About SBIR
GENERAL TERMS AND CONDITIONS FOR
DOE SBIR AND STTR PHASE I AND PHASE II GRANTS
GENERAL TERMS AND CONDITIONS APPLICABLE TO PHASE I AND PHASE II GRANTS
NO. TITLE
SBIR/STTR-GTC-0001 EXPLANATION
SBIR/STTR-GTC-0002 GRANTEE ADHERENCE TO GRANT TERMS AND CONDITIONS
SBIR/STTR-GTC-0003 DEFINITIONS
SBIR/STTR-GTC-0004 GRANTEE SUBMISSIONS INCLUDING PRIOR APPROVAL REQUESTS
SBIR/STTR-GTC-0005 ALLOWABLE COSTS/APPLICABLE COST PRINCIPLES
SBIR/STTR-GTC-0006 AUDITS
SBIR/STTR-GTC-0007 PREAWARD COSTS
SBIR/STTR-GTC-0008 REPORTING REQUIREMENTS
SBIR/STTR-GTC-0009 EXTENSIONS
SBIR/STTR-GTC-0010 MAXIMUM DEPARTMENTAL OBLIGATION
SBIR/STTR-GTC-0011 PROPERTY
SBIR/STTR-GTC-0012 PRINCIPAL INVESTIGATOR OR DESIGNATED KEY PERSONNEL
SBIR/STTR-GTC-0013 CHANGES IN OBJECTIVES OR SCOPE
SBIR/STTR-GTC-0014 TRANSFER OF SUBSTANTIVE PROGRAMMATIC EFFORT
SBIR/STTR-GTC-0015 RESEARCH EFFORT
SBIR/STTR-GTC-0016 FOREIGN TRAVEL
SBIR/STTR-GTC-0017 CONSULTANT SERVICES
SBIR/STTR-GTC-0018 PAPERWORK REDUCTION
SBIR/STTR-GTC-0019 GENERALLY APPLICABLE REQUIREMENTS
SBIR/STTR-GTC-0020 NONDISCRIMINATION
SBIR/STTR-GTC-0021 PUBLIC ACCESS TO INFORMATION
SBIR/STTR-GTC-0022 SUSPENSION AND TERMINATION
SBIR/STTR-GTC-0023 INTEREST
SBIR/STTR-GTC-0024 PATENT RIGHTS
SBIR/STTR-GTC-0025 RIGHTS IN DATA – SBIR/STTR PROGRAM
SBIR/STTR-GTC-0026 RIGHTS TO APPLICATION DATA
SBIR/STTR-GTC-0027 OTHER RESEARCH SUPPORT
SBIR/STTR-GTC-0028 NOTIFICATION OF DELAY
SBIR/STTR-GTC-0029 FEE
SBIR/STTR-GTC-0030 PAYMENT
SBIR/STTR-GTC-0031 AMERICAN-MADE EQUIPMENT AND PRODUCTS
GENERAL TERMS AND CONDITIONS APPLICABLE TO PHASE I ONLY
SBIR/STTR-GTC-0032 FIXED OBLIGATION
SBIR/STTR-GTC-0033 PREAWARD COSTS
GENERAL TERMS AND CONDITIONS APPLICABLE TO PHASE II ONLY
SBIR/STTR-GTC-0034 REPORTING NON�2011;FEDERAL SUPPORT
GENERAL TERMS AND CONDITIONS FOR
DOE SBIR AND STTR PHASE I AND PHASE II GRANTS
SBIR/STTR-GTC-0001 EXPLANATION
a. These general terms and conditions do not restate all the provisions of applicable statutes and regulations, nor do they represent an exhaustive listing of all requirements applicable to this Assistance Agreement. Rather, they highlight and are consistent with those requirements which are especially pertinent to research grants in general. They are emphasized by inclusion here because:
(1) they are invoked with high frequency;
(2) their violation is a matter of especially serious concern (e.g., use of human subjects); and
(3) restating them in the research context will allow them to be more easily understood by the research community.
b. In addition to these general terms and conditions, the grantee must comply with all governing requirements, including those identified in block 9 of the Assistance Agreement face page and those included in the “Special Terms and Conditions for Use in SBIR/STTR Awards” attached to this Assistance Agreement package.
SBIR/STTR-GTC-0002 GRANTEE ADHERENCE TO GRANT TERMS AND CONDITIONS
a. The grantee’s signature on the Assistance Agreement signifies the grantee’s agreement to all terms and conditions of the award. Should the grantee believe modification of any of the terms and conditions of this award is necessary, an authorized official of the grantee organization or, in the case of an individual, the grantee, must submit a written request on its own behalf or on behalf of any subgrant recipient or applicant for prior approval of the Contracting Officer/Agreements Officer named in block 26 of the Assistance Agreement. Written requests should be submitted through the DOE Assistance Agreement Administrator. Complete contact information for the Assistance Agreement Administrator is provided on the Continuation Sheet of the Assistance Agreement.
b. Following this procedure is very important because many of the terms and conditions of the Assistance Agreement are required by statute and must be enforced by the Department of Energy.
