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CHAPTER V-NATIONAL AERONAUTICS
PART 1245 PATENTS
Robert F. Kempf, 202-755-3932. SUPPLEMENTARY INFORMATION: On May 18, 1977, a notice of proposed revisions to the NABA Patent Waiver Regulations was published in the FEDERAL REGISTER (42 FR 25508-25613). The purpose of the revision is (1) to uniformly adopt, to the extent consistent with atatute, 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 NABA's policy with respect to walver under contracts for research, development, or demonstration work awarded by NABA on behall of the Energy Research and Development Administration (ERDA) (or successor agencies). Interested parties were permitted 30 days to submit written comments regarding tho proposed revisions. Consideration has been given to all material received and changes have been made as follows:
Section 1245.104(b) (1) has been modified to make it clear that advanced walvers apply to inventions "reported under the terms of the contract," thereby insuring consistency with the invention
rights clause contained in the contract. any variety of plant. which 1, or nt Bections 1248.104() and 1245.106(a)
be patentable under the Patent Laws of (2) nave doen moduled to claruy the ap- the United States of America O! forpllosbuity of waivers to any division oreign country. continuation patent applications.
(d) "Made," when used in relation to Section 1245.112(b) (4) bas been amended to require the Inventions and
any invention, means the cou eption or Contributions Board to promptly notify
first actual roduction to practice of such the petitioner of its proposed recommen
Invention. dation to the Administrator.
(e) "To the point of practical appliThe revised Patent Waiver Regulations
cation" means to manufacture in the are hereby adopted and shall become ef
Case of # composition or product, to fective on November 3, 1977.
practice in the case of a process, or to Subpart 1 is revised in its entirety as
operate in the case of a machine, and follows:
under such conditions as to establish
that the invention is being worked and Subpart Patent Walver Regulations
that its benents are reasonably assessSec.
ible to the public. 1245.100 Scope.
(0) "Board" means the NASA Inven1246.101 Applicability. 1245.102 Donnitions and terms.
tions and Contributions Board estab1245.103 Policy.
Ished by the Administrator of NASA 1246.104 Advance waivers.
within the Administration under section 1246.105 Walver after reporting inventions 1246.106 Waiver of foreign rights.
Space Act of 1958, as amended (42 U.S.C. 148.107 Reservations.
2457(1)). 1246.108 License to contractor.
(8) Chatrman" means Chairman of 146.100 Rovocation sad vold out the NASA Inventions and Contributions
(h) "Porttioner" means & contractor 1946.112 Notice of proposed Board notion or prospoctive contractor who requests and reconsideration.
that the Administrator waive rights in 1946.119 Hearing procedure.
an invention or class of inventions made 15.114 Pinding and recommendation of or which may be made under A NASA the Board
contract. In the case of an identified in1248.116 Action of the Administrator.
vention, the petitioner may be the inIM0.116 ming of patent Applications and reimbursement of conta.
ventor(s). 1246.117 Publication and record of doct
(1) "Government agency" includes sions.
any executive department, independent AUTHORITY: 12 U.S.C. 2467.
commission, board, office, agency. ad
ministration, authority. Government Subpart 1-Patent Wahrur Regulations
corporation, or other Government estabg 1245.110 Scope
Ishment of the executive branch of the
Government of the United States of This Subpart 1 prescribes regulations
America. for the walver of rights of the United
(1) "States and dornestic municipal States to inviations made under NABA
governments" means the States of the contract.
United States, the District of Columbia, 8 1245.101 Applicability,
Puerto Rico, the Virgin Islands, AmeriThe provisions of the subpart apply to
can Samoa, Guam, the Trust Territory All Inventions made or which may be
of the Pacific Islands, and any political made under conditions enabling the Ad
subdivision and agencies thereof. ministrator to determine that the rights
(k) "Administrator" means the Adtherein reside in the United States pur
ministrator of the National Aeronautics suant to section 305(a) of the National
and Space Administration or his duly Aeronautics and Space Act of 1968, as
authorized representative. Amended (42 0.8.C. 2487(a)).
$ 1245.103 Policy. $ 1245.102 Dofinitions mod torm.
