to occur or, an application for an exclusive license for the invention.

(b) Recommendations of Inventions and Contributions Board. The Inventions and Contributions Board shall, in accordance with the basic considerations set forth in §§ 1245.202 and 1245.203, evaluate all applications for license forwarded by the Assistant General Counsel for Patent Matters. Based upon the facts presented to the Inventions and Contributions Board in the application and any other facts in its possession, the Inventions and Contributions Board shall recommend to the Administrator: (1) Whether a nonexclusive or exclusive license should be granted, (2) the identity of the licensee, and (3) any special terms or conditions of the license.

(c) Determination of Administrator and grant of nonexclusive licenses. The Administrator shall review the recommendations of the Inventions and Contributions Board and shall determine whether to grant the nonexclusive license as recommended by the Board. If the Administrator determines to grant the license, the license will be granted upon the negotiation of the appropriate terms and conditions of the Office of General Counsel.

(d) Determination of Administrator and grant of exclusive licenses-(1) Notice. If the Administrator determines that the best interest of the United States will be served by the granting of an exclusive license in accordance with the basic considerations set forth in §§ 1245.202 and 1245.203, a notice shall be published in the FEDERAL REGISTER announcing the intent to grant the exclusive license, the identification of the invention, special terms or conditions of the proposed license, and a statement that NASA will grant the exclusive license unless within 30 days of the publication of such notice the Inventions and Contributions Board receives in writing any of the following together with supporting documentation:

(i) A statement from any person setting forth reasons why it would not be in the best interest of the United States to grant the proposed exclusive license; or

(ii) An application for a nonexclusive license under such invention, in ac

cordance with § 1245.206(b), in which applicant states that he has already brought or is likely to bring the invention to practical application within a reasonable period.

The Inventions and Contributions Board shall, upon receipt of a written request within the 30 days' notice period, grant an extension of 30 days for the submission of the documents designated above.

(2) Recommendation of Inventions and Contributions Board. Upon the expiration of the period required by paragraph (c)(1) of this section, the Board shall review all written responses to the notice and shall then recommend to the Administrator whether to grant the exclusive license as the Board initially recommended or whether a different form of license, if any, should instead be granted.

(3) Grant of exclusive licenses. The Administrator shall review the Board's recommendation and shall determine if the interest of the United States would best be served by the grant of an exclusive license as recommended by the Board. If the Administrator determines to grant the exclusive license, the license will be granted upon the negotiation of the appropriate terms and conditions by the Office of General Counsel.

§ 1245.209 Royalties and fees.

(a) Normally, a nonexclusive license for the practical application of an invention granted to a U.S. citizen or company will not require the payment of royalties; however, NASA may require other consideration.

(b) An exclusive license for an invention may require the payment of royalties, fees or other consideration when the licensing circumstances and the basic considerations in § 1245.202, considered together, indicate that it is in the public interest to do so.

§ 1245.210 Reports.

A license shall require the licensee to submit periodic reports of his efforts to work the invention. The reports shall contain information within his knowledge, or which he may acquire under normal business practice, pertaining to the commercial use that is being made of the invention and

such other information which the Administrator may determine pertinent to the licensing program and which is specified in the license.

§ 1245.211 Revocation of licenses.

(a) Any license granted pursuant to § 1245.203 may be revoked, either in part or in its entirety, by the Administrator if in his opinion the licensee at any time shall fail to use adequate efforts to bring to or achieve practical application of the invention in accordance with the terms of the license, or if the licensee at any time shall default in making any report required by the license, or shall make any false report, or shall commit any breach of any covenant or agreement therein contained, and shall fail to remedy any such default, false report, or breach within 30 days after written notice, or if the patent is deemed unenforceable either by the Attorney General or a final decision of a U.S. court.

(b) Any license granted pursuant to § 1245.204(a) may be revoked, either in part or in its entirety, by the Administrator if in his opinion such revocation is necessary to achieve the earliest practical application of the invention pursuant to an application for exclusive license submitted in accordance with 1245.207, or the licensee at any time shall breach any covenant or agreement contained in the license, and shall fail to remedy any such breach within 30 days after written notice thereof.

license

(c) Before revoking any granted pursuant to this Subpart 2 for any cause, there will be furnished to the licensee a written notice of intention to revoke the license, and the licensee will be allowed 30 days after such notice in which to appeal and request a hearing before the Inventions and Contributions Board on the question of revocation. After a hearing, the Inventions and Contributions Board shall transmit to the Administrator the record of proceedings, its findings of fact, and its recommendation whether the license should be revoked either in part or in its entirety. The Administrator shall review the recommendation of the Board and determine whether to revoke the license in

part or in its entirety. Revocation of a license shall include revocation of all sublicenses which have been granted.

§ 1245.212 Appeals.

