Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations 36611

status referred to in section 501(e)(1),

even if they have since acquired some

other immigration status. Exceptions are

made for aliens paroled for criminal

prosecution or solely in order to testify

in some official proceedings in the

United States.

This interim rule is an interpretive

rule. For this reason, the Commissioner

of the Immigration and Naturalization

Service may properly adopt this rule

without the prior notice and comment

period that is ordinarily required. 5

U.S.C. 553(b). Because of the urgent

need to clarify the immigration status of

these aliens, and to make it clear that

they hold an immigration status referred

to in section 501(e)(1), the

Commissioner finds that good cause

exists to make this rule effective upon

publication in the Federal Register. The

Service believes that this interim rule

accurately distinguishes the

immigration status categories

established by sections 501(e)(1) and

501(e)(2), but will consider any

comments addressing this issue that are

received during the comment period.

In accordance with 5 U.S.C. 605(b),

the Commissioner certifies that this rule

does not have a significant economic

impact on a substantial number of small

entities.

Unfunded Mandate Reform Act of 1995

This interim rule is not a Federal

intergovernmental mandate, as defined

by 2 U.S.C. 658(5). For this reason, it is

not necessary to conduct the analysis

provided for under 2 U.S.C. 1532, to

develop the small government agency

plan under 2 U.S.C. 1533, to solicit

State, local or tribal government input

under 2 U.S.C. 1534, or to justify this

rule as the least burdensome alternative

under 2 U.S.C. 1535.

Small Business Regulatory Enforcement

Fairness Act of 1996

This interim rule is not a major rule,

as defined by 5 U.S.C. 804(2).

Executive Order 12866

This rule is considered by the

Department of Justice, Immigration and

Naturalization Service, to be a

‘‘significant regulatory action’’ under

Executive Order 12866, section 3(f),

Regulatory Planning and Review, and

the Office of Management and Budget

has conducted the required review.

Executive Order 12612

The regulations adopted herein will

not have substantial direct effects on the

States, on the relationship between the

Federal Government and the States, or

on the distribution of power and

responsibilties among the various levels

of government. Therefore, in accordance

with Executive Order 12612, it is

determined that this rule does not have

sufficient federalism implications to

warrant the preparation of a Federalism

Assessment.

List of Subjects in 8 CFR Part 212

Administrative practice and

procedure, Aliens, Immigration.

Accordingly, part 212 of chapter I of

title 8 of the Code of Federal

Regulations is amended as follows:

PART 212—DOCUMENTARY

REQUIREMENTS: NONIMMIGRANTS;

WAIVERS; ADMISSION OF CERTAIN

INADMISSIBLE ALIENS; PAROLE

1. The authority citation for part 212

continues to read as follows:

Authority: 8 U.S.C. 1101, 1102, 1103, 1182,

1184, 1187, 1225, 1226, 1227, 1228, 1252; 8

CFR part 2.

2. Section 212.5 is amended by

adding a new paragraph (g), to read as

follows:

§ 212.5 Parole of aliens into the United

States.

* * * * *

(g) Effect of parole of Cuban and

Haitian nationals. (1) Except as

provided in paragraph (g)(2) of this

section, any national of Cuba or Haiti

who was paroled into the United States

on or after October 10, 1980, shall be

considered to have been paroled in the

special status for nationals of Cuba or

Haiti, referred to in section 501(e)(1) of

the Refugee Education Assistance Act of

1980, Public Law 96–422, as amended

(8 U.S.C. 1522 note).

(2) A national of Cuba or Haiti shall

not be considered to have been paroled

in the special status for nationals of

Cuba or Haiti, referred to in section

501(e)(1) of the Refugee Education

Assistance Act of 1980, Public Law 96–

422, as amended, if the individual was

paroled into the United States:

(i) In the custody of a Federal, State

or local law enforcement or

prosecutorial authority, for purposes of

criminal prosecution in the United

States; or

(ii) Solely to testify as a witness in

proceedings before a judicial,

administrative, or legislative body in the

United States.

Dated: July 2, 1996.

Doris Meissner,

Commissioner, Immigration and

Naturalization Service.

[FR Doc. 96–17674 Filed 7–11–96; 8:45 am]

BILLING CODE 4410–10–M

DEPARTMENT OF ENERGY

10 CFR Part 784

Patent Waiver Regulation

AGENCY: Department of Energy.

ACTION: Final rule.

SUMMARY: The Department of Energy

(DOE) is publishing a final rule to

recodify and update a patent waiver

regulation that was incorporated in the

Department of Energy Acquisition

Regulations (DEAR) in 1984 (applicable

to contracts) and the DOE Assistance

Regulations (applicable to grants and

cooperative agreements). The final rule

contains changes that conform the

regulation provisions to post-1984

statutory amendments, including the

addition of terms and conditions for

contractor retention of patent rights

required by 35 U.S.C. 210. The rule also

contains some new clarifying provisions

and minor procedural changes to the

DOE patent waiver process.

This final rule will govern waiver of

the Department’s rights in inventions

made under contracts, grants,

cooperative agreements,

understandings, or other DOE

arrangements with entities other than

small businesses and non-profit

organizations. This rule will also apply

to all participants in cooperative

research and development agreements

(CRADAs), with both Bayh-Dole entities

and non-Bayh-Dole entities. Rights in

inventions made under DOE funding

agreements with small businesses and

nonprofit organizations are generally

controlled by 35 U.S.C. 202, which

provides, with certain exceptions, for

contractor retention of title to

inventions. However, this rule does

apply to waiver of rights in inventions

when DOE has reserved title and other

rights in funding agreements with

nonprofit organizations and small

business firms pursuant to the

exceptions in 35 U.S.C. 202.

EFFECTIVE DATE: August 12, 1996.

FOR FURTHER INFORMATION CONTACT:

Michael P. Hoffman, Office of Assistant

General Counsel for Technology

Transfer and Intellectual Property, 1000

Independence Avenue, S.W.,

Washington, D.C. 20585. Telephone

(202) 586–3441.

SUPPLEMENTARY INFORMATION:

I. Background

II. Section-by-Section Discussion of Final

Rule

III. Procedural Requirements

A. Applicable Procedures

B. Review Under Executive Order 12886

C. Review Under Regulatory Flexibility Act

D. Review Under NEPA
36612 Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations

E. Review Under Paperwork Reduction Act

F. Review Under Executive Order 12612

G. Review Under Executive Order 12778

H. Review Under the Unfunded Mandates

Reform Act

I. Background

The Government is required by law to

acquire title to inventions made under

DOE contracts, grants, agreements,

understandings, or other arrangements

with entities other than small

businesses or nonprofit organizations

pursuant to section 152 of the Atomic

Energy Act of 1954, 42 U.S.C. 2182, and

section 9 of the Federal Nonnuclear

Energy Research and Development Act

of 1974, 42 U.S.C. 5908. Both of these

acts provide that the Secretary of Energy

may waive rights to such inventions

under certain circumstances.

The DOE regulations covering waiver

of patent rights are in the DOE

Procurement Regulation at 41 CFR Part

9–9, principally at 41 CFR 9–9.109–6.

After the Federal Acquisition

Regulations System became effective in

1984, the DOE patent waiver regulation

was continued in effect with regard to

procurements and financial assistance

in the DEAR, 48 CFR 927.300, and in

DOE Assistance Regulations, 10 CFR

600.33, respectively. Today’s final rule

will recodify and publish these

regulations and make them

conveniently available to the public.

In today’s final rule, DOE also is

updating the patent waiver regulation to

make changes required by post-1984

statutory amendments (as explained

below), and is using this opportunity to

make clarifying and minor procedural

changes to the regulation. The revised

regulation is being codified in a part of

the Code of Federal Regulations that is

separate from the DEAR, because patent

waivers may be requested in connection

with DOE arrangements other than

procurement contracts, such as grants,

cooperative agreements and CRADAs.

Today’s final rule reflects statutory

changes that are not referenced in the

regulation at 41 CFR part 9–9.

Specifically, patent waiver terms and

conditions in the Federal Nonnuclear

Energy Research and Development Act

of 1974 were repealed by the Bayh-Dole

patent and trademark amendments of

1980, Pub. L. 96–517, § 7 (94 Stat. 3027).

Subsequently, a requirement for certain

terms and conditions when a non-BayhDole contractor retains title to

inventions, pursuant to 35 U.S.C. 202,

was imposed by the Trademark

Clarification Act of 1984, Pub. L. 98–

620, title V (98 Stat. 3367). Accordingly,

today’s final rule deletes the waiver

terms and conditions repealed by the

Bayh-Dole patent and trademark

amendments of 1980, and sets forth

waiver terms and conditions for

contractor retention of rights required

by 35 U.S.C. 210 and set forth in the

DEAR at 48 CFR 952.227–11.

II. Section-by-Section Discussion of

Final Rule

Section 784.1 of today’s regulation

presents the scope and applicability of

the regulation. Today’s regulation

covers waiver of the Government’s

rights in inventions made under DOE

contracts, grants, agreements,

understandings, or other arrangements

with entities other than small

businesses or nonprofit organizations, as

well as agreements with small

businesses or non profit organizations

where the agreement is not a funding

agreement. Allocation of rights to

inventions made under DOE contracts,

grants and other funding agreements

with small businesses or nonprofit

organizations is controlled by 35 U.S.C.

200 et seq., but today’s regulation also

governs waivers of rights in inventions

falling within exceptions to the policy

of that law. The scope of the regulation

at 41 CFR 9–9.100 included policies and

procedures with respect to inventions

made under arrangements with DOE,

and is not, as here, limited to policies

and procedures regarding waiver of the

Government’s invention rights.

Section 784.3 summarizes the law

underlying the regulation (42 U.S.C.

2182 and 42 U.S.C. 5908), i.e., that

while title to inventions under DOE

contracts or other arrangements with

entities other than small businesses or

nonprofit organizations vests in the

Government, the Department may waive

its rights to such inventions if such

waiver is determined to be in the public

interest. Such determinations are to be

made in accordance with statutorily

prescribed objectives. The regulation, at

41 CFR 9–9.109–6(a), is similar, but it

does not have an exclusion for contracts

with small businesses or nonprofit

organizations which under 35 U.S.C.

202, may, with certain exceptions, elect

to retain invention rights without a

waiver.

Section 784.3(c) clarifies that

references to ‘‘contract’’ in the

regulation include grants, cooperative

agreements, and other arrangements,

consistent with the definition of

‘‘contract’’ provided in the regulation at

41 CFR 9–9.107–5(a)(a)(2) and in the

statute at 42 U.S.C. 5908(m), although

not consistent with the definition of

‘‘contract’’ elsewhere, such as at 10 CFR

600.3.

Section 784.4 recites considerations,

specified by statute, that are to be

included in making determinations to

grant advance patent waivers. For

clarity, a definition of an advance

waiver is provided in today’s regulation.

Considerations (l) and (m) have been

modified to reflect 35 U.S.C. 202.

Section 784.5 recites statutory

considerations to be included in

Government determinations to waive

title rights in a particular identified

invention. Considerations (k) and (l)

have been modified to reflect 35 U.S.C.

202.

Section 784.6 recites additional

national security related considerations

for waiver of certain sensitive

inventions, as provided in Pub. L. 99–

661 (42 U.S.C. 7261a).

Section 784.7 provides guidance for

requesting a class waiver, i.e., a waiver

that applies to a class of persons or a

class of inventions. Pertinent objectives

and considerations set forth in sections

784.3 through 784.6 are to be included

in class waiver determinations. Class

waivers are authorized by statute (42

U.S.C. 5908) and are provided for in the

regulation at 41 CFR 9–9.109–6(a)(1).

Section 784.8 provides general

procedures concerning the patent

waiver process, including timeliness

requirements for requesting waivers,

information concerning DOE’s

processing of waiver requests,

information concerning implementation

of a waiver, and information concerning

requests for reconsideration of waiver

denials. These regulations track those in

41 CFR 9–9.109–6.

Section 784.8(a) has been modified

slightly from the regulation at 41 CFR 9–

9.109–6(a)(1) to reflect class waiver

requests.

Section 784.8(b) provides reference to

a patent waiver clause to be included

when advance waivers are granted,

based on the clause provided in the

Federal Acquisition Regulation at 48

CFR 952.227–13; and includes guidance

for seeking an advance waiver for an

identified invention provided in 41 CFR

9–9.109–6(a)(1).

Section 784.8(c) reduces from 9

months to 8 months the time period for

requesting waiver for an identified

invention to allow for a longer time

period (from three months to four

months) for the Government to perfect

rights within the one-year time period,

where a statutory bar may arise due to

public disclosure of an invention for

which a waiver request is not submitted.

It also adds further guidance regarding

timeliness for submitting waiver

requests and requirements for

reimbursement of patent costs to

conform to current practice.

Section 784.8(d) adds a sentence

regarding obtaining of an agreement to
Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations 36613

waiver terms and conditions to conform

to current practice.

Sections 784.8 (e), (f) and (g),

regarding processing by DOE of waiver

requests, have been modified slightly to

better reflect current DOE practice.

Section 784.8(h) discusses the right of

a waiver requestor to request

reconsideration when a waiver request

has been denied.

Section 784.8(I) has been added to

provide guidance regarding submission

of an instrument confirming the

Government’s rights in waived

inventions, to conform to current

practice, and as provided for generally

in the current regulation at 41 CFR 9–

9.109–1(b).

Section 784.9 provides detailed

direction concerning the content of

waiver requests. A self-explanatory form

for requesting waivers is available from

the Contracting Officer or DOE Patent

Counsel. Generally, waiver requests

must include identification of the

requestor, identification of the pertinent

contract, including a description of the

contract effort, the nature of the

requested waiver, and information

addressing waiver policies and

considerations set forth in the

regulation. In addition, for an identified

invention waiver request, information

concerning the specific invention,

including names of all inventors and

patent status of the invention, is

required. The source of the language for

this section is 41 CFR 9–9.109–6(e).

Section 784.9(a) adds a reference to

the OMB control number for the forms

that persons must use to request

advance and identified invention

waivers.

Section 784.9(c) adds a reference to a

statutory provision (35 U.S.C. 205)

enacted since issuance of the current

regulation that relates to treatment of

proprietary information that may be

contained in waiver requests.

Section 784.10 provides for public

availability of records of waiver

determinations, as required by 42 U.S.C.

5908(c). This section replaces 41 CFR 9–

9.109–6(f). The Assistant General

Counsel for Technology Transfer and

Intellectual Property will be responsible

for maintaining and updating the

publicly available record of waiver

determinations.

Section 784.11 describes typical

situations that may be appropriate for

advance waivers, including cost-shared

contracts, situations where DOE is

providing relatively modest increased

funding to a substantially privatelysponsored program, and situations

where a waiver is necessary to obtain

the participation of a particular

contractor. In addition, the section

describes possible limitations on the

scope of waivers depending on

circumstances surrounding a particular

waiver, e.g., restrictions to fields of use

that are not the primary object of the

contract effort. Further, the section

addresses the issue of a prime

contractor’s obtaining rights to

inventions made by a subcontractor.

