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(b) Examination of witnesses. Wit- the Board may honor requests for subnesses before the Board will be exam poenas not made within these time ined orally under oath or affirmation, limitations. unless the presiding administrative (2) A request for a subpoena shall judge shall otherwise order. If the tes- state the reasonable scope and general timony of a witness is not given under relevance to the case of the testimony oath, the Board may advise the wit- and of any books and papers sought. ness that his statements may be sub (d) Requests to quash or modify. ject to the provisions of Title 18, U.S. Upon written request by the person Code, sections 287 and 1001, and any subpoenaed or by a party, made other provision of law imposing penal. within 10 days after service but in any ties for knowingly making false repre event not later than the time specified sentations in connection with claims in the supoena for compliance, the against the United States or in any Board may (1) quash or modify the matter within the jurisdiction of any subpoena if it is unreasonable and opdepartment or agency thereof.
pressive or for other good cause
shown, or (2) require the person in 8 1241.221 Subpoenas.
whose behalf the subpoena was issued (a) General. Upon written request of to advance the reasonable cost of proeither party filed with the recorder, or ducing subpoenaed books and papers. on his own initiative, the administra Where circumstances require, the tive judge to whom a case is assigned Board may act upon such a request at or who is otherwise designated by the any time after a copy has been served chair may issue a subpoena requiring: upon the opposing party.
(1) Testimony as a deposition. The (e) Form; issuance. (1) Every subpoedeposing of a witness in the city or na shall state the name of the Board county where he resides or is em- and the title of the appeal, and shall ployed or transacts his business in command each person to whom it is diperson, or at another location conven- rected to attend and give testimony, ient for him that is specifically deter- and if appropriate, to produce specimined by the Board;
fied books and papers at a time and (2) Testimony at a hearing. The at place therein specified. In issuing a tendance of a witness for the purpose subpoena to a requesting party, the of taking testimony at a hearing; and administrative judge shall sign the
(3) Production of books and papers. subpoena and may, in his discretion, In addition to paragraphs (a) (1) or (2) enter the name of the witness and othof this section, the production by the erwise leave it blank. The party to witness at the deposition or hearing of whom the subpoena is issued shall books and papers designated in the complete the subpoena before service. subpoena.
(2) Where the witness is located in a (b) Voluntary cooperation. Each foreign country, a letter rogatory or party is expected (1) to cooperate and subpoena may be issued and served make available witnesses and evidence under the circumstances and in the under its control as requested by the manner provided in 28 U.S.C. 1781 to other party, without issuance of a sub- 1784. poena, and (2) to secure voluntary at. (f) Service. (1) The party requesting tendance of desired third-party wit- issuance of a subpoena shall arrange nesses and production of desired third for service. party books, papers, documents, or (2) A subpoena requiring the attendtangible things whenever possible.
ance of a witness at a deposition or (c) Requests for subpoenas. (1) A re hearing may be served at any place. A quest for subpoena shall normally be subpoena may be served by a United filed at least:
States marshal or deputy marshal, or (i) 15 days before a scheduled deposi- by any other person who is not a party tion where the attendance of a witness and not less than 18 years of age. Serv. at a deposition is sought;
ice of a subpoena upon a person (ii) 30 days before a scheduled hear: named therein shall be made by pering where the attendance of a witness sonally delivering a copy to that at a hearing is sought. In its discretion person and tendering the fees for one
day's attendance and the mileage pro- 81241.225 Withdrawal of exhibits. vided by 28 U.S.C. 1821 or other appli
After a decision has become final cable law; however, where the subpoe
the Board may, upon request and na is issued on behalf of the Government, money payments need not be
after notice to the other party, in its tendered in advance of attendance.
discretion permit the withdrawal of
original exhibits, or any part thereof, (3) The party at whose instance a subpoena is issued shall be responsible
by the party entitled thereto. The subfor the payment of fees and mileage of
stitution of true copies of exhibits or the witness and of the officer who
any part thereof may be required by serves the subpoena. The failure to
the Board in its discretion as a condimake payment of such charges on tion of granting permission for s demand may be deemed by the Board withdrawal. as a sufficient ground for striking the testimony of the witness and the
REPRESENTATION books or papers the witness has pro
8 1241.226 The appellant. duced.
