Title 14-AERONAUTICS AND SPACE

CHAPTER V-NATIONAL AERONAUTICS AND SPACE ADMINISTRATION

PART 1245-PATENTS

rights clause contained in the contract. Sections 1245.104(g) and 1245.105(a) (2) have been modified to clarify the applicability of waivers to any division or continuation patent applications.

Section 1245.112(b) (4) has been amended to require the Inventions and Contributions Board to promptly notify the petitioner of its proposed recommendation to the Administrator.

The revised Patent Waiver Regulations are hereby adopted and shall become effective on November 3, 1977.

Subpart 1 is revised in its entirety as follows:

Subpart I-Patent Waiver Regulations

Subpart 1-Patent Waiver Regulations AGENCY: National Aeronautics and Space Administration.

1245.102

ACTION: Final regulations.

1245.106

1245.107

SUMMARY: The National Aeronautics and Space Administration (NASA) finalizes revision to its Patent Waiver Regulations. This revision, along with revisions to the NASA Procurement Regulations (NASA PR 9-107 and 9-109; PRD 76-14) provides greater uniformity, to the extent consistent with the requirements of section 305 of the National Aeronautics and Space Act of 1958 (42 U.8.C. 2457), between certain policies, practices. and procedures followed by NASA and other agencies in the implementation of the revised Presidential Memorandum and Statement of Government Patent Policy, August 23, 1971 (36 FR 16887-16892).

EFFECTIVE DATE: November 3, 1977. ADDRESS: General Counsel, National Aeronautics and Space Administration, Washington. D.C. 20546.

FOR FURTHER INFORMATION CONТАСТ:

Robert F. Kempf, 202-755-3932. SUPPLEMENTARY

INFORMATION:

On May 18, 1977, a notice of proposed revisions to the NASA Patent Waiver Regulations was published in the FEDERAL REGISTER (42 FR 25508-25513). The purpose of the revision is (1) to uniformly adopt, to the extent consistent with statute, the policies, practices, and procedures in implementing the aforesaid Presidential Statement, (2) modify cerLain internal handling procedures for waiver petitions submitted to NASA, and (3) set forth NASA's policy with respect to waiver under contracts for research, development, or demonstration awarded by NASA on behalf of the Energy Research and Development Administration (ERDA) (or successor agencies). Interested parties were permitted 30 days to submit written comments regarding the proposed revisions. Consideration has been given to all material received and changes have been made as follows:

work

Section 1245.104(b) (1) has been modified to make it clear that advanced waivers apply to inventions "reported under the terms of the contract." thereby insuring consistency with the invention

1245.108 1945.109

1245.110

1245.111

1245.112

1945.113

1945.114

1245.116

Advance waivers.

Waiver after reporting inventions. Waiver of foreign rights.

Content of petitions.

Submission of petitions.

Notice of proposed Board action
and reconsideration.
Hearing procedure.

Findings and recommendation of
the Board.

Action of the Administrator. 1948.116 Filing of patent applications and reimbursement of costs. Publication and record of decisions.

1245.117

The provisions of the subpart apply to all inventions made or which may be made under conditions enabling the Administrator to determine that the rights therein reside in the United States pursuant to section 305(a) of the National Aeronautics and Space Act of 1968, as amended (42 U.S.C. 2457(a)).

§ 1245.102 Definitions and terms. As used in this subpart:

(a) "Contract" means any actual or proposed contract. agreement, understanding, or other arrangement with the National Aeronautics and Space Administration (NASA) or another Government agency on NASA's behalf, including any assignment, substitution of parties or subcontract executed or entered into thereunder, and including NASA grants awarded under the authority of 42 US.C. 1891-1893.

(b) "Contractor" means the party who has undertaken to perform work under a contract or subcontract.

(c) "Invention" includes any art, method, process, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or

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

(e) "To the point of practical application" means to manufacture in the case of a composition or product, to practice in the case of a process, or to operate in the case of a machine, and under such conditions as to establish that the invention is being worked and that its benefits are reasonably assessible to the public.

(f) "Board" means the NASA Inventions and Contributions Board established by the Administrator of NASA within the Administration under section 305(f) of the National Aeronauties and Space Act of 1958, as amended (42 U.S.C. 2457(f)).

(g) "Chairman" means Chairman of the NASA Inventions and Contributions Board.

