PATENT, ROYALTY, AND COPYRIGHT MATTERS ARISING UNDER PROCUREMENT CONTRACTS

• Document Type: CREST
• Collection: General CIA Records
• Document Number (FOIA) /ESDN (CREST): CIA-RDP62-00631R000200010030-7
• Release Decision: RIPPUB
• Original Classification: K
• Document Page Count: 4
• Document Creation Date: December 16, 2016
• Document Release Date: May 3, 2005
• Sequence Number: 30
• Publication Date: December 2, 1955
• Content Type: MEMO

STANDARD FORM .Approved For Release 2005/06/29 : CIA-RDP62-00631 R000200010030-7
Office Memorandum -UNITED STATES GOVERNMENT
DATE: t,
SUBJECT: Patent, Royalty, and Copyright Matters Arising under Procurement
Contracts
TO : General Counsel
FROM : Director of Logistics
1. Pursuant to the Central Intelligence Agency Act of 19+9
and implementing the Procurement Division
of this Office utilizes the Armed Services Procurement Regulation
as a guide for the procurement of supplies and services. In
accordance with this policy contracts issued by the Procurement
Division generally include patent, royalty, and copyright clauses
prescribed by the Armed Services Procurement Regulation.
2. The use of the patent clause results in the acquisition
by the Government of royalty-free licenses and other patent rights
while the royalty clause results in the imposition of certain
duties on the Government with respect to the determination of the
propriety of royalty charges. It is considered that the most
important of the actions arising from these clauses are:
a. Legal review of royalty-free licenses furnished by
contractors and filing thereof with U. S. Patent
Office.
b. Preparation and filing with U. S. Patent Office of
patent applications on behalf of the Government.
c. Determination of whether the Government has a prior
patent right which will eliminate a royalty charge.
d. Determination of whether a royalty rate is excessive.
3. These actions are considered of a legal nature appropriately
within the purview of the General Counsel. They are so treated by
the Department of Defense wherein the responsibility for such actions
rests with the Patent Counsel, Office of Naval Research for the
Department of the Navy, the Chief, Patents Division, Office of Judge
Advocate General for the Department of the Army and the Chief, Patent
and Royalties Division, Office of the Staff Judge Advocate, Department
of the Air Force.
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OL 5-6663
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SUBJECT: Patent, Royalty, and Copyright Matters Arising under Procurement
Contracts
4+. In addition to the foregoing there are two related areas in
which action by the General Counsel would be beneficial to this Office.
The first of these areas concerns the reasonableness of attorney fees
for patent work charged by Agency contractors and included in the cost
of performing the contract. The review by General Counsel of the scope
and usefulness of the services performed and recommendation as to
reasonableness of such attorney fees would assist in the orderly prosecu-
tion of the work of this Office. From this it is the opinion of this
Office that potentially thousands of dollars would be saved by the
Agency each year. The second area in which action by the General Counsel
would be appropriate involves the review of many contracts completed in
the past to determine whether or not all patent rights to which the
Government is entitled have been reviewed and patent licenses processed.
5. Since the General Counsel is in an analogous position in this
Agency to patent counsel in the various military departments, it appears
that similar matters, particularly those set forth in paragraph 2, above,
should be under your administration. Further, your assumption of action
with respect to the related areas explained in paragraph 4 would
materially assist and benefit this Office. Since basic documents will
flow from contractors through the Procurement Division, it is recommended
that your Office establish procedures for their processing. This Office
will be glad to assist wherever possible.
ST
1 - Procurement Division/OL
1 - Contract Branch/PD/OL (Official)
Distribution:
Orig. & 1 - Addressee
1 - OL Files
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 a. It is believed that the number and amount of our Research
and Development contracts will increase in the future.
b. The Research and Develosent work that we will carry on
will generally be in the field of electronics and will include
ceem:sunicatione, electronic intercept equipment, infrared, and
ultra violet. It is not believed that there will be an appreciable
number of inventions made in the course of this work. However,
it is possible that there will be some inventions made and some
of them of themselves should be placed in a classified category,
a. It is our understanding that there already exists within
the Agency a procedure for handling inventions worked out by
Agency personnel and that as tar as contractors are concerned a
requirement is placed in the contract for the contractors to take
necessary steps to protect patentable items developed in the course
of the work under the contractor.
d. The Office of Communications does not at present have any
arrangements where it can review patent applications in the field
in which it is interested, but it would. welcome the establisbment
of a method whereby such patents could be reviewed. The desire to
review the patents is two-fold. Where appropriate action can be
initiated to place patents under a secrecy status and equally
important, an opportunity will be afforded this office to keep
abreast of new developments disclosed in patent applications.
ST
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Chiesf, Procurement Divieton/OL
Chief, Engineering Division/CC
Classified Inventions
17
REF: Memorandum Dated 2 May 1956 from Chief, Procurement Division/OL
to Director of Communications, Subject, Classified Inventions
1. In reply to the referenced memorandum, the following information
is supplied for your guidance:
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