Terms and Conditions
Attachment A - Optional
Guidelines for Quarterly R&D Performance Reports (4 Pages)
This document applies to all Recipients of the ATP Cooperative Agreements. ATP Recipient is defined to include all single company Recipients and each individual company or organization that is identified as a Joint Venture participant in the Special Award Conditions .
1. ORDER OF PRECEDENCE OF TERMS AND CONDITIONS OF AWARD
Where the terms of the award and proposal differ, the terms of the award shall prevail. The Recipient is obligated to bring to the attention of the Grants Specialist any perceived conflicts in the terms and conditions of the award.
2. REFERENCED REQUIREMENTS
The ATP Statute, 15 U.S.C. Sec. 278n; the ATP Rule, 15 CFR Part 295; the ATP Notice of Availability of Funds, 69 Fed. Reg. 7617 (February 18, 2004); the Notice of Federal Funding Opportunity dated February 18, 2004, the ATP Proposal Preparation Kit (February 2004), and the Recipient’s proposal are hereby incorporated into the award by reference.
3. AUTHORITY TO MODIFY
The NIST Grants Officer is the ONLY authorized agent at NIST with the authority to bind the Federal Government and to take actions to amend, suspend, and terminate the cooperative agreement. In the case of a joint venture, the NIST Grants Officer may take enforcement action directly with an individual joint venture member, as warranted, as well as with the joint venture as a whole.
4. REQUIREMENTS FOR CONTINUING FINANCIAL ASSISTANCE
A. With respect to any technology arising from assistance provided by NIST under this award, the Recipient shall promote the manufacture of products resulting from that technology within the United States and shall procure parts and materials from competitive United States suppliers to the extent practical.
B. At any time within the life of this award should the Recipient cease to have a majority control or ownership by individuals who are citizens of the United States, the Recipient shall notify the NIST Grants Officer of that fact, in writing, within FIFTEEN (15) business days.
C. In accordance with 15 U.S.C. 278n Sec. (d)(9) and (e), NIST may, within thirty (30) days after notice to Congress, suspend a company from continued assistance under this award if NIST determines that the company or a parent company has failed to satisfy any of the criteria contained in paragraphs a. and b. of this term, and that it is in the national interest of the United States to do so.
5. NIST PROJECT MANAGEMENT TEAM
The NIST Project Management Team (PMT) includes an ATP Project Manager, a NIST Grants Specialist, and one or more ATP technical and business specialists. The ATP Project Manager is responsible for working with the Recipient, including making recommendations to the NIST Grants Officer throughout the life of the project to ensure that the project progresses towards the objectives stated in the proposal in an optimal way. The ATP Project Manager (and other members of the PMT as appropriate) shall participate in a project start or kickoff meeting, annual reviews, and a close-out meeting prior to the expiration of the award. The ATP Project Manager is responsible for:
A. General oversight and project management functions associated with this cooperative agreement.
B. Arranging kickoff meetings, annual review meetings, and final closeout meetings.
C. Monitoring the project to ensure that it is executed in accordance with the proposal and this award; this includes analyzing the quarterly, annual, and final reports, and consulting with other members of the PMT to assess progress.
D. Recommending appropriate action to the NIST Grants Officer if the project is failing to meet its objectives.
6. SUBSTANTIAL INVOLVEMENT
NIST has selected a cooperative agreement as the funding instrument for this project. Accordingly, the NIST Project Management Team will be substantially involved in the following areas:
A. Approval of go/no go decision points at various project stages before subsequent stages of a project may continue, if specified in the Special Award Conditions;
B. Concurrence with sole source procurements in excess of $100,000;
C. Approval of key personnel specified in the proposal (including such positions as Financial Officer, Administrator, Principal Investigator, and/or Project Manager); and
D. Approval of changes in Joint Venture membership.
7. TECHNICAL/BUSINESS/FINANCIAL REPORTS AND PLANS
The Recipient shall provide access to information that is required to assess the project’s progress throughout the project life cycle. In addition to monitoring the technical work, NIST requires business information pertaining to the project during the life of the project and for six years after its end to assess progress towards commercialization, the degree of adoption of the technology, and the impact of the project on the economy.
