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the expiration of the initial response serted for any action required by the ent and Trademark Office of any decision not to cuntinue prosecution of the application and delivers to the Chairman executed instruments granting the Government a power of attorney to prosecute the application

ChairmaFLER the

(6) The waiver recipient grants any Scense which the Administrator may stre pursuant to 1245.107.

7. The waiver recipient files a utilizaDer report with the Board, upon VASA3 written request, not more often than annually Buch report shall set forth in detail the steps taken by the waiver recipient or its transferee rewarding the progress development anstation and commercial use being made and that is intended to be made of the waived invention

8 The waiver recipient notifies the Chatman in not less than 60 days prior to any transfer of principal rights in rurh invention to any party, and submits a statement of the transferee's devlopenent anc commercialization plans to bring the invention to the point of pratical application. Such statement -Dulc accompany the notification or

may he submitted in not less than 30 rays omor to the transfer of rights The statement must show to the Board's sarafaction that the property rights in the transferee will increase the Mikelihood that the benefits of the inventwo would be made readily available to the public at an early date

The valver reculent complies with any other terms and conditions called for

by the Administrator with respect to the grant of the petition.

(e) With respect to any particular invention, each waiver granted shall be voldable at the option of the Administrator if a patent claiming such invention is held in a final determination, to have been used in violation of the antitrust laws in Pay suit, action, or proceeding brought before a properly constituted authority authorized to hear such mat

ter.

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

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

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

(3) The waiver recipient executes and furnishes to the Chairman instruments fully confirmatory of the rights herein reserved by the Government; and

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

#1245.110 Content of petition.

(a) General contents and forma Forms which may be used in petitioning for waiver and for aling utilisation reports are available from the NASA Inventions and Contributions Board, National Aeronautics and 3pact Administration, Washington, D.C. 20548. Each request for waiver of domestic or foreign rights under 1245.104, 1945.105, or #1245.106 shall be by petition to the Administrator and shall include:

(1) An identification of the petitioner, its place of business and address, and the petitioner is represented by counsel. the name, address, and telephone num ber of the counsel:

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

posed contract;

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

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

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

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

(2) A full and detailed statement of facts sumcient to enable the Board to make the findings regarding the contract and the petitioner as specified in § 1245.104 and, if applicable, whether excEDtional circumstances of 1245.104(b) and/or special situations under § 1245.104(d) (2) are present; and

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

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

(1) The full names of all inventors; (2) A statment whether a patent application has been filed on the invention. together with a copy of such application if filed, or, if not filed, a complete description of the invention:

(3) If a patent application has not been filled, any information which may indicate a potential statutory bar to the filing of a patent application under 35 US.C. 102 or a statement that no bar

is known to petitioner to exist:

(4) A full and detailed statement of facts sumcient to enable the Board to make the findings regarding the invention as specified in § 1245.105 (b) or (c);

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

(6) Where the petitioner(s) is the inventor(s), a statement in writing from the contractor that the contractor will net request waiver of rights and authorisation of the contractor.

(d) Petitions for waiver of foreign rights under 1245.106. A petition for Waiver of foreign rights may accompany and be a part of a petition for waiver of domestic rights under either § 1345.104 or I 1245.105, or a petition for foreign rights may be submitted independently of any request for domestic rights under 1245.106(b). In addition to the information specified in paragraph (a) of this section petition for waiver of foreign rights shall include, where feasible, a denomination of the foreign countries in which petitioner elects to secure or intends to file patent applications, and its plans and intentions to practice and/or license the invention in such countries.

(e) Petitions for waiver under i 1945.103(e) Contents of the petition shall normally be as prescribed by the other Government agency, and petitioner may use any forms provided by such agency

#1245.111 Submission of petitions.

(a) Petitions for advance waiver of domestic rights under 1245.104 or ndvance waiver of foreign rights under #1245.106 presented prior to contract execution must be submitted to the contracting oficer. Any such petitions submitted by organizations selected for negotiation of a contract will be processed and forwarded to the Board for consideration as specified in the NASA Procurement Regulations (41 CFR 18-9.1096(e)). All other petitions shall be submitted directly to the Inventions and Contributions Board, National nautics and Space Administration. Washington, DC. 20546.

Aero

(b) Any waiver petitions submitted under 1245.103 (c) should be forwarded to the NASA field installation patent counsel for transmittal to DOE for processing.

1245.112 Notice of proposed Board action and reconsideration.

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

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

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

(ii) Denied.

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

(b) Request for reconsideration and statements required.

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

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

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

(4) The Board, after its reconsideration, will promptly notify the petitioner of its proposed recommendation to the Administrator. If the Board's proposed action is adverse to, or different from, the waiver requested, the petitioner may request an oral hearing within such time as the Board has set.

§ 1245.113 Hearing procedure.

(a) If the petitioner requests an oral hearing within the time set, pursuant

to 1245.112(b) (4), the Board shall set the time and place for such hearing and ahall so notify the petitioner.

