US Codex
C.F.R.
Browse by date

View an earlier version

Latest
2026-08-27
Browse all versions by date
Notes

32 C.F.R. §§ 37.845–37.875

7 sections in range

§37.845. What data rights should I obtain?

32 C.F.R. § 37.845

(a)
You should seek to obtain what you, with the advice of legal counsel, judge is needed to ensure future Government use of technology that emerges from the research, as long as doing so is consistent with the balance between DoD interests described in § 37.840(b). You should consider data in which you wish to obtain license rights and data that you may wish to be delivered; since TIAs are assistance instruments rather than acquisition instruments, however, it is not expected that data would be delivered in most cases. What generally is needed is an irrevocable, world-wide license for the Government to use, modify, reproduce, release, or disclose for Governmental purposes the data that are generated under TIAs (including any data, such as computer software, in which a recipient may obtain a copyright). A Governmental purpose is any activity in which the United States Government participates, but a license for Governmental purposes does not include the right to use, or have or permit others to use, modify, reproduce, release, or disclose data for commercial purposes.
(b)
You may negotiate licenses of different scope than described in paragraph (a) of this section when necessary to accomplish program objectives or to protect the Government's interests. Consult with legal counsel before negotiating a license of different scope.
(c)
In negotiating data rights, you should consider the rights in background data that are necessary to fully utilize technology that is expected to result from the TIA, in the event the recipient does not commercialize the technology or chooses to protect any invention as a trade secret rather than by a patent. If a recipient intends to protect any invention as a trade secret, you should consult with your intellectual property counsel before deciding what information related to the invention the award should require the recipient to report.
Notes, amendments, and revision history

Authority

Authority: 5 U.S.C. 301 and 10 U.S.C. 113.

Source

Source: 68 FR 47160, Aug. 7, 2003, unless otherwise noted.

§37.850. Should I require recipients to mark data?

32 C.F.R. § 37.850

To protect the recipient's interests in data, your TIA should require the recipient to mark any particular data that it wishes to protect from disclosure with a legend identifying the data as licensed data subject to use, release, or disclosure restrictions.
Notes, amendments, and revision history

Authority

Authority: 5 U.S.C. 301 and 10 U.S.C. 113.

Source

Source: 68 FR 47160, Aug. 7, 2003, unless otherwise noted.

§37.855. How should I handle protected data?

32 C.F.R. § 37.855

Prior to releasing or disclosing data marked with a restrictive legend (as described in § 37.850) to third parties, you should require those parties to agree in writing that they will:
(a)
Use the data only for governmental purposes; and
(b)
Not release or disclose the data without the permission of the licensor (i.e., the recipient).
Notes, amendments, and revision history

Authority

Authority: 5 U.S.C. 301 and 10 U.S.C. 113.

Source

Source: 68 FR 47160, Aug. 7, 2003, unless otherwise noted.

§37.860. What rights should I obtain for inventions?

32 C.F.R. § 37.860

(a)
You should negotiate rights in inventions that represent a good balance between the Government's interests (see § 37.840(b)) and the recipient's interests. As explained in appendix B to this part:
(1)
You have the flexibility to negotiate patent rights provisions that vary from what the Bayh-Dole statute (Chapter 18 of Title 35, U.S.C.) requires in many situations. You have that flexibility because TIAs include not only cooperative agreements, but also assistance transactions other than grants or cooperative agreements.
(2)
Your TIA becomes an assistance instrument other than a grant or cooperative agreement if its patent rights provision varies from what Bayh-Dole requires in your situation. However, you need not consider that difference in the type of transaction until the agreement is finalized, and it should not affect the provision you negotiate.
(b)
As long as it is consistent with the balance between DoD interests described in § 37.840(b) and the recipient's interests, you should seek to obtain for the Government, when an invention is conceived or first actually reduced to practice under a TIA, a nonexclusive, nontransferrable, irrevocable, paid-up license to practice the invention, or to have it practiced, for or on behalf of the United States throughout the world. The license is for Governmental purposes, and does not include the right to practice the invention for commercial purposes.
(c)
To provide for the license described in paragraph (b) of this section, your TIA generally would include the patent-rights clause that 37 CFR 401.14 specifies to implement the Bayh-Dole statute's requirements. Note that:
(1)
The clause is designed specifically for grants, contracts, and cooperative agreements awarded to small businesses and nonprofit organizations, the types of funding instruments and recipients to which the entire Bayh-Dole statute applies. As explained in appendix B to this part, only two Bayh-Dole requirements (in 35 U.S.C. sections 202(c)(4) and 203) apply to cooperative agreements with other performers, by virtue of an amendment to Bayh-Dole at 35 U.S.C. 210(c).
(2)
You may use the same clause, suitably modified, in cooperative agreements with performers other than small businesses and nonprofit organizations. Doing so is consistent with a 1983 Presidential memorandum that calls for giving other performers rights in inventions from Federally supported research that are at least as great as the rights that Bayh-Dole gives to small businesses and nonprofit organizations (see appendix B to this part for details). That Presidential memorandum is incorporated by reference in Executive Order 12591 (52 FR 13414, 3 CFR, 1987 Comp., p. 220), as amended by Executive Order 12618 (52 FR 48661, 3 CFR, 1987 Comp., p. 262).
(3)
The clause provides for flow-down of Bayh-Dole patent-rights provisions to subawards with small businesses and nonprofit organizations.
(4)
There are provisions in 37 CFR part 401 stating when you must include the clause (37 CFR 401.3) and, in cases when it is required, how you may modify and tailor it (37 CFR 401.5).
(d)
You may negotiate Government rights of a different scope than the standard patent-rights provision described in paragraph (c) of this section when necessary to accomplish program objectives and foster the Government's interests. If you do so:
(1)
With the help of the program manager and legal counsel, you must decide what best represents a reasonable arrangement considering the circumstances, including past investments, contributions under the current TIA, and potential commercial markets. Taking past investments as an example, you should consider whether the Government or the recipient has contributed more substantially to the prior research and development that provides the foundation for the planned effort. If the predominant past contributor to the particular technology has been:
(i)
The Government, then the TIA's patent-rights provision should be at or close to the standard Bayh-Dole provision.
(ii)
The recipient, then a less restrictive patent provision may be appropriate, to allow the recipient to benefit more directly from its investments.
(2)
You should keep in mind that obtaining a nonexclusive license at the time of award, as described in paragraph (b) of this section, is valuable if the Government later requires access to inventions to enable development of defense-unique products or processes that the commercial marketplace is not addressing. If you do not obtain a license at the time of award, you should consider alternative approaches to ensure access, such as negotiating a priced option for obtaining nonexclusive licenses in the future to inventions that are conceived or reduced to practice under the TIA.
(3)
You also may consider whether you want to provide additional flexibility by giving the recipient more time than the standard patent-rights provision does to:
(i)
Notify the Government of an invention, from the time the inventor discloses it within the for-profit firm.
(ii)
Inform the Government whether it intends to take title to the invention.
(iii)
Commercialize the invention, before the Government license rights in the invention become effective.
Notes, amendments, and revision history

