SECTION 1245.104(a)(6). That Arthur D. Little, Inc. has acquired technical competence in the field of solid-state physics is demonstrated by the numerous (26) patents that it has received pertaining to this field; its R&D activity in the field since 1961 (expenditures in excess of $200,000); and the large amounts of money received for its professional-services work from nongovernmental clients since that time. The Contractor asserts that, although it is not a manufacturing concern, it is in the business of selling professional services and licensing the results of its research. It argues that, operating as a business, its

primary aim is financial profit, and in order to compete effectively with research firms of a similar type, it must utilize most effectively its main assets, i.e., the results of its professional research work. To demonstrate further its business position, the Contractor discloses that since 1961 more than $157,000 was received from nongovernment clients for consulting and professional services in this field. In addition, royalty payments on the order of $60,000 were received from patents and patent applications licensed or assigned in this field. While much of its work is carried on behalf of both industry and Government, the Contractor states that it is actively engaged in doing research on its own behalf, and in licensing the results of such research. These services that can be secured from Arthur D. Little, Inc., coupled with the strong effort it makes to license the fruits of its research, provide an effective means by which new technology is made readily accessible to the public. Accordingly, it is found that the work called for by the contract is in a field of technology in which the contractor has acquired technical competence directly related to an area in which it has an established nongovernmental commercial position.

experience in the field outside of work funded by the Government. To this end, the Petitioner notes that its own Semiconductor Division has expended about $200,000 of its own funds, representing some 25,600 manhours, to produce complementary compres sion bonded electrical devices and components thereof. It further notes that its own privately-funded efforts have resulted in several inventions, with at least five patents and patent applications in the invention field. The NASA technical evaluator provides further support for a finding of significant privately-funded experience in the field by noting that several companies are active in private developments in the field, and that the Petitioner itself is a leader in the invention field of compression bonded electrical devices. The evaluator also notes that the Government has not been the principal developer of the field, and that, in fact, Government expenditures therein appear to have been relatively minor, in comparison to expenditures by Petitioner and others in private industry. Moreover, it is also considered that, in view of the recognized existence both of the competition of others in the field and alternative devices on the market, acquisition of exclusive rights would not place the Petitioner in a preferred or dominant position.

The Board further expressly finds, as required by Section 1245.106(c), that in view of the Petitioner's plans and intentions, waiver of title would be an effective incentive to bring the invention to the point of practical application at the earliest practicable date. Petitioner states that it intends to use the invention in a new line of semiconductor devices, and that it has tentative plans to produce 4500 units of the invention for the commercial market early in 1967. Furthermore, the Petitioner has shown that it has a significant patent portfolio and extensive experience in the invention field. In addition, the Petitioner clearly has the capability to develop commercial applications and market the invention, which it is recognized would involve considerable expense. However, it states that its ability to manufacture and sell the invention and related products at a profit depends upon maximum patent protection.

On the basis of all the above- enumerated findings, the Inventions and Contributions Board concludes that the interests of the United States would best be served by waiving title under Section 1245.106 of the NASA Patent Waiver Regulations of June 1, 1966, and therefore RECOMMENDS THE GRANT OF THE PETITION.

PETITIONER: North American Aviation, Inc.

CONTRACT: INVENTION:

NASW-16

Aluminum Welding Rod

STATEMENT OF FACTS: The Petitioner, North American Aviation, Inc., is a contractor of the National Aeronautics and Space Administration, under Contract NASW-16. The petition was made for waiver of title of the United States in an invention entitled "Aluminum Welding Rod," described in an attachment to the petition. The invention was made by Romeo A. Zueck, an employee of the Petitioner, in the performance of work required under the aboveidentified contract, and in the manner specified in Section 305(a) of the National Aeronautics and Space Act of 1958, as determined by the Administrator. The petition was considered by the Inventions and Contributions Board on December 7, 1966 and March 28, 1967.

