shall furnish promptly to the Adminstrator a written report containing full and complete technical information concerning any invention, discovery, improvement, or innovation which may be made in the performance of any such work.

(c) No patent may be issued to any applicant other than the Administrator for any invention which appears to the Commissioner of Patents to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Commissioner, with the application or within thirty days after request therefor by the Commissioner, a written statment executed under oath setting forth the full facts concerning the circumstances under which such invention was made and stating the relationship (if any) of such invention to the performance of any work under any contract of the Administration. Copies of each such statement and the application to which it relates shall be transmitted forthwith by the Commissioner to the Administrator.

(d) Upon any application as to which any such statment has been transmitted to the Administrator, the Commissioner may, if the invention is patentable, issue a patent to the applicant unless the Administrator, within ninety days after receipt of such application and statement, requests that such patent be issued to him on behalf of the United States. If, within such time, the Administrator files such a request with the Commissioner, the Commissioner shall transmit notice thereof to the applicant, and shall issue such patent to the Administrator unless the applicant within thirty days after receipt of such notice requests a hearing before a Board of Patent Interferences on the question whether the Administrator is entitled under this section to receive such patent. The Board may hear and determine, in accordance with rules and procedures established for interference cases, the queston so presented, and its determination shall be subject to appeal by the applicant or by the Administrator to the Court of Customs and Patent Appeals in accordance with procedures governing appeals from decisions of the Board of Patent Interferences in other proceedings.

(e) Whenever any patent has been issued to any applicant in conformity with subsection (d), and the Administrator thereafter has reason to believe that the statement filed by the applicant in connection therewith contained any false representation of any material fact, the Administrator within five years after the date of issuance of such patent may file with the Commissioner a request for the transfer to the Administrator of title to such patent on the records of the Commissioner. Notice of any such request shall be transmitted by the Commissioner to the owner of record of such patent, and title to such patent shall be so transferred to the Administrator unless within thirty days after receipt of such notice such owner of record requests a hearing before a Board of Patent Interferences on the question whether any such false representation was contained in such statement. Such question shall be heard and determined, and determination thereof shall be subject to review, in the manner prescribed by subsection (d) for questions arising thereunder. No request made by the Administrator under this subsection for the transfer of title to any patent, and no prosecution for the violation of any criminal statue, shall be barred by any failure of the Administrator to make a request under subsection (d) for the issuance of such patent to him, or by any notice previously given by the Administrator stating that he had no objection to the issuance of such patent to the applicant therefor.

(f) Under such regulations in conformity with this subsection as the Administrator shall prescribe, he may waive all or any part of the rights of the United States under this section with respect to any invention or class of inventions made or which may be made by any person or class of persons in the performance of any work required by any contract of the Administration if the Administrator determines that the interests of the United States will be served thereby. Any such waiver may be made upon such terms and under such conditions as the Administrator shall determine to be required for the protection of the interests of the United States. Each such waiver made with respect to any invention shall be subject to the reservation by the Administrator of 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 treaty or agreement with the United States. Each proposal for any waiver under this subsection shall be referred to an Inventions and Contributions Board which shall be established by the Administrator within the Administration. Such Board shall accord to each interested party an opportunity for hearing, and shall transmit to the Adminstrator its findings of fact with respect to such proposal and its recommendations for action to be taken with respect thereto.

(g) The Administrator shall determine, and promulgate regulations specifying the terms and conditions upon which licenses will be granted by the Administration for

the practice by any person (other than an agency of the United States) of any invention for which the Administrator holds a patent on behalf of the United States.

(h) The Administrator is authorized to take all suitable and necessary steps to protect any invention or discovery to which he has title, and to require that contractors or persons who retain title to inventions or discoveries under this section protect the inventions or discoveries to which the Administration has or may acquire a license of use.

(i) The Administration shall be considered a defense agency of the United States for the purpose of chapter 17 of title 35 of the United States Code.