SBIR/STTR-GTC-0003 DEFINITIONS
a. Contracting Officer/Agreements Officer. This may be any Contracting Officer of the awarding office. The terms, “the Contracting Officer named on the face page of this award,” “the Contracting Office,” “a DOE Contracting Officer,” and “Agreements Officer” refer to this person as well. The address to be used in corresponding with the Contracting Officer/Agreements Officer is that appearing in block 16 of the Assistance Agreement.
b. Grant Administrator/Assistance Agreement Administrator. The individual named as the DOE Assistance Agreement Administrator on the Continuation Sheet of the Assistance Agreement.
c. Principal Investigator. As used herein, the scientist or other programmatic expert named in block 14 of the Assistance Agreement, designated by the grantee organization to direct the scientific/technical efforts being supported.
d. Prior Approval. A written or electronically-transmitted statement from the Contracting Officer/Agreements Officer that a cost may be incurred or an action may be taken. The approval may take the form of a letter, e-mail message, or a modification to the Assistance Agreement. If actions or costs requiring prior approval are specified in the application and are not expressly disapproved by DOE in the attached “Special Terms and Conditions for Use in SBIR/STTR Awards” the award of the grant constitutes such prior approval.
e. Program Manager. The DOE Headquarters line manager in charge of the SBIR/STTR program. The Program Manager’s address is:
U.S. Department of Energy
SC-21.3 / Germantown Building
1000 Independence Avenue, SW
Washington, DC 20585-1290
SBIR/STTR-GTC-0004 GRANTEE SUBMISSIONS INCLUDING PRIOR APPROVAL REQUESTS
All grantee submissions (applications, reports, and requests, including prior approvals) are to be addressed to the Assistance Agreement Administrator except as otherwise specified in writing by an authorized DOE official as determined by the Contracting Officer/Agreements Officer.
All requests for prior approval must be signed by an individual who is authorized to act for the grantee organization. The signature of the principal investigator (unless also a corporate officer or otherwise authorized) is insufficient to obtain action on a prior approval request, although countersignature by the principal investigator is not discouraged. Requests for budget revisions shall be made using the same budget format as used in applying for the grant and must be supported by a narrative justification. Other prior approval requests may be made by letter.
SBIR/STTR-GTC-0005 ALLOWABLE COSTS/APPLICABLE COST PRINCIPLES
a. In accordance with the applicable cost principles cited below, the allowable costs of this grant shall consist of the actual allowable direct costs incident to performance of the project, plus the allocable portion of the allowable indirect costs, if any, of the organization, less applicable credits. The allowable costs shall not exceed the amount shown on the face page of this Assistance Agreement for the total approved budget for the current budget period (Block 13, Funds Obligated this Action).
b. The allowability of costs for work performed under this grant and any subsequent subaward will be determined in accordance with the Federal cost principles applicable to the grantee or subrecipient in effect on the date of award or the date of the subaward, except as modified by other provisions of this grant or the subaward. The grantee or subrecipient shall specify in any cost�2011;reimbursement contract under the grant or subaward the applicable cost principles cited in this provision that apply to the contractor.
c. The Federal cost principles applicable to specific types of grantees, subrecipients, and contractors under grants and subawards are as follows:
(1) Institutions of Higher Education. Office of Management and Budget (OMB) Circular A�2011;21, “Cost Principles for Educational Institutions,” is applicable to both public and private colleges and universities.
(2) State and Local Governments and Indian Tribal Governments. OMB Circular A�2011;87, “Cost Principles for State and Local Governments,” is applicable to State, local, and Indian tribal governments.
(3) Hospitals. Title 45 CFR Part 74, Appendix E, “Principles for Determining Costs Applicable to Research and Development under Grants and Contracts with Hospitals,” applies to nonprofit and for�2011;profit hospitals.
(4) Other Nonprofit Organizations and Individuals. OMB Circular A�2011;122, “Cost Principles for Nonprofit Organizations,” applies to nonprofit organizations and individuals, except for those specifically exempted by the terms of the circular or those nonprofit organizations and individuals covered by the cost principles cited elsewhere in this term.
(5) Commercial Firms and Certain Nonprofit Organizations. Title 48 CFR Subpart 31.2, “Contracts with Commercial Organizations,” as supplemented by 48 CFR Subpart 931.2, applies to those nonprofit organizations not covered by OMB Circular A�2011;122, and to all commercial organizations.
SBIR/STTR-GTC-0006 AUDITS
Recipients that expend $500,000.00 or more in a year under Federal awards are subject to the audit requirements of 10 CFR 600.316, Audits, and are responsible for compliance with those requirements. An electronic version of 10 CFR 600 may be accessed at http://www.gpoaccess.gov/ecfr/. (Once at the website, select “Title 10 – Energy” at the “Browse” dropdown menu, “500-699” under “Browse Parts,” and “600” under “Subchapter H--Assistance Regulations.”)
SBIR/STTR-GTC-0007 PREAWARD COSTS
Recipients may incur preaward costs up to ninety (90) days prior to the effective date of an award. Preaward costs for periods preceding 90 days prior to the effective date of the award are allowable only if approved in writing, prior to incurrence, by a DOE Contracting Officer/Agreements Officer. Any preaward expenditures (including those made after DOE approval) are made at the recipient’s risk and do not impose any obligation on the DOE.
SBIR/STTR-GTC-0008 REPORTING REQUIREMENTS
a. Attached to the Assistance Agreement package is a completed DOE F 4600.2, “Federal Assistance Reporting Checklist and Instructions” which lists the reports required under the grant (see 10 CFR 600.341 for general reporting requirements).
b. Phase I grantees applying for Phase II grant support shall summarize their Phase I results to date in their application. This summary shall be in lieu of a separate, final, Phase I performance report only for grantees receiving a Phase II award. The depth of detail of the summary should be sufficient to allow Phase II grant application reviewers to assess the extent to which the Phase I objectives were achieved. All other Phase I and Phase II grantees (including those who applied for a Phase II award but were not selected) shall prepare a final technical report in accordance with paragraph a., above, upon completion or termination of the project. The final technical report shall be prepared in accordance with the Federal Assistance Reporting Checklist and Instructions attached to the Assistance Agreement package.
c. Instructions concerning reports to be submitted in conjunction with this award will be provided to the grantee at the time of the award.