This section has been slightly modified

from its counterpart in 41 CFR 9.109–

6(g) to reflect current practice and the

enactment of, and amendments to, 35

U.S.C. 202. In addition, section

784.11(b)(ii), regarding rights in

subcontractor inventions, and contained

in the current regulations at 41 CFR 9–

9.107–4(h)(2), has been incorporated

into this regulation. Subsection (c) is

derived from 41 CFR 9–9.109–6(g)(3).

Section 784.12 sets forth the ‘‘Patent

Rights—Waiver’’ clause containing the

terms and conditions for waivers. The

current regulation does not contain a

patent waiver clause, but instead

contains a section, 41 CFR 9–9.109–6(I)

entitled ‘‘Terms and conditions of

waivers.’’ The clause of the final

regulation is based on the contractor

retention of rights clause contained in

the Federal Acquisition Regulation at 48

CFR 52.227–12, with certain additions.

A section (k), Background Patents; a

section (p), Waiver Termination; a

section (q), Atomic Energy; a section (r),

Publication; and a section (s), Forfeiture

of Rights in Unreported Subject

Inventions, are included, representing a

continuation of previous DOE policy

contained in the current regulation at 41

CFR 9–9.107–5(a)(k), 41 CFR 9–9.109–

6(j), 41 CFR 9–9.107–5(a)(l)(1), 41 CFR

9–9.107–5(a)(f) and 41 CFR 9–9.107–

5(a)(g), respectively. Subsection (a)

incorporates definitions from 35 U.S.C.

201(d), 42 U.S.C. 5908(m) and 41 CFR

9–9.107–5. A sentence has been added

to (p) referring to the ‘‘Contractor’s

minimum license’’ provision,

Subsection (e).

Section 784.13 provides effective

dates for various types of waivers. This

has been taken from 41 CFR 9–9.109–

6(k).

III. Procedural Requirements

A. Applicable Procedures

This final rule recodifies and updates

DOE’s patent waiver regulations. The

rule does not change any DOE

substantive policies or establish new

requirements affecting the rights and

obligations of the public in this area.

The rule does include several

procedural changes, but DOE has

determined that these changes will not

have a significant impact on contractors,

grantees, or other persons who may

request waiver of the Government’s

rights in inventions made under

contracts, grants, and other DOE

agreements and arrangements.

Therefore, DOE has determined that

prior notice and an opportunity for

public comment on the rule is not

required.

B. Review Under Executive Order 12886

Today’s regulatory action has been

determined not to be a ‘‘significant

regulatory action’’ under Executive

Order 12866, ‘‘Regulatory Planning and

Review,’’ 58 FR 51735 (October 4, 1993).

Accordingly, today’s action was not

subject to review under the Executive

Order by the Office of Information and

Regulatory Affairs.

C. Review Under Regulatory Flexibility

Act

The Regulatory Flexibility Act of

1980, 5 U.S.C. 601–612, requires, in

part, that an agency prepare an initial

regulatory flexibility analysis for any

rule, unless it determines that the rule

will not have a ‘‘significant economic

impact’’ on a substantial number of

small entities. The final rule concerns

policy and procedures for patent

waivers affecting entities that are

generally not small businesses because

there is separate statutory authority

governing disposition of invention

rights of Government contractors that

are small businesses. The final rule

imposes no significant burdens or

impact on small entities. Therefore, as

required by Section 605(b), DOE

certifies that the final rule will not have

a significant economic impact on a

substantial number of small entities.

D. Review Under NEPA

DOE has determined that issuance of

this final rule is not a major federal

action significantly affecting the quality

of the human environment within the

meaning of the National Environmental

Policy Act of 1969 (NEPA), 42 U.S.C.

4321 et seq., and therefore that neither

an environmental assessment nor an

environmental impact statement is

required. Categorical exclusion A2 in

DOE’s regulations implementing NEPA,

appendix A of subpart D of 10 CFR part

102, applies to this rulemaking.

Categorical exclusion A2 encompasses

clarifying or administrative

modifications of rules pertaining to

contracts.

E. Review Under Paperwork Reduction

Act

The reporting requirements contained

in 41 CFR 9–9.109–6 were approved by

OMB and assigned control no. 1901–0800.
36614 Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations

This final rule imposes no new

reporting requirement.

F. Review Under Executive Order 12612

Executive Order 12612, 52 FR 41685

(October 30, 1987), requires that

regulations, rules, legislation, and any

other policy actions be reviewed for any

substantial direct effects on States, on

the relationship between the national

Government and the States, and in the

distribution of power and

responsibilities among various levels of

Government. If there are sufficient

substantial direct effects, then the

Executive Order requires preparation of

a federalism assessment to be used in all

decisions involved in promulgating and

implementing a policy action. Today’s

action sets forth DOE policies and

procedures governing requests for

waiver of the Government’s rights to

inventions made in the course of

contracts, grant agreements, cooperative

agreements, and other arrangements that

further DOE’s mission. DOE has

determined that the final rule will not

have a substantial direct effect on the

institutional interests or traditional

functions of States.

G. Review Under Executive Order 12778

Section 2 of Executive Order 12778,

56 FR 55195 (October 25, 1991),

instructs each agency to adhere to

certain requirements in promulgating

new regulations. These requirements,

set forth in section 2(a) and (b)(2),

include eliminating drafting errors and

needless ambiguity, drafting the

regulations to minimize litigation,

providing clear and certain legal

standards for affected legal conduct, and

promoting simplification and burden

reduction. Agencies are also instructed

to make every reasonable effort to

ensure that regulations define key terms

and are clear on such matters as

exhaustion of administrative remedies

and preemption. DOE certifies that

today’s regulatory action meets the

requirements of section 2(a) and (b)(2) of

Executive Order 12778.

H. Review Under the Unfunded

Mandates Reform Act

Title II of the Unfunded Mandates

Reform Act of 1995 (the Act), enacted as

Pub. L. 104–4 on March 22, 1995,

requires each Federal agency, to the

extent permitted by law, to prepare a

written assessment of the effects of any

Federal mandate in a proposed or final

agency rule that may result in the

expenditure by State, local, and tribal

governments, in the aggregate, or by the

private sector, of $100 million or more

(adjusted annually for inflation) in any

one year. Section 204(a) of the Act, 2

U.S.C. 1534(a), requires the Federal

agency to develop an effective process

to permit timely input by elected

officers (or their designees) of State,

local, and tribal governments on a

proposed ‘‘significant intergovernmental

mandate.’’ A ‘‘significant

intergovernmental mandate’’ under the

Act is any provision in a Federal agency

regulation that: (1)would impose an

enforceable duty upon State, local, and

tribal governments, in the aggregate, of

$100 million (adjusted annually for

inflation) in any one year. Section 203

of the Act, 2 U.S.C. 1533, which

supplements section 204(a), provides

that before establishing any regulatory

requirements that might significantly or

uniquely affect small governments, the

agency shall have developed a plan that,

among other things, provides for notice

to potentially affected small

governments, if any, and for a

meaningful and timely opportunity to

provide input in the development of

regulatory proposals.

This rule does not contain any

Federal intergovernmental or private

sector mandate. Therefore, the

requirements of title II of the Unfunded

Mandates Reform Act of 1995 do not

apply.

List of Subjects in 10 CFR Part 784

Government contracts, Inventions and

patents.

Issued in Washington, D.C., on July 2,

1996.

Robert R. Nordhaus,

General Counsel.

For the reasons set forth in the

preamble, Chapter III of Title 10 of the

Code of Federal Regulations is amended

by adding new Part 784 to read as set

forth below.

PART 784—PATENT WAIVER

REGULATION

Sec.

784.1 Scope and applicability.

784.2 Definitions.

784.3 Policy.

784.4 Advance waiver.

784.5 Waiver of identified inventions.

784.6 National security considerations for

waiver of certain sensitive inventions.

