of the contract will depend, in large part, upon Petitioner's know-how in the miniaturization and packaging of existing circuits, and is not likely to generate new concepts that would result in Petitioner's obtaining a dominant patent position." Furthermore, Petitioner notes an expenditure of its own funds of approximately $1.33 million over a five-year period "in the related fields of thin films and plated wires," which are directly applicable to the field of the contract; accordingly, it appears obvious that acquisition of exclusive rights in all inventions made or that may be made during work under the present contract will not confer a preferred or dominant position on Petitioner. SECTION 1245.104(a)(4). The contract requires research and development to be performed with contractor-furnished labor and materials. SECTION 1245.104(a)(5). Although the thin film and plated wire techniques expected to be used in performing the contract are considered to be in a relatively new field, having been under development for only approximately five years, the Petitioner claims to have been active in the related digital switching and memory field for more than 15 years, and memory devices, per se, are of course well-known. In any event, it is agreed that Petitioner has made contributions in this field, with both its own and Government funds. Furthermore, the contract requires, as indicated by the technical evaluator, that the Petitioner use its best efforts in developing a miniaturized memory device of increased storage capacity, and this includes building upon existing technology in the thin film and plated wire field. SECTION 1245.104(a)(6). Petitioner alleges an expenditure of approximately $1.33 million of its own funds at its UNIVAC Research Center, Blue Bell, Pennsylvania, in the related fields of thin films and plated wires, and further alleges the expenditure of addi tional funds at its UNIVAC Engineering Center, St. Paul, Minnesota. But the field of technology involved in the present contract is the more limited field of "plated wire memory devices," and it is in relation to the latter field that Petitioner's technical competence and established nongovernmental commercial position must be examined. However, the pertinent technical personnel indicate that "significant" portions of the above-mentioned funds are considered to have been directed to "thin film techniques as applied to memory devices"; accordingly, it is apparent that Petitioner has achieved technical competence in the defined field. As further support of this position, reference is made to a number of technical papers by Petitioner's employees, which have been presented as exhibits, all relating to the field of technology involved in the present contract, namely, thin film techniques or thin film memory systems. Petitioner further submits a number of its patents, also as evidence in the field, and, although only one of these patents specifically relates to thin film memory devices, the others broadly relating to various functions that could occur in memory systems, a number of abstracts of pending patent applications by Petitioner, all directly relating to thin film or plated wire memory devices, have also been presented as exhibits in further support of Petitioner's technical competence in this field. The Petitioner has additionally presented a brochure showing that it is currently commercially marketing a computer utilizing a thin film memory as one of its principal features, and claims that this is one of the first computers of its type in the field. Furthermore, Petitioner is recognized, as agreed to by the technical evaluator, as having an established nongovernmental commercial position in the broader area of computers utilizing memory storage devices, including the type involved in the present contract. NATIONAL AERONAUTICS AND SPACE ADMINISTRATION PETITIONER: United Aircraft Corporation DESCRIPTION: Research and Development of the RL-10 Rocket Engine Section 1245.105, NASA Patent Waiver Regulations (1964)--Incidental Commercial Utility--Government Funding v. Private Funding--Government as Principal Developer-Competition in Contract Field--Possibility of Preferred or Dominant Position--Comparative Patent Position of Petitioner and Competitors in Field--Petitioner's Incidental Use of Government-Owned Facilities and Materials--Extent of Petitioner's Coordination of Others' Work Required by Contract--Technical Competence of Contractor--Direct Relationship to Field of Technology--Established Nongovernmental Commercial Position-Research and Development of the RL-10 Rocket Engine--Liquid-Propelled Rocket Engines or "Aerospace Propulsion" as Field of Technology--PETITION GRANTED FINDINGS AND RECOMMENDATION OF THE INVENTIONS AND CONTRIBUTIONS BOARD: STATEMENT OF FACTS: The Petitioner, United Aircraft Corporation, is a contractor of the National Aeronautics and Space Administration, under Contract NAS8-5623 and Supplemental Agreement No. 8 thereto. This petition is for waiver of title to all inventions made, or that may be made, under the above-identified contract, and was submitted to NASA within the time allowed by the Regulations. In its initial consideration of the petition, pursuant to Section 1245.105 of the Patent Waiver Regulations (14 CFR 1245.100 et seq.), the Inventions and Contributions Board was unable to make certain of the findings required by Section 1245.104 of the Regulations. More specifically, the Board made the necessary findings set forth in Section 1245.104(a)(1), (2), and (5); however it was not felt that sufficient evidence was available to make the findings under subsections (3), (4), and (6) of that Section. Accordingly, pursuant to Sec1245.111(b)(1)(iii), the Board notified the Petitioner that it intended to recommend to the Administrator that the petition be denied. Pursuant to Section 305(f) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457(f)) and Section 1245.111(c) of the Patent Waiver Regulations, the