B-9252, APRIL 17, 1940, 19 COMP. GEN. 876

B-9252, APRIL 17, 1940, 19 COMP. GEN. 876

CONTRACTS - PATENT CLAUSE INTERPRETATION UNDER THE PATENT CLAUSE IN UNITED STATES STANDARD FORM NO. 32, A CONTRACTOR COULD NOT BE HELD RESPONSIBLE IF THE GOVERNMENT, AFTER OBTAINING THE CONTRACT MATERIAL, SHOULD COMBINE IT WITH OTHER MATERIALS FOR USE IN SUCH A WAY AS TO INFRINGE SOME PATENT, AND A STATEMENT ACCOMPANYING A BID, THAT THE BIDDER SO UNDERSTANDS THE SAID CLAUSE, DOES NOT DISQUALIFY THE BID FOR CONSIDERATION ALONG WITH THE OTHER BIDS RECEIVED.

ACTING COMPTROLLER GENERAL ELLIOTT TO THE QUARTERMASTER, HEADQUARTERS, UNITED STATES MARINE CORPS, APRIL 17, 1940:

I HAVE YOUR LETTER OF MARCH 21, 1940, AS FOLLOWS:

THERE ARE ENCLOSED THE ORIGINALS OF TWO (2) BIDS SUBMITTED TO THE MARINE CORPS BY THE FIRM OF E. I. DU PONT DE NEMOURS AND COMPANY, 35TH AND GRAY'S FERRY AVE., PHILADELPHIA, PA., WITH THE REQUEST THAT THIS OFFICE BE ADVISED AS TO WHAT ACTION SHOULD BE TAKEN IN MAKING AWARDS THEREUNDER, IN VIEW OF THE PATENT INFRINGEMENT CLAUSE MADE A PART OF EACH BID.

THE ENCLOSED BIDS ARE FULLY DESCRIBED AS FOLLOWS:

SCHEDULE NO. 563, CALLING FOR OPENING IN THE OFFICE OF THE

QUARTERMASTER, U.S. MARINE CORPS, NAVY BUILDING, WASHINGTON,

D.C., ON 2 FEBRUARY 1940.

SCHEDULE NO. 649, CALLING FOR OPENING IN THE OFFICE OF THE

QUARTERMASTER, U.S. MARINE CORPS, NAVY BUILDING, WASHINGTON,

D.C., ON 4 MARCH 1940.

IN THE CASE OF SCHEDULE NO. 563, THE FIRM IN QUESTION IS THE LOW BIDDER ON THE REQUIREMENTS COVERED BY ITEM 11, CALLING FOR 2,000-LBS. MONO SODIUM PHOSPHATE. THESE REQUIREMENTS ARE TO BE USED IN TREATING WATER IN THE BOILERS AT THE CENTRAL HEATING PLANT, MARINE BARRACKS, QUANTICO, ., TO REDUCE FORMATION OF SCALE WHILE MAINTAINING LOW ALKALINITY, AND TO PREVENT EMBRITTLEMENT OF THE STEEL IN PLATES AND RIVETS.

IN THE CASE OF SCHEDULE NO. 649, THE FIRM ABOVE REFERRED TO IS THE LOW BIDDER ON ITEM 26, CALLING FOR 73,000-LBS. ALUM (SULPHATE OF ALUMINA). THIS ALUM IS TO BE USED TO COAGULATE THE SEDIMENT IN WATER AT THE POST WATER WORKS, MARINE BARRACKS, QUANTICO, VA.

IN RENDERING YOUR DECISION IN THIS MATTER, INFORMATION IS ALSO DESIRED AS TO HOW FUTURE BIDS THAT MAY BE SUBMITTED BY THE FIRM IN QUESTION AND THAT LIKEWISE MAY BE CONDITIONED IN THIS MANNER, PERTAINING TO A PATENT CLAUSE, SHOULD BE TREATED.

YOUR PROMPT ATTENTION TO THIS MATTER WILL BE APPRECIATED, IN THAT THE REQUIREMENTS IN QUESTION ARE VERY URGENTLY REQUIRED.

PLEASE RETURN THE ENCLOSED BIDS WITH YOUR REPLY.

THE BIDS IN QUESTION WERE SUBMITTED ON STANDARD FORM NO. 31, PARAGRAPH 25 OF WHICH PROVIDES:

PATENTS.

(A) THE ARTICLE ON " PATENTS" AS GIVEN ON PAGE 6 OF STANDARD FORM NO. 32 WILL BE INCLUDED IN ALL CONTRACTS AWARDED AND ORDERS PLACED.

THE ARTICLE ON PATENTS, AS SET FORTH IN U.S. STANDARD FORM NO. 32, READS AS FOLLOWS:

ARTICLE * * * PATENTS.--- THE CONTRACTOR SHALL HOLD AND SAVE THE GOVERNMENT, ITS OFFICERS, AGENTS, SERVANTS, AND EMPLOYEES, HARMLESS FROM LIABILITY OF ANY NATURE OR KIND, INCLUDING COSTS AND EXPENSES, FOR OR ON ACCOUNT OF ANY PATENTED OR UNPATENTED INVENTION, ARTICLE, OR APPLIANCE MANUFACTURED OR USED IN THE PERFORMANCE OF THIS CONTRACT, INCLUDING THEIR USE BY THE GOVERNMENT. * * *

EACH OF THE TWO BIDS HERE INVOLVED WAS SUBMITTED WITH A LETTER OF TRANSMITTAL, AS FOLLOWS:

WE ARE SUBMITTING BID, SCHEDULE NO. * * * WITH THE UNDERSTANDING THAT THE PATENT CLAUSE MEANS WE GUARANTEE THE MERCHANDISE IS SOLD FREE OF VALID PATENT INFRINGEMENT CLAIMS, BUT DO NOT GUARANTEE THAT THE USE THEREOF BY THE GOVERNMENT IN CONJUNCTION WITH OTHER MATERIALS WILL NOT INFRINGE A PATENT.

THE BIDDER'S STATEMENT OF ITS UNDERSTANDING OF THE MEANING OF THE PATENT CLAUSE, QUOTED ABOVE, APPEARS TO BE CORRECT, SINCE THE BIDDER COULD BE EXPECTED TO GUARANTEE NO MORE THAN THAT ITS MANUFACTURE AND SALE OF THE MERCHANDISE CALLED FOR DOES NOT INFRINGE ANY PATENT. IF AFTER OBTAINING THE MERCHANDISE, THE GOVERNMENT SHOULD COMBINE IT WITH OTHER MATERIALS FOR USE IN SUCH A WAY AS TO INFRINGE SOME PATENT, THE BIDDER COULD NOT BE HELD RESPONSIBLE THEREFOR UNDER THE PATENT CLAUSE HERE INVOLVED, THE CONTRACT NOT BEING FOR THE PERFORMANCE BY THE CONTRACTOR OF ANY WORK BUT MERELY FOR THE FURNISHING OF MATERIALS FOR USE IN CONNECTION THEREWITH.

ACCORDINGLY, YOU ARE ADVISED THAT THE BIDS OF E.I. DU PONT DE NEMOURS AND CO. MAY BE CONSIDERED ALONG WITH THE OTHER BIDS RECEIVED.