784.7 Class waiver.

784.8 Procedures.

784.9 Content of waiver requests.

784.10 Record of waiver determinations.

784.11 Bases for granting waivers.

784.12 Terms and conditions of waivers.

784.13 Effective dates.

Authority: 42 U.S.C. 7151; 42 U.S.C. 5908;

42 U.S.C. 2182; 35 U.S.C. 202 and 210; 42

U.S.C. 7261a.

PART 784—PATENT WAIVER

REGULATION

§ 784.1 Scope and applicability.

(a) This part states the policy and

establishes the procedures, terms and

conditions governing waiver of the

Government’s rights in inventions made

under contracts, grants, agreements,

understandings or other arrangements

with the Department of Energy (DOE).

(b) This part applies to all inventions

conceived or first actually reduced to

practice in the course of or under any

contract, grant, agreement,

understanding, or other arrangement

with or for the benefit of DOE (including

any subcontract, subgrant, or

subagreement), the patent rights

disposition of which is governed by

section 152 of the Atomic Energy Act of

1954, 42 U.S.C. 2182, or section 9 of the

Federal Nonnuclear Energy Research

and Development Act of 1974, 42 U.S.C.

5908. In funding agreements with

nonprofit organizations or small

business firms, when title or other rights

are reserved to the Government under

the authority of 35 U.S.C. 202(a), this

part will apply to any waiver of such

rights. The patent waiver provisions in

this part supersede the patent waiver

regulations previously included with

patent regulations at 41 CFR Part 9–

9.100.

§ 784.2 Definitions.

As used in this Part:

Contract means procurement

contracts, grants, agreements,

understandings and other arrangements

(including Cooperative Research and

Development Agreements [CRADAs],

Work for Others and User Facility

agreements, which includes research,

development, or demonstration work,

and includes any assignment or

substitution of the parties, entered into,

with, or for the benefit of DOE.

Contractor means entities performing

under contracts as defined above.

Patent Counsel means the DOE Patent

Counsel assisting the contracting

activity.

§ 784.3 Policy.

(a) Section 6 of Public Law 96–517

(the Bayh-Dole patent and trademark

amendments of 1980), as amended, as

codified at 35 U.S.C. 200—212, provides

that title to inventions conceived or first

actually reduced to practice in the

course of or under any contract, grant,

agreement, understanding, or other

arrangement entered into with or for the

benefit of the Department of Energy

(DOE) vests in the United States, except

where 35 U.S.C. 202 provides otherwise

for nonprofit organizations or small
Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations 36615

business firms. However, where title to

such inventions vests in the United

States, the Secretary of Energy

(hereinafter Secretary) or designee may

waive all or any part of the rights of the

United States, subject to required terms

and conditions, with respect to any

invention or class of inventions made or

which may be made by any person or

class of persons in the course of or

under any contract of DOE if it is

determined that the interests of the

United States and the general public

will best be served by such waiver. In

making such determinations, the

Secretary or designee shall have the

following objectives:

(1) Making the benefits of the energy

research, development, and

demonstration program widely available

to the public in the shortest practicable

time;

(2) Promoting the commercial

utilization of such inventions;

(3) Encouraging participation by

private persons in DOE’s energy

research, development, and

demonstration programs; and

(4) Fostering competition and

preventing undue market concentration

or the creation or maintenance of other

situations inconsistent with the antitrust

laws.

(b) If it is not possible to attain the

objectives in paragraphs (a)(1) through

(4) immediately and simultaneously for

any specific waiver determination, the

Secretary or designee will seek to

reconcile these objectives in light of the

overall purposes of the DOE patent

waiver policy, as set forth in section 152

of the Atomic Energy Act of 1954, 42

U.S.C. 2182, section 9 of the Federal

Nonnuclear Energy Research and

Development Act of 1974, 42 U.S.C.

5908, Public Law 99–661, 42 U.S.C.

7261a, and, where not inconsistent

therewith, the Presidential

Memorandum to the Heads of Executive

Departments and Agencies on

Government Patent Policy issued

February 18, 1983 and Executive Order

No. 12591 issued April 10, 1987.

(c) The policy set forth in this section

is applicable to all types of contracts as

defined in § 784.2 of this part.

§ 784.4 Advance waiver.

This section covers inventions that

may be conceived or first actually

reduced to practice in the course of or

under a particular contract. In

determining whether an advance waiver

will best serve the interests of the

United States and the general public,

the Secretary or designee (currently the

Assistant General Counsel for

Technology Transfer and Intellectual

Property) shall, at a minimum,

specifically include as considerations

the following:

(a) The extent to which the

participation of the contractor will

expedite the attainment of the purposes

of the program;

(b) The extent to which a waiver of all

or any part of such rights in any or all

fields of technology is needed to secure

the participation of the particular

contractor;

(c) The extent to which the work to

be performed under the contract is

useful in the production or utilization of

special nuclear material or atomic

energy;

(d) The extent to which the

contractor’s commercial position may

expedite utilization of the research,

development, and demonstration

results;

(e) The extent to which the

Government has contributed to the field

of technology to be funded under the

contract;

(f) The purpose and nature of the

contract, including the intended use of

the results developed thereunder;

(g) The extent to which the contractor

has made or will make substantial

investment of financial resources or

technology developed at the contractor’s

private expense which will directly

benefit the work to be performed under

the contract;

(h) The extent to which the field of

technology to be funded under the

contract has been developed at the

contractor’s private expense;

(i) The extent to which the

Government intends to further develop

to the point of commercial utilization

the results of the contract effort;

(j) The extent to which the contract

objectives are concerned with the public

health, public safety, or public welfare;

(k) The likely effect of the waiver on

competition and market concentration;

(l) In the case of a domestic nonprofit

educational institution under an

agreement not governed by Chapter 18

of Title 35, United States Code, the

extent to which such institution has a

technology transfer capability and

program approved by the Secretary or

designee as being consistent with the

applicable policies of this section;

(m) The small business status of the

contractor under an agreement not

governed by Chapter 18 of Title 35,

United States Code, and

(n) Such other considerations, such as

benefit to the U.S. economy, that the

Secretary or designee may deem

appropriate.

§ 784.5 Waiver of identified inventions.

This section covers the relinquishing

by the Government to the contractor or

inventor of title rights in a particular

identified subject invention. In

determining whether such a waiver of

an identified invention will best serve

the interests of the United States and the

general public, the Secretary or designee

shall, at a minimum, specifically

include as considerations the following:

(a) The extent to which such waiver

is a reasonable and necessary incentive

to call forth private risk capital for the

development and commercialization of

the invention;

(b) The extent to which the plans,

intentions, and ability of the contractor

or inventor will obtain expeditious

commercialization of such invention;

(c) The extent to which the invention

is useful in the production or utilization

of special nuclear material or atomic

energy;

(d) The extent to which the

Government has contributed to the field

of technology of the invention;

(e) The purpose and nature of the

invention, including the anticipated use

thereof;

(f) The extent to which the contractor

has made or will make substantial

investment of financial resources or

technology developed at the contractor’s

private expense which will directly

benefit the commercialization of the

invention;

(g) The extent to which the field of

technology of the invention has been

developed at the contractor’s expense;

(h) The extent to which the

Government intends to further develop

the invention to the point of commercial

utilization;

(i) The extent to which the invention

is concerned with the public health,

public safety, or public welfare;

(j) The likely effect of the waiver on

competition and market concentration;

(k) In the case of a domestic nonprofit

educational institution under an

agreement not governed by Chapter 18,

Title 35, United States Code, the extent

to which such institution has a

technology transfer capability and

program approved by the Secretary or

designee as being consistent with the

applicable policies of this section;

(l) The small business status of the

contractor, under an agreement not

governed by Chapter 18 of Title 35,

United States Code; and,

(m) Such other considerations, such

as benefit to the U.S. economy that the

Secretary or designee may deem

appropriate.

