Subpart 927.2-Patents
Sec.
927.200 Scope of subpart.
927.201 Authorization and consent.
927.201-1 General.
927.206 Refund of royalties.
927.206-1 General.
927.206-2 Clause for refund of royalties.
927.207 Classified contracts.
927.207-1 General.
Subpart 927.3.Patent Rights Under Government Contracts
Sec.
927.300 General.
927.302 Policy.
927.303 Contract clauses.
927.304 Procedures.
927.370 [Reserved]
Subpart 927.4.Technical Data and Copyrights
927.400 Scope of subpart.
927.402 Acquisition and use of technical data.
927.402-1 General.
927.402-2 Policy.
927.403 Negotiations and deviations.
927.404 Rights in Technical Data in Subcontracts.
927.404-70 Statutory Programs.
927.408 Cosponsored research and development activities.
927.409 Solicitation provisions and contract clauses.
Subpart 927.70 [Reserved]
Authority: Sec. 644 of the Department of Energy
Organization Act, Pub. L. 95-91 (42 U.S.C. 7254);
Sec. 148 of the Atomic Energy Act of 1954, as
amended (42 U.S.C. 2168); Federal Nonnuclear
Energy Research and Development Act of 1974, Sec.
9, (42 U.S.C. 5908); Atomic Energy Act of 1954, as
amended, Sec. 152, (42 U.S.C. 2182); Department of
Energy National Security and Military Applications of
Nuclear Energy Authorization Act of 1987, as
amended, Sec. 3131(a), (42 U.S.C. 7261a.)
Source: 49 FR 12004, Mar. 28, 1984, unless otherwise
noted and 59 FR 66259, Dec. 23, 1995.
__________________________________________
Subpart 927.2-Patents
927.200 Scope of subpart.
When consulting Subpart 27.2 of the FAR, consider
"research, development, and demonstration" to replace
the phrase "research and development" or "R&D," for
the purposes of DOE actions.
927.201 Authorization and consent.
927.201-1 General.
In certain contracting situations, such as those
involving research, development, or demonstration
projects, consideration should be given to the impact of
third party-owned patents covering technology that may
be incorporated in the project which patents may
ultimately affect widespread commercial use of the
project results. In such situations, Patent Counsel shall
be consulted to determine what modifications, if any,
are to be made to the utilization of the Authorization
and Consent and Patent Indemnity provisions or what
other action might be deemed appropriate.
927.206 Refund of Royalties.
927.206-1 General.
The clause at 952.227-9, Refund of Royalties, obligates
the contractor to inform DOE of the payment of
royalties pertaining to the use of intellectual property,
either patent or data related, in the performance of the
contract. This information may result in identification
of instances in which the Government already has a
license for itself or others acting in its behalf or the
right to sublicense others. Also, there may be pending
anti-trust actions or challenges to the validity of a
patent or the proprietary nature of the data, or the
contractor may be able to gain unrestricted access to
the same data through other sources. In such situations
the contractor may avoid the payment of a royalty in its
entirety or may be charged a reduced royalty.
927.206-2 Clause for refund of royalties.
The contracting officer shall insert the clause at
952.227-9, Refund of Royalties, in solicitations and
contracts for experimental, research, developmental, or
demonstration work or other solicitations and contracts
in which the contracting officer believes royalties will
have to be paid by the contractor or a subcontractor of
any tier.
927.207 Classified contracts.
927.207-1 General.
Unauthorized disclosure of classified subject matter,
whether in a patent application or resulting from the
issuance of a patent, may be a violation of the Atomic
Energy Act of 1954, as amended, other laws relating to
espionage and national security, and provisions of the
proposed contract pertaining to disclosure of
information.
Subpart 927.3.Patent Rights Under Government Contracts
927.300 General.
(a) One of the primary missions of the Department of
Energy is the use of its procurement process to ensure
the conduct of research, development, and
demonstration leading to the ultimate
commercialization of efficient sources of energy. To
accomplish its mission, DOE must work in cooperation
with industry in the development of new energy sources
and in achieving the ultimate goal of widespread
commercial use of those energy sources. To this end,
Congress has provided DOE with the authority to
invoke an array of incentives to secure the
commercialization of new technologies developed for
DOE. One such important incentive is provided by the
patent system.
