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General
Terms and Conditions
Advanced Technology Program
August
2004
1. Order
of Precedence of Terms and Conditions of Award
2. Referenced Requirements
3. Authority to Modify
4. Requirements for Continuing Financial Assistance
5. NIST Project Management Team
6. Substantial Involvement
7. Technical/Business/Financial Reports and Plans
8. Kick-off Meetings, Annual Reviews, Closeout Meetings And Special Studies
9. Prior Notification and Approval Requirements
10. Unallowable Project Costs
11. Program Income
12. Equipment
13. Non-Compliance with Statutory Purpose
14. Refunds
15. Audits
16. Closeout of Cooperative Agreement
17. Use of Name or Endorsements
18. Publication Guidelines
19. Protection of Human Subjects
20. Care and Use of Vertebrate Animals
21. Bureau of Industry and Security (BIS) Clearance North American Free
Trade Agreement Patent Notification Procedures
22. Liability
23. Informal Collaborators
24. Intellectual Property
Attachment A - Optional
Guidelines for Quarterly R&D Performance Reports (4 Pages)
Attachment B - Guidelines for Reporting on Business Progress and Economic
Impacts (2 Pages)
This document
applies to all Recipients of the ATP Cooperative Agreements. ATP
Recipient is defined to include all single company Recipients and each
individual company or organization that is identified as a Joint Venture
participant in the Special Award Conditions .
1. ORDER OF PRECEDENCE
OF TERMS AND CONDITIONS OF AWARD
Where the terms of
the award and proposal differ, the terms of the award shall prevail.
The Recipient is obligated to bring to the attention of the Grants Specialist
any perceived conflicts in the terms and conditions of the award.
2. REFERENCED REQUIREMENTS
The ATP Statute, 15
U.S.C. Sec. 278n; the ATP Rule, 15 CFR Part 295; the ATP Notice of Availability
of Funds, 69 Fed. Reg. 7617 (February 18, 2004); the Notice of Federal
Funding Opportunity dated February 18, 2004, the ATP Proposal Preparation
Kit (February 2004), and the Recipient’s proposal are hereby incorporated
into the award by reference.
3. AUTHORITY TO
MODIFY
The NIST Grants Officer
is the ONLY authorized agent at NIST with the authority
to bind the Federal Government and to take actions to amend, suspend,
and terminate the cooperative agreement. In the case of a joint venture,
the NIST Grants Officer may take enforcement action directly with an individual
joint venture member, as warranted, as well as with the joint venture
as a whole.
4. REQUIREMENTS
FOR CONTINUING FINANCIAL ASSISTANCE
A. With respect to
any technology arising from assistance provided by NIST under this award,
the Recipient shall promote the manufacture of products resulting from
that technology within the United States and shall procure parts and materials
from competitive United States suppliers to the extent practical.
B. At any time within
the life of this award should the Recipient cease to have a majority control
or ownership by individuals who are citizens of the United States, the
Recipient shall notify the NIST Grants Officer of that fact, in
writing, within FIFTEEN (15) business days.
C. In accordance
with 15 U.S.C. 278n Sec. (d)(9) and (e), NIST may, within thirty (30)
days after notice to Congress, suspend a company from continued assistance
under this award if NIST determines that the company or a parent company
has failed to satisfy any of the criteria contained in paragraphs a. and
b. of this term, and that it is in the national interest of the United
States to do so.
5. NIST PROJECT
MANAGEMENT TEAM
The NIST Project Management
Team (PMT) includes an ATP Project Manager, a NIST Grants Specialist,
and one or more ATP technical and business specialists. The ATP Project
Manager is responsible for working with the Recipient, including making
recommendations to the NIST Grants Officer throughout the life of the
project to ensure that the project progresses towards the objectives stated
in the proposal in an optimal way. The ATP Project Manager (and other
members of the PMT as appropriate) shall participate in a project start
or kickoff meeting, annual reviews, and a close-out meeting prior to the
expiration of the award. The ATP Project Manager is responsible for:
A. General oversight
and project management functions associated with this cooperative agreement.
B. Arranging kickoff
meetings, annual review meetings, and final closeout meetings.
C. Monitoring the
project to ensure that it is executed in accordance with the proposal
and this award; this includes analyzing the quarterly, annual, and final
reports, and consulting with other members of the PMT to assess progress.
D. Recommending
appropriate action to the NIST Grants Officer if the project is failing
to meet its objectives.
6. SUBSTANTIAL
INVOLVEMENT
NIST has selected
a cooperative agreement as the funding instrument for this project. Accordingly,
the NIST Project Management Team will be substantially involved in the
following areas:
A. Approval of go/no
go decision points at various project stages before subsequent stages
of a project may continue, if specified in the Special Award Conditions;
B. Concurrence with
sole source procurements in excess of $100,000;
C. Approval of key
personnel specified in the proposal (including such positions as Financial
Officer, Administrator, Principal Investigator, and/or Project Manager);
and
D. Approval of changes
in Joint Venture membership.