(h) "Peiltioner" means a contractor or prospective contractor who requests that the Administrator waive rights in an invention or class of inventions made or which may be made under a NASA contract. In the case of an identified invention, the petitioner may be the inventor(s).

agency"

(1) "Government includes any executive department, independent commission, board, office, agency, administration, authority, Government corporation, or other Government establishment of the executive branch of the Government of the United States of America.

(j) "States and domestic municipal governments" means the States of the United States, the District of Columbia, Puerto Rico, the Virgin Islands, American Samoa, Guam, the Trust Territory of the Pacific Islands, and any political subdivision and agencies thereof.

(k) "Administrator" means the Administrator of the National Aeronautics and Space Administration or his duly authorized representative.

(a) In implementing the provisions of section 305 (f) of the National Aeronautics and Space Act of 1958, as amended (42 U.B.C. 2457(f)) and in determining when the interests of the United States would be served by waiver of all or any part of the rights of the United States in inventions made in the performance of work under NASA contracts, the Administrator will be guided by the objectives set forth in the National Aeronautics and Space Act of 1958, as amended (42 U.B.C. 2451-2477) and by the basic policy of the revised Presidential Memorandum and Statement of Government Patent Policy issued August 23, 1971 (36 FR 16887-16892). Among the most important goals thereof are to provide incentives to foster inventiveness and encourage reporting of inventions made under NASA contracts, to provide for

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wtractiouble evenination of ow abnology resulting from NASA ur, and to promote eurly utiliza

phous development, and confum: & mathability of this new technoly for commercial purposes and the public benefit. In applying this regulao both the need for incentives to draw (or private initiatives and the need to promote healthy competition in industry must be weighed.

(b) Sever different situations when waiver of all or any part of the rights of the United States may be requested are prescribed in 1245.104-1245.106. Under 1245. (04, advance waiver of rights to any or all of the inventions which may be mane under a contract may be requested prior to the execution of the contract or within 30 days after execution of the contract. Waiver of rights to an identified invention made and reported under a contract may be requested under Any of these provisions even though a request under a different provision was not made. or if made. was not granted. Waiver of foreign rights under 1245.106 may be recuested concurrently with domestic rights or independently thereof.

With respect to inventions which may be or are made or conceived in the course of or under contracts for research. development or demonstration work awarded by NASA on behalf of the Department of Energy (DOE) or in sup

of an DOE program, on a reimburcable basis pursuant to agreement between DOE and NASA, the waiver policy, Jeguiations and procedures of DOE will be applied. (See 1245.110 (e), § 1245.111 (b)

a The provisions of this 1245.104 ady to petitions for waiver of domestic rights to any or all of the inventions which may be made under a contract. Such petitions may be submitted by the contracto: prior to its execution of the Captenet or within 30 days thereafter.

cb The Board shall recommend to the Administrator that waiver of domeswe rights to any or all of the inventions whies may be made under the NASA contr wet involved be granted when the Board makes each of the findings of paragraphs (o) and (d) of this section and concludes that the interest of the United State would be served thereby. Such waiver shall apply to inventions reported

the terms of the contract and which are designated at the time of reportne as being an invention on which the water recipient intends to file or has Ales US patent application

When the Board is unable to make are or more of the findings to support a water wider paragraph (e) of this section as to the contract but nevertheless finds that exceptional circumstares xist so that the public interest wonki bist be served by a waiver of rights tany all of the inventions which (7.1) be made under the contract. the Beard shail recommend to the Administrator that waiver be granted conditions of paragraph (d) of this section are not

relevant to the Isoard's findings under this subparagraph). A finding of exceptional circunstances shall be accompanied by a discussion of the rationale therefor. Examples of exceptional circumstances would include: A contract where participation of the contractor may only be secured through the grant of waiver and such contractor is deemed essential to a NASA program objective; a contract having as a principal objective the application of aerospace related technology to other uses in accordance with an established NASA technology application program and where the grant of waiver would materially advance this objective; or, a cooperative endeavor where the contract calls for a significant contribution of funds by the contractor to the work to be performed. In the case of an invention which is identified prior to execution of the contract, exceptional circumstances may also be found where waiver is a necessary incentive to call forth risk capital and expense to bring the invention to the point of practical or commercial application and where either (1) the contractor has established substantial equities at its own expense in the development of the invention; or, (ii) the grant of advance waiver will significantly advance the availability of the invention to the general public.

