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tially recorm of ed

cense and that such an exclusive license any of the following together with sub- time shall default in making any report should be granted to the applicant. porting documentation:

required by the license, or shall make any

(1) A statement from any person $ 1243.20R Processing applications for

false report, or shall commit any breach licens.

setting forth reasons why it would not

be in the best interest of the United i Of Any Covenant or agreement therein (a) Initial review. Applications for states to grant the proposed exclusive

lucontained, and shall fail to remedy any nonexclusive and exclusive licenses un license; or

such default, false report, or breach der $$ 1243.206 and 1245.207 will be re- (11) An application for & nonexclusive within 30 days a vicwed by the Patcnt Counsel of the

the license under such invention, in accord the patent is deemed unenforceable NASA installation having cognizance for

15 cognizance for ance with $ 1245.206(b), in which appli- either by the Attorney General or a final the invention and the NASA Assistant cant states that he has already brought decision of a U.S. court. Gencral Counsel for Patent Matters, to or is likely to bring the invention to prac- (b) Any license granted pursuant to detcrniine the conformity and appro- tioni application within a reasonable ! 1245.204(a) may be revoked, either in priateness of thc application for license period.

part or in its entirety, by the Adminisand the availability of the specific invention for thic license requested. The

The Inventions and Contributions Board trator if in his opinion such revocation is Assistant General Counsel for Patent

shall, upon receipt of a written request necessary to achieve the earliest practiMatters roll forward all applications for

within the 30 days' notice period, grant cal application of the invention pursuant licrusc conforming to $$ 1245.206b) and

an extension of 30 days for the submis- to an application for exclusive license 1245,207(b) to the NASA Inventions and

sion of the documents designated above. submitted in accordance with $ 1245.207, Contributions Board when the invention

(2) Recommendation of Inventions or the licensee at any time shall brcach 1:1 availablc for consideration of the re

and Contributions Board. Upon the ex- any covenant or agreement contained in qucsted license. Prior to forwarding ap- piration of the period required by sub- the license, and shall fail to remedy any plications for exclusive licenses to the paragraph (1) of this paragraph, the such breach within 30 days after written Diventions and Contributions Board, no- Board shall review all written responses notice thereof. Lice in writinr: will be given to each to the notice and shall then recommend (c) Before revoking any license nonexclusive licensee for the specinc in to the Administrator whether to grant granted pursuant to this Subpart 2 101 vention advising of the receipt of the the exclusive license as the Board ini- any cause, there will be furnished to the application for the exclusive license and

tially recommended or whether & dir. Ucensee & written notice of intention to providing each nonexclusive licensee

form of license any should revoke the license, and the licensee will with a 30-day period for submitting instead be granted.

be allowed 30 days after such notice in either evidence that practical application of the invention has occurred or is about

(3) Grant of exclusive licenses. The which to appeal and request a hearing Administrator shall review the Board's

me before the Inventions and Contributions to occur or, an application for an exclurecommendation and shall determine if

Board on the question of revocation. sive license for the invention.

the interest of the United States would

es would After a hearing, the Inventions and Con(b) Recommendations of Inventions best be served by the grant of an ex

tributions Board shall transmit to the and Contributions Board. The Inven- clusive license as recommended by the

Administrator the record of proceedings, tions and Contributions Board shall, in Board. If the Administrator determines

nae its findings of fact, and its recommendaaccordance with the basic considerations to grant the exclusive license, the license

tion whether the Ucense should be reset forth in $$ 1245.202 and 1245.203, will be granted upon the negotiation of

voked either in part or in its entirety. evaluate all applications for license for the appropriate terms and conditions by

The Administrator shall review the recwarded by the Assistant General Counsel the once of General Counsel.

ommendation of the Board and deterfor Patent Mattis. Based upon the facts

mine whether to revoke the license in presented to the Inventions and Contri- 1245.209 Royaltics and fces.

part or in its entirety. Revocation of a butions Board in the application and

(a) Normally, a nonexclusive Ucense"

nee license shall include revocation of all any other facts in its possession, the Inventions and Contributions Board shall

for the practical application of an in- buoucenses which have been granted.

vention granted to & U.S. citizen or $ 1245.212 Appcds. recoinmord to the Ad:ninistrator: (1)

company will not require the payment of Whcther a nonexclusive or exclusive rovalties: however, NASA may require

Any person desiring to file an appeal license should be cranted, (2) the iden- other consideration.