Petitioner then requested a hearing before the Inventions and Contributions Board. This request was granted, and public notice of the hearing was given in the Federal Register of September 18, 1965 (30 F.R. 11961). The hearing was conducted in Washington on October 20, 1965, at which time the Petitioner presented, through its duly authorized representatives, considerable testimony and many exhibits. In turn, members of the Board and its Counsel directed a number of questions to the Petitioner and to technical advisors of the Board who were present at the hearing. (Names of Petitioner's and Board's representatives who participated in the hearing are listed in the addendum). The Board's final consideration of the petition took place on November 16, 1965. The Board, having further duly considered the allegations and claims of the petition, and having employed as a basis all the evidence now before it, expressly makes the findings under Section 1245.104(a) of the NASA Patent Waiver Regulations (1964), (which Section, in its entirety, is expressly incorporated herein by reference), as required by Section 1245.105(b); concludes that the Petitioner fully satisfies each of the criteria specifically enumerated by the cited Section as a condition; further concludes that the interests of the United States would best be served by waiving title under Section 1245.105 of the Regulations, and therefore RECOMMENDS THE GRANT OF THE PETITION. The reasons for the Board's findings are stated below, corresponding in each instance to the respective criterion set forth in each subsection of Section 1245.104(a) of the Regulations. SECTION 1245.104(a)(1). The principal purpose of the contract is to conduct a continuing program of research and development related to the RL-10 engine, which is used by NASA in its space exploration program. Although inventions arising out of this contract may have commercial utility, the Board does not consider that there is any likelihood that any such invention would be required for use by any segment of the general public. Neither the purpose of the contract nor the work being performed under the contract involves the creation, development or improvement of products, processes methods which are intended for use by the general public. or SECTION 1245.104(a)(2). The field to be explored under this contract include, in the main, liquid-hydrogen technology, rocketcombustion technology, bearings, turbines, and related technologies for achieving a system to be used in space exploration. There is no direct relationship between such fields and the public health or the public welfare. SECTION 1245.104(a)(3). The Board had initially decided, on the basis of the petition and other available documentation, that the contract was in the field of liquidpropelled rocket engines, in which there had been little significant experience outside of work funded by the Government. In the absence of sufficient documentation and other evidence in the initial and supplementary petitions to show clearly that the Petitioner would not be placed in a preferred or dominant position in this field, the Board was unable to make the necessary finding. The Petitioner argued that the field of technology was not liquid-propelled rocket engines, but rather that it was "aerospace propulsion," and that in this field there was certainly significant experience outside of work funded by the Government. In addition, the Petitioner argued, the private development effort of industry in the field of aerospace propulsion was such that no company had a dominant or preferred position, and that no such position would result from the contract in question here. The Board finds that the contract is in the field of technology of liquid-propellant rocket engines. Although the work to be performed under the contract encompasses a broad scope and requires a background in various disciplines, nevertheless the predominant technology involved in the contract pertains to liquid rocket-propulsion systems and the application thereof to a space vehicle powerplant. The Government has been the principal developer of liquidpropellant rocket engines, since the work done in this field in recent years has been almost entirely sponsored by the Department of Defense and the National Aeronautics and Space Administration. Since 1948, hundreds of millions, if not several billions, of dollars has been expended by the Government for feasibility studies, research, development, and production in this field of technology, whereas there has been relatively little privately-funded work in this field, and correspondingly little experience privately acquired. This field of technology, liquid-propellant rocket engines, is divided generally into three classes. One class includes those engines using storable propellants that can be loaded and kept for some time without the necessity of cryogenic ambient temperatures; a second class includes engines in which liquid propellants are hermetically sealed at the point of manufacture; and a third class includes engines powered by cryogenic propellants, such as the RL-10 liquid-propellant rocket engine. The first and second of these classes of engines are particularly suitable for military purposes, since they are normally designed for operations of short duration; the third class is particularly suitable for the needs of NASA in space exploration. At the time of this contract, a number of firms had acquired considerable experience in one or more of these classes through Government-funded work. In this regard, Aerojet- General Corporation has been doing hydrogen-oxygen rocket work since 1959; the contractor, Pratt and Whitney, undertook in the late 1950's the development program of the RL-10 engine, a program which is continued by this contract; and Rocketdyne Division of North American Aviation is currently developing the J-2 liquid-hydrogen rocket engine, which is of a thrust class larger than the RL-10. The total funding of the