University of California
Office of the President

Senior Vice President—
Business and Finance
Costing Policy & Analysis
Research Administration Office

 


 


Memo
Operating Guidance


No. 98 - 05

September 16, 1998


CONTRACT AND GRANT OFFICERS (CAMPUS AND LAB)*
 

Subject: Department of Energy Rights in Data Clauses

The Department of Energy’s final rule revising its rights in data clauses in its assistance and acquisition regulations became effective on April 3, 1998. The final rule, published in the March 4, 1998 Federal Register (63 FR 10499), affects the University’s ability to copyright software developed as a deliverable under DOE contracts as well as rights in data under both DOE contracts and grants.

Attached are two detailed analyses, C. DOE Acquisition Regulations (DEAR) and G. DOE Assistance Regulations, which were prepared by the Council on Governmental Relations (COGR). These two analyses provide more detailed background and explanation of the changes which are summarized below. The third attachment to this memo is a letter from Paul Gottlieb, DOE Assistant General Counsel for Technology Transfer and Intellectual Property, to COGR which provides DOE's clarification of these changes.


Changes to Grant Rules:

Changes to the DOE Assistance Regulations at 10 CFR Part 600.27 require that DOE grants incorporate Federal Acquisition Regulation (FAR) 52.227-14, Rights in Data – General (JUN 1987), with Alternate V, and 48 CFR 927-409(a)(1)(a) and (a)(1)(d)(3). Alternate V of 52.227-14 provides DOE with the right to inspect data withheld for up to three years after acceptance of all items delivered under a contract, or grant in this case. The changes in 927.409(a)(1)(a), Definitions, expands DOE’s rights to include computer databases and adds to the definitions for computer software, limited rights data, and restricted computer software. (See COGR Attachment for more information.)

927.409(a)(1)(d)(3) prevents the contractor (grantee) from asserting copyright in computer software first produced under the contract without prior written permission of the DOE Patent Counsel. However, in grants to higher education institutions and other non-profit organizations, 927.409(a)(1)(d)(3) is superceded by 10 CFR Part 600.27(b)(2)(i)(B), which provides special provisions for higher education institutions that allow the recipient to establish claim to copyright in any data first produced in the performance of the award.

Changes to Acquisition Regulations:

For contracts, 48 CFR 927.409 instructs DOE Contracting Officers to use the same clauses described above, FAR 52.227-14, Rights in Data – General, with Alternate V, along with 927.409(a)(1)(a) and (d)(3), in solicitation 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 institution except where software is specified for delivery or except where other circumstances exist.

Alternate IV of 52.227-14 provides the contractor with the right to establish claim to copyright in data first produced in performance of the contract without DOE’s written permission as is required in 927.409(a)(1)(d)(3). "Other circumstances" which would require to use of (d)(3) are not defined. However, in Mr. Gottlieb's letter to COGR, he states that special circumstances under which DOE would use (d)(3) rather than Alternate IV should "arise infrequently and will have to be identified by DOE in advance of contract execution." Campus Contract and Grant Officers will have to review all new DOE contracts to see if the appropriate clause is used. If (d)(3) is cited in the contract, the University may not be able to secure copyright permission from DOE for software delivered and such software could be made publicly available by DOE.


Clauses Applying to Both Contracts and Grants:

Previous revisions of 10 CFR 600.27((b)(2)(i)(C) had already required that grants include FAR 52.227-16, Additional Data Rights Requirements and FAR 52.227-23, Rights to Proposal Data (Technical). These clauses may now be in contract solicitations as well. The DOE Contracting Officer is instructed to insert 52.227-16 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.

52.227-16 provides that DOE can require the contractor to deliver data first produced or specifically used under the contract for up to three years after the contract terminates. As stated by DOE in the prescription for this clause quoted above, it should not be included in contracts or grants for basic or applied research performed by a university. 

52.227-23 provides DOE with unlimited rights to the technical data in a proposal which is awarded, unless the proposal data is specifically identified and excluded. Principal Investigators must identify such data in their proposals if they do not want DOE to have unlimited rights to their proposal data. (See the COGR analysis for more information about these clauses.)


