[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: 48CFR27.305-3]



[Page 528-529]

 

            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. 27.305-3  Follow-up by Government.



    (a) Agencies shall maintain appropriate follow-up procedures to 

protect the Government's interest and to check that subject inventions 

are identified and disclosed, and when appropriate, patent applications 

are filed, and that the Government's rights therein are established and 

protected. Follow-up activities for contracts that include a clause 

referenced in 27.304-2 shall be coordinated with the appropriate agency.

    (b) The contracting officer administering the contract (or other 

representative specifically designated in the contract for such purpose) 

is responsible for receiving invention disclosures, reports, 

confirmatory instruments, notices, requests, and other documents and 

information submitted by the contractor pursuant to a patent rights 

clause. If the contractor fails to furnish documents or information as 

called for by the clause within the time required, the contracting 

officer shall promptly request the contractor to supply the required 

documents or information and, if the failure persists, shall take 

appropriate action to secure compliance. Invention disclosures, reports, 

confirmatory instruments, notices, requests, and other documents and 

information relating to patent rights clauses shall be promptly 

furnished by the contracting officer administering the contract (or 

other designee) to the procuring agency or contracting activity for 

which the procurement was made for appropriate action.

    (c) Contracting activities shall establish appropriate procedures to 

detect and correct failures by the contractor to comply with its 

obligations under the patent rights clauses, such as failures to 

disclose and report subject inventions, both during and after contract 

performance. Ordinarily a contractor should have written instructions 

for its employees covering compliance with these contract obligations. 

Government effort to review and correct contractor compliance with its 

patent rights obligations should be directed primarily towards contracts 

that, because of the nature of the research, development, or 

experimental work or the large dollar amount spent on such work, are 

more likely to result in subject inventions significant in number or 

quality, and towards contracts when there is reason to believe the 

contractors may not be complying with their contractual obligations. 

Other contracts may be reviewed using a spot-check method, as feasible. 

Appropriate follow-up procedures and activities may include the 

investigation or review of selected contracts or contractors by those 

qualified in patent and technical matters to detect failures to comply 

with contract obligations.

    (d) Follow-up activities should include, where appropriate, use of 

Government patent personnel--

    (1) To interview agency technical personnel to identify novel 

developments made in contracts;

    (2) To review technical reports submitted by contractors with 

cognizant agency technical personnel;

    (3) To check the Official Gazette of the United States Patent and 

Trademark Office and other sources for patents issued to the contractor 

in fields related to its Government contracts; and

    (4) If additional information is required, to have cognizant 

Government personnel interview contractor personnel regarding work under 

the contract involved, observe the work on site, and inspect laboratory 

notebooks and other records of the contractor related to work under the 

contract.



[[Page 529]]



    (e) If it is determined that a contractor or subcontractor does not 

have a clear understanding of the rights and obligations of the parties 

under a patent rights clause, or that its procedures for complying with 

the clause are deficient, a post-award orientation conference or letter 

should ordinarily be used to explain these rights and obligations (see 

subpart 42.5). When a contractor fails to establish, maintain, or follow 

effective procedures for identifying, disclosing, and, when appropriate, 

filing patent applications on inventions (if such procedures are 

required by the patent rights clause), or after appropriate notice fails 

to correct any deficiency, the contracting officer may require the 

contractor to make available for examination books, records, and 

documents relating to the contractor's inventions in the same field of 

technology as the contract effort to enable a determination of whether 

there are such inventions and may invoke the withholding of payments 

provision (if any) of the clause. The withholding of payments provision 

(if any) of the patent rights clause or of any other contract clause may 

also be invoked if the contractor fails to disclose a subject invention. 

Significant or repeated failures by a contractor to comply with the 

patent rights obligation in its contracts shall be documented and made a 

part of the general file (see 4.801(c)(3)).