The Board, having duly considered the allegations and claims of the above- identified petition, expressly makes the findings required under Section 1245.106(b) of the NASA Patent Waiver Regulations (1966), (which Section, in its entirety, is hereby expressly incorporated by reference), and concludes that the invention does not fall within the enumerated proscriptions of the cited Section. The reasons for the Board's findings are stated below, corresponding in each case to the respective criterion set forth in each subsection.

SECTION 1245.106(b)(1). The invention relates to an aluminum alloy useful as a welding rod, the alloy having the unique characteristic of being able to withstand the high temperatures used in brazing after welding. Although commercial utility for the invention may be found in any application where welding and brazing of aluminum are both required in the same assembly,

e.g., for ducts, bellows, and complex valves, the present alloy was developed specifically under a Governmental contract for the F-1 rocket engine. Accordingly, the inventive alloy is obviously not related to a Governmental program for creating, developing, or improving products, processes, or methods for use by the general public. SECTION 1245.106(b)(2). Although the aluminum alloy of the present invention offers improved resistance to the high temperatures used in a brazing cycle, and the ability to form high-strength aluminum castings, and may thus have widespread commercial utility, it is not considered an invention of the type that would likely be required by Governmental regulations for use by the general public.

SECTION 1245.106(b)(4). The invention is considered to be in the field of technology of welding materials. The Petitioner states that the invention is an outgrowth of the work it has done for many years in the development of new aluminum alloys, and that its employees have made many inventions in the aluminum-alloy and metal-joining fields. It is pointed out that numerous aluminum welding rod alloys have been extensively developed by private industry outside of Government funding, and are available commercially from such companies as ALCOA and Reynolds, so that the Government has not been the principal developer of the field.

Therefore, in view of the competition existing in the invention field, and the availability on the market of many alternatives, it appears clear that acquisition of exclusive rights would not confer on the Petitioner a preferred or dominant position.

The Board further expressly finds, as required by Section 1245.106(c), that, in view of the Petitioner's plans and intentions, waiver of title would be an effective incentive to bring the invention to the point of practical application at the earliest practicable date. The Petitioner asserts that if the invention is not utilized or licensed by the Company, it is made available to NAVAN, Inc., a wholly-owned subsidiary of the Contractor, which has been established for the exploitation of Company by-product inventions, either by manufacture, sale, or licensing. Specifically, it is stated that the corporate offices of the Company seek to review all significant items of new technology and inventions for exploitation purposes. The invention may be exploited directly through or by the Division of the corporation in which the idea originated, as part of the product line of the Corporation, or by licensing to an outside source. A decision having been made that the invention does not possess prime product-line qualities, or that extensive technology is not required for its transfer into commercial use, it is referred to NAVAN, Inc. The Petitioner points out that NAVAN has as its primary function to sell inventions as new products through its own

sales organization, and in order to accomplish effective marketing and/or licensing of inventions, potential licensees are contacted either in person or by mail. It is stated that the Company will, with respect to each of its waivers on NASA inventions, proceed in the manner previously described; namely, each waived invention will first be reviewed by the Division in which it originates. That Division, if it desires, will attempt either to utilize it in its own product line, or to license the concept. If it is decided to license, then affirmative steps are taken, such as contacting specific potential licensees and negotiating with specific licensees an agreement which will often include considerable know-how. If the Division is not interested in utilizing the waived invention, then it will be referred to NAVAN, where once again positive steps are taken to contact interested licensees, or alternatively, manufacturers, whereby NAVAN would market the idea. In this case, as in each other case, a waived NASA invention will be treated as a separate entity, and affirmative steps will be taken to attempt to bring it to the point of earliest practical application.

On the basis of all the above- enumerated findings, the Inventions and Contributions Board concludes that the interests of the United States would best be served by waiving title under Section 1245.106 of the NASA Patent Waiver Regulations of June 1, 1966, and therefore RECOMMENDS THE GRANT OF THE PETITION.