(j) As used in this section

(1) the term "person" means any individual, partnership, corporation, association, institution, or other entity.

(2) the term "contract" means any actual or proposed contract, agreement, understanding, or other arrangement, and includes any assignment, substitution of parties, or subcontract executed or entered into thereunder; and

(3) the term "made," when used in relation to any invention, means the conception or first actual reduction to practice of such invention.

2. The Declaration of Purpose and Policy in section 102 of the Space Act does not address the disposition of rights in inventions covered in section 305. 42 U.S.C. 2451. 3. See, for example, the testimony of John A. Johnson, General Counsel of NASA during Hearings Before a Subcommittee of the Select Committee on Small Business of the United States Senate on The Effect of Federal Patent Policies on Competition, Monopoly, Economic Growth and Small Business, 86th Cong., 1st. Sess., pages 255 and 267; and during Hearings Before the Subcommittee on Patents, Trademarks, and Copyrights, of the Committee of the Judiciary, pursuant to S. Res. 55 on S. 1089 and S. 1176, 87th Cong; 1st Sess., Part 1, page 161.

4. House Rept. No. 2166, 85th Cong., 2nd Sess. (July 15, 1958) at 22-24. an extension discussion of the events that led up to this conference report can be found in Appendix A of An Evaluation of the Patent Policies of the National Aeronautics and Space Administration, Report of the Committee on Science and Astronautics, U.S. House of Representatives, 89th Cong., 2nd Sess. Some key events discussed are: (a) The introduction of the original House and Senate bills (H.R. 1181 and S. 3609, on April 14, 1958) containing no patent provisions.

(b) The subsequent hearings on S. 3609, during which the Deputy Secretary of Defense recommended that no special patent provisions be included in the legislation, based on the expectation that the policies and procedures of NACA (similar to those of DOD) would be applied by regulation.

(c) The reporting of H.R. 12575 (replacing H.R. 1181) out of House committee (May 24, 1958), with a section 407 entitled "Patent Rights," patterned after similar provisions of the Atomic Energy Act.

(d) The unanimous passing H.R. 12575 (June 2, 1958) with no debate or comment on section 407.

(e) The subsequent expressions of displeasure by industry and the private bar over section 407, primarily because of its similarity with what they considered the restrictive and arbitrary provisions of the Atomic Energy Act.

(f) The reporting out by the Senate Committee (June 11, 1958) of amended S. 3609 with a new Section 303, almost identical to section 407 of H.R. 12575.

(g) The successful floor amendment by Sen. Johnson during debate on amended S. 3609 to have section 303 deleted and the matter referred to conference.

(h) The subsequent appointment, by Rep. McCormack (Chairman of the Select Committee on Astronautics and Space Exploration) of a patent subcommittee (chaired by Rep. Natcher) to review the matter prior to any House-Senate conference. This subcommittee recommended an approach which provided, inter alia, that the Administrator would be entitled to ownership to inventions made under contract only when certain findings (based on the relationship of the invention to the duties of the employee of the contractor making the invention) were made; and as a separate matter would be authorized to waive ownership of inventions to which the Administration was entitled in the national interest. Thus the report of the Natcher subcommittee indicated an intent not to automatically vest ownership in the Administration under all contractual situations (no matter how broadly defined), as under the Atomic Energy Act. This report, unpublished, is entitled "Report of The Patent Subcommittee, House Committee on Astronautics and Space Exploration re Section 407, H.R. 12575.

(i) The adoption of the final version of section 305, coupled with favorable floor comment. While worded and structured differently than section 407 appearing in the report of the Natcher subcommittee, it contained many of the salient features

recommended in the report. Thus, when the conference report refers to the adoption of "entirely new patent provisions," it is in reference to the earlier draft of section 407 in H.R. 12575, and not in the rewrite of section 407 by the Natcher subcommittee. This is emphasized by the floor statements of Rep. Keating, which follow the report of the Natcher subcommittee rather closely in explaining the basis for new section 305.