(b) Pursuant to 42 U.S.C. 2182 and 42 U.S.C. 5908,
DOE takes title to all inventions conceived or first
actually reduced to practice in the course of or under
contracts with large, for-profit companies, foreign
organizations, and others not beneficiaries of Pub. L.
96-517. Regulations dealing with Department's
authority to waive its title to subject inventions,
including the relevant statutory objectives, exist at 10
CFR part 784, or successor regulation. Pursuant to
those regulations, DOE may waive the Government's
patent rights in appropriate situations at the time of
contracting to encourage industrial participation, foster
commercial utilization and competition, and make the
benefits of DOE activities widely available to the
public. In addition to considering the waiver of patent
rights at the time of contracting, DOE will also
consider the incentive of a waiver of patent rights upon
the reporting of an identified invention when requested
by such entities or by the employee-inventor with the
permission of the contractor. These requests can be
made whether or not a waiver request was made at the
time of contracting. Waivers for identified inventions
will be granted where it is determined that the patent
waiver will be a meaningful incentive to achieving the development and ultimate commercial utilization of
inventions. Where DOE grants a waiver of the
Government's patent rights, either at the time of
contracting or after an invention is made, certain
minimum rights and obligations will be required by
DOE to protect the public interest.
(c) Another major DOE mission is to manage the
nation's nuclear weapons and other classified programs,
where research and development procurements are
directed toward processes and equipment not available
to the public. To accomplish DOE programs for
bringing private industry into these and other special
programs to the maximum extent permitted by national
security and policy considerations, it is desirable that
the technology developed in these programs be made
available on a selected basis for use in the particular
fields of interest and under controlled conditions by
properly cleared industrial and scientific research
institutions. To ensure such availability and control,
the grant of waivers in these programs may necessarily
be more limited, either by the imposition of field of use
restrictions or national security measures, than in other
DOE programs.
[63 FR 10499, Mar. 4, 1998]
927.302 Policy.
(a) Except for contracts with organizations that are
beneficiaries of Pub. L. 96-517, the United States, as
represented by DOE, shall normally acquire title in and
to any invention or discovery conceived or first actually
reduced to practice in the course of or under the
contract, allowing the contractor to retain a
nonexclusive, revocable, paid-up license in the
invention and the right to request permission to file an
application for a patent and retain title to any ensuing
patent in any foreign country in which DOE does not
elect to secure patent rights. DOE may approve the
request if it determines that such approval would be in
the national interest. The contractor's nonexclusive
license may be revoked or modified by DOE only to the
extent necessary to achieve expeditious practical
application of the invention pursuant to any application
for and the grant of an exclusive license in the
invention to another party.
(b) In contracts having as a purpose the conduct of research, development, or demonstration work and in certain other contracts, DOE may need to require those contractors that are not the beneficiaries of Pub. L. 96- 517 to license background patents to ensure reasonable public availability and accessibility necessary to practice the subject of the contract in the fields of technology specifically contemplated in the contract effort. That need may arise where the contractor is not
attempting to take the technology resulting from the
contract to the commercial marketplace, or is not
meeting market demands. The need for background
patent rights and the particular rights that should be
obtained for either the Government or the public will
depend upon the type, purpose, and scope of the
contract effort, impact on the DOE program, and the
cost to the Government of obtaining such rights.
(c) Provisions to deal specifically with DOE
background patent rights are contained in paragraph
(k) of the clause at 952.227-13. That paragraph may
be modified with the concurrence of Patent Counsel in
order to reflect the equities of the parties in particular
contracting situations. Paragraph (k) should normally
be deleted for contracts with an estimated cost and fee
or price of $250,000 or less and may not be
appropriate for certain types of study contracts; for
planning contracts; for contracts with educational
institutions; for contracts for specialized equipment for
in-house Government use, not involving use by the
public; and for contracts the work products of which
will not be the subject of future procurements by the
Government or its contractors.
(d) The Assistant General Counsel for Technology
Transfer and Intellectual Property shall:
(1) Make the determination that whether reported
inventions are subject inventions under the patent
rights clause of the contract;
(2) Determine whether and where patent protection
will be obtained on inventions;
(3) Represent DOE before domestic and foreign patent
offices;
(4) Accept assignments and instruments confirmatory
of the Government's rights to inventions; and
(5) Represent DOE in patent, technical data, and
copyright matters not specifically reserved to the Head
of the Agency or designee under these regulations.
