est in the invention, and to any corresponding patent application or patent. The conveyance shall be made by delivering to the Chairperson duly executed instruments (prepared by the Government) and, if applicable, any other papers as are deemed necessary to vest in the Government the entire right, title, and interest in the invention and any corresponding patent application. In addition, any waiver of rights (domestic or foreign) shall be voidable as set forth in paragraphs (b) through (d) of this section.

(b) For any particular invention, each waiver of domestic rights shall be voidable at the option of the Administrator unless:

(1) Within 6 months from the date of reporting an invention under a contract subject to a waiver granted under § 1245.104, or 6 months from the date of the granting by the Administrator of a waiver pursuant to § 1245.105, or longer periods as may be approved by NASA for good cause shown, the waiver recipient causes an application for U.S. Letters Patent to be filed disclosing and claiming the invention and shall include as the first paragraph of the specification following the abstract, the statement:

The invention described herein was made in the performance of work under NASA Contract No. and is subject to the provisions of Section 305 of the National Aeronautics and Space Act of 1958 (72 Stat. 435; 42 U.S.C. 2457).

(2) Within 2 months after the filing or within 2 months after the date of the grant of waiver if the patent application previously has been filed, the waiver recipient delivers to the Chairperson a copy of the application including the filing date and serial number.

(3) Within 6 months after the filing, or within 6 months after the grant of waiver if a patent application has been previously filed, the waiver recipient delivers to the Chairperson a duly executed and approved instrument prepared by the Government, fully confirmatory of all the rights to which the Government is entitled, and provide the Administrator an irrevocable power to inspect and make copies of the patent application.

(4) The waiver recipient furnishes to the Chairperson a copy of the patent within 2 months after the patent is issued on such application.

(5) The waiver recipient notifies the Chairperson not less than 30 days before the expiration of the initial response period for any action required by the Patent and Trademark Office of any decision not to continue prosecution of the application and delivers to the Chairperson executed instruments granting the Government a power of attorney to prosecute the application.

(6) The waiver recipient grants any license which the Administrator may require under § 1245.107.

(7) The waiver recipient files a utilization report with the Board, upon NASA's written request, not more often than annually. The report shall set forth in detail the steps taken by the waiver recipient or its transferee regarding the progress, development, application, and commercial use being made and that is intended to be made of the waived invention. No such utilization report need be submitted after the term of the patent has expired.

(8) The waiver recipient notifies the Chairperson in not less than 60 days prior to any transfer of prinicipal rights in the invention to any party, and submits a statement of the transferee's development and commercialization plans to bring the invention to practical application. The statement should accompany the notification or it may be submitted in not less than 30 days prior to the transfer of rights. The statement must show to the Board's satisfaction that the property rights in the transferee will increase the likelihood that the benefits of the invention would be made readily available to the public at an early date.

(9) The waiver recipient complies with any other terms and conditions called for by the Administrator with respect to the grant of the petition.

(c) For any particular invention, each waiver granted shall be voidable at the option of the Administrator if a patent claiming such invention is held, in a final determination, to have been used in violation of the antitrust laws in any suit, action, or proceeding brought before a properly constituted

authority authorized to hear such matter.

(d) For any particular invention, waiver of foreign rights as to any foreign country shall be voidable at the option of the Administrator unless:

(1) A patent application is filed in the country within 8 months from the date a corresponding U.S. application is filed, or 6 months from the date a license is granted by the Commissioner of Patents and Trademarks to file foreign applications where the filing has been prohibited for security reasons, or longer periods as may be approved by the Administrator;

(2) The waiver recipient furnishes to the Chairperson the identifying serial number and filing date of each foreign patent application filed promptly upon receipt thereof; and, upon request, a copy of an English version of the foreign application without additional compensation and a copy of the foreign patents;

(3) The waiver recipient delivers to the Chairperson a duly executed and approved instrument prepared by the Government, fully confirmatory of all the rights herein reserved by the Government; and

(4) The waiver recipient, in the event it elects not to continue prosecution of any foreign application filed on the invention or if it intends to abandon a foreign patent by the nonpayment of a maintenance tax, notifies the Chairperson within sufficient time to allow assumption of prosecution by the Government, or payment of the maintenance tax, respectively, and delivers to the Chairperson the executed instruments as are necessary to vest in the Administrator title thereto, including an instrument of assignment.

