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4. If the answer to question is "No," what effort has been made toward further development, promotion, and

cominciculation of the invention in the past year, or uince your last repori?

a. Indiase whai effort is expected during the next year.

d. If no further effort is expected, explain why.

S. What benefits have been realized, or are expected, from the use of this invention (Cost reductions, items sold, domestic

ow foreign sales in dollars, etc., stare also any intangible benefits)

6. What private funded costs (Actual or estimated) have been incurred in an effort to date to evaluate and develop this

invention to commercial status (Express in dollars, if possible, otherwise, figures such as man-hours expended will be helpjull

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b. If the invention is not in commercial use, please give an estimate of the anticipated future costs of development and

commercialization.

7. On separate sheet list by number, date and country, any patent applications, of issued patents on the subject invention

that have not yet been reported to NASA. AETURN REPORT TO:

FROM (Name and addrem)
National Aeronautics and Space Administration
Inventions and Contributions Board
Washington, D.C. 20546

RESPONDENT'S NAME, TITLE AND TELEPHONE NO.

SIGNATURE OF NESPONDENT

DATE

NASA FORM 1223 MAR 14 PREVIOUS EDITION IS DISOLETE.

PAGE 2 OF 2 AGE: APPENDIX D

NASA waiver statistics1959 through 1978 Individual waivers: 1. Number of inventions reported by NASA contractors ..............

... 31,357 2. Petitions for waiver requested................

1,366 3. Waivers granted ........

1,035 4. Petitions denied ....

148 5. Peititons withdrawn ...

139 6. Petitions pending Advance waivers: 1. Advance waivers requested.

906 2. Advance waivers granted ....

463 3. Advance waivers denied .........

293 4. Requests withdrawn ... 5. Requests pending .....................

6. Number of inventions reported under contracts having advance waivers and contractor intends to file..

216

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Appendix E

NATIONAL AERONAUTICS AND SPACE ADMINISTRATION

WASHINGTON, D. C. 20546

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52-476 0 - 80 - 6

Title 14-AERONAUTICS AND

SPACE

the patent and for which an exclusive be by exprers written instrun.2:1!. NO license is not in force, or

license shall be granted either CX(2) The public interest would be pressly or by implication, for a NASA In. scrved by the cxpeditious granting of a vention except 25 provided for in nonexclusive license for practice of the &$ 1245.203 and 1245.204 and 11 any invention by the public.

existing or future treaty or ari nient
Chapter V-National Aeronautics and (c) Thic "Administrator" means the between the United States and any
Space Administration
Administrittor of the National Acronau-

forcin government.
tics nnd Space Administration, or his
PART 1245-PATENTS

(c) Liccnscs for inventions covered
deslunce.
(1) "Goverimcnt" means the Govern-

by NASA-Owicd forcin pnt. 1.; and Subpont 2-Patent Licensing micnt of the United States of America.

patent applications shall be !2rd in Regulations (6) The "Inventions and Contribu

accordance with the NASA Torrisin I bpart 2 is revised in its entirety

tions Board" incans the NASA Inven- Patent Licensing Region. as illows:

tions and Contributions Board estab-
lished by the Administrator of NASA 9

$ 1215.203 Licenses for practical appli. within the Administration in accordance

cation of inventions, 1345200 Scope of subpart. ::.. Dennitions.

with section 305 o! the National Aero. (a) Gcncral. As an incentive to cn. .....02 Basic considerations.

nautics and Space Act of 1958 as courare practical application of inten. 12 203 Licenses for practical application anicnded (42 U.S.C. 2457).

tions, licenscs will be granted to responsiof inventions.