(g) Contumacy or refusal to obey a An individual appellant may appear subpoena. In case of contumacy or re before the Board in person, a corporafusal to obey a subpoena by a person tion by one of its officers; and a partwho resides, is found, or transacts nership or joint venture by one of its business within the jurisdiction of a members; or any of these by an attorUnited States District Court, the ney at law duly licensed in any state, Board will apply to the Court through commonwealth, territory, the District the Attorney General of the United of Columbia, or in a foreign country. States for an order requiring the An attorney representing an appellant person to appear before the board or a shall file a written notice of appearmember thereof to give testimony or
ance with the Board. produce evidence or both. Any failure of any such person to obey the order 81241.227 The government. of the Court may be punished by the Court as a contempt thereof.
Government counsel may, in accord
ance with their authority, represent 8 1241.222 Copies of papers.
the interest of the Government before
the Board. They shall file notices of When books, records, papers, or doc
appearance with the Board, and notice uments have been received in evi
thereof will be given appellant or apdence, a true copy thereof or of such
pellant's attorney in the form specipart thereof as may be material or relevant may be substituted therefor,
fied by the Board from time to time. during the hearing or at the conclu
DECISIONS sion thereof. 8 1241.223 Posthearing briefs.
8 1241.228 Decisions. Posthearing briefs may be submitted
Decisions of the Board will be made upon such terms as may be directed by
in writing and copies of the decision the presiding administrative judge at
will be forwarded simultaneously to the conclusion of the hearing.
both parties. The rules of the Board
and all final orders and decisions 8 1241.224 Transcript of proceedings.
(except those required for good cause
to be held confidential and not cited Testimony and argument at hearings shall be reported verbatim, unless
as precedents) shall be open for public the Board otherwise orders. Waiver of
inspection at the offices of the Board. transcript may be especially suitable
Decisions of the Board will be made for hearings under & 1241.212-2. Tran
solely upon the record, as described in scripts of the proceedings shall be sup
$ 1241.213. plied to the parties at such rates as may be fixed by contract with the reporter.
MOTION FOR RECONSIDERATION
8 1241.229 Motion for reconsideration.
A motion for reconsideration may be filed by either party. It shall set forth specifically the grounds relied upon to sustain the motion. The motion shall be filed within 30 days from the date of the receipt of a copy of the decision of the Board by the party filing the motion.
8 1241.232 Remand from court
Whenever any court remands a case to the Board for further proceedings, each of the parties shall, within 20 days of such remand, submit a report to the Board recommending procedures to be followed so as to comply with the court's order. The Board shall consider the reports and enter special orders governing the handling of the remanded case. To the extent the court's directive and time limitations permit, such orders shall conform to these rules.
SUSPENSIONS; DISMISSALS AND
8 1241.230 Suspensions; dismissal without
$ 1241.233 Sanctions. The Board may suspend the proceedings by agreement of counsel for
If any party fails or refuses to obey settlement discussions, or for good
an order issued by the Board, the
Board may then make such order as it cause shown. In certain cases, appeals docketed before the Board are re
considers necessary to the just and ex
peditious conduct of the appeal. quired to be placed in a suspense status and the Board is unable to pro
EFFECTIVE DATE ceed with disposition thereof for reasons not within the control of the 81241.234 Effective date. Board. Where the suspension has con
These rules shall apply (a) mandatinued, or may continue, for an inordi- torily, to all appeals relating to connate length of time, the Board may, in 'tracts entered into
we board may, un tracts entered into on or after March its discretion, dismiss such appeals 1. 1979, and (b) at the contractor's from its docket without prejudice to election, to appeals relating to earlier their restoration when the cause of contracts, with respect to claims pendsuspension has been removed. Unless ing before the contracting officer on either party or the Board acts within March 1, 1979, or initiated thereafter. three years to reinstate any appeal dismissed without prejudice, the dismissal shall be deemed with prejudice. PART 1245—PATENTS AND OTHER 8 1241.231 Dismissal or default for failure
INTELLECTUAL PROPERTY RIGHTS to prosecute or defend.
