point of practical application, and the activities of the Government, the incentives provided by waiver will increase the likelihood that the benefits of the invention would be readily available to the public at an early date.

(c) If the Board is unable to make one of the findings set forth in paragraph (b)(1) through (4) of this section, the Board may nevertheless recommend that waiver of domestic rights be granted by the Administrator, if the Board further finds that such waiver is a necessary incentive to call forth risk capital and expense to bring the invention to the point of practical application, or that the Government's contribution to the invention is small compared to that of the contractor.

§ 1245.106 Waiver of foreign rights.

(a) The Board will consider the waiver of domestic and foreign rights concurrently when so requested by the petitioner in accordance with

§ 1245.110(d). Where the Board makes the findings necessary to support a waiver of domestic rights, the petitioner will normally be granted the right to secure patents in any country in which it elects to file provided that the grant of such right is consistent with the economic interests of the United States. The Board may also recommend the grant of only foreign rights, in accordance with the guidelines of paragraph (b) of this section, when the interests of the United States will best be served thereby.

(b) The Board will also consider a separate request for the waiver of the right to secure a patent in any country in which the petitioner elects to file as to an identified invention when so requested by the petitioner in accordance with § 1245.110(d). Waiver of such foreign rights will normally be granted in countries in which the Administrator, NASA, does not desire to file an application for patent provided that the grant of such right is consistent with the economic interests of the United States.

(c) When the Administrator determines that it is in the best interest of the Government and the petitioner to withhold the release or publication of

information on an invention for which the petitioner has requested waiver and is to file foreign patent applications thereon, NASA may agree, upon written request by the petitioner, to use its best efforts to withhold publication until a patent application is filed thereon, but in no event shall the Government or its employees be liable for any publication thereof.

§ 1245.107 Reservations.

(a) With respect to any particular invention, each waiver of domestic or foreign rights granted shall be subject to the reservation of an irrevocable, nonexclusive, non-transferable, royalty-free license for the practice of the invention throughout the world by or on behalf of the U.S. Government or any agency thereof, any foreign government pursuant to any existing or future treaty or agreement with the United States, and/or domestic municipal government unless the Administrator determines, based upon a recommendation of the Board, that it would not be in the public interest to acquire the license for States and/or domestic municipal governments.

(b) With respect to any particular invention, each waiver of domestic rights granted shall be subject to the reservation by the Administrator of the right to require the granting of a nonexclusive or exclusive license for the practice of the invention to any responsible applicant on terms that are reasonable under the circumstances:

(1) Unless the waiver recipient, its licensees, or assigns have taken effective steps within 3 years after a U.S. patent issues on the invention to bring the invention to the point of practical or commercial application and thereafter continue to work the invention and make its benefits reasonably accessible to the public; or

(2) Unless within 3 years after a U.S. patent issues on the invention, the waiver recipient, its licensee, or its assigns have made the invention available for licensing royalty-free or on terms that are reasonable in the circumstances; or

(3) To the extent that the invention is required for public use by governmental regulations or as may be necessary to fulfill health, safety, or wel

fare needs, or for other public purposes stipulated in the contract.

(c) With respect to any particular invention, each waiver granted for domestic or foreign rights shall be subject to the reservation by the Administrator of the right to require refund of any amounts received as royalty charges on the waived invention in procurements for or on behalf of the Government and to provide for that refund in any instrument transferring rights to any party in the waived invention.

(d) With respect to any particular invention, each waiver granted for domestic or foreign rights shall be subject to any other reservations called for by the Administrator on the grant of the petition.

(e) The waiver recipient shall be given an opportunity to show cause before the Board why he should not be required to grant a license under paragraph (b) of this section or why he should otherwise retain the principle or exclusive rights as provided by waiver for a further period of time.

§ 1245.108 License to contractor.