§ 1245.110 Content of petitions.

(a) General contents and forms. Forms which may be used in petitioning for waiver and for filing utilization reports are available from the NASA Inventions and Contributions Board, Code NB, National Aeronautics and Space Administration, Washington, D.C. 20546. Each request for waiver of domestic or foreign rights under § 1245.104, § 1245.105, or § 1245.106 shall be by petition to the Administrator and shall include:

(1) An identification of the petitioner, its place of business and address, and if the petitioner is represented by counsel, the name, address, and telephone number of the counsel;

(2) An identification by number of the pertinent NASA contract or proposed contract;

(3) The nature and extent of the rights desired and a citation to the section under which the petition is submitted; and

(4) The signature of the petitioner or its authorized representative, and date of signature.

(b) Petitions for advance waiver under § 1245.104. In addition to the information specified in paragraph (a) of this section, each petition for waiver under § 1245.104 shall include:

(1) A copy of the statement of work of the pertinent NASA contract or proposed contract;

(2) A full and detailed statement of facts sufficient to enable the Board to make the findings regarding the contract and the petitioner as specified in § 1245.104 and, if applicable, whether exceptional circumstances of

§ 1245.104(b) and/or special situations under § 1245.104(d)(2) are present; and

(3) The date of contractor's execution of the contract if the petition is filed subsequent to contract execution.

(c) Petitions for waiver for identified inventions under § 1245.105. A separate petition shall be submitted for each identified invention except as provided by § 1245.105(a)(2). In addition, to the information specified in paragraph (a) of this section, the petition shall include:

(1) The full names of all inventors;

(2) A statement whether a patent application has been filed on the invention, together with a copy of the application if filed; or, if not filed, a complete description of the invention;

(3) If a patent application has not been filed, any information which may indicate a potential statutory bar to the filing of a patent application under 35 U.S.C. 102 or a statement that no bar is known to petitioner to exist;

(4) A full and detailed statement of facts sufficient to enable the Board to make the findings regarding the inven

tion as specified in § 1245.105 (b) or (c);

(5) Where principal rights in the waived invention are to be transferred to another party, a statement identifying the party and its relationship to the petitioner; and

(6) Where the petitioner(s) is the inventor(s), a statement in writing from the contractor that the contractor will not request waiver of rights and authorization of the contractor.

(d) Petitions for waiver of foreign rights under § 1245.106. A petition for waiver of foreign rights may accompany any part of a petition for waiver of domestic rights under either

§ 1245.104 or § 1245.105, or a petition for foreign rights may be submitted independently of any request for domestic rights under § 1245.106(b). In addition to the information specified in paragraph (a) of this section, petition for waiver of foreign rights shall include, where feasible, a denomination of the foreign countries in which petitioner elects to secure or intends to file patent applications, and its plans and intentions to practice and/ or license the invention in these countries.

(e) Petitions for waiver under § 1245.103(c). Contents of the petition shall normally be as prescribed by the other Government agency, and petitioner may use any forms provided by the agency.

§ 1245.111 Submission of petitions.

(a) Petitions for advance waiver of domestic rights under § 1245.104 or advance waiver of foreign rights under § 1245.106 presented prior to contract execution must be submitted to the contracting officer. Any petitions submitted by organizations selected for negotiation of a contract will be processed and forwarded to the Board for consideration as specified in the NASA Procurement Regulations (41 CFR 189.109-6(e)). All other petitions shall be submitted directly to the NASA Inventions and Contributions Board, Mail Code NB, National Aeronautics and Space Administration, Washington, D.C. 20546.