Any person desiring to file an appeal pursuant to § 1245.211(c) shall address the appeal to Chairman, Inventions and Contributions Board. Any person filing an appeal shall be afforded an opportunity to be heard before the Inventions and Contributions Board, and to offer evidence in support of his appeal. The procedures to be followed in any such matter shall be determined by the Administrator. The Board shall make findings of fact and recommendations with respect to disposition of the appeal. The decision on the appeal shall be made by the Administrator, and such decision shall be final and conclusive, except on questions of law, unless determined by a court of competent jurisdiction to have been fraudulent, or capricious, or arbitrary, or so grossly erroneous as necessarily to imply bad faith, or not supported by substantial evidence.

§ 1245.213 Litigation.

An exclusive licensee shall be granted the right to sue at his own expense any party who infringes the rights set forth in his license and covered by the licensed patent. The licensee may join the Government, upon consent of the Attorney General, as a party complainant in such suit, but without expense to the Government and the licensee shall pay costs and any final judgment or decree that may be rendered against the Government in such suit. The Government shall also have an absolute right to intervene in any such suit at its own expense. The licensee shall be obligated to promptly furnish to the Government, upon request, copies of all pleadings and other papers filed in any such suit and of evidence adduced in proceedings relating to the licensed patent including, but not limited to, negotiations for settlement and agreements settling claims by a licensee based on the licensed patent, and all other books, documents, papers, and records pertaining to such suit. If, as a result of any such litigation, the patent shall be declared invalid, the licensee shall

have the right to surrender his license and be relieved from any further obligation thereunder.

§ 1245.214 Address of communications.

(a) Communications to the Assistant General Counsel for Patent Matters in accordance with §§ 1245.206 and 1245.207 and requests for information concerning licenses for NASA inventions should be addressed to the Assistant General Counsel for Patent Matters, Code GP, National Aeronautics and Space Administration, Washington, D.C. 20546.

(b) Communications to the Inventions and Contributions Board in accordance with §§ 1245.208, 1245.211, and 1245.212 should be addressed to Chairman, Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, D.C. 20546.

Subpart 3-NASA Foreign Patent Program

AUTHORITY: 42 U.S.C. 2457(h) and Executive Orders 9865 and 10096.

SOURCE: 30 FR 1844, Feb. 10, 1965, unless otherwise noted.

§ 1245.300 Scope of subpart.

This subpart establishes policy, criteria, and procedures concerning the NASA Foreign Patent Program.

$1245.301 Inventions under NASA contracts.

(a) Pursuant to § 1245.113, NASA has facilitated the filing of foreign patent applications by contractors by providing for the granting of a waiver of title to a contractor to any identified invention in countries other than the United States in the event the Administrator of NASA does not desire to file a patent application covering the invention in such countries. However, any such waiver is subject to the reservation by the Administrator of the license required to be retained by NASA under section 305(f) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457(f)).

(b) Conversely, where the principal rights in an invention made under a NASA contract remain in the contrac

tor by virtue of waiver, § 1245.19(a)(5) provides that the contractor, upon written request, will convey to the Administrator of NASA the entire right, title, and interest in the invention in any foreign country in which the contractor has elected not to file a patent application.

(c) With respect to nventions in which NASA has acq red and retained the principal rights, NASA will file patent applications in countries other than the United States on inventions selected in accordance with the criteria set forth in § 1245.303.

§ 1245.302 Inventions by NASA employees.

(a) The foreign rights of NASA and of the NASA employee making an invention are determinable in accordance with Executive Orders 9865 and 10096 and Government Patent Board Administrative Order No. 6 issued pursuant thereto.

(b) Where NASA acquires an assignment of the domestic rights in an invention made by a NASA employee, NASA will also obtain an option to acquire the foreign rights, including the right to file foreign patent applications on the invention.

(c) Where NASA is entitled to only a governmental license in the invention, the principal foreign rights in the invention are retained by the employee unless he agrees in writing to assign such rights to NASA.

The following categories of inven tions will be considered for the filing of patent applications by NASA in countries other than the United States:

(a) Inventions which may be utilized abroad in governmental programs of the United States.

(b) Inventions which may be exploited abroad in the public interest by license to U.S. nationals or others.

(c) Inventions which may be utilized in applications type satellites, such as communications and meteorological satellites.

(d) Inventions considered to be basic discoveries or of major significance in an art.

(e) Inventions in fields which directly concern the public health or public welfare.

§ 1245.304 Procedures.

(a) The patent counsel at each NASA field installation will review all invention disclosures at the time of docketing and will expedite the processing and preparation of a U.S. patent application, if justified, on those inventions which appear to fall within the criteria set forth in § 1245.303. The patent counsel will make a recommendation as to whether or not foreign patent coverage appears justified at the time of assigning a priority evaluation to a disclosed invention.

(b) Preparation and filing of patent applications in foreign countries will be subject to approval of the Assistant General Counsel for Patent Matters, NASA Headquarters.

(c) The Office of Assistant General Counsel for Patent Matters will budget for and administer the filing of all patent applications in countries other than the United States.

(d) Coordination with other interested NASA offices will be undertaken by the Assistant General Counsel for Patent Matters.