Each contractor reporting an invention is granted a license for each filed patent application and any resulting patent in which the Covernment acquires title of the scope and on the terms and conditions specified in the NASA Licensing Regulations (14 CFR 1245.204(a)).

§ 1245.109 Revocation and voidability of waivers.

(a) If the waiver recipient fails to file a domestic or foreign patent application on any waived invention within the prescribed time periods, or decides not to continue prosecution of any such patent application, or to pay any of the required maintenance fees, or for any reason decides not to retain title to any such patent application or any patent issued thereon, the waiver recipient shall notify the Chairman and shall, upon request, convey to NASA the entire right, title, and interest in the invention, and to any corresponding patent application or patent. The conveyance shall be made by delivering to the Chairman duly executed instruments (prepared by the Govern

ment) and, if applicable, such other papers as are deemed necessary to vest in the Government the entire right, title, and interest in the invention and any corresponding patent application.

(b) With respect to any particular invention, each waiver of domestic rights shall be voidable at the option of the Administrator unless:

(1) Within 6 months from the date of reporting an invention under a contract subject to a waiver granted pursuant to § 1245.104, or 6 months rom the date of the granting by the Administrator of a waiver pursuant to § 1245.105, or such longer periods as may be approved by NASA for gcod cause shown, the waiver recipient causes an application for U.S. Letters Patent to be filed disclosing and claiming the invention and shall include as the first paragraph of the specification following the abstract, the statement:

The invention described herein was made in the performance of work under NASA Contract No. and is subject to the provisions of section 305 of the National Aeronautics and Space Act of 1958 (72 Stat. 435; 42 U.S.C. 2457).

(2) Within 2 months after such filing or within 2 months after the date of the grant of waiver if such patent application previously has been filed, the waiver recipient delivers to the Chairman a copy of such application including the filing date and serial number.

(3) Within 6 months after such filing, or within 6 months after the grant of waiver if a patent application has been previously filed, the waiver recipient delivers to the Chairman a duly executed and approved instrument prepared by the Government, fully confirmatory of all the rights to which the Government is entitled, and provide the Administrator an irrevocable power to inspect and make copies of the patent application.

(4) The waiver recipient furnishes to the Chairman a copy of the patent within 2 months after the patent is issued on such application.

(5) The waiver recipient notifies the Chairman not less than 30 days before the expiration of the initial response period for any action required by the Patent and Trademark Office of any decision not to continue prosecution of

the application and delivers to the Chairman executed instruments granting the Government a power of attorney to prosecute the application.

(6) The waiver recipient grants any license which the Administrator may require pursuant to § 1245.107.

(7) The waiver recipient files a utilization report with the Board, upon NASA's written request, not more often than annually. Such report shall set forth in detail the steps taken by the waiver recipient or its transferee regarding the progress, development, application, and commercial use being made and that is intended to be made of the waived invention.

(8) The waiver recipient notifies the Chairman in not less than 60 days prior to any transfer of principal rights in such invention to any party, and submits a statement of the transferee's development and commerialization plans to bring the invention to the point of practical application. Such statement should accompany the notification or it may be submitted in not less than 30 days prior to the transfer of rights. The statement must show to the Board's satisfaction that the property rights in the transferee will increase the likelihood that the benefits of the invention would be made readily available to the public at an early date.

(9) The waiver recipient complies with any other terms and conditions called for by the Administrator with respect to the grant of the petition.

(c) With respect to any particular invention, each waiver granted shall be voidable at the option of the Administrator if a patent claiming such invention is held, in a final determination, to have been used in violation of the antitrust laws in any suit, action, or proceeding brought before a properly constituted authority authorized to hear such matter.

