[Code of Federal Regulations]
[Title 45, Volume 3, Parts 500 to 1199]
[Revised as of September, 1997]
From the U.S. Government Printing Office via GPO Access
[CITE: 45CFR650]
[Page 173-182]
TITLE 45--PUBLIC WELFARE
CHAPTER VI--NATIONAL SCIENCE FOUNDATION
PART 650--PATENTS
Sec.
650.1 Scope of part.
650.2 National Science Foundation patent policy.
650.3 Source of authority.
650.4 Standard patent rights clause.
650.5 Special patent provisions.
650.6 Awards not primarily for research.
650.7 Awards affected by international agreements.
650.8 Retention of rights by inventor.
650.9 Unwanted inventions.
650.10 Inventions also supported by another Federal agency.
650.11 Utilization reports.
650.12 Waivers and Approvals.
650.13 Exercise of march-in rights.
650.14 Request for conveyance of title to NSF.
650.15 Appeals.
650.16 Background rights.
650.17 Subcontracts.
650.18 Delegation of authority.
Appendix A to Part 650--Optional Format for Confirmatory License
Authority: 35 U.S.C. 200-212, 42 U.S.C. 1870(e) and 1871; and the
Presidential Memorandum entitled ``Government Patent Policy'', issued
February 18, 1983.
Source: 57 FR 18053, Apr. 28, 1992, unless otherwise noted.
Sec. 650.1 Scope of part.
This part contains the policies, procedures, and clauses that govern
allocation of rights to inventions made in performance of NSF-assisted
research. It applies to all current and future funding agreements
entered into by the Foundation that relate to performance of scientific
or engineering research. As stated in the NSF Acquisition Regulation
(chapter 25 of title 48 of the Code of Federal Regulations), this part
applies to contracts as well as to grants and cooperative agreements.
Sec. 650.2 National Science Foundation patent policy.
As authorized by the National Science Board at its 230th meeting,
October 15-16, 1981, the Director of the National Science Foundation has
adopted the following statement of NSF patent policy.
(a) In accordance with the Bayh-Dole Act and the Presidential
Memorandum entitled ``Government Patent Policy'' issued February 18,
1983, the Foundation will use the Patent Rights clause prescribed by the
Department of Commerce in all its funding agreements for the performance
of experimental, developmental, or research work, including awards made
to foreign entities, unless the Foundation determines that some other
provision would better serve the purposes of that Act or the interests
of the United States and the general public.
(b) In funding agreements covered by a treaty or agreement that
provides that an international organization or foreign government,
research institute, or inventor will own or share patent rights, the
Foundation will acquire such patent rights as are necessary to comply
with the applicable treaty or agreement.
(c) If an awardee elects not to retain rights to an invention, the
Foundation will allow the inventor to retain the
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principal patent rights unless the awardee, or the inventor's employer
if other than the awardee, shows that it would be harmed by that action.
(d) The Foundation will normally allow any patent rights not wanted
by the awardee or inventor to be dedicated to the public through
publication in scientific journals or as a statutory invention
registration. However, if another Federal agency is known to be
interested in the relevant technology, the Foundation may give it an
opportunity to review and patent the invention so long as that does not
inhibit the dissemination of the research results to the scientific
community.
Sec. 650.3 Source of authority.
(a) 35 U.S.C. 200-212, commonly called the Bayh-Dole Act, as amended
by title V of Public Law 98-620 (98 stat. 3335, 3364). That law controls
the allocation of rights to inventions made by employees of small
business firms and domestic nonprofit organizations, including
universities, during federally-supported experimentation, research, or
development. Government-wide implementing regulations are contained in
part 401 of title 37 of the Code of Federal Regulations.
(b) Section 11(e) of the National Science Foundation Act of 1950, as
amended, (42 U.S.C. 1870(e)) provides that the Foundation shall have the
authority to do all things necessary to carry out the provisions of this
Act, including, but without being limited thereto, the authority--to
acquire by purchase, lease, loan, gift, or condemnation, and to hold and
dispose of by grant, sale, lease, or loan, real and personal property of
all kinds necessary for, or resulting from, the exercise of authority
granted by this Act.
(c) Section 12 of the NSF Act (42 U.S.C. 1871) provides that each
contract or other arrangement executed pursuant to this Act which
relates to scientific research shall contain provisions governing the
disposition of inventions produced thereunder in a manner calculated to
protect the public interest and the equities of the individual or
organization with which the contract or other arrangement is executed.