(b) Any waiver petitions submitted under § 1245.103(c) should be forwarded to the appropriate NASA field in

stallation patent counsel for transmittal to DOE for processing.

(c) Any request for waiver by a nonprofit organization or small business firm under § 1245.117(d) shall be submitted to the Chairperson, Inventions and Contributions Board.

§ 1245.112 Notice of proposed Board action and reconsideration.

(a) Notice. Except as provided by § 1245.104(e) the Board will notify the petitioner, through the contracting officer for petitions for advance waiver prior to contract execution, and directly for all others:

(1) Whether it proposes to recommend to the Administrator that the petition be:

(i) Granted in the extent requested; (ii) Granted in an extent different from that requested; or

(iii) Denied.

(2) Of the reasons for any recommended action adverse to or different from the waiver of rights requested by the petitioner.

(b) Request for reconsideration and statements required. (1) If, under paragraph (a) of this section, the Board notifies the petitioner that the Board proposes to recommend action adverse to or different from the waiver requested, the petitioner may, within the period as the Board may set, but not less than 15 days from the notification, request reconsideration by the Board.

(2) If reconsideration has been requested within the prescribed time, the petitioner shall, within 30 days from the date of the request for reconsideration, or within any other time as the Board may set, file statement setting forth the points, authorities, arguments, and any additional material on which it relies.

(3) Upon filing of the reconsideration statement by the petitioner, the petition will be assigned for reconsideration by the Board upon the contents of the petition, the record, and the reconsideration statement submitted by the petitioner.

(4) The Board, after its reconsideration, will promptly notify the petitioner of its proposed recommendation to the Administrator. If the Board's

proposed action is adverse to, or different from, the waiver requested, the petitioner may request an oral hearing within the time as the Board has set.

§ 1245.113 Hearing procedure.

(a) If the petitioner requests an oral hearing within the time set, under § 1245.112(b)(4), the Board shall set the time and place for the hearing and shall notify the petitioner.

(b) Oral hearings held by the Board shall be open to the public and shall be held in accordance with the following procedures:

(1) Oral hearings shall be conducted in an informal manner, with the objective of providing the petitioner with a full opportunity to present facts and arguments in support of the petition. Evidence may be presented through means of witnesses, exhibits, and visual aids as are arranged for by the petitioner. Petitioner may be represented by any person including its attorney. While proceedings will be ex parte, members of the Board and its counsel may address questions to witnesses called by the petitioner, and the Board may, at its option, enlist the aid of technical advisors or expert witnesses. Any person present at the hearing may make a statement for the record.

(2) A transcript or equivalent record of the proceeding shall be arranged for by the Board. The petitioner shall submit for the record a copy of any exhibit or visual aid utilized during the hearing.

§ 1245.114 Findings and recommendations of the Board.

(a) Findings of the Board. The Board shall consider the petition, the NASA contract, if relevent, the goals cited in § 1245.103(a), the effect of the waiver on the objectives of the related NASA programs, and any other available facts and information presented to the Board by an interested party. The Board shall then determine and make, if applicable, each of the specific findings of fact required by § 1245.104, § 1245.105, or §1245.106 under which the petition was submitted. The Board shall document its findings.

(b) Recommendation of the Board. (1) Except as provided in § 1245.104(e), after making the findings of fact, the Board shall formulate its proposed recommendation to the Administrator as to the grant of waiver as requested, the grant of waiver upon terms other than as requested, or denial of waiver.

(2) If the Board proposes to recommend, initially or upon reconsideration or after oral hearing, that the petition be granted in the extent requested or, in other cases, where the petitioner does not request reconsideration or a hearing during the period set for the action, or informs the Board that the action will not be requested, or fails to file the required statements within the prescribed time, the Board shall transmit the petition, a summary record of hearing proceedings, if applicable, its findings of fact, and its recommendation to the Administrator.

§ 1245.115 Action by the Administrator.

