DOE IP Counsel Intellectual Property Counsel IP Management

DOE IP Counsel Intellectual Property Counsel IP Management & Protection DEAR Clauses Update Pending and proposed changes Technology Transfer Gary Drew, Patent Attorney gary. drew@science. doe. gov , 510 -486 -6703 Rob Burns, Patent Attorney robert. burns@hq. doe. gov, 202 -586 -3445

Overview DOE IP Counsel Ø Largest ever revision to the DEAR Ø Comprehensive review involving stakeholders throughout DOE – AU, GC, IN, MA, NNSA, Office of Science, OTT, Field Offices – Rev. Com Process (2015 -2016) • Rights In Data (DEAR 970. 5227 -2) • Technology Transfer Mission (DEAR 970. 5227 -3) • Made it through comment phase but didn’t get finalized Ø Revolutionary Working Group (RWG) for LBNL M&O Contract Ø DOE Regulatory Reform Working Group changes Ø Consolidated inputs undergoing internal DOE MA review 2

Change Highlights DOE IP Counsel Ø Changes mandated by HR 589 / P. L. 115 -246 and 115 -248 – Technology transfer mission clause includes “early stage and precommercial technology demonstration” as an allowable cost Ø Changes mandated by Bayh-Dole update – No more 60 -day time limit for DOE to request title after learning of a contractor failure to disclose an invention or elect title within the specified times Ø Incorporating the TTRRWG reforms (CRADAs and SPPs) – Master Scope of Work (MSW) and patent indemnity waiver / warranty provisions for SPPs and CRADAs Ø Changing the Conflict of Interest (COI) provisions to require the Contractor to notify the DOE CO when – (d)(8) CO approval package for exclusive employee company license include any SPP/CRADA info – (d)(10) the Contractor evaluator is an inventor of a subject invention or principal of company submitting proposal 3

Change Highlights DOE IP Counsel Ø Patent Clause – Updates list of Exceptional Circumstances – Adds paragraph on “unauthorized access” by third parties to notify DOE Ø Adds clause for Agreements for Commercializing Technology (ACT) Ø Amends DEAR 927. 409 to allow use of FAR 52. 227 -1 (with modifications to the copyright provisions) Ø Copyright modifications to FAR 52. 227 -14, Alternate I – FAR 52. 227 -14 Rights in Data: Modified to allow DOE patent counsel to approve any subcontractor copyright request (not just software) – FAR 52. 227 -17 Special Works: Modified to allow DOE patent counsel to direct subcontractor to assert copyright and transfer to DOE or Lab 4

Office of Science Changes DOE IP Counsel Ø First set approved by Joseph Mc. Brearty (4/2/18) – Technology Transfer Mission (DEAR 970. 5227 -3) – Authorization and Consent (DEAR 970. 5227 -4) – Patent and Copyright Infringement Notice & Assistance (DEAR 970. 5227 -5) – Patent Rights (DEAR 970. 5227 -10) Ø Second set approved by Steven Jones (9/26/18) – Rights In Data (DEAR 970. 5227 -2) Ø Should check if M&O has been updated for Office of Science, other labs will need to consult their CO 5

Rights In Data DOE IP Counsel Ø Definitions added in Rev. Com Ø *Paragraph (b)(2)(iii)– change from “technical articles” to “technical works and works produced by Contractor under DEAR 952. 204 -75” – Lab may assert copyright in works such as reports, media, presentations, communication pieces, videos and other scientific and educational materials where the lab may want control the content of but are not planning on commercially licensing Ø Paragraph (b)(4)—Scientific and technical Information reported to OSTI Ø Paragraph (c)(3)—Government can have Contractor assert copyright and transfer to the Government (similar to FAR 52. 227 -17) Ø *Paragraph (d)(1) – Broadens from scientific and technical “articles” to “works” to include “contributions to chapters of book compilation”, reports, non-architectural drawings , videos, website, workshops, or social media. – “Purpose of scientific research, knowledge and education” added to distinguish from paragraph (e) where © assertion is for “control distribution to advance the goals of TT mission. ” 6