7. TECHNICAL/BUSINESS/FINANCIAL
REPORTS AND PLANS
The Recipient shall
provide access to information that is required to assess the project’s
progress throughout the project life cycle. In addition to monitoring
the technical work, NIST requires business information pertaining to
the project during the life of the project and for six years after
its end to assess progress towards commercialization, the degree of adoption
of the technology, and the impact of the project on the economy.
A. Technical Reporting:
The Recipient shall
submit technical performance reports in triplicate (one original and two
copies). Two copies shall be submitted to the ATP Project Manager and
the original report to the NIST Grants Officer in the same frequency as
the Financial Status Report (SF-269). Technical performance reports shall
contain information as prescribed in 15 CFR 14.51. (See Attachment
A for an optional structure or format for the technical report.)
B. Business Reporting:
The Recipient shall
submit business reports in accordance with the “Guidelines for Reporting
on Business Progress and Economic Impacts” (see Attachment
B).
C. Financial Reporting:
(1) Actual
or Incurred Costs
- By signing this
award the Recipient agrees to ensure that only actual costs incurred
will be charged to the award and that all costs will be reasonable,
allocable, and allowable in accordance with the applicable Federal Cost
Principles. See 15 CFR 14.27. The Recipient shall also ensure that
all salaries/wages (technical and administrative), fringe benefits,
travel, materials and supplies, equipment, subcontracts, other costs,
and indirect costs proposed and to be incurred under this award are
consistent with costs incurred for like or similar items on all other
Federal and non-Federal projects or cost centers (exclusive of any profits
or fees) of the Recipient (including its Joint Venture Partners when
applicable).
- Where a Recipient’s
normal accounting practice makes use of blended or average labor rates
in lieu of actual salaries, the Recipient must provide the NIST Grants
Officer with a copy of its current, federally audited and federally
approved pricing or rates agreement. The Recipient must, throughout
the project period of the award, maintain contemporaneous records of
the actual labor hours expended on the project, and ensure that the
appropriate labor schedule and category are used.
(2) Cost Share
- Cost share commitments
must be met on an annual basis in accordance with the Recipient’s approved
budget. Any cost sharing must be in accordance with the “cost sharing
or matching” provisions of 15 CFR 14. Costs included as cost share must
be allocable to the project and allowable under the applicable federal
cost principles. Costs incurred as non-Federal cost share are subject
to the same allowability requirements as Federally-funded costs.
- For Joint Ventures,
the Joint Venture (JV) Administrator is responsible for conducting a
review of the financial status reports (SF-269s) for each JV participant
prior to submission of a consolidated financial status report for the
entire JV. This review must ensure that the financial information is
consistent with each participant’s approved budget, including each JV
participant’s required cost sharing, and consistent with Chapter 5,
Examination Procedures, item 4, of the NIST Program-Specific Audit Guidelines
for Advanced Technology Program Cooperative Agreements with Joint Ventures,
dated September 1999. The JV Administrator must resolve any discrepancies
in the financial information prior to submitting the consolidated financial
status report to NIST, and prior to making any withdrawals of funds.
At the time of submission of the financial status report by the JV Administrator
to NIST, the financial status report must reflect that the overall cost
share is being met at the same rate that the Federal share is being
spent.
- Each JV participant
is responsible for meeting its cost-share commitment annually in accordance
with its approved budget throughout the award. No JV participant is
responsible for the cost-share commitment of any other JV participant.
However, with the agreement of the JV Participants, along with notification
to the NIST Grants Officer, a JV Participant that has exceeded its cost
share commitment may allow its excess cost share to be used to make
up for the cost share deficit of another JV participant, so that the
overall annual JV cost share is met.
- The disallowance
of any costs as a result of an audit could result in a JV participant’s
failure to provide its required cost share commitment. If audit disallowances
result in a JV participant’s failure to meet its annual cost share,
that JV participant shall reimburse the Federal government for any account
receivable resulting from such disallowance, regardless of the Federal
funding amount, if any, that JV participant may have received under
the award.
(3) Submission of
Financial Reports
For ATP Recipients,
Article A.01 of the Department of Commerce (DoC) Financial Assistance
Standard Terms and Conditions dated October 2001 is revised as follows:
- The Recipient
shall submit a “Financial Status Report” (SF-269) on a calendar quarter
basis for the periods ending March 31, June 30, September 30, and December
31, or any portion thereof, unless otherwise specified in a special
award condition. Reports are due no later than 30 days following the
end of each reporting period. A final SF-269 shall be submitted within
90 days after the expiration date of the award.
- All financial
reports shall be submitted in triplicate (one original and two copies)
to the NIST Grants Office.
8. KICK-OFF MEETINGS,
ANNUAL REVIEWS,
CLOSEOUT
MEETINGS, AND SPECIAL STUDIES
The Recipient and
each Joint Venture participant, if applicable, shall participate in kick-off,
annual review, and closeout meetings. The ATP Project manager will provide
the Recipient with meeting instructions in advance of these meetings.
