INTERCHANGE OF PATENT RIGHTS, INFORMATION, INVENTIONS, DESIGNS, OR PROCESSES Agreement signed at Washington March 27, 1946 Entered into force March 27, 1946; operative from January 1, 1942 60 Stat. 1566; Treaties and Other International Acts Series 1510 Whereas there was signed and sealed at Washington on the twenty-fourth day of August 1942, for the Government of the United States of America and for the Government of the United Kingdom of Great Britain and Northern Ireland, in further fulfillment of the policy set forth in their Agreement of February 23, 1942 on the principles applying to mutual aid in the prosecution of the war against aggression,' an Agreement deemed to have been in effect and operation as from January 1, 1942 concerning the interchange of patent rights, information, inventions, designs, or processes; 2 and Whereas it is desirable to amend the said Agreement of August 24, 1942 in certain particulars; Now, therefore, it is agreed by the Government of the United States of America and the Government of the United Kingdom of Great Britain and Northern Ireland that the said Agreement of August 24, 1942 shall be and is hereby amended to read as follows: ARTICLE I (a) Each Government, in so far as it may lawfully do so, will procure and make available to the other Government, for use in war production, patent rights, information, inventions, designs, or processes requested by the other Government. In the case of the United States of America, the law authorizing such procurement and transfer is now the Act of the Congress of the United States approved March 11, 1941 (Public 11, 77th Congress), as amended. Each Government will bear the cost of the procurement of such 1EAS 241, ante, p. 603. EAS 268, ante, p. 611. 355 Stat. 31. patent rights, information, inventions, designs, or processes from its own nationals. (b) In this Agreement the term "nationals" in relation to the United States of America shall mean all natural persons who on May 8, 1945 were exclusively citizens of the United States of America, all corporations, partnerships, and associations organized under the laws of the United States of America, its territories, the several States, or the District of Columbia, and all natural persons domiciled or resident in the United States of America on May 8, 1945, as well as the Government of the United States of America and all of its agencies, but the term "nationals" in relation to the United States of America shali not include natural persons who were on May 8, 1945 exclusively subjects of the United Kingdom even though they were domiciled or resident in the United States of America on that date. In this Agreement the term "nationals" in relation to the United Kingdom shall mean all natural persons who on May 8, 1945 were exclusively subjects of the United Kingdom, all corporations, partnerships, and associations organized under the laws of the United Kingdom, and all natural persons domiciled or resident in the United Kingdom on May 8, 1945, as well as the Government of the United Kingdom and all of its agencies, but the term "nationals" in relation to the United Kingdom shall not include natural persons who on May 8, 1945 were exclusively citizens of the United States of America even though they were domiciled or resident in the United Kingdom on that date. (c) The basic principle as to which Government shall undertake and bear the cost of procurement in doubtful cases shall be decided according to whether dollar or sterling costs are necessarily involved. In the former case the Government of the United States of America will effect acquisition and in the latter case the Government of the United Kingdom will effect acquisition, but each Government will pay the remuneration and other expenses of its own representatives incurred in connection with communicating any research or manufacturing information to the other Government. ARTICLE II All patent rights so acquired shall be acquired and used for the purposes of, and until the termination of, the war only, unless otherwise expressly provided, except that contracts entered into (for the production, use, or disposition of articles) which cannot be terminated without penalty, may be completed, and all articles on hand at the termination of the war, or completed as permitted herein, may be used and disposed of. Information, inventions, designs, or processes so acquired and not covered by patents or patent applications shall be acquired upon such terms as may most expeditiously make such information, inventions, designs, or processes available for the purposes of the war, with provision, to the extent practicable, for the limitation of the use thereof for the purposes of and until the termination of the war. When the information, invention, design, or process is of a category for which the other Government requests secrecy upon security grounds, each Government will take such steps as it deems practicable to ensure the appropriate degree of secrecy in manufacture and use. The term "termination of the war", for the purposes of this Agreement, shall mean the date when the Government of the United States of America and the Government of the United Kingdom have ceased to be jointly engaged in actual hostilities against a common enemy, or such other date as may be mutually agreed upon, and shall not be dependent on the date of the signing of a peace treaty. ARTICLE III Such acquisition by the Government of the United States of America will be effected in accordance with regular Lend-Lease procedure (or its then current equivalent) and will be financed under such program, except that other procedure may be used in those instances where no expenditure of funds is necessary. ARTICLE IV Such acquisition by the Government of the United Kingdom will be effected on the basis of written requests submitted by any authorized department or agency of the Government of the United States of America to the British Supply Council (or to such other agency of the Government of the United Kingdom as may be designated from time to time). Copies of all such requests will be furnished to the Office of Lend-Lease Administration. The British Supply Council will furnish to that Office reports as to all patent rights, information, inventions, designs, or processes obtained and transferred to the agency requesting the same and the acquisition cost thereof, if any. ARTICLE V In so far as is