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ties. Decisions of the Board will be the Board may take such action as it made solely upon the record, as de- deems reasonable and proper under scribed in § 1241.113. The rules of the the circumstances. Board, all final orders and decisions, and other records of, or before, the

Ex PARTE COMMUNICATIONS Board shall be available for inspection at its offices to the extent permitted

§ 1241.132 Ex parte communications. by, and subject to the exemptions of, 5 No member of the Board or of the U.S.C. 552.

Board's staff shall entertain, nor shall

any person directly or indirectly inMOTION FOR RECONSIDERATION volved in an appeal submit to the

Board or the Board's staff, of the § 1241.129 Motion for reconsideration.

record, any evidence, explanation, A motion for reconsideration, if filed analysis, or advice, whether written or by either party, shall set forth specifi oral, regarding any matter at issue in cally the ground or grounds relied an appeal. This provision does not upon to sustain the motion, and shall apply to consultation among Board be filed within 30 days from the date members nor to ex parte communicaof the receipt of a copy of the decision tions concerning the Board's adminisof the Board by the party filing the trative functions or procedures. motion.

SANCTIONS
DISMISSALS

§ 1241.133 Sanctions. § 1241.130 Dismissal without prejudice. If any party fails or refuses to obey

In certain cases, appeals docketed an order issued by the Board, the before the Board are required to be

Board may make such order in regard placed in a suspense status and the to the failure as it considers necessary Board is unable to proceed with dispo

ceed with dispo- to the just and expeditious conduct of sition thereof for reasons not within the appeal. the control of the Board. In any such case where the suspension has contin PART 1245—PATENTS AND OTHER ued, or it appears that it will continue, INTELLECTUAL PROPERTY RIGHTS for an inordinate length of time, the Board may, in its discretion, dismiss Subpart 1-Patent Waiver Regulations such appeals from its docket without prejudice to their restoration when

Sec.

1245.100 Scope. the cause of suspension has been re

1245.101 Applicability. moved. Unless either party or the 1245.102 Definitions and terms. Board acts within three years to rein 1245.103 Policy. state any appeal dismissed without 1245.104 Advance waivers. prejudice, the dismissal shall be 1245.105 Waiver after reporting inventions. deemed with prejudice.

1245.106 Waiver of foreign rights.

1245.107 Reservations. 8 1241.131 Dismissal for failure to pros

1245.108 License to contractor.

1245.109 Revocation and voidability of ecute.

waivers. Whenever a record discloses the fail 1245.110 Content of petitions. ure of either party to file documents 1245.111 Submission of petitions. required by these rules, respond to no

1245.112 Notice of proposed Board action tices or correspondence from the

and reconsideration.

1245.113 Hearing procedure. Board, comply with orders of the

1245.114 Findings and recommendations of Board, or otherwise indicates an inten

the Board. tion not to continue the prosecution or 1245.115 Action by the Administrator, defense of an appeal, the Board may NASA. issue an order requiring the offending 1245.116 Filing of patent applications. party to show cause why the appeal

1245.117 Publication. should not be either dismissed or

Subpart 2—Patent Licensing Regulations granted, as appropriate. If the offending party shall fail to show such cause, 1245.200 Scope of subpart.

Sec. 1245.201 Definitions. 1245.202 Basic considerations. 1245.203 Licenses for practical application

of inventions. 1245.204 Other licenses. 1245.205 Publication of NASA inventions

available for license. 1245.206 Application for nonexclusive li

cense. 1245.207 Application for exclusive license. 1245.208 Processing applications for li

cense. 1245.209 Royalties and fees. 1245.210 Reports. 1245.211 Revocation of licenses. 1245.212 Appeals. 1245.213 Litigation. 1245.214 Address of communications.

§ 1245.101 Applicability.

The provisions of this subpart apply to all inventions made or which may be made under conditions enabling the Administrator to determine that the rights therein reside in the United States pursuant to section 305(a) of the National Aeronautics and Space Act of 1958, as amended (42 U.S.C. 2457(a)).