(a) In implementing the provisions of As used in this subpart:
section 305(1) of the National Aeronau(a) "Contract" means any actual or
tics and Space Act of 1958, as amended
(42 U.B.C. 2457(?)) and in determining proposed contract, agreement, under
when the interests of the United States standing, or other arrangement with the
would be served by waiver of all or any National Aeronautics and Space Admin
part of the rights of the United States istration (NASA) or another Govern
in inventions made in the performance ment agency on NASA's behalt, includ
of work under NASA contracts, the Ading any saignment, substitution of
ministrator will be guided by the objecparties or subcontract executed or en
tives set forth in the National Aeronautered into thereunder, and including
tics and Space Act of 1958, as amended NASA grants awarded under the au
(42 U.B.C. 2461-2477) and by the basic thority of 42 US.C. 1891-1893.
policy of the revised Presidential Memo(b) "Contractor" means the party who
randum and Statement of Government has undertaken to perform work under
Patent Policy issued August 23, 1971 (36 & contract or subcontract.
FR 16887-18892). Among the most im(c) "Invention" includes any art,
portant goals thereof are to provide inmethod. process, machine, manufacture, centives to foster inventiveness and endesign, or composition of matter, or any courage reporting of inventions made new and useful improvement thereof, or under NASA contracts, to provide for
ne rouiouble wornination of .*** Terbnclogy routing from NASA
... and to promote ourly uten :10. u rus davolopment, and conwit n a nility of this now tochnolmy for coinnoroial purposes and the wublic bunent. In applying the regulacon bh the need for incentives to draw to private initiatives and the need to propiote healthy competition in in dustry 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 prc-c1bed in 91 1245.104-1246.108. Uncer | 1245,104. advance waiver of dichts to any or all of the inventions which may be muce under & contract mn be requested prior to the execution of the contract or within 30 days after execution of the matract. Warer of rights to an identified Invention made and reported under & contract may be requested under any of these provisions oven though a request under different provision was not made. Or 1 made, ww not minted. Waiver of foreign rights under | 1246.100 may tye reueste concurrently with domestic rights or independently thertor.
C' with respect to inventions which may be ur are made or conceived in the course of or under contracts for resourch, dovelünment ordenonstration work suarded by NASA on behalf of the DeDartnant of Energy (DOE) or in sup
a n DOE program, on A reimburaabibuste pursuant to agreement be. tween DOE and NABA, the walver policy, regulations and procedures of DOE will be applied. (Bee : 1245.110(e), 1245.111 b).
relovni.t to the Isoard's findings under would best be served by & Waiver of rights
(e) When . potities for waiver is subwatver is a necessary incentive to call mitted purnuant to pargraph (A) of this forth risk capital and expense to bring section, prior to contract execution, it the invention to the point of practical l be proceed expeditiously so that a or commercial application and when decidon on the petition may be reached either (1) the contractor has established prior to execution of the contract. Howsubstantial equities at its own exponeo ever, 11 there 18 Insumcient time or inin the development of the invention; or, suicient Information is presented. or (11) the grant of advance walver will for other reasons which do not permit a significantly advance the avallability of recommendation to be made without unthe invention to the general public.
duly delaying execution of the contract, (c) (1) It is not a principal purpose the Board will inform the contracting of the contract to create, develop or omcer that no recommendation has been improve products, processes, or methods made and the reason therefor. The conwhich are intended for commercial use tracting officer will then notify the peti(or which are otherwise intended to be tioner of the Board's action. made available for une) by the general (1) After notification by the contractpublic at home or abroad, or which will ing officer under paragraph (e) of this be required for such use by governmental section; the petitioner may, upon its regulations.
exccution of the contract, or within 30 (2) It is not a principal purpose of days thereof, request the Board to rethe contract to explore into fields which consider the matter under paragraph directly concern the public health, pub (b) of this section either on th: record lic safety, or public welfare.
or with any additional statements sub(3) The contract is not in . Neld of mitted in support of the original petiscience or technology in which there has tion. been little significant experience outside (g) Awaiver granted pursuant to & of work funded by the Government, or petition submitted under this 4 1245.104 where the Government has been the shall apply only to those aventions reprincipal developer of the field, and the ported under the terms of the applicable acquisition of exclusive rights at the contract and which are designated at time of contracting would not likely the time of reporting as being an invencoafer on the petitioner preferred or tion on which the petitioner intends to dominant position.
