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(iii) The license shall be subject to censed property, on behalf of the Fedany licenses in force at the time of the eral Government. grant of the exclusive or partially ex- (c) Record of determinations. NASA clusive license.
shall maintain a record of determina(iv) The license may grant the li- tions to grant exclusive or partially excensee the right of enforcement of the clusive licenses. licensed patent pursuant to the provisions of Chapter 29 of Title 35, U.S.
PROCEDURES Code, or other statutes, as determined appropriate in the public interest.
8 1245.207 Application for a license. (b) Foreign licenses—(1) Availability An application for a license should of licenses. Exclusive or partially ex- be addressed to the Patent Counsel at clusive licenses may be granted on a the NASA installation having responNASA invention covered by a foreign sibility for the invention and shall norpatent, patent application, or other mally include: form of protection, provided that:
(a) Identification of the invention (i) Notice of a prospective license, for which the license is desired, includidentifying the invention and prospec- ing the patent application serial tive licensee, has been published in the number or patent number, title, and FEDERAL REGISTER, providing opportu- date, if known; nity for filing written objections (b) Identification of the type of liwithin a 60-day period and following cense for which the application is subconsideration of such objections;
mitted; (ii) NASA has considered whether
(c) Name and address of the person, the interests of the Federal Govern
no company, or organization applying for ment or United States industry in for
the license and the citizenship or place eign commerce will be enhanced; and
of incorporation of the applicant; (iii) NASA has not determined that
(d) Name, address, and telephone the grant of such license will tend sub
number of representative of applicant stantially to lessen competition or
to whom correspondence should be result in undue concentration in any
sent; section of the United States in any
(e) Nature and type of applicant's line of commerce to which the technology to be licensed relates, or to
business, identifying products or serv
ices which the applicant has successcreate or maintain other situations inconsistent with antitrust laws.
fully commercialized, and approximate (2) Conditions. In addition to the
number of applicant's employees;
(f) Source of information concerning provisions of $ 1245.204, the following terms and conditions apply to foreign
the availability of a license on the inexclusive and partially exclusive li
(g) A statement indicating whether (i) The license shall be subject to the
applicant is a small business firm as irrevocable, royalty-free right of the
defined in § 1245.202(c); Government of the United States to
(h) A detailed description of applipractice and have practiced the inven cant's plan for development or martion on behalf of the United States keting of the invention, or both, which and on behalf of any foreign govern should include: ment or international organization (1) A statement of the time, nature pursuant to any existing or future and amount of anticipated investment treaty or agreement with the United of capital and other resources which States.
applicant believes will be required to (ii) The license shall be subject to bring the invention to practical appliany licenses in force at the time of the cation; grant of the exclusive or partially ex (2) A statement as to applicant's caclusive license.
pability and intention to fulfill the (iii) The license may grant the li- plan, including information regarding censee the right to take any suitable manufacturing, marketing, financial, and necessary actions to protect the li- and technical resources;
(3) A statement of the fields of use any written objections received in refor which applicant intends to practice sponse thereto will be considered by the invention; and
the Director of Licensing in making (4) A statement of the geographic the final recommendation to the Assoareas in which applicant intends to ciate General Counsel (Intellectual manufacture any products embodying Property). the invention and geographic areas (c) If the requested license, includwhere applicant intends to use or selling any negotiated modifications, is the invention, or both;
denied by the Associate General Coun(i) Identification of licenses previ sel (Intellectual Property), the appliously granted to applicant under Fed cant may request reconsideration by erally owned inventions;
filing a written request for reconsider(j) A statement containing appli- ation within 30 days after receiving cant's best knowledge of the extent to notice of denial. This 30-day period which the invention is being practiced may be extended for good cause. by private industry or Government, or (d) In addition to, or in lieu of reboth, or is otherwise available com questing reconsideration, the applimercially; and
cant may also appeal the denial of the (k) Any other information which ap
license in accordance with $ 1245.211. plicant believes will support a determi. nation to grant the license to appli
(55 FR 51276, Dec. 13, 1990) cant.
