire title are as follows: 

(a) where the contractor does not normally seek patent protection for 

its development projects; 

(b) where one contractor has assembled a group of research scientists 

through the cooperation of other similar firms, institutions or organizations; 

(c) where the contractor, in completing a final phase of a development 

project, utilizes the work of other cooperating persons, institutions or organizations, and it would be unfair to such other persons, institutions or 

organizations to allow the contractor to retain title to inventions resulting 

from such developments; 

( d) where the major portion of the work under the contract is to be done 

in Government-operated laboratories and with Government-furnished equipment; 

( e) where the contractor is an organization, the principal business of 

which is doing research or development work for the public, and which does 

not customarily retain patent rights under inventions made by it in the 

research or development work conducted for others, provided that the contractor may be permitted to retain title in such case (subject to a license to 

the Government as set forth in paragraph 9-107.1) if proper adjustment 

therefor is made in the contract cost or price; 

(f) where the Contracting Officer ascertains that title to foreground 

patents is necessary for military security and so notifies the contractor prior 

to its beginning performance. 

When it is desirable, as set forth above, for the Government to acquire 

title to foreground patents, the following paragraphs (a), (b) and (c) shall 

be substituted for the corresponding paragraphs of the Patent Rights clause 

set forth in paragraph 9-107.1: 

"(a) As used in this clause, the following terms shall have the meanings 

set forth below : 

(i) The term "Subject Invention" means any invention, improvement or 

discovery (whether or not patentable) conceived or first actually reduced to practice (unless disclosed in a patent application filed prior 

to beginning the performances hereinafter set forth) either (A) in the 

performance of the experimental, developmental or research work called 

for under this contract, or (B) in the performance of any experimental, developmental or research work relating to the subject matter of t11is contract which was done upon the understanding that a contract would be 

awarded. 

(ii) The term '•Technical Personnel" means any person employed by 

or working under contract with the Contractor (other than a subcontractor 

whose responsibilities with respect to rights accruing to the Government 

in inventions arising under subcontracts are set forth in paragraphs (f), 

(g) and (h) of this clause), provided that such person, by- reason of the 

nature of his duties in connection with the performance of this contract, 

would reasonably be expected to make inventions. 

(iii) The terms "subcontract" and "subcontractor" mean any subcontract or subcontractor of the contractor, and any lower-tier subcontract 

or subcontractor under this contract. 

(b) The Contractor agrees to and does hereby _grant to the Government 

all right, tiile and interest in and to each SubJect Invention subject to 

the reservation of a nonexclusive and royalty-free license to the Contractor 

ARMED SERVICES PROCUREMENT REGULATION 1{9-107.2 
REF ID:A68976 

910 PATENTS AND COPYRIGHTS 

to practice any such invention; provided, however, that with respect to 

any Subject Invention made by other than Technical Personnel and with 

respect to the practice of any Subject Invention in foreign countries, said 

grant and other rights heremafter provided shall be limited to the Contractor's right. to assign or grant the same without incurring any obligation 

to pay royalties or other C'ompensation to others solely on account of said 

grant. The Contractor further agrees to and does hereby grant to the 

Government with respect to any invention disclosed in a patent application 

of the Contractor filed prior to beginning the Rerformances set forth above 

and first actually reduced to practice by the Contractor in any such performance, an irrevocable, none~clusive, nontransferable and royalty-free 

license to practice, and cause to be vracticed for the Government throughout the world_, each such inventfon m the manufacture, use, and disposition according to law, of any article or material, and in the use of any method; 

pro'l>ided, however, that with respect to (i) any such invention made by 

other than Technical Personnel and (ii) the practice of any such invention 

in foreign countries, the said license shall be to the extent. of the Contractor's right to grant the same without incurring any obligation to pay 

royalties or other compensation to others solely on account of said grant. 

(c) The Contractor agrees as follows: (i) to make written disclosure 

promptly to the Contrncting Officer of each Subject Invention, and of 

each mvention under which a license is acquired pursuant to paragraph 

(b) above, which reasonably appears to be r>atentable, and to exert all 

reasonable effort to make such disclosure not later than six months after 

first publication, public use or sale ; (ii) to deliver to the Contracting Officer 

such duly executed instrμments (:prepared by the Government) of assignment, applic:ation pa.Pers and rightful oaths relating to each Subject 

Invention, title to which vests in the GQvernment pursuant to this clause, 

as the Contracting Officer may require to enable the Government to file ancl 

prosecute patent applications therefor in any country, and to assign and 

record title to such applications; (iii) to disclose to the Contracting Officer 

(either by giving the patent numbe1· or a copy of the patent application), 

prior to completion or final settlement of this contract, each invention 

under which the Government has been granted a license J>Ursuant to the 

second sentence of paragraph (b) above, and to deliver to the Contracting Officer duly executed instruments fully confirmatory of such license rights. 