(c) (1) It is not a principal purpose of the contract to create. develop or improve products, processes, or methods which are intended for commercial use (or which are otherwise intended to be made available for use) by the general public at home or abroad, or which will be required for such use by governmental regulations.

(2) It is not a principal purpose of the contract to explore into fields which directly concern the public health, public safety, or public welfare.

(3) The contract is not in a field of science or technology in which there has been little significant experience outside of work funded by the Government, or where the Government has been the principal developer of the field, and the acquisition of exclusive rights at the time of contracting would not likely confer on the petitioner a preferred or dominant position.

(4) The contract is not for services of the petitioner for (1) the operation of & Government owned research or production facility, or i) coordinating and directing the work of others.

(d) (1) The purpose of the contract is to build upon existing knowledge or technology. to develop information. products, processes, or methods for use by the Government

(2) The work called for by the contract is in a field of technology in which the petitioner has acquired technical competence (demonstrated by factors such as know-how, experience, and patent position), and either (i) the work is directly related to an area in which the petitioner has an established nongovernmental commercial position; or (1) the commercial position of the petitioner is not sufficiently established, but a special situation exists such that the public interest in the availability of inventions

would best be served by a waiver of rights to the petitioner. Such special situations include, but are not limited to the following:

(1) A newly formed company having a definite program for establishing a nongovernmental commercial position in the field of the contract or in an area directly related thereto.

(i) An established company lacking an established nongovernmental commercial position in the field of the contract or a directly related field, but having established plans and programs for achieving such a position.

(i) An educational or nonprofit institution having a promulgated policy and an effective program for acquiring rights to inventions and for acting by itself or through others to bring the results of such inventions to commercial application.

(e) When a petition for waiver is submitted pursuant to paragraph (a) of this section, prior to contract execution, it will be processed expeditiously so that a decision on the petition may be reached prior to execution of the contract. However, if there is insufficient time or insufficient information is presented. or for other reasons which do not permit a recommendation to be made without unduly delaying execution of the contract. the Board will inform the contracting officer that no recommendation has been made and the reason therefor. The contracting officer will then notify the petitioner of the Board's action.

(f) After notification by the contracting officer under paragraph (e) of this section; the petitioner may, upon its execution of the contract, or within 30 days thereof, request the Board to reconsider the matter under paragraph (b) of this section either on the record or with any additional statements submitted in support of the original petition.

(g) A waiver granted pursuant to a petition submitted under this § 1245.104 shall apply only to those aventions reported under the terms of the applicable contract and which are designated at the time of reporting as being an invention on which the petitioner intends to file or has filed a U.S. patent application. The waiver shall extend to the claimed invention of any division or continuation of the patent application filed on the reported invention provided the claims of the subsequent application do not substantially change the scope of the reported invention.

(h) A waiver granted pursuant & petition submitted under this § 1245.104 shall extend to any contract changes. modifications, or supplemental agreements, so long as the purpose of the contract or the scope of work to be performed is not substantially changed.

$1245.105 Waiver after reporting inventions.

(a) (1) The provisions of this 1245 105 apply to petitions for waiver of domestic rights to identified inventions which have been reported to NASA and to which a waiver of rights has not been

granted pursuant to 1245.104. A petiLion for waiver under this section should be filled promptly after the reporting of the invention to NASA, and must be submitted prior to the filing by NASA of a U.B. patent application claiming the reported invention.

(2) A waiver granted pursuant to this section shall extend to the claimed invention of any division or continuation of that patent application filled on the reported invention provided the claims of the subsequent application do not substantially change the scope of the reported invention.

(b) The Board shall recommend to the Administrator that waiver of domestic rights to an identified invention Le granted where the Board makes all of the Andings below and concludes that the interest of the United States would be served thereby:

(1) The invention is not directly related to a governmental program for creating, developing, or improving products, processes, or methods for use by the general public at home or abroad.

(2) The invention is not likely to be required by governmental regulations for use by the general public at home or abroad.

(3) The invention does not directly concern the public health, public safety, or public welfare.

(4) The invention is not in a field of science or technology in which there has been little significant experience outside of work funded by the Government, or where the Government has been the principal developer of the field, and the acquisition of exclusive rights in the invention would not likely confer on the petitioner a preferred or position.

dominant

Provided, that the Board also finds in view of the petitioner's plans and intentions to bring the invention to the point of practical application, and the activities of the Government, the incentives provided by waiver will increase the likelihood that the benefits of the invention would be readily available to the public at an early date.

