Thanks to everyone ,especially Darla Jackson and Janet Baxter, who pointed
out that the Lexis message did not mean the regulations were outdated but
these regulation supplements are no longer published in the Federal Register
and pointing me to the http://farsite.hill.af.mil/ This site has all Federal
acquisition regulations and supplements. It's now bookmarked
Mary Lou Wilker
Library Director
Warner Norcross & Judd LLP
900 Fifth Third Building
111 Lyon Street NW
Grand Rapids, MI 49503-2487
Direct 616.752.2236
Fax 616.222.2236
Email mlwilker@wnj.com
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________________________________
From: Jackson, Darla [mailto:DJackson@okcu.edu]
Sent: Tuesday, January 23, 2007 11:04 AM
To: Wilker, Mary Lou
Subject: DFAR
Mary Lou,
Below are the current versions of the DFARS sections that I believe you want.
I think that there was a slight typo in the citation you provided. I hope
this helps. I wasn't sure from your email if you wanted the current
provisions or older versions. You can locate the DFARS at
http://farsite.hill.af.mil/VFDFARA.HTM
Darla Jackson
Darla W. Jackson
Head of Reference and Access Services
Oklahoma City University Law Library
2501 N. Blackwelder
Oklahoma City, OK 73106
(V) 405-208-5915
(F) 405-208-5172
227.7009 Patent releases, license agreements, and assignments.
This section contains clauses for use in patent release and settlement
agreements, license agreements, and assignments, executed by the Government,
under which the Government acquires rights. Minor modifications of language
(e.g., pluralization of "Secretary" or "Contracting Officer") in
multidepartmental agreements may be made if necessary.
227.7009-1 Required clauses.
(a) Covenant Against Contingent Fees. Insert the clause at FAR 52.203-5.
(b) Gratuities. Insert the clause at FAR 52.203-3.
(c) Assignment of Claims. Insert the clause at FAR 52.232-23.
(d) Disputes. Pursuant to FAR Subpart 33.2, insert the clause at FAR
52.233-1.
(e) Non-Estoppel. Insert the clause at 252.227-7000.
227.7009-2 Clauses to be used when applicable.
(a) Release of past infringement. The clause at 252.227-7001, Release of Past
Infringement, is an example which may be modified or omitted as appropriate
for particular circumstances, but only upon the advice of cognizant patent or
legal counsel. (See footnotes at end of clause.)
(b) Readjustment of payments. The clause at 252.227-7002, Readjustment of
Payments, shall be inserted in contracts providing for payment of a running
royalty.
(c) Termination. The clause at 252.227-7003, Termination, is an example for
use in contracts providing for the payment of a running royalty. This clause
may be modified or omitted as appropriate for particular circumstances, but
only upon the advice of cognizant patent or legal counsel (see 227.7004(c)).
227.7009-3 Additional clauses--contracts except running royalty contracts.
The following clauses are examples for use in patent release and settlement
agreements, and license agreements not providing for payment by the
Government of a running royalty.
(a) License Grant. Insert the clause at 252.227-7004.
(b) License Term. Insert one of the clauses at 252.227-7005 Alternate I or
Alternate II, as appropriate.
227.7009-4 Additional clauses-contracts providing for payment of a running
royalty.
The clauses set forth below are examples which may be used in patent release
and settlement agreements, and license agreements, when it is desired to
cover the subject matter thereof and the contract provides for payment of a
running royalty.
(a) License grant--running royalty. No Department shall be obligated to pay
royalties unless the contract is signed on behalf of such Department.
Accordingly, the License Grant clause at 252.227-7006 should be limited to
the practice of the invention by or for the signatory Department or
Departments.
(b) License term-running royalty. The clause at 252.227-7007 is a sample form
for expressing the license term.
(c) Computation of royalties. The clause at 252.227-7008 providing for the
computation of royalties, may be of varying scope depending upon the nature
of the royalty bearing article, the volume of procurement, and the type of
contract pursuant to which the procurement is to be accomplished.
(d) Reporting and payment of royalties.
(1) The contract should contain a provision specifying the office designated
within the specific Department involved to make any necessary reports to the
contractor of the extent of use of the licensed subject matter by the entire
Department, and such office shall be charged with the responsibility of
obtaining from all procuring offices of that Department the information
necessary to make the required reports and corresponding vouchers necessary
to make the required payments. The clause at 252.227-7009 is a sample for
expressing reporting and payment of royalties requirements.