Consistent with the
requirements of the Government Performance and Results Act of 1993, Recipients
may be asked from time to time to participate in special economic studies
or case studies. All requests for participation in such studies will
be in accordance with the Paperwork Reduction Act (PRA) requirements as
implemented by 5 CFR 1320, and will display a PRA approval number.
9. PRIOR NOTIFICATION
AND APPROVAL REQUIREMENTS
The prior approval
requirements in 15 CFR 14.25, paragraph (e) MAY NOT be waived automatically
by the Recipient and require written approval from the NIST Grants Officer.
A. In addition to
the requirements specified in 15 CFR 14.25, Recipients must obtain prior
written approval from the NIST Grants Officer for the following changes:
(1) Notwithstanding
the requirements of Article A.04.b of the DoC Financial Assistance Standard
Terms and Conditions, Recipients must obtain advance, written approval
from the NIST Grants Officer for budget changes involving the transfer
of funds among direct cost categories or between Joint Venture members
if the amount of the transfer exceeds 10% of the approved total annual
budget for any single Recipient or Joint Venture participant for an approved
project year. Recipients are not authorized to create new budget categories
without prior approval. Recipients are not authorized at any time to
transfer amounts budgeted for direct costs to the indirect cost line item.
(2) Any
substitution, or addition, or deletion of participants to a joint venture
must be approved by the NIST Grants Officer.
Proposed new Joint
Venture Participants may not enter into any obligation, incur any expenditure,
or engage in any activity that involves a commitment of Federal funds
under this Agreement until the NIST Grants Officer has provided formal
acceptance of the new Joint Venture and has formally approved the new
or revised Joint Venture Agreement.
- In the event of
a proposed change to a Joint Venture, all newly-proposed Joint Venture
participants shall submit the following documents through the Joint
Venture Administrator to the NIST Grants Officer for review and approval:
CD-511, SF-424B, NIST-1263 (pp 1-5), budget data, CD-346 (s), SF-LLL
(s).
- New participants
must also satisfy the requirements of Article A.05.c of the DoC Financial
Assistance Standard Terms and Conditions.
- The Joint Venture
Administrator must provide to the NIST Grants Officer a draft version
of the revised Joint Venture Agreement for review, as well as a copy
of the final Agreement executed by all Joint Venture Participants.
The Joint Venture Administrator must also provide documentation of the
Recipient’s notification to the Department of Justice and the Federal
Trade Commission of the changes, additions and/or deletion of participants.
B.
Recipients must provide written notification to the NIST Grants
Officer, with a copy to the ATP Project Manager, within 30 calendar
days of the occurrence of any of the changes below. If any of the
changes occurred after the submission of an applicant’s proposal and prior
to receipt of the award, written notification must be made within 30 calendar
days of receipt of the award.
(1) Any revision
to ownership and/or dissolution of a Recipient company (including
Joint Venture partners, if a JV). Revisions to ownership include, but
are not limited to, mergers, acquisitions, a change resulting in majority
ownership by non-U.S. citizen(s), etc. In each instance, the notification
must include the following information:
- Date of final acquisition,
merger, or change resulting in majority ownership by non-U.S. citizen(s),
etc.
- Name and address
of any new foreign parent(s) and percentage of ownership for each.
- If the change results
in majority ownership by non-U.S. citizen(s), identify the owner(s)
and percentage of ownership for each.
- Confirm whether
the Recipient intends to complete its assigned tasks with the same commitment
and at the same location.
- Describe how this
change in ownership will affect the project’s projected benefits the
United States.
(2) Withdrawal
of any Joint Venture participant. The notification must include the
following information:
- Date of the Joint
Venture participant’s withdrawal.
- Circumstances of
the departure.
- Plans, if any,
for replacing the departing JV participant.
- An explanation
of how this change will affect the project.
When only two for-profit
companies comprise a Joint Venture and one of them ceases participation,
the project may be suspended until the NIST Grants Officer has provided
formal acceptance of the new Joint Venture and has formally approved the
new or revised Joint Venture Agreement. During the suspension period,
the Recipient may not continue to enter into obligations, incur expenditures,
or engage in any activity that involves a commitment of Federal funds
under this Agreement.
10. UNALLOWABLE
PROJECT COSTS
Those costs that are
designated as being unallowable in Chapter 1, Section D.2 of the February
2004 ATP Proposal Preparation Kit
will be unallowable under this award.
11. PROGRAM INCOME
A. Program income
earned during the project period shall be retained by the recipient and
shall be used to finance any non-Federal share of the project.
B. Recipients shall
have no obligation to the Federal Government regarding program income
earned after the end of the project period.
C. Costs incidental
to the generation of program, income may be deducted from gross income
to determine program income, provided these costs have not been charged
to the award
D. Proceeds from the
sale of property shall be handled in accordance with the requirements
of Property Standards in 15 CFR 14.30 through 14.37.