file or has nled a U.S. patent application. (4) The contract is not for services of The waiver shall extend to the claimed the petitioner for (1) the operation of Invention of any division or contihuation A Government owned research or pro of the patent application filed on the duction facility; or (11) coordinating and reported invention provided the claims directing the work of others.
of the subsequent application do not (d) (1) The purpose of the contract substantially change the scope of the is to build upon existing knowledge or reported invention. technology. to develop information, (h) A waiver granted pursuant to products, processes, or methods for use petition submitted under this $ 1245.104 by the Government.
shall extend to any contract changes. (2) The work called for by the con- modifications, or supplemental agreetract is in teld of technology in which ments, ao long as the purpose of the conthe petitioner has acquired technical inact or the scope of work to be percompetence (demonstrated by factors formed is not substantially changed. such as mos-how, experience, and patent position), and other (1) the work is directly related to an area in which the
8 1245.105 Waiver after reporting inpetitioner has an established nongovern
ventions. mental commercial position; or (11) the (a) (1) The provisions of this I 1245. commercial position of the petitioner is 105 apply to petitions for waiver of 10not suffelently established, but a special mestic rights to identified inventions situation exists such that the public in which have been reported to NASA and terest in the availability of inventions to which a waiver of rights has not been
245.104 Advance waiven.
1The provisions of this | 1246.104 asily to petitions for waiver of domestic rights to any or all of the inventions which may be made under & contract. Such petitions may be submitted by the contractor prior to its execution of the ontcnct or within 30 days thereafter.
(b) 1. The Board shall recommend to the Administrator that waiver of domesuc rights to any or all of the inventions whicii inay bo made under the NASA rontruct involved be granted when the Lord makes each of the findings of par
graphis (c) and (d) of this section and concludes that the Interest of the United Sisters would be served thereby. Such waiver shall apply to inventions reported under the terms of the contract and when are desimated at the time of reportiu 2.3 being an invention on which the wurer recipient intends to file or has Bleri . V 8. patent application.
When the Board is unable to make pre or more of the findings to support #WA: 1 Hider paragraph (c) of this section is to the contract but never the css finds that exceptional circumstances vist su that the public interest would bust be served by & waiver of rights In Any or all of the inventions which may be rade under the contract, the Board shail recommend to the Administrator that waiver be granted (conditions of paragraph (d) of this section are not
granted pursuant to 1 1245.104. A potiilua for waiver under the section should be Aled promptly after the reporting of the invention to NAGA, and must be submitted prior to the Aling by NASA of . 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 Olod 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 identinod invention le granted where the Board make all of the Andings below and concludes that the interest of the United States would be served thereby:
(1) The invention is not directly in lated to provernmental program for reating, devcloping, or improving products processes, or methods for use by the genen public at home or abroad.
(2) The invention is not Ukely to be required by governmental regulations for use by the reneral public at home or abroad.
(3) The invention does not directly concern the public health, public safety. or public welfare.
14) The invention is not in * Meld of science or technology in which there has been little signincant experience outside of work funded by the Government, or where the Government has been the principal developer of the Neld, and the acquisition of exclusive rights in the invention would not likely confer on the petitioner & preferred or dominant position. Provided, that the Board also finds in view of the petitioner's plans and intentions to bring the invention to the point al practical application, and the activities of the Government, the Incentives provided by waiver will increase the likelihood that the benents 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 Andings to support & walver under paragraph (b) (1) through (4) of this section, the Board may nevertheless recommend that waiver of domestic rights be granted by the Administrator 11 the Board further ands that such walver is & necessary incentive to call forth risk capital and expense to bring the invention to the pott 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 mental regulations or as may be neces
domestic or foreign rights shall be sub(b) The Board will also consider & ject to the reservation by the Adminisseparate request for the walver of the trator of the right to require refund of right to secure a patent in any country in any amounts received as royalty charges which the petitioner elects to Ale as to on the walved invention in procurements wn identified invention when so requested for or on behalf of the Government and by the petitioner in accordance with to provide for that refund in any in$ 1245.110(d). Walver of such foreign strument transferring rights to any party
ll normally be granted in coun- in the waived invention. tries in which the Administrator does not
(d) with respect to any particular indesire to Ale an application for patent
vention, each walver granted for domesprovided that the grant of such rights is
tic or foreign rights shall be subject to consistent with the economic interests of any other reservations called for by the the United States.
