Page images

uct, to practice in the case of a process or method, or to operate in the case of a ma chine or system; and, in each case, under such conditions as to establish that the invention is being utilized and that its benefits are, to the extent permitted by law or Government regulations, available to the public on reasonable terms.

(4) Made when used in relation to any invention means the conception or first actual reduction to practice of such invention.

(5) Small Business Firm means a domestic small business concern as defined at section 2 of Public Law 85-536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration. For the purpose of this exhibit G, the size standards for small business concerns involved in Government procurement, and subcontracting at 13 CFR 121.3-8 and 13 CFR 121.3-12, respectively, will be used.

(6) Nonprofit Organization means a university or other institution of higher education or an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or educational organization qualified under a state nonprofit organization statute.

(b) Allocation of principal rights. The Grantee may retain the entire right, title, and interest throughout the world to each Subject Invention subject to the provisions of this exhibit G and 35 U.S.C. 203. With respect to any Subject Invention in which the Grantee retains title, the Federal Govern ment shall have a non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the Subject Invention throughout the world.

(c) Invention disclosure, election of title, and filing of patent applications by grantee. (1) The Grantee will disclose each Subject Invention to NASA within 2 months after the inventor discloses it in writing to Grant ee personnel responsible for patent matters. The disclosure to NASA shall be in the form of a written report and shall identify the grant under which the invention was made and the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the invention. The disclosure shall also identify any publication, on sale or public use of the invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure. In addition, after disclosure to NASA, the Grantee will promptly notify NASA of the acceptance of any

manuscript describing the invention for the publication or of any on sale or public use planned by the Grantee.

(2) The Grantee will elect in writing whether or not to retain title to any such invention by notifying NASA within 2 years of disclosure to NASA. However, in any case where publication, on sale or public use has initiated the one year statutory period wherein valid patent protection can still be obtained in the United States, the period for election of title may be shortened by NASA to a date that is no more than 60 days prior to the end of the statutory period.

(3) The Grantee will file its initial patent application on a Subject Invention to which it elects to retain title within 1 year after election of title or, if earlier, prior to the end of any statutory period wherein valid patent protection can be obtained in the United States after publication, on sale, or public use. The Grantee will file patent applications in additional countries or international patent offices within either 10 months of the corresponding initial patent application or 6 months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications where such filing has been prohibited by a Secrecy Order.

(4) Requests for extension of the time for disclosure, election, and filing under paragraphs (c)(1), (c)(2), and (c)(3) of this exhibit G may, at the discretion of NASA, be gra granted.

(d) Conditions when the government may obtain title. The Grantee will convey to NASA, upon written request, title to any Subject Invention:

(1) If the Grantee fails to disclose or elect the Subject Invention within the times specified in paragraph (c) of this exhibit G, or elects not to retain title; provided, that NASA may only request title within 60 days after learning of the failure of the Grantee to disclose or elect within the specified times.

(2) In those countries in which the Grantee fails to file patent applications within the times specified in paragraph (c) of this ex. hibit G; provided, however, that if the Grantee has filed a patent application in a country after the times specified in paragraph (c) of this exhibit G, but prior to its receipt of the written request of NASA, the Grantee shall continue to retain title in that country.

(3) In any country in which the Grantee decides not to continue the prosecution of any application for, to pay the maintenance fees on, or defined in reexamination or opposition proceeding on, a patent on a Subject Invention.