A. Technical Reporting:
The Recipient shall submit technical performance reports in triplicate (one original and two copies). Two copies shall be submitted to the ATP Project Manager and the original report to the NIST Grants Officer in the same frequency as the Financial Status Report (SF-269). Technical performance reports shall contain information as prescribed in 15 CFR 14.51. (See Attachment A for an optional structure or format for the technical report.)
B. Business Reporting:
The Recipient shall submit business reports in accordance with the “Guidelines for Reporting on Business Progress and Economic Impacts” (see Attachment B).
C. Financial Reporting:
(1) Actual or Incurred Costs
(2) Cost Share
(3) Submission of Financial Reports
For ATP Recipients, Article A.01 of the Department of Commerce (DoC) Financial Assistance Standard Terms and Conditions dated October 2001 is revised as follows:
8. KICK-OFF MEETINGS, ANNUAL REVIEWS,
CLOSEOUT MEETINGS, AND SPECIAL STUDIES
The Recipient and each Joint Venture participant, if applicable, shall participate in kick-off, annual review, and closeout meetings. The ATP Project manager will provide the Recipient with meeting instructions in advance of these meetings.
Consistent with the requirements of the Government Performance and Results Act of 1993, Recipients may be asked from time to time to participate in special economic studies or case studies. All requests for participation in such studies will be in accordance with the Paperwork Reduction Act (PRA) requirements as implemented by 5 CFR 1320, and will display a PRA approval number.
9. PRIOR NOTIFICATION AND APPROVAL REQUIREMENTS
The prior approval requirements in 15 CFR 14.25, paragraph (e) MAY NOT be waived automatically by the Recipient and require written approval from the NIST Grants Officer.
A. In addition to the requirements specified in 15 CFR 14.25, Recipients must obtain prior written approval from the NIST Grants Officer for the following changes:
(1) Notwithstanding the requirements of Article A.04.b of the DoC Financial Assistance Standard Terms and Conditions, Recipients must obtain advance, written approval from the NIST Grants Officer for budget changes involving the transfer of funds among direct cost categories or between Joint Venture members if the amount of the transfer exceeds 10% of the approved total annual budget for any single Recipient or Joint Venture participant for an approved project year. Recipients are not authorized to create new budget categories without prior approval. Recipients are not authorized at any time to transfer amounts budgeted for direct costs to the indirect cost line item.
(2) Any substitution, or addition, or deletion of participants to a joint venture must be approved by the NIST Grants Officer.
Proposed new Joint Venture Participants may not enter into any obligation, incur any expenditure, or engage in any activity that involves a commitment of Federal funds under this Agreement until the NIST Grants Officer has provided formal acceptance of the new Joint Venture and has formally approved the new or revised Joint Venture Agreement.
B. Recipients must provide written notification to the NIST Grants Officer, with a copy to the ATP Project Manager, within 30 calendar days of the occurrence of any of the changes below. If any of the changes occurred after the submission of an applicant's proposal and prior to receipt of the award, written notification must be made within 30 calendar days of receipt of the award.
(1) Any revision to ownership and/or dissolution of a Recipient company (including Joint Venture partners, if a JV). Revisions to ownership include, but are not limited to, mergers, acquisitions, a change resulting in majority ownership by non-U.S. citizen(s), etc. In each instance, the notification must include the following information:
(2) Withdrawal of any Joint Venture participant. The notification must include the following information:
When only two for-profit companies comprise a Joint Venture and one of them ceases participation, the project may be suspended until the NIST Grants Officer has provided formal acceptance of the new Joint Venture and has formally approved the new or revised Joint Venture Agreement. During the suspension period, the Recipient may not continue to enter into obligations, incur expenditures, or engage in any activity that involves a commitment of Federal funds under this Agreement.
10. UNALLOWABLE PROJECT COSTS
Those costs that are designated as being unallowable in Chapter 1, Section D.2 of the February 2004 ATP Proposal Preparation Kit will be unallowable under this award.
11. PROGRAM INCOME
A. Program income earned during the project period shall be retained by the recipient and shall be used to finance any non-Federal share of the project.
B. Recipients shall have no obligation to the Federal Government regarding program income earned after the end of the project period.
C. Costs incidental to the generation of program, income may be deducted from gross income to determine program income, provided these costs have not been charged to the award
D. Proceeds from the sale of property shall be handled in accordance with the requirements of Property Standards in 15 CFR 14.30 through 14.37.
