ARTICLE XII -- Intellectual Property


The following applies except for inventions made by the University arising under University Research and Supporting Efforts for the Laboratory, provided pursuant to Article VIII, Clause 2, and under complementary and beneficial program activities at non-Laboratory facilities, in which case rights in such inventions shall be governed by the provisions of subparagraph (g) of this clause.

(a) Definitions.

(b) Allocation of Principal Rights.

(c) Invention Disclosures, Election of Title and Filing of Patent Applications by the University.

(d) Conditions When the Government May Obtain Title. The University will convey to the DOE, upon written request, title to any subject invention:

(e) Minimum Rights to University and Protection of the University Right to File.

(f) University Action to Protect the Government's Interest.

(g) Subcontracts.

(h) Reporting on Utilization of Subject Inventions. The University 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 University 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 University, and such other data and information as the DOE may reasonably specify. The University also agrees to provide additional reports as may be requested by the DOE in connection with any march-in proceeding undertaken by the DOE in accordance with paragraph (j) of this clause. As required by 35 U.S.C. [[section]] 202(c)(5), the DOE agrees that it will not disclose such information to persons outside the government without permission of the University.

(i) Publication Release. It is recognized that during the course of the work under this contract, the University or its employees may from time to time desire to release or publish information regarding scientific or technical developments conceived or first actually reduced to practice in the course of or under this contract. In order that public disclosure of such information will not adversely affect the patent interests of DOE or the University, patent approval for release or publication shall be secured from the University personnel responsible for patent matters prior to any such release or publication. Where publication releases are requested of DOE, DOE's response to such requests for approval shall not be withheld for more than 90 days except in circumstances in which a domestic application must be filed in order to protect foreign patent rights. In the latter case, the Department shall be granted an additional 180 days within which to respond to the request for approval. The period of 180 days may be extended by mutual agreement of the parties.

(j) March-in Rights. The University agrees that with respect to any Subject Invention in which it has acquired title, the DOE has the right in accordance with the procedures in 37 C.F.R. 401.6 and any supplemental regulations of the DOE to require the University, 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 University, assignee, or exclusive licensee refuses such a request the DOE has the right to grant such a license itself if the DOE determines that:

(k) Special Provisions for Contracts with Nonprofit Organizations. Rights to a subject invention in the United States may not be assigned without the approval of the DOE, 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 University.

(l) Communication. Communications to DOE with regard to this clause shall be directed to the Patent Counsel, San Francisco Field Office.

(m) Examination of Records Relating to Inventions.

(n) Withholding of Payment.

(o) Atomic Energy.

(p) Facilities License. In addition to the rights of the parties with respect to inventions or discoveries conceived or first actually reduced to practice in the course of or under this contract, the University agrees to and does hereby grant to the Government an irrevocable, nonexclusive, paid-up license in and to any inventions or discoveries regardless of when conceived or actually reduced to practice or acquired by the University, which are owned or controlled by the University, at any time through completion of this contract and which are incorporated or embodied in the construction of the facility or which are utilized in the operation of the facility or which cover articles, materials, or products manufactured at the facility: (1) to practice or to have practiced by or for the Government at the facility, and (2) to transfer such license with the transfer of that facility. The acceptance or exercise by the Government of the aforesaid rights and license shall not prevent the Government at any time from contesting the enforceability, validity or scope of, or title to, any rights or patents herein licensed.

(q) Rights Governed by Other Agreements. Rights to inventions made under agreements other than funding agreements with third parties shall be governed by the appropriate provisions incorporated, with DOE approval, in such agreements, notwithstanding any disposition of rights contained in this Prime Contract. Disposition of rights under any such agreement shall be in accordance with any DOE class waiver (including Work for Others, User Facility and CRADA class waivers) or individually negotiated waiver which applies to the agreement and shall take precedence over any disposition of rights in this Prime Contract. Where an invention is conceived in the course of work under this Prime Contract, but is later reduced to practice under a Work for Others or CRADA agreement, rights to such invention shall be governed by the provisions incorporated, with DOE approval, in the Work for Others or CRADA agreement. Nothing in this paragraph shall abrogate the rights of third parties under any agreement approved by DOE and entered into prior to any such DOE class waiver.

(r) Educational Awards Subject to 35 U.S.C. [[section]] 212. The University shall notify the Contracting Officer prior to the placement of any person subject to 35 U.S.C. [[section]] 212 in an area of technology related to Exceptional Circumstances technology, or which is subject to treaties or international agreements as set forth in subparagraphs (b)(2), (b)(3), (b)(4) and (b)(5) of this clause or agreements other than funding agreements. The Contracting Officer shall have the right to disapprove such placement.


Except as otherwise authorized by the Contracting Officer, the University shall obtain indemnification of the Government and its officers, agents, and employees against liability, including costs, for infringement of U.S. Letters Patent (except U. S. Letters Patent issued upon an application which is now or may hereafter be kept secret or otherwise withheld from issue by order of the Government) from the University's subcontractors in accordance with 48 CFR 27.203.