SBIR/STTR-GTC-0009 EXTENSIONS
Grantee requests for extensions of time on the grant must be submitted for approval to the Contracting Officer/Agreements Officer prior to the expiration date of the budget period to which the extension is to apply, in accordance with 10 CFR 600.381.
SBIR/STTR-GTC-0010 MAXIMUM DEPARTMENTAL OBLIGATION
DOE's maximum obligation to the recipient is the amount shown in block 13, Funds Obligated Total. DOE shall not be obligated to make any additional, supplemental, continuation, renewal or other award for the same or any other purpose.
SBIR/STTR-GTC-0011 PROPERTY
a. Real and Tangible Personal Property
(1) No real property may be acquired under this Assistance Agreement.
(2) Equipment and supplies acquired by the grantee with Federal funds:
Equipment
The grantee shall be accountable for equipment under the grant with a unit acquisition cost of $5,000.00 or more, in accordance with 10 CFR 600.320 – 10 CFR 600.323.
Supplies
Any unused supplies that exceed an aggregate fair market value of $5,000.00 must be accounted for during closeout of the award. The grantee may retain these supplies under the following conditions:
o Supplies are needed for other Federally sponsored projects or programs.
o The grantee compensates DOE for its share for those supplies that are sold or used on non-Federally sponsored activities.
(3) Title to equipment purchased under this Assistance Agreement lies with the government. It may be transferred to the grantee where such transfer would be more cost effective than recovery of the property by the government.
(4) All grantees shall follow property management policies and procedures that provide for adequate control of the acquisition and use of the assets acquired under the grant.
b. Intangible Property
See Terms 26 through 28.
SBIR/STTR-GTC-0012 PRINCIPAL INVESTIGATOR OR DESIGNATED KEY PERSONNEL
a. The principal investigator is named in Block 14 of the Assistance Agreement.
b. Since the DOE decision to fund a project is based, to a significant extent, on the qualifications and level of participation of the principal investigator, a change of principal investigator or of the level of effort of the principal investigator is considered a change in the approved project. There shall be only one principal investigator at any one time during the performance of this grant. Departmental approval must be obtained prior to any change of the principal investigator or, in certain cases, others who have been identified as key personnel. In addition, any absence of the principal investigator or plans for the principal investigator to become substantially less involved in the project than was indicated in the approved grant application requires Departmental approval. The grantee is encouraged to contact DOE immediately upon becoming aware that any of these changes are likely to be proposed, but in any event must do so and receive Departmental approval before effecting any such change.
c. The recipient represents that either it or, if this is a STTR award, the research institution (as defined in the Funding Opportunity Notice) is the source of primary employment of the principal investigator at the time of the award of this grant, and agrees it or, if this is a STTR award, the research institution, will continue to be such during the project period of the grant. Additionally, the principal investigator is expected to devote a considerable part of his or her time to the project, in no case less than three hours (average) per week, for the duration of the project. In the case of an STTR award for which the Research Institution is the source of the principal investigator’s primary employment, the small business must still provide technical control and oversight of the project.
“Primary employment” means that more than one�2011;half of the principal investigator’s time, but no less than 20 hours (average) per week, is spent in the employment of the small business or, if this is a STTR award, the research institution, and that the principal investigator is not employed full time by any other entity.
SBIR/STTR-GTC-0013 CHANGES IN OBJECTIVES OR SCOPE
Any change in the objective or scope of a grant-supported project requires the prior approval of DOE. This includes changes in the phenomenon or phenomena under study and in the methodologies or experiments if they are a specific objective of the research work as stated in the application approved by DOE.
SBIR/STTR-GTC-0014 TRANSFER OF SUBSTANTIVE PROGRAMMATIC EFFORT
None of the substantive effort of the project may be transferred by contract or subgrant to another organization or person without the prior approval of DOE. This provision does not apply to the procurement of equipment, supplies, materials, or general support services; these services may, however, be subject to other prior approval requirements (e.g., those found in the applicable cost principles or procurement standards).
SBIR/STTR-GTC-0015 RESEARCH EFFORT
For both SBIR and STTR, there are requirements on the amount of the funded research or analytical effort that must be performed by the small business. The funded research or analytical effort is defined as the total requested funding minus the cost of any purchased or leased equipment, materials, or supplies (whether purchased by the grantee or a subcontractor). These requirements are:
a. SBIR:
(1) Phase I: A minimum of two-thirds of the funded research or analytical effort must be performed by the grantee; a maximum of one-third of the effort may be performed by consultants or subcontractors.
(2) Phase II: A minimum of one-half of the research and analytical effort of Phase II must be performed by the grantee; up to one-half of the research or analytical effort may be performed by consultants or subcontractors.
b. STTR:
(1) Phase I: A minimum of 40% of the work must be performed by the small business and at least 30% of the work must be performed by the non-profit research institution partner. Such institutions include Federally funded research and development centers, universities, teaching hospitals, and other non-profits. A minimum of 40% of the funding, excluding any purchased or leased equipment, materials, and supplies, must be allocated to the small business; a minimum of 30% of the funding, excluding any purchased or leased equipment, materials, and supplies, must be allocated to the research institution.
(2) Phase II: The same as STTR Phase I.
SBIR/STTR-GTC-0016 FOREIGN TRAVEL
Foreign travel is not normally an appropriate expense for SBIR and STTR projects.
SBIR/STTR-GTC-0017 CONSULTANT SERVICES
Costs of consultant services are allowable in accordance with the applicable cost principles. These principles include the requirement that the consultant not be an employee of the grantee organization; the one exception to this requirement applies to colleges and universities.