E. Recipients shall have no obligation to the Federal Government with respect to program income earned from license fees and royalties for copyrighted material, patents, patent applications, trademarks, and inventions produced under an award.
Upon expiration of the project period, the Recipient shall submit to the NIST Grants Officer an inventory of equipment acquired with Federal funds, as prescribed in 15 CFR 14.34, along with an “Equipment Disposition Certification.” The certification provides the Recipient an opportunity to request authorization to continue to utilize the equipment for the purposes of the commercialization initiative. If approved by the NIST Grants Officer, the Recipient shall report to NIST every two years the condition of the equipment as long as the current market value is more than $5,000.
For Joint Venture awards, title to any equipment purchased under the award, including intangible property that meets the definition of equipment in 15 CFR 14.2(n), that may be in the name of a departing participant, and that is vital to the project, shall be transferred to another Joint Venture participant as instructed by the Joint Venture Administrator for continued use on the project. The Joint Venture shall make compensation to the departing participant for its contribution to the purchase of the equipment by applying its percentage of the cost of the equipment to the current fair market value of the equipment. Should the equipment no longer be needed on the project, the departing participant shall request disposition instructions in accordance with 15 CFR 14.34.
13. NON-COMPLIANCE WITH STATUTORY PURPOSE
If NIST determines that the statutory purposes of research and development under 15 USC 278n can no longer be served (e.g., the project is no longer high-risk), the Recipient shall be deemed in material non-compliance with award requirements. As a result, NIST may terminate the award pursuant to 15 CFR 14.61.
This special award condition applies to all payments that the Recipient receives outside of the ASAP system. The Recipient shall promptly submit all refund checks (including interest earned on advances) to the address identified below and notify the Grants Office upon submission. Each check must identify on its face the NIST award number, and no more than a two-word description to identify the reason for the refund. Submit to:
Institute of Standards and Technology
Project audits (of Federal and non-Federal funds) are required for all ATP Recipients except when those Recipients are required to comply with the Single Audit Act of 1996 and the audit requirements of Office of Management and Budget (OMB) Circular A-133, “Audits of States, Local Governments and Non-Profit Organizations.” Subcontractors/subawardees, including universities, who receive total funding under an ATP project totaling more than $500,000 each are also subject to the audit requirement. A subcontractor/subawardee is defined as an organization which receives a portion of the financial assistance from the recipient/awardee and assists the ATP recipient/awardee in meeting the project goals, but does not include the procurement of goods and services.
A. ALL ATP Recipients, including each Joint Venture participant (if a Joint Venture project), are required to provide sufficient funds as direct costs (unless included as indirect) in the project’s multi-year budget to have project audits performed according to the Schedule shown in b. below.
B. All Recipients shall schedule audits as follows:
(1) For awards less than 24 months, an audit is required within 90 days from the project expiration date.
(2) For 2-, 3-, or 4-year awards, an audit is required within 90 days after the end of the first year and within 90 days from the project expiration date.
(3) For 5-year awards, an audit is required within 90 days after the end of the first year and third year, and within 90 days from the project expiration date.
C. Audits of all Recipients shall be conducted in accordance with Government Auditing Standards (GAS), issued by the Comptroller General of the United States (the Yellow Book). If an ATP Recipient is required to have an audit performed in accordance with OMB Circular A-133, “Audits of States, Local Government, and Non-Profit Organizations”, the annual OMB Circular A-133 audit is deemed to meet the ATP audit requirement. If an ATP Recipient does not have an annual OMB Circular A-133 audit performed, the Recipient should follow the following project audit requirements:
(1) Audits for single company Recipients shall be conducted using the NIST Program-Specific Audit Guidelines for Advanced Technology Program (ATP) Cooperative Agreements with Single Companies.
(2) Audits for joint venture Recipients shall be conducted using the NIST Program-Specific Audit Guidelines for Advanced Technology Program (ATP) Cooperative Agreements with Joint Ventures.
The program specific guidelines may be useful in identifying the allowability of specific cost elements and other programmatic compliance requirements for those recipients required to have an OMB Circular A-133 audit.
D. The Recipient shall submit two (2) copies of each audit report, one to the address shown in Article D.01.b. of the DoC Financial Assistance Standard Terms and Conditions dated October 2001, and one copy to the NIST Grants Officer.