5. 104 Congressional Record 13978 (1958)

6. House Rept. No. 2166, at 22.

7. On this point the report of the Natcher subcommittee (see note 4(h) above) states, by way of explanation of its redraft of section 407(a): "The new version is not designed to be applicable to inventors or others directly employed by the Agency as Government employees. The rights of Government employees in such matters are already set forth by Executive Order (E.O. 10096, Jan. 23, 1950)."

The report then continues with an explanation of subsection 407(b) by stating "This spells out two conditions under which the Administrator is entitled to claim ownership in invention." The two conditions described are essentially the same as subparagraphs (1) and (2) of subsection 305(a), and are analogous to the basic policy set forth in paragraph 1. of E.O. 10096. Thus, there appears to be an intent to establish a relationship whereby, for the Administrator to be entitled to claim ownership to invention rights, the contractor employee is to be required to perform work for the Administration, indirectly through contract, in a manner analogous to the direct requirement for employees of the agency to perform such work.

8. 104 Congressional Record 13978 (1958) at 13986-13987. The provision dropped by floor amendment was section 303 (similar to section 407 in H.R. 12575) which was critized as being too much like the restrictive and arbitrary provisions of the Atomic Energy Act. Also, the statement that "-the stringent requirements in the Atomic Energy Act-are not fully applicable to the space field-" is one of the principal conclusions of the report of the Natcher subcommittee.

9. Supra, note 8, at 13987-13988. Rep. Keating's statements, like those of Rep. McCormack, are markedly consistent with, and supportive of, the conclusions and recommendations of the report of the Natcher subcommittee.

10. The Natcher subcommittee, for example, noted in its report (see note 4(h)) that the original section 407, as it stood, tended to be "arbitrary and restrictive" and might "stifle interest and private endeavors in the space research and development field."

11. Testimony of John A. Johnson, General Counsel of NASA, during Hearing Before the Special Subcommittee on Patents and Scientific Inventions of the Committee on Science and Aeronautuics, U.S. House of Representatives, on H.R. 1934 and H.R. 6030, 87th Cong; 1st Sess., at page 17.

12. There is no question as to the binding effect of a statutory definition of a term. However, as observed by authorities on statutory construction, such as the treatise of Sutherland Statutory Construction, Sec. 4707 [Sands, 4th ed 1973] [hereinafter Southerland]:

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"Definitions are themselves written in words whose meaning, whether viewed separately or in conjunction with the terms being defined and other language comprising their context, may be determinable only through further practice of the methods of interpretation."

"*** words of an act may be restricted by its subject in order to avoid repugnance with other parts of the act (cite omitted) * * * [and] [t]he application of the words of a single provision may be * ** restricted to bring the meaning of the clause in question into conformity with the intention of the legislature *

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13. The official interpretation reflected in the regulations and long standing practices of an administrative agency charged with the duty of enforcing a statue has great weight in determining the operation of a statute. Although not binding on a court, it is unlikely that such interpretation would be overturned unless found to be clearly erroneous. Southerland, Sec. 4905 (and cases cited therein); C.D. Stands, 4th ed. 1973; also 82 C.J.S. Statutes, Secs. 358, 359 (and cases cited therein).

14. The courts are particularly reluctant to overule a long-standing administrative interpretation of a statute where to do so would unsettle titles, or prejudice persons who have acquired contract or property rights in reliance on such construction. 82 C.J.S. Statutes, Sec. 359 (and the cases cited therein). Needless to say, a literal construction of subsection 305(a) and 305(j)(2) at this time would have the effect of unsettling a myriad of rights in any inventions that may have been made in those instances where NASA has exercised reasonable judgment in making practical interpretations consistent with the legislative purpose (e.g., as has been done regarding the preparation of proposals, supply contracts, reimbursable launch service agreements, and numerous joint endeavors).