pursuant to $ 1245.211(c) shall address tity of the licensee, and (3) any special

the appeal to Chairman, Inventions and (b) An exclusive license for an inven

Contributions Board. Any person nling terms or conditions of the license. tion may require the payment of royal

an appeal shall be afforded an oppor(C) Determination of Administrator tles, fces or other consideration when the

tunity to be heard before the Invenand grant of nuncrclusive licenses. The licensing circumstances and the basic

tions and Contributions Board, and to Administrator shall rcvicw the recom- considerations in $ 1245.202, considered

offer evidence in support of his appcal. monditions of thc Inventions and Con- together, indicate that it is in the public

The procedures to bc followed in any such tributions Board and shall dctcrminc interest to do so.

matter shall be determined by the Adwicther to grant the nonexclusive 11- &1245.210 Reports.

ministrator. The Board shall make findcense as recommended by the Board. I

A license shall require the Ucensee to

Ings of fact and recommendations with the Administrator determines to grant submit periodic reports of his efforts to

respect to disposition of the appeal. The the license, the license will be granted work the invention. The reports shall

decision on the appeal shall be made by upon the negotiation of the appropriate contain information within his knowl

the Administrator, and such decision terms and conditions of the Once of edge, or which he may acquire under

shall be final and conclusive, except on General Counsel. normal business practice, pertaining to

questions of law, unless determined by a (d) Determination of Administrator the commercial use that is being made

court of competent jurisdiction to have and grant of exclusive licenscs-(1) of the invention and such other infor

been fraudulent, or capricious, or arbitNotice. If the Administrator determines ination which thc Administrator may de

rary, or so grossly erroneous as nece3that the best interest of the United States termine pertinent to the Ucensing pro

sarily to imply bad faith, or not supwill be served by the granting of an ex- gram and which is specified in the

ported by substantial evidence. clusive license in accordance with the license.

& 1245.213 Litigation. basic cor.siderations set forth in $ $ 1245.202 and 1245.203, a notice shall 91413 $ 1245.211 Revocation of licenses.

An exclusive licensee shall be granted bo published in the FEDERAL REGISTER (a) Any license granted pursuant to

the right to suc at his own expense any announcing the intent to grant the ex- $ 1245.203 may be revoked, either in part

party who infringes the rights set forth clusive license, the identification of the or in its cntirety, by the Administrator

In his license and covered by the licensed Invention, special terms or conditions of 11 in his opinion the licensee at any time

patent. The licensee may join the Govthe proposed license, and a statement shall fail to use adequate efforts to bring

ernment, upon consent of the Attorney that NASA will grant the exclusive ll to or achieve practical application of the

General, as a party complainant in such cense unless within 30 days of the publi- invention in accordance with the terms

sult, but without expense to the Govcation of such notice the Inventions and of the license, or if the licensee at any

ernment and the licensce shall pay costs Contributions Board receives in writing

and any final judgment or decrce that may be rendered against the Government in such sult. The Government shall records pertaining to such suit. 1, a. addressed to the Assistant Oeneral Counalso have an absoluto right to Intervenc result of any such litigation, the patent sel for Patent Matters, Code GP, NaIn any such suit at its own expense. The shall be declared Invalid, the licensee tional Aeronautics and Space Adminislicensee shall be obligated to promptly shall have the right to surrender his 11- tration, Washington, D.C. 20546. furnish to the Government, upon re. cense and be relieved from any further (b) Communications to the Invenqucst, copies of all plendings and other obligation thereunder.

tions and Contributions Board in accordor evi & 1245.214 Address of communicatione ance with 99 1245.208, 1245.211, anc dence adduced in proceedings relating to

1245.212 should be addressed to Chairthe licensed patent including, but not i

(a) Communications to the Assistant

man, Inventions and Contributions Umited to negotiations for settlement General Counsel for Patent Matters in Board. National Aeronautics and Space and agreeincnts settling claims by all accordance with 145.206 and 1245.207 Adininistration. Washington, D.C. 20546. consce based on the licensed patent, and and requests for information concerning all other books, documents, papers, and he pers and licenses for NASA inventions should be

Efective date. The regulations set forth in this subpart 2 are effective April 1, 1972.

JAMES C. FLETCHER,

Administrator.

licenseguests for info 15:208 and 1245:207 Board, Maxentions andres

Appendix F

NATIONAL AERONAUTICS AND SPACE ADMINISTRATION

WASHINGTON, D. C. 20546

FOREIGN PATENT LICENSING REGULATIONS

EXCERPTS FROM PAGES 10958 & 10959

FEDERAL
REGISTER

VOLUME 31 - NUMBER 160
Thursday, August 18, 1966 · Washington, D.C.