16. CLOSEOUT OF COOPERATIVE AGREEMENT
A. In accordance with the guidelines established in 15 CFR 14.71 and Term A.06 of the DoC Financial Assistance Standard Terms and Conditions dated October 2001, the NIST Grants Officer will allow only those costs that are strictly associated with closeout activities during the ninety (90) day period following the award expiration date. Closeout activities are normally limited to preparation of the final reports (technical, business, financial, patent/invention, equipment inventory) and closeout audit).
B. The final technical progress (closeout) meeting with NIST ATP is generally not considered a closeout-related activity. This end-of-project meeting should be conducted prior to the expiration date of the award. The Recipient must provide adequate funds in the project budget to ensure participation by all appropriate members in the closeout meeting. Costs associated with any closeout meeting held after the expiration date of the award may not be charged to the project unless specific, prior written approval is obtained from the NIST Grants Officer.
17. USE OF NAME OR ENDORSEMENTS
A. The Recipient and/or its subrecipients or subcontractors shall not, without the prior approval of NIST, use the name of NIST or the Department of Commerce on any product or service which is directly or indirectly related to either this award or any patent license or assignment agreement which relates to this award.
B. By entering into this award, NIST does not directly or indirectly endorse any product or service provided or to be provided by the Recipient, its successors, assignees, or licensees. The Recipient and its subrecipients and subcontractors, shall not in any way imply that this award is an endorsement of any such product or service.
18. PUBLICATION GUIDELINES
In any publications, the Recipient shall acknowledge support of the technology development by NIST. Normally this is done by a footnote reading, "This work was performed under the support of the U.S. Department of Commerce, National Institute of Standards and Technology, Advanced Technology Program, Cooperative Agreement Number 70NANBXHXXXX," or words to that effect.
19. PROTECTION OF HUMAN SUBJECTS
Research involving human subjects is not permitted under an ATP award unless expressly authorized by a Special Award Condition or otherwise in writing by the NIST Grants Officer.
The Federal Policy for the Protection of Human Subjects (The Common Rule), codified by the Department of Commerce at 15 CFR Part 27, requires Recipients to maintain appropriate policies and procedures for the protection of human subjects in research. The Common Rule defines a “human subject” as a living individual about whom an investigator conducting research obtains 1) data through intervention or interaction with the individual, or 2) identifiable private information. The term “research” means a systematic investigation, including research development, testing and evaluation, designed to develop or contribute to generalizable knowledge. The Common Rule also sets forth the categories of research that may be considered exempt from this policy.
In the event it becomes evident that a human subject may be involved in this project, the Recipient shall submit appropriate documentation to the ATP Project Manager for NIST institutional review and approval. This documentation may include:
A. Documentation establishing review and approval of the project by a qualified Institutional Review Board (IRB). [NOTE: Recipients must provide documentation of continuing IRB approval by the cognizant IRB at appropriate intervals as designated by the IRB, but not less than annually];
B. Documentation to support an exemption for the project from The Common Rule [NOTE: this option is not available for activities that fall under 45 CFR Part 46 Subpart B or C];
C. Documentation to support a request for a deferral of review for research involving human subjects beginning after year 1 of the project;
D. Documentation of IRB approval of any modification to an IRB-approved existing protocol or informed consent form must be submitted to the ATP Project Manager for NIST Institutional review and approval.
No work involving human subjects may be undertaken, conducted, or costs incurred and/or charged to the project for this work, until the NIST Grants Officer approves the required appropriate documentation in writing.
20. CARE AND USE OF VERTEBRATE ANIMALS
Research involving live vertebrate animals is not permitted under an ATP award unless expressly authorized by a Special Award Condition or otherwise in writing by the NIST Grants Officer.
The Department of Commerce requires Recipients of financial assistance awards to comply, as applicable, with the Animal Welfare Act as amended, and implementing regulations found at (7 USC 2131-2157, 9 CFR parts 1, 2, and 3).
In the event it becomes evident that live vertebrate animals may be involved in this project, the Recipient shall submit appropriate documentation to the ATP Project Manager for NIST institutional review and approval. Additional information and requirements are set forth in the booklet entitled, “Guidelines and Documentation Requirements for Research Involving Human and Animal Subjects,” available on the ATP website at http://www.atp.nist.gov/atp/kit-04/has_guide/contents.htm.