(c) If the Board is unable to make one of the findings to support a waiver under paragraph (b) (1) through (4) of this section, the Board may nevertheless recommend that waiver of domestic rights be granted by the Administrator if the Board further finds that such waiver is a necessary incentive to call forth risk capital and expense to bring the invention to the point of practical application, or that the Government's contribution to the invention is small compared to that of the contractor.

consistent with the economic interests of the United States. The Board may also recommend the grant of only foreign rights, in accordance with the guidelines of paragraph (b) of this section, when the interests of the United States will best be served thereby.

(b) The Board will also consider a separate request for the waiver of the right to secure a patent in any country in which the petitioner elects to file as to an identified invention when so requested by the petitioner in accordance with § 1245.110 (d). Waiver of such foreign rights will normally be granted in countries in which the Administrator does not desire to file an application for patent provided that the grant of such rights is consistent with the economic interests of the United States.

(c) When the Administrator determines that it is in the best interest of the Government and the petitioner to withhold the release or publication of information on an invention for which the petitioner has requested waiver and is to file foreign patent applications thereon, NASA may agree, upon written request by the petitioner, to use its best efforts to withhold publication until a patent application is filed thereon, but in no event shall the Government or its employees be liable for any publication thereof.

§ 1245.107 Reservations.

(a) With respect to any particular invention, each waiver of domestic or foreign rights granted shall be subject to the reservation of an irrevocable, nonexclusive, non-transferable, royalty-free license for the practice of the invention throughout the world by or on behalf of the U.B. Government or any agency thereof, any foreign government pursuant to any existing or future treaty or agreement with the United States, or States and/or domestic municipal governments unless the Administrator determines, based upon a recommendation of the Board, that it would not be in the public interest to acquire the license for Btates and/or domestic municipal governments.

(b) With respect to any particular invention, each waiver of domestic rights granted shall be subject to the reservation by the Administrator of the right to require the granting of a nonexclusive or exclusive license for the practice of the invention to any responsible applicant on terms that are reasonable under the circumstances:

(1) Unless the waiver recipient, its licensees, or assigns have taken effective steps within 3 years after a U.S. patent issues on the invention to bring the invention to the point of practical application and thereafter continue to work the invention and make its benefits reasonably accessible to the public; or

(2) Unless within 3 years after a U.S. patent issues on the invention, the waiver recipient, its licensee, or its assigns have made the invention available for licensing royalty-free or on terms that are reasonable in the circumstances; or

(3) To the extent that the invention is required for public use by govern

mental regulations or as may be neces sary to fulfill health, safety, o: welfare needs, or for other public purposes stipulated in the contract.

(c) With respect to any particular invention, each waiver granted for domestic or foreign rights shall be subject to the reservation by the Administrator of the right to require refund of any amounts received as royalty charges on the waived invention in procurements for or on behalf of the Government and to provide for that refund in any instrument transferring rights to any party in the waived invention.

(d) With respect to any particular invention, each waiver granted for domestic or foreign rights shall be subject to any other reservations called for by the Administrator on the grant of the

petition.

(e) The waiver recipient shall be given an opportunity to show cause before the Board why it should not be required to grant a license under paragraph (b) of this section or why it should retain the principal or exclusive rights as provided by waiver for a further period of time. § 1245.108 License to contractor.

Each contractor reporting an invention is granted a license for each filed patent application and any resulting patent in which the Government acquires title of the scope and on the terms and conditions specified in the NASA Licensing Regulations (14 CFR 1245.204(a)).

§ 1245.109 Revocation and voidability of waivers.

(a) If the waiver recipient fails to file a domestic or foreign patent application on any waived invention within the prescribed time periods, or decides not to continue prosecution of any such patent application, or to pay any of the required maintenance fees, or for any reason decides not to retain title to any such patent application or any patent issued thereon, the waiver recipient shall notify the Chairman and shall, upon request, convey to NASA the entire right, title, and interest in the invention, and to any corresponding patent application or patent. The conveyance shall be made by delivering to the Chairman duly executed instruments (prepared by the Government) and, if applicable, such 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)-(d) of this section.

(b) With respect to 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 pursuant to 1245.104, or 6 months from the date of the granting by the Administrator of a waiver pursuant to § 1245.105, or such longer periods as may be approved by NASA for good cause shown, the waiver