(iii) The license shall be subject to any licenses in force at the time of the grant of the exclusive or partially exclusive license.

(iv) The license may grant the licensee the right of enforcement of the licensed patent pursuant to the provisions of Chapter 29 of Title 35, U.S. Code, or other statutes, as determined appropriate in the public interest.

(b) Foreign licenses—(1) Availability of licenses. Exclusive or partially exclusive licenses may be granted on a NASA invention covered by a foreign patent, patent application, or other form of protection, provided that:

(i) Notice of a prospective license, identifying the invention and prospective licensee, has been published in the FEDERAL REGISTER, providing opportunity for filing written objections within a 60-day period and following consideration of such objections;

(ii) NASA has considered whether the interests of the Federal Government or United States industry in foreign commerce will be enhanced; and

(iii) NASA has not determined that the grant of such license will tend substantially to lessen competition or result in undue concentration in any section of the United States in any line of commerce to which the technology to be licensed relates, or to create or maintain other situations inconsistent with antitrust laws.

(2) Conditions. In addition to the provisions of § 1245.204, the following terms and conditions apply to foreign exclusive and partially exclusive li

censes:

(i) The license shall be subject to the irrevocable, royalty-free right of the Government of the United States to practice and have practiced the invention on behalf of the United States and on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States.

(ii) The license shall be subject to any licenses in force at the time of the grant of the exclusive or partially exclusive license.

(iii) The license may grant the licensee the right to take any suitable and necessary actions to protect the li

censed property, on behalf of the Federal Government.

(c) Record of determinations. NASA shall maintain a record of determinations to grant exclusive or partially exclusive licenses.

PROCEDURES

§ 1245.207 Application for a license.

An application for a license should be addressed to the Patent Counsel at the NASA installation having responsibility for the invention and shall normally include:

(a) Identification of the invention for which the license is desired, including the patent application serial number or patent number, title, and date, if known;

(b) Identification of the type of license for which the application is submitted;

(c) Name and address of the person, company, or organization applying for the license and the citizenship or place of incorporation of the applicant;

(d) Name, address, and telephone number of representative of applicant to whom correspondence should be sent;

(e) Nature and type of applicant's business, identifying products or services which the applicant has successfully commercialized, and approximate number of applicant's employees;

(f) Source of information concerning the availability of a license on the invention;

(g) A statement indicating whether applicant is a small business firm as defined in § 1245.202(c);

(h) A detailed description of applicant's plan for development or marketing of the invention, or both, which should include:

(1) A statement of the time, nature and amount of anticipated investment of capital and other resources which applicant believes will be required to bring the invention to practical application;

(2) A statement as to applicant's capability and intention to fulfill the plan, including information regarding manufacturing, marketing, financial, and technical resources;

(3) A statement of the fields of use for which applicant intends to practice the invention; and

(4) A statement of the geographic areas in which applicant intends to manufacture any products embodying the invention and geographic areas where applicant intends to use or sell the invention, or both;

(i) Identification of licenses previously granted to applicant under Federally owned inventions;

(j) A statement containing applicant's best knowledge of the extent to which the invention is being practiced by private industry or Government, or both, or is otherwise available commercially; and

(k) Any other information which applicant believes will support a determination to grant the license to applicant.

§ 1245.208 Processing applications.

(a) Applications for licenses will be initially reviewed by the Patent Counsel of the NASA installation having responsibility for the invention. The Patent Counsel shall make a preliminary recommendation to the Director of Licensing, NASA Headquarters, whether to:

(1) Grant the license as requested, (2) Grant the license with modification after negotiation with the licensee, or

(3) Deny the license.

The Director of Licensing shall review the preliminary recommendation of the Patent Counsel and make a final recommendation to the NASA Associate General Counsel (Intellectual Property). Such review and final recommendation may include, and be based on, any additional information obtained from applicant and other sources that the Patent Counsel and the Director of Licensing deem relevant to the license requested. The determination to grant or deny the license shall be made by the Associate General Counsel (Intellectual Property) based on the final recommendation of the Director of Licensing.

(b) When notice of a prospective exclusive or partially exclusive license is published in the FEDERAL REGISTER in accordance with § 1245206(a)(1)(iii)(A) or § 1245-206(b)(1)(i),

any written objections received in response thereto will be considered by the Director of Licensing in making the final recommendation to the Associate General Counsel (Intellectual Property).

(c) If the requested license, including any negotiated modifications, is denied by the Associate General Counsel (Intellectual Property), the applicant may request reconsideration by filing a written request for reconsideration within 30 days after receiving notice of denial. This 30-day period may be extended for good cause.

