Legal Collections Package

DOE F 482.2
(05/18)

OMB Control No. 1910-0800
Expiration Date: XX/XX/XXXX

UNITED STATES DEPARTMENT OF ENERGY

PETITION FOR ADVANCE WAIVER OF PATENT
RIGHTS UNDER 10 C.F.R. PART 784
DOE WAIVER NO. __________
(To be supplied by DOE)

Notice: If you need help in completing this form, contact the DOE Patent Counsel assisting the
activity that is issuing your award or the Assistant General Counsel for Technology Transfer and
Intellectual Property in the Office of General Counsel in DOE Headquarters. Unless exceptional
circumstances have been determined to exist, parties which qualify as Bayh-Dole entities under 35
U.S.C. 201 (h) or (i). are not required to petition for title. Rather, their agreement with DOE will
automatically allow them to elect to retain title to inventions they make.

Title of Contract or Proposal ______________________________________________________

Number of Contract or Proposal____________________________________________________

(Name and Address of Petitioner)
does hereby petition the Secretary of the U.S. Department of Energy for waiver of patent rights of
the United States of America to any invention(s) that may be made in the performance of work
under the above-identified contract. It is understood that any waiver of rights shall be subject to the
Government license, march-in rights and preference for U.S. Industry set forth in 35 U.S.C. 202,
203 and 204, as well as other provisions that may be required in accordance with 10 C.F.R.
784.4(n), regardless of whether the Petitioner is a small business or nonprofit organization.
In support of this petition, answers to the following questions are submitted as an appendix hereto:
1
Identify the specific rights which the Petitioner desires to obtain (field of use, geographic
area, exclusivity, term, etc.)

DOE F 482.2
(05/18)

OMB Control No. 1910-0800
Expiration Date: XX/XX/XXXX

2
Give a brief description of the scope of work of the above contract. Specifically, describe the
source of funding and the name of the cognizant DOE program director.
3

What is the dollar amount and period of performance of this contract?

4
To what extent is the work to be performed under the above identified contract useful in the
production or utilization of special nuclear material or atomic energy?
5
Briefly describe Petitioner’s technical competence in the field of technology covered by the
scope of work of this contract in terms of prior experience, know-how and patent position. (Attach
exhibits to substantiate Petitioner’s technical competence, e.g., patents, technical publications, etc. If
these are voluminous a representative sample is sufficient.)
6
Briefly describe the Petitioner’s established non-Governmental commercial position in the
field covered by the scope of work of the above contract. (Discuss in terms of selling goods or
providing services in such field outside of sales to the U.S. Government. Identify the proportion of
sales to the Government. Attach exhibits to substantiate your commercial position, e.g., sales
brochures, etc. If these are voluminous, a representative sample is sufficient.)
7
What is the financial and technological investment that has been made by Petitioner directly
related to the work to be performed under this contract?
8
To what extent will the Petitioner make a substantial investment of financial resources or
technology which will directly assist and promote further development of the work to be performed
under the contract?
9
Why will the grant of the above-requested waiver more effectively promote the development
and commercial utilization of any invention made under this contract? Specifically, identify any
potential licensees or joint ventures interested in further development and commercialization of the
work to be performed under the contract. If such commercialization is to be performed by licensee,
summarize the licensee’s plans and intentions to effect such commercialization.
10
What will be the effect on competition and market concentration if the above-requested
waiver is granted? Describe any competitive technologies or other factors which would reduce any
anticompetitive effects of granting the waiver. Would the acquisition of the waiver rights requested
be likely to place the Petitioner in a preferred or dominant position in this field? Give reasons for
your conclusions.
11
Under what other contracts has the Petitioner worked or what other contracts has the
Petitioner had with any Branch or Agency of the U.S. Government which include all or a part of the
scope of work covered by this contract?
12
Is the Petitioner aware of any governmental regulations which require or which might require
the use of the contract subject matter by the general public or a segment thereof? (If yes, explain.)

DOE F 482.2
(05/18)

OMB Control No. 1910-0800
Expiration Date: XX/XX/XXXX

13
Does the work under the contract require an exploration into the fields which concern the
public health, safety or welfare (for example, the development of drugs, medical or safety
instruments, anti-pollution devices or such other products that may have a bearing on health, safety
or welfare of the general public)? (If yes, explain.)
14
If the work is under a contract or subcontract of the Naval Nuclear Propulsion Program or the
weapons programs or other atomic energy defense activities of the Department of Energy, the
considerations of paragraph (b) of Section 3131 of the 1987 Defense Authorization Act shall be
addressed. These are as follows:


(a)
whether national security will be compromised;


(b)
whether sensitive technical information (whether classified or unclassified) under the
Naval Nuclear Propulsion Program or the nuclear weapons programs or other atomic energy defense
activities of the Department of Energy for which dissemination is controlled under Federal statutes
and regulations will be released to unauthorized persons;


(c)
whether an organizational conflict of interest contemplated by Federal statutes and
regulations will result; and


(d)
whether waiving such rights will adversely affect the operation of the Naval Nuclear
Propulsion Program or the nuclear weapons programs or other atomic energy defense activities of
the Department of Energy.
15
(a) Have you within the past 6 months assigned or conveyed an interest to a party other than
DOE in any patent or patent application covering a subject of the work to be performed under the
contract or entered into negotiations concerning such assignment or conveyance? (b) Do you plan to
do so prior to contracting? (If yes, give details.)
16
If this Petition is not being submitted within the time frames specified in 10 C.F.R. 784.8(b),
and if the period for submission has not already been extended by the Patent Counsel for good cause
shown in writing, provide a statement of the reasons why the Petition was not timely filed.
17
State below the name, address, and telephone number of the person to whom correspondence
is to be directed.

18
Is the Petitioner a small business or nonprofit organization not eligible to elect title to subject
inventions under the provisions of 35 U.S.C. 200 et seq.?
19
Give any other facts that Petitioner believes will establish that the interests of the United
States and the general public will best be served by the granting of this waiver. Sufficient
information is required so that the Secretary can consider specifically each of the areas and
objectives covered in subsections (c) and (d) of 42 U.S.C. 5908.

DOE F 482.2
(05/18)

OMB Control No. 1910-0800
Expiration Date: XX/XX/XXXX

The facts set forth in this request for waiver are within the knowledge of the requestor and are
submitted with the intention that the Secretary or his designee rely on them in reaching the
waiver determination.
Respectfully submitted,

(Signature)

Printed name and title of authorized representative

Date submitted to DOE

(An executed original of this document must be submitted to DOE or its Contractor.)

Public reporting burden for this collection of information is estimated to average 7.7 hours per response, including the time for reviewing
instructions, searching existing data sources, gathering and maintaining the data needed, and completing and reviewing the collection of
information. Send comments regarding this burden estimate or any other aspect of this collection of information, including suggestions
for reducing this burden, to Office of the Chief Information Officer, Records Management Division, IM-23, Paperwork Reduction Project
OMB control number 1910-0800, U.S. Department of Energy, 1000 Independence Ave SW, Washington, DC, 20585-1290; and to the
Office of Management and Budget (OMB), OIRA, Paperwork Reduction Project OMB control number 1910-0800, Washington, DC
20503.