(d) The Presidential Memorandum entitled ``Government Patent
Policy'' issued February 18, 1983, directs Federal agencies, to the
extent permitted by law, to apply to all research performers the
policies of the Bayh-Dole Act. Under the provisions of the National
Science Foundation Act quoted above, the Foundation is permitted to
apply the Bayh-Dole policies without restriction.
Sec. 650.4 Standard patent rights clause.
(a) The following Patent Rights clause will be used in every funding
agreement awarded by the Foundation that relates to scientific or
engineering research unless a special patent clause has been negotiated
(see Sec. 650.5).
Patent Rights (September, 1997)
(a) Definitions--(1) Invention means any invention or discovery
which is or may be patentable or otherwise protectable under title 35 of
the United States Code, to any novel variety of plant which is or may be
protected under the Plant Variety Protection Act (7 U.S.C. 2321 et
seq.).
(2) Subject invention means any invention of the grantee conceived
or first actually reduced to practice in the performance of work under
this grant, provided that in the case of a variety of plant, the date of
determination (as defined in section 41(d) of the Plant Variety
Protection Act (7 U.S.C. 2401(d)) must also occur during the period of
grant performance.
(3) Practical application means to manufacture in the case of a
composition or product, to practice in the case of a process or method,
or to operate in the case of a machine or system; and, in each case,
under such conditions as to establish that the invention is being
utilized and that its benefits are to the extent permitted by law or
Government regulations available to the public on reasonable terms.
(4) Made when used in relation to any invention means the conception
or first actual reduction to practice of such invention.
(5) Small business firm means a domestic small business concern as
defined at section 2 of Public Law 85-536 (15 U.S.C. 632) and
implementing regulations of the Administrator of the Small Business
Administration. For the purpose of this Patents Rights clause, the size
standard for small business concerns involved in Government procurement
and subcontracting at 13 CFR 121.3-8 and 13 CFR 121.3-12, respectively,
will be used.
(6) Nonprofit organization means a domestic university or other
institution of higher education or an organization of the type described
in section 501(c)(3) of the Internal
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Revenue Code of 1954 (26 U.S.C. 501(c)) and exempt from taxation under
section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any
domestic nonprofit scientific or educational organization qualified
under a State nonprofit organization statute.
(b) Allocation of Principal Rights. The grantee may retain the
entire right, title, and interest throughout the world to each subject
invention subject to the provisions of this Patents Rights clause and 35
U.S.C. 203. With respect to any subject invention in which the grantee
retains title, the Federal Government shall have a nonexclusive,
nontransferable, irrevocable, paid-up license to practice or have
practiced for or on behalf of the United States the subject invention
throughout the world. If the award indicates it is subject to an
identified international agreement or treaty, the National Science
Foundation (NSF) also has the right to direct the grantee to convey to
any foreign participant such patent rights to subject inventions as are
required to comply with that agreement or treaty.
(c) Invention Disclosure, Election of Title and Filing of Patent
Applications by Grantee. (1) The grantee will disclose each subject
invention to NSF within two months after the inventor discloses it in
writing to grantee personnel responsible for the administration of
patent matters. The disclosure to NSF shall be in the form of a written
report and shall identify the grant under which the invention was made
and the inventor(s). It shall be sufficiently complete in technical
detail to convey a clear understanding of the nature, purpose,
operation, and, to the extent known, the physical, chemical, biological
or electrical characteristics of the invention. The disclosure shall
also identify any publication, on sale or public use of the invention
and whether a manuscript describing the invention has been submitted for
publication and, if so, whether it has been accepted for publication at
the time of disclosure. In addition, after disclosure to NSF, the
grantee will promptly notify NSF of the acceptance of any manuscript
describing the invention for publication or of any on sale or public use
planned by the grantee.
(2) The grantee will elect in writing whether or not to retain title
to any such invention by notifying NSF within two years of disclosure to
NSF. However, in any case where publication, on sale, or public use has
initiated the one year statutory period wherein valid patent protection
can still be obtained in the United States, the period for election of
title may be shortened by NSF to a date that is no more than 60 days
prior to the end of the statutory period.
(3) The grantee will file its initial patent application on an
invention to which it elects to retain title within one year after
election of title or, if earlier, prior to the end of any statutory
period wherein valid patent protection can be obtained in the United
States after a publication, on sale, or public use. The grantee will
file patent applications in additional countries or international patent
offices within either ten months of the corresponding initial patent
application, or six months from the date when permission is granted by
the Commissioner of Patents and Trademarks to file foreign patent
applications when such filing has been prohibited by a Secrecy Order.