E. Recipients shall
have no obligation to the Federal Government with respect to program income
earned from license fees and royalties for copyrighted material, patents,
patent applications, trademarks, and inventions produced under an award.
12. EQUIPMENT
Upon expiration of
the project period, the Recipient shall submit to the NIST Grants Officer
an inventory of equipment acquired with Federal funds, as prescribed in
15 CFR 14.34, along with an “Equipment Disposition Certification.” The
certification provides the Recipient an opportunity to request authorization
to continue to utilize the equipment for the purposes of the commercialization
initiative. If approved by the NIST Grants Officer, the Recipient shall
report to NIST every two years the condition of the equipment as long
as the current market value is more than $5,000.
For Joint Venture
awards, title to any equipment purchased under the award, including intangible
property that meets the definition of equipment in 15 CFR 14.2(n), that
may be in the name of a departing participant, and that is vital to the
project, shall be transferred to another Joint Venture participant as
instructed by the Joint Venture Administrator for continued use on the
project. The Joint Venture shall make compensation to the departing participant
for its contribution to the purchase of the equipment by applying its
percentage of the cost of the equipment to the current fair market value
of the equipment. Should the equipment no longer be needed on the project,
the departing participant shall request disposition instructions in accordance
with 15 CFR 14.34.
13. NON-COMPLIANCE
WITH STATUTORY PURPOSE
If NIST determines
that the statutory purposes of research and development under 15 USC 278n
can no longer be served (e.g., the project is no longer high-risk), the
Recipient shall be deemed in material non-compliance with award requirements.
As a result, NIST may terminate the award pursuant to 15 CFR 14.61.
14. REFUNDS
This special award
condition applies to all payments that the Recipient receives outside
of the ASAP system. The Recipient shall promptly submit all refund checks
(including interest earned on advances) to the address identified below
and notify the Grants Office upon submission. Each check must identify
on its face the NIST award number, and no more than a two-word description
to identify the reason for the refund. Submit to:
National
Institute of Standards and Technology
Accounts Receivable
100 Bureau Drive, Stop 3751
Bldg. 101, Room A809
Gaithersburg, MD 20899-3751
15. AUDITS
Project audits (of
Federal and non-Federal funds) are required for all ATP Recipients except
when those Recipients are required to comply with the Single Audit Act
of 1996 and the audit requirements of Office of Management and Budget
(OMB) Circular A-133, “Audits of States, Local Governments and Non-Profit
Organizations.” Subcontractors/subawardees, including universities, who
receive total funding under an ATP project totaling more than $500,000
each are also subject to the audit requirement. A subcontractor/subawardee
is defined as an organization which receives a portion of the financial
assistance from the recipient/awardee and assists the ATP recipient/awardee
in meeting the project goals, but does not include the procurement of
goods and services.
A.
ALL ATP Recipients, including each Joint Venture participant (if a Joint
Venture project), are required to provide sufficient funds as direct costs
(unless included as indirect) in the project’s multi-year budget to have
project audits performed according to the Schedule shown in b. below.
B.
All Recipients shall schedule audits as follows:
(1)
For awards less than 24 months, an audit is required within 90 days from
the project expiration date.
(2)
For 2-, 3-, or 4-year awards, an audit is required within 90 days after
the end of the first year and within 90 days from the project expiration
date.
(3)
For 5-year awards, an audit is required within 90 days after the end of
the first year and third year, and within 90 days from the project expiration
date.
C.
Audits of all Recipients shall be conducted in accordance with Government
Auditing Standards (GAS), issued by the Comptroller General of the
United States (the Yellow Book). If an ATP Recipient is required to have
an audit performed in accordance with OMB Circular A-133, “Audits of States,
Local Government, and Non-Profit Organizations”, the annual OMB Circular
A-133 audit is deemed to meet the ATP audit requirement. If an ATP Recipient
does not have an annual OMB Circular A-133 audit performed, the Recipient
should follow the following project audit requirements:
(1)
Audits for single company Recipients shall be conducted using the NIST
Program-Specific Audit Guidelines for Advanced Technology Program (ATP)
Cooperative Agreements with Single Companies.
(2)
Audits for joint venture Recipients shall be conducted using the NIST
Program-Specific Audit Guidelines
for Advanced Technology Program (ATP) Cooperative Agreements with Joint
Ventures.
The program specific
guidelines may be useful in identifying the allowability of specific cost
elements and other programmatic compliance requirements for those recipients
required to have an OMB Circular A-133 audit.
D. The Recipient
shall submit two (2) copies of each audit report, one to the address
shown in Article D.01.b. of the DoC Financial Assistance Standard Terms
and Conditions dated October 2001, and one copy to the NIST Grants Officer.
16. CLOSEOUT OF
COOPERATIVE AGREEMENT
A. In accordance
with the guidelines established in 15 CFR 14.71 and Term A.06 of the DoC
Financial Assistance Standard Terms and Conditions dated October 2001,
the NIST Grants Officer will allow only those costs that are strictly
associated with closeout activities during the ninety (90) day period
following the award expiration date. Closeout activities are normally
limited to preparation of the final reports (technical, business, financial,
patent/invention, equipment inventory) and closeout audit).
