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dures of DOE will be applied. NASA (iv) Promoting the commercializawill normally grant waiver of rights to tion and public availability of inveninventions made under contracts tions made in the United States by awarded by NASA on behalf of, or in United States industry and labor; and support of, programs funded by an (v) Ensuring that the Government other Government agency, unless the obtains sufficient rights in federallyfunding agency recommends and justi- supported inventions to meet the fies denial of the waiver. See needs of the Government and protect $ 1245.110(c) and § 1245.111(b).
the public against nonuse or unreason
able use of inventions. 8 1245.104 Advance waivers.
(c)(1) An advance waiver, when (a) The provisions of this section granted, will be subject to the reservaapply to petitions for waiver of domes tions set forth in § 1245.107. Normally, tic rights to any or all of the inven the reservations of $ 1245.107(a), Litions which may be made under a con cense to the Government, and tract.
$ 1245.107(b), March-in rights, will (b) The NASA Inventions and Con apply. However, should one or more of tributions Board normally will recom- the situations set forth in paragraphs mend grant of a request for advance (b)(1) through (b)(3), of this section waiver of domestic rights submitted exist, rather than denying the advance prior to execution of contract or waiver request, the Board may recomwithin 30 days after execution of the mend restricting or eliminating only contract unless the Board finds that part of the rights of the contractor to the interests of the United States will the extent necessary to address the be better served by restricting or elimi. particular situation, consistent with nating all or part of the rights of the the policy and goals of g 1245.103. In contractor in one or more of the fol that event, the waiver grant will be lowing situations:
subject to additional reservations as (1) When the contractor is not locat provided for in 1245.107(c). ed in the United States or does not (2) An advance waiver, when granthave a place of business in the United ed, will apply only to inventions reStates or is subject to the control of a ported to NASA under the applicable foreign government;
terms of the contract and a designa(2) When a determination has been tion made within 6 months of the time made by Government authority which of reporting (or a reasonable time is authorized by statute or Executive thereafter permitted for good cause order to conduct foreign intelligence shown) that the contractor elects title or counter-intelligence activities that to the invention and intends to file or the restriction or elimination of the has filed a U.S. patent application. right to retain title to any inventions Such election will be made by notificamade in the performance of work tion in writing to the patent representunder the contract is necessary to pro- ative designated in the contract. Title tect the security of such activities, or to all other inventions made under the
(3) Where the Board finds that ex contract are subject to section 305(a) ceptional circumstances exist, such of the National Aeronautics and Space that restriction or elimination of the Act of 1958, as amended, 42 U.S.C. right to retain title will better promote 2457(a). The granting of the advance one or more of the following objec waiver does not otherwise relieve a tives:
contractor of any of the invention (i) Promoting the utilization of in identification or reporting requireventions arising from federally sup- ments set forth in the applicable ported research and development;
patent rights clause in the contract. (ii) Encouraging maximum participa (3) The waiver shall extend to the tion of industry in federally-supported invention claimed in any patent appliresearch and development;
cation filed on the reported invention, (iii) Ensuring that inventions are including any subsequent divisional or used in a manner to promote free com- continuation application thereof, propetition and enterprise;
vided the claims of the subsequent ap
that one or more of the situations set forth in § 1245.104(b)(3) (i) through (v) exist. When granted, the waiver will be subject to the reservations set forth in § 1245.107 in the same manner as discussed in § 1245.104(c)(1).
(2) The waiver shall extend to the invention claimed in the patent application filed on the reported invention, including any subsequent divisional or continuation application thereof, provided the claims of the subsequent application do not substantially change the scope of the reported invention.
plication do not substantially change the scope of the reported invention.
(d) When a petition for waiver is submitted under paragraph (b) of this section, prior to contract execution, it will be processed expeditiously so that a decision on the petition may be reached prior to execution of the con tract. However, if there is insufficient time or insufficient information is presented, or for other reasons which do not permit a recommendation to be made without unduly delaying execution of the contract, the Board will inform the contracting officer that no recommendation has been made and the reasons therefor. The contracting officer will then notify the petitioner of the Board's action.