(4) Requests for extension of the time for disclosure to NSF,
election, and filing under subparagraphs (c) (1), (2), and (3) of this
clause may, at the discretion of NSF, be granted.
(d) Conditions When the Government May Obtain Title. The grantee
will convey to NSF, upon written request, title to any subject
invention:
(1) If the grantee fails to disclose or elect the subject invention
within the times specified in paragraph (c) above, or elects not to
retain title; provided that NSF may only request title within 60 days
after learning of the failure of the grantee to disclose or elect within
the specified times.
(2) In those countries in which the grantee fails to file patent
applications within the times specified in paragraph (c) above;
provided, however, that if the grantee has filed a patent application in
a country after the times specified in paragraph (c) above, but prior to
its receipt of the written request of NSF, the grantee shall continue to
retain title in that country.
(3) In any country in which the grantee decides not to continue the
prosecution of any application for, to pay the maintenance fees on, or
defend in a reexamination or opposition proceeding on, a patent on a
subject invention.
(e) Minimum Rights to Grantee. (1) The grantee will retain a
nonexclusive royalty-free license throughout the world in each subject
invention to which the Government obtains title, except if the grantee
fails to disclose the subject invention within the times specified in
paragraph (c) above. The grantee's license extends to its domestic
subsidiaries and affiliates, if any, within the corporate structure of
which the grantee is a party and includes the right to grant sublicenses
of the same scope to the extent the grantee was legally obligated to do
so at the time the grant was awarded. The license is transferable only
with the approval of NSF except when transferred to the successor of
that part of the grantee's business to which the invention pertains.
(2) The grantee's domestic license may be revoked or modified by NSF
to the extent necessary to achieve expeditious practical application of
the subject invention pursuant to an application for an exclusive
license submitted in accordance with applicable provisions at 37 CFR
part 404. This license will
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not be revoked in that field of use or the geographical areas in which
the grantee has achieved practical application and continues to make the
benefits of the invention reasonably accessible to the public. The
license in any foreign country may be revoked or modified at the
discretion of NSF to the extent the grantee, its licensees, or its
domestic subsidiaries or affiliates have failed to achieve practical
application in that foreign country.
(3) Before revocation or modification of the license, NSF will
furnish the grantee a written notice of its intention to revoke or
modify the license, and the grantee will be allowed thirty days (or such
other time as may be authorized by NSF for good cause shown by the
grantee) after the notice to show cause why the license should not be
revoked or modified. The grantee has the right to appeal, in accordance
with applicable regulations in 37 CFR part 404 concerning the licensing
of Government-owned inventions, any decision concerning the revocation
or modification of its license.
(f) Grantee Action to Protect Government's Interest. (1) The grantee
agrees to execute or to have executed and promptly deliver to NSF all
instruments necessary to:
(i) Establish or confirm the rights the Government has throughout
the world in those subject inventions for which the grantee retains
title, and
(ii) Convey title to NSF when requested under paragraph (d) above,
and to enable the Government to obtain patent protection throughout the
world in that subject invention.
(2) The grantee agrees to require, by written agreement, its
employees, other than clerical and non-technical employees, to disclose
promptly in writing to personnel identified as responsible for the
administration of patent matters and in a format suggested by the
grantee each subject invention made under this grant in order that the
grantee can comply with the disclosure provisions of paragraph (c)
above, and to execute all papers necessary to file patent applications
on subject inventions and to establish the Government's rights in the
subject inventions. The disclosure format should require, at a minimum,
the information requested by paragraph (c)(1) above. The grantee shall
instruct such employees through the employee agreements or other
suitable educational programs on the importance of reporting inventions
in sufficient time to permit the filing of patent applications prior to
U.S. or foreign statutory bars.
(3) The grantee will notify NSF of any decision not to continue
prosecution of a patent application, pay maintenance fees, or defend in
a reexamination or opposition proceeding on a patent, in any country,
not less than thirty days before the expiration of the response period
required by the relevant patent office.
(4) The grantee agrees to include, within the specification of any
United States patent application and any patent issuing thereon covering
a subject invention, the following statement: ``This invention was made
with Government support under (identify the grant) awarded by the
National Science Foundation. The Government has certain rights in this
invention.''