SBIR/STTR-GTC-0018 PAPERWORK REDUCTION
a. The award is subject to the requirements of the Paperwork Reduction Act of 1980 as implemented by the Office of Management and Budget rules, “Controlling Paperwork Burdens on the Public” published as 5 CFR 1320 (48 FR 13666, 3-31-83). These requirements apply if the grantee will collect information from ten or more respondents at the specific request of DOE, or if the award requires specific DOE approval of the information collection or the collection procedures.
b. The grantee shall submit any proposed sponsored information collection under paragraph a. of this term to the Contracting Officer/Agreements Officer named on the Assistance Agreement. The proposal shall be submitted at least 120 days prior to the intended date of information collection. DOE will seek the requisite approval from the Office of Management and Budget and will promptly notify the grantee of the disposition of the request.
SBIR/STTR-GTC-0019 GENERALLY APPLICABLE REQUIREMENTS
In accordance with Appendix A to 10 CFR 600 – Generally Applicable Requirements, this grant is subject to a number of statutory and other generally applicable requirements. Those requirements most pertinent to research projects are highlighted below:
a. Research Involving Vertebrate Animals. Any recipient performing research on vertebrate animals shall comply with the Laboratory Animal Welfare Act of 1966, as amended (7 U.S.C. 2131 et seq.), and the regulations promulgated thereunder by the Secretary of Agriculture (9 CFR) pertaining to the care, handling, and treatment of vertebrate animals held or used for research, teaching, or other activities supported by Federal awards. The recipient is expected to ensure that the guidelines described in Department of Health and Human Services (DHHS) Publication No. (NIH) 85-23, “Guide for the Care and Use of Laboratory Animals,” are followed and to comply with the U.S. Government Principles for the Utilization and Care of Vertebrate Animals Used in Testing, Research and Training (included as an Appendix to the NIH Guide).
b. Research Involving Recombinant DNA Molecules. Any grantee performing research involving recombinant DNA molecules and/or organisms and viruses containing recombinant DNA molecules agrees by acceptance of this grant to comply with the National Institutes of Health “Guidelines for Research Involving Recombinant DNA Molecules,” 6�2011;83 (48 FR 24556) or such later revision to those guidelines as may be published in the Federal Register.
c. Use of Human Subjects in Research, Development, and Related Activities. Any DOE grantee performing research, development, or related activities involving human subjects must comply with regulations found at 10 CFR Part 745, “Protection of Human Subjects,” and any additional provisions which may be included in the “Special Terms and Conditions for Use in SBIR/STTR Awards” of the grant. Such provisions are intended to safeguard the rights and welfare of human subjects at risk of possible physical, psychological, or social injury as a consequence of their participation.
SBIR/STTR-GTC-0020 NONDISCRIMINATION
The grant is subject to the provisions of 10 CFR 1040, Nondiscrimination in Federally Assisted Programs.
SBIR/STTR-GTC-0021 PUBLIC ACCESS TO INFORMATION
a. The Freedom of Information Act, as amended, and the DOE implementing regulations (10 CFR 1004), require DOE to release certain documents and records regarding grants to any person who provides a written request. The intended use of the information will not be a criterion for release. These requirements apply to information held by DOE and do not require grantees, their subgrantees, or their contractors to permit public access to their records.
b. Records maintained by DOE with respect to grants are subject to the provisions of the Privacy Act and the DOE implementing regulations (10 CFR 1008) if those records constitute a “system of records” as defined in the Act and the regulations. Generally, records maintained by grantees, their subgrantees, or their contractors are not subject to these requirements.
SBIR/STTR-GTC-0022 SUSPENSION AND TERMINATION
a. Under the provisions of 10 CFR 600.25 and 600.351, DOE may suspend or terminate the award, in whole or in part:
(1) when the grantee has materially failed to comply with the terms and conditions of the award; or
(2) for any reason by mutual agreement between DOE and the grantee upon the request of either party.
b. Normally, DOE action to suspend or terminate an award for cause will be taken only after DOE has informed the grantee of any deficiency on its part and given the grantee an opportunity to correct it. However, DOE may immediately suspend or terminate the award without prior notice when it believes such action is necessary to protect the interests of the Government.
c. No costs incurred during a suspension period or after the effective date of a termination will be allowable, except those costs which, in the opinion of DOE, the grantee could not reasonably avoid or eliminate or which were otherwise authorized by the suspension or termination notice, provided such costs would otherwise be allowable under the terms of the award and the applicable Federal cost principles.
d. Final allowable costs under a termination settlement shall be in accordance with the terms of the award, including this term, and the appropriate Federal cost principles. In no event will the total of payments under a terminated award exceed the amount obligated by DOE or the DOE pro rata share when cost�2011;sharing was required, whichever is less.
e. Within 90 days after the termination of the grant, the grantee shall submit any final financial, performance, and other reports required by the terms and conditions of the award (see 10 CFR 600.341).
f. A notice of termination other than by mutual agreement may be subject to review according to the provisions of 10 CFR 600.22, Disputes and Appeals.
SBIR/STTR-GTC-0023 INTEREST
The requirements of this paragraph are not applicable when the Contracting Officer/Agreements Officer affirmatively determines that its inclusion would not be in the best interests of the Government.
a. Notwithstanding any other term or condition of the grant, all amounts that become payable by the recipient to the Government under the grant shall bear simple interest from the date due until paid unless paid within 30 days of becoming due. The interest rate shall be the interest rate established by the Secretary of the Treasury (Secretary) as provided in Section 11 of the Debt Collection Act of 1982 (31 U.S.C. 3717), 10 CFR 600.363, which is applicable to the period in which the amount becomes due, as provided in paragraph b. below, and then at the rate applicable for each 3�2011;month period as fixed by the Secretary until the amount is paid.
b. Amounts shall be due at the earliest of the following dates:
(1) The date fixed under the grant.
