As used in this part the following terms have the meanings assigned:

(a) Chief, Patents Division. The term Chief, Patents Division" means the Chief, Patents Division, Office of The Judge Advocate General, Department of the Army, Washington, D.C. 20310.

(b) Patent Counsel. The term "patent counsel" means the patent counsel of the designee involved; or, if none, the Chief, Patents Division.

Subpart A-Patents

$599.103 Patent indemnification of Government by contractor.

§ 599.103-4 Waiver of indemnity by the Government.

Specific patents may be excluded in accordance with § 9.103-4 of this title only with the prior approval of the Chief, Patents Division, except that approval may be exercised for the U.S. Army Materiel Command by the Commanding General thereof and by any designee of the Commanding General, U.S. Army Materiel Command, having patent counsel.

§ 599.107 Patent rights under contracts for research and development.

(36 F.R. 8948, May 15, 1971]

§ 599.107-4 Procedures.

Requests for approval of patents policies of universities and nonprofit institutions, pursuant to § 9.107-4(c) (2) of this title, shall be forwarded to the addressee in § 591.150 (b) (6) of this chapter (see § 591.150 (d)).

(36 F.R. 8948, May 18, 1971]
$599.109 Administration
rights clauses.

of patent

$599.109-2 Follow-up by Government.

Headquarters U.S. Army Materiel Command, and each Head of Procuring Activity not subordinate to that Headquarters issuing contracts for experimental, developmental, or research work, shall establish a follow-up system as required by 9.109-2 of this title. In this connection see the withholding provisions set forth in paragraph (g) of clause in 9.107-5(a) of this title and

paragraph (f) of clause in § 9.107–5(b) of this title.

§ 599.112 Adjustment of royalties.

Personnel having cognizance of patent matters shall report, through channels, to the Chief, Patents Division, the final results of any action taken in compliance with § 9.112 of this title, as well as any actions initiated by such personnel themselves.

Subpart B-[Reserved]

Subpart C-Foreign License and Technical Assistance Agreements § 599.304 Foreign license and technical assistance agreements between a domestic concern and a foreign government or concern.

§ 599.304-2 Review of agreements.

Proposed foreign license and technical assistance agreements between domestic concerns and foreign governments or concerns forwarded to the Department of the Army pursuant to § 9.304-1 of this title shall be forwarded through the cognizant Head of Procuring Activity for review by appropriate patent and technical personnel in accordance with

§ 9.304-2 of this title (see § 591.150 (d) of this chapter). Comments and recommendations of the Head of Procuring Activity reviewing such agreements shall be forwarded to the Deputy Chief of Staff for Logistics, PEMA Executive Division, Industrial Defense Branch, address: HQDA (DALO-MAE-F). [37 FR 7087, Apr. 8, 1972]

Subpart D-Processing of Licenses, Assignments, and Infringement Claims

§ 599.406 Investigation and administrative disposition of claims.

§ 599.406-50 Authorizations.

(a) Acquistion of Licenses and Releases of Past Infringement-the Commanding General, U.S. Army Materiel Command; the Chief of Engineers; The Surgeon General; the SAFEGUARD System Manager; and the designees of any of the foregoing are authorized, subject to the limitations of this part and Subpart D, Part 9 of this title, to acquire the items and rights described in 10 U.S.C. 2386 and to enter into agreements in settlement of claims thereunder. Other procuring activities shall obtain written approval of a proposed agres

ment from the addressee in § 591.150(b) (1) of this chapter through the Chief, Patents Division, except for agreements for acquisition of the right to reproduce copyrighted material where such acquisition cost is $2,500 or less.

(b) Claims under Foreign Assistance Act-the Commanding General, U.S. Army Materiel Command; the Chief of Engineers; and the Commanding General, U.S. Army Strategic Communications Command have been delegated authority (see § 591.5102 of this chapter) to enter into agreements in settlement of claims asserted under section 606(b) of the Foreign Assistance Act of 1961 and predecessors (section 506 of the Mutual Security Act of 1954 and section 517 of the Mutual Security Act of 1951).

[35 FR 4131, Mar. 5, 1970, as amended at 35 FR 18050, Nov. 25, 1970]

§ 599.406-51 Patent claims received in Department of the Army.

Any communication received by any activity of the Department of the Army in which claim is made that the manufacture, use, or disposition of any article, material, or process by or for that agency of any other agency or component of the Army, involves the use of any invention, whether patented or unpatented, and making a claim for compensation or offering to grant a license therefor, shall be transmitted to the Head of the Procuring Activity (or, in the case of the U.S. Army Materiel Command, to the Commanding General, U.S. Army Materiel Command) which has ordered the manufacture, use, or disposition of the subject matter in question. Such Head of Procuring Activity shall thereafter cause the claim to be processed in accordance with these regulations, AR 27-6, and ASPR Section IX. Part 4.

$599.406-52

Settlement of claims and procurement of invention and patent rights by designee.

The designee to whom the claim has been cleared may, subject to the availability of appropriations and allotments of funds in his activity, settle such claims in accordance with these regulations, AR 27-6, and § 9.406 of this title by execution of a contract of release and license or release and assignment.