927.303 Contract clauses.
(a) In solicitations and contracts for experimental,
research, developmental, or demonstration work (but
see FAR 27.304-3 regarding contracts for construction
work or architect-engineer services), the contracting
officer shall include the clause:
(1) At 952.227-13, Patent Rights Acquisition by the
Government, in all such contracts other than those
described in paragraphs (a)(2) and (a)(3) of this
section;
(2) At 952.227-11, Patent Rights by the Contractor
(Short Form), in contracts in which the contractor is a
domestic small business or nonprofit organization as
defined at FAR 27.301, except where the work of the
contract is subject to an Exceptional Circumstances
Determination by DOE; and
(3) At 970.5204-71 or 970.5204-72, as discussed in
970.27, Patent, Data, and Copyrights, in contracts for
the management and operation of DOE laboratories
and production facilities.
(b) DOE shall not use the clause at FAR 52.227-12
except in situations where patent counsel grants a
request for advance waiver, pursuant to 10 CFR part
784, and supplies the contracting officer with that
clause with appropriate modifications. Otherwise, in
instances in which DOE grants an advance waiver or
waives its rights in an identified invention, pursuant to
10 CFR part 784, contracting officers shall consult with
patent counsel for the appropriate clause.
[63 FR 10499, Mar. 4, 1998]
927.304 Procedures.
Where the contract contains the clause at 952.227-11
and the contractor does not elect to retain title to a
subject invention, DOE may consider and, after
consultation with the contractor, grant requests for
retention of rights by the inventor subject to the
provisions of 35 U.S.C. 200 et seq. This statement is in lieu of FAR 27.304-1(c).
927.370 [Reserved]
[63 FR 10499, Mar. 4, 1998]
Subpart 927.4.Technical Data and Copyrights
927.400 Scope of subpart.
This subpart sets forth DOE's policy, procedures, and
instructions for contract clauses with respect to the
acquisition and use of technical data and copyrights in
contracts or subcontracts entered into, with or for the
benefit of the Government.
[63 FR 10499, Mar. 4, 1998]
927.402 Acquisition and use of technical data.
927.402-1 General.
(a) The provisions herein pertain to research,
development, demonstration and supply contracts.
Special considerations for contracts for the operation,
design, or construction of Government-owned facilities
are covered by Subpart 970.27. Under DOE's broad
charter to perform research, development, and
demonstration work, in both nuclear and nonnuclear
fields, and to meet the objectives stated in 927.402-2,
DOE has extensive needs for technical data. The
satisfaction of these needs and the achievement of
DOE's objectives through a sound data policy are found
in the balancing of the needs and equities of the
Government, its contractors, and the general public.
(b) It is important to keep a clear distinction between contract requirements for the delivery of technical data
and rights in technical data. The legal rights which the
Government acquires in technical data in DOE
contracts, other than management and operating
contracts (see 970.2705) and other contracts involving
the production of data necessary for the management
or operation of DOE facilities or a DOE site, are set
forth in Rights in Data--General clause at 48 CFR
52.227-14 as modified in accordance with 927.409 of
this subpart. In those contracts involving the production
of data necessary for the management or operation of
DOE facilities or a DOE site, after consultation with
Patent Counsel the clause at 970.5204-82 shall be
used. However, those clauses do not obtain for the
Government delivery of any data whatsoever. Rather,
known requirements for the technical data to be
delivered by the contractor shall be set forth as part of
the contract. The Additional Technical Data
Requirements clause at 48 CFR 52.227-16 may be
used along with the Rights in Data--General clause to
enable the contracting officer to require the contractor
to furnish additional technical data, the requirement for
which was not known at the time of contracting. There
is, however, a built-in limitation on the kind of
technical data which a contractor may be required to
deliver under either the contract or the Additional
Technical Data Requirements clause. This limitation is
found in the withholding provision of paragraph (g) of
the Rights in Data--General clause at 48 CFR
52.227-14, as amended at 48 CFR 927.409(a), which
provides that the Contractor need not furnish limited
rights data or restricted computer software. Unless
Alternate II or III to the Rights in Data--General clause
is used, it is specifically intended that the contractor
may withhold limited rights data or restricted computer
software even though a requirement for technical data
specified in the contract or called for delivery pursuant
to the Additional Technical Data Requirements clause
would otherwise require the delivery of such data.
(c) In contracts involving access to certain categories of DOE-owned restricted data, as set forth in 10 CFR Part 725, DOE has reserved the right to receive
reasonable compensation for the use of its inventions
and discoveries, including its related data and
technology. Accordingly, in contracts where access to
such restricted data is to be provided to contractors, the
following parenthetical phrase shall be inserted after
"contract data" in paragraph (b)(2)(ii) of the clause at
952.227-75, after "technical data" in paragraph (b)(2)
of the clause at 952.227-77, or after "technical data" in
paragraph (b)(2)(ii) of the clause at 952.227-78 as
appropriate: "(except Restricted Data in category C-24,
10 CFR Part 725, in which DOE has reserved the right
to receive reasonable compensation for the use of its
inventions and discoveries, including related data and
technology)." In addition, there are other types of
contract situations (e.g., no cost contracts for studies or
evaluation) wherein the contractor is given access to
restricted data. In such contract situations, limitations
on the use of such data may be appropriate.
[63 FR 10499, Mar. 4, 1998]
927.402-2 Policy.
The technical data policy is directed toward achieving
the following objectives:
(a) Making the benefits of the energy research,
development and demonstration programs of DOE
widely available to the public in the shortest practicable
time;
(b) Promoting the commercial utilization of the
technology developed under DOE programs;
(c) Encouraging participation by private persons in
DOE energy research, development, and demonstration
programs; and
(d) Fostering competition and preventing undue market
concentration or the creation or maintenance of other
situations inconsistent with the antitrust laws.
927.403 Negotiations and deviations.
Contracting officers shall contact Patent Counsel assisting their contracting activity or the Assistant General Counsel for Technology Transfer and Intellectual Property for assistance in selecting, negotiating, or approving appropriate data and copyright clauses in accordance with the procedures set forth in this subpart and 48 CFR part 27.4. In particular, contracting officers shall seek the prompt and timely advice of Patent Counsel regarding any situation not in conformance with this subpart and prescribed clauses, including the inclusion or modification of alternate paragraphs of the Rights in
Data clause at 48 CFR 52.227-14, as amended at 48
CFR 927.409(a), the exclusion of specific items from
said clause, the exclusion of the Additional Technical
Data Requirements clause at 48 CFR 52.227-16, and
the inclusion of any special provisions in a particular
contract.
[63 FR 10499, Mar. 4, 1998]
927.404 Rights in Technical Data in Subcontracts. (DOE coverage.paragraphs (g), (k), (l), and (m)).
(g)(4) Contractors are required by paragraph (d)(3) of
the clause at FAR 52.227-14, as modified pursuant to
48 CFR 927.409(a)(1), to acquire permission from
DOE to assert copyright in any computer software first
produced in the performance of the contract. This
requirement reflects DOE's established software
distribution program, recognized at FAR 27.404(g)(2),
and the Department's statutory dissemination
obligations. When a contractor requests permission to
assert copyright in accordance with paragraph (d)(3) of
the Rights in Data--General clause as prescribed for
use at 48 CFR 927.409(a)(1), Patent Counsel shall
predicate its decision on the considerations reflected in
paragraph (e) of the clause at 970.5204-82 Rights in
Data--Technology Transfer.
(k) Subcontracts. (1)(i) It is the responsibility of prime
contractors and higher tier subcontractors, in meeting
their obligations with respect to contract data, to obtain
from their subcontractor the rights in, access to, and
delivery of such data on behalf of the Government.
Accordingly, subject to the policy set forth in this
subpart, and subject to the approval of the contracting
officer, where required, selection of appropriate
technical data provisions for subcontracts is the
responsibility of the prime contractors or higher-tier
subcontractors. In many, but not all instances, use of
the Rights in Technical Data clause of FAR 52.227-14,
as modified pursuant to 48 CFR 927.409(a)(1), in a
subcontract will provide for sufficient Government
rights in and access to technical data. The inspection
rights afforded in Alternate V of that clause normally
should be obtained only in first-tier subcontracts having
as a purpose the conduct of research, development, or
demonstration work or the furnishing of supplies for
which there are substantial technical data requirements
as reflected in the prime contract.