15. The Assistant General Counsel for Patents memorandum dated June 23, 1959 to the General Counsel on The Applicability of the "Property Rights in Inventions" Sectior of the National Aeronautics and Space Act of 1958 (Section 305) to inventions made in the performance of research and development work, the cost of which is not charged to NASA.

Two significant points made in the memorandum are:

(a) "It is inconceivable that the Congress would have intended that NASA could establish a relationship with a party whereby all the inventions made by that party or its employees under the circumstances defined in Provisions (1) and (2) of subsection 305(a) would become the exclusive property of the Government merely by NASA proposing to such party that it do work for the Administration"; and

(b) "In order not to work a completely incongrous result, it is recommended that NASA interpret the terms 'proposed contract,' as used in subsection 305(j)(2) in defining 'contracts,' as relating back to work done upon an understanding that a contract would be awarded."

16. That interpretation was made clear in the testimony of John A. Johnson, NASA General Counsel, during Hearings Before The Subcommittee on Patents and Scientific Inventions of the Committee on Science and Astronautics of the U.S. House of Representatives, on Public Law 85-568, 86th Cong. 1st Sess. In answer to a question by Rep. Fulton (pg 14) regarding the distinction between research and development contracts and supply contracts in the field of aeronautics and space, the General Counsel testified: "We did make that distinction. We have made it administratively-and we were without any published legislative history on this to help use-because we simply could not believe, in the context of this section, that every time we entered into a contract for the supply of some office supplies or something of that kind it was intended that this kind of patent clause should into it. We have confined our patent clause to-we have a rather elaborate formula in our regulations; but, to oversimplify it, it is basically a research and development type contract. We felt, after all, that this was the only reasonable intention we could read into this section of the law; but the language is so broad that some of the initial commentators on this section made it appear more horrible than it actually is in practice."

In his response to the General Counsel's answer Rep. Fulton made the point that the "law is too broad" and went on to-"compliment the NASA, the Administrator, and the people who have been advising him on making the distinction as to the type of contract that the patent provisions apply to."

17. The NASA Procurement Regulations (Chapter 18 of Title 41 of the Code of Federal Regulations) requires the use of a section 305 patent rights clause only in contracts which entail technical, scientific or engineering work of a kind performed in a contract having as one of its purposes (1) the conduct of basic or applied research, (2) the design or development, or manufacture for the first time, of any machine, article of manufacture, or composition of matter to satisfy NASA's specifications or special requirements, (3) any process or technique for attaining a NASA objective not readily attainable through the practice of a previously developed process or technique, or (4) the testing or practice of a previously developed process or technique to determine whether the same is suitable or could be made suitable for a NASA objective. This official interpretation was initially taken in 1959 (14 CFR 1201.101-2(a)), and is still followed (see NASA PR 9.107-4, revised Dec. 1976). 18. Statement of Mr. James B. Webb, Administrator, National Aeronautics and Space Administration, Before the Committee on Science and Astronautics, House of Representatives, August 10, 1961. (NASA News Release No. 61-173). This consideration is seen as reflected in the following language taken from Mr. Webb's statement: "The significance of the patent provisions agreed to by NASA and AT&T is that whatever form of organization may be determined to be in the public interest and approved by the Federal Communications Commission for providing communication to the public through satellite relays, that organization will be able to use inventions made by AT&T while in this cooperative relationship with NASA.”

The patent provisions of the NASA/AT&T agreement were unique in many respects: (1) inventions "conceived or first actually reduced to practice in the performance of work under or in anticipation of the Agreement on or after May 18, 1961 were, by specific agreements of the parties, to "be regarded as being made in the performance of work under a contract *** within the meaning of section 305" of the Space Act; (2) title to such inventions was waived in advance to AT&T but in addition to the usual rights under section 305, NASA also retained the right to sublicense United States business throughout the world in the field of communications satellites; and (3) with respect to inventions made by AT&T during the period of the contract but unrelated to the contract save for being contemporaneously

made and of similar use, the Government was to receive a broad royalty-free license together with the right to require sublicenses. For a thorough analysis of the AT&T arrangement, which has not been followed in any other instance, see Allnutt, Patent Policy for Communications Satellites: A Unique Variation, 46 Marquette L. Rev. 63 (1962).