8 1245.209 Notice to Attorney General. 8 1245.208 Processing applications.
A copy of the notice provided for in (a) Applications for licenses will be $$ 1245.206(a)(1)(iii)(A), initially reviewed by the Patent Coun- 1245.206(b)(1)(i) will be sent to the Atsel of the NASA installation having re torney General. sponsibility for the invention. The Patent Counsel shall make a prelimi
8 1245.210 Modification and termination nary recommendation to the Director
of licenses. of Licensing, NASA Headquarters, Before modifying or terminating a liwhether to:
cense, other than by mutual agree(1) Grant the license as requested, ment, NASA shall furnish the licensee
(2) Grant the license with modifica and any sublicensee of record a writtion after negotiation with the licens ten notice of intention to modify or ee, or
terminate the license, and the licensee (3) Deny the license.
and any sublicensee shall be allowed The Director of Licensing shall review 30 days after such notice to remedy the preliminary recommendation of any breach of the license or show the Patent Counsel and make a final cause why the license should not be recommendation to the NASA Associ- modified or terminated. ate General Counsel (Intellectual Property). Such review and final rec
§ 1245.211 Appeals. ommendation may include, and be (a) The following parties may appeal based on, any additional information to the NASA Administrator or desigobtained from applicant and other nee any decision or determination consources that the Patent Counsel and cerning the grant, denial, interpretathe Director of Licensing deem rele- tion, modification, or termination of a vant to the license requested. The de- license: termination to grant or deny the li- (1) A person whose application for a cense shall be made by the Associate license has been denied; General Counsel (Intellectual Proper. (2) A licensee whose license has been ty) based on the final recommendation modified or terminated, in whole or in of the Director of Licensing.
part; or (b) When notice of a prospective ex- (3) A person who timely filed a writclusive or partially exclusive license is ten objection in response to the notice published in the FEDERAL REGISTER in required by $$ 1245.206(a)(1)(iii)(A) or accordance
$ 1245- 1245.206(b)(1)(i) and who can demon206(a)(1)(iii)(A) or $ 1245-206(b)(1)(i), strate to the satisfaction of NASA that such person may be damaged by the Subpart 3—NASA Foreign Patent Agency action.
Program (b) Written notice of appeal must be filed within 30 days (or such other AUTHORITY: 42 U.S.C. 2457(h) and Executime as may be authorized for good tive Orders 9865 and 10096. cause shown) after receiving notice of
SOURCE: 30 FR 1844, Feb. 10, 1965, unless the adverse decision or determination; otherwise noted. including, an adverse decision following the request for reconsideration 8 1245.300 Scope of subpart. under & 1245.208(c). The notice of
This subpart establishes policy, criappeal, along with all supporting docu- teria, and procedures concerning the mentation should be addressed to the NASA Foreign Patent Program. Administrator, National Aeronautics and Space Administration, Washing. 81245.301 Inventions under NASA conton, DC 20546. Should the appeal raise tracts. a genuine dispute over material facts, (a) Pursuant to 8 1245.113, NASA fact-finding will be conducted by the has facilitated the filing of foreign NASA Inventions and Contributions patent applications by contractors by Board. The person filing the appeal providing for the granting of a waiver shall be afforded an opportunity to be of title to a contractor to any iden heard and to offer evidence in support fied invention in countries other than of the appeal. The Chairperson of the the United States in the event the AdInventions and Contributions Board ministrator of NASA does not desire to shall prepare written findings of fact file a patent application covering the and transmit them to the Administra invention in such countries. However, tor or designee. The decision on the any such waiver is subject to the reserappeal shall be made by the NASA Ad- vation by the Administrator of the li. ministrator or designee. There is no cense required to be retained by NASA further right of administrative appeal under section 305(f) of the National from the decision of the Administrator Aeronautics and Space Act of 1958 (42 or designee.