Campus Contract and Grant Officer Review:

Campus Contract and Grant Officers need to be sure that FAR 52.227-14 Alternate IV is in their DOE contracts unless software is a deliverable end product of the contract. If the contract contains (d)(3) rather than Alternate IV, the DOE Contracting Officer should justify using (d)(3) rather than Alternate IV under the "other special circumstances" criteria. When software is a deliverable and (d)(3) is used in a contract, the Principal Investigator needs to be informed of the conditions/restrictions this imposes for any software developed as a deliverable under the contract.

In addition, Principal Investigators may need to be informed of the requirements in FAR 52.227-14, Alternate V, 52.227-16, and 52.227-23 which can be found in both contracts or grants. As stated above, FAR 52.227-16 should not be included in contracts or grants for basic or applied research to the University. Where 52.227-23 is used, the PI needs to identify specific proposal information to be restricted or the government will have unlimited rights in data in the proposal.

 

David F. Mears

Director, Research Administration


Refer: Samuela Evans

(510) 987-9849

samuela.evans@ucop.edu 

Subject: 11

Organization: F-275

 

Enclosures

cc: Patent Coordinators

Joe Acanfora


July 2, 1998

 

C. DEPARTMENT OF ENERGY ACQUISITION REGULATIONS (DEAR)

On April 3, l998, revised regulations on rights in technical data became effective for all Department of Energy (DOE) awards. (63 FR 10499, March 4, l998). The new rules which apply to university procurement are described below. DOE has traditionally taken the position that its rights to intellectual property and to the dissemination of software are greater than those of other federal agencies, because of DOE’s mission under the Atomic Energy Act and later legislation. This broad claim continues to be the basis for the latest revision and also explains why DOE extended its procurement provisions to cover all of its assistance awards. 

This analysis is based on the published DOE regulations, referenced above, and on a subsequent letter of clarification issued by DOE upon request by COGR. DOE’s new assistance rules on rights in technical data are analyzed in a separate document. 


Summary of changes:

DOE has replaced its long and short form rights in data clauses with mandatory use of FAR 52.227-14. DOE has modified the FAR clause, by amending the definitions section in (a), and inserting a new subsection (d)(3) mandating DOE Legal Counsel’s prior written permission for contractor claims to establish copyright protection. The revision authorizes the use of Alternate IV, rather than enforcement of subsection (d)(3), in contracts for basic or applied research with educational institutions, except where software is specified for delivery or in other "special circumstances".

The new DOE solicitation provisions and contract clauses must be used in conjunction with Alt. V, which authorizes federal inspection of grantee data, to assure that the Government obtains its proper rights. Two clauses, optional in other FAR contracts, are now required in all DOE awards. They are FAR Rights to Proposal Data, (Technical) (52.227-23) and FAR Additional Data Requirements (FAR 52.227-16). All the above described solicitation provisions and contract clauses are stated at 927.409, which is a new section.

Another new section at 927.404 reflects DOE’s intent to apply the new provisions down to the subcontracting tier. The general policy section at 927.402 –1(b) is amended, to inform contractors of the distinction between DOE’s legal rights in technical data, and the delivery of those data to the agency, upon which DOE will insist.

A more detailed analysis of the procurement changes is provided in the following pages.


Detailed Analysis of the New DOE Data Rights Clause.

a) Definitions:

Several definitions unique to DOE expand its rights in data produced under DOE awards. At 927.409(a)(1)(a) DOE has added the term "Computer Data Bases" and defines it as "a collection of data in a form capable of…being operated on (or) by a computer". DOE has also enhanced the definition of "Computer Software". New definitions of "Limited Rights Data" and "Restricted Computer Software" have been borrowed from DOD regulations. These terms define the rights DOE claims in data or software developed at private expense, that embody trade secrets and are commercial or financial, or confidential and privileged. DOE’s definition of "Unlimited Rights" has been expanded. It formerly included the following activities: the right to use, disclose, reproduce, prepare derivative works, distribute copies to the public, and perform publicly and display publicly in any manner. Now, DOE has gained additional unlimited rights to distribute, display and perform by electronic means. 

