EXHIBIT H-2-B

Rights of Parties Regarding Intellectual Property for DOE


Patent Rights—Use of Facilities

 

Note: This exhibit shall be used by UC in contractual agreements executed for work under this Agreement with all DOE Laboratories except those managed by UC.   

 

A.                Definitions

 

1.                  “Subject Invention” means any invention or discovery of the DOE or Facility Operator which is conceived in the course of or under this Agreement or, to the extent the Sponsor is performing any work under this Agreement, of the Sponsor, conceived or first actually reduced to practice in the course of or under this Agreement. “Subject Invention” includes any art, method, process, machine, manufacture, design or composition of matter, or any new and useful improvement thereof, or any variety of plant, whether patented under the Patent Laws of the United States of America or any foreign country, or unpatented.

 

2.                  “Patent Counsel” means the DOE Patent Counsel assisting the procuring activity who has the administrative responsibility for the facility where the work under this Agreement is to be performed.

 

3.                  “Background Intellectual Property” means the separately developed intellectual property items identified by the Facility Operator in Paragraph I of this Article, which were conceived or in existence prior to or first produced outside of this Agreement.

 

B.                 Rights of the Sponsor – Election to Retain Rights

 

1.                  Subject to the provisions of paragraph F, with respect to any Subject Invention reported and elected in accordance with paragraph G (1) of this Article, the Sponsor may elect to obtain the entire right, title and interest throughout the world to each Subject Invention made by the Sponsor's employees and any patent application filed in any country on that Subject Invention and in any resulting patent secured by the Sponsor. Where appropriate, the filing of patent applications by the Sponsor is subject to DOE and other U.S. Government security regulations and requirements.

2.                  With respect to any Subject Invention in which the Facility Operator or the Government obtains title, the Facility Operator or the Government grants to the Sponsor a non-exclusive, non-transferable, irrevocable, paid-up, license to practice or have practiced by or on behalf of the State of California, for State governmental purposes, the Subject Invention throughout the world. The Facility Operator and/or Government will obtain agreements to effectuate this clause with all persons or entities obtaining ownership interest in patented Subject Inventions.

 

C.                Rights of the Facility Operator – Election to Retain Rights

 

With respect to any Subject Invention reported in accordance with paragraph G(2) of this Article, the Facility Operator may elect to obtain title to each Subject Invention made by the Facility Operator's employees subject to the terms of its M&O Contract with the U.S. Department of Energy. Once title has been elected by the Facility Operator, a Facility Operator’s Subject Invention may subsequently be assigned to the Sponsor, subject to the provisions of paragraphs D and F hereunder, for continuation of patent prosecution, the payment of maintenance fees, or other good cause as mutually agreed to by the DOE, Facility Operator and the Sponsor. In the case of a nonprofit management and operations Facility Operator, the above arrangement has been approved by the Department under 35 USC 202 (c) (7).

 

D.                Rights of Facility Operator and Government

 

Assignment to the Facility Operator or the Government

 

The Sponsor agrees to assign to either the Facility Operator or the Government, as requested by the DOE, the entire right, title, and interest in any country to each Subject Invention of the Sponsor, where the Sponsor:

 

1.                  Does not elect pursuant to this Article to retain such rights;

 

2.                  Elects or is assigned title to a Subject Invention pursuant to paragraph B or C, but fails to have a patent application filed in that country on the Subject Invention or decides not to continue prosecution or decides not to pay any maintenance fees covering such Subject Invention; or

 

3.                  Elects to retain title but, at any time, no longer desires to retain title.

 

E.                 Unelected Interested

 

Placement in the Public Domain

 

The Parties and the Facility Operator each agree that either may place any Subject Invention disclosures in the public domain (by inclusion in the final report of this project) which:

 

1.                  Are not elected by either Party or the Facility Operator pursuant to this Article;

 

2.                  Each Party and the Facility Operator fails to have a patent application filed in that country on a Subject Invention or decides not to pay any maintenance fees covering such Subject Invention; or

 

3.                  Title, at any time, neither Party nor the Facility Operator desires to retain.

 

F.                 Terms and Conditions of Waived Rights

 

1.                  To preserve the Facility Operator's and the Government's residual rights to Sponsor's Subject Inventions, and in patent applications and patents on Sponsor's Subject Inventions, the Sponsor will take all actions in reporting, electing, filing on, prosecuting, and maintaining invention rights promptly, but in any event, in sufficient time to satisfy domestic and foreign statutory and regulatory time requirements; or, if the Sponsor decides not to take appropriate steps to protect the invention rights, it will notify the Facility Operator or DOE Patent Counsel in sufficient time to permit either the Facility Operator or the Government to file, prosecute, and maintain patent applications and any resulting patents prior to the end of such domestic or foreign statutory or regulatory time requirements.

 

2.                  The Sponsor will convey or ensure the conveyance of any executed instruments necessary to vest in either the Facility Operator or the Government the rights set forth in this Article.

 

3.                  With respect to any Subject Invention in which the Sponsor obtains title, the Sponsor hereby grants to the Government a non-exclusive, nontransferable, irrevocable, paid-up license to practice or have practiced by or on behalf of the United States Government the Subject Invention throughout the world.

 

4.                  The Sponsor will provide the Government a copy of any patent application which it files on a Subject Invention within six (6) months after such application is filed, including its serial number and filing date.

 

5.                  The Sponsor agrees to include, within the specification of any U.S. patent application and any patent issuing thereon covering a Subject Invention in which the Sponsor obtains title, the following statement: “The Government has rights in this invention pursuant to (specify this underlying Agreement).”