(a) After receiving the transmittal from the Board, the Administrator shall determine, in accordance with § 1245.103, whether or not to grant any waiver of rights to the petitioner. A waiver under § 1245.104(b)(2) will be granted only when the Board so recommends.

(b) In the event of denial of the petition by the Administrator, a written notice of such denial will be promptly transmitted by the Board to the petitioner. The written notice will be accompanied with a statement of the grounds for denial.

(c) If the waiver is granted by the Administrator, the petitioner shall be sent an original and one copy of an instrument of waiver confirmatory of the conditions and reservations of the waiver grant for its execution. The petitioner shall return the executed copy to the Chairperson within 30 days from the grant of waiver. Failure to return the copy within the prescribed time may result in revocation of the waiver of rights granted. Before the action is taken, notice shall be given to petitioner so that it may show cause before the Board why the waiver should not be revoked.

§ 1245.116 Filing of patent applications and reimbursement of costs.

(a) In order to protect the interests of the Government and the petitioner in inventions, a petitioner may file United States patent applications for such inventions prior to the Administrator's determination on a petition for waiver. If an application on an identified invention is filed during the pendency of the petition, or within 60 days prior to the receipt of a petition, NASA will reimburse the petitioner for any reasonable costs of the filing and patent prosecution that may have occurred, Provided:

(1) Similar patent filing and prosecution costs are not normally reimbursed to the petitioner as direct or indirect costs chargeable to Government contracts;

(2) The petition is ultimately denied with respect to domestic rights, or with respect to foreign and domestic rights, if both are requested; and

(3) Prior to reimbursement, petitioner assigns the application to the United States of America as represented by the Administrator of the National Aeronautics and Space Administration.

§ 1245.117 Publication and record of decisions.

The findings of fact and recommendations made to the Administrator by the Board with respect to each petition for waiver shall be recorded by the Board and made available to the public. In addition, selected findings and recommendations of the Board shall be published annually.

§ 1245.118 Transitional provisions.

As to any invention made on or after July 1, 1981, in the performance of work under a contract (except for a contract for the operation of a Government-owned research or production facility), awarded prior to July 1, 1981, with a nonprofit organization or small business firm (as defined in 35 U.S.C. 201, 94 Stat. 3019 and NASA's implementing regulations, NASA PR 9.108), the Administrator may grant waiver of title without further consideration of the findings in § 1245.105 provided the contractor requests the waiver either at the time of reporting or within a

reasonable period thereafter as the Board may set, as requested by the contractor. Any waiver so granted will be subject to:

(a) The reservation of § 1245.107(a);

(b) The march-in rights and provisions for preference for United States industry of 35 U.S.C. 203, 204, (94 Stat. 3022, 3023);

(c) The special provisions for nonprofit organizations of 35 U.S.C. 202(c)(7) (94 Stat. 3021); and

(d) The conditions for revocation and voidability of § 1245.109.

Subpart 2-Licensing of NASA Inventions

AUTHORITY: 35 U.S.C. secs. 207 and 208, 94 Stat. 3023 and 3024.

SOURCE: 46 FR 54328, Nov. 2, 1981, unless otherwise noted.

§ 1245.200 Scope of subpart.

This subpart prescribes the terms, conditions, and procedures upon which a NASA invention may be licensed. It does not affect licenses which (a) were in effect prior to July 1, 1981; (b) may exist at the time of the Government's acquisition of title to the invention, including those resulting from the allocation of rights to inventions made under Government research and development contracts; (c) are the result of an authorized exchange of rights in the settlement of patent disputes; or (d) are otherwise authorized by law or treaty.

§ 1245.201 Policy and objective.

It is the policy and objective of this subpart to use the patent system to promote the utilization of inventions arising from NASA supported research and development.

§ 1245.202 Definitions.

(a) "Federally owned invention" means an invention, plant, or design which is covered by a patent, or patent application in the United States, or a patent, patent application, plant variety protection, or other form of protection, in a foreign country, title to which has been assigned to or otherwise vested in the United States Government.