b) Securing copyright:

With a new subparagraph (d)(3), DOE amends the FAR to require the contractor to agree not to assert copyright in computer software first produced in the performance of the contract without the prior written permission of the DOE Patent Counsel (not the DOE’s contracting officer). If such permission is granted, the Patent Counsel will specify appropriate terms for the contractor’s utilization dissemination and commercialization of the data. The contractor is then required to deliver to the DOE Patent Counsel a fully executed document, which fully confirms all rights to which the government is entitled.

Use of (d)(3) is mutually exclusive with the use of Alt. IV, which is preferred by educational institutions. Alt. IV grants to the government the same license rights as the standard FAR clause. However, with respect to copyright provisions, Alt. IV differs from FAR 52.227-14(c) by not requiring the contractor to obtain written permission before establishing claims to copyright in data first produced under the contract. It is therefore and important option for university contractors.

The new regulation "authorizes" DOE contracting officers to use Alt. IV at their discretion. In its letter to COGR, DOE is more definitive. The letter states:

"According to the rule at 927.409(a), in contracts with institutions of higher learning, the FAR Alternate IV would normally be used in contracts for research and development. In such instances, the college or university would have the right to copyright all data first produced under the contract. If however, the contract called for delivery of software, paragraph (c) of the clause at FAR 52.227-14 and (d)(3) would normally be used".

By conceding a class deviation, DOE has made an important concession to university contractors that perform R and D. research. The test for success however depends on how broadly or conservatively DOE contracting officers interpret their authorization.

There are other "special circumstances", under which DOE reserves the right not to use Alt. IV. In the final rule, DOE does not define this exception with a quantifiable standard or even with illustrations. DOE is no clearer in its explanatory letter to COGR:

… "special circumstances" reserves for DOE the ability to use paragraph (d)(3) in other circumstances that merit departure from the general rule. We expect both required delivery to DOE or special circumstances to arise infrequently, and will have to be identified by DOE in advance of contract execution. This will allow the grantee (sic) the opportunity to question departure from the use of Alt. IV. Please recognize that this rule allowing the use of Alt. IV established by DEAR 927-409(a) is the first time this agency has granted any class of contractors the automatic right to assert copyright in computer software first produced in the performance of the contract and restricted the government license in first produced software. In these situations, DOE is relying upon the educational institutions to fulfill this agency’s statutory duty to disseminate. Our approach is entirely consistent with the philosophy expressed at FAR27. 404(f) regarding copyrighting of first produced data." 

c) Other required clauses

DOE has indicated that it will routinely use its new Data Rights clause in conjunction with Alt. V. This clause gives DOE the right to inspect contractors’ records for a period of up to three years after the end of the project. DOE will ascertain primarily the contractor’s assertion of limited or restricted rights to the Government.

The required Rights in Proposal Data (Technical) provision ( 52.227-23) provides DOE unlimited rights in and to all technical data contained in the proposal on which the award is based. It will be important for universities to be aware of this at the proposal stage. The applicant may identify specific pages or paragraphs of data it wished to exclude. However, DOE would have to agree to such exclusions prior to making the award.

Additional Data Requirements (52.227-16) will now also be required in all solicitations and contracts involving experimental, developmental, research or demonstration contracts. This applies unless all data requirements are believed to be known at the time of contracting. FAR excepts contracts at $ 500,000 or less performed solely by a university or college. However, DOE reserves the right to add the clause in other contracts which it considers appropriate. This clause gives DOE a period of three years after the close of the contract, to require the contractor to deliver to DOE any data first produced or specifically used under the contracts.


General Assessment:

DOE stated that it introduced the revision of its data rights clauses as an effort to streamline its procedures to be consistent with those of other federal agencies and the existing FAR clauses. DOE did indeed relinquish the long and short form data rights clauses, and has returned to the standard FAR clause. However, due to DOE’s insistence on greater rights under the Atomic Energy Act and later legislation, its contractors face more restrictive provisions than under other agency contracts. DOE’s repeated reference to FAR 52.227-14 masks the fact that DOE’s clause is quite different in substantial aspects. 

