[Code of Federal Regulations]

[Title 48, Volume 1]

[Revised as of October 1, 2005]

From the U.S. Government Printing Office via GPO Access

[CITE: 48CFR27.303]



[Page 519-521]

 

            TITLE 48--FEDERAL ACQUISITION REGULATIONS SYSTEM

 

                CHAPTER 1--FEDERAL ACQUISITION REGULATION

 

PART 27_PATENTS, DATA, AND COPYRIGHTS--Table of Contents

 

          Subpart 27.3_Patent Rights Under Government Contracts

 

Sec. 27.303  Contract clauses.



    In contracts (and solicitations therefor) for experimental, 

developmental, or research work (but see 27.304-3 regarding contracts 

for construction work or architect-engineer services), a patent rights 

clause shall be inserted as follows:

    (a)(1) The contracting officer shall insert the clause at 52.227-11, 

Patent Rights--Retention by the Contractor (Short Form), if all the 

following conditions apply:

    (i) The contractor is a small business concern or nonprofit 

organization as defined in 27.301 or, except for contracts of the 

Department of Defense (DOD), the Department of Energy (DOE), or the 

National Aeronautics and Space Administration (NASA), any other type of 

contractor.

    (ii) No alternative patent rights clause is used in accordance with 

paragraph (c) or (d) of this section or 27.304-2.

    (2) To the extent the information is not required elsewhere in the 

contract, and unless otherwise specified by agency supplemental 

regulations, the contracting officer may modify 52.227-11(f) to require 

the contractor to do one or more of the following:

    (i) Provide periodic (but not more frequently than annually) 

listings of all subject inventions required to be disclosed during the 

period covered by the report.

    (ii) Provide a report prior to the closeout of the contract listing 

all subject inventions or stating that there were none.

    (iii) Provide, upon request, the filing date, serial number and 

title, a copy of the patent application, and patent number and issue 

date for any subject invention in any country in which the contractor 

has applied for patents.

    (iv) Furnish the Government an irrevocable power to inspect and make 

copies of the patent application file when a Federal Government employee 

is a coinventor.

    (3) If the acquisition of patent rights for the benefit of a foreign 

government is required under a treaty or executive agreement, or if the 

agency head or a designee determines at the time of contracting that it 

would be in the national interest to acquire the right to sublicense 

foreign governments or international organizations pursuant to any 

existing or future treaty or agreement, the contracting officer shall 

use the clause at 52.227-11, with its Alternate I. If other rights are 

necessary to effectuate the treaty or agreement, Alternate I may be 

appropriately modified. In long term contracts, Alternate II shall be 

added if necessary to effectuate treaties or agreements to be entered 

into.

    (4) If the contracting officer includes the clause at 52.227-11, 

Patent Rights--Retention by the Contractor (Short Form), in a contract 

with a nonprofit organization for the operation of a Government-owned 

facility, the contracting officer will include Alternate III in lieu of 

subparagraph (k)(3) of the clause.



[[Page 520]]



    (5) If the contract is for the operation of a Government-owned 

facility, the contracting officer may include Alternate IV with the 

clause at 52.227-11.

    (b)(1) The contracting officer shall insert the clause at 52.227-12, 

Patent Rights--Retention by the Contractor (Long Form), if all the 

following conditions apply:

    (i) The contractor is other than a small business firm or nonprofit 

organization.

    (ii) No alternative clause is used in accordance with paragraph (c) 

or (d) of this section or 237.304-2.

    (iii) The contracting agency is one of those excepted under 

subdivision (a)(1)(i) of this section.

    (2) If the acquisition of patent rights for the benefit of a foreign 

government is required under a treaty or executive agreement or if the 

agency head or a designee determines at the time of contracting that it 

would be in the national interest to acquire the right to sublicense 

foreign governments or international organizations pursuant to any 

existing or future treaty or agreement, the contracting officer shall 

use the clause at 52.227-12, with its Alternate I. If other rights are 

necessary to effectuate the treaty or agreement, Alternate I may be 

appropriately modified. In long term contracts, Alternate II shall be 

added if necessary to effectuate treaties or agreements to be entered 

into.

    (c)(1) The contracting officer shall insert the clause at 52.227-13, 

Patent Rights--Acquisition by the Government, if any of the following 

conditions apply:

    (i) No alternative clause is used in accordance with subparagraphs 

(c) (2) and (4) or paragraph (d) of this section or 27.304-2.

    (ii) The work is to be performed outside the United States, its 

possessions, and Puerto Rico by contractors that are not small business 

firms, nonprofit organizations as defined in 27.301, or domestic firms. 

For purposes of this subparagraph, the contracting officer may presume 

that a contractor is not a domestic firm unless it is known that the 

firm is not foreign owned, controlled, or influenced. (See 27.304-4(a) 

regarding subcontracts with U.S. firms.)