ATP accepts documentation identifying the institution’s required credentials for performing animal studies (e.g OLAW animal welfare assurance number, USDA certificate number, or AAALAC accreditation) in lieu of an actual copy of applicable institutional credentials ((e.g OLAW animal welfare assurance, USDA certificate, or AAALAC letter of accreditation). Since verification that assurances are valid and current can be made through official websites, generally only documentation of the applicable credential’s identifier linked to the institution performing the animal studies is needed. NIST reserves the right to request a copy of the applicable institutional credentials (e.g OLAW animal welfare assurance designation, USDA certificate, or AAALAC letter of accreditation), as warranted.
No work involving live vertebrate animals may be undertaken, conducted, and/or costs incurred and/or charged to the project for this work, until the NIST Grants Officer approves the required appropriate documentation in writing.
21. BUREAU OF INDUSTRY AND SECURITY (BIS) CLEARANCE
A. The Recipient agrees to adhere to the U.S. Export Administration laws and regulations and shall not export or re-export, directly or indirectly, any technical data created with Government funding under this award to any country for which the United States Government or any agency thereof, at the time of such export or re-export, requires an export license or other Governmental approval without first obtaining such licenses or approval and the written clearance of the NIST Grants Officer.
B. The Bureau of Industry and Security (BIS) shall conduct an annual review for any relevant information about the Recipient's compliance with U.S. export laws. NIST reserves the right to take appropriate action in accordance with 15 CFR 14.62 and Article L.01 of the Department of Commerce Financial Assistance Standard Terms and Conditions, if the BIS reports significant adverse information about the Recipient to the NIST Grants Officer.
22. NORTH AMERICAN FREE TRADE AGREEMENT PATENT NOTIFICATION PROCEDURES
Pursuant to Executive Order 12889, the DoC is required to notify the owner of any valid patent covering technology whenever the DoC or its financial assistance Recipient, without making a patent search, knows (or has demonstrable reasonable grounds to know) that technology covered by a valid United States patent has been or will be used without a license from the owner. To ensure proper notification, if the Recipient uses or has used patented technology under this award without a license or permission from the owner, the Recipient must notify the DoC Patent Counsel at the following address, with a copy to the NIST Grants Officer:
The notification shall include the following information:
The U.S. Government shall not be responsible for damage to or resulting from any property provided to the Recipient, and/or its subrecipients and/or subcontractors, and/or acquired by the Recipient, and/or its subrecipients and/or subcontractors, pursuant to this award.
B. No Warranty
NIST makes no express or implied warranty as to any matter whatsoever, including the conditions of the research or any invention or product, whether tangible or intangible, made, or developed under this award, or the ownership, merchantability, or fitness for a particular purpose of the research or any invention or product made or developed under this award.
(1) The United States expressly disclaims any and all responsibility to the Recipients or third persons for the actions of the Recipient or third persons resulting in death, bodily injury, property damage, or any other losses resulting in any way from the performance of this award or any subaward or subcontract under this award.
(2) The acceptance of this award by the Recipient does not in any way constitute an agency relationship between the United States and the Recipient.
(1) The Recipient, and/or its subrecipients and/or subcontractors, agree to indemnify and hold harmless the U.S. Government for all liabilities, demands, damages, expenses and losses arising out of the use by the Recipient, its subrecipients, subcontractors, and/or any party acting on their behalf or under their authorization, of products made by the use of technical developments arising under this agreement. This provision shall survive termination of this award.
(2) The Recipient, and/or its subrecipients and/or subcontractors, agree to indemnify and hold harmless the U.S. Government for any loss, claim, damage, or liability of any kind involving the Recipient’s, subrecipient’s, and/or subcontractor’s employees arising in connection with this award.
E. Force Majeure
Neither party shall be liable for any unforeseeable event beyond its reasonable control not caused by the fault or negligence of such party, which causes such party to be unable to perform its obligations under this award (and which it has been unable to overcome by the exercise of due diligence), including, but not limited to: flood, drought, earthquake, storm, fire, pestilence, lightning and other natural catastrophes, epidemic, war, riot, civil disturbance or disobedience, strikes, labor dispute, or failure, threat of failure, or sabotage of the Recipient or subcontractor facilities, or any order or injunction made by a court or public agency. In the event of the occurrence of such a force majeure event, the party unable to perform shall promptly notify the other party. It shall further use its best efforts to resume performance as quickly as possible and shall suspend performance only for such period of time as is necessary as a result of the force majeure event.