(5) The grantee or its representative will complete, execute, and
forward to NSF a confirmation of a License to the United States
Government and the page of a United States patent application that
contains the Federal support clause within two months of filing any
domestic or foreign patent application.
(g) Subcontracts. (1) The grantee will include this Patents Rights
clause, suitably modified to identify the parties, in all subcontracts,
regardless of tier, for experimental, developmental, or research work.
The subcontractor will retain all rights provided for the grantee in
this Patents Rights clause, and the grantee will not, as part of the
consideration for awarding the subcontract, obtain rights in the
subcontractor's subject inventions.
(2) In the case of subcontracts, at any tier, when the prime award
by the Foundation was a contract (but not a grant or cooperative
agreement), NSF, subcontractor, and contractor agree that the mutual
obligations of the parties created by this Patents Rights clause
constitute a contract between the subcontractor and the Foundation with
respect to those matters covered by this Patents Rights clause.
(h) Reporting on Utilization of Subject Inventions. The grantee
agrees to submit on request periodic reports no more frequently than
annually on the utilization of a subject invention or on efforts at
obtaining such utilization that are being made by the grantee or its
licensees or assignees. Such reports shall include information regarding
the status of development, date of first commercial sale or use, gross
royalties received by the grantee, and such other data and information
as NSF may reasonably specify. The grantee also agrees to provide
additional reports in connection with any march-in proceeding undertaken
by NSF in accordance with paragraph (j) of this Patents Rights clause.
As required by 35 U.S.C. 202(c)(5), NSF agrees it will not disclose such
information to persons outside the Government without the permission of
the grantee.
(i) Preference for United States Industry. Notwithstanding any other
provision of this Patents Rights clause, the grantee agrees that neither
it nor any assignee will grant to any person the exclusive right to use
or sell
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any subject invention in the United States unless such person agrees
that any products embodying the subject invention or produced through
the use of the subject invention will be manufactured substantially in
the United States. However, in individual cases, the requirement for
such an agreement may be waived by NSF upon a showing by the grantee or
its assignee that reasonable but unsuccessful efforts have been made to
grant licenses on similar terms to potential licensees that would be
likely to manufacture substantially in the United States or that under
the circumstances domestic manufacture is not commercially feasible.
(j) March-in Rights. The grantee agrees that with respect to any
subject invention in which it has acquired title, NSF has the right in
accordance with procedures at 37 CFR 401.6 and NSF regulations at 45 CFR
650.13 to require the grantee, an assignee or exclusive licensee of a
subject invention to grant a nonexclusive, partially exclusive, or
exclusive license in any field of use to a responsible applicant or
applicants, upon terms that are reasonable under the circumstances, and
if the grantee, assignee, or exclusive licensee refuses such a request,
NSF has the right to grant such a license itself if NSF determines that:
(1) Such action is necessary because the grantee or assignee has not
taken, or is not expected to take within a reasonable time, effective
steps to achieve practical application of the subject invention in such
field of use;
(2) Such action is necessary to alleviate health or safety needs
which are not reasonably satisfied by the grantee, assignee, or their
licensees;
(3) Such action is necessary to meet requirements for public use
specified by Federal regulations and such requirements are not
reasonably satisfied by the grantee, assignee, or licensee; or
(4) Such action is necessary because the agreement required by
paragraph (i) of this Patents Rights clause has not been obtained or
waived or because a licensee of the exclusive right to use or sell any
subject invention in the United States is in breach of such agreement.
(k) Special Provisions for Grants with Nonprofit Organizations. If
the grantee is a nonprofit organization, it agrees that:
(1) Rights to a subject invention in the United States may not be
assigned without the approval of NSF, except where such assignment is
made to an organization which has as one of its primary functions the
management of inventions, provided that such assignee will be subject to
the same provisions as the grantee;
(2) The grantee will share royalties collected on a subject
invention with the inventor, including Federal employee co-inventors
(when NSF deems it appropriate) when the subject invention is assigned
in accordance with 35 U.S.C. 202(e) and 37 CFR 401.10;
(3) The balance of any royalties or income earned by the grantee
with respect to subject inventions, after payment of expenses (including
payments to inventors) incidental to the administration of subject
inventions, will be utilized for the support of scientific research or
education; and
(4) It will make efforts that are reasonable under the circumstances
to attract licensees of subject inventions that are small business firms
and that it will give preference to a small business firm if the grantee
determines that the small business firm has a plan or proposal for
marketing the invention which, if executed, is equally likely to bring
the invention to practical application as any plans or proposals from
applicants that are not small business firms; provided that the grantee
is also satisfied that the small business firm has the capability and
resources to carry out it plan or proposal. The decision whether to give
a preference in any specific case will be at the discretion of the
grantee. However, the grantee agrees that the Secretary of Commerce may
review the grantee's licensing program and decisions regarding small
business applicants, and the grantee will negotiate changes to its
licensing policies, procedures, or practices with the Secretary when the
Secretary's review discloses that the grantee could take reasonable
steps to implement more effectively the requirements of this paragraph
(k)(4).