Subpart 1-Patent Waiver Regulations Whenever a record discloses the failure of either party to file documents
1245.100 Scope. required by these rules, respond to no
1245.101 Applicability. tices or correspondence from the
1245.102 Definitions and terms. Board, comply with orders of the
1245.103 Policy. Board, or otherwise indicates an inten
1245.104 Advance waivers. tion not to continue the prosecution or 1245.105 Waiver after reporting inventions. defense of an appeal, the Board may, 1245.106 Waiver of foreign rights. in the case of a default by the appel 1245.107 Reservations. lant, issue an order to show cause why 1245.108 License to contractor. the appeal should not be dismissed or,
1245.109 Assignment of title to NASA. in the case of a default by the Govern
1245.110 Content of petitions.
1245.111 Submission of petitions. ment, issue an order to show cause
1245.112 Notice of proposed Board action why the Board should not act thereon
and reconsideration. pursuant to § 1241.233. If good cause is
1245.113 Hearing procedure. not shown, the Board may take appro- 1245.114 Findings and recommendations of priate action.
Subpart 1-Patent Waiver
Sec. 1245.115 Action by the Administrator. 1245.116 Miscellaneous provisions. 1245.117 March-in and waiver revocation
procedures. 1245.118 Record of decisions.
AUTHORITY: 42 U.S.C. 2457, 35 U.S.C. 200 et seq.
SOURCE: 52 FR 43748, Nov. 16, 1987, unless otherwise noted. 8 1245.100 Scope.
This subpart prescribes regulations for the waiver of rights of the Government of the United States to inventions made under NASA contract in conformity with section 305 of the National Aeronautics and Space Act of 1958, as amended (42 U.S.C. 2457).
Subpart 2—Licensing of NASA Inventions 1245.200 Scope of subpart. 1245.201 Policy and objective. 1245.202 Definitions. 1245.203 Authority to grant licenses.
RESTRICTIONS AND CONDITIONS 1245.204 All licenses granted under this subpart.
TYPES OF LICENSES 1245.205 Nonexclusive licenses. 1245.206 Exclusive and partially exclusive licenses.
PROCEDURES 1245.207 Application for a license. 1245.208 Processing applications. 1245.209 Notice to Attorney General. 1245.210 Modification and termination of
licenses. 1245.211 Appeals. 1245.212 Protection and administration of
inventions. 1245.213 Transfer of custody. 1245.214 Confidentiality of information.
8 1245.101 Applicability.
The provisions of the subpart apply to all inventions made or which may be made under conditions enabling the Administrator to determine that the rights therein reside in the Government of the United States under section 305(a) of the National Aeronautics and Space Act of 1958, as amended, 42 U.S.C. 2457(a). The provisions do not apply to inventions made under any contract, grant, or cooperative agreement with a nonprofit organization or small business firm that are af. forded the disposition of rights as provided in 35 U.S.C. 200-204 (Pub. L. 96517, 94 Stat. 3019, 3020, 3022 and 3023; and Pub. L. 98-620, 98 Stat. 33643367).
Subpart 3—NASA Foreign Patent Program 1245.300 Scope of subpart. 1245.301 Inventions under NASA con
tracts. 1245.302 Inventions by NASA employees. 1245.303 Criteria. 1245.304 Procedures.
Subpart 4-Foreign Patent Licensing
Regulations 1245.400 Scope of subpart. 1245.401 Policy. 1245.402 Types of licenses and terms and
conditions. 1245.403 Government license. 1245.404 Enforcement of patent rights. 1245.405 Procedures.
8 1245.102 Definitions and terms.