Rights In Data Ø DOE IP Counsel Paragraph (e)(1)(iv)—removed appendix for treaties and reference DOE’s Office of International Affairs for latest list * Ø Paragraph (e)(3)(iv)—reworded language from Rev. Com to change renewing exclusive copyright every five years to a standard when lab abandons commercialization – Extends to “subsequent minor versions (e. g. , minor revisions, patches and bug fixes) having same funding source, same name and substantially the same functionality – May extend to subsequent major versions with approval of Patent Counsel – Grandfathers clause for previously approved copyright will follow the abandon commercializing standard Ø Paragraph (f)—Adds a section on Open Source Software. Modified a bit from Acquisition Letter of 2006 that is in most M&O Contracts now, but similar except: – Industry standard disclaimer can be used – Removed Export Control and Trademark sections since covered elsewhere Ø *Paragraph (g)—Patent Counsel can approve the replacement of FAR 52. 227 -14 with FAR 52. 227 -17 Special Work without CO approval. However, the provision to direct copyright and transfer of FAR will still require DOE CO Ø Makes matching changes to DEAR 970 -5227 -1 Rights in Data-Facilities; the Other Patent clauses DEAR 970 -5227 -11 and -12 7

Technology Transfer Mission DOE IP Counsel Ø Paragraph (a)(3)—adds a paragraph on trademarks and service marks Ø *Paragraph (c)(1)—deletes the requirement for CO approval for raising the budget of Licensing Activity above 0. 5 percent of operating funds. Ø *Paragraph (d)(1) and (n)(5)—changes Conflict of Interest in (d)(1) from “preparing, negotiating, and approving” to “negotiating, approving and performing” (preparation by staff is not included, but the PI performing is now) Ø Paragraph (f)—incorporates U. S. Trade Rep review provisions from Acquisition Letter 2006 8

Technology Transfer Mission DOE IP Counsel Ø *Paragraph (h)(1)—matches the statute 35 USC 202(c)(7) to drop the net amount of royalty collected above 5% of Lab budget from 75% to 15% paid to treasury Ø *Paragraph (l)—allows the Report to Congress for technology transfer plan to allow to be included as part of the Annual Laboratory Plan (i. e. eliminates a duplicate report) Ø Paragraph (n)—lab licensing to consider U. S. Trade Representative information from Acquisition Letter 2006 Ø Paragraph (p)—moves the Ombudsman paragraph from Alternate I to the clause 9

Patent Rights DOE IP Counsel Ø Paragraph (c)(1)—Contractor shall notify DOE of “accepted” manuscript 60 days prior to end of statutory bar. Ø Paragraph (c)(4)—Add a paragraph to allow reporting through NIH-i. Edison portal to report, elect and file inventions Ø Paragraph (c)(6) —publication “approval” to “review” and reference to lab procedures in (f)(5) (Contractor’s Invention Identification Procedures) is enough protection for DOE for rare publication affecting rights in invention DOE might protect Ø Paragraph (h)—instead of reporting commercializing for the thousands of active patents, the Lab responds to the yearly data call for the Department of Commerce that shows the technology transfer activity Ø Paragraph (q)—Classified Inventions. Since several Science Labs do not generate Classified Inventions, moves that paragraph as an Alternate 2 to be included when Labs do generate Classified Inventions (but may move back in NOPR) 10

Other Clauses DOE IP Counsel Ø Authorization & Consent, Notice & Assistance Regarding Patent & Copyright Infringement – changed the $100, 000 threshold to “the simplified acquisition threshold” so that clause sets don’t have to be changed when the dollar level changes. Ø CO deviation for (c)(1) and (2) in A&C—only changed (c)(3) 11

DOE IP Counsel Thank You Gary Drew, Patent Attorney gary. drew@science. doe. gov , 510 -486 -6703 Rob Burns, Patent Attorney robert. burns@hq. doe. gov, 202 -586 -3445 12