(ii) If a subcontractor refuses to accept technical data
provisions affording rights in and access to technical
data on behalf of the Government, the contractor shall
so inform the contracting officer in writing and not
proceed with the award of the subcontract without
written authorization of the contracting officer.
(iii) In prime contracts (or higher-tier subcontracts)
which contain the Additional Technical Data
Requirements clause at FAR 52.227-16, it is the
further responsibility of the contractor (or
higher-tier subcontractor) to determine whether
inclusion of such clause in a subcontract is required to
satisfy technical data requirements of the prime
contract (or higher-tier subcontract).
(2) As is the case for DOE in its determination of
technical data requirements, the Additional Technical
Data Requirements clause at FAR 52.227-16 should
not be used at any subcontracting tier where the
technical data requirements are fully known. Normally,
the clause will be used only in subcontracts having as a
purpose the conduct of research, development, or
demonstration work. Prime contractors and higher-tier
subcontractors shall not use their power to award
subcontracts as economic leverage to acquire rights in
the subcontractor's limited rights data or restricted
computer software for their private use, and they shall
not acquire rights to limited rights data or restricted
computer software on behalf of the Government for
standard commercial items without the prior approval
of Patent Counsel.
(l) Contractor licensing. In many contracting situations the achievement of DOE's objectives would be frustrated if the Government, at the time of contracting, did not obtain on behalf of responsible third parties and itself limited license rights in and to limited rights data or restricted computer software or both necessary for the practice of subject inventions or data first produced or delivered in the performance of the contract. Where the purpose of the contract is research, development, or demonstration, contracting officers should consult with program officials and Patent Counsel to consider whether such rights should be acquired. No such rights should be obtained from a small business or non-profit organization, unless similar rights in background inventions of the small business or non-profit organization have been authorized in accordance with 35 U.S.C. 202(f). In all cases when the contractor has agreed to include a provision assuring commercial availability of background patents, consideration should be given to securing for the Government and responsible third parties at reasonable royalties and under appropriate restrictions, co-extensive license rights for data which are limited rights data and restricted computer software. When such license rights are deemed necessary, the Rights in Data-General clause at FAR 52.227-14 should be supplemented by the addition of Alternate VI as provided at 48 CFR 952.227-14. Alternate VI will normally be sufficient to cover limited rights data and restricted computer software for items and processes that were used in the contract and are
necessary in order to insure widespread commercial
use or practical utilization of a subject of the contract.
The expression "subject of the contract" is intended to
limit the licensing required in Alternate VI to the fields
of technology specifically contemplated in the contract
effort and may be replaced by a more specific statement
of the fields of technology intended to be covered in the
manner described in the patent clause at 48 CFR
952.227-13 pertaining to "Background Patents."
Where, however, limited rights data and restricted
computer software cover the main purpose or basic
technology of the research, development, or
demonstration effort of the contract, rather than
subcomponents, products, or processes which are
ancillary to the contract effort, the limitations set forth
in subparagraphs (k)(1) through (k)(4) of Alternate VI
of 48 CFR 952.227-14 should be modified or deleted.
Paragraph (k) of 48 CFR 952.227-14 further provides
that limited rights data or restricted computer software
may be specified in the contract as being excluded from
or not subject to the licensing requirements thereof.
This exclusion can be implemented by limiting the
applicability of the provisions of paragraph (k) of 48
CFR 952.227-14 to only those classes or categories of
limited rights data and restricted computer software
determined as being essential for licensing. Although
contractor licensing may be required under paragraph
(k) of 48 CFR 952.227-14, the final resolution of
questions regarding the scope of such licenses and the
terms thereof, including provisions for confidentiality,
and reasonable royalties, is then left to the negotiation
of the parties.
(m) Access to restricted data. In contracts involving
access to certain categories of DOE-owned Category
C-24 restricted data, as set forth in 10 CFR part 725,
DOE has reserved the right to receive reasonable
compensation for the use of its inventions and
discoveries, including its related data and technology.
Accordingly, in contracts where access to such
restricted data is to be provided to contractors,
Alternate VII shall be incorporated into the rights in
technical data clause of the contract. In addition, in any
other types of contracting situations in which the
contractor may be given access to restricted data,
appropriate limitations on the use of such data must be
specified.