Administrator on the grant of the (c) When the Administrator doter
petition. mines that it is in the best interest of
• (e) The walver recipient shall be given the Government and the petitioner to withhold the release of publication of
an opportunity to show cause before the Information on an invention for which
Board why It should not be required to the petitioner has requestod waiver and grant a license under paragraph (b) of is to dle foreign patent applications this section or why it should retain the thereon, NASA may wgree, upon written principal or exclusive rights as provided request by the petitioner, to use its best by waiver for a further period of time. efforts to withhold publication until a 81245. 10A
License to contractor. patent application is Alod thereon, but in no event shall the Government or its Each contractor reporting an invenemployees be liable for any publication tion is granted a license for each fled thereof.
patent application and any resulting
patont in which the Government acquires $ 1245.107 Reservations.
title of the scope and on the terms and (a) With respect to any particular in
conditions specified in the NASA Licens
ing Regulations (14 CFR 1245.204(a)). vention, each waiver of domestic or foreign rights granted shall be subject
$ 1245.109 Revocation and voidability to the reservation of an irrevocable, non
of waivens. exclusive, non-transferable, royalty-free Ucense for the practice of the invention (A) I the waiver recipient fails to Ale throughout the world by or on behalf of domestic or foreign patent application the U.B. Government or any agency on any waived Invention within the prethereof, any foreign government pur- scribed time periods, or decides not to suant to any existing or future treaty continue prosecution of any such patent or agreement with the United States, or application, or to pay any of the required Btates and/or domestic municipal gov- maintenance fees, or for any reason deernments unless the Administrator deter- cides not to retain title to any such minco, based upon a recommendation of patent application or any patent issued the Board, that it would not be in the thereon, the waiver recipient shall notify public interest to acquire the license for the Chairman and shall, upon request, Btates and/or domestic municipal gov- convey to NASA the entire right, title, ernments.
and interest in the invention, and to any (b) With respect to any particular corresponding patent application or Invention, each waiver of domestic rights patent. The conveyance shall be made inanted shall be subject to the reserva- by delivering to the Chairman duly extion by the Administrator of the right to ecuted instruments (prepared by the require the granting of a nonexclusive Government) and, 11 applicable, such or exclusive license for the practice of other papers as are deemed necessary to the invention to any responsible appli- vest in the Government the entire right, cant on terms that are reasonable under title, and interest in the invention and the circumstances:
any corresponding patent application. (1) Unless the waiver recipient. Its In addition, any waiver of rights (domesLicensees, or Asadgns have taken effective tic or foreign) shall be voidable as set steps within 3 years after a U.S. patent forth in paragraphs (b)-(d) of this issues on the invention to bring the in- section. vention to the point of practioal applica (b) With respect to any particular tion and thereafter continue to work the invention, each waiver of domestic Invention and make its benents reason- rights shall be voidable at the option ably accessible to the public; or
of the Administrator unless: (2) Unless within 3 years after a U.8. (1) Within 6 months from the date of patent issues on the invention, the waiver reporting an invention under a contract recipient, its licensee, or its assigns have subject to a walver granted pursuant made the invention available for licens- to $ 1245.104, or 6 months from the date ing royalty-free or on terms that are of the granting by the Administrator of reasonable in the circumstances; or
& waiver pursuant to $ 1245.105, or such (3) To the extent that the invention longer periods as may be approved by 1s required for public use by govern- NASA for good cause shown, the waiver
8 1245.106 Waiver of foreign righie.
