Federal Acquisition Regulation 52.227–7
facilities (1) that are or have been sold or of- (End of clause)
fered for sale by the Contractor to the pub-
lic, (2) that can be provided over commer- [49 FR 12987, Mar. 30, 1984, as amended at 72
cially available equipment, or (3) that in- FR 63066, Nov. 7, 2007]
volve relatively minor modifications.
[49 FR 12987, Mar. 30, 1984, as amended at 56 52.227–6 Royalty Information.
FR 15156, Apr. 15, 1991; 60 FR 34761, July 3, As prescribed in 27.202–5(a)(1), insert
1995; 72 FR 63065, Nov. 7, 2007] the following provision:
52.227–4 Patent Indemnity—Construc- ROYALTY INFORMATION (APR 1984)
(a) Cost or charges for royalties. When the re-
As prescribed in 27.201–2(d)(1), insert sponse to this solicitation contains costs or
the following clause: charges for royalties totaling more than
$250, the following information shall be in-
PATENT INDEMNITY—CONSTRUCTION cluded in the response relating to each sepa-
CONTRACTS (DEC 2007) rate item of royalty or license fee:
(1) Name and address of licensor.
Except as otherwise provided, the Con- (2) Date of license agreement.
tractor shall indemnify the Government and (3) Patent numbers, patent application se-
its officers, agents, and employees against li- rial numbers, or other basis on which the
ability, including costs and expenses, for in- royalty is payable.
fringement of any United States patent (ex- (4) Brief description, including any part or
cept a patent issued upon an application that model numbers of each contract item or
is now or may hereafter be withheld from component on which the royalty is payable.
issue pursuant to a Secrecy Order under 35 (5) Percentage or dollar rate of royalty per
U.S.C. 181) arising out of performing this unit.
contract or out of the use or disposal by or (6) Unit price of contract item.
for the account of the Government of sup- (7) Number of units.
plies furnished or work performed under this (8) Total dollar amount of royalties.
contract. (b) Copies of current licenses. In addition, if
specifically requested by the Contracting Of-
(End of clause) ficer before execution of the contract, the of-
feror shall furnish a copy of the current li-
Alternate I (DEC 2007). As prescribed cense agreement and an identification of ap-
in 27.201–2(d)(2), designate the first plicable claims of specific patents.
paragraph of the basic clause as para-
graph (a) and add the following para- (End of provision)
graph (b) to the basic clause:
Alternate I (APR 1984). As prescribed
(b) This patent indemnification shall not in 27.202–5(a)(2), substitute the fol-
apply to the following items: lowing for the introductory portion of
lllllllllllllll paragraph (a) of the basic provision:
[Contracting Officer list the items to be ex-
cluded.] When the response to this solicitation cov-
ers charges for special construction or spe-
[72 FR 63065, Nov. 7, 2007] cial assembly that contain costs or charges
for royalties totaling more than $250, the fol-
52.227–5 Waiver of Indemnity. lowing information shall be included in the
response relating to each separate item of
As prescribed in 27.201–2(e), insert the royalty or license fee:
[49 FR 12987, Mar. 30, 1984, as amended at 72
WAIVER OF INDEMNITY (APR 1984) FR 63066, Nov. 7, 2007]
Any provision or clause of this contract to 52.227–7 Patents—Notice of Govern-
the contrary notwithstanding, the Govern- ment Licensee.
ment hereby authorizes and consents to the
use and manufacture, solely in performing As prescribed at 27.202–5(b), insert the
this contract, of any invention covered by following provision:
the United States patents identified below
and waives indemnification by the Con- PATENTS—NOTICE OF GOVERNMENT LICENSEE
tractor with respect to such patents: (APR 1984)
llllllllllllllllllllllll The Government is obligated to pay a roy-
Contracting Officer identify the patents by alty applicable to the proposed acquisition
ebenthall on PRODPC68 with CFR
number or by other means if more appropriate because of a license agreement between the
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52.227–8 48 CFR Ch. 1 (10–1–08 Edition)
Government and the patent owner. The pat- (f) The substance of this clause, including
ent number is ll [Contracting Officer fill in], this paragraph (f), shall be included in any
and the royalty rate is ll [Contracting Offi- subcontract in which the amount of royal-
cer fill in]. If the offeror is the owner of, or a ties reported during negotiation of the sub-
licensee under, the patent, indicate below: contract exceeds $250.