§ 784.6 National security considerations

for waiver of certain sensitive inventions.

(a) Whenever, in the course of or

under any Government contract or

subcontract of the Naval Nuclear
36616 Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations

Propulsion Program or the nuclear

weapons programs or other atomic

energy defense activities of the

Department of Energy, a contractor

makes an invention or discovery to

which title vests in the Department of

Energy pursuant to statute, the

contractor may request waiver of any or

all of the Government’s property rights.

The Secretary of Energy or designee may

decide to waive the Government’s

rights.

(b) In making a decision under this

section, the Secretary or designee shall

consider, in addition to the objectives of

DOE waiver policy as specified in

§ 784.3(a)(1) through (4), and the

considerations specified in § 784.4 for

advance waivers, and § 784.5 for waiver

of identified inventions, the following:

(1) Whether national security will be

compromised;

(2) 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;

(3) Whether an organizational conflict

of interest contemplated by Federal

statutes and regulations will result, and

(4) 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.

(c) A decision under this § 784.6 shall

be made within 150 days after the date

on which a complete request for waiver,

as described by paragraph (d) of this

section, has been submitted to the

Patent Counsel by the contractor.

(d) In addition to the requirements for

content which apply generally to all

waiver requests under paragraph (a) of

this section, a requestor must include a

full and detailed statement of facts, to

the extent known by or available to the

requestor, directed to the considerations

set forth in paragraphs (b)(1) through (4)

of this section, as applicable. To be

considered complete, a waiver request

must contain sufficient information, in

addition to the content requirements

under paragraphs (a) and (b) of this

section, to allow the Secretary or

designee to make a decision under this

section. For advance waiver requests,

such information shall include, at a

minimum:

(1) An identification of all of the

requestor’s contractual arrangements

involving the Government (including

contracts, subcontracts, grants, or other

arrangements) in which the technology

involved in the contract was developed

or used and any other funding of the

technology by the Government, whether

direct or indirect, involving any other

party, of which the requestor is aware;

(2) A description of the requestor’s

past, current, and future private

investment in and development of the

technology which is the subject of the

contract. This includes expenditures not

reimbursed by the Government on

research and development which will

directly benefit the work to be

performed under the instant contract,

the amount and percentage of contract

costs to be shared by the requestor, the

out-of-pocket costs of facilities or

equipment to be made available by the

requestor for performance of the

contract work which are not charged

directly or indirectly to the Government

under contract, and the contractor’s

plans and intentions to further develop

and commercialize the technology at

private expense;

(3) A description of competitive

technologies or other factors which

would ameliorate any anticompetitive

effect of granting the waiver.

(4) Identification of whether the

contract pertains to work that is

classified, or sensitive, i.e., unclassified

but controlled pursuant to section 148

of the Atomic Energy Action of 1954, as

amended (42 U.S.C. 2168), or subject to

export control under Chapter 17 of the

Military Critical Technology List

(MCTL) contained in Department of

Defense Directive 5230.25 including

identification of all principal uses of the

subject matter of the contract, whether

inside or outside the contractor

program, and an indication of whether

any such uses involve classified or

sensitive technologies.

(5) Identification of all DOE and DOD

programs and projects in the same

general technology as the contract for

which the requestor intends to be

providing program planning advice or

has provided program planning advice

within the last three years.

(e) For identified invention requests

under this section, such requests shall

include at a minimum:

(1) A brief description of the

intentions of the requestor (or its

present or intended licensee) to

commercialize the invention. This

description should include:

(i) Estimated expenditures,

(ii) Anticipated steps,

(iii) The associated time periods to

bring the invention to

commercialization, and

(iv) A statement that requestor (or its

present or intended licensee) has the

capability to carry out its stated

intentions.

(2) A description of 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

the requestor, any anticipated future

Government funding to further develop

the invention.

(3) A description of competitive

technologies or other factors which

would ameliorate any anticompetitive

effects of granting the waiver.

(4) A statement as to whether or not

the requestor would be willing to

reimburse the Department of Energy for

any and all costs and fees incurred by

the Department in the preparation and

prosecution of the patent applications

covering the invention that is the

subject of the waiver request.

(5) Where applicable, a statement of

reasons why the request was not timely

filed in accordance with the applicable

patent rights clause of the contract, or

why a request for an extension of time

to file the request was not filed in a

timely manner.

(6) Identification of whether the

invention pertains to work that is

classified, or sensitive, i.e., unclassified

but controlled pursuant to section 148

of the Atomic Energy Act of 1954, as

amended (42 U.S.C. 2168), or subject to

export control under Chapter 17 of the

Military Critical Technology List

(MCTL) contained in Department of

Defense Directive 5230.25, including

identification of all principal uses of the

invention inside or outside the

contractor program, and an indication of

whether any such uses involve

classified or sensitive technologies.

(7) Identification of all DOE and DOD

programs and projects in the same

general technology as the invention for

which the requestor intends to be

providing program planning advice or

has provided program planning advice

within the last three years.

(8) A statement of whether a

classification review of the invention

disclosure, any resulting patent

application(s), and/or any reports and

other documents disclosing a

substantial portion of the invention, has

been made, together with any

determinations on the existence of

classified or sensitive information in

either the invention disclosure, the

patent application(s), or reports or other

documents disclosing a substantial

portion of the invention; and

(9) Identification of any and all

proposals, work for other activities, or

other arrangements submitted by the
Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations 36617

requestor, DOE, or a third party, of

which requestor is aware, which may

involve further funding of the work on

the invention at either the contractor

facility where the invention arose or

another facility owned by the

Government.

(f) Patent Counsel will notify the

requestor promptly if the waiver request

is found not to be a complete request

and, in that event, will provide the

requestor with a reasonable period, not

to exceed 60 days, to correct any such

incompleteness. If requestor does not

respond within the allotted time period,

the waiver request will be considered to

be withdrawn. If requestor responds

within the allotted time period, but the

submittal is still deemed incomplete or

insufficient, the waiver request may be

denied.

(g) As set forth in paragraph (c) of this

section, waiver decisions shall be made

within 150 days after the date on which

a complete request for waiver of such

rights, as specified in this section, has

been submitted by the requestor to the

DOE Patent Counsel. If the original

waiver request does not result in a

communication from DOE Patent

Counsel indicating that the request is

incomplete, the 150-day period for

decision commences on the date of

receipt of the waiver request. If the

original waiver request results in a

communication from DOE Patent

Counsel indicating that the request is

incomplete, the 150-day period for

decision commences on the date on

which supplementary information is

received by Patent Counsel sufficient to

make the waiver request complete. For

advance waiver requests, if requestor is

not notified that the request is

incomplete, the 150-day period for

decision commences on the date of

receipt of the request, or on the date on

which negotiation of contract terms is

completed, whichever is later.

(h) Failure of DOE to make a patent

waiver decision within the prescribed

150-day period shall in no way be

construed as a grant of the waiver.

§ 784.7 Class waiver.

This section covers relinquishing of

patent title rights by the Government to

a class of persons or to a class of

inventions. The authorization for class

waivers is to be found at 42 U.S.C.

5908(c). Class waivers may be

appropriate in situations where all

members of a particular class would

likely qualify for an advance or

identified invention waiver. Normally,

class waivers are originated by the

Department. However, any person with

a direct and substantial interest in a

DOE program may request a class

waiver by forwarding a written request

therefor to the Patent Counsel. While no

particular format for requesting a class

waiver is prescribed, any request for a

class waiver and any resulting

determination by the Secretary or

designee must address the pertinent

objectives and considerations set forth

in §§ 784.3(a), 784.4, 784.5, and 784.6.

§ 784.8 Procedures.