Authority

Authority: 5 U.S.C. 301 and 10 U.S.C. 113.

Source

Source: 68 FR 47160, Aug. 7, 2003, unless otherwise noted.

§37.865. Should my patent provision include march-in rights?

32 C.F.R. § 37.865

Your TIA's patent rights provision should include the Bayh-Dole march-in rights clause at paragraph (j)(1) of 37 CFR 401.14, or an equivalent clause, concerning actions that the Government may take to obtain the right to use subject inventions, if the recipient fails to take effective steps to achieve practical application of the subject inventions within a reasonable time. The march-in provision may be modified to best meet the needs of the program. However, only infrequently should the march-in provision be entirely removed (e.g., you may wish to do so if a recipient is providing most of the funding for a research project, with the Government providing a much smaller share).
Notes, amendments, and revision history

Authority

Authority: 5 U.S.C. 301 and 10 U.S.C. 113.

Source

Source: 68 FR 47160, Aug. 7, 2003, unless otherwise noted.

§37.870. Should I require recipients to mark documents related to inventions?

32 C.F.R. § 37.870

To protect the recipient's interest in inventions, your TIA should require the recipient to mark documents disclosing inventions it desires to protect by obtaining a patent. The recipient should mark the documents with a legend identifying them as intellectual property subject to public release or public disclosure restrictions, as provided in 35 U.S.C. 205.
Notes, amendments, and revision history

Authority

Authority: 5 U.S.C. 301 and 10 U.S.C. 113.

Source

Source: 68 FR 47160, Aug. 7, 2003, unless otherwise noted.

§37.875. Should my TIA include a provision concerning foreign access to technology?

32 C.F.R. § 37.875

(a)
Consistent with the objective of enhancing the national security by increasing DoD reliance on the U.S. commercial technology and industrial bases, you must include a provision in the TIA that addresses foreign access to technology developed under the TIA.
(b)
The provision must provide, as a minimum, that any transfer of the:
(1)
Technology must be consistent with the U.S. export laws, regulations and policies (e.g., the International Traffic in Arms Regulation at chapter I, subchapter M, title 22 of the CFR (22 CFR parts 120 through 130), the DoD Industrial Security Regulation in DoD 5220.22-R, 3 and the Department of Commerce Export Regulation at chapter VII, subchapter C, title 15 of the CFR (15 CFR parts 730 through 774), as applicable.
(2)
Exclusive right to use or sell the technology in the United States must, unless the Government grants a waiver, require that products embodying the technology or produced through the use of the technology will be manufactured substantially in the United States. The provision may further provide that:
(i)
In individual cases, the Government may waive the requirement of substantial manufacture in the United States upon a showing by the recipient that reasonable but unsuccessful efforts have been made to transfer the technology under similar terms to those likely to manufacture substantially in the United States or that under the circumstances domestic manufacture is not commercially feasible.
(ii)
In those cases, the DoD Component may require a refund to the Government of some or all the funds paid under the TIA for the development of the transferred technology.
(c)
You may, but are not required to, seek to negotiate a domestic manufacture condition for transfers of nonexclusive rights to use or sell the technology in the United States, to parallel the one described for exclusive licenses in paragraph (b)(2) of this section, if you judge that nonexclusive licenses for foreign manufacture could effectively preclude the establishment of domestic sources of the technology for defense purposes.
Notes, amendments, and revision history

Amendments

[68 FR 47160, Aug. 7, 2003, as amended at 85 FR 51246, Aug. 19, 2020]

Authority

Authority: 5 U.S.C. 301 and 10 U.S.C. 113.

Source

Source: 68 FR 47160, Aug. 7, 2003, unless otherwise noted.

Amendments

[68 FR 47160, Aug. 7, 2003, as amended at 85 FR 51246, Aug. 19, 2020]