6. Number of inventions reported under contracts having advance waivers and contractor intends to file.. 216 the patent and for which an exclusive be by express written instrum.en's. No Title 14-AERONAUTICS AND 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 Acronautics and Space Administration, or his designee. (D) "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). (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 Au.HORITY: The provisions of th: Subpart technology. In addition, NASA has been 2 15 ued under 42 USC. 2457, 2173 (b) (3). $ 1245.200 Scope of subpart. This Subpart 2 prescribes the terms, onditions, and procedures for licensing tentions covered by US. patents and patent applications for which the Administrator of the National Aeronautics and Space Administration holds title on behalf of the United States. 61215.201 Definitions. For the purpose of this subpart, the 'o' aw in definitions apply: די Invention" means an invention roved by a US patent or patent appllcation for which the Adminustrator of NASA holds title on behalf of the United States and which is designated by the Administration as appropriate for the Krant 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 inatter 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 reasonbly accessible to the public. (d) Special invention" ineans any invention designated by the NASA Assistrnt 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 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 seck exclusive licensees when such licenses will provide the necessary incentive to the licensee to achieve carly 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 license shall be granted either CXpressly 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 foreign government. any (a) General. As an incentive to cncourage practical application of inventions, licenses will be granted to responsible applicants according to the circumstances and conditions set forth in this section. (b) Noncxclusive 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 sp cified in the license. (3) The license all 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: (1) 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 Govern ment 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 practicai applicatior. of the invention; and (i) Either a notice pursuant to 1245203 listing the invention as avail de for cent has been published in the DIHAL LIGHTER for at least 9 month, or a patent covering the inContion h.. be sued for at least 6 montin. However, a limited exclusive 11cenze may be granted prior to the periods specified above it the Administrator detet mines 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 then all felds of use of the invention, and throughout the United States of America, its territories and Pa sesions, 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 han the terminal portion of the patent, and shall be related to the period necesry to provide a reasonable incentive to unvest the necessary risk capital. C) The license shall require the 11censee to practice the invention within a period specified in the license and then to achieve practical application of the The Heense shall require the 11sense to expend a specified minimum sum of money and /or to take other speclfed ctions, within indicated period (s) ter the effective date of the license, non efort to achieve practical appli...t of the invention. 6) The cense shall be subject to at Jedan revocable royalty-free right of the Genn:ent of the United States to Practice and have practiced the inven on throughout the world by or on bebf of the Government of the United States and on behalf of any foreign government pursuant to any existing or fufun 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 rovalty rates under similar patents and other pertinent facts: (1) To the extent th. t the invention is required for public use by Government regulation, or (ii) as may be necessary to fulfill health or safety needs, or (1) for other purposes stipulated in the license. (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 wider the exclusive licensc. A copy of each ublicense shall be furnished to the Administrator. (1) The license may be subject to such other reservations as may be in the public interest. $ 12 15.2014 Other licenses. (a) License to contractor. There is hereby granted to the contractor report- (b) Miscellaneous licenses. Subject to subpart 2 shall preclude the Administra tor from granting other licenses for in- (1) In consideration of the settlement (2) In consideration of a release of a claim of infringement; or (3) In exchange for or as part of the § 1245.205 Publication of NASA inven- (a) A notice will be perodically pub- (b) Copies of pending patent applica- § 1245.206 Application for nonexclusive (a) Submission of application. An ap- (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; (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 capaopment bility and plan to undertake the devel and mketing 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. short-form nonexclusive license. An application for a short-form nonexclusive license under $1245.203(c) for a special invention shall include: (c) Contents of an application for a (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. § 1215.207 Application for exclusive license. (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 (4) Nature and type of applicant's pay the Government for the exclusive business; (5) Number of employees; license; and (5) Any other facts which the appli(6) Purpose for which license is cant believes to show it to be in the interdesired; ests of the United States of America for the Administrator to grant an exclusive ilcense rather than a nexclusive 11 cense and that such an exclusive license should be granted to the applicant. license. any of the following together with sup- time shall default in making any report required by the license, or shall make any (1) A statement from any person false report, or shall commit any breach § 1245.208 Processing applications for setting forth reasons why it would not be in the best interest of the United of any covenant or agreement therein States to grant the proposed exclusive contained, and shall fail to remedy any such default, false report, or breach license; or (11) An application for a nonexclusive within 30 days after written notice, or if license under such invention, in accord- the patent is deemed ance 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. (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 1 available for consideration of the requested license. Prior to forwarding applications for exclusive licenses to the Inventions and Contributions Board, noLice 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 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 Eoard shall recommend to the Ad:ninistrator: (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 recom mendations of the Inventions and Contributions Board and shall determine whether to grant the nonexclusive 11cense 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 licenscs-(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 cor.siderations set forth in $ 1245.202 and 1245.203, a notice shall bo 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 cense unless within 30 days of the publlcation of such notice the Inventions and Contributions Board receives in writing The Inventions and Contributions Board (3) Grant of exclusive licenses. The 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 royaltles, 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 infornation 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 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 Admiristrator 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. any license (c) Before revoking 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 filling 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 suc 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 sult, but without expense to the Govand any final judgment or decree that ernment and the licensee shall pay costs may be rendered against the Govern |