A. Title to Subject Inventions
Ownership of subject inventions is governed pursuant to the authorities listed below. Typically, either by operation of law or under the authority of a patent waiver, Prime Recipients and Subrecipients may elect to retain title to their subject inventions under ARPA-E funding agreements.
- Domestic Small Businesses, Educational Institutions, and Nonprofits: Under the Bayh-Dole Act (35 U.S.C. § 200 et seq.), domestic small businesses, educational institutions, and nonprofits may elect to retain title to their subject inventions. If they elect to retain title, they must file a patent application in a timely fashion.
- All other parties: The Federal Non-Nuclear Energy Research and Development Act of 1974, 42. U.S.C. 5908, provides that the Government obtains title to new inventions unless a waiver is granted (see below).
- Class Waiver: Under 42 U.S.C. § 5908, title to subject inventions vests in the U.S. Government and large businesses and foreign entities do not have the automatic right to elect to retain title to subject inventions. However, ARPA-E typically issues “class patent waivers” under which large businesses and foreign entities that meet certain stated requirements, such as cost sharing of at least 20%, may elect to retain title to their subject inventions. If a large business or foreign entity elects to retain title to its subject invention, it must file a patent application in a timely fashion. If the class waiver does not apply, a party may request a waiver in accordance with 10 C.F.R. §784.
- GOGOs are subject to the requirements of 37 C.F.R. Part 501.
- Determination of Exceptional Circumstances (DEC): DOE has determined that exceptional circumstances exist that warrant the modification of the standard patent rights clause for small businesses and non-profit awardees under Bayh-Dole to maximize the manufacture of technologies supported by ARPA-E awards in the United States. The DEC, including a right of appeal, is dated September 9, 2013 and is available at the following link: https://www.energy.gov/gc/downloads/determination-exceptional-circumstances-under-bayh-dole-act-energy-efficiency-renewable. Please see Section IV.D.7 and VI.B.8 for more information on U.S. Manufacturing Requirements.
B. Government Rights in Subject Inventions
Where Prime Recipients and Subrecipients retain title to subject inventions, the U.S. Government retains certain rights.
1. Government Use License
The U.S. Government retains a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world. This license extends to contractors doing work on behalf of the Government.
2. March-In Rights
The U.S. Government retains march-in rights with respect to all subject inventions. Through “march-in rights,” the Government may require a Prime Recipient or Subrecipient who has elected to retain title to a subject invention (or their assignees or exclusive licensees), to grant a license for use of the invention. In addition, the Government may grant licenses for use of the subject invention when Prime Recipients, Subrecipients, or their assignees and exclusive licensees refuse to do so.
The U.S. Government may exercise its march-in rights if it determines that such action is necessary under any of the four following conditions:
- The owner or licensee has not taken or is not expected to take effective steps to achieve practical application of the invention within a reasonable time;
- The owner or licensee has not taken action to alleviate health or safety needs in a reasonably satisfactory manner;
- The owner has not met public use requirements specified by Federal statutes in a reasonably satisfactory manner; or
- The U.S. Manufacturing requirement has not been met.
C. Rights in Technical Data
Data rights differ based on whether data is first produced under an award or instead was developed at private expense outside the award.
- Background or “Limited Rights Data”: The U.S. Government will not normally require delivery of technical data developed solely at private expense prior to issuance of an award, except as necessary to monitor technical progress and evaluate the potential of proposed technologies to reach specific technical and cost metrics.
- Generated Data: The U.S. Government normally retains very broad rights in technical data produced under Government financial assistance awards, including the right to distribute to the public. However, pursuant to special statutory authority, certain categories of data generated under ARPA-E awards may be protected from public disclosure for up to five years in accordance with provisions that will be set forth in the award. In addition, invention disclosures may be protected from public disclosure for a reasonable time in order to allow for filing a patent application.
D. Protected Personally Identifiable Information
Applicants may not include any Protected Personally Identifiable Information (Protected PII) in their submissions to ARPA-E. Protected PII is defined as data that, if compromised, could cause harm to an individual such as identity theft. Listed below are examples of Protected PII that Applicants must not include in their submissions.
