DOE F 482.2 Petition For Advance Waiver Of Patent Rights

DOE F 482.2
(08/2021)
All other versions are obsolete

U.S. DEPARTMENT OF ENERGY
PETITION FOR ADVANCE WAIVER OF PATENT
RIGHTS UNDER 10 C.F.R. PART 784

OMB Control No. 1910-0800
Exp. Date:

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. Please visit https://www.energy.gov/
gc/leadership/contact-us/contacts-assistant-general-counsel-technologytransfer-and-procurement for a
list of DOE Patent Counsel and contact information. 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: _________________________________________________________
DOE Contract or Proposal No: ________________________________________________________
Name and Address of Petitioner: ______________________________________________________
______________________________________________________
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,
regardless of whether the Petitioner is a small business or nonprofit organization.
Patent Rights-Waiver Clause Including U.S. Competitiveness
Petitioner understands that the Patent Rights-Waiver Clause including the U.S. Competitiveness
provision, paragraph (t), will be inserted into the identified contract in place of the standard Patent RightsAcquisition by the Government Clause. The Patent Rights-Waiver Clause can be found at:
https://www.energy.gov/sites/prod/files/gcprod/documents/patwaivclau.pdf.
(Check the box below if you accept the terms and conditions of the above-identified patent waiver clause)

☐
✔

Petitioner agrees to the terms and conditions of the above-identified Patent Rights-Waiver Clause,
including the U.S. Competitiveness provision.

If Petitioner has comments or objections to the U.S. Competitiveness provision, paragraph (t) of the Patent
Rights-Waiver Clause, Petitioner should provide a detailed explanation of such comments or objections
in an attachment to this Petition.

DOE F 482.2
(08/2021)

Section 508 Compliant

DOE F 482.2
(08/2021)
All other versions are obsolete

OMB Control No. 1910-0800
Exp. Date:

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.)
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.

DOE F 482.2
(08/2021)

Page 2 of 4

Section 508 Compliant

DOE F 482.2
(08/2021)
All other versions are obsolete

OMB Control No. 1910-0800
Exp. Date:

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.)
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, antipollution 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.
DOE F 482.2
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Section 508 Compliant

DOE F 482.2
(08/2021)
All other versions are obsolete

OMB Control No. 1910-0800
Exp. Date:

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.
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,

________________________________________
(Digital 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.)

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Management and Budget (OMB), OIRA, Paperwork Reduction Project OMB control number 1910-0800, Washington, DC
20503.

DOE F 482.2
(08/2021)

Page 4 of 4

Section 508 Compliant