(e) After notification by the contracting officer under paragraph (d) of this section, the petitioner may, upon its execution of the contract, or within 30 days, request the Board to reconsider the matter under paragraph (b) of this section either on the record or with any additional statements submitted in the subpart of the original petition.
(f) A waiver granted pursuant to a petition submitted under this section shall extend to any contract changes, modifications, or supplemental agreements, so long as the purpose of the contract or the scope of work to be performed is not substantially changed.
§ 1245.106 Waiver of foreign rights.
(a) The Board will consider the waiver of foreign rights in any desig. nated country concurrently with the waiver of domestic rights when so requested under $ 1245.104 or $ 1245.105.
(b) The Board will also consider a separate request for foreign rights for an individual identified invention in any designated country if a request was not made pursuant to paragraph (a) of this section, or for countries not designated pursuant to paragraph (a) of this section.
(c) Waiver of foreign rights will normally be granted under paragraph (a) or paragraph (b) of this section in any designated country unless; (1) The Board finds that the economic interests of the United States will not be served thereby; or unless (2) in the case of an individual identified inven tion under paragraph (b) of this section, NASA has determined, prior to the request, to file a patent applica: tion in the designated country.
(d) If, subsequent to the granting of the petition for foreign rights, the petitioner requests and designates additional countries in which it wishes to secure patents, the Chairperson may grant such request, in whole or in part, without further action by the Board.
8 1245.105 Waiver after reporting inven.
tions. (a) The provisions of this section apply to petitions for waiver of domestic rights to identified inventions which have been reported to NASA and to which a waiver of rights has not been granted pursuant to $ 1245.104.
(b)(1) When an individual identified invention has been reported to NASA under the applicable terms of the contract and waiver of rights has not been granted under $ 1245.104, the Board normally will recommend grant of a request for waiver of domestic rights to such invention if the request is received within 8 months of first disclosure to NASA (or such longer period that the Board may permit for good cause shown), unless the Board finds
§ 1245.107 Reservations.
(a) License to the Government. Any invention for which waiver of domestic or foreign rights has been granted under this subpart shall be subject to the reservation by the Administrator of an irrevocable, nonexclusive, nontransferable, royalty-free license for
the practice of the invention through ited to, field-of-use or terrestrial-use out the world by or on behalf of the limitations, or additions to the marchUnited States or any foreign govern in rights. ment pursuant to any treaty or agreement with the United States.
8 1245.108 License to contractor. (b) March-in rights. For any inven
(a) Each contractor reporting an intion for which waiver of rights has
vention is granted a revocable, nonexbeen granted under this subpart,
clusive, royalty-free license in each NASA has the right in accordance
patent application filed in any country with 35 U.S.C. 203 and 210, and with
on the invention and in any resulting the procedures set forth in § 1245.117
patent in which the Government acand 37 CFR 401.6, to require the con
quires title. The license extends to the tractor, an assignee, or exclusive li
contractor's domestic subsidiaries and censee of the invention to grant a non
affiliates, if any, within the corporate exclusive, partially exclusive, or exclu
structure of which the contractor is a sive license in any field of use to a re
party and includes the right to grant sponsible applicant or applicants,
sublicenses of the same scope to the upon terms that are reasonable under
extent the contractor was legally oblithe circumstances, and if the contrac
gated to do so at the time the contract tor, assignee, or exclusive licensee refuses such a request, NASA has the
was awarded. The license and right is
transferable only with the approval of right to grant such a license itself if
the Administrator except when transNASA determines that:
ferred to the successor of that part of (1) Such action is necessary because
the contractor's business to which the the contractor or assignee has not
invention pertains. taken, or is not expected to take within a reasonable time, effective
(b) The contractor's domestic license steps to achieve practical application
may be revoked or modified by the Adof the invention in such field of use;
ministrator to the extent necessary to (2) Such action is necessary to allevi.