[63 FR 10499, Mar. 4, 1998]
927.404 Rights in Technical Data in Subcontracts. (DOE coverage.paragraphs (g), (k), (l), and (m)).
(g)(4) Contractors are required by paragraph (d)(3) of
the clause at FAR 52.227-14, as modified pursuant to
48 CFR 927.409(a)(1), to acquire permission from
DOE to assert copyright in any computer software first produced in the performance of the contract. This
requirement reflects DOE's established software
distribution program, recognized at FAR 27.404(g)(2),
and the Department's statutory dissemination
obligations. When a contractor requests permission to
assert copyright in accordance with paragraph (d)(3) of
the Rights in Data--General clause as prescribed for
use at 48 CFR 927.409(a)(1), Patent Counsel shall
predicate its decision on the considerations reflected in
paragraph (e) of the clause at 970.5204-82 Rights in
Data--Technology Transfer.
(k) Subcontracts. (1)(i) It is the responsibility of prime
contractors and higher tier subcontractors, in meeting
their obligations with respect to contract data, to obtain
from their subcontractor the rights in, access to, and
delivery of such data on behalf of the Government.
Accordingly, subject to the policy set forth in this
subpart, and subject to the approval of the contracting
officer, where required, selection of appropriate
technical data provisions for subcontracts is the
responsibility of the prime contractors or higher-tier
subcontractors. In many, but not all instances, use of
the Rights in Technical Data clause of FAR 52.227-14,
as modified pursuant to 48 CFR 927.409(a)(1), in a
subcontract will provide for sufficient Government
rights in and access to technical data. The inspection
rights afforded in Alternate V of that clause normally
should be obtained only in first-tier subcontracts having
as a purpose the conduct of research, development, or
demonstration work or the furnishing of supplies for
which there are substantial technical data requirements
as reflected in the prime contract.
(ii) If a subcontractor refuses to accept technical data
provisions affording rights in and access to technical
data on behalf of the Government, the contractor shall
so inform the contracting officer in writing and not
proceed with the award of the subcontract without
written authorization of the contracting officer.
(iii) In prime contracts (or higher-tier subcontracts)
which contain the Additional Technical Data
Requirements clause at FAR 52.227-16, it is the
further responsibility of the contractor (or
higher-tier subcontractor) to determine whether
inclusion of such clause in a subcontract is required to
satisfy technical data requirements of the prime
contract (or higher-tier subcontract).
(2) As is the case for DOE in its determination of technical data requirements, the Additional Technical Data Requirements clause at FAR 52.227-16 should not be used at any subcontracting tier where the technical data requirements are fully known. Normally, the clause will be used only in subcontracts having as a purpose the conduct of research, development, or
demonstration work. Prime contractors and higher-tier
subcontractors shall not use their power to award
subcontracts as economic leverage to acquire rights in
the subcontractor's limited rights data or restricted
computer software for their private use, and they shall
not acquire rights to limited rights data or restricted
computer software on behalf of the Government for
standard commercial items without the prior approval
of Patent Counsel.
(l) Contractor licensing. In many contracting situations
the achievement of DOE's objectives would be
frustrated if the Government, at the time of contracting,
did not obtain on behalf of responsible third parties
and itself limited license rights in and to limited rights
data or restricted computer software or both necessary
for the practice of subject inventions or data first
produced or delivered in the performance of the
contract. Where the purpose of the contract is research,
development, or demonstration, contracting officers
should consult with program officials and Patent
Counsel to consider whether such rights should be
acquired. No such rights should be obtained from a
small business or non-profit organization, unless
similar rights in background inventions of the small
business or non-profit organization have been
authorized in accordance with 35 U.S.C. 202(f). In all
cases when the contractor has agreed to include a
provision assuring commercial availability of
background patents, consideration should be given to
securing for the Government and responsible third
parties at reasonable royalties and under appropriate
restrictions, co-extensive license rights for data which
are limited rights data and restricted computer
software. When such license rights are deemed
necessary, the Rights in Data-General clause at FAR
52.227-14 should be supplemented by the addition of
Alternate VI as provided at 48 CFR 952.227-14.
Alternate VI will normally be sufficient to cover limited
rights data and restricted computer software for items
and processes that were used in the contract and are
necessary in order to insure widespread commercial
use or practical utilization of a subject of the contract.