- Social Security Numbers in any form;
- Place of Birth associated with an individual;
- Date of Birth associated with an individual;
- Mother’s maiden name associated with an individual;
- Biometric record associated with an individual;
- Iris scan;
- Medical history information associated with an individual;
- Medical conditions, including history of disease;
- Metric information, e.g. weight, height, blood pressure;
- Criminal history associated with an individual;
- Disciplinary actions;
- Performance elements and standards (or work expectations) are PII when they are so intertwined with performance appraisals that their disclosure would reveal an individual’s performance appraisal;
- Financial information associated with an individual;
- Credit card numbers;
- Bank account numbers; and
- Security clearance history or related information (not including actual clearances held).
E. FOAs and FOA Modifications
FOAs are posted on ARPA-E eXCHANGE (https://arpa-e-foa.energy.gov/), Grants.gov (https://www.grants.gov/), and FedConnect (https://www.fedconnect.net/FedConnect/). Any modifications to the FOA are also posted to these websites. You can receive an e-mail when a modification is posted by registering with FedConnect as an interested party for this FOA. It is recommended that you register as soon as possible after release of the FOA to ensure that you receive timely notice of any modifications or other announcements. More information is available at https://www.fedconnect.net.
F. Obligation of Public Funds
The Contracting Officer is the only individual who can make awards on behalf of ARPA-E or obligate ARPA-E to the expenditure of public funds. A commitment or obligation by any individual other than the Contracting Officer, either explicit or implied, is invalid.
ARPA-E awards may not be transferred, assigned, or assumed without the prior written consent of a Contracting Officer.
G. Requirement for Full And Complete Disclosure
Applicants are required to make a full and complete disclosure of the information requested in the Business Assurances & Disclosures Form. Disclosure of the requested information is mandatory. Any failure to make a full and complete disclosure of the requested information may result in:
- The rejection of a Concept Paper, Full Application, and/or Reply to Reviewer Comments;
- The termination of award negotiations;
- The modification, suspension, and/or termination of a funding agreement;
- The initiation of debarment proceedings, debarment, and/or a declaration of ineligibility for receipt of Federal contracts, subcontracts, and financial assistance and benefits; and
- Civil and/or criminal penalties.
H. Retention of Submissions
ARPA-E expects to retain copies of all Concept Papers, Full Applications, Replies to Reviewer Comments, and other submissions. No submissions will be returned. By applying to ARPA-E for funding, Applicants consent to ARPA-E’s retention of their submissions.
I. Marking of Confidential Information
ARPA-E will use data and other information contained in Concept Papers, Full Applications, and Replies to Reviewer Comments strictly for evaluation purposes.
Concept Papers, Full Applications, Replies to Reviewer Comments, and other submissions containing confidential, proprietary, or privileged information must be marked as described below. Failure to comply with these marking requirements may result in the disclosure of the unmarked information under the Freedom of Information Act or otherwise. The U.S. Government is not liable for the disclosure or use of unmarked information, and may use or disclose such information for any purpose.
The cover sheet of the Concept Paper, Full Application, Reply to Reviewer Comments, or other submission must be marked as follows and identify the specific pages containing confidential, proprietary, or privileged information:
Notice of Restriction on Disclosure and Use of Data:
Pages [___] of this document may contain confidential, proprietary, or privileged information that is exempt from public disclosure. Such information shall be used or disclosed only for evaluation purposes or in accordance with a financial assistance or loan agreement between the submitter and the Government. The Government may use or disclose any information that is not appropriately marked or otherwise restricted, regardless of source.
The header and footer of every page that contains confidential, proprietary, or privileged information must be marked as follows: “Contains Confidential, Proprietary, or Privileged Information Exempt from Public Disclosure.” In addition, every line and paragraph containing proprietary, privileged, or trade secret information must be clearly marked with double brackets or highlighting.
J. Compliance Audit Requirement
A prime recipient organized as a for-profit entity expending $750,000 or more of DOE funds in the entity’s fiscal year (including funds expended as a Subrecipient) must have an annual compliance audit performed at the completion of its fiscal year. For additional information, refer to Subpart F of: (i) 2 C.F.R. Part 200, and (ii) 2 C.F.R. Part 910.
If an educational institution, non-profit organization, or state/local government is either a Prime Recipient or a Subrecipient, and has expended $750,000 or more of Federal funds in the entity’s fiscal year, the entity must have an annual compliance audit performed at the completion of its fiscal year. For additional information refer to Subpart F of 2 C.F.R. Part 200.