(a) All requests for waivers shall be in

writing. Each request for a waiver other

than a class waiver shall include the

information set forth in § 784.9. Such

requests may be submitted by existing

or prospective contractors in the case of

requests for an advance waiver and by

contractors, including successor

contractors at a facility, or employeeinventors in the case of requests for

waiver of identified inventions.

(b) A request for an advance waiver

should be submitted to the Contracting

Officer (subcontractors may submit

through their prime contractors) at any

time prior to execution of the contract

or subcontract, or within thirty days

thereafter, or within such longer period

as may be authorized by Patent Counsel

for good cause shown in writing. If the

purpose, scope, or cost of the contract

is substantially altered by modification

or extension after the waiver is granted,

a new waiver request will be required.

When advance waivers are granted, the

provisions of the ‘‘Patent Rights—

Waiver’’ clause set forth in § 784.12

shall be used in contracts which are the

subject of the waivers, unless modified

with the approval of the Patent Counsel

to conform to the scope of the waiver

granted. (See § 784.12.) Advance

waivers may be requested for all

inventions which may be conceived or

first actually reduced to practice under

a DOE contract. An advance waiver may

also be requested for an identified

invention conceived by the contractor

before the contract but which may be

first actually reduced to practice under

the contract. Such waiver request must

include a copy of any patent or patent

application covering the identified

invention, or if no patent application

has been filed, a complete description of

the invention.

(c) A request for waiver (other than an

advance or class waiver) for an

identified invention must be submitted

to the Patent Counsel at the time the

invention is to be reported to DOE or

not later than eight months after

conception and/or first actual reduction

to practice, whichever occurs first in the

course of or under the contract, or such

longer period as may be authorized by

Patent Counsel for good cause shown in

writing by the requestor. The time for

submitting a waiver request will not

normally be extended past the time the

invention has been advertised for

licensing by DOE. If the Government has

already filed a patent application on the

invention, the requestor should indicate

whether or not it is willing to reimburse

the Government for the costs of

searching, prosecution, filing and

maintenance fees, in the event the

waiver is granted.

(d) If the request for waiver contains

insufficient information, the Patent

Counsel may seek additional

information from the requestor and from

other sources. The Patent Counsel will

thoroughly analyze the request in view

of each of the objectives and

considerations and shall also consider

the overall rights obtained by the

Government in the patent, copyright,

and data clauses of the contract. Where

it appears that a waiver of a lesser part

of the rights of the United States than

requested would be more appropriate in

view of the policies set forth, the Patent

Counsel should attempt to negotiate a

compromise acceptable to both the

requestor and DOE. If approval of a

waiver is recommended, Patent Counsel

shall obtain an indication of agreement

by the requestor to the proposed waiver

scope, terms and conditions.

(e) The Patent Counsel will prepare a

Statement of Considerations setting

forth the rationale for either approving

or denying the waiver request and will

forward the Statement to the General

Counsel or designee for review thereof.

While the Statement need not provide

specific findings as to each and every

consideration of § 784.4 or § 784.5 of

this part, it will cover those that are

decisive, and it will explain the basis for

the recommended determination. There

may be occasions when the application

of the various individual considerations

of § 784.4 or § 784.5 of this part to a

particular case could conflict, and in

those instances the conflict will be

reconciled giving due regard to the

overall policies set forth in 784.3(a) (1)

through (4).

(f) The Patent Counsel will also obtain

comments from the appropriate DOE

program organization to assist the Patent

Counsel in the waiver determination.

Additionally, if any other Federal

Government entity has provided

funding or will be providing funding, or

if a subject invention has been made in

whole or in part by an employee of that

entity, Patent Counsel shall obtain

permission to waive title to the

undivided interest in the invention from

the cognizant official of that entity. In

situations where time does not permit a

delay in contract negotiations for the

preparation and mailing of a full written
36618 Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations

statement, field Patent Counsel may

submit a recommendation on the waiver

orally to the Assistant General Counsel

for Technology Transfer and Intellectual

Property, who upon verbal consultation

with the appropriate DOE program

organization, shall provide a verbal

decision to field Patent Counsel. All oral

actions shall be promptly confirmed in

writing. In approving waiver

determinations, the Secretary or

designee shall objectively review all

requests for waiver in view of the

objectives and considerations set forth

in §§ 784.3 through 784.6. If the

determination and the rationale therefor

is not accurately reflected in the

Statement of Considerations which has

been submitted for approval, a new

Statement of Considerations shall be

prepared.

(g) In the event that a request for

advance waiver is approved after the

effective date of the contract, the Patent

Counsel shall promptly notify the

requestor by letter of the determination

and the basis therefor. The letter shall

state the scope, terms and conditions of

such waiver. If the terms and conditions

of an approved advance waiver were not

incorporated in the contract when

executed, the letter shall inform the

requestor that the advance waiver shall

be effective as of the effective date of the

contract for an advance waiver of

inventions identified, i.e., conceived

prior to the effective date of the

contract, or as of the date the invention

is reported with an election by the

contractor to retain rights therein, i.e.,

for an invention conceived or first

actually reduced to practice after the

effective date of the contract; provided

a copy of the letter is signed and

returned to the Contracting Officer by

the requestor acknowledging the

acceptance of the scope, terms and

conditions of the advance waiver. After

acceptance by the contractor of an

advance waiver, the Contracting Officer

shall cause a unilateral no-cost

modification to be made to the contract

incorporating the terms and conditions

of the waiver in lieu of previous patent

rights provisions.

(h) In the event that a waiver request

is denied, the requestor may, within

thirty days after notification of the

denial, request reconsideration. Such a

request shall include any additional

facts and rationale not previously

submitted which support the request.

Request for reconsideration shall be

submitted and processed in accordance

with the procedures for submitting

waiver requests set forth in this section.

§ 784.9 Content of waiver requests.

(a) Forms (OMB No. 1901–0800) for

submitting requests for advance and

identified invention waivers, indicating

the necessary information, may be

obtained from the Contracting Officer or

Patent Counsel. All requests for advance

and identified invention waivers shall

include the following information:

(1) The requestor’s identification,

business address, and, if represented by

Counsel, the Counsel’s name and

address;

(2) An identification of the pertinent

contract or proposed contract and a

copy of the contract Statement of Work

or a nonproprietary statement which

fully describes the proposed work to be

performed;

(3) The nature and extent of waiver

requested;

(4) A full and detailed statement of

facts, to the extent known by or

available to the requestor, directed to

each of the considerations set forth in

§§ 784.4 or 784.5 of this part, as

applicable, and a statement applying

such facts and considerations to the

policies set forth in § 784.3 of this part.

It is important that this submission be

tailored to the unique aspects of each

request for waiver, and be as complete

as feasible; and

(5) The signature of the requestor or

authorized representative with the

following statement: ‘‘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 designee rely on them in

reaching the waiver determination.’’

(b) In addition to the requirements of

paragraph (a) of this section, requests for

waiver of identified inventions shall

include:

(1) The full names of all inventors;

(2) A statement of whether a patent

application has been filed on the

invention, together with a copy of such

application if filed or, if not filed, a

complete description of the invention;

(3) If a patent application has not been

filed, any information which may

indicate a potential statutory bar to the

patenting of the invention under 35

U.S.C. 102 or a statement that no such

bar is known to exist; and

(4) Where the requestor is the

inventor, written authorization from the

applicable contractor or subcontractor

permitting the inventor to request a

waiver.

(c) Subject to statutes, DOE

regulations, requirements, and

restrictions on the treatment of

proprietary and classified information;

all material submitted in requests for

waiver or in support thereof will be

made available to the public after a

determination on the waiver request has

been made, regardless of whether a

waiver is granted. Accordingly, requests

for waiver should not normally contain

information or data that the requestor is

not willing to have made public. If

proprietary or classified information is

needed to make the waiver

determination, such information shall

be submitted only at the request of

Patent Counsel.