(l) Communications. All communications required by this Patents
Rights clause should be sent to: Patent Assistant, Office of the General
Counsel, National Science Foundation, 4201 Wilson Boulevard, Arlington,
VA 22230.
(b) When the above Patent Rights clause is used in a funding
agreement other than a grant, ``grant'' and ``grantee'' may be replaced
by ``contract'' and ``contractor'' or other appropriate terms.
(Approved by the Office of Management and Budget under control number
3145-0084)
[57 FR 18053, Apr. 28, 1992, as amended at 59 FR 37438, July 22, 1994]
Sec. 650.5 Special patent provisions.
At the request of the prospective awardee or on recommendation from
NSF staff, a Grants or Contracts Officer, with the concurrence of the
cognizant Program Manager, may negotiate special patent provisions when
he or she determines that exceptional circumstances require restriction
or
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elimination of the right of a prospective awardee to retain title to any
subject invention in order to better promote the policy and objectives
of chapter 18 of title 35 of the United States Code or the National
Science Foundation Act. The Grants or Contracts Officer will prepare the
written determination required by Sec. 401.3(e) of title 37 of the Code
of Federal Regulations and assure that appropriate reports are made to
the Secretary of Commerce and Chief Counsel for Advocacy of the Small
Business Administration as required in Sec. 401.3(f). Unless doing so
would be inconsistent with an obligation imposed on the Foundation by
statute, international agreement, or pact with other participants in or
supporters of the research, every special patent provision will allow
the awardee, after an invention has been made, to request that it be
allowed to retain principal rights to that invention under
Sec. 650.12(e) of this regulation.
Sec. 650.6 Awards not primarily for research.
(a) Awards not primarily intended to support scientific or
engineering research need contain no patent provision. Examples of such
awards are travel and conference grants.
(b) NSF fellowships and traineeships are primarily intended to
support education or training, not particular research. Therefore, in
accordance with section 212 of title 35 of the United States Code, the
Foundation claims no rights to inventions made by fellows or trainees.
The following provision will be included in each fellowship or
traineeship program announcement and made part of the award:
Intellectual Property Rights
The National Science Foundation claims no rights to any inventions
or writings that might result from its fellowship or traineeship awards.
However, fellows and trainees should be aware that the NSF, another
Federal agency, or some private party may acquire such rights through
other support for particular research. Also, fellows and trainees should
note their obligation to include an Acknowledgment and Disclaimer in any
publication.
Sec. 650.7 Awards affected by international agreements.
(a) Some NSF awards are made as part of international cooperative
research programs. The agreements or treaties underlying many of these
programs require an allocation of patent rights different from that
provided by the Patent Rights clause in Sec. 650.4(a). Therefore, as
permitted by Sec. 401.5(d) of the implementing regulations for the Bayh-
Dole Act (37 CFR 401.5(d)), paragraph (b) of the standard Patent Rights
clause in Sec. 650.4(a) has been modified to provide that the Foundation
may require the grantee to transfer to a foreign government or research
performer such rights in any subject invention as are contemplated in
the international agreement. The award instrument will identify the
applicable agreement or treaty.
(b) After an invention is disclosed to the Patent Assistant, the
recipient of an award subject to an international agreement will be
informed as to what rights, if any, it must transfer to foreign
participants. Recipients may also ask the Program Manager to provide
them with copies of the identified international agreements before or
after accepting an award.
Sec. 650.8 Retention of rights by inventor.