As used in this subpart:
(a) Contract means any actual or proposed contract, agreement, understanding, or other arrangement with the National Aeronautics and Space Administration (NASA) or another Government agency on NASA's behalf, including any assignment, substitution of parties, or subcontract executed or entered into thereunder, and including NASA grants awarded under the authority of 42 U.S.C. 1891-1893.
(b) Contractor means the party who has undertaken to perform work under a contract or subcontract.
(c) Invention includes any art, method, process, machine, manufactúre, design, or composition or matter, or any new and useful improvement thereof, or any variety of plant, which
Subpart 5–Authority and Delegations to Take
Certain Actions Relating to Patents and
Other Intellectual Property Rights 1245.500 Scope. 1245.501 General Counsel. 1245.502 Associate General Counsel for In
tellectual Property. 1245.503 Patent Counsel of Field Installa
tions. 1245.504 Further redelegation.
is or may be patentable under the made in the performance of work Patent Laws of the United States of under NASA contracts, the AdminisAmerica or any foreign country.
trator will be guided by the objectives (d) Made, when used in relation to set forth in the National Aeronautics any invention, means the conception and Space Act of 1958, as amended (42 or first actual reduction to practice of U.S.C. 2451-2477) and by the basic such invention.
policy of the Presidential Memoran(e) Practical application means to dum and Statement of Government manufacture in the case of a composi- Patent Policy to the Heads of the Extion or product, to practice in the case ecutive Departments and agencies of a process or method, or to operate dated February 18, 1983. Among the in the case of a machine or system; most important goals are to provide and, in each case, under such condi incentives to foster inventiveness and tions as to establish that the invention encourage the reporting of inventions is being utilized and that its benefits made under NASA contracts, to proare to the extent permitted by law or vide for the widest practicable dissemiGovenment regulations available to nation of new technology resulting the public on reasonable terms.
from NASA programs, and to promote (f) Board means the NASA Inven early utilization, expeditious developtions and Contributions Board estab- ment, and continued availability of lished by the Administrator of NASA this new technology for commercial within the Administration under sec purposes and the public benefit. In aption 305(f) of the National Aeronautics plying this regulation, both the need and Space Act of 1958, as amended (42 for incentives to draw forth private U.S.C. 2457(f)).
initiatives and the need to promote (g) Chairperson means Chairperson healthy competition in industry must of the NASA Inventions and Contribu- be weighed. tions Board.
(b) Several different situations arise (h) Petitioner means a contractor or when waiver of all or any part of the prospective contractor who requests rights of the United States may be rethat the Administrator waive rights in quested and are prescribed in an invention or class of inventions 88 1245.104-1245.106. Under $ 1245.104, made or which may be made under a advance waiver of rights to any or all NASA contract. In the case of an iden of the inventions which may be made tified invention, the petitioner may be under a contract may be requested the inventor(s).
prior to the execution of the contract, (i) Government agency includes any or within 30 days after execution of executive department, independent the contract. Waiver of rights to an commission, board, office, agency, ad. identified invention made and reportministration, authority, Government ed under a contract are to be requestcorporation, or other Government es- ed under $ 1245.105, and may be retablishment of the executive branch quested under this provision even of the Government of the United though a request under $ 1245.104 was States of America.
not made, or if made, was not granted. (j) Administrator means the Admin Waiver of foreign rights under istrator of the National Aeronautics $ 1245.106 may be requested concur. and Space Administration or the Ad. rently with domestic rights under ministrator's duly authorized repre $ 1245.104 or $ 1245.105, or may be sentative.
(c) With respect to inventions which 8 1245.103 Policy.
may be or are made or conceived in (a) In implementing the provisions the course of or under contracts for of section 305(f) of the National Aero research, development or demonstranautics and Space Act of 1958, as tion work awarded by NASA on behalf amended (42 U.S.C. 2457(f)), and in de- of the Department of Energy (DOE) termining when the interests of the or in support of a DOE program, on a United States would be served by reimbursable basis pursuant to agreewaiver of all or any part of the rights ment between DOE and NASA, the of the United States in inventions waiver policy, regulations, and proce