(d) In addition to, or in lieu of requesting reconsideration, the applicant may also appeal the denial of the license in accordance with § 1245.211.

[55 FR 51276, Dec. 13, 1990]

§ 1245.209 Notice to Attorney General. A copy of the notice provided for in §§ 1245.206(a)(1)(iii)(A),

and 1245.206(b)(1)(i) will be sent to the Attorney General.

§ 1245.210 Modification and termination of licenses.

Before modifying or terminating a license, other than by mutual agreement, NASA shall furnish the licensee and any sublicensee of record a written notice of intention to modify or terminate the license, and the licensee and any sublicensee shall be allowed 30 days after such notice to remedy any breach of the license or show cause why the license should not be modified or terminated.

§ 1245.211 Appeals.

(a) The following parties may appeal to the NASA Administrator or designee any decision or determination concerning the grant, denial, interpretation, modification, or termination of a license:

(1) A person whose application for a license has been denied;

(2) A licensee whose license has been modified or terminated, in whole or in part; or

(3) A person who timely filed a written objection in response to the notice required by §§ 1245.206(a)(1)(iii)(A) or 1245.206(b)(1)(i) and who can demonstrate to the satisfaction of NASA that

such person may be damaged by the Agency action.

(b) Written notice of appeal must be filed within 30 days (or such other time as may be authorized for good cause shown) after receiving notice of the adverse decision or determination; including, an adverse decision following the request for reconsideration under § 1245.208(c). The notice of appeal, along with all supporting documentation should be addressed to the Administrator, National Aeronautics and Space Administration, Washington, DC 20546. Should the appeal raise a genuine dispute over material facts, fact-finding will be conducted by the NASA Inventions and Contributions Board. The person filing the appeal shall be afforded an opportunity to be heard and to offer evidence in support of the appeal. The Chairperson of the Inventions and Contributions Board shall prepare written findings of fact and transmit them to the Administrator or designee. The decision on the appeal shall be made by the NASA Administrator or designee. There is no further right of administrative appeal from the decision of the Administrator or designee.

§ 1245.212 Protection and administration of inventions.

NASA may take any suitable and necessary steps to protect and administer rights to NASA inventions, either directly or through contract.

§ 1245.213 Transfer of custody.

NASA having custody of certain Federally owned inventions may transfer custody and administration in whole or in part, to another Federal agency, of the right, title, or interest in any such invention.

§ 1245.214 Confidentiality of information. Title 35, U.S. Code, section 209, provides that any plan submitted pursuant to § 1245.207(h) and any report required by § 1245.204(b)(6) may be treated by NASA as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under 5 U.S.C. 552.

Subpart 3-NASA Foreign Patent Program

AUTHORITY: 42 U.S.C. 2457(h) and Executive Orders 9865 and 10096.

SOURCE: 30 FR 1844, Feb. 10, 1965, unless otherwise noted.

§ 1245.300 Scope of subpart.

This subpart establishes policy, criteria, and procedures concerning the NASA Foreign Patent Program.

8 1245.301 Inventions under NASA contracts.

(a) Pursuant to § 1245.113, NASA has facilitated the filing of foreign patent applications by contractors by providing for the granting of a waiver of title to a contractor to any identified invention in countries other than the United States in the event the Administrator of NASA does not desire to file a patent application covering the invention in such countries. However, any such waiver is subject to the reservation by the Administrator of the license required to be retained by NASA under section 305(f) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457(f)).

(b) Conversely, where the principal rights in an invention made under a NASA contract remain in the contractor by virtue of waiver, § 1245.19(a)(5) provides that the contractor, upon written request, will convey to the Administrator of NASA the entire right, title, and interest in the invention in any foreign country in which the contractor has elected not to file a patent application.

(c) With respect to inventions in which NASA has acquired and retained the principal rights, NASA will file patent applications in countries other than the United States on inventions selected in accordance with the criteria set forth in § 1245.303.

§ 1245.302 Inventions by NASA employees.

(a) The foreign rights of NASA and of the NASA employee making an invention are determinable in accordance with Executive Orders 9865 and 10096 and Government Patent Board Administrative Order No. 6 issued pursuant thereto.

The following categories of inventions will be considered for the filing of patent applications by NASA in countries other than the United States:

(a) Inventions which may be utilized abroad in governmental programs of the United States.

(b) Inventions which may be exploited abroad in the public interest by license to U.S. nationals or others.

(c) Inventions which may be utilized in applications type satellites, such as communications and meteorological satellites.

