Common use of Awardee Action to Protect Government’s Interest Clause in Contracts

Awardee Action to Protect Government’s Interest. 1. The awardee agrees to execute or to have executed and promptly deliver to NSF all instruments necessary to: (i) establish or confirm the rights the Government has throughout the world in those subject inventions for which the awardee retains title; and (ii) convey title to NSF when requested under paragraph d. above, and to enable the Government to obtain patent protection throughout the world in that subject invention. 2. The awardee agrees to require, by written agreement, its employees, other than clerical and non-technical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the awardee each subject invention made under this award in order that the awardee can comply with the disclosure provisions of paragraph c. above, to assign to the awardee the entire right, title and interest in and to each subject invention made under the award, and to execute all papers necessary to file patent applications on subject inventions and to establish the Government’s rights in the subject inventions. The disclosure format should require, as a minimum, the information requested by paragraph c.1 above. The awardee shall instruct such employees through the employee agreements or other suitable educational programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. or foreign statutory bars. 3. For each subject invention, the awardee will no less than 60 days prior to the expiration of the statutory deadline, notify NSF of any decision: not to continue the prosecution of a non- provisional patent application; not to pay a maintenance, annuity or renewal fee; not to defend in a reexamination or opposition proceeding on a patent, in any country; to request, be a party to, or take action in a trial proceeding before the Patent Trial and Appeals Board of the U.S. Patent and Trademark Office, including but not limited to post-grant review, review of a business method patent, inter partes review, and derivation proceeding; or to request, be a party to, or take action in a non-trial submission of art or information at the U.S. Patent and Trademark Office, including but not limited to a pre-issuance submission, a post-issuance submission, and supplemental. 4. The awardee agrees to include, within the specification of any U.S. patent application and any patent issuing thereon covering a subject invention, the following statement: “This invention was made with Government support under (identify NSF award number) awarded by the National Science Foundation. The Government has certain rights in this invention.” 5. The awardee or its representative will complete, execute and forward to NSF a confirmation of a License to the U.S. Government and the page of a United States patent application that contains the Federal support clause within two months of filing any domestic or foreign patent application.

Appears in 10 contracts

Samples: Cooperative Agreement, Cooperative Agreement, Cooperative Agreement

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Awardee Action to Protect Government’s Interest. 1. The awardee agrees to execute or to have executed and promptly deliver to NSF all instruments necessary to: (i) establish or confirm the rights the Government has throughout the world in those subject inventions for which the awardee retains title; and (ii) convey title to NSF when requested under paragraph d. above, and to enable the Government to obtain patent protection throughout the world in that subject invention. 2. The awardee agrees to require, by written agreement, its employees, other than clerical and non-technical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the awardee each subject invention made under this award in order that the awardee can comply with the disclosure provisions of paragraph c. above, to assign to the awardee the entire right, title and interest in and to each subject invention made under the award, and to execute all papers necessary to file patent applications on subject inventions and to establish the Government’s rights in the subject inventions. The disclosure format should require, as a minimum, the information requested by paragraph c.1 above. The awardee shall instruct such employees through the employee agreements or other suitable educational programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. US or foreign statutory bars. 3. For each subject invention, the awardee will no less than 60 days prior to the expiration of the statutory deadline, notify NSF of any decision: not to continue the prosecution of a non- provisional patent application; not to pay a maintenance, annuity or renewal fee; not to defend in a reexamination or opposition proceeding on a patent, in any country; to request, be a party to, or take action in a trial proceeding before the Patent Trial and Appeals Board of the U.S. Patent and Trademark Office, including but not limited to post-grant review, review of a business method patent, inter partes review, and derivation proceeding; or to request, be a party to, or take action in a non-trial submission of art or information at the U.S. Patent and Trademark Office, including but not limited to a pre-issuance submission, a post-issuance submission, and supplemental. 4. The awardee agrees to include, within the specification of any U.S. US patent application and any patent issuing thereon covering a subject invention, the following statement: “This invention was made with Government support under (identify NSF award number) awarded by the National Science Foundation. The Government has certain rights in this invention.” 5. The awardee or its representative will complete, execute and forward to NSF a confirmation of a License to the U.S. US Government and the page of a United States patent application that contains the Federal support clause within two months of filing any domestic or foreign patent application.

Appears in 4 contracts

Samples: Cooperative Agreement, Cooperative Agreement, Cooperative Agreement

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Awardee Action to Protect Government’s Interest. 1. i. The awardee agrees to execute or to have executed and promptly deliver to NSF all instruments necessary to: (i) establish or confirm the rights the Government has throughout the world in those subject inventions for which the awardee retains title; and (ii) convey title to NSF when requested under paragraph d. above, and to enable the Government to obtain patent protection throughout the world in that subject invention. 2ii. The awardee agrees to require, by written agreement, its employees, other than clerical and non-technical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the awardee each subject invention made under this award in order that the awardee can comply with the disclosure provisions of paragraph c. above, to assign to the awardee the entire right, title and interest in and to each subject invention made under the award, and to execute all papers necessary to file patent applications on subject inventions and to establish the Government’s rights in the subject inventions. The disclosure format should require, as a minimum, the information requested by paragraph c.1 above. The awardee shall instruct such employees through the employee agreements or other suitable educational programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. US or foreign statutory bars. 3iii. For each subject invention, the awardee will no less than 60 days prior to the expiration of the statutory deadline, notify NSF of any decision: not to continue the prosecution of a non- provisional patent application; not to pay a maintenance, annuity or renewal fee; not to defend in a reexamination or opposition proceeding on a patent, in any country; to request, be a party to, or take action in a trial proceeding before the Patent Trial and Appeals Board of the U.S. Patent and Trademark Office, including but not limited to post-grant award review, review of a business method patent, inter partes review, and derivation proceeding; or to request, be a party to, or take action in a non-trial submission of art or information at the U.S. Patent and Trademark Office, including but not limited to a pre-issuance submission, a post-issuance submission, and supplemental. 4iv. The awardee agrees to include, within the specification of any U.S. US patent application and any patent issuing thereon covering a subject invention, the following statement: “This invention was made with Government support under (identify NSF award number) awarded by the National Science Foundation. The Government has certain rights in this invention.” 5. v. The awardee or its representative will complete, execute and forward to NSF a confirmation of a License to the U.S. US Government and the page of a United States patent application that contains the Federal support clause within two months of filing any domestic or foreign patent application.

Appears in 2 contracts

Samples: Cooperative Agreement, Cooperative Agreement

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