(2) The date of the first written demand for payment consistent with the grant, including any demand resulting from a termination.
(3) The date the Government transmits to the recipient a proposed agreement to confirm completed negotiations establishing the amount of debt.
c. The interest charge made under this provision may be reduced in accordance with the procedures prescribed in 4 CFR 102.13 or in accordance with agency regulations in effect on the date of original award of the grant.
SBIR/STTR-GTC-0024 PATENT RIGHTS
a. Definitions
(1) “Invention” means any invention or discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code (U.S.C.) or any novel variety of plant which is or may be protected under the Plant Variety Protection Act (7 U.S.C. 2321, et seq.).
(2) “Subject Invention” means any invention of the grantee conceived or first actually reduced to practice in the performance of work under this grant, provided that in the case of a variety of plant the date of determination (as defined in section 44(d) of the Plant Variety Protection Act, 7 U.S.C. 2401(d)) must also occur during the period of grant performance.
(3) “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 utilized and that its benefits are, to the extent permitted by law or Government regulations, available to the public on reasonable terms.
(4) “Made” when used in relation to any invention means the conception or first actual reduction to practice of such invention.
(5) “Small Business Firm” means a small business concern as defined in Section 2 of Pub. L. 85-536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration. For the purpose of this clause, the size standard for small business concerns involved in Government procurement and subcontracting, at 13 CFR 121.3�2011;8 and 13 CFR 121.3�2011;12, respectively, will be used.
(6) “Nonprofit Organization” means a university or other institution of higher education or an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c) and exempt from taxation under Section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or educational organization qualified under a state nonprofit organization statute.
(7) “Patent Counsel” means the Department of Energy (DOE) Patent Counsel assisting the DOE contracting activity.
b. Allocation of Principal Rights
(1) The grantee may retain the entire right, title and interest throughout the world to each subject invention subject to the provisions of this clause and 35 U.S.C. 203. With respect to any subject invention in which the grantee retains title, the Federal Government shall have a nonexclusive, nontransferable, irrevocable, paid�2011;up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world.
(2) (Reserved)
c. Invention Disclosure, Election of Title and Filing of Patent Application by Grantee
(1) The grantee will disclose each subject invention to the Patent Counsel within two months after the inventor discloses it in writing to grantee personnel responsible for patent matters. The disclosure to the Patent Counsel shall be in the form of a written report and shall identify the grant under which the invention was made and the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention. The disclosure shall also identify any publication, on sale or public 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 the Patent Counsel, the grantee will promptly notify the Patent Counsel of the acceptance of any manuscript describing the invention for publication or of any on sale or public use planned by the grantee.
(2) The grantee will elect in writing whether or not to retain title to any such invention by notifying the Patent Counsel within two years of disclosure to the Patent Counsel. However, in any case where publication, on sale or public use has initiated the one�2011;year statutory period wherein valid patent protection can still be obtained in the United States, the period for election of title may be shortened by Patent Counsel to a date that is no more than sixty days prior to the end of the statutory period.
(3) The grantee will file its initial patent application on a subject invention to which it elects to retain title within one year after election of title or, if earlier, prior to the end of any statutory period wherein valid patent protection can be obtained in the United States after a publication, on sale, or public use. The grantee will file patent applications in additional countries or international patent offices within either ten months of the corresponding initial patent application or six months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications where such filing has been prohibited by a Secretary Order.
(4) Requests for extension of the time for disclosure to the Patent Counsel, election, and filing, under subparagraphs (1), (2), and (3) may, at the discretion of the Patent Counsel, be granted.
d. Conditions When the Government May Obtain Title
The grantee will convey to the DOE, upon written request, title to any subject invention:
(1) If the grantee fails to disclose or elect title to the subject invention within the times specified in c. above, or elects not to retain title; provided that the DOE may only request title within 60 days after learning of the failure of the grantee to disclose or elect within the specified times;
(2) In those countries in which the grantee fails to file patent applications within the times specified in c. above, provided, however, that if the grantee has filed a patent application in a country after the time specified in c. above prior to its receipt of the written request of the Patent Counsel, the grantee shall continue to retain title in that country; or
(3) In any country in which the grantee decides not to continue the prosecution of any application for, to pay the maintenance fees on, or defend in a reexamination or opposition proceeding, a patent on a subject invention.
e. Minimum Rights to Grantee and Protection of the Grantee Right to File
(1) The grantee will retain a nonexclusive, royalty�2011;free license throughout the world in each subject invention to which the Government obtains title except if the grantee fails to disclose the subject invention within the times specified in c. above. The grantee’s license extends to its domestic subsidiaries and affiliates, if any, within the corporate structure of which the grantee is a part and includes the right to grant sublicenses of the same scope to the extent the grantee was legally obligated to do so at the time the grant was awarded. The license is transferable only with the approval of DOE except when transferred to the successor of the part of the grantee’s business to which the invention pertains.
(2) The grantee's domestic license may be revoked or modified by DOE to the extent necessary to achieve expeditious practical application of the subject invention pursuant to an application for an exclusive license submitted in accordance with applicable provisions at 37 CFR 404 and 10 CFR 781. This license will not be revoked in that field of use or the geographical areas in which the grantee has achieved practical application and continues to make the benefits of the invention reasonably accessible to the public. The license in any foreign country may be revoked or modified at the discretion of DOE to the extent the grantee, its licensees, or its domestic subsidiaries or affiliates have failed to achieve practical application in that foreign country.
