Section 27-3105. LICENSING AND ROYALTY INFORMATION

 

3105.1Except as provided in §3105.2, upon the request of the contracting officer, a contractor or a prospective contractor shall furnish to the contracting officer licensing and royalty information and reports sufficient to determine whether royalties anticipated or actually paid under District contracts are excessive, improper, or inconsistent with any District rights in particular inventions, patents, patent applications, copyrights, or proprietary information. The contracting officer shall take appropriate action to reduce or eliminate excessive or improper royalties.

 

3105.2The contracting officer shall not require bidders to provide royalty and licensing information in sealed bids unless the contracting officer determines that the information is necessary for the proper protection of the District's interests.

 

3105.3The contracting officer shall include a clause, approved by the Director, in each request for proposals requesting information relating to any proposed charge for royalties or need to obtain a license for use of any rights in patents, copyrights, or proprietary information.

 

3105.4The contracting officer, when considering the approval of a subcontract in accordance with the provisions of this title, shall require and obtain the same royalty and licensing information and reports, and take the same action with respect to subcontracts in relation to royalties and licenses, as required by §3105.3 for prime contracts. Consent to subcontract does not have to be withheld pending receipt of the required information and reports.

 

3105.5When the District is obligated to pay a royalty on a patent, copyright, or proprietary information because of a license agreement between the District and the licensor, and the contracting officer knows or has reason to believe that the licensed patent will be applicable to a prospective contract, the contracting officer shall furnish information relating to the royalty to prospective offerors. The contracting officer shall include in the solicitation a notice of the license, the number or description of the patent, copyright, or proprietary information, the royalty rate stated in the license, and any other pertinent information.

 

3105.6When the District is obligated to pay a royalty because of a license agreement between the District and a licensor, the solicitation shall require each offeror to furnish information indicating whether it is a licensee. The solicitation clause shall be approved by the Director. Based on this information, the contracting officer may do either of the following:

 

(a)Evaluate an offeror's price by adding an amount equal to the royalty; or

 

(b)Negotiate a price reduction with an offeror-licensee when the offeror is licensed under the same patent at a lower royalty rate.

 

3105.7If, at any time, the contracting officer has reason to believe that any royalties paid, or to be paid, under an existing or prospective contract or subcontract are inconsistent with the District's rights, or are excessive or otherwise improper, contracting officer shall promptly report these matters to the Director.

 

3105.8After consultation with the Director, the contracting officer shall act to protect the District against payment of royalties on goods or services in the following instances:

 

(a)When the District has a royalty free license with respect to the goods or services;

 

(b)When the rate is in excess of the rate at which the District is licensed; or

 

(c)When the royalties, in whole or in part, otherwise constitute an improper charge.

 

3105.9If the contracting officer, after consultation with the Director, determines that the District has paid or will pay royalties under an existing or prospective contract that are inconsistent with the District's rights or are excessive or otherwise improper, and if it is in the best interests of the District, the contracting officer shall obtain a refund (pursuant to a clause, approved by the Director, providing for a refund) or shall negotiate for a reduction of royalties.

 

source

Final Rulemaking published at 35 DCR 1616 (February 26, 1988).