B. The final technical
progress (closeout) meeting with NIST ATP is generally not considered
a closeout-related activity. This end-of-project meeting should be conducted
prior to the expiration date of the award. The Recipient must provide
adequate funds in the project budget to ensure participation by all appropriate
members in the closeout meeting. Costs associated with any closeout meeting
held after the expiration date of the award may not be charged to the
project unless specific, prior written approval is obtained from the NIST
Grants Officer.
17. USE OF NAME
OR ENDORSEMENTS
A. The Recipient
and/or its subrecipients or subcontractors shall not, without the prior
approval of NIST, use the name of NIST or the Department of Commerce on
any product or service which is directly or indirectly related to either
this award or any patent license or assignment agreement which relates
to this award.
B. By entering into
this award, NIST does not directly or indirectly endorse any product or
service provided or to be provided by the Recipient, its successors, assignees,
or licensees. The Recipient and its subrecipients and subcontractors,
shall not in any way imply that this award is an endorsement of any such
product or service.
18. PUBLICATION
GUIDELINES
In any publications,
the Recipient shall acknowledge support of the technology development
by NIST. Normally this is done by a footnote reading, "This work
was performed under the support of the U.S. Department of Commerce, National
Institute of Standards and Technology, Advanced Technology Program, Cooperative
Agreement Number 70NANBXHXXXX," or words to that effect.
19. PROTECTION
OF HUMAN SUBJECTS
Research involving
human subjects is not permitted under an ATP award unless expressly authorized
by a Special Award Condition or otherwise in writing by the NIST Grants
Officer.
The Federal Policy
for the Protection of Human Subjects (The Common Rule), codified by the
Department of Commerce at 15 CFR Part 27, requires Recipients to maintain
appropriate policies and procedures for the protection of human subjects
in research. The Common Rule defines a “human subject” as a living individual
about whom an investigator conducting research obtains 1) data through
intervention or interaction with the individual, or 2) identifiable private
information. The term “research” means a systematic investigation, including
research development, testing and evaluation, designed to develop or contribute
to generalizable knowledge. The Common Rule also sets forth the categories
of research that may be considered exempt from this policy.
In the event it becomes
evident that a human subject may be involved in this project, the Recipient
shall submit appropriate documentation to the ATP Project Manager for
NIST institutional review and approval. This documentation may include:
A.
Documentation establishing review and approval of the project by a qualified
Institutional Review Board (IRB). [NOTE: Recipients must provide documentation
of continuing IRB approval by the cognizant IRB at appropriate intervals
as designated by the IRB, but not less than annually];
B.
Documentation to support an exemption for the project from The Common
Rule [NOTE: this option is not available for activities that fall under
45 CFR Part 46 Subpart B or C];
C.
Documentation to support a request for a deferral of review for research
involving human subjects beginning after year 1 of the project;
D.
Documentation of IRB approval of any modification to an IRB-approved existing
protocol or informed consent form must be submitted to the ATP Project
Manager for NIST Institutional review and approval.
No work involving
human subjects may be undertaken, conducted, or costs incurred and/or
charged to the project for this work, until the NIST Grants Officer approves
the required appropriate documentation in writing.
20. CARE AND USE
OF VERTEBRATE ANIMALS
Research involving
live vertebrate animals is not permitted under an ATP award unless expressly
authorized by a Special Award Condition or otherwise in writing by the
NIST Grants Officer.
The Department of
Commerce requires Recipients of financial assistance awards to comply,
as applicable, with the Animal Welfare Act as amended, and implementing
regulations found at (7 USC 2131-2157, 9 CFR parts 1, 2, and 3).
In the event it becomes
evident that live vertebrate animals may be involved in this project,
the Recipient shall submit appropriate documentation to the ATP Project
Manager for NIST institutional review and approval. Additional information
and requirements are set forth in the booklet entitled, “Guidelines and
Documentation Requirements for Research Involving Human and Animal Subjects,”
available on the ATP website at
http://www.atp.nist.gov/atp/kit-04/has_guide/contents.htm.
ATP accepts documentation
identifying the institution’s required credentials for performing animal
studies (e.g OLAW animal welfare assurance number, USDA certificate number,
or AAALAC accreditation) in lieu of an actual copy of applicable institutional
credentials ((e.g OLAW animal welfare assurance, USDA certificate, or
AAALAC letter of accreditation). Since verification that assurances are
valid and current can be made through official websites, generally only
documentation of the applicable credential’s identifier linked to the
institution performing the animal studies is needed. NIST reserves the
right to request a copy of the applicable institutional credentials (e.g
OLAW animal welfare assurance designation, USDA certificate, or AAALAC
letter of accreditation), as warranted.
No work involving
live vertebrate animals may be undertaken, conducted, and/or costs incurred
and/or charged to the project for this work, until the NIST Grants Officer
approves the required appropriate documentation in writing.