(e) Minimum rights to grantee and protection of grantee right to file. (1) The Grantee

will retain a nonexclusive, royalty-free li- by the Grantee each Subject Invention cense throughout the world in each Subject made under grant in order that the Grantee Invention to which the Government obtains can comply with the disclosure provisions of title, except if the Grantee fails to disclose paragraph (c) of this exhibit G, and to exethe Subject Invention within the times spec- cute all papers necessary to file patent apified in paragraph (c) of this exhibit G. The plications on Subject Inventions and to esGrantee's license extends to its domestic tablish the Government's rights in the Subsubsidiary and affiliates, if any, within the ject Inventions. This disclosure format corporate structure of which the Grantee is should require, as a minimum, the informaa party and includes the right to grant sub- tion required by paragraph (c)(1) of this exlicenses of the same scope to the extent the hibit G. The Grantee shall instruct such Grantee was legally obligated to do so at employees through employee agreements or the time the grant was awarded. The license other suitable educational programs on the is transferable only with the approval of importance of reporting inventions in suffi. NASA, except when transferred to the suc- cient time to permit the filing of patent apcessor of that part of the Grantee's business plications prior to U.S. or foreign statutory to which the invention pertains.

bars. (2) The Grantee's domestic license may be

(3) The Grantee will notify NASA of any revoked or modified by NASA to the extent

decision not to continue the prosecution of necessary to achieve expeditious practical

a patent application, pay maintenance fees, application of the Subject Invention pursu

or defend in a reexamination or opposition ant to an application for an exclusive license

proceeding on a patent, in any country, not submitted in accordance with 14 CFR

less than 30 days before the expiration of 1245.210 of the NASA regulation, Licensing

the response period required by the relevant of NASA Inventions, 14 CFR 1245.2. This li

patent office. cense will not be revoked in that field of use

(4) The Grantee agrees to include, within or the geographical areas in which the

the specification of any United States Grantee has achieved practical application

patent application and any patent issuing and continues to make the benefits of the invention reasonably accessible to the

thereon covering a Subject Invention, the public. The license in any foreign country

following statement: “This invention was may be revoked or modified at the discre

made with Government support under tion of NASA to the extent the Grantee, its

(identify the grant) awarded by NASA. The licensees, or its domestic subsidiaries or af.

Government has certain rights in this infiliates have failed to achieve practical ap

vention.” plication in that foreign country.

(5) The Grantee shall include a list of all (3) Before revocation or modification of

Subject Inventions required to be disclosed the license, NASA will furnish the Grantee

during the preceding year in the renewal a written notice of its intention to revoke or

proposal or annual status report, and a commodify the license, and the Grantee will be

plete list (or a negative statement) for the allowed 30 days (or such time as may be au

entire award period shall be included in the thorized by NASA for good cause shown by

final report. the Grantee) after the notice to show cause

(g) Subcontracts. (1) The Grantee will inwhy the license should not be revoked or clude this exhibit G, suitably modified to modified. The Grantee has the right to identify the parties, in all subcontracts, reappeal, in accordance with 14 CFR 1245.210, gardless of tier, for experimental, developany decision concerning the revocation or mental, or research work to be performed modification of the license.

by a small business firm or nonprofit orga(f) Grantee action to protect the govern nization. The subcontractor will retain all ment's interest. (1) The Grantee agrees to rights provided for the Grantee in this exexecute or to have executed and promptly

have executed and promptly hibit G, and the Grantee will not, as part of deliver to NASA all instruments necessary the consideration for awarding the subconto (i) establish or confirm the rights the tract, obtain rights in the subcontractor's Government has throughout the world in Subject Inventions. those Subject Inventions to which the (2) The Grantee will include in all other Grantee elects to retain title, and (ii) convey subcontracts, regardless of tier, for experititle to NASA when requested under para mental, developmental, research, design or graph (d) of this exhibit G, and to enable engineering work the patent rights clause as the Government to obtain patent protection required by NASA FAR Supplement, 48 throughout the world in that Subject Inven CFR 1827.373(b). tion.