(a) The Board will consider the valver of domestic and foreign rights concurrently when so requested by the petitioner in accordance with $ 1246.110(d). Where the Board makes the findings necessary to support & waiver of domestic rights, the petitioner will normally be granted the right to secure patents in any country in which it elects to Alle provided that the grant of such right is
(4 The site recipient furnt bes to ste Chai . copy of the patent within 7 months after the potent is issued on sub applicare
5. The aver recipient notities the Chat not less than 30 days before the captation of the initial response ered or any action reguired by the
vient and Trademart Odlce of any cactos net to continue prosecution of the pacatioc ad delves to the Chat AS executed fratreata mantInge Oovernments power of attorney se croserute the spotation
3) The river recipient manta any Roose which the Administrator may
cre partant to I 1348.101. 7. The waiver ridinient Mas atitince report with the Board - upon SASA's written request not more often
An annually. Buch report ball set for in detall the teps taken by the viver recipient a ita tradere re
dine the progreat development ap
ention and commercial we being made and that is intended to be made the valved invention
The ver reeipient notites the Chatronen in not less than 5 days prior De any transfer of principal rights in auch invention to my party. and rubafts statement of the transferee's development and coomercialnation plans So bring the invention to the point o pratical applicados Buch statement - accompany the notification or
may ke sabmitted in not less than 30 reus prior to the transfer of nichts me Stendienst must shor to the Board's saiate that the property rights in tar transferee su Inertare the Melttook that the benefits of the invente would be made readily available to te pable at an early date
The aver recipient complies with ohet terms and conditions called for
by the Administrator with respect to the
The nature of the petitioner or grant of the petition.
its authorized representative, and date of (e) with respect to any particular in- signature. vention, each waiver granted shall be b) Petition for Advance siver voldable at the option of the Administri unde | 1245.106 In addition to the Dtor it. patent claiming such Invention formation specified in peneraph (a) of is held, the final determination, to have this section auch petition for wives been used in violation of the antitrust under $ 1245.104 shall include: lans in roy suit, action, or proceeding (1) A copy of the statement of vort brought before & properly constituted of the pertineat NASA contract or proauthorits authorized to hear such mat- posed connect; ter.
(7) A tuli ad detailed statement of (d) with respect to any particular in- facts suciest to coabie the Board to vention, vaiver of foreign rights to make the finding regarding the contact any foreign country shall be voidable at and the petitione u specified in 125.the option of the Administrator unless: 104 und Applicable, whether exata
(1) A patent application is Aled in the total circumstances of 1245.1046 country within 8 months from the date and/or special situations under 1245.a corresponding U.S. application is fled, 104'd) (2) are prescat; and Or 6 months from the date license is (3) The date of contractor's execution frated by the Commissioner of Patents of the contact the petition Slied and Trademarks to file forelo applica
subacqueat to contract execution tions where such ming has been pro
(c) Petitions for veives for kentide
marutions weder | 1246.105. A separate hibited for security reasons, or much
petition so be submitted for each langer periods as may be expressly ap
Ideated areation except as provided proved by the Administrator
by | 1245.1080) (3). In addition to the
taformation spected in paragraph (a) (3) The Waiver recipieat furatbe to the Chairman the identitytas sertal
of this section, such petition shall innumber and line date of each foreign
clude: patent application Med procapely upon
(1) The full names of all invators,
(2) A statment whether . patert epreceipt thereof: and, upon request.
plication has been fled on the ovention. copy of an English version of the foreign application without additional cocaper
together with a copy o! such applica
tion Bled, or if not Aled, a complete sation and a copy of the foreign patents:
description of the isveption:
(3) IT & patent application has not
been fied, aas information which may fully confirmatory of the rights herein
indicate a potential statutory bar to the reserved by the Governmeat, and
ning of a patent application under 35 (4) The river recto eat to the event
U.S.C. 102 or & statement that no bar it elects not to contawe prouecution of
is known to petitioner to exist; any foreign application Aed on such in
(9 A full and detailed statement of vention of it is intend to abandon .