If, to t11e best of the Contractor's Jmowledge and belief no inventions have 

been conceived or first actually reduced to practice under this contract, the 

Contractor shall so certify to the Contracting Officer." 

9-107.$ Reproduction Rights UnderB(J,(Jkground Patents. The grant of 

a license or title to the Government under :foreground patents, as hereinabove 

in this part set .forth, does not give the Government a free right to practice 

such foreground patents if the contractor owns or has control of a dominant 

background patent. It is therefore proper and desirable in the case of certain 

research or development contracts that the Government should obtain, under 

certain_ equitable circumstances as hereinafter set forth, a reproduction right 

(a limited license right) under such background patent or patents in addition 

to title or license under foreground patents as provided in paragraphs 9-107.1 

and 9-107.2 above. Thus, reproduction rights should be obtained where there 

are benefits to the contractor, such as those set forth below, and where it is 

believed that the manufa.cture or use of the subject matter of the contract, 

or parts, modifications or improvements thereof, will involve the practice of 

inventions covered by contractor's background patents. The contract price 

should not be increased by reason of the acquisition of such reproduction 

""9-197.3 ARMED SERVICES PROCUREMENT REGULATION 

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PATENTS 911 

rights. Representative equitable circumstances which should be taken into 

acco1mt by the Contracting Officer in this connection are as follows: 

(a) a new research objective or idea, either new generally or new to the 

contractor's fields of activity, particularly 'vhen the Government furnishes 

the contractor with valuable technical information; 

(b) aid to the contractor in conducting experimental, developmental or 

research work which the contractor would otherwise have to conduct at his 

own expense and which leaves the contractor with valuable commercial 

rights; 

( c) opportunity for the contractor to explore fields too speculative to be 

undertaken commercially but which have commercial possibilities; 

( d) aid to the contractor through the furnishing of the knowledge and 

experience of the Government or of scientific or technical personnel in connection with the work to be performed under the contract, together with 

substantial aid and assistance by such personnel, beyond that normally 

furnished in a research or development contract of the type involved; 

( e) use of Government facilities for 'vorking upon or testing new developments in connection with the contract to a degree beyond that normally 

provided in a research or development contract of the type involved. 

While the particular wording of a provision granting such rights to 

the Government is a matter of negotiation in each case, an approved paragraph 

for addition to the Patent Rights clause prescribed by paragraph 9-lO'l.1 or 

9-lO'l.2, whichever is applicable, is as follows: 

"(i) In addition to the rights granted to the Government in the foregoing paragraphs of this clause, the Contractor hereby grants to the 

Government, under any patents now or hereafter issued 'vith respect to 

which the Contractor now has, or prior to completion or final settlement 

of the contract may acquire, the right to grant licenses without becoming liable to pay compensation to others because of such grant. the right to 

reproduce or to have reproduced articles or materials sulistantially the same 

as those delivered to tl1e Goverrunent hereunder, and any modifications 

or improvements thereof, and to practice or cause to be practiced processes developed in the performance of tl1is contract, and to use in their entirety and dispose of in accordance with law articles or materials so reproduced. 

The acceptance or e."Cercise by the Government of the aforesaid right shall 

not prevent the Government at any time from contesting the enforceability, 

validity or scope of, or title. to, any patent under ''"hich a right is ~anted 

by this paragraph. Any rights granted to the Government by tlus paragraph shall not convey any right to tl1e Government to reproduce or have 

reproduced any article or material, or to practice or cause to be practiced 

any process, for the purpose of providing services or supplies to the general public in competition with the Contractor or the Contractor's commercial 

licensee in the licensed fields. This paragraph shall not be required to be 

included in any subcontracts hereunder." 

9-10'1.J,. Foreign Patent Rights. Executive Order 9865 of June 14, 1947, 

requires that all Government departments and agencies shall, whenever practicable, acquire the right to file foreign patent applications on inventions resulting from research conducted or financed by the Government. Pursuant to 

such Executive Order, the Departments shall, whenever practicable, include 

in research or development contracts (other than contracts containing the 

Patent Rights clause prescribed by paragraph 9-107.2) a commitment by the 

ARMED SERVICES PROCUREMENT REGULATION 119-107.4 
REF ID:A68976 

912 PATENTS AND COPYRIGHTS 

contractor to convey to the Government the rights necessary to enable the 

Government to prosecute applications and obtain patents on such inventions 

in foreign countries. For the purposes of this paragraph, the following clause 

is approved for use: 

FOREIGN PATENT RIGHTS 

The Contractor agrees, notwithstanding any other provision in this 

contract to the contrary, (i) to grant to the Government, U:QOn request, 

title to the foreign rights m eaCh Subject Invention (as defined in the 

clause of this contract entitled "Patent Rights"), (ii) to inform the Contracting Officer, at the time of making the disclosure provided for under 

the terms of paragraph (c) (i) of the clause of this contract entitled 

"Patent Rights," whether or not there has been a publication of such 

invention and if so, the date and identity of such publication and (iii) 

to deliver to the Contracting Officer such duly executed instruments (prepared by the Government) of assignment, application :papers and rightful 

oaths as are necessary to vest in the Government with respect to each 

Subject Invention (A.) the sole and exclusive ownership in any fo:reign 

patent application and any patent that may issue thereon, and (B) the 

right to apply for and prosecute such foreigii patent applications. 

9-107.5 Oontra,cts Relatinu to Atomic Energy. The provision set 

forth below shall be inserted as part of the Patent Rights clause prescribed 

by paragraph 9-101.1 in all research or development contracts relating to 

atomic energy . .A:ny request for deviation from the following provision shall 

be forwarded by the Contracting Officer to the designated section of the Department concerned for reference to the Atomic Energy Commission for determination by it as to whether the provision set forth below must be included in the 

-contract or whether such provision may be modified. The provision referred 

to is as follows : 

" ( ) With respect to any Subject Invention made by employees of 

the Contractor (except clerical and manual labor personnel who do not 

have access to technical data), and relating to the production or utilization 

of fissionable material or atomic energy within the purview of the Atomic 

Energy Act of 1946 {42 U.S. Code lSOl-1819), the Contractor agrees (i) 

to furnish to the United States Atomic Energy Commission {hereinafter 

in this paragraph referred to as 'the Commission') through the Contracting 

Officer complete information regarding such Subject Invention, the Commission to have the sole and conclusive power to determine whether and 

where a :r>atent application shall be filed, and to determine the disposition 

of the title to and ri~hts under any such 9:PP1icntion or any patent that 

may issue thereon; (h) to obtain the execution of ancl deliver to the Commission all documents relating to each such Subject Invention and to 

do all things necessar:y or :r>roper to carry: out any determination of the 

Commission, made under subparngra~h (i) above; (iii) unless otherwise 

authorized m writing by the Conumssion, to obtain ~atent agreements 

from all such employees to effectuate the purposes of tlus J?aragraph; and 

{iv) unless otherwise authorized in \Vriting by the Comnussion, to insert 

this paragraph in all subcontracts. No claim for pecuniary award or compensation under the provisions of the Atomic Energy Act of 1946 shall 

be asserted by the Contractor or its employees with respect to any Subject Invention covered by this paragraph." 

9-108 Follow-Up of Patent Rights. Appropriate systems of follow-up 

in connection with research or development contructs should be maintained 

by the Departments in order that inventions in which the Government may 

1[9-108 ARMED SERVICES PROCUREMENT REGULATION 

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PATENTS 913 

have an interest may be properly identified, and formal agreements evidencing 

the Government's rights therein be obtained. 

9-109 Adjustment of Royalties. The Royalty Adjustment Act of 1942 

(35 U. S. Code 89-96) provides a means of reducing royalties charged as an 

incident of cost in Government procurement when in the opinion of the Secretary of any Department or his authorized representative such royalties are 

excessive. Action to be taken under said Act shall be in accordance with pro- · 

cedures prescribed by each respective Department. 

9-110 Patent Interchange Agreement. The Governments of the United 

States and of the United Kingdom have entered into a patent interchange 

agreement which provides, among other things, for the use of patented information within the respective countries for the effective period of the agreement and a method of processing claims arising thereunder. Patent claims 

by nationals of the United Kingdom asserted against any of the Departments 

shall be referred to the Interdepartmental Patent Interchange Committee in 

accordance \Vith procedures prescribed by each respective Department. 

9-111 Processing of Infringement Claims. The Departments shall 

process claims for alleged unauthorized use of inventions in accordance with 

instructions of euch respective Department • 

ARMED SERVICES PROCURE1\1ENT REGULATION U9-lll 
REF ID:A68976 

914 PATENTS AND COPYRIGHTS 

Part 2-Copyrights 

9-200 Scope of Part. This part sets forth (i) the policy of the Departments as to use and publication of copyrighted materials and (ii) approved 

contract clauses in connection with the procurement of material subject to 

copyright. 

9-201 Go,•emment Use and Publication of Copyrighted Material. 

The Departments recognize that the owner of copyrighted material has a 

property right in such material and it is the policy of the Departments that 

copyrighted matter will not knowingly be incorporated in publications prepared by or for the Departments, except with the written consent of the 

copyright owner. The attention of copyright owners should be invited in 

appropriate instances to the Act of 30 July 1947 (li U.S. Code 8), providing 

that "the publication or republication by the Government, either separately or 

in a public document, of any material in which copyright is subsisting shall 

not be taken to cause any abridgement or annulment of the copyright or to 

authorize any use or appropriation of such copyright material without the 

consent of the copyright proprietor." 