24. INFORMAL COLLABORATORS
All informal collaborators in ATP awards are subject to ATP intellectual property regulations as specified in 15 CFR 295.8. Informal collaborator means any individual or organization, which consults, cooperates with, or participates in the performance of this award, and is not included in the approved award budget.
25. INTELLECTUAL PROPERTY
A. Rights in Data
(1) The Government shall have certain rights to use data first produced in the performance of the award, whether or not the data is copyrighted. The Recipient may establish claim to copyright subsisting in any data first produced in the performance of the award. When claim is made to copyright, the Recipient shall affix the applicable copyright notice of 17 U.S.C. Sec. 401 or 402 and acknowledgment of Government sponsorship to the data when and if the data are delivered to the Government, are published, or are deposited for registration as a published work in the U.S. Copyright Office. The Recipient shall grant to the Government, and others acting on its behalf, a paid up, nonexclusive, irrevocable, worldwide license for all such data to reproduce, prepare derivative works, perform and display publicly, and for data other than computer software to distribute to the public by or on behalf of the Government.
(2) The licenses granted to the Government under this Term shall not be considered as a waiver of the nondisclosure requirements of 15 U.S.C. Section 278n(d)6: "Intellectual property owned or developed by any business receiving funding may not be disclosed by any officer or employee of the Federal Government except in accordance with a written agreement between the owner or developer and the Program."
B. Patent Rights
(a) “Company" means a for-profit organization, including sole proprietors, partnerships or corporations.
(b) "Invention" means any invention or discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code.
(c) “Made” means, when used in relation to any Invention, the conception or first actual reduction to practice of such invention.
(d) "Practical Application" means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine or system; and, in each case, under such conditions as to establish that the invention is being utilized and that its benefits are, to the extent permitted by law or government regulations, available to the public on reasonable terms.
(e) "Subject Invention" means any invention of the Recipient conceived or first actually reduced to practice in the performance of work under this award.
(2) Ownership of Inventions
Pursuant to the statute that establishes the ATP (15 U.S.C. 278n(d)(11)), this paragraph takes precedence over 15 CFR 14.36 and DoC Financial Assistance Standard Terms and Conditions, dated October 2001, article L.04. The Recipient or, if appropriate, its subrecipients, contractor(s) and/or subcontractor(s), shall have the entire right, title, and interest throughout the world to each Subject Invention according to the provisions of this clause, provided that this party is a company or companies organized in the United States. Joint ventures shall provide to NIST a copy of their written agreement, which defines the disposition of ownership rights among the members of the joint venture, and their contractor and/or subcontractors as appropriate, in accordance with the second sentence of this paragraph. However, the United States hereby reserves a nonexclusive, nontransferable, irrevocable paid-up license, to have practiced for or on behalf of the United States, any such invention. Title to any such invention shall not be transferred or passed, except to a company organized in the United States, until the expiration of the first patent obtained in connection with such invention.
(3) Invention Disclosure, United States License and Filing of Patent Application by Recipient
(a) The Recipient shall disclose each subject invention to NIST within two months after the inventor discloses it in writing to Recipient personnel responsible for patent matters. The disclosure to NIST shall be in the form of a written report and shall identify the award under which the invention was made and the inventor(s). It shall, at a minimum, contain the following information:
One original and two copies of all patent reports shall be submitted to:
Each report shall also include the use of the invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure. In addition, after disclosure to NIST, the Recipient will promptly notify NIST of acceptance of any manuscript describing the invention for publication or of any sale or public use planned by the Recipient.
(b) The Recipient shall notify NIST within two years of disclosure to NIST whether or not the Recipient intends to file a patent application on any subject invention.
If a patent is issued, the Recipient(s) must submit the following to the Grants Office:
In a JV award, the administrator must submit the patent information to NIST for all participants. In order to prevent disclosure of information to the general public under the Freedom of Information Act (FOIA) or any other statute, each page of each patent report should be marked, “CONFIDENTIAL/PROPRIETARY.”
(c) Requests for extension of the time for disclosure, election, and filing under paragraphs 24.b.(3)(a) and (b) of this Term may be permitted at the discretion of NIST.
