proceeding brought before a properly constituted authority authorized to hear such matters.

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

(1) A patent application is filed in the country within nine months from the date a corresponding U.S. application is filed, or 6 months from the date permission is granted 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 of the Board the identifying serial number and filing date of each foreign patent application filed promptly upon receipt thereof; and, upon request, a copy of the foreign patents or applications;

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

(4) The waiver recipient, in the event he elects not to continue prosecution of any foreign application filed on such invention or if he intends to abandon a foreign patent by the nonpayment of a maintenance tax, notifies the Chairman of the Board within sufficient time to allow assumption of prosecution by the Government, or payment of the maintenance tax, respectively, and delivers to the Chairman of the Board 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 foreign or domestic rights under § 1245.104, § 1245.105, or § 1245.106 shall be by petition to the Administrator, NASA, and shall include:

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

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

(3) A specification of the kind of waiver requested and a citation to section 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 the petitioner (s) is the inventor(s), a statement in writing from the contractor that the contractor has conveyed sufficient rights so that the petitioner(s) may carry out the obligations of the waiver.

(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.

§ 1245.111 Submission of petitions.

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 through the contracting officer to the Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, D.C. 20546. All other petitions shall be submitted directly to the Board.

§ 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, NASA. 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 objective 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. Petitioners may be represented by any authorized person including an 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) After making the findings of fact, the Board shall formulate its proposed recommendation to the Administrator, NASA, 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 thereto, and its recommendation to the Administrator, NASA.

(3) After a hearing, as provided in § 1245.113, the Board shall consider the entire record and shall transmit its recommendations and findings to the Administrator, NASA, along with the petition, and a summary record of the proceedings.

(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, NASA, 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 Administrator, NASA, decides to grant the waiver, the petitioner shall be sent an instrument of waiver confirmatory of the conditions and reservations of the waiver grant for his execution and prompt return to the Board.

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§ 1245.116 Filing of patent applications.

(a) In order to protect the interests of the Government and of petitioners in inventions, petitioners are encouraged to file patent applications prior to the final disposition of their petitions for waiver.

(b) If a petitioner files a U.S. patent application on an identified invention during the pendency of the petition, or within 60 days prior to the receipt thereof by NASA, NASA will reimburse the petitioner for the reasonable costs of filing said U.S. patent application and such patent prosecution as may have ensued, 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 respect to foreign and domestic rights, if both are so requested; and

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

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

Subpart 2-Patent Licensing
Regulations

AUTHORITY: The provisions of this Subpart 2 issued under 42 U.S.C. 2457, 2473 (b) (3).

SOURCE: The provisions of this Subpart 2 appear at 37 F.R. 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.

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 composition 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 amended (42 U.S.C. 2457).

§ 1245.202 Basic considerations.

as

(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 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 license.

(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 incen

tive 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