(3) Before revocation or modification of the license, DOE will furnish the grantee a written notice of its intention to revoke or modify the license, and the grantee will be allowed thirty days (or such other time as may be authorized by DOE for good cause shown by the grantee) after the notice to show cause why the license should not be revoked or modified. The grantee has the right to appeal, in accordance with 37 CFR 404 and 10 CFR Part 781, any decision concerning the revocation or modification of its license.
f. Grantee Action to Protect the Government’s Interest
(1) The grantee agrees to execute or to have executed and promptly deliver to the Patent Counsel all instruments necessary to:
(a) Establish or confirm the rights the Government has throughout the world in those subject inventions to which the grantee elects to retain title, and
(b) Convey title to DOE when requested under d. above and to enable the Government to obtain patent protection throughout the work in that subject invention.
(2) The grantee agrees to require, by written agreement, its employees, other than clerical and nonclerical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the grantee each subject invention made under this grant in order that the grantee can comply with the disclosure provisions of c. above 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 required by c.(1) above. The grantee 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 United States or foreign statutory bars.
(3) The grantee will notify the Patent Counsel of any decision not to continue prosecution of a patent application, pay maintenance fees, or defend in reexamination or opposition proceeding on a patent, in any country, not less than thirty days before the expiration of the response period required by the relevant patent office.
(4) The grantee agrees to include, within the specification of any United States patent applications and any patent issuing thereon covering a subject invention, the following statement: “This invention was made with Government support under (identify the Assistance Agreement Award No.) awarded by the Department of Energy. The Government has certain rights in this invention.”
(5) The grantee agrees to:
(a) Upon request, provide a report prior to the closeout of the grant listing all subject inventions or stating that there were none;
(b) Provide, upon request, a copy of the patent application, filing date, serial number and title, patent number and issue date for any subject invention in any country in which the grantee has applied for a patent; and
(c) Provide upon request, but not more than annually, listings of all subject inventions which were disclosed to DOE during the applicable reporting period.
g. Contracts and Subgrants under Grants
(1) The grantee will include this clause, suitably modified to identify the parties in all contracts and subgrants under grants regardless of tier for experimental, developmental or research work to be performed. The lower tier recipient will retain all rights provided for the grantee in this clause, and the grantee will not, as part of the consideration for awarding the contract or subgrant, obtain rights in the lower tier recipient’s subject inventions.
(2) In the case of subcontracts, at any tier, DOE, subcontractor, and the Contractor agree that the mutual obligations of the parties created by this clause constitute a contract between the subcontractor and DOE with respect to the matters covered by the clause; provided, however, that nothing in this paragraph is intended to confer any jurisdiction under the Contract Disputes Act in connection with proceedings under paragraph j. of this clause.
h. Reporting on Utilization of Subject Inventions
The grantee agrees to submit on request periodic reports no more frequently than annually on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the grantee 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 grantee, and such other date and information as DOE may reasonably specify. The grantee also agrees to provide additional reports as may be requested by DOE in connection with any march�2011;in�2011;proceeding undertaken by DOE in accordance with paragraph j. of this clause. As required by 35 U.S.C. 202(c)(5), DOE agrees it will not disclose such information to persons outside the Government without permission of the grantee.
i. Preference for United States Industry
Notwithstanding any other provision of this term, the grantee 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 subject invention or produced through the use of the subject invention will be manufactured substantially in the United States. However, in individual cases, the requirement for such an agreement may be waived by DOE upon a showing by the grantee 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.
j. March�2011;in�2011;rights
The grantee agrees that with respect to any subject invention in which it has acquired title, DOE has the right in accordance with the procedures in 37 CFR 401.6 and any supplemental regulations of DOE to require the grantee, an assignee or 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, and if the grantee, assignee, or exclusive licensee refuses such a request, DOE has the right to grant such a license itself if DOE determines that:
(1) Such action is necessary because the grantee 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;
(2) Such action is necessary to alleviate health or safety needs which are not reasonably satisfied by the grantee, assignee, or their licensees;
(3) Such action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the grantee, assignee, or licensee; or
(4) Such action is necessary because the agreement required by paragraph i. 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 such agreement.
k. Special Provisions for Grants with Nonprofit Organizations
If the grantee is a nonprofit organization it agrees that:
(1) Rights to a subject invention in the United States may not be assigned without the approval of DOE, except where such assignment is made to an organization which has as one of its primary functions the management of inventions, provided that such assignee will be subject to the same provisions as the grantee.
(2) The grantee will share royalties collected on a subject invention with the inventor, including Federal employee co�2011;inventors (when DOE deems it appropriate) when the subject invention is assigned in accordance with 35 U.S.C. 202(e) and 37 CFR 401.10.
(3) The balance of any royalties or income earned by the grantee with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, will be utilized for the support of scientific research or education, and
(4) It will make efforts that are reasonable under the circumstances to attract licensees of subject inventions that are small business firms and that it will give a preference to a small business firm when licensing a subject invention if the grantee determines that the small business firm has a plan or proposal for marketing the invention which, if executed, is equally as likely to bring the invention to practical application as any plans or proposals from applicants that are not small business firms; provided that the grantee is also satisfied that the small business firm has the capability and resources to carry out its plan or proposal. The decision whether to give a preference in any specific case will be at the discretion of the grantee. However, the grantee agrees that the Secretary of Commerce may review the grantee’s licensing program and decisions regarding small business applicants, and the grantee will negotiate changes to its licensing policies, procedures, or practices with the Secretary of Commerce when the Secretary of Commerce’s review discloses that the grantee could take reasonable steps to implement more effectively the requirements of this paragraph k.(4).
l. Communications
The DOE central point of contact for communications or matters relating to this clause is the Patent Counsel.