ARTICLE XII, CL. 3 - AUTHORIZATION AND CONSENT - DEAR 970.2701(a) [41 CFR 9-9.102-2]

(a) The Government hereby gives its authorization and consent for all use and manufacture of any invention described in and covered by a patent of the United States in the performance of this contract or any part hereof or any amendment hereto or any subcontracts hereunder (including all lower-tier subcontracts).

(b) In the case of suit or potential suit in copyright infringement, the University may request authorization and consent in copyright from DOE. Programmatic necessity shall be a major consideration in grant of authorization and consent.

ARTICLE XII, CL. 4 - REPORTING OF ROYALTIES - DEAR 970.2701(a) [41 CFR 9-9.110]

If any royalty payments are reflected in the contract cost to the Government, the University agrees to report in writing to the Patent Counsel (with notification by Patent Counsel to the Contracting Officer) during the performance of this contract and prior to its completion or final settlement, the amount of any royalties or other payments paid or to be paid by it directly to others in connection with the performance of this contract together with the names and addresses of licensors to whom such payments are made and either the patent numbers involved or such other information as shall permit the identification of the patents or other basis on which the royalties are to be paid. The approval of DOE of any individual payments or royalties shall not stop the Government at any time from contesting the enforceability, validity or scope of, or title to, any patent under which a royalty or payments are made. The provisions of this clause, appropriately modified as to parties, shall be included in all subcontracts that exceed $25,000 unless otherwise approved by the Contracting Officer.


Except as otherwise authorized by the Contracting Officer, the University, pursuant to FAR 48 CFR 27.409(s), shall include the clause of 48 CFR 52.227-23 in any subcontract awarded based on consideration of a technical proposal.



The following applies except for technical data and copyright created by the University arising under University Research and Supporting Efforts for the Laboratory provided pursuant to Article VIII, Clause 2, and complementary and beneficial program activities at a non-Laboratory facility, in which case rights in such data and copyright shall be those provided as if the data or copyright were created by a third party university under a DOE funding agreement.

(a) Definitions.

(b) Allocation of rights.

(c) Copyright (General).

(d) Copyrighted works (scientific and technical articles). The University shall have the right to assert, without prior approval of the Contracting Officer, copyright subsisting in scientific and technical articles based on or containing data first produced in the performance of this contract, and published in academic, technical or professional journals, symposia proceedings or similar works. When assertion of copyright is made, the University shall affix the applicable copyright notice of 17 U.S.C. [[section]] 401 or [[section]] 402 and acknowledgement of Government sponsorship (including contract number) on the data when such data are delivered to the Government as well as when the data are published or deposited for registration as a published work in the U.S. Copyright Office. The University grants to the Government, and others acting on its behalf, a paid-up, nonexclusive, irrevocable worldwide license in such copyrighted data to reproduce, prepare derivative works, distribute copies to the public, and perform publicly and display publicly, by or on behalf of the Government.

(e) Copyrighted works (other than scientific and technical articles).

(f) Subcontracting.

(g) Rights in Limited Rights Data. Except as may be otherwise specified in this contract as data which are not subject to this paragraph, the University agrees to and does hereby grant to the Government an irrevocable, nonexclusive paid-up license and right to use by or for the Government, any Limited Rights Data of the University specifically used in the performance of this contract, provided, however, that to the extent that any Limited Rights Data when furnished or delivered is specifically identified by the University at the time of initial delivery to the Government or a representative of the Government, such data shall not be used within or outside the Government except as provided in the "Limited Rights Notice" set forth below. All such Limited Rights Data shall be marked with the following "Limited Rights Notice":

(h) Rights in Restricted Computer Software.


Except as otherwise authorized by the Contracting Officer, the University, pursuant to FAR 48 CFR 27.409(h) shall normally include the clause of FAR 52.227-16 in any subcontract for research, development or demonstration to enable the ordering of technical data as actual need and requirements therefor become known during the course of the subcontract.


The University shall utilize in its policies and procedures relating to subcontracts, purchase orders and procurement, such additional DOE procurement policies in the Patents and Data area as set forth in 41 CFR, Part 9-9, or such other policies and procedures as may be specifically directed in writing by the Contracting Officer or Patent Counsel.


(a) The University shall report to the Contracting Officer, promptly and in reasonable written detail, each notice or claim of patent or copyright infringement based on the performance of this contract of which the University has knowledge.

(b) In the event of any claim or suit against the Government on account of any alleged patent or copyright infringement arising out of the performance of this contract or out of the use of any supplies furnished or work or services performed hereunder, the University shall furnish to the Government when requested by the Contracting Officer, all evidence and information in possession of the University pertaining to such suit or claim. Such evidence and information shall be furnished at the expense of the Government except where the University has agreed to indemnify the Government.

(c) Subparagraphs (a) and (b) of this clause shall be included in all subcontracts which exceed $25,000.