9-202 License Under Copyrightable Material. In any contract under 

which material subject to copyright is furnished, the Government should receive 

at least a royalty-free, nonexclusive and irrevocable license with respect to 

such material first produced or composed.under the contract. Except under the 

circumstances described in paragraphs 9-203 and 9-204 below, it shall be the 

policy of the Departments t.o acquire only such license right in any copyrightable material, leaving the Contractor free to take out a copyright in his 

°'vn name if he so desires. In the event the contractor should incorporate 

copyrighted or copyrightable material already owned by it or others in the 

material furnished to the Government, the license should contain a provision 

whereby the Government is also granted a royalty-free license with respect to 

such material if the contractor may grant such a license without becoming 

liable to pay compensation because of such grant. The foregoing generally 

applies whether the material subject to copyright is the main item of a contract 

or is merely incidental. For the purposes of this paragraph, the following 

contract clause is approved for use: 

COPYRIGHT 

(a) The Contractor agrees to and does hereby grant to the Government, 

and to its officers, agents and employees acting within the scope of their 

official duties, (i) a royalty-free, nonexclusiYe and irrevocable license to 

reproduce, translate, publish, use, and dispose of, and to authorize others 

so to do, all copyriglitable material first produced or composed and delivered to t.he GoYernment under this contract by the Contractor, its employees or any individual or concern specifically employed or assigned to 

originate and prel?are such material; and (ii) a license as aforesaid under 

any and all copyrighted or copyrightable work not first produced or composed by the Contractor in the performance of this contract but which 

is incorporated in the material furnished under the contract, provided 

that such license shall be only t-0 the extent the Contractor now has, or 

prior to completion or final settlement of the contract may acquire, the 

right to grant such license without becoming liable to pay compensation 

to others solely because of sucl1 grant. 

U9-202 ARMED SERVICES PROCUREMENT REGULATION 

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PATENTS 915 

(b) The Contractor agrees that it will exert all reasonable effort to 

advise the Contracting Officer, at the time of delivering any copyrightable 

or copyrighted work furnished under this contract, of any adversely held copyri~hted or copyrightable material incorporated in any such work and 

of any mvasion of the right of privacy therein contained. 

( c) The Contractor agrees to report to the Contracting Officer, l?romptly 

and m reasonable written detail, any notice or claim of copyri~ht mfringement received by the Contractor with respect to any material delivered 

under this contract. 

9-203 Material in Which No Adverse Copyright Should Be Established. In some instances it may be desirable that copyrightable material produced under contract for the Government shall either be placed in the public 

domain or a copyright established in the name of the author and assigned to 

the Government. In such instances, an appropriate clause should be included 

in the contract, in accordance with Department procedures. Representative 

instances are the following: 

(a) histories of the respective Departments or services or units thereof; 

(b) publications pertaining to recruiting, morale, training or career 

guidance prepared for use by the Armed Services for general distribution; 

( c) copyright.able material furnished in the performance of a contract 

for personal services. 

9-204 Contracts for Motion Pictures. The clause set forth below is 

approved for use in all contracts for motion pictures or the production of 

motion pictures, and in all contracts for the preparation of motion picture 

scripts, translations, adaptations and the like: 

COPYRIGHTS 

(a) The Contractor agrees that all material form.in&: the subject matter 

of this contract and first produced in the performance of this contract shall 

be the sole l?roperty of the Government, and may not be published or 

reproduced, m whole or in :part, or in any manner or form, other than 

by the Governm~nt or with its express consent. The Contractor further 

agrees that no riciit at common law or in equit.y shall be asserted and no 

claim to copyriglit bl' statute shall be established by the Contractor in 

any material first produced in the performance of this contract. 

(b) The Contractor agrees to ~ant and does hereby grant to the Government a royalty-free, nonexcluSive and irrevocable license (i) to publish, 

translate, reproduce, use, and dispose of, in any imumer, any and all copyrighted or copyrightable material not first :produced or com1>0sed in the 

performance of tliis contract but which is mcorporated in the material 

furnished under the contract; and (ii) to authorize others so to do. 

(c) The Contractor agrees to indemnify and save and hold harmless 

the Govemment, its officers, agents and employees acting within the scope 

of their official duties against any liability, including costs and expenses, 

for (i) violation of proprietary rights copyright or right of privacy, arisin~ out of the reproduction, use or dis:(>osition of any copyrighted or 

copynghtable material furnished under this contract, or (ii) based upon 

any libelous or other unlawful matter contai11ed in said material. 

0 

ARMED SERVICES PROCUREMENT REGULATION ~9-204