If an awardee elects not to retain rights to an invention, the
inventor may request the NSF Patent Assistant for permission to retain
principal patent rights. Such requests should be made as soon as
possible after the awardee notifies the Patent Assistant that it does
not want to patent the invention. Such requests will normally be granted
unless either the awardee or the employer of the inventor shows that it
would be harmed by that action. As required by Sec. 401.9 of the
implementing regulations for the Bayh-Dole Act (37 CFR 401.9), the
inventor will be subject to the same conditions that the awardee would
have been, except that the special restrictions imposed on nonprofit
organizations will not apply to the inventor.
Sec. 650.9 Unwanted inventions.
(a) The Foundation will normally allow any patent rights not wanted
by the awardee or inventor to be dedicated
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to the public through publication in scientific and engineering journals
or as a statutory invention registration under section 157 of title 35
of the United States Code. Except as provided in paragraph (b) of this
section, the NSF Patent Assistant will acknowledge a negative election
by encouraging the awardee and inventor to promptly make all research
results available to the scientific and engineering community.
(b) If the NSF Patent Assistant believes that another Federal agency
is interested in the relevant technology, he or she may, after receiving
the awardee's election not to patent and ascertaining that the inventor
also does not want to patent, send a copy of the invention disclosure to
that agency to give it an opportunity to review and patent the
invention. Unless the agency expresses an interest in the invention
within thirty days, the Patent Assistant will acknowledge the awardee's
negative election by encouraging prompt publication of all research
results. If the agency does express an interest in patenting the
invention, the Patent Assistant will transfer to it all rights to the
invention.
Sec. 650.10 Inventions also supported by another Federal Agency.
Section 401.13(a) of the implementing regulation for the Bayh-Dole
Act (37 CFR 401.13(a)) provides that in the event that an invention is
made under funding agreements of more than one federal agency, the
agencies involved will, at the request of the grantee or contractor or
on their own initiative, designate one agency to be responsible for the
administration of the invention. Whenever the NSF Patent Assistant finds
that another agency also supported an NSF subject invention, he or she
will consult with the grantee or contractor and appropriate personnel in
the other agency to determine if a single agency should be designated to
administer the Government's rights in the invention. The Patent
Assistant may transfer to, or accept from, any other Federal agency,
responsibility for administering a jointly-supported invention.
Sec. 650.11 Utilization reports.
Paragraph (h) of the standard Patent Rights clause set forth in
Sec. 650.4 obliges grantees ``to submit on request periodic reports no
more frequently than annually on the utilization of a subject invention
or on efforts at obtaining such utilization''. At this time, the
Foundation does not plan to request such reports except in connection
with march-in investigations conducted under Sec. 650.13. This section
will be amended to describe periodic reporting requirements if such are
ever established.
[57 FR 18053, Apr. 28, 1992, as amended at 59 FR 37438, July 22, 1994]
Sec. 650.12 Waivers and approvals.
(a) Requests for extension of time to disclose to the NSF Patent
Assistant, make an election to retain title to, or file a patent on a
subject invention will be granted by the NSF Patent Assistant unless he
or she determines that such an extension would either imperil the
securing of valid patent protection or unacceptably restrict the
publication of the results of the NSF-supported research.
(b) Approval of assignments by nonprofit organizations (required by
subparagraph (k)(1) of the Patent Rights clause in Sec. 650.4(a)) will
be given by the Patent Assistant unless he or she determines that the
interests of the United States Government will be adversely affected by
such assignment.
(c) Approval of long-term exclusive licensing of NSF-assisted
inventions by nonprofit organizations (restricted by earlier versions of
the NSF Patents Rights clause and by pre-Bayh-Dole Institutional Patent
Agreements and waiver conditions) will be given by the Patent Assistant
unless he or she determines that the interests of the United States
Government will be adversely affected by such waiver.
(d) The preference for United States industry imposed by paragraph
(i) of the Patent Rights clause in Sec. 650.4(a) may be waived by the
NSF Patent Assistant as provided in that paragraph.
(e) Special restrictions on or limitation of the right of an awardee
to retain title to subject inventions imposed under Sec. 650.5 of this
regulation may be
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waived by the Grants or Contracting Officer whenever he or she
determines, after consultation with the cognizant Program Manager, that
the reasons for imposing the restrictions or limitations do not require
their application to a particular invention.