( ) Owner ( ) Licensee
If an offeror does not indicate that it is the (End of clause)
owner or a licensee of the patent, its offer
will be evaluated by adding thereto an
[49 FR 12988, Mar. 30, 1984, as amended at 72
amount equal to the royalty.
FR 63066, Nov. 7, 2007]
(End of provision)
52.227–10 Filing of Patent Applica-
tions—Classified Subject Matter.
[49 FR 12988, Mar. 30, 1984, as amended at 72
FR 63066, Nov. 7, 2007] As prescribed at 27.203–2, insert the
FILING OF PATENT APPLICATIONS—CLASSIFIED
52.227–9 Refund of Royalties. SUBJECT MATTER (DEC 2007)
As prescribed in 27.202–5(c), insert the (a) Before filing or causing to be filed a
following clause: patent application in the United States dis-
closing any subject matter of this contract
REFUND OF ROYALTIES (APR 1984) classified Secret or higher, the Contractor
shall, citing the 30-day provision below,
(a) The contract price includes certain
transmit the proposed application to the
amounts for royalties payable by the Con-
Contracting Officer. The Government shall
tractor or subcontractors or both, which
determine whether, for reasons of national
amounts have been reported to the Con-
tracting Officer. security, the application should be placed
(b) The term royalties as used in this clause under an order of secrecy, sealed in accord-
refers to any costs or charges in the nature ance with the provision of 35 U.S.C. 181–188,
of royalties, license fees, patent or license or the issuance of a patent otherwise delayed
amortization costs, or the like, for the use of under pertinent United States statutes or
or for rights in patents and patent applica- regulations. The Contractor shall observe
tions in connection with performing this any instructions of the Contracting Officer
contract or any subcontract hereunder. regarding the manner of delivery of the pat-
(c) The Contractor shall furnish to the ent application to the United States Patent
Contracting Officer, before final payment Office, but the Contractor shall not be denied
under this contract, a statement of royalties the right to file the application. If the Con-
paid or required to be paid in connection tracting Officer shall not have given any
with performing this contract and sub- such instructions within 30 days from the
contracts hereunder together with the rea- date of mailing or other transmittal of the
sons. proposed application, the Contractor may
(d) The Contractor will be compensated for file the application.
royalties reported under paragraph (c) above, (b) Before filing a patent application in the
only to the extent that such royalties were United States disclosing any subject matter
included in the contract price and are deter- of this contract classified Confidential, the
mined by the Contracting Officer to be prop- Contractor shall furnish to the Contracting
erly chargeable to the Government and allo- Officer a copy of the application for Govern-
cable to the contract. To the extent that any ment determination whether, for reasons of
royalties that are included in the contract national security, the application should be
price are not in fact paid by the Contractor placed under an order of secrecy or the
or are determined by the Contracting Officer issuance of a patent should be otherwise de-
not to be properly chargeable to the Govern- layed under pertinent United States statutes
ment and allocable to the contract, the con- or regulations.
tract price shall be reduced. Repayment or (c) Where the subject matter of this con-
credit to the Government shall be made as tract is classified for reasons of security, the
the Contracting Officer directs. Contractor shall not file, or cause to be filed,
(e) If, at any time within 3 years after final in any country other than in the United
payment under this contract, the Contractor States as provided in paragraphs (a) and (b)
for any reason is relieved in whole or in part of this clause, an application or registration
from the payment of the royalties included for a patent containing any of the subject
in the final contract price as adjusted pursu- matter of this contract without first obtain-
ant to paragraph (d) above, the Contractor ing written approval of the Contracting Offi-
shall promptly notify the Contracting Offi- cer.
cer of that fact and shall reimburse the Gov- (d) When filing any patent application
ebenthall on PRODPC68 with CFR
ernment in a corresponding amount. coming within the scope of this clause, the
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