§ 599.406-53 Fiscal procedures.

(a) An agreement to pay a fixed amount for the purchase of a paid up license and release or an assignment and release, or a release either by way of

lump-sum payment or an amount determinable at the time of execution of the contract, is subject to the provision that allotment of funds available for the purpose shall not be exceeded. Officers charged with making such agreements shall submit the proposed agreements, prior to incurring any obligation, to the cognizant finance and accounting officer for verification as to sufficiency of funds for that purpose. The following statement shall be included on the face of the contract:

The supplies and services to be obtained by this instrument are authorized by, are for the purpose set forth in, and are chargeable to the following allotments, the available balances of which are sufficient to cover the cost of the same:

(b) An agreement to pay running royalties on future procurement proportioned to use is not subject to the provision mentioned in paragraph (a) of this section.

(c) Any fiscal questions involving patent matters may be referred to the Chief, Patents Division for opinion or resolution.

§ 599.406-54 Approval of agreements.

(a) Agreements requiring approval. Approval by or on behalf of the Assistant Judge Advocate General for Civil Law is required of all agreements authorized by the Foreign Assistance Act of 1961 (22 U.S.C. 2356) (formerly the Mutual Security Act of 1954); the Invention Secrecy Act (35 U.S.C. 181-188); or 10 U.S.C. 2386 where the agreement

(1) Provides for total payment by the Government, including reasonably anticipated royalties of $100,000 or more; (2) Includes a license

(1) Limited to less than all Government agencies on the same terms; or

(1) Not providing for disposition in accordance with law of any article or material embodying the subject of the license;

(3) Provides for compensation for damages other than for infringement of patents or copyrights; e.g., claims under the Foreign Assistance Act or the Invention Secrecy Act;

(4) Contains a release or license which may operate to release a contractor from an obligation to indemnify the Government;

(5) Is in settlement of patent or copyright infringement liability for the use of foreign patents or copyrights;

(6) Is with a government or a national of a government within the scope of a Foreign Assistance Program;

(7) Contains a deviation from the requirements of ASPR or APP; or

(8) Requires the signature of or concurrence on behalf of another agency of the Government.

(b) Submission for approval. Where approval of an agreement is required by paragraph (a) of this section, the designee shall submit the executed agreement in the number required to be approved (plus an unexecuted copy) to the Chief, Patents Division. The agreement shall be accompanied by a memorandum of facts signed by or on behalf of the designee setting forth, where pertinent:

(1) The identification and brief description of the subject matter of the patent, patent application, or invention involved in the claim being settled;

(2) The date of clearance granted pursuant to AR 27-6;

(3) A brief statement of the designee's conclusions regarding validity and infringement and the reasons therefor;

(4) A statement of the extent of Government use of the invention, including the estimated money value of the claim, if any, and an estimate of future procurement, if any, involving possible increase of the amount of the claim;

(5) A statement of the interest of any other Department in the matter with a summary of extent to which coordination has been effected or should be effected;

(6) A specific reference to the reasons the requested approval is necessary as cited in paragraph (a) of this section.

(7) The reasons for any deviation from any prescribed contract clause, and a precise statement of such deviation;

(8) A recommendation, with supporting reasons, that the contract be approved;

(9) A recommendation that the instrument, if approved, be filed in the public register, departmental register, or the secret register of the U.S. Patent Office;

(10) A statement that the instrument effects settlement of the claim for which clearance was granted; and

(11) A statement that the evidence indicates that the profferor has the title to the patents or copyrights forming the basis of the agreement.

(c) Contract provision. Agreements falling within the provisions of para

(a) General. The designee shall obtain the original and at least one executed copy of each release, license, and assignment made in accordance with this part. The original shall be forwarded by the designee [unless the contract does not involve the payment of money to the conrtactor] to the addressee in § 591.150 (b) (12) of this chapter for the General Accounting Office. An executed copy, together with a second copy which may be unexecuted, shall be transmitted without delay by the designee to the Chief, Patents Division for recording in the U.S. Patent Office. The memorandum of transmittal shall include the designee's recommendation whether the instrument should be filed in the public register, departmental register, or the secret register. This memorandum shall also set forth:

(1) The name of the claimant; name of the releasor, licensor, or assignor; and name of the patentee or inventor;

(2) The patent number or patent application serial number; and

(3) A statement that the instrument effects settlement of the claim for which clearance was granted.

(b) Contracts providing for payment of a running royalty. A copy of each

license which provides for the payment of a running royalty shall be transmitted by the designee to each interested head of procuring activity. Receipt of such copy shall constitute notice that future procurement of the licensed subject matter requires the payment of royalties to the licensor. Where necessary, such interested head of procuring activity shall notify procurement and price analysis offices affected.

§ 599.411 Procurement of invention and patent rights.

§ 599.411-50 Proposed licenses and assignments.

Any officer or employee of a procuring activity shall promptly forward to the chief patent counsel or legal officer of his activity any communications received by him relating to proposed patent licenses or assignments. Any other person receiving such communications shall forward them to the Chief, Patents Division, for proper action.