facts suicient to enable the Board to foreia patent by the sonument of
make the Andings regarding the intenmaintenance tax, notit. the Chairman within wuttient time to
tion as specified in 1245.105 (b) or (e); bio D
(5) Where principe rights in the tima of prosecution by the Government
Wired invention are to be transferred or payment of the maintance tax re
to another party. a statement Identitypectively and delivers to the Chair
ing such party and its relationship to the ruch daly executed taste ts as are
(6) Where the petitioner(s) is the in
entor(s), • statemeat in writing from Medgames
the contmctor that the coatinctor will | 1245.110 Contest option
Det aquest Faiver of rechts and authort(2) Gener content and forms
sation of the contractor. Parts which may be do peditioning
(d) Petitions for ruver of forelas for net and for Aling utilation
richts under 1 1245.100. A petition for ports are madladba for the NASA LA
water of toreda dots on Accompany ventions and Coatutoes Board Xe
and be part of a petition for naives of tionsl Aeronautics and Toua Adetais
domestie nicht under ether 1245.104 tration, Washington DC. 20646. Pack
or | 1245 105. or . petition for foreign request for wie odontic or foreia
dat sy be submitted todependentis rights under $124.10 $145.105
of may request for donatie richts under 1245.100 shall be petition to
$ 1245.100(b). In addition to the inforAdministrator and the include:
stion specified is pannak a this (1) AD Identification the petition
section petition for niver of foreign be place of bactes ad address and
richts shall include, bere feasible, .de the petition is regnated by con
Domination of the fared countries in the name ed ad telephone BE
which petitione elects to secure or tober of the count;
tends to the patent hostians, and is (2) An identification L umber of
plans and tections to practice and/or the pertio NABA contract of pro
License the treation ie rach countrie posed content:
(e) Petitions for miver under i 1945.(3) The Dature and extent of the
103(e). Contents of the petition shall richts dested ead. citation to the
normally be prescribed by the other tion under which the position is submit
Goverancas negy. And petitioner may ted: and
use any forms provided by such agency
1 1945.111 Subminalon of prillon.
1) Politions for advanco wriver of domostio right under 1 1948.104 or ndVango wnivor of foroim rights under 11346.106 prononted prior to contract execution must be submitted to the contracting odcer. Any such petitions submitted by organizations selected for necotiation of contract will be processed And forwarded to the Board for consideration as specified in the NABA Procurement Regulations (41 CFR 18–9.1096(e)). All other petitions shall be submitted directly to the Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, D.C. 20546.
(b) Any waiver petitions submitted under $ 1245.103(c) should be forwarded to the NASA held installation patent counsel for transmittal to DOE for proceasing. 61245.112 Notice of propoord Board
action and reconsideration (a) Notice. Broept v provided by 11245.104(c) the Board will notify the petitioner through the contracting ocer for polilions for advance walver prior to contract execution, and directly for all others:
(1) Whether it proposes to recommend to the Administration that the petition
(1) Granted in the extent requested;
(11 Granted in an extent different from that requested; or
(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, pursuant to paragraph (a) of this section, the Board notines the petitioner that the Board proposes to recommend action adverse to or different from the walver requested, the petitioner may, within such period as the Board may set, but not less than 15 days from such notincation, request reconsideration by the Board.
(2) II reconsideration has been requested within the prescribed time, the petitioner shall, within 30 days from the date of the request for reconsideration, or within such other time as the Board may set. Ale a statement setting forth the points, authorities, arguments, and any additional material on which it reVes.
(3) Upon Aling of the reconsideration statement by the petitioner, the petition Vill be assigned for reconsideration by the Board upon the contents of the petition, the record, and the reconsidention statement submitted by the petitioner.
(4) The Board, after its reconsidera tion, will promptly notity the petitioner of its proponad recommendation to the Administrator. If the Board's proposed retion is adverne to, or diferent froga, the valver requested, the petitioner may request an onal boaring within nach time w the Board hus sot. $ 1245.113 Hearing procedare.
@ the petitioner requests an oral hearing within the time set, pursuant
to 1240.112(b) 14). We Board shall not lioner. The written notice will be accomthe limo and placo for such bouring and panied with a statement of the grounds shall no notify the petitioner.
for denial b) Oral hearings held by the Board (c) If the waiver is granted by the shall be open to the public and shall be Administrator, the petitioner shall be held in accordance with the following sent an original and one copy of an inprocedures:
strument of waiver confirmatory of the (1) Oral hearings shall be conducted
conditions and reservations of the waiver in an informal manner, with the objec
grant for his execution. The petitioner
gran tive of providing the petitioner with a shall return the executed copy to the full opportunity to present facts and ar
Chairman within 30 days from the grant guments in support of the petition. Evt.
