[Code of Federal Regulations]
[Title 32, Volume 6]
[Revised as of July 1, 2005]
From the U.S. Government Printing Office via GPO Access
[CITE: 32CFR841.6]

[Page 82-83]
 
                        TITLE 32-NATIONAL DEFENSE
 
                CHAPTER VII--DEPARTMENT OF THE AIR FORCE
 
PART 841_LICENSING GOVERNMENT-OWNED INVENTIONS IN THE CUSTODY OF THE 
DEPARTMENT OF THE AIR FORCE--Table of Contents
 
    Subpart B_Restrictions and Conditions for Licensing and Types of 
                                Licenses
 
Sec. 841.6  Restrictions and conditions.


    The following restrictions and conditions apply to all licenses 
granted under this part:
    (a) Restrictions: (1) A license may be granted only if the applicant 
has supplied the Air Force with a satisfactory plan for development or 
marketing of the invention, or both, and with information about the 
applicant's capability to fulfill the plan.
    (2) A license granting rights to use or sell under an Air Force 
invention in the United States shall normally be granted only to a 
licensee who agrees that any product embodying the invention or produced 
through the use of the invention will be manufactured substantially in 
the United States.
    (b) Conditions. Licenses shall contain such terms and conditions as 
the Air Force determines are appropriate for the protection of the 
interests of the Federal Government and the public and are not in 
conflict with law or this part. The following terms and conditions apply 
to any license:
    (1) The duration of the license shall be for a period specified in 
the license agreement, unless sooner terminated according to provisions 
therein.
    (2) The license may be granted for all or less than all fields of 
use of the invention or in specified geographical areas, or both.
    (3) The license may extend to subsidiaries of the licensee or other 
parties if provided for in the license but shall be nonassignable 
without approval of the Air Force, except to the successor of that part 
of the licensee's business to which the invention pertains.
    (4) The license may provide the licensee the right to grant 
sublicenses under the license, subject to the approval of the Air Force. 
Each sublicense shall make reference to the license, including the 
rights retained by the Government, and a copy of each sublicense shall 
be furnished to the Air Force.
    (5) The license shall require the licensee to carry out the plan for 
development or marketing of the invention, or both, to bring the 
invention to practical application within a period specified in the 
license, and to continue to make the benefits of the invention 
reasonably accessible to the public.
    (6) The license shall require the licensee to report, at least 
annually, on the utilization or efforts at obtaining utilization that 
are made by the licensee, with particular reference to the plan 
submitted.
    (7) Licenses may be royalty-free or for royalties or other 
consideration.
    (8) When the licensee agrees that any products embodying the 
invention or produced through use of the invention will be manufactured 
substantially in the United States, the license shall recite such 
agreement.
    (9) The license shall provide for the right of the Air Force to 
terminate the license, in whole or in part, if:

[[Page 83]]

    (i) The Air Force determines that the licensee is not executing the 
plan submitted with its requests for a license and the licensee cannot 
otherwise demonstrate to the satisfaction of the Air Force that it has 
taken or can be expected to take within a reasonable time effective 
steps to achieve practical application of the invention;
    (ii) The Air Force determines that such action is necessary to meet 
requirements for public use specified by Federal regulations issued 
after the date of the license and such requirements are not reasonably 
satisfied by the licensee;
    (iii) The licensee has willfully made a false statement of or 
willfully omitted a material fact in the license application or in any 
report required by the license agreement; or
    (iv) The licensee commits a substantial breach of a covenant or 
agreement contained in the license.
    (10) The license may be modified or terminated consistent with this 
part upon mutual agreement of the Air Force and the licensee.
    (11) Nothing relating to the grant of a license, nor the grant 
itself, shall be construed to confer upon any person, any immunity from 
or defense under the antitrust laws or from a charge of patent misuse, 
and the acquisition and use of rights pursuant to this subpart shall not 
be immunized from the operation of state or Federal law by reason of the 
source of the grant.
    (12) The license shall contain a provision that the government makes 
no representation or warranty as to the validity of any licensed patent 
or patent application, or of the scope of any of the claims contained 
therein, or that the exercise of the license will not result in the 
infringement of any other patent and that the Government assumes no 
liability whatsoever resulting from the exercise of the license.