liquid-propellant rocket technology under the North American J-2 effort alone is more than 20 times the $15 million funding of this contract. As a consequence of the earlier research and development by the contractor in this field, it has received a number of patents that are related to this field. However, numerous patents have been received by others in this field of technology, and the contractor is not the major holder of patents in the field. This subsection (104(a)(3)), corresponding to subsection 1(a)(3) of the Presidential Memorandum and Statement of Government Patent Policy, 28 F.R. 10943 (1963), was intended to "...guard against the possibility of a contractor being placed in a preferred or dominant position through patents in a scientific or technological field when the same has been wholly or largely developed by the Government." Federal Council for Science and Technology, Annual Report on Government Patent Policy, at page 18 (1965). In view of this, and in view of the number of firms doing work in this field and the small size of this contract in relation to the total effort currently being devoted to the field, it is clear that the acquisition of exclusive rights to all inventions that may be made under this contract would not confer on the contractor a preferred or dominant position in the field. SECTION 1245.104(a)(4). Certain Government-owned facilities, such as vacuum pumps and cryogenic dewars, and special test equipment, such as amplifiers and digital data-recording systems, are furnished by the Government to the contractor for use in the performance of this contract; however, the work is to be performed at the contractor's Florida Research and Development Center, where considerable contractor-owned equipment is to be used. As stated in the Annual Report of the Federal Council for Science and Technology, op. cit. supra, at page 19, with respect to the corresponding subsection 1(a)(4) of the Presidential Memorandum, it applies where "...the Government owns research and development facilities, and the contractor is retained to manage and operate such facilities for the Government. This subsection is not intended to include within its scope any contract which incidentally includes the use of some Government-owned materials, facilities, equipment or the like." Thus, this is not a contract for the services of the contractor in the operation of a Government-owned facility. The contractor's only responsibility for "coordination" under the contract is to make available technically qualified personnel, as required, to coordinate the performance, physical, and installation characteristics of the engines with NASA, and with other NASA contractors. The contractor does not, however, issue requests for proposals or change orders to others, or direct the course of the work that they perform, or evaluate the work of other prime contractors. Inasmuch as the coordination involved in the contract is primarily that of liaison between the contractor and others, to ensure an integrated system that will give maximum performance, and in view of the fact that the work is to be performed at the contractor's facility by its own personnel, the contract is not for coordinating and directing the work of others in the sense of this subsection of the Patent Waiver Regulations. SECTION 1245.104(a)(5). The work to be performed under the contract is a continuation of earlier work done by Petitioner on the RL-10 rocket engine. As indicated above, the contractor has a number of patents and considerable know-how in this field, and the engine developed under this contract is for use by NASA. SECTION 1245.104(a)(6). The contractor has acquired considerable technical competence in the field of liquid-propellant rocket engines, particularly in the class of engines utilizing cryogenic propellants. The RL-10 rocket engine has been under development by the contractor since 1958, and its experience and know-how are reflected in the number of ground testings and the successful operation of the engine in both Atlas-Centaur and Saturn launchings. For example, the contractor has conducted 6800 firings under simulated altitude conditions, and 44 RL-10's have been fired in space. The contractor's research and development activity in the field of liquidpropellant rocket technology is further evidenced by the patents it holds that relate to this technology. The field of liquid-propellant rocket engines is directly related to the area of turbojet engines. In this area, the Petitioner has an established nongovernmental commercial position, as is evidenced by the fact that Pratt and Whitney aircraft turbines are used by 90% of the major commercial airlines. The relationship of liquid-propellant engines to turbojet engines may be demonstrated in a number of ways: in the 1950's the Petitioner converted one of its J-57 turbojet eigines to burn hydrogen and air in a manner similar to that in which a conventional turbojet engine operates. This led, in turn, to the development of the model 305 engine, which employed air as the oxidizer and liquid hydrogen as turbine-working fluid. Thereafter, the Petitioner's experience with the model 304 engine was of considerable weight in its selection as the initial RL-10 engine contractor. Thus it will be seen that in a sense the RL-10 engine grew out of turbojet engine technology. Furthermore, many of the components and features of turbojet engines are closely similar to those employed in the RL-10 engine; similarity exists between such engine parts as fuel and oxidizer pumps, tubular heat exchangers, combustion chambers and jet nozzles, and in the technology of lubrication and fabrication, brazing and machining of tubular structures, and in many other areas. At Petitioner's Florida Research and Development Center, liquid-rocket engines and turbojet engines are designed in many cases by identical personnel, and invariably by personnel having close working relations. ADDENDUM: Those participating in the |