It is important to university contractors to secure copyright. If approval to establish copyright is not granted, the work is in fact dedicated to the public by being placed into the public domain. Since DOE’s authorization to use Alt. IV remains subject to somewhat unpredictable factors, university negotiators will have to be vigilant to assure that Alt. IV will be used whenever possible. A strong argument could be made that only those contracts should be governed by (d)(3) where development and delivery of software is the central purpose of the award, comparable to work for hire contracts. All other awards, where software is merely an incidental product, should be governed by Alt. IV. COGR is waiting for DOE to endorse this interpretation.

Unless they are able to secure copyright, universities may encounter problems. There are many cases where universities deliver to DOE a derivative of software to which the school itself, or others have claimed copyright. Or the university may deliver to DOE software that has multiple purposes or uses, which require that it be protected and not deposited entirely into the public domain. In those cases the university is now under the obligation to identify the software to DOE at the contracting stage and to provide the government either with limited or restricted rights. It is also not unusual for universities to share software and to provide each other the right to use the software in government contracts. When working with DOE, the university contractor may find that the rights it has obtained from third parties are not sufficient to meet the broad rights upon which DOE will insist. DOE now enforces liability provisions, requiring the contractor to agree it will not knowingly include any material copyrighted by others in any material furnished or delivered under the contract without appropriate licenses or consent. 

It is in this context also that the revised definitions and the additional mandatory DOE clauses for Rights in Proposal Data and Additional Data Rights become significant. They broaden the scope of DOE claims significantly. At the same time, DOE strengthens its options to review and possibly challenge the contractor’s claims about its rights with the inspection clause Alt. V.


July 2, 1998

G. DEPARTMENT OF ENERGY ASSISTANCE REGULATIONS

Anyone dealing with a DOE grant award should not rely on OMB Circular A-110 alone. Although DOE’s original implementation of OMB Circular A-110 as published in l994, indicated no deviations in the intellectual property section at –33, DOE amended its assistance rules again in l996. Significant changes were made at that time. In the revised intellectual property section, at 10 CFR 600.136, DOE no longer cited the Bayh-Dole Act at 37 CFR Part 401, as does the Circular, but imposed instead provisions arising out of DOE’s own acquisition regulations, ibid. at 600.27, under authority of the Atomic Energy Act. As a result, DOE grant awards became governed by broader patent and data rights provisions than those used by other federal agencies and these DOE requirements were expressed and made enforceable in procurement terms. 

In March l998, DOE finalized its revision of rules governing data rights. Although originally described in the proposed rule as a revision for contracts only, the final regulation was made applicable, after the fact, to assistance awards as well. The following analysis describes the general compliance obligations for universities resulting from the sum of the above-cited changes.

Summary of the changes:

For grants as well as for contracts, DOE will use the FAR General Data Rights clause, at 48 CFR 52.227-14. The FAR clause has been amended in the definitions section (a) and by inserting (d)(3) of 48 CFR 927-409(a)(1). Use of Alt. V is also mandatory. In addition, solicitations must include the representation of Limited Rights Data and Restricted Computer Software provisions at 48 CFR 52.227-15. 

These general instructions to DOE grantees are cited at 10 CFR 600.27(b)(2)(i)(A). However, ibid. (B) addresses the special provisions for university awardees regarding copyright. Except as otherwise specifically provided in the award, subparagraph (d)(3) of the DEARS clause requiring prior permission from DOE before awardees may secure copyright protection, will be deleted and the equivalent of FAR 52.227-14 Alt. IV will be authorized. This means that university grantees may "establish" copyright in all data first produced under the award, including computer software. To accomplish that purpose, DOE indicates it will use language cited at 10 CFR 600.27 (b)(2)(i)(B)(c), which expresses similar intent as FAR 52.227-14, rather than (c) in the FAR clause itself.