21. BUREAU OF
INDUSTRY AND SECURITY (BIS) CLEARANCE
A. The Recipient
agrees to adhere to the U.S. Export Administration laws and regulations
and shall not export or re-export, directly or indirectly, any technical
data created with Government funding under this award to any country for
which the United States Government or any agency thereof, at the time
of such export or re-export, requires an export license or other Governmental
approval without first obtaining such licenses or approval and the written
clearance of the NIST Grants Officer.
B. The Bureau of
Industry and Security (BIS) shall conduct an annual review for any relevant
information about the Recipient's compliance with U.S. export laws. NIST
reserves the right to take appropriate action in accordance with 15 CFR
14.62 and Article L.01 of the Department of Commerce Financial Assistance
Standard Terms and Conditions, if the BIS reports significant adverse
information about the Recipient to the NIST Grants Officer.
22. NORTH AMERICAN
FREE TRADE AGREEMENT PATENT NOTIFICATION PROCEDURES
Pursuant to Executive
Order 12889, the DoC is required to notify the owner of any valid patent
covering technology whenever the DoC or its financial assistance Recipient,
without making a patent search, knows (or has demonstrable reasonable
grounds to know) that technology covered by a valid United States patent
has been or will be used without a license from the owner. To ensure
proper notification, if the Recipient uses or has used patented technology
under this award without a license or permission from the owner, the Recipient
must notify the DoC Patent Counsel at the following address, with a copy
to the NIST Grants Officer:
Department
of Commerce
Office of Chief
Counsel for Technology
Patent Counsel
14th Street
and Constitution Avenue, NW
Room H-4835
Washington,
D.C. 20230
The notification shall
include the following information:
- The award number
- The name of the
DoC awarding agency
- A copy of the
patent
- A description of
how the patented technology was used
- The name of the
Recipient contact, including an address and telephone number
23. LIABILITY
A. Property
The U.S. Government
shall not be responsible for damage to or resulting from any property
provided to the Recipient, and/or its subrecipients and/or subcontractors,
and/or acquired by the Recipient, and/or its subrecipients and/or subcontractors,
pursuant to this award.
B. No Warranty
NIST makes no express
or implied warranty as to any matter whatsoever, including the conditions
of the research or any invention or product, whether tangible or intangible,
made, or developed under this award, or the ownership, merchantability,
or fitness for a particular purpose of the research or any invention or
product made or developed under this award.
C. Disclaimer
(1)
The United States expressly disclaims any and all responsibility to the
Recipients or third persons for the actions of the Recipient or third
persons resulting in death, bodily injury, property damage, or any other
losses resulting in any way from the performance of this award or any
subaward or subcontract under this award.
(2)
The acceptance of this award by the Recipient does not in any way constitute
an agency relationship between the United States and the Recipient.
D. Indemnification
(1)
The Recipient, and/or its subrecipients and/or subcontractors, agree to
indemnify and hold harmless the U.S. Government for all liabilities, demands,
damages, expenses and losses arising out of the use by the Recipient,
its subrecipients, subcontractors, and/or any party acting on their behalf
or under their authorization, of products made by the use of technical
developments arising under this agreement. This provision shall survive
termination of this award.
(2)
The Recipient, and/or its subrecipients and/or subcontractors, agree to
indemnify and hold harmless the U.S. Government for any loss, claim, damage,
or liability of any kind involving the Recipient’s, subrecipient’s, and/or
subcontractor’s employees arising in connection with this award.
E. Force Majeure
Neither party shall
be liable for any unforeseeable event beyond its reasonable control not
caused by the fault or negligence of such party, which causes such party
to be unable to perform its obligations under this award (and which it
has been unable to overcome by the exercise of due diligence), including,
but not limited to: flood, drought, earthquake, storm, fire, pestilence,
lightning and other natural catastrophes, epidemic, war, riot, civil disturbance
or disobedience, strikes, labor dispute, or failure, threat of failure,
or sabotage of the Recipient or subcontractor facilities, or any order
or injunction made by a court or public agency. In the event of the occurrence
of such a force majeure event, the party unable to perform shall
promptly notify the other party. It shall further use its best efforts
to resume performance as quickly as possible and shall suspend performance
only for such period of time as is necessary as a result of the force
majeure event.
24. INFORMAL COLLABORATORS
All informal collaborators
in ATP awards are subject to ATP intellectual property regulations as
specified in 15 CFR 295.8. Informal collaborator means any individual
or organization, which consults, cooperates with, or participates in the
performance of this award, and is not included in the approved award budget.
25. INTELLECTUAL
PROPERTY
A. Rights in
Data
(1) The
Government shall have certain rights to use data first produced in the
performance of the award, whether or not the data is copyrighted. The
Recipient may establish claim to copyright subsisting in any data first
produced in the performance of the award. When claim is made to copyright,
the Recipient shall affix the applicable copyright notice of 17 U.S.C.