(d) With respect to any particular invention, waiver of foreign rights as to any foreign country shall be voidable at the option of the Administrator unless:

(1) A patent application is filed in the country within 8 months from the date a corresponding U.S. application is filed, or 6 months from the date a license is granted by the Commissioner

of Patents and Trademarks to file foreign applications where such filing has been prohibited for security reasons, or such longer periods as may be expressly approved by the Administrator;

(2) The waiver recipient furnishes to the Chairman the identifying serial number and filing date of each foreign patent application filed promptly upon receipt thereof; and, upon request, a copy of an English version of the foreign application without additional compensation and a copy of the foreign patents;

(3) The waiver recipient executes and furnishes to the Chairman instruments fully confirmatory of the rights herein reserved by the Government; and

(4) The waiver recipient, in the event it elects not to continue prosecution of any foreign application filed on such invention or if it intends to abandon a foreign patent by the nonpayment of a maintenance tax, notifies the Chairman within sufficient time to allow assumption of prosecution by the Government, or payment of the maintenance tax, respectively, and delivers to the Chairman such duly executed instruments as are necessary to vest in the Administrator title thereto, including an instrument of assignment.

§ 1245.110 Content of petitions.

(a) General contents and forms. Forms which may be used in petitioning for waiver and for filing utilization reports are available from the NASA Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, D.C. 20546. Each request for waiver of domestic or foreign rights under § 1245.104, § 1245.105, or § 1245.106 shall be by petition to the Administrator, and shall include:

(1) An identification of the petitioner, its place of business and address, and if the petitioner is represented by counsel, the name and address, and telephone number of the counsel;

(2) An identification by number and date of the pertinent NASA contract or proposed contract;

(3) The nature and extent of the rights desired and a citation to the sec

tion under which the petition is submitted; and

(4) The signature of the petitioner or his authorized representative, and date of signature.

(b) Petitions for advance waiver under § 1245.104. In addition to the information specified in paragraph (a) of this section, each petition for waiver under § 1245.104 shall include:

(1) A copy of the statement of work of the pertinent NASA contract or proposed contract;

(2) A full and detailed statement of facts sufficient to enable the Board to make the findings regarding the contract and the petitioner as specified in § 1245.104 or, if applicable, whether the exceptional circumstances of § 1245.104(b) are present; and

(3) The date of contractor's execution of the contract, if the petition is filed subsequent to contract execution.

(c) Petitions for waiver for identified inventions under § 1245.105. A separate petition shall be submitted for each identified invention. In addition to the information specified in paragraph (a) of this section, such petition shall include:

(1) The full names of all inventors;

(2) A statement whether a patent application has been filed on the invention, together with a copy of such application if filed; or, if not filed, a complete description of the invention;

(3) If a patent application has not been filed, any information which may indicate a potential statutory bar to the filing of a patent application under 35 U.S.C. 102 or a statement that no bar is known to petitioner to exist;

(4) A full and detailed statement of facts sufficient to enable the Board to make the findings regarding the invention as specified in § 1245.105(b) or (c); and

(5) Where principal rights in the waived invention are to be transferred to another party, a statement identifying such party and its relationship to the petitioner; and

(6) Where the petitioner(s) is the inventor(s), a statement in writing from the contractor that the contractor will not request waiver of rights and authorization of the contractor.

(d) Petitions for waiver of foreign rights under § 1245.106. A petition for waiver of foreign rights may accompany and be a part of a petition for waiver of domestic rights under either § 1245.104 or § 1245.105, or a petition for foreign rights may be submitted independently of any request for domestic rights under § 1245.106(b). In addition to the information specified in paragraph (a) of this section, petition for waiver of foreign rights shall include, where feasible, a denomination of the foreign countries in which petitioner elects to secure or intends to file patent applications, and his plans and intentions to practice the invention in such countries.

(e) Petitions for waiver under § 1245.103(c). Contents of the petition shall normally be as prescribed by the other Government agency, and petitioner may use any forms provided by such agency.

§ 1245.111 Submission of petitions.

(a) Petitions for advance waiver of domestic rights under § 1245.104 or advance waiver of foreign rights under § 1245.106 presented prior to contract execution must be submitted to the contracting officer. Any such petitions submitted by organizations selected for negotiation of a contract will be processed and forwarded to the Board for consideration as specified in the NASA Procurement Regulations (41 CFR 18-9.109-6(e)). All other petitions shall be submitted directly to the Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, D.C. 20546.

(b) Any waiver petitions submitted under § 1245.103(c) should be forwarded to the NASA field installation patent counsel for transmittal to DOE for processing.

§ 1245.112 Notice of proposed Board action and reconsideration.

(a) Notice. When sufficient time and complete information is presented with respect to petitions for the advanced waiver of rights under § 1245.104 or § 1245.106 or when complete information is presented as to all other petitions for waiver the Board will notify the petitioner:

(1) Whether it proposes to recommend to the Administrator, NASA, that the petition be:

(i) Granted in the extent requested; (ii) Granted in an extent different from that requested; or,

(iii) Denied.

(2) Of the reasons for any recommended action adverse to or different from the waiver of rights requested by the petitioner.

(b) Request for reconsideration and statements required. (1) If, pursuant to paragraph (a) of this section, the Board notifies the petitioner that the Board proposes to recommend action adverse to or different from the waiver requested, the petitioner may, within such period as the Board may set, but not less than 15 days, request reconsideration by the Board.

(2) If reconsideration has been requested within the prescribed time limit, the petitioner shall, within 30 days from his request for reconsideration, or within such other time as the Board may set, file a statement setting forth the points, authorities, arguments, and any additional material on which he relies.

(3) Upon filing of the reconsideration statement by the petitioner, the petition will be assigned for reconsideration by the Board upon the contents of the petition, the record, and the reconsideration statement submitted by the petitioner.

(4) The Board, after reconsideration of the petition, will notify the petitioner of its proposed recommendations to the Administrator. If the Board's proposed action is adverse to, or different from, the waiver requested, the petitioner may request an oral hearing within such time as the Board has set.

§ 1245.113 Hearing procedure.

(a) If the petitioner requests an oral hearing within the time set, pursuant to § 1245.112(b)(4), the Board shall set the time and place for such hearing and shall so notify the petitioner.

(b) Oral hearings held by the Board shall be open to the public and shall be held in accordance with the following procedures:

(1) Oral hearings shall be conducted in an informal manner, with the objec

tive of providing the petitioner with a full opportunity to present facts and arguments in support of the petition. Evidence may be presented through means of such witnesses, exhibits, visual aids as are arranged for by the petitioner. Petitioner may be represented by any person including its attorney. While proceedings will be ex parte, members of the Board and its counsel may address questions to witnesses called by the petitioner, and the Board may, at its option, enlist the aid of technical advisors or expert witnesses. Any person present at the hearing may make a statement for the record.

(2) A transcript of the proceeding shall be arranged for by the Board. The petitioner shall submit for the record a copy of any exhibit or visual aid utilized during the hearing.

§ 1245.114 Findings and recommendations of the Board.

(a) Findings of the Board. The Board shall consider the petition, the NASA contract, if relevant, the goals cited in § 1245.103(a), the effect of the waiver on the objectives of the related NASA programs, and any other available facts and information presented to the Board by an interested party. The Board shall then determine and make, if applicable, each of the specific findings of fact required by § 1245.104, § 1245.105, or § 1245.106 under which the petition was submitted. The Board shall document all their findings.

(b) Recommendation of Board. (1) Except as provided in § 1245.104(e), after making the findings of fact, the Board shall formulate its proposed recommendation to the Administrator as to the grant of waiver as requested, the grant of waiver upon terms other than as requested, or denial of waiver.

(2) If the Board proposes to recommend, initially or upon reconsideration, that the petition be granted in the extent requested or, in other cases, if the petitioner does not request reconsideration or a hearing during the period set for such action, or informs the Board that such action will not be requested, or fails to file the required statements within the prescribed time limit, the Board shall transmit the petition, its findings of fact with respect