$ 1215.202 1245.204 Other licenses.

ble applicants according to thc circum

Basic considerations. 1245 205 Publicntion of NASA inventions

stances and conditions set forth in thuis (n) Much of the new technology section. Avalable for license. 1245 206 Applicawon for nonexclusive 11

resulting from NASA sponsored re- (b) Nonciclusive licenses. (1) Each in.

scarch and developnicnt in acronautical vention will be made available to recense. 1245.207 Anplication for exclusive license and space activities has application in sponsible applicants for nonexclusive, 12 15 208 Processing applications for license. other ficids. NASA las special author- revocable licensing in accordance with 125209 Royalties and foes.

ity and responsibility under the Na- $ 1245.20, consistent with the provisions 1245 210 Reports. 12445 211 Revocation of licenses.

tional Acronautics and Space Act of of any existing cxclusive license. 1245 212 Appeals

1958, as amended (42 U.S.C. 2451), to (2) The duration of the license shall 1245 213 Litigation.

provide for the widest practical dis- be for a period as sp cified in the license. 1245 214 Address of communications.

scmination and utilization of this new (3) The liccnsc iall require thellAU. HORITY: The provisions of this Subpart

technology. In addition, NASA has been censce to achieve the practical applica2 Issued under 12 U.S.C. 2457, 2173 (b) (3). riven unique requirements to protect tion of the invention and to the practice

the inventions resulting from NASA the invention for the duration of the $ 1245.200 Scope of subpart.

activities and to promulgate licensing license. This Subpart 2 prescribes the terms. regulations to encourage commercial

(4) The license may be cranted for all onditions, and procedures for licensing use of these inventions.

or less than all fields of use of the in..:(110n1s corried by U.S. patents and

(b) NASA-owned Inventions will best vention and throughout the United patent applications for which the Ad

serve the interests of the United States Statcs of America, its territories and posministrator of the National Acronautics

when they are brought to practical ap- sessions, Puerto Rico, and the District of

plication in the shortest time possible. Columbia, or in any lesser gostaphic and Space Administration holds title on

Although NASA encourages the non- porno belinll of the Uruted States.

exclusive licensing of its inventions to (5) The license shall extend to the $121.3.201 Delinitions.

promote competition and achieve their subsidiaries and aniliates of the licensee widest possible utilization, the com

and shall be nonassignablc without apFir the purpose of this subpart, the mercial development of certain in- prova

proval of the Administrator, NASA, exlo! or in dctinitions apply: ventions calls for a substantial capital

copt to the successor of that part of the 111111ction" incans an intention

Investment which private manufac- "

on licensee's business to which the invention Corynd by a US patent or patent appllturers may be unwilling to risk under per

pertains. cation for which the Administrator of nonexclusive license. It is the policy (c) Short-form noncoclusive licer.ses NASA holds title on behall of the United of NASA to scck exclusive licensees A nonexclusive, revocabie license 10. a States and which is designated by the whicn such liccnscs will provide the special invention, as derined in i 1245.201 Administration as appropriate for the necessary incentive to the licensce to (d), shall be granted upon written rekrant of license(s) in accordance with

ordance with achieve 'carly practical application of qucst, to any applicant by the Patent

achieve carly practical application of quest, this subpart. the invention.

Counsel of the NASA installation havin! (b) "To practice an invention" means (c) The Administrator, in determin

cognizance of the invention. to make or have made, use or have used, Ing whether to grant an exclusive li.

(d) Esclusive licenses. (1) A limited sell or have sold, or otherwise dispose of cense, will evaluate all relevant infor

cxclusive license may be granted on an nccording to law any machine, article of mation submitted by applicants and

invention available for such licensing inanufacture or composition of matter all other persons and will consider the

provided that: physically embodying the invention, or necessity for further technical and

(1) The Administrator has determined 10 use or hare used the process or method market development of the invention,

that: (a) The invention has not bcen comprising the invention. the capabilities of prospective licenses,

brought to practical application by a (c) "Practical application" means the their proposed plans to undertake the

nonexclusive licensee in the fields of use manufacture in the case of a composition required investment and development,

or in the geographical locations covered or inatter or product. the use in the case the impact on competitors. and the by the application for the exclusive llof a process, or the operation in the case benefits of the license to the Govern

conse, (b) practical application of the inof a machinc, under such conditions as ment and to the public. Preference for

vention in the fields of use or ecographito establish that the invention is being exclusive license shall be given to U.S.