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

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

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

1245.114 Findings and recommendations of the Board.

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

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

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

§ 1245.115 Action by the Administrator. (a) After receiving the transmittal from the Board, the Administrator shall determine, in accordance with 1245.103, whether or not to grant any waiver of rights to the petitioner. A waiver pursuant to 1245.104(b) (2) will be granted only when the Board so recommends.

(b) In the event of denial of the petition by the Administrator, a written notice of such denial will be promptly transmitted by the Board to the peti

tioner. The written notice will be accompanied with a statement of the grounds for denial

(c) If the waiver is granted by the Administrator, the petitioner shall be sent an original and one copy of an instrument of waiver confirmatory of the conditions and reservations of the waiver grant for his execution. The petitioner shall return the executed copy to the Chairman within 30 days from the grant of waiver Failure to return such copy within the prescribed time may result in revocation of the waiver of rights granted. Before such action is taken, notice shall be given to petitioner so that it may show cause before the Board why the waiver should not be revoked. § 1245.116 Filing of patent applications and reimbursement of costs.

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

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

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

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

§ 1245.17 Publication and record of decisions.

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

Effective Date: The provisions of this subpart shall be effective on November 3. 1977, and supersede the NASA Patent Waiver Regulations of August 30, 1972 (37 FR 17547-17551) as of that date, except that (a) any petition pending on the effective date will be considered under the latter regulations unless consideration under the revised regulations is specifically requested by the petitioner, and (b) any petition received on or before December 5, 1977, may be considered under the latter regulations if specifically requested by the petitioner at the time of submission. All petitions received on or after December 5, 1977, will be considered under the new revised Patent Waiver Regulations.

ROBERT A. FROSCH,
Administrator.

[FR Doc.77-31792 Filed 11-2-77;8:45 am

70

APPENDIX C

NATIONAL AERONAUTICS AND SPACE ADMINISTRATION, Washington, D.C., August 18, 1978. Memorandum to: Chairman and Members, Inventions and Contributions Board. From: NB-9/Chief, Waiver Branch, Inventions and Contributions Board. Subject: 1978 Summary Report on the Development and Utilization Activity of Waived Inventions.

The staff of the Inventions and Contributions Board (ICB) has made it a practice to monitor the recipients of waiver annually as to their efforts to develop, utilize, and commercialize their waived inventions. The waiver of property rights to inventions made under NASA contracts is effected primarily to further their development into commercially useful products as early as possible. This monitoring effort serves to follow the progress made by the waiver recipients in their commercialization efforts.

On April 14, 1978 the ICB made a request of waiver recipients of selected inventions that they complete a Patent Waiver Report questionnaire (NASA Form 1393, copy attached) and return it to the Board. A cover letter explained our need for such information; the staff partially completed the questionnaire so as to identify the invention. We asked that the questionnaires be returned to the Inventions and Contributions Board by May 15, 1978. A follow-up letter was sent to those who had not responded by that date.

Patent Waiver Reports were requested for 121 waived inventions. The inventions were selected from the waiver portfolio of approximately 800 waived inventions. The selection was based on: (a) earlier reports (100 inventions) which indicated a probability of use in 1977-1978 and, (b) inventions waived in the last six months of 1977 including inventions for which a report was requested last year but never received (21 inventions).

To date, waiver reports have been received for 102 inventions, an 84 percent response. 19 waiver reports or 16 percent of those requested have not been received although several waiverees have indicated that their reports are forthcoming (for 12 inventions). As regards the 100 inventions in selection Group (a), above, for which there was indicated a probability of use in 1977-1978, 83 reports have been received, an 83 percent response. As for the 21 inventions of Group (b), 19 reports have been received, a 90 percent response.

By analyzing the responses to the questions in the Patent Waiver questionnaire, the status of the inventions can be determined. The inventions appear to fall into four distinct classes: (1) inventions which are used in a commercial product, process, or service, (2) inventions which are undergoing further development efforts, (3) inventions for which only licensing efforts are being made and, (4) inventions for which no further development effort is planned next year.

As regards the inventions of Class (1), above, first commercial use was reported for 2 inventions. Continued commercial use was reported for 5 additional inventions which had been first placed on the market last year or where commericalization efforts were just getting underway when last reported to NASA. The commercialization activity for these inventions is set out in an Appendix to this summary report. As reported Class (2) inventions, further technical development efforts are continuing or expected during the next year for 39 of the inventions. Six of these inventions have been licensed and the licensees plan to carry on further development.

Licensing efforts only are reported for 34 Class (3) inventions. 27 of these inventions were waived to universities or nonprofit organizations such as CALTECH, MIT, SRI, and IITRI. The remainder of the inventions are offered for licensing inasmuch as the waiver recipients cannot find use for the items in their own companies.

No further development is planned during next year for 22 Class (4) inventions. The reason given for the lack of interest in these inventions were: discontinued development of systems which could use the device, not salable in a product line, no commerical need, low priority, limited resources, market not identified, non-competitive market approach, better way of doing it, alternative concepts are satisfactory, and difficult to enforce patent rights. The waiver recipients for 9 of these inventions have elected to have their waivers voided. Appropriate action is being taken to void these waivers; after the waviers are voided, the inventions will be available for licensing under NASA's licensing program.