The expression "subject of the contract" is intended to
limit the licensing required in Alternate VI to the fields
of technology specifically contemplated in the contract
effort and may be replaced by a more specific statement
of the fields of technology intended to be covered in the
manner described in the patent clause at 48 CFR
952.227-13 pertaining to "Background Patents."
Where, however, limited rights data and restricted
computer software cover the main purpose or basic
technology of the research, development, or
demonstration effort of the contract, rather than
subcomponents, products, or processes which are
ancillary to the contract effort, the limitations set forth
in subparagraphs (k)(1) through (k)(4) of Alternate VI of 48 CFR 952.227-14 should be modified or deleted.
Paragraph (k) of 48 CFR 952.227-14 further provides
that limited rights data or restricted computer software
may be specified in the contract as being excluded from
or not subject to the licensing requirements thereof.
This exclusion can be implemented by limiting the
applicability of the provisions of paragraph (k) of 48
CFR 952.227-14 to only those classes or categories of
limited rights data and restricted computer software
determined as being essential for licensing. Although
contractor licensing may be required under paragraph
(k) of 48 CFR 952.227-14, the final resolution of
questions regarding the scope of such licenses and the
terms thereof, including provisions for confidentiality,
and reasonable royalties, is then left to the negotiation
of the parties.
(m) Access to restricted data. In contracts involving
access to certain categories of DOE-owned Category
C-24 restricted data, as set forth in 10 CFR part 725,
DOE has reserved the right to receive reasonable
compensation for the use of its inventions and
discoveries, including its related data and technology.
Accordingly, in contracts where access to such
restricted data is to be provided to contractors,
Alternate VII shall be incorporated into the rights in
technical data clause of the contract. In addition, in any
other types of contracting situations in which the
contractor may be given access to restricted data,
appropriate limitations on the use of such data must be
specified.
[63 FR 10499, Mar. 4, 1998]
927.404-70 Statutory Programs.
Occasionally, Congress enacts legislation that
authorizes or requires the Department to protect from
public disclosure specific data first produced in the
performance of the contract. Examples of such
programs are "the Metals Initiative" and section
3001(d) of the Energy Policy Act. In such cases DOE
Patent Counsel is responsible for providing the
appropriate contractual provisions for protecting the
data in accordance with the statute. Generally, such
clauses will be based upon the Rights in Data-General
clause prescribed for use at 48 CFR 927.409(a) with
appropriate modifications to define and protect the
"protected data" in accordance with the applicable
statute. When contracts under such statutes are to be
awarded, contracting officers must acquire from Patent
Counsel the appropriate contractual provisions.
Additionally, the contracting officer must consult with
DOE program personnel and Patent Counsel to identify
data first produced in the performance of the contract
that will be recognized by the parties as protected data
and what data will be made available to the public
notwithstanding the statutory authority to withhold the
data from public dissemination.
[63 FR 10499, Mar. 4, 1998]
927.408 Cosponsored research and development activities.
Because of the Department of Energy's statutory duties
to disseminate data first produced under its contracts
for research, development, and demonstration, the
provisions of FAR 27.408 do not apply to cosponsored
or cost shared contracts.
[63 FR 10499, Mar. 4, 1998]
927.409 Solicitation provisions and contract clauses. (DOE coverage.paragraphs (a), (h), (s), and (t)).
(a)(1) The contracting officer shall insert the clause at
FAR 52.227-14, Rights in Data-General, substituting
the following paragraph (a) and including the following
paragraph (d)(3) and Alternate V in solicitations and
contracts if it is contemplated that data will be
produced, furnished, or acquired under the contract;
except contracting officers are authorized to use
Alternate IV rather than paragraph (d)(3) in contracts
for basic or applied research with educational
institutions except where software is specified for
delivery or except where other special circumstances
exist:
(a) Definitions.
(1) Computer data bases, as used in this clause, means
a collection of data in a form capable of, and for the
purpose of, being stored in, processed, and operated on
by a computer. The term does not include computer
software.
(2) Computer software, as used in this clause, means (i)
computer programs which are data comprising a series
of instructions, rules, routines, or statements, regardless
of the media in which recorded, that allow or cause a
computer to perform a specific operation or series of
operations and (ii) data comprising source code
listings, design details, algorithms, processes, flow
charts, formulae, and related material that would enable
the computer program to be produced, created, or
compiled. The term does not include computer data
bases.