 

6.                  Preference for U.S. Industry. Notwithstanding any other provision of this Article, the Sponsor agrees that neither it nor any assignee, will grant to any person the exclusive right to use or sell any Subject Invention in the U.S. 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 U.S. However, in individual cases, the requirement for such an agreement may be waived by DOE upon a showing by the Sponsor 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 U.S. or that under the circumstances domestic manufacture is not commercially feasible.

 

7.                  March-In-Rights. The Sponsor agrees that with respect to any Subject Invention in which it has acquired title, the DOE will retain the right to require the Sponsor to grant a responsible applicant a non-exclusive, partially exclusive, or exclusive license to use the Subject Invention in any field of use, on terms that are reasonable under the circumstances, or if the Sponsor fails to grant such a license, to grant the license itself. DOE may exercise this right only in exceptional circumstances and only if DOE determines that:

 

a.                   The action is necessary to meet health or safety needs that are not reasonably satisfied by the Sponsor; or

 

b.                  The action is necessary to meet the requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the Sponsor; or

 

c.                   Such action is necessary because a licensee of the exclusive right to use or sell any Subject Invention in the United States is in breach of the agreement required by paragraph F (6).

 

8.                  The Sponsor agrees to refund any amounts received as royalty charges on any Subject Invention to which the Sponsor obtains title in procurement by or on behalf of the Government and to provide for that refund in any instrument transferring rights to any party in the Subject Invention.

 

G.                Invention Identification, Disclosures and Reports

 

1.                  The Sponsor will furnish the DOE Patent Counsel a written report containing full and complete technical information concerning each Subject Invention it makes within six (6) months after conception or first actual reduction to practice, whichever occurs first, in the course of or under this Agreement, but in any event prior to any on sale, public use, or public disclosure of such invention known to the Sponsor. The report will identify the contract and inventor(s) and will be sufficiently complete in technical detail and appropriately illustrated by sketch or diagram to convey to one skilled in the art to which the invention pertains a clear understanding to the extent known at the time of disclosure, of the nature, purpose, operation, and to the extent known, the physical, chemical, biological, or electrical characteristics of the invention. The report should also include any election of invention rights under this Article. When a Subject Invention is reported under this paragraph G(1), it will be presumed to have been made in the manner specified in Section (a)(1) and (2) of 42 U.S.C. 5908.

 

2.                  The Facility Operator shall report Subject Inventions it makes in accordance with the terms and conditions set forth in its M&O Contract with the U.S. Department of Energy. In addition, the Facility Operator shall disclose to the Sponsor at the same time as disclosure to the Department any Subject Inventions made by the Facility Operator under this Agreement.

 

The Facility Operator agrees to include, within the specification of any U.S. patent application and any patent issuing thereon covering a Subject Invention in which the Facility Operator obtains title, the following statement:

 

“This invention was made with support from the US Dept of Energy under Contract No. <enter contract number> and the State of California under California Energy Commission Contract No. 500-02-004.  Both the U.S. Government and the California Energy Commission have certain rights in this invention.”

 

3.                  Requests for extension of time for election under paragraphs 1. and 2. above may be granted by DOE Patent Counsel for good cause shown in writing.

 

H.                Facilities License

 

In addition to the rights of the Parties and the Facility Operator with respect to Subject Inventions, the Sponsor hereby grants to the Government an irrevocable, non-exclusive, paid-up license to (1 ) practice or to have practiced by or for the Government at the facility, and (2) transfer such license with the transfer of the facility any inventions or discoveries regardless of when conceived or first actually reduced to practice or acquired by the Sponsor, which at any time, through completion of this Agreement, are owned or controlled by the Sponsor and are incorporated in the facility as a result of this Agreement to such an extent that the facility is not restored to the condition existing prior to the Agreement. The acceptance or exercise by the Government of the aforesaid rights and license will not prevent the Government at any time from contesting the enforceability, validity, scope of, or title to, any rights or patents herein licensed.

 

I.                   Background Intellectual Property

 

1.            The Facility Operator will not knowingly use Background Intellectual Properly in performing work under this Agreement unless such Background Intellectual Property, if any, is identified herein below. The Sponsor is not granted any license rights, either express or implied, to this Background Intellectual Property under this Agreement. Facility Operator provides this information to comply with its M&O Contract and to notify the Sponsor that licenses to Background Intellectual Property may be necessary to practice Subject Inventions made under this Agreement. Neither the Government nor the Facility Operator shall be liable for failing to bring Background Intellectual Property to the Sponsor’s attention or for infringement of others’ rights or damages incurred through the use of such intellectual property.

 

<Select ONE of the following>

 

2.      No Background Intellectual Property will be used in performing

work under this Agreement.

 

3.      The Background Intellectual Property (BIP) listed below will be

used in performing work under this Agreement. (Where possible,

designate any BIP by disclosure or docket number.)

 

a.                    

b.                   

c.                    

 

J.                   Limitation of Rights

 

Nothing contained in this patent rights Article shall be deemed to give the Government any rights with respect to any invention other than a Subject Invention except as set forth in Facilities License of paragraph H.

 

K.                Early Termination of Agreement

 

If the Agreement is terminated before completion of the Statement of Work, then the terms and conditions of this Article will survive the Agreement.



[1] The provisions of this Exhibit H-2-B are taken directly from Appendix B (California Energy Commission – Patent Rights – Use of Facilities) from the DOE Funds-In Agreement for Research and Development.