Section 27-3106. PATENT RIGHTS UNDER DISTRICT CONTRACTS

 

3106.1The Director shall prescribe standard contract provisions governing patent rights under District contracts for inclusion in solicitations and contracts, in accordance with the provisions of this section.

 

3106.2If the contract permits the contractor to retain title, and the contractor elects to retain title to an invention, the District shall have at least a nonexclusive, non-transferable, irrevocable, paid-up license to use or have used, for or on behalf of the District, any invention made in the performance of work under a District contract. The District may have additional rights to sublicense the invention if provided in the contract.

 

3106.3The District shall have the right to receive title to any invention made in the performance of a contract unless the contract provides otherwise. If the contract extends a limited right to the contractor to acquire patent rights, the District shall have the right nevertheless to receive title to an invention in the following circumstances:

 

(a)If the contractor does not disclose the invention within the time specified in the contract;

 

(b)In any instance where the contractor does not elect to retain rights or fails to elect to retain rights to the invention within the time specified in the contract;

 

(c)In any instance where the contractor has not filed a patent application within the time specified in the contract;

 

(d)In any instance where the contractor decides not to continue prosecution of a patent application, pay maintenance fees, or defend in a re-examination or opposition proceeding on the patent; and

 

(e)In any instance where the contractor no longer desires to retain title.

 

3106.4If the contract gives a limited right to the contractor to acquire patent rights, the contractor may request greater rights to an invention within the period specified in the contract. The contracting officer may grant a request for greater rights if the contracting officer determines that the grant of greater rights is in the best interests of the District. In making the determination, the contracting officer shall consider the following objectives:

 

(a)Ensuring that inventions are used in a manner that will promote full and open competition and free enterprise; and

 

(b)Ensuring that the District obtains sufficient rights in District-supported inventions to meet the needs of the District and protect the public against nonuse or unreasonable use of inventions.

 

3106.5If the contract permits the contractor to retain title to an invention and the contractor elects not to retain title, the District may, after consultation with the contractor, grant a request for retention of rights by the inventor.

 

3106.6If a District employee is a co-inventor of an invention made under a contract and the District acquires all or part of the rights to the invention, the Director may take any of the following actions that are consistent with the best interests of the District:

 

(a)Assign all or part of the District's rights to its employee while retaining for the District any rights set forth in §3106.2;

 

(b)Assign all or part of the District's rights to the contractor for reasonable consideration, after negotiation by the contracting officer of a reasonable consideration;

 

(c)If the contractor is a nonprofit organization or is a certified minority business, assign all or part of the District's rights without consideration; or

 

(d)Retain the District's rights.

 

3106.7For purposes of this section, an invention is made in the performance of work under a District contract if it is conceived or first actually reduced to practice in the performance of work under a District contract.

 

source

Final Rulemaking published at 35 DCR 1617 (February 26, 1988).