SBIR/STTR-GTC-0025 RIGHTS IN DATA - SBIR/STTR PROGRAM
a. Definitions
“Computer software” as used in this term, means computer programs, computer databases, and documentation thereof.
“Data” as used in this term, means recorded information, regardless of form or the media on which it may be recorded. The "Data" includes technical data and computer software. The "Data" does not include information incidental to grant administration, such as financial, administrative, cost or pricing or management information.
“Form, fit, and function data” as used in this term, means data relating to items, components, or processes that are sufficient to enable physical and functional interchangeability as well as data identifying source, size, configuration, matching, and attachment characteristics, functional characteristics, and performance requirements except that for computer software it means data identifying source, functional characteristics, and performance requirements, but specifically excludes the source code, algorithm, process, formulae, and flow charts of the software.
“Limited rights data” as used in this term, means data (other than computer software) developed at private expense that embody trade secrets or are commercial or financial, and confidential or privileged.
“Restricted computer software” as used in this term, means computer software developed at private expense and that is a trade secret; is commercial or financial, and confidential or privileged; or is published copyrighted computer software; including modifications of such computer software.
“SBIR/STTR data” as used in this term, means data first produced by a grantee that is a small business firm in performance of a small business innovation research grant issued under the authority of 15 U.S.C. 631 (Pub. L. 102-564, Small Business Research and Development Enhancement Act of 1992), which data are not generally known, and which data without obligation to its confidentiality have not been made available to others by the grantee or are not already available to the Government.
“SBIR/STTR rights” as used in this term, means the rights in SBIR/STTR data set forth in the SBIR/STTR Rights Notice of paragraph d. of this term.
“Technical data” as used in this term, means that data which are of a scientific or technical nature.
“Unlimited rights” as used in this term, means the right of the Government to use, disclose, reproduce, prepare derivative works, distribute copies to the public, and perform publicly and display publicly, in any manner and for any purpose whatsoever, and to have or permit others to do so.
b. Allocation of Rights
(1) Except as provided in paragraph c. of this term regarding copyright, the Government shall have unlimited rights in:
(a) Data specifically identified in this grant as data to be delivered without restriction;
(b) Form, fit, and function data delivered under this grant;
(c) Data delivered under this grant (except for restricted computer software) that constitute manuals or instructional and training material for installation, operation, or routine maintenance and repair of items, components, or processes delivered or furnished for use under this grant; and
(d) All other data delivered under this grant unless provided otherwise for SBIR/STTR data in accordance with paragraph d. of this term or for limited rights data or restricted computer software in accordance with paragraph f. of this term.
(2) The grantee shall have the right to:
(a) Protect SBIR/STTR rights in SBIR/STTR data delivered under this grant in the manner and to the extent provided in paragraph d. of this term;
(b) Withhold from delivery those data which are limited rights data or restricted computer software to the extent provided in paragraph f. of this term;
(c) Substantiate use of, add, or correct SBIR/STTR rights of copyright notices and to take other appropriate actions, in accordance with paragraph e. of this term; and
(d) Establish claim to copyright subsisting in data first produced in the performance of this grant to the extent provided in subparagraph c. (1) of this term.
c. Copyrights
(1) Data first produced in the performance of this grant. Except as otherwise specifically provided in this grant, the grantee may establish claim to copyright subsisting in any data first produced in the performance of this grant. If claim to copyright is made, the grantee shall affix the applicable copyright notice of 17 U.S.C. 401 and 402 and acknowledgment of Government sponsorship (including grant number) to the data when such data are delivered to the Government, as well as when the data are published or deposited for registration as published work in the U.S. Copyright Office. For data other than computer software, the grantee grants to the Government and others acting on its behalf, a paid�2011;up nonexclusive, irrevocable worldwide license to reproduce, prepare derivative works, distribute copies to the public, and perform publicly and display publicly, by or on behalf of the Government for all such data. For computer software, the grantee grants to the Government, and others acting on its behalf, a paid�2011;up nonexclusive, irrevocable worldwide license for all such computer software to reproduce, prepare derivative works, and perform publicly and display publicly, by or on behalf of the Government.
(2) Data not first produced in the performance of this grant. The grantee shall not, without prior written permission of the Contracting Officer/Agreements Officer, incorporate in data delivered under this grant; and that contain the copyright notice of 17 U.S.C. 401 and 402, unless the grantee identifies such data and grants to the Government, or acquires on its behalf, a license of the same scope as set forth in subparagraph c. (1) of this term.
(3) Removal of copyright notices. The Government agrees not to remove any copyright notices placed on data pursuant to this paragraph c., and to include such notices on all reproductions of the data.
d. Rights to SBIR/STTR Data
(1) The grantee is authorized to affix the following SBIR/STTR Rights Notice to SBIR/STTR data delivered under this grant and the Government will thereafter treat the data, subject to the provisions of paragraphs e. and f. of this term, in accordance with such Notice:
SBIR/STTR RIGHTS NOTICE
These SBIR/STTR data are furnished with SBIR/STTR rights under Grant No.___________ (and subcontract ______________ if appropriate). For a period of four (4) years after acceptance of all items to be delivered under this grant, the Government agrees to use these data for Government purposes only, and they shall not be disclosed outside the Government (including disclosure for procurement purposes) during such period without permission of the grantee, except that, subject to the foregoing use and disclosure prohibitions, such data may be disclosed for use by support contractors. After the aforesaid four�2011;year period, the Government has a royalty�2011;free license to use, and to authorize others to use on its behalf, these data for Government purposes, but is relieved of all disclosure prohibitions and assumes no liability for unauthorized use of these data by third parties. This Notice shall be affixed to any reproductions of these data in whole or in part.