§ 599.411-51

Procedures applicable to procurement of invention and patent rights.

The requirements and procedures in 599.406 for the investigation and settlement of administrative claims of infringement, particularly §§ 599.406-53, 599.406-54, and 599.406-55, are generally applicable to the procurement of licenses and assignments except that item (3) of § 599.406-55(a) is changed to read:

or

(3) A statement that the instrument the license procured constitutes assignment for which clearance was granted.

§ 599.411-52 Gratuitous grants.

Various patent owners, for the purpose of assisting national defense, have voluntarily granted royalty-free licenses, assignments, and releases to the Government to practice the inventions covered by their patents and applications for patents. To provide a simple standardized form for such gratuitous grants, the unilateral grant format set forth in § 599.450 shall be used. If the grant is to be executed by the Government, the appropriate mandatory clauses in § 9.409-1 of this title shall be included unless approval to omit them has been obtained from the Chief, Patents Division. In all clauses, the words "grant” and "grantor" shall be substituted for “contract” and “contractor.”

Format for gratuitous grant.

DEPARTMENT OF THE ARMY PATENT LICENSE AND RELEASE GRANT

This grant, made this -- day of 19_-, by (hereinafter called the

grantor), [a corporation organized and existing under the laws of partnership consisting of [an individual trading as the City of

--------]1

1 .] 1 of

in the State of in favor of the United States of America (hereinafter called the Government) witnesseth that

Whereas, to aid the national defense and promote the common welfare various patent owners have granted and are continuing to grant royalty-free licenses and releases to the Government to practice the inventions secured by their patents and applications for patents, and

Whereas, the Government has used many such inventions for purposes aforesaid, and is desirous of obtaining further royalty-free licenses and releases including this license and release.

Now, therefore, in consideration of the premises and of the grant by other patent owners of like licenses and releases to the Government, the Grantor has agreed as follows:

Article 1. [License] [Assignment].1

[Insert the clause in ASPR 9-409.3 (a) for a license; or the clause in ASPR 9-410 for an assignment]

Article 2. Term.

[Insert the clause in ASPR 9-409.3 (b) for a license; no clause is required if the Assignment clause in ASPR 9-410 is inserted in Article 1]

Article 3. Release of Past Infringement. [Insert the clause in ASPR 9–409.2(a)] Article 4. Nonestoppel.

[Insert the clause in ASPR 9-409.1 (f) } Article 5. Successors and Assignees. This Grant shall be binding upon the Grantor, its successors and assignees.

In witness whereof, the Grantor has executed this instrument as of the day and year above written. By

600.650

600.651

Application of National Defense
Projects Rating Plan.
Insurance advisors.

AUTHORITY: The provisions of this Part 600 issued under secs. 2301-2314, 3012, 70A Stat. 127-133, 157; 10 U.S.C. 2301-2314, 3012.

SOURCE: The provisions of this Part 600 appear at 30 FR 12208, Sept. 24, 1965, unless otherwise noted.

Subpart A-Bonds

SOURCE: The provisions of this Subpart A appear at 36 FR 20683, Oct. 28, 1971, unless otherwise noted.

§ 600.110 Substitution of surety bonds. Requests for approval of acceptance of a new surety bond for a bond previously

approved shall be forwarded to The Judge Advocate General, address: HQDA (DAJA-PLB).

[37 FR 7087, Apr. 8, 1972]

§ 600.112

Execution and administration of bonds and consents of surety.

(a) The original of all surety bonds, except those listed in paragraph (d) of this section shall be forwarded immediately after execution to the addressee in § 600.110. If the bond was required in support of a contract or modification thereof, the original signed bond shall be attached to the original signed contract or modification, as appropriate. If it is not practicable to forward the original contract or modification, a signed duplicate or an authenticated copy thereof shall be attached to the original bond.

(b) The Judge Advocate General shall examine each bond as to legal sufficiency, including proper form and execution, the authority of corporate officials who execute bonds on behalf of corporate sureties, and compliance by individual sureties with 10.201-2 of this title. Bonds requiring corrective action before approval shall be returned with explanation of corrections necessary. If action by a surety only is required and the surety subscribes to the "Expediter Plan," then correction will be accomplished without return to the originating installation. (Under the "Expediter Plan" many of the surety companies have authorized a representative in Washington, D.C. to act on their behalfs in dealings with the Judge Advocate General.) Upon approval the Judge Advocate General shall then forward the bond, together with any attached contract or modification thereof which it supports, to the proper office for filing. The duplicate bond shall be retained and filed in the office to which it pertains or which authorized its acceptance. See § 600.202 for use of options in lieu of sureties.

(c) Consents of surety shall be handled in the same manner as bonds. (d) The following bonds should be reviewed at local level and shall not be forwarded to the Judge Advocate General

(1) Payment and performance bonds for contracts not exceeding $20,000; (2) Blanket fidelity and forgery bonds; (3) Bid bonds (except annual bid bonds);

(4) Subcontractor bonds;