    (2) Pursuant to their statutory requirements, DOE and NASA may 

specify in their supplemental regulations use of a modified version of 

the clause at 52.227-13 in contracts with other than small business 

concerns or nonprofit organizations.

    (3) If the acquisition of patent rights for the benefit of a foreign 

government is required under a treaty or executive agreement or if the 

agency head or a designee determines at the time of contracting that it 

would be in the national interest to acquire the right to sublicense 

foreign governments or international organizations pursuant to any 

existing or future treaty or agreement, the contracting officer shall 

use the clause with its Alternate I. If other rights are necessary to 

effectuate the treaty or agreement, Alternate I may be appropriately 

modified. In long term contracts, Alternate II shall be added if 

necessary to effectuate treaties or agreements to be entered into.

    (4) Section 401 of title 37 of the Code of Federal Regulations 

provides that in contracts with small business firms and nonprofit 

organizations, when an agency exercises the exceptions at 27.302(b) (2) 

or (3) it shall use the clause at 52.227-11, with such modifications as 

are necessary to address the exceptional circumstances or concerns which 

led to the use of the exception. The greater rights determinations 

provision of 52.227-13(b)(2) shall be included in the modified clause.

    (d)(1) If one of the following applies, the contracting officer may 

insert the clause prescribed in paragraph (a) or (b) of this section as 

otherwise applicable, agency supplemental regulations may provide 

another clause and specify its use, or the contracting officer shall 

insert the clause prescribed in paragraph (c) of this section:

    (i) The contractor is not located in the United States or does not 

have a place of business located in the United States or is subject to 

the control of a foreign government.

    (ii) There are exceptional circumstances and the agency head 

determines that restriction or elimination of the right to retain title 

to any subject invention will better promote the



[[Page 521]]



policy and objectives of chapter 18 of title 35 of the United States 

Code.

    (iii) It is determined by a Government authority which is authorized 

by statute or executive order to conduct foreign intelligence or 

counterintelligence activities that restriction or elimination of the 

right to retain any subject invention is necessary to protect the 

security of such activities.

    (iv) The contract includes the operation of a Government-owned, 

contractor-operated facility of the Department of Energy primarily 

dedicated to that Department's naval nuclear propulsion or weapons 

related programs.

    (2) Before using any of the exceptions under subparagraph (d)(1) of 

this section in a contract with a small business firm or a nonprofit 

organization and before using the exception of subdivision (d)(1)(ii) of 

this section for any contractor, the agency shall prepare a written 

determination, including a statement of facts supporting the 

determination, that the conditions identified in the exception exist. A 

separate statement of facts shall be prepared for each exceptional 

circumstances determination, except that in appropriate cases a single 

determination may apply to both a contract and any subcontract issued 

under it, or to any contract to which an exception is applicable. In 

cases when subdivision (d)(1)(ii) of this section is used, the 

determination shall also include an analysis justifying the 

determination. This analysis should address, with specificity, how the 

alternate provisions will better achieve the objectives set forth in 35 

U.S.C. 200. For contracts with small business firms and nonprofit 

organizations, a copy of each determination, statement of facts, and, if 

applicable, analysis shall be promptly provided to the contractor or 

offeror along with a notification of its appeal rights under 35 U.S.C. 

202(b)(4) in accordance with 27.304-1(a). In the case of small business 

and nonprofit contractors, except for determination under subdivision 

(d)(1)(iii) of this section, the agency shall, within 30 days after 

award of a contract, also provide copies of each determination, 

statement of fact, and analysis to the Secretary of Commerce. These 

shall be sent within 30 days after the award of the contract to which 

they pertain. In the case of contracts with small business concerns, 

copies will also be sent to the Chief Counsel for Advocacy of the Small 

Business Administration.

    (e) For those agencies excepted under paragraph (a)(1)(i) of this 

section, only small business firms or non-profit organizations qulaify 

for the clause at 52.227-11. If one of these agencies has reason to 

question the status of the prospective contractor, the agency may file a 

protest in accordance with 13 CFR 121.3-5 if small business firm status 

is questioned, or require the prospective contractor to furnish evidence 

of its status as a nonprofit organization.

    (f) Alternates I and II to the clauses at 52.227-11, 52.227-12, and 

52-227-13, as applicable, may be modified to make clear that the rights 

granted to the foreign government or international organization may be 

for additional rights beyond a license or sublicense if so required by 

the applicable treaty or international agreement. For example, in some 

cases exclusive licenses or even assignment of title in the foreign 

country involved might be required. In addition, an Alternate may be 

modified to provide for direct licensing by the contractor of the 

foreign government or international organization.



[54 FR 25065, June 12, 1989 and 55 FR 25525, June 21, 1990; 62 FR 236, 

Jan. 2, 1997]