WPC 2a BNcZTimes Roman#|xb`o\  PCXP"m^2CRddCCCdq2C28dddddddddd88qqqYzoCNzoozzC8C^dCYdYdYCdd88d8ddddCN8ddddY`(`lC2CC!CCCCCCCCCCd8YYYYYYzYzYzYzYC8C8C8C8ddddddddddYdddddodYYYYYYYdzYzYzYzYddddddddC8C8C8C8Ndz8z8z8z8z8ddddddCCCoNoNoNoNz8z8z8dddddddzYzYzYdz8dCoNz8dddddNF2[dCYddddd7>d<d<$YYdCCddooCYmm Page 9-650.12 Waivers and Approvals. 9>amm Page 9  , (a) Requests for extension of time to disclose to the NSF  , Patent Assistant, make an election to retain title to, or file a patent on a subject invention will be granted by the NSF Patent Assistant unless he or she determines that such an extension would either imperil the securing of valid patent protection or unacceptably restrict the publication of the results of the NSF- supported research.  ,   ,, (b) Approval of assignments by nonprofit organizations  , (required by subparagraph k(1) of the Patent Rights clause in Sec.650.4(a)) will be given by the Patent Assistant unless he orh)P-0*0* she determines that the interests of the United States Government will be adversely affected by such assignment.  ,   ,, (c) Approval of long-term exclusive licensing of NSF-  , assisted inventions by nonprofit organizations (restricted by earlier versions of the NSF Patents Rights clause and by pre- Bayh-Dole Institutional Patent Agreements and waiver conditions) will be given by the Patent Assistant unless he or she determines that the interests of the United States Government will be adversely affected by such waiver.  ,   ,, (d) The preference for United States industry imposed by  , paragraph (i) of the Patent Rights clause in Sec.650.4(a) may be waived by the NSF Patent Assistant as provided in that paragraph.  ,   ,, (e) Special restrictions on or limitation of the right of  , an awardee to retain title to subject inventions imposed under section 650.5 of this regulation may be waived by the Grants or Contracting Officer whenever he or she determines, after consul tation with the cognizant Program Manager, that the reasons for imposing the restrictions or limitations do not require their application to a particular invention.  ,   ,, (f) Requests for approvals and waiver under this section  , should be addressed to the NSF Patent Assistant as provided in paragraph (l) of the Patent Rights clause in Sec.650.4(a). Requests under paragraph (a) of this section for extensions of time to disclose, elect, or file may be made by telephone or electronic mail as well as in writing. A written request for extension of time to disclose, elect, or file can be assumed to have been approved unless the Patent Assistant replies negatively within ten business days of the date such request was mailed, telecopied, or otherwise dispatched. Requests for approvals or waivers under paragraphs (b), (c), (d), and (e) of this section must be in writing and should explain why an approval or waiver is justified under the stated criteria. The requester will be given a written explanation of the reasons for denial of a request covered by this section.   9amm Page 9-650.13 Exercise of march-in rights. 9mm Page 9  , (a) The procedures established by this section supplement  , those prescribed by section 401.6 of the implementing regulation for the Bayh-Dole Act (37 CFR 401.6) and apply to all march-in rights held by NSF including those resulting from funding agreements not covered by the Bayh-Dole Act.     , (b) Petitions requesting that the NSF exercise a march-in  , right should be addressed to the NSF Patent Assistant. Such petitions should:       (1) Identify the patent or patent application involved   and the relevant fields of use of the invention;h)P-0*0*Ԍ  Й   (2) State the grounds for the proposed march-in;       (3) Supply evidence that one or more of the four   conditions creating a march-in right (lack of practical appli cation, unsatisfied health or safety needs, unmet requirements for public use, or failure to prefer United States industry) is present; and       (4) Explain what action by the Foundation is necessary   to correct that condition.     ,  (c) If evidence received from a petitioner or from the  , Foundation's administration of the Patent Rights clause indicates that one or more of the four conditions creating a march-in right might exist, the NSF Patent Assistant will informally review the matter as provided in section 401.6(b) of the implementing regu lation. If that informal review indicates that one or more of the four conditions creating a march-in right probably exists, the Patent Assistant will initiate a formal march-in proceeding by issuing a written notice to the patent holder. That notice will provide all the information required by section 401.6(c) of the implementing regulation. The patent holder may submit infor mation and argument in opposition to the proposed march-in in person, in writing, or through a representative.     , (d) If the NSF Patent Assistant determines that a genuine  , dispute over material facts exists, he or she will identify the disputed facts and notify the NSF General Counsel. The General Counsel will create a cross-directorate fact-finding panel, which will establish its own fact-finding procedures within the requirements of section 401.6(e) of the implementing regulation based on the dimensions of the particular dispute. The Patent Assistant will serve as secretary to the panel, but will not take part in its deliberations. Written findings of facts will be submitted to the General Counsel, sent by certified mail to the patent holder, and made available to all other interested parties.     ,  (e) The NSF General Counsel will determine whether and how  , the Foundation should exercise a march-in right as provided in section 401.6(g) of the implementing regulation.   9<mm Page 9-650.14 Request for conveyance of title to NSF. 9<pmm Page 9  , (a) The procedures established by this section apply to the  , exercise of the Foundation's right under paragraph (d) of the Patent Rights clause in Sec.650.4(a) to request conveyance of title to a subject invention if certain conditions exist.     , (b) The NSF Patent Assistant may request the recipient of  , an NSF award to convey to the Foundation or a designee title in one or more countries to any invention to which the awardee has elected not to retain title. The NSF Patent Assistant may request immediate conveyance of title to a subject invention if theh)P-0*0* awardee fails (1) to submit a timely invention disclosure, (2) to make a timely election to retain patent rights, or (3) to file a timely patent application; but only if he or she deter mines that such action is required to preserve patent rights.     , (c) The NSF Patent Assistant will informally review any  , apparent failure by an awardee to comply with the requirements of paragraph (c) of the Patent Rights clause in Sec.650.4(a). The interested institution, the inventor, the patent holder, and any other interested party will be given an opportunity to explain why a particular invention was not disclosed, why an election was not made, or why a patent application was not filed. If the Patent Assistant determines that a genuine dispute over material facts exists, a cross-directorate fact-finding panel will be appointed by the General Counsel. The panel will establish its own fact-finding procedures based on the dimensions of the particular dispute. Written findings of facts will be submitted to the General Counsel, sent by certified mail to the patent holder, and made available to all other interested parties.     , (d) The NSF General Counsel will determine whether the  , Foundation should request conveyance of title or if it should retain title obtained under Sec.650.14(b).   9pmm Page 9-650.15 Appeals. 9κmm Page 9  , (a) All actions by the NSF Patent Assistant under Sec.650.8  , denying an inventor's request to retain rights to a subject invention, under Sec.650.12 denying a request for waiver, or under Sec.650.14(d) denying the existence of a material dispute may be appealed to the Director of the NSF Division of Grants and Contracts by an affected party within thirty days. A request under Sec.650.14(b) to immediately convey title to the Foundation may be appealed to the DGC Director by the title holder within five days.     , (b) All actions by a Grants of Contracts Officer refusing  , to eliminate restrictions on or limitation of the right of an awardee to retain title to subject inventions imposed under section 650.5 of this regulation may be appealed to the Director of the NSF Division of Grants and Contracts by an affected party within thirty days.  ,   ,, (c) A decision by the General Counsel to exercise a march-  , in right or to request conveyance of title may be appealed by the patent holder or any affected licensee to the NSF Deputy Director within thirty days. When a march-in was initiated in response to a petition, the General Counsel's decision not to exercise a march-in right or to exercise it in a manner different from that requested in the petition may be appealed by the petitioner to the NSF Deputy Director within thirty days.     , (d) In reviewing the actions of the NSF Patent Assistant, a  , Grants of Contracts Officer, or the General Counsel, the DGCh)P-0*0* Director or NSF Deputy Director will consider both the factual and legal basis for the action or determination and its consis tency with the policies and objectives of the Foundation and, if applicable, the Bayh-Dole Act (35 U.S.C. 200-212) and implementing regulations at part 401 of title 37 of the Code of Federal Regulations.   9κmm Page 9-650.16 Background rights. 9mm Page 9  , The Foundation will acquire rights to a research performer's  , pre-existing technology only in exceptional circumstances where, due to the nature of the research being supported, the Foundation requires greater control over resulting inventions. The NSF Grants or Contracts Officer, with concurrence of the cognizant Program Manager, will negotiate a background rights provision. If the affected awardee is a small business firm or nonprofit organization, the provision will conform to the requirements of the Bayh-Dole Act (35 U.S.C. 202(f)) as implemented by 37 CFR 401.12).   9Mmm Page 9-650.17 Subcontracts. 9Mgmm Page 9  , As provided in paragraph (g) of the Patent Rights clause in  , Sec.650.4(a), awardees should normally use that clause in all subcontracts. At the request of the awardee or subcontractor or on recommendation from NSF staff, the cognizant Grants or Con tracts Officer may direct the awardee to insert into subcontracts relating to scientific research a special patent provision negotiated under Sec.650.5.   9gmm Page 9-650.18 Delegation of Authority. 9(mm Page 9  , The General Counsel is responsible for implementing this  , regulation and is authorized to make any exceptions to or extensions of the NSF Patent Policy as may be required by particular circumstances. The General Counsel will designate the NSF Patent Assistant and that individual is authorized to carry out the functions assigned by this regulation.   9(mm Page 9-Appendix A to Part 650 -- Optional format for confirmatory license 9mm Page 9 The following format may be used for the confirmatory license to the Government required by subparagraph (f)(5) of the Patent Rights clause in Sec.650.4(a). Any equivalent instrument may also be used. ( LLICENSE TO THE UNITED STATES GOVERNMENT    This instrument confirms to the United States Govern  , ment, as represented by the National Science Foundation, anh)P-0*0* irrevocable, nonexclusive, nontransferable, royalty-free license to practice or have practiced on its behalf through out the world the following subject invention:  ,,   ,  (invention title) (inventor[s] name[s]) (patent application number and filing date) (country, if other than United States) (NSF Disclosure No.).  ,  This subject invention was made with NSF support through:  ,  (grant or contract number)  ,   ,  (grantee or contractor).  ,  Principal rights to this subject invention have been left with the licensor. Signed:   Name:   Title:   Date:   Accepted on behalf of the Government:   NSF Patent Assistant Date: