thereto, and its recommendation to the Administrator.

§ 1245.115 Action by the Administrator, NASA.

(a) After receiving the transmittal from the Board, the Administrator shall determine, in accordance with § 1245.103, whether or not to grant any waiver of rights to the petitioner. A waiver pursuant to § 1245.104(b)(2) will be granted only when the Board so recommends.

(b) In the event of denial of the petition by the Administrator, a written notice of such denial will be promptly transmitted by the Board to the petitioner. The written notice will be accompanied with a statement of the grounds for denial.

(c) If the waiver is granted by the Administrator, the petitioner shall be sent an original and one copy of an instrument of waiver confirmatory of the conditions and reservations of the waiver grant for his execution. The petitioner shall return the executed copy to the Chairman within 30 days from the grant of waiver. Failure to return such copy within the prescribed time may result in revocation of the waiver of rights granted. Before such action is taken, notice shall be given to petitioner so that it may show cause before the Board why the waiver should not be revoked.

§ 1245.116 Filing of patent applications.

(a) In order to protect the interests of the Government and the petitioner in inventions, a petitioner may file a United States patent application for such inventions prior to the Administrator's determination on a petition for waiver. If an application on an identified invention is filed during the pendency of the petition, or within 60 days prior to the receipt of a petition, NASA will reimburse the petitioner for any reasonable costs of such filing and patent prosecution that may have occurred. Provided:

(1) Similar patent filing and prosecution costs are not normally reimbursed to the petitioner as direct or indirect costs chargeable to Government contracts;

(2) The petition is ultimately denied with respect to domestic rights, or

with request to foreign and domestic rights, if both are so requested; and

(3) Prior to reimbursement, the petitioner assigns the application to the United States of America as represented by the Administrator of the National Aeronautics and Space Administration.

§ 1245.117 Publication.

The findings of fact and recommendations made to the Administrator by the Board with respect to each petition for waiver shall be recorded by the Board and available to the public. In addition, selected findings and recommendations of the Board shall be published annually.

Subpart 2-Patent Licensing Regulations

AUTHORITY: 42 U.S.C. 2457, 2473(b)(3). SOURCE: 37 FR 6465, Mar. 30, 1972, unless otherwise noted.

§ 1245.200 Scope of subpart.

This Subpart 2 prescribes the terms, conditions, and procedures for licensing inventions covered by U.S. patents and patent applications for which the Administrator of the National Aeronautics and Space Administration holds title on behalf of the United States.

§ 1245.201 Definitions.

For the purpose of this subpart, the following definitions apply:

(a) "Invention" means an invention covered by a U.S. patent or patent application for which the Administrator of NASA holds title on behalf of the United States and which is designated by the Administration as appropriate for the grant of license(s) in accordance with this subpart.

(b) "To practice an invention” means to make or have made, use or have used, sell or have sold, or otherwise dispose of according to law any machine, article of manufacture or composition of matter physically embodying the invention, or to use or have used the process or method comprising the invention.

(c) "Practical application" means the manufacture in the case of a com

position of matter or product, the use in the case of a process, or the operation in the case of a machine, under such conditions as to establish that the invention is being utilized and that its benefits are reasonably accessible to the public.

(d) "Special invention” means any invention designated by the NASA Assistant General Counsel for Patent Matters to be subject to short-form licensing procedures. An invention may be designated as a special invention when a determination is made that:

(1) Practical application has OCcurred and is likely to continue for the life of the patent and for which an exclusive license is not in force, or

(2) The public interest would be served by the expeditious granting of a nonexclusive license for practice of the invention by the public.

(e) The "Administrator" means the Administrator of the National Aeronautics and Space Administration, or his designee.

(f) "Government" means the Government of the United States of America.

(g) The "Inventions and Contributions Board" means the NASA Inventions and Contributions Board established by the Administrator of NASA within the Administration in accordance with section 305 of the National Aeronautics and Space Act of 1958 as amended (42 U.S.C. 2457).

§ 1245.202 Basic considerations.

(a) Much of the new technology resulting from NASA sponsored research and development in aeronautical and space activities has application in other fields. NASA has special authority and responsibility under the National Aeronautics and Space Act of 1958, as amended (42 U.S.C. 2451), to provide for the widest practical dissemination and utilization of this new technology. In addition, NASA has been given unique requirements to protect the inventions resulting from NASA activities and to promulgate licensing regulations to encourage commercial use of these inventions.

(b) NASA-owned inventions will best serve the interests of the United States when they are brought to practical application in the shortest time

possible. Although NASA encourages the nonexclusive licensing of its inventions to promote competition and achieve their widest possible utilization, the commercial development of certain inventions calls for a substantial capital investment which private manufacturers may be unwilling to risk under a nonexclusive license. It is the policy of NASA to seek exclusive licensees when such licenses will provide the necessary incentive to the licensee to achieve early practical application of the invention.

(c) The Administrator, in determining whether to grant an exclusive license, will evaluate all relevant information submitted by applicants and all other persons and will consider the necessity for further technical and market development of the invention, the capabilities of prospective licensees, their proposed plans to undertake the required investment and development, the impact on competitors, and the benefits of the license to the Government and to the public. Preference for exclusive license shall be given to U.S. citizens or companies who intend to manufacture or use, in the case of a process, the invention in the United States of America, its territories and possessions. Consideration may also be given to assisting small businesses and minority business enterprises, as well as economically depressed, low income and labor surplus areas.

(d) All licenses for inventions shall be by express written instruments. No license shall be granted either expressly or by implication, for a NASA invention except as provided for in §§ 1245.203 and 1245.204 and in any existing or future treaty or agreement between the United States and any foreign government.

(e) Licenses for inventions covered by NASA-owned foreign patents and patent applications shall be granted in accordance with the NASA Foreign Patent Licensing Regulations (§ 1245.4).

§ 1245.203 Licenses for practical application of inventions.

(a) General. As an incentive to encourage practical application of inventions, licenses will be granted to responsible applicants according to the

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circumstances and conditions set forth in this section.

(b) Nonexclusive licenses. (1) Each invention will be made available to responsible applicants for nonexclusive, revocable licensing in accordance with § 1245.206, consistent with the provisions of any existing exclusive license.

(2) The duration of the license shall be for a period as specified in the li

cense.

(3) The license shall require the licensee to achieve the practical application of the invention and to then practice the invention for the duration of the license.

(4) The license may be granted for all or less than all fields of use of the invention and throughout the United States of America, its territories and possessions, Puerto Rico, and the District of Columbia, or in any lesser geographic portion thereof.

(5) The license shall extend to the subsidiaries and affiliates of the licensee and shall be nonassignable without approval of the Administrator, NASA, except to the successor of that part of the licensee's business to which the invention pertains.

(c) Short-form nonexclusive licenses. A nonexclusive, revocable license for a special invention, as defined in § 1245.201(d), shall be granted upon written request, to any applicant by the Patent Counsel of the NASA installation having cognizance of the invention.

(d) Exclusive licenses. (1) A limited exclusive license may be granted on an invention available for such licensing provided that:

(i) The Administrator has determined that:

(a) The invention has not been brought to practical application by a nonexclusive licensee in the fields of use or in the geographical locations covered by the application for the exclusive license,

(b) Practical application of the invention in the fields of use or geographical locations covered by the application for the exclusive license is not likely to be achieved expeditiously by the further funding of the invention by the Government or under a nonexclusive license requested by any

applicant pursuant to these regulations, and

(c) The exclusive license will provide the necessary incentive to the licensee to achieve the practical application of the invention; and

(ii) Either a notice

pursuant to § 1245.205 listing the invention as available for licensing has been published in the FEDERAL REGISTER for at least 9 months; or a patent covering the invention has been issued for at least 6 months. However, a limited exclusive license may be granted prior to the periods specified above if the Administrator determines that the public interest will best be served by the earlier grant of an exclusive license.

(2) The license may be granted for all or less than all fields of use of the invention, and throughout the United States of America, its territories and possessions, Puerto Rico, and the District of Columbia, or in any lesser geographic portion thereof.

(3) The exclusive period of the license shall be negotiated, but shall be for less than the terminal portion of the patent, and shall be related to the period necessary to provide a reasonable incentive to invest the necessary risk capital.

(4) The license shall require the licensee to practice the invention within a period specified in the license and then to achieve practical application of the invention.

(5) The license shall require the licensee to expend a specified minimum sum of money and/or to take other specified actions, within indicated period(s) after the effective date of the license, in an effort to achieve practical application of the invention.

(6) The license shall be subject to at least an irrevocable royalty-free right of the Government of the United States to practice and have practiced the invention throughout the world by or on behalf of the Government of the United States and on behalf of any foreign government pursuant to any existing or future treaty or agreement with the United States.

(7) The license may reserve to the Administrator, NASA, under the following circumstances, the right to require the granting of a sublicense to responsible applicant(s) on terms that

are considered reasonable by the Administrator, taking into consideration the current royalty rates under similar patents and other pertinent facts: (i) To the extent that the invention is required for public use by Government regulation, or (ii) as may be necessary to fulfill health or safety needs, or (iii) for other purposes stipulated in the li

cense.

(8) The license shall be nontransferable except to the successor of that part of the licensee's business to which the invention pertains.

(9) Subject to the approval of the Administrator, the licensee may grant sublicenses under the license. Each sublicense granted by an exclusive licensee shall make reference to and shall provide that the sublicense is subject to the terms of the exclusive license including the rights retained by the Government under the exclusive license. A copy of each sublicense shall be furnished to the Administrator.

(10) The license may be subject to such other reservations as may be in the public interest.

§ 1245.204 Other licenses.

(a) License to contractor. There is hereby granted to the contractor reporting an invention made in the performance of work under a contract of NASA in the manner specified in section 305(a)(1) or (2) of the National Aeronautics and Space Act of 1958 as amended (42 U.S.C. 2457(a)(1) or (2)), a revocable, nonexclusive, royalty-free license for the practice of such invention, together with the right to grant sublicenses of the same scope to the extent the contractor was legally obligated to do so at the time the contract was awarded. Such license and right is nontransferable except to the successor of that part of the contractor's business to which the invention pertains.

(b) Miscellaneous licenses. Subject to any outstanding licenses, nothing in this subpart 2 shall preclude the Administrator from granting other licenses for inventions, when he determines that to do so would provide for an equitable distribution of rights. The following exemplify circum

stances wherein such licenses may be granted:

(1) In consideration of the sett.ement of an interference;

(2) In consideration of a release of a claim of infringement; or

(3) In exchange for or as part of the consideration for a license under adversely held patent(s).

§ 1245.205 Publication of NASA inventions available for license.

(a) A notice will be periodically published in the FEDERAL REGISTER listing inventions available for licensing. Abstracts of the inventions will also be published in the NASA Scientific and Technical Aerospace Reports (STAR) and other NASA publications.

(b) Copies of pending patent applications for inventions abstracted in STAR may be purchased from the National Technical Information Service, Springfield, Va. 22151.

§ 1245.206 Application for nonexclusive li

cense.

(a) Submission of application. An application for nonexclusive license under § 1245.203(b) or a short-form nonexclusive license for special inventions under § 1245.203(c) shall be addressed to the NASA Patent Counsel of the NASA installation having cognizance over the NASA invention for which a license is desired or to the NASA Assistant General Counsel for Patent Matters.

(b) Contents of an application for nonexclusive license. An application for nonexclusive license under § 1245.203(b) shall include:

(1) Identification of invention for which license is desired, including the NASA patent case number, patent application serial number of patent number, title and date, if known;

(2) Name and address of the person, company or organization applying for license and whether the applicant is a U.S. citizen or a U.S. corporation;

(3) Name and address of representative of applicant to whom correspondence should be sent;

(4) Nature and type of applicant's business;

(5) Number of employees;

(6) Purpose for which license is desired;

(7) A statement that contains the applicant's best knowledge of the extent to which the invention is being practiced by private industry and the Government;

(8) A description of applicant's capability and plan to undertake the development and marketing required to achieve the practical application of the invention, including the geographical location where the applicant plans to manufacture or use, in the case of a process, the invention; and

(9) A statement indicating the minimum term of years the applicant desires to be licensed.

(c) Contents of an application for a short-form nonexclusive license. An application for a short-form nonexclusive license under § 1245.203(c) for a special invention shall include:

(1) Identification of invention for which license is desired, including the NASA patent case number, patent application serial number or patent number, title and date, if known;

(2) Name and address of company or organization applying for license; and (3) Name and address of representative of applicant to whom correspondence should be sent.

§ 1245.207 Application for exclusive li

cense.

(a) Submission of application. An application for exclusive license under § 1245.203(d) may be submitted to NASA at any time. An application for exclusive license shall be addressed to the NASA Assistant General Counsel for Patent Matters.

(b) Contents of an application for exclusive license. In addition to the requirements set forth in § 1245.206(b), the application for an exclusive license shall include:

(1) Applicant's status, if any, in any one or more of the following categories:

(i) Small business firm;

(ii) Minority business enterprise; (iii) Location in a surplus labor area; (iv) Location in a low-income urban area; and

(v) Location in an area designed by the Government as economically depressed.

(2) A statement indicating the time, expenditure, and other acts which the

applicant considers necessary to achieve practical application of the invention, and the applicant's offer to invest that sum and to perform such acts if the license is granted;

(3) A statement whether the applicant would be willing to accept a license for all or less than all fields of use of the invention throughout the United States of America, its territories and possessions, Puerto Rico, and the District of Columbia, or in any lesser geographic portion thereof;

(4) A statement indicating the amount of royalty fees or other consideration, if any, the applicant would be willing to pay the Government for the exclusive license; and

(5) Any other facts which the applicant believes to show it to be in the interests of the United States of America for the Administrator to grant an exclusive license rather than a nonexclusive license and that such an exclusive license should be granted to the applicant.

§ 1245.208 Processing applications for li

cense.

(a) Initial review. Applications for nonexclusive and exclusive licenses under §§ 1245.206 and 1245.207 will be reviewed by the Patent Counsel of the NASA installation having cognizance for the invention and the NASA Assistant General Counsel for Patent Matters, to determine the conformity and appropriateness of the application for license and the availability of the specific invention for the license requested. The Assistant General Counsel for Patent Matters will forward all applications for license conforming to §§ 1245.206(b) and 1245.207(b) to the NASA Inventions and Contributions Board when the invention is available for consideration of the requested license. Prior to forwarding applications for exclusive licenses to the Inventions and Contributions Board, notice in writing will be given to each nonexclusive licensee for the specific invention advising of the receipt of the application for the exclusive license and providing each nonexclusive licensee with a 30-day period for submitting either evidence that practical application of the invention has occurred or is about