§ 784.10 Record of waiver determinations.

The Assistant General Counsel for

Technology Transfer and Intellectual

Property shall maintain and periodically

update a publicly available record of

waiver determinations.

§ 784.11 Bases for granting waivers.

(a) The various factual situations

which are appropriate for waivers

cannot be categorized precisely because

the appropriateness of a waiver will

depend upon the manner in which the

considerations set forth in §§ 784.4 or

784.5, and 784.6 if applicable, of this

part relate to the facts and

circumstances surrounding the

particular contracting situation or the

particular invention, in order to best

achieve the objectives set forth in

§ 784.3 of this part. However, some

examples where advance waivers might

be appropriate are:

(1) Cost-shared contracts;

(2) Situations in which DOE is

providing increased funding to a

specific ongoing privately-sponsored

research, development, or

demonstration project;

(3) Situations such as Work for Others

Agreements, User Facility Agreements

or CRADAs, involving DOE-approved

private use of Government facilities

where the waiver requestor is funding a

substantial part of the costs; and

(4) Situations in which the equities of

the contractor are so substantial in

relation to that of the Government that

the waiver is necessary to obtain the

participation of the contractor.

(b) Waivers may be granted as to all

or any part of the rights of the United

States to an invention subject to certain

rights retained by the United States as

set forth in § 784.12 of this part. The

scope of the waiver will depend upon

the relationship of the contractual

situation or identified invention to

considerations set forth in §§ 784.4 or

784.5, and 784.6, if applicable, in order

to best achieve the objectives set forth

in § 784.3. For example, waivers may be

restricted to a particular field of use in

which the contractor has substantial

equities or a commercial position, or

restricted to those uses that are not the

primary object of the contract effort.
Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations 36619

Waivers may also be made effective for

a specified duration of time, may be

limited to particular geographic

locations, may require the contractor to

license others at reduced royalties in

consideration of the Government’s

contribution to the research,

development, or demonstration effort, or

may require return of a portion of the

royalties or revenue to the Government.

(c) Contractors shall not use their

ability to award subcontracts as

economic leverage to acquire rights for

themselves in the subcontractor

inventions, where the subcontractor(s)

would prefer to petition for title. A

waiver granted to a prime contractor is

not normally applicable to inventions of

subcontractors. However, in appropriate

circumstances, the waiver given to the

prime contractor may be made

applicable to the waivable inventions of

any or all subcontractors, such as where

there are pre-existing special research

and development arrangements between

the prime contractor and subcontractor,

or where the prime contractor and

subcontractor are partners in a

cooperative effort. In addition, in such

circumstances, the prime contractor

may be permitted to acquire

nonexclusive licenses in the

subcontractors’ inventions when a

waiver of the subcontractor inventions

is not covered by the prime contractor’s

waiver.

(d) In advance waivers of identified

inventions, the invention will be

deemed to be a subject invention and

the waiver will be considered as being

effective as of the effective date of the

contract (see § 784.13(a)). This will be

true regardless of whether the identified

invention had been first actually

reduced to practice prior to the time of

contracting or would be reduced to

practice under the contract or after

expiration of the contract. One purpose

of advance waivers of identified

inventions is to establish the rights of

the parties to such inventions when the

facts surrounding the first actual

reduction to practice prior to or during

the contract are or will be difficult to

establish.

§ 784.12 Terms and conditions of waivers.

The terms and conditions for waivers

are set forth in the ‘‘Patent Rights—

Waiver’’ clause in this section. A waiver

of all foreign and domestic patent rights

under a contract authorizes the use of

this clause with any additions

prescribed by the DOE Acquisition

Regulations (48 CFR Chapter 9) or the

terms of the waiver. This clause shall

not be used in contracts with small

business firms or nonprofit

organizations subject to 35 U.S.C. 200 et

seq. If a waiver of different scope is

granted, the clause shall be modified to

conform to the scope of the waiver

granted. Advance waivers for

arrangements other than contracts,

grants, and cooperative agreements may

use other clause provisions approved by

the Assistant General Counsel for

Technology Transfer and Intellectual

Property, except that all waivers for

funding agreements shall be subject to

the license of clause paragraph (b) and

the provisions of clause paragraphs (i)

and (j). The terms and conditions of the

clause shall also constitute the basis for

confirmatory licenses regarding waivers

of identified inventions. For inventions

under advance waivers, a duly executed

and approved instrument fully

confirmatory of all rights to which the

Government is entitled is required to be

submitted promptly after filing a patent

application thereon. If, however, a

waiver request is pending, delivery of

the confirmatory instrument may be

delayed until a determination on the

waiver request is made. In the case of a

waiver of an identified invention

pursuant to a request for greater rights,

the confirmatory instrument shall be

agreed to or submitted to Patent Counsel

before or at the time the waiver is

granted.

Patent Rights—Waiver

Use the clause at 48 CFR 52.227–12 with

the following changes:

(1) In paragraph (a) ‘‘Definitions’’ add the

following definitions:

Background patent means a domestic

patent covering an invention or discovery

which is not a Subject Invention and which

is owned or controlled by the Contractor at

any time through the completion of this

contract:

(i) Which the Contractor, but not the

Government, has the right to license to others

without obligation to pay royalties thereon,

and

(ii) Infringement of which cannot

reasonably be avoided upon the practice of

any specific process, method, machine,

manufacture or composition of matter

(including relatively minor modifications

thereof) which is a subject of the research,

development, or demonstration work

performed under this contract.

Contract means any contract, grant,

agreement, understanding, or other

arrangement, which includes research,

development, or demonstration work, and

includes any assignment or substitution of

parties.

DOE patent waiver regulations means the

Department of Energy patent waiver

regulations at 10 CFR part 784.

Patent Counsel means the Department of

Energy Patent Counsel assisting the

procuring activity.

Secretary means the Secretary of Energy.

(2) In paragraph (a) in the definition of

‘‘Subject invention’’ substitute: ‘‘course of

or’’ for: ‘‘performance of work’’.

(3) In paragraph (b) ‘‘Allocation of

principal rights,’’ add at the beginning of first

sentence:

‘‘Whereas DOE has granted a waiver of

rights to subject inventions to the

Contractor,’’.

(4) In paragraph (c)(1), substitute:

‘‘Patent Counsel within six months after

conception or first actual reduction to

practice, whichever occurs first in the course

of or under this contract, but in any event,

prior to any sale, public use, or public

disclosure of such invention known to the

Contractor.’’ for.

‘‘Contractor officer within 2 months after

the inventor discloses it in writing to

Contractor Personnel responsible for Patent

matters * * * earlier.’’

(5) In paragraph (c)(2) add at the end: ‘‘The

Contractor shall notify the Patent Counsel as

to those countries (including the United

States) in which the Contractor will retain

title not later than 60 days prior to the end

of the statutory period.’’

(6) In paragraph (c)(3) substitute: ‘‘but not

later than at least 60 days’’ for ‘‘or, if earlier,’’

(7) In paragraph (d) add (d)(5):

‘‘(5) If the waiver authorizing the use of

this clause is terminated as provided in

paragraph (p) of this clause.’’

(8) In paragraph (e)(1) add: ‘‘under

paragraph (d) of this clause’’ after

‘‘Government obtains title.’’

(9) In paragraph (e)(2) substitute ‘‘37 CFR

part 404 and DOE licensing regulations.’’ for

‘‘the Federal Property Management

regulations and agency licensing regulations

(if any)’’

(10) In paragraph (f)(5) substitute ‘‘the

course of or’’ for ‘‘performance of work’’.