us cal locations covered by the application utilised and that its benefits are reason- citizens or companies who intend to

for the exclusive license is not likely to ably accessible to the public. manufacture or use, in the case of a

be achicved expeditiously by the further (d) "Special invention" ineans any in process, the invention in the United

funding of the invention by the Governvention designated by thic NASA Assist- States of America, its territories and

ment or under a nonexclusive license re. riit General Counsel for Patent Matters possessions. Consideration may also be

quested by any applicant pursuant to to be subject to short-form licensing gi on to assistinr, sirall businesses and

these regulations, and (c) the exclusive procedures. An invention may be desis- minorit: tusiness enterprises, as well

license will provide the necessary incennated as a special invention when a de- as cconoinically depressed, low income tive to the license to achieve the practitermination is made that: and labor surplus arcas.

cai applicatior. of the invention; and (1) Practical application has occur:o1 (d) All licenses for inventions shall (it) Either a notice pursuant to .nd is likely to continue for the life of

rico indicate ane

$145.03 in the Invention as avall. hereby granted to the contractor report. (7) A statement that contains thr

lile lur kent has been published in ing an invention made in the perform applicant's best knowledric of the extent 11, 11AL. TUGIX for it lorst 9 Quico of work under a contrnet of NASA to which the invention is being practiced I nte: er 1.1tent cover the in- in the manner spocined 11 section 305 (R)

by private industry and the Governmen! diftant to be tasued for at least 6 (1) or (2) of the National Acrotinutics

(8) A des ruption of applicant's capaIisal:.. Iloneitr, a limited exclusive 11

and Space Act of 1958 as amended (42

U.S.C. 2457(a) (1) or (2)). & revocable.bility and plan to undertake the develcent: my le tiranted prior to the periods

nonexclusive, royalty-free license for tho opinent and m'll ketins required to Suchd above lithic Administrator de

practice of such invention, together with achieve the practical application of the tenues that the public interest will best tho right to grant sublicenses of the same invention, including the geographical be seried by thic carlicr grant of an ex scope to the extent the contractor was

location where the applicant plans to clusive license.

legally obligated to do so at the time the 9) The license may be granted for

contract was awarded. Such license and manufacture or use, in the case of a all or less than 311 ncids of use of the

right is nontransferable cxccpt to the process, the invention, and

successor of that part of the contractor's (3) A statement indicatiur the miniarntion, and throughout 'he United

business to which the invention pertains mun term of ycnrs the applicant desires States of Aincrica. Its territories and

(b) Miscellancous licenses. Subject to to be licensed. ' lons, Puerto Rico, and the District

any outstanding licenses, nothing in this Columbia or in any lesser geographic

(c) Contents of an application for a subpart 2 chall preclude the Administraxort.n thereof.

short-form nonruclusive license. An aptor from granting other licenses for In 13: TI:c crclusive period of the license

ventions, when he determines that do so

ermines that do so plication for a hort-form noncxclusive 5. he negotiated, but shall be for less

us license under $ 1245.203(c) for a special in the termin:1 portion of the patent.

would provide for an equitable distribuund sul tr related to the period necestion of rights. The following exemplify invention shall include:

(1) Identification of Invention for w to proside a reasonable Incentive circumstances wherein such licenses may

which license is desired, including the tu

be granted: esi thir nccessary risk capital.

NASA patent case number, patent ap11) The license shall require the U. (1) In consideration of the settlement

plication serial number or patent numcence to practice the invention within a of an interference;

ber, title and date, is known; Xriel spy cifird in the license and then (2) In consideration of a release of a

(2) Name and address of company or wo : hicre practical application of the claim of infringement; or

organization applying for license; and 111e1110n.