(d) Inventions considered to be basic discoveries or of major significance in an art.

(e) Inventions in fields which directly concern the public health or public welfare.

(a) The patent counsel at each NASA field installation will review all invention disclosures at the time of docketing and will expedite the processing and preparation of a U.S. patent application, if justified, on those inventions which appear to fall within the criteria set forth in § 1245.303. The patent counsel will make a recommendation as to whether or not foreign patent coverage appears justified at the time of assigning a priority evaluation to a disclosed invention.

(b) Preparation and filing of patent applications in foreign countries will be subject to approval of the Assistant General Counsel for Patent Matters, NASA Headquarters.

(c) The Office of Assistant General Counsel for Patent Matters will

budget for and administer the filing of all patent applications in countries other than the United States.

(d) Coordination with other interested NASA offices will be undertaken by the Assistant General Counsel for Patent Matters.

Subpart 4-Foreign Patent Licensing Regulations

AUTHORITY: 42 U.S.C. 2457(g) and (h). SOURCE: 31 FR 10958, Aug. 18, 1966, unless otherwise noted.

§ 1245.400 Scope of subpart.

(a) The subpart establishes the policy, terms, conditions, and procedures under which NASA-owned foreign patents and patent applications may be licensed.

(b) The provisions of this subpart apply to all NASA-owned patents granted in countries other than the United States and to NASA-owned patent applications pending in such countries and supplement the provisions of Subpart 2 of this part for foreign patent licensing.

§ 1245.401 Policy.

The foreign licensing program of the National Aeronautics and Space Administration serves to promote and utilize foreign patent rights vested in the Administration. The objectives of this program are to further the interests of United States industry in foreign commerce, to enhance the economic interests of the United States and to advance the international relationships of the United States.

§ 1245.402 Types of licenses and terms and conditions.

Licenses will be individually negotiated and may be granted to any applicant, foreign or domestic, on a nonexclusive or exclusive basis for royalties or other considerations and on such other terms and conditions as are deemed appropriate to the interests of the United States. Preference in the granting of foreign license rights will be shown to those applicants who have previously been granted a license under the corresponding U.S. patent or patent application.

There will be reserved from each exclusive license an irrevocable, nonexclusive, nontransferable, royalty-free license for the practice of such invention throughout the world by or on behalf of the United States or any foreign government pursuant to any existing or future treaty or agreement with the United States.

§ 1245.404 Enforcement of patent rights. An exclusive licensee will be authorized to enforce the licensed patent and to sue infringers of the patent at its own expense.

§ 1245.405 Procedures.

(a) NASA will publish in the United States, and elsewhere as may be appropriate, lists of NASA-owned foreign patents or patent applications available for licensing.

(b) NASA will also furnish written notice of the availability for licensing of NASA-owned foreign patents or patent applications to any licensee under the corresponding U.S. patent or patent application.

(c) Applications for license should be addressed to the Administrator, National Aeronautics and Space Administration, Washington, D.C. 20456. The application must fully identify the patent or patent application, and state the type of license requested together with proposed terms and conditions thereof.

(d) The conduct of negotiations with prospective licensees will be the responsibility of the General Counsel, NASA. In the conduct of such negotiations, due regard shall be had for the possible interests of NASA program and staff offices, and their coordination will be obtained as deemed appropriate.

(e) NASA will publish notice in the FEDERAL REGISTER, and elsewhere as may be appropriate, of its intention to grant an exclusive license under an identified patent or patent application. An exclusive license will not be granted until the expiration of 60 days from the date of notice in order to provide a suitable time interval for interested persons or other Government agencies to interpose comment or objection.

The General Counsel administers the NASA patent program and is delegated authority to take the following specific actions related to intellectual property, including patent, copyright, trademark, and related matters:

(a) Determination of rights. (1) To execute notifications of the Administrator's determinations made pursuant to section 305(a) of the National Aeronautics and Space Act of 1958, as amended;

(2) To make determinations, under Executive Order 10096 of January 23, 1950, as amended, of the respective rights of the Government and of the inventor in and to inventions made by employees under the adminstrative jurisdiction of the National Aeronautics and Space Administration, and to appoint a liaison officer to deal with the Commissioner of Patents in such matters pursuant to 37 CFR 100.10, "Administration of a Uniform Patent Policy With Respect to the Domestic Rights in Inventions Made by Government Employees";

(b) Powers of attorney. To appoint and/or revoke principal attorneys and to execute necessary powers of attorney for the purpose of filing and prosecuting patent applications in which the United States, as represented by

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