I think I underdstand what has happened. What the company has done is taken standard practice of substituting their name for the government's in passing through clauses. Everyone does this and, for many clauses, it is appropriate. What the company has also done is inappropriately substitute itself for the government in certain places. For instance, if you were to pass through the FAR clause entitled Inspection by the Comptroller General, you would not sustitute your name for the government because of the nature of that clause and the fact you have no legal right to put yourself in the place of the Comptroller General, nor does you have the legal authority mentioned in that clause that is reserved for the Comptroller General. With regard to patent rights, a simple substitution of names takes away the royalty-free (etc) license reserved for the government and gives it to the company. The company has no legal right whatsoever to do that or to insert itself into that clause in any way, shape or manner. This is not because of FAR provisions, but because the law reserves rights specifically for the government. What you need to do is talk to the company and inform them that they have gone beyond the scope of the regulation and law. The patent relationship is between the government and the subcontractor in terms of rights. The prime contractor has no rights it can reserve for itself unless an invention is jointly held between the prime contractor and subcontractor (based solely on the fact that their truly are joint inventors). You can negotiate license rights to the company, but if you give the company the same rights as reserved for the government, you may very well be severely diminishing your ability to negotiate licenses with another company, and certainly so if you wish to make any oither licenses royalty-bearing. In terms of the Rights in Data clause, you might be willing to negotiate a royalty-free, non-exclusive license to the company, particularly with regard to the data/information included in reports made to the company. You need to be careful about the company asserting its rights to background or pre-existing data/information as that may have been develioped with other sponsored funds, and you want to be sure any license terms you negotiate do not violate the terms of other pre-existing agremeents with others. Steve "Rosemary K. Alexander" wrote: > Dear FAR / DEAR guru's, > > I would appreciate your help and further ask that if you know of some other > listserv where my question is most likely to find a definitive answer, > please forward this posting to that listserv. (In fact, please also share > with me other listservs to which I should be subscribed.) > > I have a subcontract I am negotiating with an independent nonprofit > organization (non-university), "WXYZ", who has a R and D subsidiary. WXYZ > received a DOE contract and wishes to subcontract to our university a > portion of the work. Portions of our work are potentially patentable. Not > surprisingly, the subcontract contains a thick general provisions section of > the flow-through clauses. Company WXYZ has incorporated and amended these > clauses by substituting "WXYZ" for, or adding "and WXYZ" to, the words > "government", "contracting officer", "patent counsel" and "DOE" (depending > upon the specific clause). Specifically of concern to CWRU are the > incorporated clauses dealing with patent rights and rights in data (DEAR > 952.227-11, FAR 52.227-14, FAR 52.227-17, FAR 52.227-23 and FAR 52.227-23). > > CWRU has no problem giving the government its rights as dictated by > Bayh-Dole, but we have a problem giving up rights not apparantly specified > by Bayh-Dole. In addition, it seems that substituting "WXYZ" for > "government" takes away rights from the government as well. > > I have two questions: > > 1. Where in FAR and / or DEAR are the rights to make these substitutions > given to these companies? > > 2. How have other universities dealt with these clauses? > > Thanks so much for your help. > > Rosemary > **************************************** > Rosemary K. Alexander > Assistant Director, Office of Research Administration > Case Western Reserve University > 10900 Euclid Avenue > Cleveland, Ohio 44106-7015 > > xxxxxx@po.cwru.edu > Phone: 216-368-2008 > Fax: 216-368-4679 > > ====================================================================== > Instructions on how to use the RESADM-L Mailing List, including > subscription information and a web-searchable archive, are available > via our web site at http://www.hrinet.org (click on "Listserv Lists") > ====================================================================== -- Stephen Erickson, Director Office of Research Administration Boston College McGuinn Hall 600 Chestnut Hill, MA 02467 On-Campus FAX 2-0747 Fax to my computer: 413-895-8328 ====================================================================== Instructions on how to use the RESADM-L Mailing List, including subscription information and a web-searchable archive, are available via our web site at http://www.hrinet.org (click on "Listserv Lists") ======================================================================