(f) Requests for approvals and waiver under this section should be
addressed to the NSF Patent Assistant as provided in paragraph (1) of
the Patent Rights clause in Sec. 650.4(a). Requests under paragraph (a)
of this section for extensions of time to disclose, elect, or file may
be made by telephone or electronic mail as well as in writing. A written
request for extension of time to disclose, elect, or file can be assumed
to have been approved unless the Patent Assistant replies negatively
within ten business days of the date such request was mailed,
telecopied, or otherwise dispatched. Requests for approvals or waivers
under paragraphs (b), (c), (d), and (e) of this section must be in
writing and should explain why an approval or waiver is justified under
the stated criteria. The requester will be given a written explanation
of the reasons for denial of a request covered by this section.
Sec. 650.13 Exercise of march-in rights.
(a) The procedures established by this section supplement those
prescribed by Sec. 401.6 of the implementing regulation for the Bayh-
Dole Act (37 CFR Sec. 401.6) and apply to all march-in rights held by
NSF including those resulting from funding agreements not covered by the
Bayh-Dole Act.
(b) Petitions requesting that the NSF exercise a march-in right
should be addressed to the NSF Patent Assistant. Such petitions should:
(1) Identify the patent or patent application involved and the
relevant fields of use of the invention;
(2) State the grounds for the proposed march-in;
(3) Supply evidence that one or more of the four conditions creating
a march-in right (lack of practical application, unsatisfied health or
safety needs, unmet requirements for public use, or failure to prefer
United States industry) is present; and
(4) Explain what action by the Foundation is necessary to correct
that condition.
(c) If evidence received from a petitioner or from the Foundation's
administration of the Patent Rights clause indicates that one or more of
the four conditions creating a march-in right might exist, the NSF
Patent Assistant will informally review the matter as provided in
Sec. 401.6(b) of the implementing regulation. If that informal review
indicates that one or more of the four conditions creating a march-in
right probably exists, the Patent Assistant will initiate a formal
march-in proceeding by issuing a written notice to the patent holder.
That notice will provide all the information required by Sec. 401.6(c)
of the implementing regulation. The patent holder may submit information
and argument in opposition to the proposed march-in in person, in
writing, or through a representative.
(d) If the NSF Patent Assistant determines that a genuine dispute
over material facts exists, he or she will identify the disputed facts
and notify the NSF General Counsel. The General Counsel will create a
cross-directorate fact-finding panel, which will establish its own fact-
finding procedures within the requirements of Sec. 401.6(e) of the
implementing regulation based on the dimensions of the particular
dispute. The Patent Assistant will serve as secretary to the panel, but
will not take part in its deliberations. Written findings of facts will
be submitted to the General Counsel, sent by certified mail to the
patent holder, and made available to all other interested parties.
(e) The NSF General Counsel will determine whether and how the
Foundation should exercise a march-in right as provided in Sec. 401.6(g)
of the implementing regulation.
Sec. 650.14 Request for conveyance of title to NSF.
(a) The procedures established by this section apply to the exercise
of the Foundation's right under paragraph (d) of the Patent Rights
clause in Sec. 650.4(a) to request conveyance of title to a subject
invention if certain conditions exist.
(b) The NSF Patent Assistant may request the recipient of an NSF
award
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to convey to the Foundation or a designee title in one or more countries
to any invention to which the awardee has elected not to retain title.
The NSF Patent Assistant may request immediate conveyance of title to a
subject invention if the awardee fails (1) to submit a timely invention
disclosure, (2) to make a timely election to retain patent rights, or
(3) to file a timely patent application; but only if he or she
determines that such action is required to preserve patent rights.
(c) The NSF Patent Assistant will informally review any apparent
failure by an awardee to comply with the requirements of paragraph (c)
of the Patent Rights clause in Sec. 650.4(a). The interested
institution, the inventor, the patent holder, and any other interested
party will be given an opportunity to explain why a particular invention
was not disclosed, why an election was not made, or why a patent
application was not filed. If the Patent Assistant determines that a
genuine dispute over material facts exists, a cross-directorate fact-
finding panel will be appointed by the General Counsel. The panel will
establish its own fact-finding procedures based on the dimensions of the
particular dispute. Written findings of facts will be submitted to the
General Counsel, sent by certified mail to the patent holder, and made
available to all other interested parties.
(d) The NSF General Counsel will determine whether the Foundation
should request conveyance of title or if it should retain title obtained
under Sec. 650.14(b).
Sec. 650.15 Appeals.
(a) All actions by the NSF Patent Assistant under Sec. 650.8 denying
an inventor's request to retain rights to a subject invention, under
Sec. 650.12 denying a request for waiver, or under Sec. 650.14(d)
denying the existence of a material dispute may be appealed to the
Director of the NSF Division of Grants and Contracts by an affected
party within thirty days. A request under Sec. 650.14(b) to immediately
convey title to the Foundation may be appealed to the DGC Director by
the title holder within five days.