(3) In exchange for or as part of the ... 'The Jense shall require the llo

(3) Name and address of representaconsideration for a license under ad

tive of applicant to whom correspondence Hisce to expend a specifed minimum ver

versely held patent(s). 4.7 of moncurd'or to take other speci

should be sent. is with indicated period(s) 5 1215.205 Publication of NASA inven. 8 1215.207 Annlieutian Ir the elective date of the license,

tions available for license.

license. ::: citot to achieve practical appl (2) A notice will be pcrodically pub (a) Submission of application. An apmill the invention.

lished in the FEDERAL REGISTER listing in- plication for exclusive license under 161 The liccn15c shall be subject to at

ventions available for licensing. Abstracts $ 1245.203(d) may be submitted to NASA 1: 1 5 :0alle royalty-free right of

of the inventions will also be published at any time. An application for exclusive ile Goinnicnt of the United States to

in the NASA Scientific and Technical license shall be addressed to the NASA ; .1ctice and have practiced the inven. !..) throit.bout the world by or on be

Acrospace Reports (STAR) and other Assistant General Counsel for Patent

NASA publications. huil of the Government of the United

Matters. 1

ib) Copies of pending patent applica. (b) Contents of an application for eiStates and on behalf of any foreign Bolmont pursuant to any existing or

tions for inventions abstracted in STAR clusive license. In addition to the require

may be purchased from the National mcnts set forth in s 1245.206(b), the apTutun ficaty or agreemerct with the

Technical Information Service, Spring- plication for an exclusive license shall United Sites.

field, Va. 22151.

include: 17. The license may reserve to the administrator, NASA, under the follow. $ 1245.206

(1) Applicant's status, if any, in any

Application for nonexclusive 11

one or more of the following categories:

license. circumstances, the right to require

(i) Small business firm: the frantini: of a sublicense to responsi

(a) Submission of application. An ap

(it) Minority business enterprise: ble a licant(s) on terms that are con- plication for nonexclusive license under

(iii) Location in a surplus labor area: c!ered reasonable by the Administrator. $ 1245.203(b) or & short-form nonexclu

(iv) Location in a low-income urban tikini: into consideration the current rent sive license for special inventions under

area, and Toate ritt is licer similar patents and $ 1245.203(c) shall be addressed to the

(v) Location in an area designed by O!... pertinent facts: (1) To the extent NASA Patent Counsel of the NASA in

the Government as economically destallation having cognizance over the 1:1:1 the vention is required for pubuc

pressed NASA Invention for which a license is !! Gorenrent regulation, or (11) as

(2) A statement indicating the time, 13 Le neccssary to fumi bealth or eral Counsel for Patent Matters

cxpenditure, and other acts which the

applicant considers necessary to achieve safety needs, or (10) for other purposes

practical application of the invention, stipulated in the license.

nonerclusive license. An application for .

and the applicant's offer to invest that (8) The license shall be nontransfer. nonexclusive license under $ 1245.203(b)

sum and to perform such acts if the nble cxccpt to the successor of that part shall include: of the licensee's business to which the (1) Identification of invention for license is granted: invention pertains.

which license is desired, including the (3) A statement whether the appli191 Subject to the approval of the NASA patent case number, patent appli- cant would be willing to accept a license Administrator, the Ucensee may grant cation serial number of patent number for all or loss than all fields of use of the sublicenses under the Ucense. Each sub title and date, if known;

invention throughout the United States license Cranted by an exclusive licensee (2) Name and address of the person of America, its territories and possesshall make reference to and shall pro- company or organization applying for sions, Puerto Rico, and the District of vide that thic sublicense is subject to the license and whether the applicant is a Columbia, or in any lesser geographic terms of the exclusive license including U.S. citizen or a U.S. corporation;

portion thereof. the rights retained by the Government (3) Name and address of representa- (4) A statement indicating the amount muder the exclusive license. A copy of tive of applicant to whom correspond- of royalty fees or other consideration, 11 cich:ublicense shall be furnished to the epce should be sent;

any, the applicant would be willing to Administrator.

(4) Nature and type of applicant's (10)) The license may be subject to business:

pay the Government for the exclusive such other reservations as may be in the

license; and

(5) Number of employees; public interest.

(5) Any other facts which the appli(6) Purpose for which license is

cant believes to show it to be in the inter$ 1215.204 Other licenses. desired;

ests of the United States of America for (a) License to contractor. There is

the Administrator to grant an exclusive ilcense rather than a lonexclusive 11

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