(3) In the case of subcontracts, at any tier, (2) The Grantee agrees to require, by writ. when the prime award with NASA was a ten agreement, its employees, other than contract (but not a grant or cooperative clerical and nontechnical employees, to dis agreement), NASA, subcontractor, and the close promptly in writing to personnel iden- contractor agree that the mutual obligatified as responsible for the administration tions of the parties created by this exhibit of patent matters and in a format suggested G constitute a contract between the subcon

tractor and NASA with respect to those effective steps to achieve practical applicamatters covered by this exhibit G; Provided, tion of the Subject Invention in such field however, that nothing in this paragraph is of use; intended to confer any jurisdiction under (2) Such action is necessary to alleviate the Contract Disputes Act in connection health or safety needs which are not reasonwith proceedings under paragraph (j) of ably satisfied by the Grantee, assignee, or this exhibit G.

their licensees; (h) Reporting on utilization of subject in

(3) Such action is necessary to meet reventions. The Grantee agrees to submit, on quirements for public use specified by Fedrequest, periodic reports no more frequently

eral regulations, and such requirements are than annually on the utilization of a Sub

not reasonably satisfied by the Grantee, asject Invention or on efforts at obtaining

signee, or licensees; or such utilization that are being made by the

(4) Such action is necessary because the Grantee or its licensees or assignees. Such

agreement required by paragraph (i) of this reports shall include information regarding

exhibit G has not been obtained or waived the status of development, date of first com

or because a licensee of the exclusive right mercial sale or use, gross royalties received

to use or sell any Subject Invention in the by the Grantee, and such other data and in

United States is in breach of such agreeformation as NASA may reasonably specify.

ment. The Grantee also agrees to provide addi

(3) Special provisions for Grants with tional reports as may be requested by NASA

nonprofit organizations. If the Grantee is a in connection with any march-in proceeding undertaken by NASA in accordance with

nonprofit organization, it agrees that: paragraph (j) of this exhibit G. As required

(1) Rights to Subject Invention in the by 35 U.S.C. 202(c)(5), NASA agrees it will

United States may not be assigned without not disclose such information to persons

the approval of NASA, except where such outside the Government without permission

assignment is made to an organization of the Grantee.

which has as one of its primary functions (1) Preference for United States industry.

the management of inventions, provided Notwithstanding any other provision of this

that such assignee will be subject to the exhibit G, the Grantee agrees that neither

same provisions as the Grantee; it nor any assignee will grant to any person

(2) The Grantee will share royalties colthe exclusive right to use or sell any Subject

lected on a Subject Invention with the inInvention in the United States unless such

ventor including NASA co-inventors (when person agrees that any products embodying

NASA deems it appropriate) when the Subthe Subject Invention or produced through Ject Inve

ject Invention is assigned in accordance the use of the Subiect Invention will be with 35 U.S.C. 202(e) and 37 CFR 401.10; manufactured substantially in the United

(3) The balance of any royalties or income States. However, in individual cases, the re- earned by the Grantee with respect to Subquirement for such an agreement may beject Inventions, after payment of expenses waived by NASA upon a showing by the (including payments to inventors) incidental Grantee or its assignee that reasonable but to the administration of Subject Inventions, unsuccessful efforts have been made to will be utilized for the support of scientific grant licenses on similar terms to potential research or education; and licensees that would be likely to manufac (4) It will make efforts that are reasonable ture substantially in the United States or under the circumstances to attract licensees that under the circumstances domestic man of subject inventions that are small business ufacture is not commercially feasible.

firms, and that it will give a preference to a (j) March-in rights. The Grantee agrees small business firm when licensing a subject that with respect to any Subject Invention invention if the Grantee determines that in which it has acquired title, NASA has the the small business firm has a plan or proright in accordance with the procedures es posal for marketing the invention which, if tablished by NASA which are consistent executed, is equally as likely to bring the inwith 37 CFR 401.6, Exercise of March-in vention to practical application as any plans Rights, to require the Grantee, an assignee, or proposals from applicants that are not or exclusive licensee of a Subject Invention small business firms; provided, that the to grant a non-exclusive partially exclusive, Grantee is also satisfied that the small busior exclusive license in any field of use to a ness firm has the capability and resources responsible applicant or applicants, upon to carry out its plan or proposal. The deciterms that are reasonable under the circum sion whether to give a preference in any stances, and if the Grantee, assignee, or ex. specific case will be at the dircretion of the clusive licensee refuses such a request Grantee. However, the Grantee agrees that NASA has the right to grant such a license the Secretary of Commerce may review the itself if NASA determines that:

Grantee's licensing program and decisions (1) Such action is necessary because the regarding small business applicants, and the Grantee or assignee has not taken, or is not Grantee will negotiate changes to its licensexpected to take, within a reasonable time, ing policies, procedures, or practices with

the Secretary of Commerce when the Secretary's review discloses that the Grantee could take reasonable steps to more effectively implement the requirements of paragraph (k)(4) of this exhibit G.

(1) Communications. A copy of all submissions or requests required by this Exhibit G, plus a copy of any reports, manuscripts, publications or similar material bearing on patent matters, shall be sent to the installation Patent Counsel in addition to any other submission requirements in the Grant provisions. If any reports contain information describing a "Subject Invention" for which the Grantee has elected or may elect title, NASA will use reasonable efforts to delay public release by NASA or publication by NASA in a NASA technical series, for six months from the date of receipt, in order for a patent application to be filed, provided that the Grantee identify the information and the “Subject Invention" to which it relates at the time of submittal. If required by the grants officer, the Grantee shall provide the filing date, serial number and title, a copy of the patent application, and a patent number and issue date for any Subject Invention in any country in which the Grantee has applied for patents. (54 FR 43052, Oct. 20, 1989)

Sec. 1261.305 Form of claim. 1261.306 Evidence and information re

quired. 1261.307 Time limitations. 1261.308 NASA officials authorized to act

upon claims. 1261.309 Action under the Federal Tort

Claims Act. 1261.310 Investigation of claims. 1261.311 Claims requiring Department of

Justice approval or consultation. 1261.312 Action on approved claims. 1261.313 Required notification in the event

of denial. 1261.314 [Reserved) 1261.315 Procedures for the handling of

lawsuits against NASA employees arising within the scope of their office or

employment. 1261.316 Policy. 1261.317 Attorney-client privilege.

Subpart 1261.4—Collection of Civil Claims of

the United States Arising Out of the Activities of the National Aeronautics and Space Administration (NASA)


Subpart 1261.1–Employees's Personal

Property Claims

Sec. 1261.100 Scope of subpart. 1261.101 Claimants. 1261.102 Maximum amount. 1261.103 Time limitations. 1261.104 Allowable claims. 1261.105 Unallowable claims. 1261.106 Submission of claims. 1261.107 Evidence in support of claim. 1261.108 Recovery from carriers, insurers,

and other third parties. 1261.109 Computation of allowance. 1261.110 Settlement of claims.

1261.400 Scope of subpart. 1261.401 Definitions. 1261.402 Delegation of authority. 1261.403 Consultation with appropriate of.

ficials; negotiation. 1261.404 Services of the Inspector General. 1261.405 Subdivision of claims not author

ized; other administrative proceedings. 1261.406 Aggressive collection action; docu

mentation. 1261.407 Demand for payment; limitation

periods. 1261.408 Use of consumer reporting

agency. 1261.409 Contracting for collection serv

ices. 1261.410 Suspension or revocation of li

cense or eligibility; liquidation of collat

eral. 1261.411 Collection in installments. 1261.412 Interest, penalties, and adminis

trative costs. 1261.413 Analysis of costs; automation;

prevention of overpayments, delinquen

cies, or defaults. 1261.414 Compromise of claims. 1261.415 Execution of releases. 1261.416 Suspending or terminating collec

tion action. 1261.417 Referral to Department of Justice

(DJ) or General Accounting Office (GAO).