(b) Conversely, where the principal 8 1245.212 Protection and administration rights in an invention made under a of inventions.
NASA contract remain in the contracNASA may take any suitable and
tor by virtue of waiver, $ 1245.19(a)(5) necessary steps to protect and admin
provides that the contractor, upon ister rights to NASA inventions, either
written request, will convey to the Ad
ministrator of NASA the entire right, directly or through contract.
title, and interest in the invention in 8 1245.213 Transfer of custody.
any foreign country in which the con
tractor has elected not to file a patent NASA having custody of certain
application. Federally owned inventions may trans
(c) With respect to inventions in fer custody and administration in
which NASA has acquired and rewhole or in part, to another Federal
tained the principal rights, NASA will agency, of the right, title, or interest file patent applications in countries in any such invention.
other than the United States on inven
tions selected in accordance with the 8 1245.214 Confidentiality of information.
criteria set forth in § 1245.303. Title 35, U.S. Code, section 209, provides that any plan submitted pursu. 8 1245.302 Inventions by NASA employees. ant to $ 1245.207(h) and any report re (a) The foreign rights of NASA and quired by $ 1245.204(b)(6) may be of the NASA employee making an intreated by NASA as commercial and fi- vention are determinable in accordnancial information obtained from a ance with Executive Orders 9865 and person and privileged and confidential 10096 and Government Patent Board and not subject to disclosure under 5 Administrative Order No. 6 issued purU.S.C. 552.
(b) Where NASA acquires an assign- budget for and administer the filing of ment of the domestic rights in an in all patent applications in countries vention made by a NASA employee, other than the United States. NASA will also obtain an option to ac- (d) Coordination with other interestquire the foreign rights, including the ed NASA offices will be undertaken by right to file foreign patent applica- the Assistant General Counsel for tions on the invention.
Patent Matters. (c) Where NASA is entitled to only a governmental license in the invention,
Subpart 4—Foreign Patent Licensing the principal foreign rights in the in
Regulations vention are retained by the employee unless he agrees in writing to assign
AUTHORITY: 42 U.S.C. 2457(g) and (h). such rights to NASA.
SOURCE: 31 FR 10958, Aug. 18, 1966, unless 8 1245.303 Criteria.
otherwise noted. The following categories of inven
8 1245.400 Scope of subpart. tions will be considered for the filing of patent applications by NASA in
(a) The subpart establishes the countries other than the United
policy, terms, conditions, and proce
dures under which NASA-owned forStates: (a) Inventions which may be utilized
eign patents and patent applications abroad in governmental programs of
may be licensed. the United States.
(b) The provisions of this subpart (b) Inventions which may be exploit apply to all NASA-owned patents ed abroad in the public interest by li
granted in countries other than the cense to U.S. nationals or others.
United States and to NASA-owned (c) Inventions which may be utilized
patent applications pending in such in applications type satellites, such as
countries and supplement the provi. communications and meteorological Sions
and meteorological sions of Subpart 2 of this part for forsatellites.
eign patent licensing. (d) Inventions considered to be basic discoveries or of major significance in
8 1245.401 Policy. an art.
The foreign licensing program of the (e) Inventions in fields which direct National Aeronautics and Space Adly concern the public health or public ministration serves to promote and welfare.
utilize foreign patent rights vested in
the Administration. The objectives of 8 1245.304 Procedures.
this program are to further the inter(a) The patent counsel at each ests of United States industry in forNASA field installation will review all eign commerce, to enhance the ecoinvention disclosures at the time of nomic interests of the United States docketing and will expedite the proc
and to advance the international relaessing and preparation of a U.S. tionships of the United States. patent application, if justified, on those inventions which appear to fall
8 1245.402 Types of licenses and terms and within the criteria set forth in
conditions. § 1245.303. The patent counsel will Licenses will be individually negoti. make a recommendation as to whether ated and may be granted to any applior not foreign patent coverage appears cant, foreign or domestic, on a nonexjustified at the time of assigning a pri- clusive or exclusive basis for royalties ority evaluation to a disclosed inven- or other considerations and on such tion.