(4) Recipient Action to Protect the Government's Interest
(a) The Recipient agrees to execute or to have executed and promptly deliver to NIST all instruments necessary to establish or confirm the rights the United States Government has throughout the world in those subject inventions to which the Recipient has filed a patent application in which the United States has reserved a non-exclusive license.
(b) The Recipient shall require, by written agreement, its employees, other than clerical and nontechnical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the Recipient, each subject invention made under the award in order that the Recipient can comply with the disclosure provisions of paragraph b.3. of this Term, and to execute all papers necessary to file patent applications on subject inventions and to establish the Government's rights in the subject inventions. This disclosure format should require, as a minimum, the information required by b.3.(a) of this Term. The Recipient shall instruct such employees through employee agreements or other suitable education programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to United States or foreign statutory bars.
(c) The Recipient shall promptly notify NIST of any decisions not to continue the prosecution of a patent application, the payment of maintenance fees, or the defense in a reexamination or opposition proceeding on a patent in any country.
(d) The Recipient agrees to include, within the specification of any United States patent application and any patent issuing thereon covering a subject invention, the following statements:
This invention was made with United States Government support under (identify the cooperative agreement number) awarded by the National Institute of Standards and Technology (NIST).
The United States Government has certain rights in the invention.
(5) Subawards and Subcontracts
The Recipient shall include in all subawards and subcontracts, regardless of tier, for experimental, developmental, or research work, a patent rights clause, as appropriately modified, comparable to this term. However, pursuant to the statute establishing the ATP (15 U.S.C. 278n(d)(11)), if the subrecipient or subcontractor is not a company organized in the United States, the patent rights clause shall provide that title to each subject invention made by the subrecipient or subcontractor shall vest with a company or companies incorporated in the United States.
(6) Reporting on Utilization of Subject Inventions
The Recipient agrees to submit on request, no more frequently than annually, periodic reports on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the Recipient or its licensees or assignees. Such reports shall include information regarding the status of development, date of first commercial sale or use, gross royalties received by the Recipient, and such other data and information as NIST may reasonably specify. The Recipient also agrees to provide additional reports as may be requested by NIST in connection with any march-in proceeding undertaken by NIST in accordance with paragraph b.8. of this Term. Such information shall be treated by NIST as commercial and financial information and thus as privileged and confidential and not subject to disclosure under section 552 of Title 5 of the United States Code.
(7) Preference for United States Industry
Notwithstanding any other provision of this Term, the Recipient agrees that neither it nor any assignee will grant to any person the exclusive right to use or sell any subject inventions in the United States unless such person agrees that any products embodying the inventions will be manufactured substantially in the United States. However, in individual cases, the requirement for such an agreement may be waived by NIST upon a showing by the Recipient or its assignee that reasonable but unsuccessful efforts have been made to grant licenses on similar terms to potential licensees that would be likely to manufacture substantially in the United States or that, under the circumstances, domestic manufacture is not commercially feasible.
(8) March-in Rights
The Recipient agrees that, with respect to any subject invention in which it has acquired title, NIST has the right, in accordance with procedures in 37 CFR 401.6 and any supplemental regulations of NIST, to require the Recipient, an assignee, or an exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant or applicants, upon terms that are reasonable under the circumstances. If the Recipient, assignee, or exclusive licensee refuses such a request, NIST has the right to grant such a license itself if NIST determines that:
(a) Such action is necessary because the Recipient or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the subject invention in such field of use;
(b) Such action is necessary to alleviate health or safety needs which are not reasonably satisfied by the Recipient, assignee, or licensees;
(c) Such action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the Recipient, assignee, or licensees; or
(d) Such action is necessary because the agreement required by paragraph b.7. of this Term has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject invention in the United States is in breach of the agreement required by paragraph b.7 of this Term.
(9) Conflicts Between ATP Intellectual Property Provisions and Non-U.S. Country Intellectual Property Provisions
The intellectual property provisions in the ATP statute, rule, and General Terms and Conditions require that any intellectual property arising from an ATP-funded project shall vest with a for-profit company organized in the United States. If the Recipient's proposal includes work approved by the Grants Officer to be performed in a non-U.S. country, by accepting this award, the Recipient certifies that no legal requirement exists in that country that conflicts with the ATP intellectual property requirements, including the U.S. government license provisions.
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