Subpart 1261.2-[Reserved)

Subpart 1261.3—Claims Against NASA or its

Employees for Damage to or Loss of Property or Personal Injury or Death-Accrving On or After January 18, 1967

Subpart 1261.5—Administrative Offset of


1261.300 Scope of subpart. 1261.301 Authority. 1261.302 Claim. 1261.303 Claimant 1261.304 Place of filing claim.

1261.500 Scope of subpart. 1261.501 Definition.


paragraph (a) (1) or (2) of this section; 1261.502 Notification procedures.

or 1261.503 Agency records inspection; hear

(4) The survivors of a person named ing or review. 1261.504 Interagency requests.

in paragraph (a) (1) or (2) of this sec1261.505 Multiple debts.

tion in the following order of prece1261.506 Limitation periods.

dence: Spouse; children, father or 1261.507 Civil Service Retirement and Dis mother, or both; or brothers or sisters, ability Fund.

or both. Claims by survivors may be al1261.508 Offset against a judgment.

lowed whether arising before, concurSubpart 1261.6—Collection by Offset from

rently with, or after the decedent's

death, if otherwise covered by this Indebted Governmont Employees

subpart. 1261.600 Purpose of subpart.

(b) Employees of contractors with 1261.601 Scope of subpart.

the United States and employees of 1261.602 Definitions.

nonappropriated fund activities are 1261.603 Procedures for salary offset. 1261.604 Nonwaiver of rights by involun.

not included within the meaning of tary setoff.

paragraph (a) (1) or (2) of this section. 1261.605 Refunds.

(c) Claims may not be made by or 1261.606 Salary offset request by a creditor for the benefit of a subrogee, assignee,

agency other than NASA (the current conditional vendor, or other third paying agency).

party. 1261.607 Obtaining the services of a hear. ing official.

8 1261.102 Maximum amount. AUTHORITY: Subparts 1261.4, 1261.5, and

From October 1, 1982, to October 30, 1261.6 issued under 42 U.S.C. 2473(c); 31

1988, the maximum amount that may U.S.C. 3711 et seq.; 5 U.S.C. 5514; 4 CFR Parts 101-105; 5 CFR Part 550 Subpart K,

be paid under the Military Personnel $8 550.1101-550.1107.

and Civilian Employees' Claim Act of SOURCE: 45 FR 48104, July 18, 1980, unless

1964, as amended (31 U.S.C. 3721) is otherwise noted.

$25,000, and on or after October 31,

1988, the maximum amount is $40,000 Subpart 1261.1-Employees' Personal

(Pub. L. 100-565, 102 Stat. 2833, Octo

ber 31, 1988). Property Claims

(54 FR 35456, Aug. 28, 1989) AUTHORITY: 31 U.S.C. 2371, et seq.

8 1261.103 Time limitations. 8 1261.100 Scope of subpart.

(a) A claim may be allowed only if This subpart presczibes regulations the claim is presented in writing governing the settlement of claims within 2 years after it accrues. For the against the National Aeronautics and purposes of this subpart, a claim acSpace Administration (NASA) for crues at the time of the accident or indamage to, or loss of, personal proper cident causing the loss or damage, or ty incident to service with NASA.

at such time as the loss or damage is

or should have been discovered by the 8 1261.101 Claimants.

claimant through the exercise of due (a) A claim for damage to, or loss of, diligence. personal property incident to service (b) If a claim accrues in time of war with NASA may be made only by:

or if an armed conflict intervenes (1) An officer or employee of the Na- within 2 years after it accrues, and if tional Aeronautics and Space Adminis good cause is shown, the claim may be

presented not later than 2 years after (2) A member of the uniformed serv- that cause ceases to exist, or 2 years ices (Army, Navy, Air Force, Marine after the war or armed conflict is terCorps, Coast Guard, Coast and Geo minated, whichever is earlier. The detic Survey and Public Health Serv- dates of beginning and ending of such ice) assigned to duty with or under the an armed conflict are the dates estabjurisdiction of NASA;

lished by concurrent resolution of the (3) The authorized agent or legal Congress or by a determination of the representative of a person named in President.


« PreviousContinue »