DOE states that, with respect to the universities’ right to establish copyright and the terms of the retained government copyright license, DOE’s assistance regulations are compatible with and have not exceeded OMB Circular A-110 guidance. However, with respect to other data rights, university grantees will have to accept the same expanded DOE rights as in contracts. If you wish to obtain more detail, please turn to the detailed review below.


Detailed discussion of the new DOE grant provisions 

a) Definitions:

The following definitions have been changed: computer databases; computer software; limited rights data; restricted computer software; unlimited rights. These changes are described in our analysis of the l998 DOE acquisition changes. 

b) Securing copyright 

The l996 revision of DOE’s financial assistance awards made all the key changes, introducing patent, data rights and copyright provisions into the management of assistance awards. By comparison, the l998 revision largely renumbers and updates the earlier instructions to grantees. The changes clarify and underscore DOE’s intent to incorporate into financial assistance awards the FAR clause without (d)(3) thus eliminating the requirement to obtain prior written approval from DOE legal counsel before being able to establish copyright. This parallels the decision by DOE to authorize use Alt. IV in contracts with institutions of higher education. 

The options for institutions to establish copyright and the resulting rights of the government remain the same as in the l996 revision. DOE merely clarifies that the instructions at 600.27(b)(2)(i)(B)(c) supersede and replace those of the FAR clause (c) although the FAR clause prevails in all other respects. 

How do the new DOE provisions for copyright in assistance awards compare to government-wide provisions for intellectual property under A-110? DOE claims it took great care to make sure its language, taken from procurement, would comply with A-110. In an explanatory letter to COGR, DOE states:

"In writing the final rule, we have considered OMB Circular A-110 and found the copyright license retained by the government to be broader in assistance than in the case of contracts. Paragraph 36 ‘Intangible Property" of OMB Circular A-110 states that the grant recipient may copyright any work developed under an award. The agency reserves a "royalty–free, nonexclusive and irrevocable right to reproduce, publish (emphasis added), or otherwise use the work for Federal purposes and to authorize others to do so." The license retained by the government in computer software first produced and copyrighted by the contractor under Alt. IV of FAR 52.227-14 does not include the right to publish as required by OMB Circular A-110. While we were sympathetic with the case you make that assistance should confer a broader set of rights, we were constrained by the Circular. We believe the right to copyright and the retained government license provided in both OMB Circular A-110 and in our assistance regulations are equivalent."


 c) Other Required Clauses

 As in contracts, the general data rights provisions for grants also require the use of Alt. V, which gives the government the authority to inspect records. Solicitations shall also include the Representations of Limited Rights Data and Restricted Computer Software at 48 CFR52.227-15.

DOE contracting officers will also incorporate Rights to Proposal Data, (Technical) (52.227-23) and Additional Data Requirements (52.227-16). For a detailed discussion of these and other provisions regarding sub-tier awards and policy regarding delivery of data, please refer to our analysis of DOE acquisition regulations.

General Assessment 

Regarding copyright protection for data first produced under an award, DOE has stayed within the perimeters of OMB Circular A-110, taking advantage of the right to publish university generated software, which is a part of the OMB government license but is lacking in the FAR government license. Regarding data rights, DOE imposed all its procurement provisions on assistance, contrary to the Chiles Act, which draws a distinction between assistance and procurement, based on the separate purposes each serves. DOE has expanded its rights in the pre-grant area (Unlimited Rights in Proposal Data) and in the post-grant area (Additional Technical Data clause) compared with the rights retained by other agencies under the FAR, again citing its special mission under the Atomic Energy Act. In addition, contracting officers are instructed to treat data rights matters in accordance with 48 CFR 927.4 – the DOE technical data and copyright policy for procurements. 