found practicable in the circumstances of each case, adequate licenses or assignments and contract rights shall be acquired by each Government, in accordance with the requests of the other Government, and transferred to the other Government. Where desirable each Government will sponsor necessary relationships and permit dealings between the original grantor and the ultimate user. It is contemplated that normally the rights obtained should, subject to the limitations contained in Article II of this Agreement, include, among other things: (a) The right to make, to have made, to use, and to dispose of, articles embodying the subject-matter of the patent rights, information, inventions, designs, or processes, so acquired, including the right to use and practice any of the aforesaid. (b) Provision for securing to the recipient Government or its designees all necessary personal expert services and supplementary information. (c) Permission to transfer, assign, license, or otherwise dispose of, any or all of the rights and privileges acquired, to the other Government, with further permission to the latter to transfer, assign, license, or otherwise dispose of any or all of the same to contractors, subcontractors, or other appropriate designees of the recipient Government, for war production purposes only. (d) The reservation on the part of the acquiring Government that it, and parties in interest holding under it, shall have the right at any time to contest the validity of any patent rights acquired. (e) Whenever practicable, a guarantee by the licensor or patentee as to the validity of his patent, in respect of which the license is granted, with an indemnity against any infringement claims. (f) Provision for the exchange of information, between the licensor or patentee and ultimate licensee, as to improvements or the results of research on the subject-matter of the license, together with the use of any patents which may be obtained in respect of such improvements, with a further provision that the like information and right to use additional patents shall simultaneously be furnished to both Governments. ARTICLE VI (a) Subject to the provisions of article VII of this Agreement, the Government of the United Kingdom agrees and undertakes to indemnify and save harmless the Government of the United States of America against all claims asserted by nationals of the United Kingdom under any United States patents for the use of any method or process and for the manufacture, use, or disposition of any article, which method, process, or article was used, manufactured, or disposed of by or for the Government of the United States of America. (1) for the purposes and to the extent set forth in Article II of this Agreement; or (2) in connection with the supply of articles to the Government of the United Kingdom under Lend-Lease or equivalent procedure, including the manufacture, use, and disposal of articles so supplied; or (3) pursuant to a request made or authority given, for the purposes of the war, by the Government of the United Kingdom to the Government of the United States of America; provided always that the Government of the United States of America will, whenever in its judgment practicable, avail itself of any indemnity from a third party of which it shall have the benefit, in lieu of the indemnity from the Government of the United Kingdom contained in this Agreement. For the purposes of this paragraph (a) claims asserted by nationals of the United Kingdom under Title 35, Section 42, of the United States Code, 1940 edition, and Title 35, Section 90, of the United States Code, 1940 edition, Supplement IV, shall be construed to be claims under patents; and for the purposes of this paragraph (a) claims asserted by nationals of the United Kingdom under any United Kingdom patents or registered designs against United States Government contractors or subcontractors shall be construed to be claims subject to indemnification by the Government of the United Kingdom in cases where the Government of the United States of America has agreed and undertaken to indemnify and save harmless such contractors or subcontractors against any liability resulting from the use of any patented invention or registered design. (b) Subject to the provisions of Article VII of this Agreement, the Government of the United Kingdom agrees and undertakes to indemnify and save harmless the Government of the United States of America against all claims asserted by nationals of the United Kingdom, under any law of the United States of America for compensation for the use or practice of any unpatented inventions, information, designs, or processes furnished by the Government of the United Kingdom to the Government of the United States of America and used or practiced by or for the latter Government pursuant to the provisions of Article II of this Agreement, or for the use or practice of any unpatented inventions, information, designs, or processes by or in the manufacture, use, or disposition, by or for the Government of the United States of America, of articles manufactured, used, or disposed of (1) for the purposes and to the extent set forth in Article II of this Agree ment; or (2) in connection with the supply of articles by the Government of the United States of America to the Government of the United Kingdom under Lend-Lease or equivalent procedure and the use and disposal of such articles by the Government of the United States of America; or (3) pursuant to a request made or authority given, for the purposes of the war, by the Government of the United Kingdom to the Government of the United States of America; provided always that the Government of the United States of America will, whenever in its judgment practicable, avail itself of any indemnity from a third party of which it shall have the benefit, in lieu of the indemnity from the Government of the United Kingdom contained in this Agreement. (c) The indemnities set forth in paragraphs (a) and (b) of this Article shall apply whether or not written requests in accordance with Article IV of this Agreement have been or will be at any time submitted by any authorized department or agency of the Government of the United States of America. ARTICLE VII The indemnity by the Government of the United Kingdom to the Government of the United States of America shall be subject to the following conditions and procedure, namely: |