Subpart 4-Foreign Patent Licensing Regulations

AUTHORITY: 42 U.S.C. 2457(g) and (h). SOURCE: 31 FR, 10958, Aug. 18, 1966, unless otherwise noted.

§ 1245.400 Scope of subpart.

(a) The subpart establishes the policy, terms, conditions, and procedures under which NASA-owned foreign patents and patent applications may be licensed.

(b) The provisions of this subpart apply to all NASA-owned patents granted in countries other than the United States and to NASA-owned patent applications pending in such countries and supplement the provisions of Subpart 2 of this part for foreign patent licensing.

§ 1245.401 Policy.

The foreign licensing program of the National Aeronautics and Space Administration serves to promote and utilize foreign patent rights vested in the Administration. The objectives of this program are to further the interests of United States industry in foreign commerce, to enhance the economic interests of the United States and to advance the international relationships of the United States.

§ 1245.402 Types of licenses and terms and conditions.

Licenses will be individually negotiated and may be granted to any applicant, foreign or domestic, on a nonexclusive or exclusive basis for royalties or other considerations and on such other terms and conditions as are deemed appropriate to the interests of the United States. Preference in the granting of foreign license rights will be shown to those applicants who have previously been granted a license under the corresponding U.S. patent or patent application.

§ 1245.403 Government license.

There will be reserved from each exclusive license an irrevocable, nonexclusive, nontransferable, royalty-free license for the practice of such invention throughout the world by or on behalf of the United States or any foreign government pursuant to any existing or future treaty or agreement with the United States.

§ 1245.404 Enforcement of patent rights.

An exclusive licensee will be authorized to enforce the licensed patent and to sue infringers of the patent at its own expense.

§ 1245.405 Procedures.

(a) NASA will publish in the United States, and elsewhere as may be appropriate, lists of NASA-owned foreign patents or patent applications available for licensing.

(b) NASA will also furnish written notice of the availability for licensing of NASA-owned foreign patents or patent applications to any licensee under the corresponding U.S. patent or patent application.

(c) Applications for license should be addressed to the Administrator, National Aeronautics and Space Administration, Washington, D.C. 20456. The application must fully identify the patent or patent application, and state the type of license requested together with proposed terms and conditions thereof.

(d) The conduct of negotiations with prospective licensees will be the responsibility of the General Counsel, NASA. In the conduct of such negotiations, due regard shall be had for the possible interests of NASA program and staff offices, and their coordination will be obtained as deemed appropriate.

(e) NASA will publish notice in the FEDERAL REGISTER, and elsewhere as may be appropriate, of its intention to grant an exclusive license under an identified patent or patent application. An exclusive license will not be granted until the expiration of 60 days from the date of notice in order to provide a suitable time interval for interested persons or other Government agencies to interpose comment or objection.

(f) All licenses shall become effective upon the written acceptance by the licensee of a license instrument specifying the type of license and terms and conditions thereof.

Subpart 5-Authority and Delega

tions To Take Certain Actions Relating to Patents and Other Intellectual Property Rights

AUTHORITY: 42 U.S.C. 2473, 2457; 14 CFR 1204.506.

SOURCE: 43 FR 34122, Aug. 3, 1978, unless otherwise noted.

§ 1245.500 Scope.

This Subpart 5 sets forth the authority and delegations relating to intellectual property rights, and the administration of the NASA patent program.

§ 1245.501 General Counsel.

The General Counsel administers the NASA patent program and is delegated authority to take the following specific actions related to intellectual

property, including patent, copyright, trademark, and related matters:

(a) Determination of rights. (1) To execute notifications of the Administrator's determinations made pursuant to section 305(a) of the National Aeronautics and Space Act of 1958, as amended;

(2) To make determinations, under Executive Order 10096 of January 23, 1950, as amended, of the respective rights of the Government and of the inventor in and to inventions made by employees under the adminstrative jurisdiction of the National Aeronautics and Space Administration, and to appoint a liaison officer to deal with the Commissioner of Patents in such matters pursuant to 37 CFR 100.10, "Administration of a Uniform Patent Policy With Respect to the Domestic Rights in Inventions Made by Government Employees";

(b) Powers of attorney. To appoint and/or revoke principal attorneys and to execute necessary powers of attorne for the purpose of filing and prosecuting patent applications in which the United States, as represented by the Administrator, has an interest by way of either title or license;

(c) Application papers and statements. To receive patent applications, documents, and statements transmitted to the Administrator pursuant to section 305(c) of the National Aeronautics and Space Act of 1958, as amended;

(d) Acceptance of licenses and assignments. To accept on behalf of the United States licenses under, assignments of, and other rights in inventions, patents, and applications for patents;

(e) Secrecy orders. To exercise all powers of the Administrator with respect to secrecy orders in patent cases and foreign filing under 35 U.S.C. 181 et seq.;

(f) Certifications. To exercise the authority of the Administrator with respect to certifications in support of requests for extensions of time under 35 U.S.C. 267;

(g) Foreign patent program. To exercise the authority of the Administrator in taking all necessary action to obtain and maintain patents in foreign countries, including the execution of