MIL-HDBK-115B(ARMY) APPENDIX B
B.2.1.5.1 Example: Assume a patent "O" is granted to an inventor for a
combination of steps or means for performing a specified function illustrated as means: 1 +
2 + 3. A second patent "P" is issued subsequently, which provides an improvement over "O." The "P" patent claim contains the following means: 1 + 2 + 3 + 4. If the making, using, or selling of the items embodying patent "P" infringes patent "O," the owner of patent "O" may enjoin the owner of patent "P" from making, using, or selling the "P" invention. While patentee "P" would own his invention, he could not use his invention without permission from patentee "O." In these circumstances, if patentee "O" desired to license his invention to "P" it would not be logical to grant "P" the right to make, use, or sell the invention, e.g., the right "to practice" the invention. Rather, the license would more correctly contain an agreement by "O" not to sue if "P" made, used, or sold the "P" invention.
B.2.1.5.2 Patent vs technical data. What if data is stamped "Patented"? Patent legends and restrictive-use legends are treated differently. A patent excludes other parties from making an inventor's items for 17 years. There is complete disclosure of the invention when the patent is filed with the US Patent/Trademark office. If a patented
invention is used by the Government without the inventor's authorization, the only remedy for the inventor is compensation for the use of the patented item (money damage). Title 28 of the U.S. Code, Section 1498 (a), allows the Government to infringe a patent. The patent owner cannot stop the Government from its use, nor can the patent owner stop a Government contractor from using the invention if the Government authorized it. By such authorization, the Government is responsible for whatever reasonable compensation has to be made.
B. 2.1.5.3 Example of authorization clause. The type of "Authorization and Consent" clause incorporated in a contract will depend on the type of contract. The following clause is incorporated in contracts calling for experimental, developmental, or research work or in supply or service contracts where research and development is the primary purpose of the contract:
AUTHORIZATION AND CONSENT (date)
(a) The Government authorizes and consents to all use and manufacture of any invention described in and covered by a United States patent in the performance of this contract or any subcontract at any tier.
(b) The Contractor agrees to include, and require inclusion of, this clause, suitably modified to indemnify the parties, in all subcontracts at any tier for supplies or services (including construction, architect-engineer services, and materials, supplies, models, samples, and design or testing services) expected to exceed $25,000; however, omission of this clause from any subcontract, under or over $25,000, does not affect this authorization and consent.
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