(11) In paragraph (g) substitute paragraphs

(1), (2) and (3) as follows:

(1) Unless otherwise directed by the

Contracting Officer, the Contractor shall

include the clause at 48 CFR 952.227–11,

suitably modified to identify the parties, in

all subcontracts, regardless of tier, for

experimental, developmental, or research

work to be performed by a small business

firm or nonprofit organization, except where

the work of the subcontract is subject to an

Exceptional Circumstances Determination by

DOE. In all other subcontracts, regardless of

tier, for experimental, developmental,

demonstration, or research work, the

Contractor shall include the patent rights

clause at 48 CFR 952.227–13 (suitably

modified to identify the parties).

(2) The Contractor shall not, as part of the

consideration for awarding the subcontract,

obtain rights in the subcontractor’s subject

inventions.

(3) In the case of subcontractors at any tier,

Department, the subcontractor, and

Contractor agree that the mutual obligations

of the parties created by this clause constitute

a contract between the subcontractor and the

Department with respect to those matters

covered by this clause.

(12) Substitute the following for paragraph

(k):

(k) Background Patents

(1) The Contractor agrees:

(i) to grant to the Government a royaltyfree, nonexclusive license under any

Background Patent for purposes of practicing
36620 Federal Register / Vol. 61, No. 135 / Friday, July 12, 1996 / Rules and Regulations

a subject of this contract by or for the

Government in research, development, and

demonstration work only.

(ii) that, upon written application by DOE,

it will grant to responsible parties for

purposes of practicing a subject of this

contract, nonexclusive licenses under any

Background Patent on terms that are

reasonable under the circumstances. If,

however, the Contractor believes that

exclusive or partially exclusive rights are

necessary to achieve expeditious commercial

development or utilization, then a request

may be made to DOE for DOE approval of

such licensing by the Contractor.

(2) Notwithstanding paragraph (k)(1)(ii),

the Contractor shall not be obligated to

license any Background Patent if the

Contractor demonstrates to the satisfaction of

the Secretary or his designee that:

(i) a competitive alternative to the subject

matter covered by said Background Patent is

commercially available from one or more

other sources; or

(ii) the Contractor or its licensees are

supplying the subject matter covered by said

Background Patent in sufficient quantity and

at reasonable prices to satisfy market needs,

or have taken effective steps or within a

reasonable time are expected to take effective

steps to so supply the subject matter.

(13) Add new paragraph (l)

Communications as follows:

All reports and notifications required by

this clause shall be submitted to the Patent

Counsel unless otherwise instructed.

(14) In paragraph (m) add to end of

sentence: ‘‘, except with respect to

Background Patents, above.’’

(15) In paragraph (n)(4) substitute

‘‘conducted in such a manner as’’ for ‘‘subject

to appropriate conditions.’’

(16) In paragraph (o) add at the end of the

parenthetical phrase in the heading to the

paragraph: ‘‘or grants’’.

(17) In paragraph (o) add paragraph

(o)(1)(v) as follows:

(v) Convey to the Government, using a

DOE-approved form, the title and/or rights of

the Government in each subject invention as

required by this clause.

(18) In paragraph (o), substitute the

following for (o)(3):

(3) Final payment under this contract shall

not be made before the Contractor delivers to

the Patent Counsel all disclosures of subject

inventions required by paragraph (c)(1) of

this clause, an acceptable final report

pursuant to paragraph (f)(7)(ii) of this clause,

and all past due confirmatory instruments,

and the Patent Counsel has issued a patent

clearance certification to the Contracting

Officer.

(19) Add paragraphs (p), (q), (r), and (s) as

follows:

(p) Waiver Terminations.

Any waiver granted to the Contractor

authorizing the use of this clause (including

any retention of rights pursuant thereto by

the Contractor under paragraph (b) of this

clause) may be terminated at the discretion

of the Secretary or his designee in whole or

in part, if the request for waiver by the

Contractor is found to contain false material

statements or nondisclosure of material facts,

and such were specifically relied upon by

DOE in reaching the waiver determination.

Prior to any such termination, the Contractor

will be given written notice stating the extent

of such proposed termination and the reasons

therefor, and a period of 30 days, or such

longer period as the Secretary or his designee

shall determine for good cause shown in

writing, to show cause why the waiver of

rights should not be so terminated. Any

waiver termination shall be subject to the

Contractor’s minimum license as provided in

paragraph (e) of this clause.

(q) Atomic Energy.

No claim for pecuniary award or

compensation under the provisions of the

Atomic Energy Act of 1954, as amended,

shall be asserted by the Contractor or its

employees with respect to any invention or

discovery made or conceived in the course of

or under this contract.

(r) Publication.

It is recognized that during the course of

work under this contract, the Contractor 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

contract. In order that public disclosure of

such information will not adversely affect the

patent interests of DOE or the Contractor,

approval for release of publication shall be

secured from Patent Counsel prior to any

such release or publication. In appropriate

circumstances, and after consultation with

the Contractor, Patent Counsel may waive the

right of prepublication review.

(s) Forfeiture of rights in unreported

subject inventions.

(1) The Contractor 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 Contractor

fails to report to Patent Counsel within six

months after the time the Contractor:

(i) Files or causes to be filed a United

States or foreign patent application thereon;

or

(ii) Submits the final report required by

paragraph (e)(2)(ii) of this clause, whichever

is later.

(2) However, the Contractor shall not

forfeit rights in a subject invention if, within

the time specified in paragraph (m)(1) of this

clause, the Contractor:

(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

contract and delivers the decision to Patent

Counsel, with a copy to the Contracting

Officer; or

(ii) Contending that the subject invention

is not a subject invention, the Contractor

nevertheless discloses the subject invention

and all facts pertinent to this contention to

the Patent Counsel, with a copy to the

Contracting Officer, or

(iii) Establishes that the failure to disclose

did not result from the Contractor’s fault or

negligence.

(3) Pending written assignment of the

patent application and patents on a subject

invention determined by the Contracting

Officer to be forfeited (such determination to

be a Final Decision under the Disputes clause

of this contract), the Contractor 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 shall be in

addition to and shall not supersede any other

rights and remedies which the Government

may have with respect to subject inventions.

§ 784.13 Effective dates.

Waivers shall be effective on the

following dates:

(a) For advance waivers of identified

inventions, i.e., inventions conceived

prior to the effective date of the

contract, on the effective date of the

contract, even though the advance

waiver may have been requested after

that date;

(b) For identified inventions under

advance waivers, i.e., inventions

conceived or first actually reduced to

practice after the effective date of the

contract, on the date the invention is

reported with the election to retain

rights as to that invention; and

(c) For waivers of identified

inventions (other than under an advance

waiver), on the date of the letter from

Patent Counsel notifying the requestor

that the waiver has been granted.

[FR Doc. 96–17431 Filed 7–11–96; 8:45 am]

BILLING CODE 6450–01–P

DEPARTMENT OF TRANSPORTATION

Federal Aviation Administration

14 CFR Part 39

[Docket No. 96–ANE–10; Amendment 39–

9676; AD 96–13–08]

RIN 2120–AA64

Airworthiness Directives; Pratt &

Whitney PW4000 Series Turbofan

Engines

AGENCY: Federal Aviation

Administration, DOT.

ACTION: Final rule; request for

comments.

SUMMARY: This amendment adopts a

new airworthiness directive (AD) that is

applicable to Pratt & Whitney (PW)

PW4000 series turbofan engines. This

action requires initial and repetitive

inspections of the aft cascade support

frame assembly of thrust reverser for

cracks, and replacement, if necessary,

with serviceable parts; or lockout of the

thrust reversers. This amendment is

prompted by reports of aft cascade

support frame assembly failures. The

actions specified in this AD are

intended to prevent aft cascade support

frame assembly failure due to cracks,

which can result in thrust reverser