[Code of Federal Regulations] [Title 14, Volume 5, Parts 1200 to end] [Revised as of January 1, 2001] From the U.S. Government Printing Office via GPO Access [CITE: 14CFR1260.28] [Page 283-284] TITLE 14--AERONAUTICS AND SPACE SPACE ADMINISTRATION PART 1260--GRANTS AND COOPERATIVE AGREEMENTS--Table of Contents Subpart A--General Sec. 1260.28 Patent rights. Patent Rights October 2000 As stated at Sec. 1260.136, this award is subject to the provisions of 37 CFR 401.3(a) which requires use of the standard clause set out at 37 CFR 401.14 ``Patent Rights (Small Business Firms and Nonprofit Organizations)'' and the following: (a) Where the term ``contract'' or ``Contractor'' is used in the ``Patent Rights'' clause, the term shall be replaced by the term ``grant'' or ``Recipient,'' respectively. (b) In each instance where the term ``Federal Agency,'' ``agency,'' or ``funding Federal agency'' is used in the ``Patent Rights'' clause, the term shall be replaced by the term ``NASA.'' (c) The following item is added to the end of paragraph (f) of the ``Patent Rights'' clause: ``(5) The Recipient shall include a list of any Subject Inventions required to be disclosed during the preceding year in the performance report, technical report, or renewal proposal. A complete list (or a negative statement) for the entire award period shall be included in the summary of research.'' (d) The term ``subcontract'' in paragraph (g) of the ``Patent Rights'' clause shall include purchase orders. (e) The NASA implementing regulation for paragraph (g)(2) of the ``Patent Rights'' clause is at 48 CFR 1827.304-4(a)(i)(B). (f) The following requirement constitutes paragraph (l) of the ``Patent Rights'' clause: ``(l) Communications. A copy of all submissions or requests required by this clause, plus a copy of any reports, manuscripts, publications or similar material bearing on patent matters, shall be sent to the Center Patent Counsel and the NASA Grant Officer in addition to any other submission requirements in the grant provisions. If any reports contain information describing a ``subject invention'' for which the recipient has elected or may elect to retain title, NASA will use reasonable efforts to delay public release [[Page 284]] by NASA or publication by NASA in a NASA technical series until an application filing date has been established, provided that the Recipient identify the information and the ``subject invention'' to which it relates at the time of submittal. If required by the NASA Grant Officer, the Recipient shall provide the filing date, serial number and title, a copy of the patent application, and a patent number and issue date for any ``subject invention'' in any country in which the Recipient has applied for patents.'' (g) NASA Inventions. NASA will use reasonable efforts to report inventions made by NASA employees as a consequence of, or which bear a direct relation to, the performance of specified NASA activities under this agreement and, upon timely request, will use reasonable efforts to grant the Recipient an exclusive, or partially exclusive, revocable, royalty-bearing license, subject to the retention of a royalty-free right of the Government to practice or have practiced the invention by or on behalf of the Government. (h) In the event NASA contractors are tasked to perform work in support of specified activities under a cooperative agreement and inventions are made by Contractor employees, the Recipient will normally retain title to its employee inventions in accordance with 35 U.S.C. 202, 14 CFR Part 1245, and Executive Order 12591. In the event the Recipient decides not to pursue rights to title in any such invention and NASA obtains title to such inventions, NASA will use reasonable efforts to report such inventions and, upon timely request, will use reasonable efforts to grant the Recipient an exclusive, or partially exclusive, revocable, royalty-bearing license, subject to the retention of a royalty-free right of the Government to practice or have practiced the invention by or on behalf of the Government. [End of provision]