other terms and conditions as are (b) Preparation and filing of patent deemed appropriate to the interests of applications in foreign countries will the United States. Preference in the be subject to approval of the Assistant granting of foreign license rights will General Counsel for Patent Matters, be shown to those applicants who NASA Headquarters.
have previously been granted a license (c) The Office of Assistant General under the corresponding U.S. patent Counsel for Patent Matters will or patent application.
8 1245.403 Government license.
(f) All licenses shall become effective There will be reserved from each ex
upon the written acceptance by the li. clusive license an irrevocable, nonex
censee of a license instrument specifyclusive, nontransferable, royalty-free
ing the type of license and terms and license for the practice of such inven conditions thereof. tion throughout the world by or on behalf of the United States or any for Subpart 5—Authority and Delegaeign government pursuant to any ex
tions to Take Certain Actions Reisting or future treaty or agreement with the United States.
lating to Patents and Other Intel
lectual Property Rights 8 1245.404 Enforcement of patent rights.
AUTHORITY: 42 U.S.C. 2473, 2457; 14 CFR An exclusive licensee will be author
1204.506. ized to enforce the licensed patent and
SOURCE: 43 FR 34122, Aug. 3, 1978, unless to sue infringers of the patent at its otherwise noted. own expense.
8 1245.500 Scope. 8 1245.405 Procedures.
This Subpart 5 sets forth the au(a) NASA will publish in the United
thority and delegations relating to inStates, and elsewhere as may be appropriate, lists of NASA-Owned foreign
tellectual property rights, and the ad
ministration of the NASA patent propatents or patent applications available for licensing.
gram. (b) NASA will also furnish written
8 1245.501 General Counsel. notice of the availability for licensing of NASA-owned foreign patents or The General Counsel administers patent applications to any licensee the NASA patent program and is deleunder the corresponding U.S. patent gated authority to take the following or patent application.
specific actions related to intellectual (c) Applications for license should be property, including patent, copyright, addressed to the Administrator, Na trademark, and related matters: tional Aeronautics and Space Adminis
(a) Determination of rights. (1) To tration, Washington, D.C. 20456. The
execute notifications of the Adminisapplication must fully identify the
trator's determinations made pursuant patent or patent application, and state
to section 305(a) of the National Aerothe type of license requested together
nautics and Space Act of 1958, as with proposed terms and conditions
(2) To make determinations, under (d) The conduct of negotiations with
Executive Order 10096 of January 23, prospective licensees will be the responsibility of the General Counsel,
1950, as amended, of the respective NASA. In the conduct of such negotia
rights of the Government and of the tions, due regard shall be had for the
inventor in and to inventions made by possible interests of NASA program
employees under the adminstrative juand staff offices, and their coordina
risdiction of the National Aeronautics tion will be obtained as deemed appro
and Space Administration, and to appriate.
point a liaison officer to deal with the (e) NASA will publish notice in the
Commissioner of Patents in such matFEDERAL REGISTER, and elsewhere as
ters pursuant to 37 CFR 100.10, “Admay be appropriate, of its intention to ministration of a Uniform Patent grant an exclusive license under an Policy With Respect to the Domestic identified patent or patent applica Rights in Inventions Made by Governtion. An exclusive license will not be
ve license will not be ment Employees”: granted until the expiration of 60 days (b) Powers of attorney. To appoint from the date of notice in order to and/or revoke principal attorneys and provide a suitable time interval for in to execute necessary powers of attorterested persons or other Government ney for the purpose of filing and prosagencies to interpose comment or ob ecuting patent applications in which jection.
the United States, as represented by