(End of Notice)
(2) The Government’s sole obligation with respect to any SBIR/STTR data shall be as set forth in this paragraph d.
e. Omitted or Incorrect Marking
(1) Data delivered to the Government without any notice authorized by paragraph d. of this term, and without a copyright notice, shall be deemed to have been furnished with unlimited rights, and the Government assumes no liability for the disclosure, use, or reproduction of such data. However, to the extent the data have not been disclosed without restriction outside the Government, the grantee may request within six months (or a longer time approved by the Contracting Officer/Agreements Officer for good cause shown) after delivery of such data, permission to have notices placed on qualifying data at the grantee’s expense, and the Contracting Officer/Agreements Officer may agree to do so if the grantee:
(a) Identifies the data to which the omitted notice is to be applied;
(b) Demonstrates that the omission of the notice was inadvertent;
(c) Establishes that the use of the proposed notice is authorized; and
(d) Acknowledges that the Government has no liability with respect to the disclosure or use of any such data made prior to the addition of the notice or resulting from the omission of the notice.
(2) The Contracting Officer/Agreements Officer may also:
(a) Permit correction, at the grantee's expense, of incorrect notices if the grantee identifies the data on which correction of the notice is to be made and demonstrates that the correct notice is authorized; or
(b) Correct any incorrect notices.
f. Protection of Limited Rights Data
When data other than that listed in subdivisions b.(1)(a), (b), and (c) of this term are specified to be delivered under this grant and such data qualify as either limited rights data or restricted computer software, the grantee, if the grantee desires to continue protection of such data, shall withhold such data and not furnish them to the Government under this grant. As a condition to this withholding the grantee shall identify the data being withheld and furnish form, fit, and function data in lieu thereof.
g. Contracts and Subgrants under the Grant
The grantee has the responsibility to obtain from its contractors and subgrantees all data and rights therein necessary to fulfill the grantee's obligations to the Government under this grant. If a contractor or subgrantee refuses to accept terms affording the Government such rights, the grantee shall promptly bring such refusal to the attention of the Contracting Officer/Agreements Officer and not proceed with contract or subgrant award without further authorization.
h. Relationship to Patents
Nothing contained in this term shall imply a license to the Government under any patent or be construed as affecting the scope of any license or other right otherwise granted to the Government.
SBIR/STTR-GTC-0026 RIGHTS TO APPLICATION DATA
Except for data contained on pages _NONE_, it is agreed that as a condition of award of this grant, and notwithstanding the conditions of any notice appearing thereon, the Government shall have unlimited rights (as defined in the “Rights in Data – SBIR/STTR Program” term contained in this grant) in and to the technical data contained in the application dated _11/17/2008_, upon which this grant is based.
SBIR/STTR-GTC-0027 OTHER RESEARCH SUPPORT
a. The recipient represents that it has disclosed to the Contracting Officer/Agreements Officer any applications made or contemplated at the time of award of this grant to be made by it to any public or private entity for performance of the same or similar work.
b. The recipient agrees to inform the Contracting Officer/Agreements Officer of any application submitted to any public or private entity for the same or essentially the same project throughout the period of performance of this award.
c. The recipient further agrees that it has not accepted and will not be a party to any contractual arrangement for the duration of this project for the same or essentially the same work as contemplated by this award.
d. Failure of the recipient to adhere to paragraphs a., b., and c. above shall constitute a basis for a determination of noncompliance under 10 CFR 600.24.
SBIR/STTR-GTC-0028 NOTIFICATION OF DELAY
If the recipient will not complete the project or complete the project within the established time frame, the Contracting Officer/Agreements Officer should be notified as soon as that circumstance becomes apparent.
SBIR/STTR-GTC-0029 FEE
SBIR/STTR recipients may be paid a fee or profit.
SBIR/STTR-GTC-0030 PAYMENT
See 10 CFR 600.312, Payment.
SBIR/STTR-GTC-0031 AMERICAN-MADE EQUIPMENT AND PRODUCTS
Notwithstanding any provisions of the “Special Terms and Conditions for Use in SBI/STTR Awards”, to the extent possible in keeping with the overall purposes of the program, only American-made equipment and products should be purchased with financial assistance provided under both Phase I and Phase II awards.
GENERAL TERMS AND CONDITIONS APPLICABLE TO PHASE I ONLY
SBIR/STTR-GTC-0032 FIXED OBLIGATION
a. Awards will be made on a "fixed obligation" basis in accordance with 10 CFR 600.381(b).
b. The Contracting Officer/Agreements Officer may approve lump-sum payments in circumstances deemed appropriate by DOE. If a lump�2011;sum payment is made, such payment is subject to the condition that the recipient will return to the DOE amounts remaining unexpended at the end of the project if those amounts exceed $500.00 in accordance with 10 CFR 600.381(b)5.
SBIR/STTR-GTC-0033 PREAWARD COSTS
Preaward expenditure approval as stated in the term entitled, “Preaward Costs” of these General Terms and Conditions, is not required for Phase I awards.
GENERAL TERMS AND CONDITIONS APPLICABLE TO PHASE II ONLY
SBIR/STTR-GTC-0034 REPORTING NON�2011;FEDERAL SUPPORT
The recipient agrees to provide the SBIR Program Manager an annual report during Phase II and for five years after completion of this project detailing the sources and amounts of non�2011;Federal funding used to continue support or commercialization of the research funded under this award.