achieve expeditious practical applicaate health or safety needs which are
tion of the invention pursuant to an not reasonably satisfied by the con
application for an exclusive license tractor, assignee, or their licensees;
submitted in accordance with the Li(3) Such action is necessary to meet
censing of NASA Inventions (14 CFR requirements for public use specified
1245.2). This license will not be reby Federal regulations and such re
voked in that field of use and/or the quirements are not reasonably satis
geographical areas in which the confied by the contractor, assignee, or li.
tractor has achieved practical applicacensees; or
tion and continues to make the bene(4) Such action is necessary because
fits of the invention available to the the agreement required by the "Pref. public on reasonable terms. The lierence for United States industry” has
cense in any foreign country may be not been obtained or waived or be
revoked or modified at the discretion cause a licensee of the exclusive right of the Administrator to the extent the to use or sell any invention in the
contractor, its licensees, or its domesUnited States is in breach of such tic subsidiaries or affiliates have failed agreement.
to achieve practical application in that (c) Additional reservations. In the foreign country. event one or more of the situations set (c) Before revocation or modification forth in 8 1245.104 (b)(1) through of the license, the contractor will be (b)(3) exist, the Board may determine provided a written notice of the Adto recommend partial grant of the ministrator's intention to revoke or waiver request (rather than denial) by modify the license, and the contractor making the grant subject to additional will be allowed 30 days (or any other reservations (than those set forth in time as may be allowed by the Admin(a) and (b) of this section) to the istrator for good cause shown by the extent necessary to address the par contractor) after the notice to show ticular situation. Such additional res cause why the license should not be ervations may include, but not be lim revoked or modified. The contractor shall have the right to appeal, under 8 1245.110 Content of petitions. the Licensing of NASA Inventions (14
(a) Each request for waiver of doCFR 1245.2), any decision concerning
mestic or foreign rights under the revocation or modification of its li.
$ 1245.104, § 1245.105, or $ 1245.106 cense.
shall be by petition to the Administra
tor and shall include: 8 1245.109 Assignment of title to NASA.
(1) An identification of the petition(a) The instrument of waiver set er, its place of business, and address; forth in $ 1245.115(c) shall be voided (2) If the petitioner is represented by NASA with respect to the domestic by counsel, the name, address, and title to any invention for which a telephone number of the counsel; patent application has not been filed (3) A citation to the section within 1 year (or a reasonable time (8 1245.104, § 1245.105, or $ 1245.106) thereafter for good cause shown) from under which the petition is submitted, notification to NASA of election of the nature and extent of the rights retitle, as required by $ 1245.104(0)(2), quested, and a positive statement that for an advanced waiver pursuant to waiver of rights under the cited sec§ 1245.104, or within 1 year from the tion is being requested; granting of a waiver for an individual (4) If the petitioner is an employee invention granted pursuant to
inventor of the contractor, a state$ 1245.105.
ment from the contractor that the (b) The instrument of waiver set
contractor does not object to this peti. forth in $ 1245.115(c) shall be voided
tion. by NASA with respect to title in any
(5) Information identifying the proforeign country for which waiver has
posed contract or resulting contract, if
any; been granted pursuant to $ 1245.106, if a patent application has not been filed
(6) A designation of the country or in that country (or in the European
countries, the United States of AmerPatent Office or under the Patent Co
ica and/or foreign, in which waiver of
title is requested; operation Treaty and that country
(7) A copy of the invention disclodesignated) within either 10 months
sure if the request is for an individual (or a reasonable time thereafter for
identified invention (under $ 1245.105); good cause shown) from the date a
(8) The name, address, and telecorresponding U.S. patent application
phone number of the party with has been filed or 6 months (or a rea
whom the Board is to communicate sonable time thereafter for good cause
when the request is acted upon; shown) from the date a license is
(9) Whether the petitioner is an granted by the Commissioner of Pat
entity of or under the control of a forents and Trademarks to file foreign eion
eign government; patent applications where such filing
(10) The signature of the petitioner has been prohibited by a Secrecy
or its authorized representative; and Order.