Subpart 3—NASA Foreign Patent Program 1245.300 Scope of subpart. 1245.301 Inventions under NASA contracts. 1245.302 Inventions by NASA employees. 1245.303 Criteria. 1245.304 Procedures.

Subpart 4-Foreign Patent Licensing

Regulations 1245.400 Scope of subpart. 1245.401 Policy. 1245.402 Types of licenses and terms and

conditions. 1245.403 Government license. 1245.404 Enforcement of patent rights. 1245.405 Procedures.

Subpart 5–Authority and Delegations To Take

Certain Actions Relating to Patents and Other Intellectual Property Rights. 1245.500 Scope. 1245.501 General Counsel. 1245.502 Assistant General Counsel for

Patent Matters. 1245.503 Patent Counsel of Field Installa

tions. 1245.504 Further redelegation.

8 1245.102 Definitions and terms.

As used in this subpart:

(a) “Contract” means any actual or proposed contract, agreement, understanding, or other arrangement with the National Aeronautics and Space Administration (NASA) or another Government agency on NASA's behalf, including any assignment, substitution of parties or subcontract executed or entered into thereunder, and including NASA grants awarded under the authority of 42 U.S.C. 1891-1893.

(b) “Contractor" means the party who has undertaken to perform work under a contract or subcontract.

(c) “Invention" includes any art, method, process, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the Patent Laws of the United States of America or any foreign country.

(d) “Made," when used in relation to any invention, means the conception or first actual reduction to practice of such invention.

(e) “To the point of practical application" means to manufacture in the case of a composition or product, to practice in the case of a process, or to operate in the case of a machine, and under such conditions as to establish that the invention is being worked and that its benefits are reasonably assessible to the public.

(f) “Board” means the NASA Inventions and Contributions Board established by the Administrator of NASA within the Administration under section 305(f) of the National Aeronautics and Space Act of 1958, as amended (42 U.S.C. 2457(f)).

(g) “Chairman” means Chairman of the NASA Inventions and Contributions Board.

Subpart 1-Patent Waiver

Regulations

AUTHORITY: 42 U.S.C. 2457. SOURCE: 42 FR 57449, Nov. 3, 1977, unless otherwise noted.

8 1245.100 Scope.

This Subpart 1 prescribes regula. tions for the waiver of rights of the United States to inventions made under NASA contract.

af America

(h) “Petitioner" means a contractor In applying this regulation both the or prospective contractor who requests need for incentives to draw forth prithat the Administrator waive rights in vate initiatives and the need to proan invention or class of inventions mote healthy competition in industry made or which may be made under a must be weighed. NASA contract. In the case of an iden. (b) Several different situations when tified invention, the petitioner may be waiver of all or any part of the rights the inventor(s).

of the United States may be requested (i) “Government agency" includes are prescribed in $ $ 1245.104-1245.106. any executive department, independ- Under $ 1245.104, advance waiver of ent commission, board, office, agency, rights to any or all of the inventions administration, authority, Govern- which may be made under a contract ment corporation, or other Govern may be requested prior to the execument establishment of the executive tion of the contract, or within 30 days branch of the Government of the after execution of the contract. United States of America.

Waiver of rights to an identified in(j) "States and domestic municipal vention made and reported under a governments" means the States of the contract may be requested under any United States, the District of Colum of these provisions even though a rebia, Puerto Rico, the Virgin Islands, quest under a different provision was American Samoa, Guam, the Trust not made, or if made, was not granted. Territory of the Pacific Islands, and Waiver of foreign rights under any political subdivision and agencies $ 1245.106 may be requested concurthereof.

rently with domestic rights or inde(k) “Administrator” means the Ad pendently thereof. ministrator of the National Aeronau. (c) With respect to inventions which tics and Space Administration or his m’y be or are made or conceived in duly authorized representative.