(2) Where more than one Department or Government Agency is licensed and there
is a ceiling on the royalties payable in any reporting period, the licensing
Departments or Agencies shall coordinate with respect to the pro rata share
of royalties to be paid by each.
(e) License to other government agencies. When it is intended that a license
on the same terms and conditions be available to other departments and
agencies of the Government, the clause at 252.227-7010 is an example which
may be used.
252.227-7012 Patent License and Release Contract.
As prescribed at 227.7012, insert the following clause in patent releases,
license agreements, and assignments:
_______________________ (Contract No.)
PATENT LICENSE AND RELEASE CONTRACT (SEP 1999)
THIS CONTRACT is effective as of the ____ day of [month, year], between the
UNITED STATES OF AMERICA (hereinafter called the Government), and _________
____________________ (hereinafter called the Contractor), (a corporation
organized and existing under the laws of the State of _______________), (a
partnership consisting of _____________________), (an individual trading as
____________________), of the City of _______________________, in the State
of _________________.
WHEREAS, the Contractor warrants that it has the right to grant the within
license and release, and the Government desires to procure the same, and
WHEREAS, this contract is authorized by law, including 10 U.S.C. 2386.
NOW THEREFORE, in consideration of the grant, release and agreements
hereinafter recited, the parties have agreed as follows:
ARTICLE l. License Grant.*
(Insert the clause at 252.227-7004 for a paid up license, or the clause at
252.227-7006 for a license on a running royalty basis.)
ARTICLE 2. License Term.*
(Insert the appropriate alternative clause at 252.227-7005 for a paid up
license, or the clause at 252.227-7007 for a license on a running royalty
basis.)
ARTICLE 3. Release of Past Infringement.
(Insert the clause at 252.227-7001.)
ARTICLE 4. Non-Estoppel.
(Insert the clause at 252.227-7000.)
ARTICLE 5. Payment.
The Contractor shall be paid the sum of __________ Dollars ($________) in
full compensation for the rights herein granted and agreed to be granted.
(For a license on a running royalty basis, insert the clause at 252.227-7006
in accordance with the instructions therein, and also the clause as specified
at 252.227-7002 and 252.227-7009 and 252.227-7010.)
ARTICLE 6. Covenant Against Contingent Fees.
(Insert the clause at FAR 52.203-5.)
ARTICLE 7. Assignment of Claims.
(Insert the clause at FAR 52.232-23.)
ARTICLE 8. Gratuities.
(Insert the clause at FAR 52.203-3.)
ARTICLE 9. Disputes.
(Insert the clause at FAR 52.233-1.)
ARTICLE 10. Successors and Assignees.
This Agreement shall be binding upon the Contractor, its successors** and
assignees, but nothing contained in this Article shall authorize an
assignment of any claim against the Government otherwise than as permitted by
law.
IN WITNESS WHEREOF, the parties hereto have executed this contract.
THE UNITED STATES OF AMERICA
By
Date
(Signature and Title of Contractor
Representative) _______________
By
Date
*If only a release is procured, delete this article; if an assignment is
procured, use the clause at 252.227-7011.
**When the Contractor is an individual, change "successors" to "heirs"; if a
partnership, modify appropriately.
(End of clause)
While trying to obtain a Department of Defense Federal Acquisition
Regulation. I came across this notation.
NOTES APPLICABLE TO ENTIRE CHAPTER:
Although the text of Manuals and Supplements to the Defense FAR Supplement
are not published in the Code of Federal Regulations, they were listed for
the convenience of the user. All of the Supplements have been deleted. The
only manuals which remain in effect are: Armed Services Pricing Manual (1986)
and Armed Services Pricing Manual, Volume 2, Price Anaylsis (1987).
Does anyone have the older regulations. Specifically I'm looking for
227.27009 and 252.227-7012 I think it has something to do with defense
contract clauses dealing with patent.
Mary Lou Wilker
Library Director
Warner Norcross & Judd LLP
900 Fifth Third Building
111 Lyon Street NW
Grand Rapids, MI 49503-2487
Direct 616.752.2236
Fax 616.222.2236
Email mlwilker@wnj.com
Notice: This e-mail message and any attachments are solely for the
confidential use of the intended recipient. If you are not the intended
recipient, please do not read this message or any attachments, and please do
not distribute or act in reliance on this message. If you have received this
message by mistake, please notify us immediately by return e-mail and
promptly delete this message and any attachments from your computer system.
The attorney-client and work product privileges are not waived by the
transmission of this message. Warner Norcross & Judd LLP.
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