DOE does not justify its injection of acquisition terms into assistance awards beyond citing its special mission and its years of unchallenged practice of having done this de facto if not de jure. When questioned about the rules, DOE explained to COGR its position as follows:

"You question our amendment of the assistance regulations in a manner that is consistent with the changes to our procurement regulations. As a preface, the Department of Energy operates in the area of rights in data in a manner that reflects a statutory duty to disseminate the product of our contracts and assistance agreements. This rule follows this Department’s long history of linking the treatment of data first produced under contracts with the treatment of data first produced under assistance agreements." 

Finally, a reminder about liability. DOE imposes liabilities on grantees as well as contractors, for knowingly including any material copyrighted by others in any written material furnished or delivered under an award, unless the appropriate licenses or approvals have been obtained.


Ms. Kate Phillips
Vice President
Council on Governmental Relations
1200 New York Avenue, NW
Suite 320
Washington, D.C. 20005

 

Dear Ms. Phillips: 

This is in response to your letter to me dated April 24,1998, dealing with the recent ruleM2king revising the Department of Energy Acquisition Regulation (DEAR) and assistance regulations on the subject of rights in data. Your letter of April 29, 1 998j to Dr. Moniz: has been assigned to me for response as both letters address similar subject matter. 

You question our amendment to the assistance regulations in a manner that is consistent with the changes to our procurement regulations. As a preface, the Department of Energy.operates in the area of rights in data in a manner that reflects a statutory duty to disseminate the product of our contracts and assistance agreements. This rule follows this Department's long history of linking the treatment of data first produced under contracts.with the treatment of data first produced under assistance agreements. 

At 10 CFR 600.27(b)(2)(i)(B), Institutions of higher learning, among others, are authorized to "establish" copyright in all data first produced under the contract, including computer software. This is accomplished by substituting the already existing paragraph (c) at that citation for the paragraph (c) of the clause at FAR 52.227-14. Where the copyright Is established, the license retained by the Government in the assistance regulations is "a royalty-free, nonexclusive and irrevocable right to reproduce, publish, or otherwise use the work for Federal purposes, and to authorize others to do so. The right to publish includes the right to publicly distribute. The right to use the work for Federal purposes includes the right to prepare derivative works." 

You note that assistance to educational Institutions should confer on educational institutions a broader set of rights relating to assertion of copyright than that used in contracts. In writing the final rule, we have considered OMB Circular A-110 and found the copyright license retained for the Government to be broader In assistance then in the case of contracts. Paragraph 36 "Intangible Property" of 0MB Circular A-110 states that the grant recipient may copyright any work developed under an award. The agency reserves a "royalty-free, nonexclusive and irrevocable right to reproduce, publish (emphasis added), or otherwise use the work for Federal purposes and to authorize others to do so." The license retained by the government in computer software first produced and copyrighted by the contractor under Alternate IV of FAR 52.227-14 does not include the right to publish as required by OMB Circular A-110. While we were sympathetic to the case you make that assistance should confer a broader set of rights, we were constrained by the Circular. We believe the right to copyright and the retained government license provided in both OMB Circular A-110 and in our assistance regulations are equivalent. 

You ask why we incorporate Alternate V in the clause at FAR 62.227-14. That alternate provides the Government a right of inspection of date first produced under the contract and is a necessary component of any system where this agency is required by law to disseminate the products of its contracts and assistance instruments. We would be interested in any situation in which DOE's exercise of this inspection right has had an adverse impact on the operations of a contractor or grant recipient, This clause has been routinely included in all contracts with educational institutions since DOE's adoption of the FAR in -1987 without objection. 

You expressed concern that the instructions contained at 927.409 concerning the use of Alternate IV are not clear. 

At 52.227-14 the copyright license retained by the Government in the DEAR for contracts is in paragraph (C). In the paragraph, the contractor is authorized to establish claim to copyright in scientific and technical articles based an or containing data first produced under the contract except as provided elsewhere under the contract. The prior permission of the contracting officer is required to establish copyright in all other data first produced under the contract. For data other than computer software, the Government and others acting on its behalf are granted "paid-up, nonexclusive, irrevocable, worldwide license … to reproduce, prepare derivative works, distribute copies to the public, and perform publicly and display publicly, by or on behalf of the Government." For computer software, if the Contractor is permitted to establish claim to copyright, the Contractor grants to the Government and others acting on its behalf "a paid up nonexclusive, irrevocable worldwide license... to reproduce, prepare derivative works, and perform publicly and display publicly by or on behalf of the Government."