the course of or under contracts for

research, development or demonstra§ 1245.103 Policy.

tion work awarded by NASA on behalf (a) In implementing the provisions of the Department of Energy (DOE) of section 305(f) of the National Aero- or in support of an DOE program, on a nautics and Space Act of 1958, as reimbursable basis pursuant to agreeamended (42 U.S.C. 2457(f)) and in de- ment between DOE and NASA, the termining when the interests of the waiver policy, regulations, and proceUnited States would be served by dures of DOE will be applied. (See waiver of all or any part of the rights $ 1245.110(e), $ 1245.111(b).) of the United States in inventions made in the performance of work

§ 1245.104 Advance waivers. under NASA contracts, the Adminis (a) The provisions of this $ 1245.104 trator will be guided by the objectives apply to petitions for waiver of domesset forth in the National Aeronautics tic rights to any or all of the invenand Space Act of 1958, as amended (42 tions which may be made under a conU.S.C. 2451-2477) and by the basic tract. Such petitions may be submitted policy of the revised Presidential by the contractor prior to his execuMemorandum and Statement of Gov tion of the contract or within 30 days ernment Patent Policy issued August thereafter. 23, 1971 (36 FR 16887-16892). Among (b)(1) The Board shall recommend the most important goals thereof are to the Administrator that waiver of to provide incentives to foster inven- domestic rights to any or all of the intiveness and encourage reporting of in- ventions which may be made under ventions made under NASA contracts, the NASA contract involved be grantto provide for the widest practicable ed when the Board makes each of the dissemination of new technology re- findings of paragraphs (c) and (d) of sulting from NASA's programs, and to this section and concludes that the inpromote early utilization, expeditious terest of the United States would be development, and continued availabil- served thereby. Such waiver shall ity of this new technology for commer- apply to inventions reported under the cial purposes and the public benefit. terms of the contract and which are

designated at the time of reporting as will be required for such use by gov. being an invention on which the ernmental regulations. waiver recipient intends to file or has (2) It is not a principal purpose of filed a U.S. patent application.

the contract to explore into fields (2) When the Board is unable to which directly concern the public make one or more of the findings of health, public safety, or public welparagraph (c) of this section as to the fare. contract, but nevertheless finds that

(3) The contract is not in a field of exceptional circumstances exist so science or technology in which there that the public interest would best be

has been little significant experience served by a waiver of rights to any or

outside of work funded by the Governall of the inventions which may be

ment, or where the Government has made under the contract, the Board

been the principal developer of the shall recommend to the Administra

field, and with respect to which the actor, NASA, that waiver be granted

quisition of exclusive rights at the (conditions of paragraph (d) of this

time of contracting would not likely

confer on the petitioner a preferred or section are not relevant to the Board's findings under this paragraph). A

dominant position.

(4) The contract is not for services of finding of exceptional circumstances

the petitioner for (i) the operation of a shall be accompanied by a discussion

Government-owned research or proof the rationale therefor. Examples of

duction facility; or (ii) coordinating exceptional circumstances would in

and directing the work of others. clude: A contract where participation

(d)(1) The purpose of the contract is of the contractor may only be secured

to build upon existing knowledge or through the grant of waiver and such

technology, to develop information, contractor is deemed essential to a

products, processes, or methods for NASA program; a contract having as a

use by the Government. principal objective the application of

(2) The work called for by the conaerospace related technology to other

tract is in a field of technology in uses in accordance with an established

which the petitioner has acquired NASA technology application program

technical competence (demonstrated and where the grant of waiver would

by factors such as know-how, experimaterially advance this objective; or, a

ence, and patent position), and either cooperative endeavor where the con

(i) the work is directly related to an tract calls for a significant contribu

area in which the petitioner has an estion of funds by the contractor to the

tablished nongovernmental commerwork to be performed. In the case of

o cial position; or (ii) the commercial poan individual invention which is iden

sition of the petitioner is not suffitified prior to execution of the con

ciently established, but a special situatract, exceptional circumstances may tion exists such that the public interalso be found where waiver is a neces

est in the availability of inventions sary incentive to call forth risk capital

would best be served by a waiver of and expense to bring the invention to rights to the petitioner. Such special the point of practical or commercial situations include, but are not limited application and where either (i) the to the following: contractor has established substantial