of waiver. Failure to return such copy dence may be presented through means
within the prescribed time may result in of such witnesses, exhibita, visual aids as
revocation of the walver of rights are arrangod for by the petitioner. Peti
granted. Before such action is taken, tioner may be represented by any person
notice shall be given to petitioner so that including its attorney. While proceedings
It may show cause before the Board why will be ex parte, members of the Board
the waiver should not be revoked. and its counsel may address questions & 1245.116 Filing of patent applications to witnesses called by the petitioner, and and reimbursement of costs the Board may, at its option, enlist the (8) In order to protect the interests ald of technical advisors or expert wit
of the Government and the petitioner in nesses. Any person present at the hear
Inventions, a petitioner may file a United ing may make a statement for the record.
States patent application for such inven(2) A transcript or equivalent record
tions prior to the Administrator's deterof the proceeding shall be arranged for mination on a petition for waiver. If an by the Board. The petitioner shall sub
application on an identified Invention is mit for the record a copy of any exhibit
nled during the pendency of the petior visual aid utilized during the hearing.
tion, or within 60 days prior to the re
ceipt of a petition, NASA will reimburse 8 1245.114 Findings and recommende
the petitioner for any reasonable costs tions of the Board.
of such Bling and patent prosecution
that may have occurred. Provided : (a) Findings of the Board. The Board (1) Similar patent filing and prosecilshall consider the petition, the NABA
tion costs are not normally reimbursed to contract. 1 relevent, the goals cited in the petitioner as direct or indirect costs $ 1245.103(a), the effect of the waiver on chargeable to Government contracts: the objectives of the related NASA pro (2) The petition is ultimately denied grams, and any other available facts and with respect to domestic rights, or with information presented to the Board by respect to foreign and domestic rights, if an interested party. The Board shall then both are requested; and determine and make, il applicable, cach (3) Prior to reimbursement, petitioner of the specific findings of fact required assigns the application to the United by | 1245.104, & 1245.106, or 1245.106 States of America as represented by the under which the petition was submitted. Administrator of the National AeronauThe Board shall document Its Andings. tics and Space Administration.
(b) Recommendation of the Board.
& 1245.117 Publication and record of (e), after making the Andings of fact,
decisions. the Board shall formulate its proposed
The findings of fact and recommendarecommendation to the Administrator as
tions made to the Administrator by the to the grant of waiver as requested, the Board with respect to each petition for grant of waiver upon terms other than walver shall be recorded by the Board as requested, or denial of waiver.
and available to the public. In addition, (2) If the Board proposes to recom
selected findings and recommendations mend, initially or upon reconsideration
of the Board shall be published annually. or after oral hearing, that the petition Efective Date: The provisions of this be granted in the extent requested or subpart shall be effective on November 3. in other cases, where the petitioner does 1977, and supersede the NASA Patent not request reconsideration or a hearing Waiver Regulations of August 30, 1972 during the period set for such action, or (37 FR 17047-11051), as of what date, exInforms the Board that such action will cept that (a) any petition pending on the not be requested, or fails to Ale the re- effective date will be considered under quired statements within the prescribed the latter regulations unless consideration time, the Board shall transmit the peti- under the revised regulations is specifition, & summary record of hearing pro- cally requested by the petitioner, and (b) ceedings. 1 applicable. Its Andings of any petition received on or before Decemfact with respect thereto. and its rec- ber 5, 1977, may be considered under the ommendation to the Administrator. latter regulations if specifically requested
by the petitioner at the time of submis8 1245.115 Action by the Administrator.
sion. All petitions received on or after (a) After receiving the transmittal December 5, 1977, will be considered from the Board, the Administrator shall under the new revised Patent Waiver determine, in accordance with $ 1245.103, Regulations. whether or not to grant any walver of
ROBERT A. FROSCHI, rights to the petitioner. A waiver pur
Administrator. suant to $ 1245.104(b) (2) will be granted
(FR Doc.77-31792 Filed 11-2-77;8:45 am only when the Board so recommends.
(b) In the event of denial of the petition by the Administrator, & written notice of such denial will be promptly transmitted by the Board to the peti