Sec. 401 or 402 and acknowledgment of Government sponsorship to the data
when and if the data are delivered to the Government, are published, or
are deposited for registration as a published work in the U.S. Copyright
Office. The Recipient shall grant to the Government, and others acting
on its behalf, a paid up, nonexclusive, irrevocable, worldwide license
for all such data to reproduce, prepare derivative works, perform and
display publicly, and for data other than computer software to distribute
to the public by or on behalf of the Government.
(2) The
licenses granted to the Government under this Term shall not be considered
as a waiver of the nondisclosure requirements of 15 U.S.C. Section 278n(d)6:
"Intellectual property owned or developed by any business receiving
funding may not be disclosed by any officer or employee of the Federal
Government except in accordance with a written agreement between the owner
or developer and the Program."
B. Patent Rights
(1) Definitions
(a) “Company"
means a for-profit organization, including sole proprietors, partnerships
or corporations.
(b) "Invention"
means any invention or discovery which is or may be patentable or otherwise
protectable under Title 35 of the United States Code.
(c) “Made” means,
when used in relation to any Invention, the conception or first actual
reduction to practice of such invention.
(d) "Practical
Application" means to manufacture in the case of a composition or
product, to practice in the case of a process or method, or to operate
in the case of a machine or system; and, in each case, under such conditions
as to establish that the invention is being utilized and that its benefits
are, to the extent permitted by law or government regulations, available
to the public on reasonable terms.
(e) "Subject
Invention" means any invention of the Recipient conceived or first
actually reduced to practice in the performance of work under this award.
(2) Ownership of
Inventions
Pursuant to the statute
that establishes the ATP (15 U.S.C. 278n(d)(11)), this paragraph takes
precedence over 15 CFR 14.36 and DoC Financial Assistance Standard Terms
and Conditions, dated October 2001, article L.04. The Recipient or, if
appropriate, its subrecipients, contractor(s) and/or subcontractor(s),
shall have the entire right, title, and interest throughout the world
to each Subject Invention according to the provisions of this clause,
provided that this party is a company or companies organized in the United
States. Joint ventures shall provide to NIST a copy of their written
agreement, which defines the disposition of ownership rights among the
members of the joint venture, and their contractor and/or subcontractors
as appropriate, in accordance with the second sentence of this paragraph.
However, the United States hereby reserves a nonexclusive, nontransferable,
irrevocable paid-up license, to have practiced for or on behalf of the
United States, any such invention. Title to any such invention shall
not be transferred or passed, except to a company organized in the United
States, until the expiration of the first patent obtained in connection
with such invention.
(3) Invention Disclosure,
United States License and Filing of Patent Application by Recipient
(a)
The Recipient shall disclose each subject invention to NIST within
two months after the inventor discloses it in writing to Recipient
personnel responsible for patent matters. The disclosure to NIST shall
be in the form of a written report and shall identify the award under
which the invention was made and the inventor(s). It shall, at a minimum,
contain the following information:
- the title of
the invention;
- the names of all
inventors;
- the name and address
of the assignee (if any);
- an acknowledgement
that the United States has rights in the subject invention (i.e., the
Governmental Use License);
- the filing date
of the present invention;
- an abstract of
the disclosure;
- a description
or summary of the present invention;
- the background
of the present invention or the prior art;
- a description
of the preferred embodiments
- what matter is
claimed
One original and two
copies of all patent reports shall be submitted to:
NIST
Grants and Agreements
Management Division
100 Bureau Drive,
MAIL STOP 3580
Building 411,
Room A143
Marked FOR:
Agreement Number ______________
Gaithersburg,
MD 20899-3580
Each report shall
also include the use of the invention and whether a manuscript describing
the invention has been submitted for publication and, if so, whether it
has been accepted for publication at the time of disclosure. In addition,
after disclosure to NIST, the Recipient will promptly notify NIST of acceptance
of any manuscript describing the invention for publication or of any sale
or public use planned by the Recipient.
(b) The Recipient
shall notify NIST within two years of disclosure to NIST whether
or not the Recipient intends to file a patent application on any subject
invention.
If a patent is issued,
the Recipient(s) must submit the following to the Grants Office:
- The award number
under which the invention was made;
- The serial number
of the patent issued;
- The date of issuance;
- A copy of the disclosure
as issued (including the drawings) and;
- The name(s), address,
and telephone number(s) of an assignee.
In a JV award, the
administrator must submit the patent information to NIST for all participants.
In order to prevent disclosure of information to the general public under
the Freedom of Information Act (FOIA) or any other statute, each page
of each patent report should be marked, “CONFIDENTIAL/PROPRIETARY.”
(c) Requests
for extension of the time for disclosure, election, and filing under paragraphs
24.b.(3)(a) and (b) of this Term may be permitted at the discretion of
NIST.
(4) Recipient Action
to Protect the Government's Interest
(a) The
Recipient agrees to execute or to have executed and promptly deliver to
NIST all instruments necessary to establish or confirm the rights the
United States Government has throughout the world in those subject inventions
to which the Recipient has filed a patent application in which the United
States has reserved a non-exclusive license.
