§ 1827.373 - Contract clauses and solicitation provisions.

(a) Patent rights—retention by the contractor (short form).

(1) The contracting officer shall insert the clause at FAR 52.227-11, Patent Rights—Retention by the Contractor (Short Form), in any solicitation and contract with a small business firm or a nonprofit organization for the performance of experimental, developmental, or research work unless a determination is made to use another clause in accordance with one of the exceptions in paragraph (c) of this section. Also see 1827.374-4.

(2) When the clause at FAR 52.227-11 is included in a solicitation or contract it shall be modified as set forth at 1852.227-11.

(3) If the acquisition of patent rights for the benefit of a foreign government is required under a treaty or executive agreement, or if the Administrator determines at the time of contracting that it would be in the national interest to acquire the right to sublicense foreign governments or international organizations pursuant to any existing or to-be-entered-into treaty or agreement, the contracting officer shall use the clause with its Alternate I. If other rights are necessary to effectuate the treaty or agreement, Alternate I may be appropriately modified. In long term contracts, Alternate II shall be added if necessary to effectuate treaties or agreements entered into.

(4) To qualify for the clause at FAR 52.227-11, a prospective contractor may be required to certify that it is either a small business firm or a nonprofit organization. If there is reason to question the status of the prospective contractor, the contracting officer may file a protest in accordance with 13 CFR 121.3-5 if small business firm status is questioned or require the prospective contractor to furnish evidence of its status as a nonprofit organization.

(b) New technology. As authorized in FAR 27.303(c)(2), the contracting officer shall insert the clause at 1852.227-70, New Technology, in all NASA solicitations and contracts with other than a small business firm or a nonprofit organization, if the contract is to be performed in the United States, its possessions, or Puerto Rico and has as a purpose the performance of experimental, developmental, research, design, or engineering work (see also 1827.374-3 and 1827.374-4). Contracts for any of the following purposes may be considered to involve the performance of work of the type described above (these examples are illustrative and not limiting):

(1) Conduct of basic or applied research.

(2) Development, design, or manufacture for the first time of any machine, article of manufacture, or composition of matter to satisfy NASA's specifications or special requirements.

(3) Development of any process or technique for attaining a NASA objective not readily attainable through the practice of a previously developed process or technique.

(4) Testing of, evaluation of, or experimentation with a machine, process, concept, or technique to determine whether it is suitable or could be made suitable for a NASA objective.

(5) Construction work or architect-engineer services having as a purpose the performance of experimental, developmental, or research work or test and evaluation studies involving such work.

(6) The operation of facilities or the coordination and direction of the work of others, if these activities involve performing work of any of the types described in paragraphs (b) (1) through (5) of this section.

(c) Other patent rights clauses. The contracting officer shall use a patent rights clause other than as specified in paragraph (a) or (b) of this section, under the following circumstances:

(1) When work is to be performed outside the United States, its possessions, and Puerto Rico by contractors that are not domestic firms, the clause at 1852.227-85, Invention Reporting and Rights—Foreign, shall be used unless the contracting officer determines, with concurrence of the installation's Patent Counsel, that the objectives of the contract would be better served by use of the clause at FAR 52.227-13, Patent Rights—Acquisition by the Government. For this purpose the contracting officer may presume that a contractor is not a domestic firm unless it is known that the firm is not foreign owned, controlled, or influenced. (See FAR 27.304-4(a) regarding subcontracts with U.S. firms.)

(2) When a contract is placed for another Government agency, that agency may request use of a specific patent rights clause (see FAR 27.304-2). If the agency does not request a specific clause, the contracting officer, upon consultation with the installation's Patent Counsel, may use the clause of paragraph (a) or (b) of this section, as applicable.

(3) When the contract is with a small business firm or a nonprofit organization for the performance of experimental, developmental, or research work, a determination may be made not to use the clause prescribed in paragraph (a) of this section by using the criteria and procedures in FAR 27.303(d). In such case, the installation's Patent Counsel is to be consulted for the appropriate clause to use.

(d) Requests for waiver of rights to inventions. The procedures for requesting waiver of rights to any inventions made in the performance of work under any NASA contract with other than a small business firm or a nonprofit organization are set forth in the NASA Patent Waiver Regulations, 14 CFR part 1245, subpart 1. In order to advise offerors of those procedures, the contracting officer shall insert the provision at 1852.227-71, Requests for Waiver of Rights to Inventions, in all solicitations that include the clause at 1852.227-70, New Technology.

(e) Designation of New Technology Representative and Patent Representative. The contracting officer shall insert the clause at 1852.227-72, Designation of New Technology Representative and Patent Representative, in all solicitations and contracts containing either of the clauses prescribed in paragraph (a) or (b) of this section. It may also be inserted, upon consultation with the installation's Patent Counsel, in solicitations and contracts using another patent rights clause in accordance with paragraph (c) of this section.

(f) Solicitation provision. The contracting officer shall insert the provision at 1852.227-84, Patent Rights Clauses, in solicitations for experimental, developmental, or research work to be performed in the United States, its possessions, or Puerto Rico when the eventual awardee may be a small business or a nonprofit organization.