(3) Data, as used in this clause, means recorded
information, regardless of form or the media on which
it may be recorded. The term includes technical data
and computer software. For the purposes of this clause, the term does not include data incidental to the
administration of this contract, such as financial,
administrative, cost and pricing, or management
information.
(4) Form, fit, and function data, as used in this clause,
means data relating to items, components, or processes
that are sufficient to enable physical and functional
interchangeability, as well as data identifying source,
size, configuration, mating, and attachment
characteristics, functional characteristics, and
performance requirements; except that for computer
software it means data identifying source, functional
characteristics, and performance requirements but
specifically excludes the source code, algorithm,
process, formulae, and flow charts of the software.
(5) Limited rights data, as used in this clause, means
data, other than computer software, developed at
private expense that embody trade secrets or are
commercial or financial and confidential or privileged.
The Government's rights to use, duplicate, or disclose
limited rights data are as set forth in the Limited Rights
Notice of subparagraph (g)(2) of this section if
included in this clause.
(6) Restricted computer software, as used in this
clause, means computer software developed at private
expense and that is a trade secret; is commercial or
financial and is confidential or privileged; or is
published copyrighted computer software, including
minor modifications of any such computer software.
The Government's rights to use, duplicate, or disclose
restricted computer software are as set forth in the
Restricted Rights Notice of subparagraph (g)(3) of this
section if included in this clause.
(7) Technical data, as used in this clause, means
recorded data, regardless of form or characteristic, that
are of a scientific or technical nature. Technical data
does not include computer software, but does include
manuals and instructional materials and technical
data formatted as a computer data base.
(8) Unlimited rights, as used in this clause, means the
rights of the Government to use, disclose, reproduce,
prepare derivative works, distribute copies to the
public, including by electronic means, and perform
publicly and display publicly, in any manner, including
by electronic means, and for any purpose whatsoever,
and to have or permit others to do so.
(d)(3) The Contractor agrees not to assert copyright in computer software first produced in the performance of this contract without prior written permission of the DOE Patent Counsel assisting the contracting activity. When such permission is granted, the Patent Counsel
shall specify appropriate terms, conditions, and
submission requirements to assure utilization,
dissemination, and commercialization of the data. The
Contractor, when requested, shall promptly deliver to
Patent Counsel a duly executed and approved
instrument fully confirmatory of all rights to which the
Government is entitled.
(2) However, rights in data in these specific situations
will be treated as described, where the contract is--
(i) For the production of special works of the type set
forth in FAR 27.405(a), but the clause at FAR
52.227-14, Rights in Data-General, shall be included in
the contract and made applicable to data other than
special works, as appropriate (See paragraph (i) of
FAR 27.409);
(ii) For the acquisition of existing data works, as
described in FAR 27.405(b) (See paragraph (j) of FAR
27.409);
(iii) To be performed outside the United States, its
possessions, and Puerto Rico, in which case agencies
may prescribe different clauses (See paragraph (n) of
FAR 27.409);
(iv) For architect-engineer services or construction
work, in which case contracting officers shall utilize the
clause at FAR 52.227-17, Rights in Data-Special
Works;
(v) A Small Business Innovation Research contract
(See paragraph (l) of FAR 27.409);
(vi) For management and operation of a DOE facility
(See 970.2705) or other contracts involving the
production of data necessary for the management or
operation of DOE facilities or a DOE site, after
consultation with Patent Counsel (See 927.402-1(b));
or
(vii) Awarded pursuant to a statute expressly providing
authority for the protection of data first produced
thereunder from disclosure or dissemination. (See
927.404-70).
(h) The contracting officer shall insert the clause at
FAR 52.227-16, Additional Data Requirements, in
solicitations and contracts involving experimental,
developmental, research, or demonstration work (other
than basic or applied research to be performed solely
by a university or college where the contract amount
will be $500,000 or less) unless all the requirements
for data are believed to be known at the time of
contracting and specified in the contract. See FAR
27.406(b). This clause may also be used in other
contracts when considered appropriate.
(s) Contracting officers shall incorporate the
solicitation provision at FAR 52.227-23, Rights to
Proposal Data (Technical), in all requests for
proposals.
(t) Contracting officers shall include the solicitation
provision at 952.227-84 in all solicitations involving
research, developmental, or demonstration work.
[63 FR 10499, Mar. 4, 1998]
Subpart 927.70 [Reserved]