Exhibit_C_-_Subject_Invention_Reporting_Instructions.pdf

EXHIBIT C

“SUBJECT INVENTION” REPORTING INSTRUCTIONS

Applicable Clauses: In accordance with DFARS 252.227-7038 (large business) and FAR 52.227-11 / DFARS 252.227-7039 (small business and nonprofit), the contractor is required to report and disclose all “subject inventions” (as defined in the clauses) to the ACO/PCO.

Invention Disclosure to Government: For a small business/nonprofit, disclose the invention within 2 months of inventor's initial disclosure to the contractor organization. For a large business, disclose the invention within 2 months of inventor's initial disclosure to the contractor organization OR within 6 months after the contractor organization becomes aware of the invention, whichever occurs earlier.

Election of Title to Invention: The contractor shall notify the ACO/PCO whether it will retain ownership to “subject inventions.” For a small business/nonprofit, elect title within 2 years of disclosing the invention to the Government. For a large business, elect title within 8 months of disclosing the invention to the Government. Shorter periods apply if the invention is publicly disclosed.

File Patent Application: If the contractor elects title, the contractor needs to file a patent application within one year of electing title. This period is shortened if the invention is publicly disclosed. The patent application and any patents issuing therefrom must include the following: “This invention was made with Government support under (identify the contract/grant) awarded by the U.S. Army Contracting Command on behalf of the U.S. Army Space and Missile Defense Command / Army Forces Strategic Command.

The Government has certain rights in the invention.”

Confirmatory license: The contractor shall provide a license to the ACO/PCO for the Government to practice the invention. The license shall be provided commensurate with the filing of a patent application for a “subject invention.” A copy of the Confirmatory License form can be obtained at http://www.smdc.army.mil/2008/SmallBiz.asp under the heading "Other Information for Contractors."

Discontinuance of Patent Application, Payment of Patent Maintenance Fees, or Defense in an Opposition Proceeding on a Patent: The contractor shall notify the contracting officer of changes in patent application/patent status prior to established deadlines. Any change in status of a patent application must be reported at least 30 days prior to deadlines of pending U.S. Patent and Trademark Office (USPTO) office actions.

Annual Invention Reports: The contractor shall use DD Form 882, Report of Inventions and Subcontracts, to submit annual invention reports (within 30 days of the anniversary date of the award). If no “subject inventions” occurred during the annual reporting period, a negative report must be submitted.

A copy of the DD Form 882 can be obtained at http://www.smdc.army.mil/2008/SmallBiz.asp under the heading "Other Information for Contractors."

Final Invention Report: The contractor shall submit a final DD Form 882 to the ACO/PCO within three

(3) months after contract completion (for IDIQ contracts, at the completion of each task order). List all “subject inventions” conceived of or reduced to practice during the performance of the contract, or state “none,” as applicable.

Rights to Inventions on Subcontracts: Subcontractors retain rights to their “subject inventions” and have the same reporting responsibilities, obligations, and time frames as the prime contractor. The prime contractor shall include the clause at DFARS 252.227-7039 in all subcontracts with small businesses and nonprofit organizations, regardless of tier, for experimental, developmental, or research work. The prime contractor shall account for the interim and final invention reports submitted by the subcontractor(s). The prime contractor's invention reports shall contain a copy of each of the subcontractor's invention reports.

Patent Clearance and Contract Closeout: The contract will not be closed until all “subject invention” reporting requirements are met.

- End of Document -

05 July 2017