(b) All actions by a Grants and Agreements Officer or Contracting
Officer refusing to eliminate restrictions on or limitation of the right
of an awardee to retain title to subject inventions imposed under
Sec. 650.5 of this regulation may be appealed to the Director of the NSF
Division of Contracts, Policy, and Oversight (CPO) by an affected party
within thirty days.
(c) A decision by the General Counsel to exercise a march-in right
or to request conveyance of title may be appealed by the patent holder
or any affected licensee to the NSF Deputy Director within thirty days.
When a march-in was initiated in response to a petition, the General
Counsel's decision not to exercise a march-in right or to exercise it in
a manner different from that requested in the petition may be appealed
by the petitioner to the NSF Deputy Director within thirty days.
(d) In reviewing the actions of the NSF Patent Assistant, a Grants
and Agreements Officer, a Contracting Officer, or the General Counsel,
the CPO Director or NSF Deputy Director will consider both the factual
and legal basis for the action or determination and its consistency with
the policies and objectives of the Foundation and, if applicable, the
Bayh-Dole Act (35 U.S.C. 200-212) and implementing regulations at part
401 of title 37 of the Code of Federal Regulations.
[57 FR 18053, Apr. 28, 1992, as amended at 61 FR 51022, Sept. 30, 1996]
Sec. 650.16 Background rights.
The Foundation will acquire rights to a research performer's pre-
existing technology only in exceptional circumstances where, due to the
nature of the research being supported, the Foundation requires greater
control over resulting inventions. The NSF Grants or Contracts Officer,
with concurrence of the cognizant Program Manager, will negotiate a
background rights provision. If the affected awardee is a small business
firm or nonprofit organization, the provision will conform to the
requirements of the Bayh-Dole Act (35 U.S.C. 202(f)) as implemented by
37 CFR 401.12).
Sec. 650.17 Subcontracts.
As provided in paragraph (g) of the Patent Rights clause in
Sec. 650.4(a),
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awardees should normally use that clause in all subcontracts. At the
request of the awardee or subcontractor or on recommendation from NSF
staff, the cognizant Grants or Contracts Officer may direct the awardee
to insert into subcontracts relating to scientific research a special
patent provision negotiated under Sec. 650.5.
Sec. 650.18 Delegation of Authority.
The General Counsel is responsible for implementing this regulation
and is authorized to make any exceptions to or extensions of the NSF
Patent Policy as may be required by particular circumstances. The
General Counsel will designate the NSF Patent Assistant and that
individual is authorized to carry out the functions assigned by this
regulation.
Sec. 650.19 Electronic invention handling.
(a) Grantees are encouraged to use the Edison Invention
Information Management System maintained by the National
Institutes of Health to disclose NSF subject inventions. Detailed
instructions for use of that system are provided at
http://era.info.nih.gov/Edison/ and should be followed for NSF
subject inventions except that:
(1) All written communications required should be addressed to
the Patent Assistant, Office of the General Counsel, National Science
Foundation, 4201 Wilson Boulevard, Arlington, VA 22230.
(2) NSF does not require either an Annual Utilization Report
or a Final Invention Statement and Certification.
(b) Questions on use of Edison may be sent to the NSF Patent
Assistant at patents@nsf.gov.
Appendix A to Part 650--Optional Format for Confirmatory License
The following format may be used for the confirmatory license to the
Government required by subparagraph (f)(5) of the Patent Rights clause
in Sec. 650.4(a). Any equivalent instrument may also be used.
License to the United States Government
This instrument confirms to the United States Government, as
represented by the National Science Foundation, an irrevocable,
nonexclusive, nontransferable, royalty-free license to practice or have
practiced on its behalf throughout the world the following subject
invention:
(invention title)
(inventor[s] name[s])
(patent application number and filing date)
(country, if other than United States)
(NSF Disclosure No.).
This subject invention was made with NSF support through:
(grant or contract number)
(grantee or contractor).
Principal rights to this subject invention have been left with the
licensor.
Signed:_________________________________________________________________
Name:___________________________________________________________________
Title:__________________________________________________________________
Date:___________________________________________________________________
Accepted on behalf of the Government:
NSF Patent Assistant
Date:___________________________________________________________________