19. Assistant General Counsel for Patent Matters memorandum of February 3, 1964 to the General Counsel on Recommended Patent Clause for the Cooperative Agreement Between NASA and the Communications Satellite Corporation.

The memorandum notes that the position recommended therein for the Comsat agreement is quite different from that previously taken in the AT&T agreement. It points out, however, that the rather marked departure (taken in the NASA/AT&T agreement) from standard NASA patent practices was essentially prompted by two reasons neither of which is "effective today."

As to the first reason, it was pointed out that the need to insure freedom of action in the communication satellite field pending a Congressional decision on a communications satellite system no longer existed in view of the establishment of the Communications Satellite Corporation under the Communication Satellite Act of 1962. 76 Stat. 421, 47 U.S.C. 721(b)(1062).

The second reason dealt with the practical difficulty of determining whether AT&T inventions relating to Telstar were made under the NASA-AT&T agreement or as a result of AT&T's independent research programs. To avoid this difficulty, the Government under the NASA/AT&T agreement acquired rights to all such inventions.

The memorandum took the position that NASA was not entitled to any rights to inventions made by Comsat or its contractors since "if Congress intended for NASA to attempt to acquire patent rights in inventions developed in the corporation funded research, either to insure royalty-free use of such inventions by the Government, or as a means of assuring effective competition among the corporation's suppliers, there is no doubt that such a prescription would have been included in the Act The view that NASA is not entitled to demand such an interest in the cooperative agreement is reinforced by the fact that the FCC and not NASA is charged under the Act with the responsibility of insuring effective competition among the corporation's contractors."

20. Ibid.

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21. Agreement Between the National Aeronautics and Space Administration and Communications Satellite Corporation For Satellite Launching and Associated Services to Be Furnished By NASA In Connection With The Launching of Intelsat II and Certain Intelsat I Satellites, dated July 22, 1966, Article X-Property Rights in Inventions.

22. As a further clarification of this interpretation of section 305, ART II—Par. 1.C. of the NASA/Comsat Agreement (note 21) contained the following language: "c. The Corporation represents that it proposes to do the following, which will not, however, constitute work performed under this Agreement.

(1) Provide for the design, development, and testing of all spacecraft. (2) Perform all spacecraft pre-launch tests at ETR.

(3)

23. The most recent interpretation is found in paragraph 6(a) of NASA Management Instruction (NMI) 8610.8 of January 21, 1977 (14 CFR 1214.104(a)) entitled Reimbursement for Shuttle Services Provided to Non-U.S. Government Users:

"6. PATENT AND DATA RIGHTS

a. NASA will not acquire rights to inventions, patents or proprietary data privately funded by a user, or arising out of activities for which a user has reimbursed NASA under the policies set forth herein. However, in certain instances in which the NASA Administrator has determined that activities may have a significant impact on the public health, safety or welfare, NASA may obtain assurances from the user that the results will be made available to the public on terms and conditions reasonable under the circumstances."

24. Letter of April 6, 1959 from NASA General Counsel to Patent Counsel, General Electric Company, Cincinnati, Ohio.

25. Ibid.

26. This is not to say that NASA does not obtain rights to inventions which may result from joint activities under an endeavor. However, such rights are obtained by negotiation and agreement, and not by the imposition of subsection 305(a). Typically, when the resulting activities are of an inventive type, NASA acquires at least a royalty-free license to practice, for governmental purposes, any inventions arising from such results. On a case-by-case basis greater rights may be acquired to assure