(i) A newly formed company having equities at his own expense in the de- a definite program for establishing a velopment of the invention; or, (ii) the nongovernmental commercial position grant of advance waiver will signifi- in the field of the contract or in an cantly advance the availability of the area directly related thereto. invention to the general public.

(ii) An established company lacking (c)(1) It is not a principal purpose of an established nongovernmental comthe contract to create, develop or im- mercial position in the field of the prove products, processes, or methods contract or a directly related field, but which are intended for commercial use having established plans and programs (or which are otherwise intended to be for achieving such a position. . made available for use) by the general (iii) An education or nonprofit insti. public at home or abroad, or which tution having a promulgated policy and an effective program for acquiring 81245.105 Waiver after reporting invenrights to inventions and for acting by

tions. itself or through others to bring the

(a)(1) The provisions of this results of such inventions to commer

$ 1245.105 apply to petitions for waiver cial application.

of domestic rights to identified inven(e) When a petition for waiver is

tions which have been reported to submitted pursuant to paragraph (a) NASA and to which a waiver of rights of this section, prior to contract execu has not been granted pursuant to tion, it will be processed expeditiously $ 1245.104. A petition for waiver under so that a decision on the petition may this section should be filed promptly be reached prior to execution of the after the reporting of the invention to contract. However, if there is insuffi. NASA, and must be submitted prior to cient time or insufficient information the filing by NASA of a U.S. patent is presented or for other reasons application claiming the reported inwhich do not permit a recommenda- vention. tion to be made without unduly delay. (2) Awaiver granted pursuant to ing execution of the contract, the this section shall extend to the Board will inform the contracting offi claimed invention of any division or cer that no recommendation has been

continuation of that patent applicamade and the reason therefor. The

tion filed on the reported invention contracting officer will then notify the

provided the claims of the subsequent

application do not petitioner of the Board's action

substantially

change the scope of the reported in(f) After notification by the con

vention. tracting officer under paragraph (e) of

(b) The Board shall recommend to this section, the petitioner may, upon

the Administrator that waiver of doits execution of the contract, or within

mestic rights to an identified inven. 30 days thereof, request the Board to

tion be granted where the Board reconsider the matter under para makes all of the findings below and graph (b) of this section either on the concludes that the interest of the record or with any additional state- United States would be served therements submitted in support of the by: original petition.

(1) The invention is not directly re(g) A waiver granted pursuant to a lated to a governmental program for petition submitted under this creating, developing, or improving $ 1245.104 shall apply only to inven products, processes, or methods for tions reported under the terms of the use by the general public at home or applicable contract and which are des

abroad. ignated at the time of reporting as (2) The invention is not likely to being an invention on which the peti

required by governmental regulations tioner intends to file or has filed a

for use by the general public at home U.S. patent application. The waiver

or abroad. shall extend to the claimed invention

(3) The invention does not directly

concern the public health, public of any division or continuation of the patent application filed on the report

safety, or public welfare.

(4) The invention is not in a field of ed invention provided the claims of

science or technology in which there the subsequent application do not sub

has been little significant experience stantially broaden the scope of the re

outside of work funded by the Governported invention.

ment, or where the Government has (h) A waiver granted pursuant to a been the principal developer of the petition submitted under this field, and the acquisition of exclusive § 1245.104 shall extend to any contract rights in the invention would not changes, modifications, or supplemen likely confer on the petitioner a pretal agreements, so long as the purpose ferred or dominant position. of the contract or the scope of work to

Provided, That the Board also finds in be performed is not substantially

view of the petitioner's plans and inchanged.

tentions to bring the invention to the

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