(b) "Federal agency" means an executive department, military department, Government corporation, or independent establishment, except the Tennessee Valley Authority, which has custody of a Federally owned invention.

(c) "NASA Invention" means a Federally owned invention with respect to which NASA maintains custody and administration, in whole or in part, of the right, title, or interest in such invention on behalf of the United States Government.

(d) "Small business firm" means a small business concern as defined at section 2 of Pub. L. 85-536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration. For the purpose of these regulations, the size standard for small business concerns involved in Government procurement, contained in 13 CFR 121.3-8, and in subcontracting, contained in 13 CFR 121.3-12, will be used.

(e) "Practical application" means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine 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.

(f) "United States" means the United States of America, its territories and possessions, the District of Columbia, and the Commonwealth of Puerto Rico.

§ 1245.203 Authority to grant licenses.

NASA inventions shall be made available for licensing as deemed appropriate in the public interest. NASA may grant nonexclusive, partially exclusive, or exclusive licenses thereto under this subpart on inventions in its custody.

RESTRICTION AND CONDITIONS

§ 1245.204 All licenses granted under this subpart.

(a) Restrictions. (1) A license may be granted only if the applicant has supplied NASA with a satisfactory plan

for development or marketing of the invention, or both, and with information about the applicant's capability to fulfill the plan.

(2) A license granting rights to use or sell under a NASA invention in the United States shall normally be granted only to a licensee who agrees that any products embodying the invention or produced through the use of the invention will be manufactured substantially in the United States.

(b) Conditions. Licenses shall contain such terms and conditions as NASA determines are appropriate for the protection of the interests of the Federal Government and the public and are not in conflict with law or this subpart. The following terms and conditions apply to any license:

(1) The duration of the license shall be for a period specified in the license agreement, unless sooner terminated in accordance with this subpart.

(2) The license may be granted for all or less than all fields of use of the invention or in specified geographical areas, or both.

(3) The license may extend to subsidiaries of the licensee or other parties if provided for in the license but shall be nonassignable without approval of NASA, except to the successor of that part of the licensee's business to which the invention pertains.

(4) The license may provide the licensee the right to grant sublicenses under the license, subject to the approval of NASA. Each sublicense shall make reference to the license, including the rights retained by the Government, and a copy of such sublicense shall be furnished to NASA.

(5) The license shall require the licensee to carry out the plan for development or marketing of the invention, or both, to bring the invention to practical application within a period specified in the license, and to continue to make the benefits of the invention reasonably accessible to the public.

(6) The license shall require the licensee to report periodically on the utilization or efforts at obtaining utilization that are being made by the licensee, with particular reference to the plan submitted.

(7) All licenses shall normally require royalties or other consideration.

(8) Where an agreement is obtained pursuant to § 1245.204(a)(2) that any products embodying the invention or produced through use of the invention will be manufactured substantially in the United States, the license shall recite such agreement.

(9) The license shall provide for the right of NASA to terminate the license, in whole or in part, if:

(i) NASA determines that the licensee is not executing the plan submitted with its request for a license and the licensee cannot otherwise demonstrate to the satisfaction of NASA that it has taken or can be expected to take within a reasonable time effective steps to achieve practical application of the invention;

(ii) NASA determines that such action is necessary to meet requirements for public use specified by Federal regulations issued after the date of the license and such requirements are not reasonably satisfied by the licensee;

(iii) The licensee has willfully made a false statement of or willfully omitted a material fact in the license application or in any report required by the license agreement; or

(iv) The licensee commits a substantial breach of a covenant or agreement contained in the license.

(10) The license may be modified or terminated, consistent with this subpart, upon mutual agreement of NASA and the licensee.

(11) Nothing relating to the grant of a license, nor the grant itself, shall be construed to confer upon any person any immunity from or defenses under the antitrust laws or from a charge of patent misuse, and the acquisition and use of rights pursuant to this subpart shall not be immunized from the operation of state or Federal law by reason of the source of the grant.

sive license may also provide that, after termination of a period specified in the license agreement, NASA may restrict the license to the fields of use or geographic areas, or both, in which the licensee has brought the invention to practical application and continues to make the benefits of the invention reasonably accessible to the public. However, such restriction shall be made only in order to grant an exclusive or partially exclusive license in accordance with this subpart.

§ 1245.206 Exclusive and partially exclusive licenses.

(a) Domestic licenses.

(1) Availability of licenses. Exclusive or partially exclusive licenses may be granted on NASA inventions: (i) 3 months after notice of the invention's availability has been announced in the FEDERAL REGISTER; or (ii) without such notice where NASA determines that expeditious granting of such a license will best serve the interests of the Federal Government and the public; and (iii) in either situation, specified in (a)(1)(i) or (ii) of this section only if:

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

(B) After expiration of the period in § 1245.206(a) (1)(iii)(A) and consideration of nay written objections received during the period, NASA has determined that:

(1) The interests of the Federal Government and the public will best be served by the proposed license, in view of the applicant's intentions, plans, and ability to bring the invention to practical application or otherwise promote the invention's utilization by the public;

(2) The desired practial application has not been achieved, or is not likely expeditiously to be achieved, under any nonexclusive license which has been granted, or which may be granted, on the invention;

(3) Exclusive or partially exclusive licensing is a reasonable and necessary incentive to call forth the investment of risk capital and expenditures to

bring the invention to practical application or otherwise promote the invention's utilization by the public; and

(4) The proposed terms and scope of exclusivity are not greater than reasonably necessary to provide the incentive for bringing the invention to practical application or otherwise promote the invention's utilization by the public;

(C) 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 country in any line of commerce to which the technology to be licensed relates, or to create or maintain other situations inconsistent with the antitrust laws; and

(D) NASA has given first preference to any small business firms submitting plans that are determined by the agency to be within the capabilities of the firms and as equally likely, if executed, to bring the invention to practical application as any plans submitted by applicants that are not small business firms.

(2) Conditions. In addition to the provisions of § 1245.204, the following terms and conditions apply to domestic 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 reserve to NASA the right to require the licensee to grant sublicenses to responsible applicants, on reasonable terms, when necessary to fulfill health or safety needs.

(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, United States Code, or other statutes, as de

termined 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 licensed 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 Assistant General Counsel for Patent Matters. 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 Assistant General Counsel for Patent Matters 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

§ 1245.206(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 Assistant General Counsel for Patent Matters.

(c) If the requested license, including any negotiated modifications, is denied by the Assistant General Counsel for Patent Matters, 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.

§ 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, United States 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 section 552 of Title 5 of the United States Code.

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.