(11) The date of the petition. (c) In any country in which the
(b) No specific forms need be used. waiver recipient decides not to contin Requests for advanced waiver should, ue prosecution of any application, to preferably, be included with the propay maintenance fees on, or defend in posal, but in any event in advance of reexamination or opposition proceed
negotiations. ings on a patent on a waived invention, (c) Petitions for waiver under conthe waiver recipient shall notify the tracts funded by another agency. The patent representative within sufficient content of the petitions for waiver of time for NASA to continue prosecu- title to inventions made under contion, pay the maintenance fee or tracts awarded by NASA on behalf of defend the reexamination or opposi the Department of Energy under tion, and upon written request, convey $ 1245.103(c) shall follow the procetitle to NASA and execute all papers dures and form prescribed by and necessary for NASA to proceed with shall be acted on by that agency. Petithe appropriate action.
tions under contracts awarded by NASA on behalf of other agencies will (2) If reconsideration has been rebe coordinated with the agency before quested within the prescribed time, action is taken by the Board.
the petitioner shall, within 30 days
from the date of the request for recon8 1245.111 Submission of petitions.
sideration, or within any other time as (a) Petitions for advance waiver of the Board may set, file its statement domestic rights under $ 1245.104 or for setting forth the points, authorities, advance waiver of foreign rights under arguments, and any additional materi§ 1245.106 presented prior to contract al on which it relies. execution, must be submitted to the (3) Upon filing of the reconsidercontracting officer. Any petition sub- ation statement by the petitioner, the mitted by a prospective contractor and petition will be assigned for reconsidselected for negotiation of a contract eration by the Board upon the conwill be processed and forwarded to the tents of the petition, the record, and Board for consideration. All other pe- the reconsideration statement submittitions will be submitted to the patentted by the petitioner. representative designated in the con
(4) The Board, after its reconsidertract for processing prior to forward
ation, will promptly notify the petiing to the Board.
tioner of its proposed recommendation (b) A copy of any waiver petitions
to the Administrator. If the Board's submitted under $ 1245.103(c) should
proposed action is adverse to, or differbe forwarded to the appropriate NASA
ent from, the waiver requested, the pefield installation patent counsel, if not
titioner may request an oral hearing supplied earlier, for (1) transmittal to
within the time as the Board has set. the Department of Energy for processing by that agency, or (2) coordination 8 1245.113 Hearing procedure. with other agencies, as applicable.
(a) If the petitioner requests an oral 8 1245.112 Notice of proposed Board hearing within the time set, under action and reconsideration.
§ 1245.112(b)(4), the Board shall set (a) Notice. Except as provided by
the time and place for the hearing and $ 1245.104(d), the Board will notify the
shall notify the petitioner. petitioner, through the contracting of
(b) Oral hearings held by the Board ficer, with respect to petitions for ad
shall be open to the public and shall vance waiver prior to contract execu
be held in accordance with the followtion, and directly to the petitioner for
ing procedures: all other petitions:
(1) Oral hearings shall be conducted (1) Whether it proposes to recom in an informal manner, with the objecmend to the Administrator that the
tive of providing the petitioner with a petition be:
full opportunity to present facts and (i) Granted in the extent requested; arguments in support of the petition. (ii) Granted in an extent different Evidence may be presented through from that requested; or
means of witnesses, exhibits, and (iii) Denied.
visual aids as are arranged for by the (2) Of the reasons for any recom petitioner. Petitioner may be repremended action adverse to or different sented by any person including its atfrom the waiver of rights requested by torney. While proceedings will be ex the petitioner.
parte, members of the Board and its (b) Request for reconsideration and counsel may address questions to witstatements required. (1) If, under para nesses called by the petitioner, and graph (a) of this section, the Board the Board may, at its option, enlist the notifies the petitioner that the Board aid of technical advisors or expert witproposes to recommend action adverse nesses. Any person present at the to or different from the waiver re- hearing may make a statement for the quested, the petitioner may, within record. the period as the Board may set, but (2) A transcript or equivalent record not less than 15 days from the notifi. of the proceeding shall be arranged cation, request reconsideration by the for by the Board. The petitioner shall Board.
submit for the record a copy of any