The above statistics are consolidated in the table, attached.

For the 73 inventions reported in Classes (2) and (3), the probability of use (expressed as a percentage) and the year that use is likely to occur may best be seen from the following chart.

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As seen, for 53 inventions or approximately 73 percent of the inventions which are undergoing development and licensing efforts, there is a probability of commercial use within 3 years. Of these 53 inventions there is a 50 percent chance or better that 27 inventions will be commercialized within 3 years.

J. LABOW.

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Percent response (percent)..

121

15

102

84

Types of inventions surveyed:

Previous indication of probability of use in 1977-78:..

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Newly waived inventions:

Reports requested..

Reports received

Percent response

Nonresponsive to 1977 request:

Reports requested.

Reports received

Percent response

Status of surveyed inventions and number of inventions:
Utilized/commercialized (first use-2 inventions)

Development efforts continuing..

Licensing/promotion only.

No further development expected

Total number of active inventions (through 1977)

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Total number of inventions voided......

258

Total number of inventions utilized/commercialized (18.5 percent)...

193

1 Waiver not voided.

APPENDIX

Title of Invention: Multiple Crystal Oscillator Measuring Apparatus.
Waiver Recipient: California Institute of Technology.

Waiver Number: W-1287.

Waiver Granted: March, 1971.

The invention is licensed to the California Measurements of Sierra Madre, California. It was first commercially used in July 1978. Over $100,000 has been spent to develop the invention to commercial status; 60 percent of this amount was spent on technical development, 15 percent for production facilities, and 25 percent for marketing and sales promotion. A product information sheet was submitted disclosing the information below.

Aerosol researchers can now use a Pierzoelectric Particle Cascade (PPC) instrument to make direct mass measurements of aerosol particles in real-time over a wide size distribution range of 0.05 to 25 micrometers. This well-designed laboratory and field instrument has a ten-stage cascade impactor with inertial impactor nozzles for size discrimination and utilizes piezoelectric quartz crystals for “active” impaction plates.

By using quartz crystals impactors, the PPC instrument measures the mass of aerosol samples directly and rapidly. As sample particulates impact on an adhesive coated crystal their mass changes the resonant frequency of the crystal. The frequency change of the crystal controlled oscillator is therefore a direct indication of the mass collected. By monitoring the frequency changes of each of the ten cascade stages, information on mass concentation and size distribution of the aerosol sample can be obtained directly for scanning electron microscope (SEM) or X-ray analysis without having to be removed from the crystals.

The wide dynamic range of the PPC is unsurpassed by other types of aerosol measuring instruments. Optical instruments only cover a range of about one decade, from a few tenths to a few micrometers. Time-of-flight electrostatic charge instruments are capable of detecting particle sizes of one micrometer or less. Moreover, the PPC can be operated over a wide range of particle concentrations, from 10μg/ m3, without dilution.

The California Measurements PPC is a high-quality self-contained instrument, complete with sample air pump (providing a flow rate of 240 M1/min.), flowmeter, crystal reconditioning oscillator, and data processing electronics. A number_of models are available to meet the various needs of the aerosol researcher. The models differ only in the optional built-in data disply equipment required by the user. The basic price range is between $8,600 and $12,000.

The California Measurement PPC is suitable for power plant emission studies, aerial sampling of atmospheric particles, biomedical research, soil erosion studies, and various other pollution monitoring applications.

Title of Invention: Energy Absorbing Arrangement.

Waiver Recipient: ARA, Inc.

Waiver Number: W-1345, W-295.

Waiver Granted: October, 1971.

First commercial use of the invention is reported to have occurred in March 1978. Application of the invention was directed towards a crash survivable passenger seat for helicopters. Seats were manufactured and tested, as well as sold, in the earlier part of the year. The Waiver Recipient believes that production orders for large quantities are imminent. ARA, Inc. plans to continue to exploit the U.S. commercial helicopter and foreign markets for sales of the energy absorber.

The invention is used in conjunction with an earlier waived invention entitled, "Energy Absorbing Device." The earlier invention (W-295) was waived in August 1965. ARA, Inc. reports that it has incurred from $150,000 to $200,000 to develop the devices. Of this amount, 75 percent was spent for technical development, 15 percent for production faciltities, and 10 percent for marketing and sales promotion. The benefits realized from the use of the inventions include reduced product liability insurance costs for helicopter manufacturers by providing safer and better seats. Title of Invention: Tunable Acousto-Optic Method and Apparatus. Waiver Recipient: Hewlett-Packard Company.

Waiver Number: W-1085.

Waiver Granted: February, 1970.

Since the last waiver report to NASA in 1976, approximately 100 man-months have been applied to the development of apparatuses which utilize the invention, and approximately 1,000 man-months have also been applied to the development of equipment which, although not directly related to the invention, may be useful in extending the potential of the invention. The invention is licensed to Isomet Corporation; two other companies have also expressed an interest in obtaining licenses. Isomet's major products are delay lines, acousto-optic devices (including Q-switches, frequency translators, light beam modulators, light deflectors, and acousticallytunable optical filters), and associated electronics.

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