Disposition of Title - T itle remains with third-party Sponsors !
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U .S . D E P A R TM E N T O F ENERGY O ffice ofScience-C hicago O ffice U .S . D E P A R TM E N T O F ENERGY O ffice ofScience-C hicago O ffice Disposition of Title - Title remains with third- party Sponsors! Waiver Exceptions – Similar to previous WFO Class Waiver (research tool, foreign sponsor, etc.) No March-in-Rights – Secretarial decision in a previous white paper Waiver declined or denied – The Lab Contractor takes title. Big change from DOE taking rights Government license – Two versions (next slide) WFO Class Waiver
description
WFO Class Waiver. Disposition of Title - T itle remains with third-party Sponsors ! Waiver Exceptions – S imilar to previous WFO Class Waiver (research tool, foreign sponsor, etc.) No March-in-Rights – Secretarial decision in a previous white paper - PowerPoint PPT Presentation
Transcript of Disposition of Title - T itle remains with third-party Sponsors !
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
Disposition of Title - Title remains with third-party Sponsors!
Waiver Exceptions – Similar to previous WFO Class Waiver (research tool, foreign sponsor, etc.)
No March-in-Rights – Secretarial decision in a previous white paper
Waiver declined or denied – The Lab Contractor takes title. Big change from DOE taking rights
Government license – Two versions (next slide)
WFO Class Waiver
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
Government License
The Government retains a “nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any Subject Invention throughout the world.”
Alternatively, Sponsors may seek application of a narrowed Government Use License (“Government R&D License”) for research and development purposes only1.
Use of the R&D License must be accompanied by expanded government access to data generated under the WFO
Application of the Government R&D License requires approval by DOE/NNSA Patent Counsel after consulting with the cognizant DOE Program Office
The Government R&D License will not be allowed for WFO transactions related to national security.
Special attention also should be given to proposed WFO transactions involving environmental management programs, or in situations where the WFO transaction involves work to be performed for the Facility Contractor, Contractor’s parent, member, subsidiary, etc.
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
Data Rights
Normally, data generated under privately funded ACT/WFO transactions can be treated as “proprietary data.”
Proprietary data protection is not automatic for foreign sponsors, and requires approval from Patent Counsel with input from the applicable HQ Program Office.
If the government license is narrowed to a “Government R&D License,” proprietary data protection cannot exceed 5 years.
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
Funding Waiver Terms
Private Waiver applies Appendix A
Appendix C (Gov’t R&D license and limited data protection)
Waiver declined or denied Appendix B
Foreign Waiver not effective Appendix B
Waiver applies Appendix A or C, modified with Unlimited Rights Data Clause
Federal funding Waiver not effective Appendix B
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IP Terms