(b) The
Recipient shall require, by written agreement, its employees, other than
clerical and nontechnical employees, to disclose promptly in writing to
personnel identified as responsible for the administration of patent matters
and in a format suggested by the Recipient, each subject invention made
under the award in order that the Recipient can comply with the disclosure
provisions of paragraph b.3. of this Term, and to execute all papers necessary
to file patent applications on subject inventions and to establish the
Government's rights in the subject inventions. This disclosure format
should require, as a minimum, the information required by b.3.(a) of this
Term. The Recipient shall instruct such employees through employee agreements
or other suitable education programs on the importance of reporting inventions
in sufficient time to permit the filing of patent applications prior to
United States or foreign statutory bars.
(c) The
Recipient shall promptly notify NIST of any decisions not to continue
the prosecution of a patent application, the payment of maintenance fees,
or the defense in a reexamination or opposition proceeding on a patent
in any country.
(d) The
Recipient agrees to include, within the specification of any United States
patent application and any patent issuing thereon covering a subject invention,
the following statements:
This invention
was made with United States Government support under (identify the cooperative
agreement number) awarded by the National Institute of Standards and Technology
(NIST).
The United States
Government has certain rights in the invention.
(5) Subawards and
Subcontracts
The Recipient shall
include in all subawards and subcontracts, regardless of tier,
for experimental, developmental, or research work, a patent rights clause,
as appropriately modified, comparable to this term. However, pursuant
to the statute establishing the ATP (15 U.S.C. 278n(d)(11)), if the subrecipient
or subcontractor is not a company organized in the United States, the
patent rights clause shall provide that title to each subject invention
made by the subrecipient or subcontractor shall vest with a company or
companies incorporated in the United States.
(6) Reporting
on Utilization of Subject Inventions
The Recipient agrees
to submit on request, no more frequently than annually, periodic reports
on the utilization of a subject invention or on efforts at obtaining such
utilization that are being made by the Recipient or its licensees or assignees.
Such reports shall include information regarding the status of development,
date of first commercial sale or use, gross royalties received by the
Recipient, and such other data and information as NIST may reasonably
specify. The Recipient also agrees to provide additional reports as may
be requested by NIST in connection with any march-in proceeding undertaken
by NIST in accordance with paragraph b.8. of this Term. Such information
shall be treated by NIST as commercial and financial information and thus
as privileged and confidential and not subject to disclosure under section
552 of Title 5 of the United States Code.
(7) Preference
for United States Industry
Notwithstanding any
other provision of this Term, the Recipient agrees that neither it nor
any assignee will grant to any person the exclusive right to use or sell
any subject inventions in the United States unless such person agrees
that any products embodying the inventions will be manufactured substantially
in the United States. However, in individual cases, the requirement for
such an agreement may be waived by NIST upon a showing by the Recipient
or its assignee that reasonable but unsuccessful efforts have been made
to grant licenses on similar terms to potential licensees that would be
likely to manufacture substantially in the United States or that, under
the circumstances, domestic manufacture is not commercially feasible.
(8) March-in Rights
The Recipient agrees
that, with respect to any subject invention in which it has acquired title,
NIST has the right, in accordance with procedures in 37 CFR 401.6 and
any supplemental regulations of NIST, to require the Recipient, an assignee,
or an exclusive licensee of a subject invention to grant a nonexclusive,
partially exclusive, or exclusive license in any field of use to a responsible
applicant or applicants, upon terms that are reasonable under the circumstances.
If the Recipient, assignee, or exclusive licensee refuses such a request,
NIST has the right to grant such a license itself if NIST determines that:
(a) Such
action is necessary because the Recipient or assignee has not taken, or
is not expected to take within a reasonable time, effective steps to achieve
practical application of the subject invention in such field of use;
(b) Such
action is necessary to alleviate health or safety needs which are not
reasonably satisfied by the Recipient, assignee, or licensees;
(c) Such
action is necessary to meet requirements for public use specified by Federal
regulations and such requirements are not reasonably satisfied by the
Recipient, assignee, or licensees; or
(d)
Such action is necessary because the agreement required by paragraph b.7.
of this Term has not been obtained or waived or because a licensee of
the exclusive right to use or sell any subject invention in the United
States is in breach of the agreement required by paragraph b.7 of this
Term.
(9) Conflicts
Between ATP Intellectual Property Provisions and Non-U.S. Country Intellectual
Property Provisions
The intellectual property
provisions in the ATP statute, rule, and General Terms and Conditions
require that any intellectual property arising from an ATP-funded project
shall vest with a for-profit company organized in the United States. If
the Recipient's proposal includes work approved by the Grants Officer
to be performed in a non-U.S. country, by accepting this award, the Recipient
certifies that no legal requirement exists in that country that conflicts
with the ATP intellectual property requirements, including the U.S. government
license provisions.
Date created:
August 2004
Last updated:
September 16, 2004
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