Alternate IV grants the same licenses to the Government. It differs from paragraph (c) of FAR 52.227-14 only by the Altemate IV's not requiring the contractor to acquire the permission before establishing claim to copyright in data first produced under the contract, where the standard paragraph (c) does require such permission.

The use of paragraph (d) (3) provided for at DEAR 927-409(a) is mutually exclusive with Alternate IV. They are not to be used together. Paragraph (d) (3) requires the written permission of DOE Patent Counsel before the contractor may assert copyright in computer software under any circumstance. The terms, including the license to be retained by the Government, would be supplied by patent counsel on a case-by-case basis.

According to the rule at 927.409(a), in contracts with Institutions of higher learning, the FAR Alternate IV would normally be used in contracts for research and development. In such instances, the college or university would have the right to copyright all data first produced under the contract. If, however, the contract called for the delivery of software, paragraph (d) of the clause at FAR 52.227-14 and (d) (3) would normally be used. For grants or cooperative agreements the paragraph (c) at 10 CFR 600.27 (b)(2)(i)(B) would be used. 

You ask for explanation of the term "special circumstances" as it is used at DEAR 927.409 (a) in directing the use of (d) (3) or Alternate IV. The provision establishes the general rule that in contracts for research and development with educational institutions Alternate IV will be used. If, however, the contract calls for delivery of computer software, paragraph (c) of the clause at FAR 52.227-14 and (d)(3) would normally be used, and Alternate IV will not be used. Similarly, "special circumstances" reserves for DOE the ability to use paragraph (d) (3) in other circumstances that merit departure from the general rule. We expect both required delivery to DOE or special circumstances to arise infrequently, and will have to be identified by DOE in advance of contract execution. This will allow the grantee the opportunity to question departure from use of Alternate IV. Please recognize that this rule allowing the use of Alternate IV established by DEAR 927.409(a) is the first time this agency has granted any class of contractors the automatic right to assert copyright In computer software first produced in the performance of the contract and restricted the government license in first produced software. In these situations DOE Is relying upon the educational institution to fulfill this agency's statutory duty to disseminate. Our approach is entirely consistent with the philosophy expressed at FAR 27.404(f) regarding copyrighting of first produced data. 

Finally, you ask about the relationship between paragraph (d)(3) and FAR 52.22714(b)(2). Where Alternate IV is used as previously discussed, paragraph (d)(3) would not be used. In the other circumstances, i.e where the contract is not with an educational institution, or is with an educational-institution but calls for delivery of computer software, or involves special circumstances, paragraph (d) (3) would normally be used. Its use is contemplated by the introductory phrase of paragraph (c), which states, "Unless provided otherwise in paragraph (d) of this clause, ...." We do not consider paragraph (d)(3) to supersede subparagraph (b) (2) (iv). The latter provision creates no rights per se. It merely refers to paragraph (c) which does delineate the contractor's right to assert copyright. In the conditions in which paragraph (d)(3) is to be used, it restrains the rights to assert copyright expressed In paragraph (c). Further, paragraphs (b)(2) (I - iii) deal with various rights of the contractor including the right to use the computer software, which are not impaired by the Inclusion of paragraph (d)(3). Paragraph (d)(3) merely provides that approval to establish copyright of first produced computer software will be done on a case-by-case basis. If approval to establish copyright is not granted to the contractor per paragraph (d)(3), the work will have been dedicated to the public and available for all to use,

Thank you for your letter and your Interest in our regulations. If you have further questions, You may call me at (202) 586-2802.

 

Yours truly,

 

Paul A. Gottlieb
Assistant General Counsel
for Technology Transfer
and Intellectual Property

CONCURRENCE

Robert M. Webb
Office of Procurement and Assistance Policy, HR-51

cc: DOE Field Patent Counsel