This clause has as its purpose, implementation of the National Competitiveness Technology Transfer Act of 1989 (Sections 3131, 3132, 3133, and 3159 of P. L. 101-189), and applies only to Laboratory Technology Transfer Activities.


(a) Definitions

(b) Authority.

(c) Allowable Costs.

(d) Conflicts of Interest s Technology Transfer. The University shall develop implementing procedures that seek to avoid Laboratory employee and organizational conflicts of interest, or the appearance of conflicts of interest, in the conduct of its technology transfer activities. These procedures shall cover other persons working on site at the Laboratory participating in Laboratory research or technology transfer projects. Such implementing procedures shall be provided to the Contracting Officer for review and approval within sixty (60) days after execution of this modification. The Contracting Officer shall have thirty (30) days thereafter to approve or require specific changes to such procedures. Such implementing procedures shall include procedures to:

(e) Fairness of Opportunity. In conducting its technology transfer activities, the University shall prepare procedures and take reasonable measures to ensure widespread notice of availability of technologies suited for transfer and opportunities for exclusive licensing and joint research arrangements. The requirement to widely disseminate the availability of technology transfer opportunities does not apply to a specific application originated outside of the Laboratory.

(f) U.S. Industrial Competitiveness.

(g) Indemnity Product Liability. In entering into written technology transfer R&D, licensing or assignment agreements, the University agrees to include in such agreements a requirement that the University and the U.S. Government be indemnified for all damages, costs, and expenses, including attorney's fees, arising from the commercialization and utilization of such technologies, including, but not limited to, the making, using, selling or exporting of products, processes, or services derived from the transferred technology, or such other provision as mutually agreed upon by the University and DOE.

(h) Royalty Uses and Shares.

(i) Transfer to Successor Contractor. Subject to this paragraph, in the event of termination or expiration of this contract, any unexpended balance of income received for use at the Laboratory shall be transferred, at the Contracting Officer's request, to a successor contractor, or in the absence of a successor contractor, to such other entity as designated by the Contracting Officer. The University shall transfer title, as one package, in all patents and patent applications, License Agreements, accounts containing royalty revenues from such License Agreements, including equity positions in Third Party entities, and other Laboratory Intellectual Property rights which arose at the Laboratory, to the successor contractor or to the Government as directed by the Contracting Officer, if the successor contractor or Government agrees to honor all license terms, obligations to inventors, and obligations and liabilities of the University in connection with these patents and patent applications. If the successor contractor or Government refuses to fully honor the foregoing, then the University shall continue with title and use of the funds in the University, provided that royalties or other income earned and retained in the University is utilized in accordance with paragraph I.(h) above.

(j) Technology Transfer Affecting the National Security.

(k) Records. The University shall maintain records of its technology transfer activities, in a manner and to the extent satisfactory to the DOE, and specifically including, but not limited to, the Licensing Agreements, Assignments and the records required to implement the requirements of paragraphs (e), (f), and (h), herein, and shall provide reports to the Contracting Officer to enable DOE to maintain the recording requirements of Section 12(c)(6) of the Stevenson-Wydler Technology Innovation Act of 1980 as amended (15 U.S.C. [[section]] 3710a(c)(6)). Such reports shall be made annually in a format to be agreed upon between the University and the DOE and in such a format which will serve to adequately inform DOE of the University's technology transfer activities while protecting any data not subject to disclosure under the contract and Section II. herein. Such records shall be made available in accordance with Article VII, Clause 4 of this contract entitled "Accounts, Records, and Inspection."

(l) Reports to Congress. To facilitate DOE's reporting to Congress, the University is required to annually submit to DOE a technology transfer plan for conducting its technology transfer function for the upcoming year, including plans for securing Laboratory Intellectual Property rights in Laboratory innovations with commercial promise and plans for managing such innovations so as to benefit the competitiveness of U.S. industry. This plan shall be provided to the Contracting Officer on or before October first of each year.

(m) Oversight and Appraisal. The University is responsible for developing and implementing effective internal controls for all technology transfer activities consistent with Article VII, Clause 4, "Accounts, Records and Inspection," of this contract. The University's performance in implementing the technology transfer mission and the effectiveness of the University's procedures will be evaluated by the Contracting Officer as part of the annual appraisal process, with input from the cognizant Secretarial Officer or program office.


Upon approval of the Contracting Officer and as provided in a DOE-approved JWS, the University's Laboratory Director or his designee may enter into CRADA's on behalf of the DOE subject to the requirements set forth herein.

(a) Review and Approval of CRADAs.

(b) Selection of Participants. The University's Laboratory Director or designee, in deciding what CRADA to enter into shall:

(c) Withholding of Data.

(d) Work For Others and User Facility Program.

(e) Conflicts of Interest.


In conducting R&D activities through cost-shared agreements not covered by Section II., above, the University, with written permission of the Contracting Officer, may provide for the withholding of data produced thereunder in accordance with the applicable provisions of paragraph II.(c) herein.

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