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INU.40 loop al subpart. IX.401 Taloy. 1948.402 Types of licensen and terms and

conditions. IM3.403 Government license. IX6.404 Enforcement of patent right. 1945.400 Prcedure.

AUTHORIT: The provisions of wala dubpart 4 lowed weder u U.S.C. 267 (c) and (n). 1 1845. Saepe of medpan.

(a) The subpart estabnahes the policy. terms, conditions, and procedure under which NASA-owned lorelgn patents and patent applications my be Uceniod.

(b) The provisions of this subpart appl to U NABA-owned parents fantod la countries other than the Unik sules and to NAGA-Owned patent applications pending in such countries and supplewant the provisions of Subpart 3 of this part for foreign patent licensing. i 1945.401 Policy.

The foreign Hoensing prognm of the National Aeronautics and Space Admin. istration serves to promote and utilize Ioram pateat nights vestod in the Administration. The objoculves of this proxnn wo w further ine miterials of Daltod towns industry in foreign com. morce, to enhance the coworo baterests of the United States, and to advanco the international relationships of the United states | 1845.403 Types of licenses word inemas

and conditions Licenses will be individually prodlated and may be aminted to any approant, foreign or domestic, on a nonexclusive or exclusive bands for royalties or other considerations and on mah other terms and conditions as are descend wpropriate to the Interests of the United Statal Preference in the mapting of foreign licenne stehts will be shown to thone applicants who have prenove been mrated a license under the corresponding U.B. patent or patent application.

( 1245.403 Government license.

There will be reserved from each exclusive license an irrevocable, nonexclu. Hvo, sontransferable, royalty-free Hoanne for the praction of maha invention throughout the world by or on behall of the United States or any foreign covern. mcat puruent to any existing or future treaty or Maroepent with the United States. 9 1245.404 Enforcement of patent

right An exclusive licensee will be authorized to enforce the licensed patent and to sue intringers of the patent at its own expense. $ 1745.405 Procedures.

(a) NABA will publish in the United Bates, and elsewhere as may be appropriate, lists of NASA-Owned foreton patents or patent applications available for licensing.

(b) NASA VW aloo furnish written notice of the anailability for Ucensing of NASA-Owned foratga Datants or pateat applications to any losnede under the corresponding US. patent or patent application.

(c) Applications for license should be addressed to the Administrator, National Aeronautics and Space Administration, Wuhington, D.C. 20456. The application must fully identify the patent or patent application, and state the type of Ucense requested together with proposed terms and conditions thereof.

(d) The conduct of negotiations with prospective licensees will be the responsibility of the General Counsel, NASA. In the conduct of such negotiations, due regard shall be had for the possible interests of NASA program and stall onces, and their coordination will be obtained w deemed appropriate

e) NASA will publish notice in the FhAL REGISTEA, and elsewhere as may be appropriate, of its intention to grant m exclusive Ucense under an identined patent or patent application. An excluGive Ucense will not be granted until the expiration of 60 days from the date of potica in order to provide suitable time internal for interested persons or other Govonment agencies to interpose comment or objection.

(1) AU Kcenses shall become elective upon the written acceptance by the

sepse of u lloense instrument specifyins the type of license and terms and conditions thereof.

Efective date. The provisions of this Bubpart 4 are efective upon publication in the FEDERAL REGISTER.

JAMES E. WEBD,

Administrator. IP.R. Doc. 80-8920: Milod, Aug. 17, 1906;

8:46 a.m.)

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NASA licensing statistics U.S. patents and patent applicationsDec. 31, 1978 U.S. patents held by NASA:

U.S. patents and patent applications available for licensing ................. 3,512

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Employee investions...

Contractor inventions ........
Nonexclusive licenses:

Licenses granted to date ...........
Licenses revoked or terminated
Licenses in force as of this date.

Inventions covered by licenses in force....
Exclusive licenses:

Licenses granted to date .... ...............
Licenses revoked or terminated .. .........
Licenses in force as of this date.
Inventions covered by licenses in force....
Different licenses.....

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NASA licensing statistics, foreign patents and patent applicationsDec. 31, 1978 Foreign patents held by NASA:

Foreign patents and patent applications available for licensing .............. 787

Inventions covered by foreign patents and patent applications...................... 184 Nonexclusive licenses:

Foreign patents and patent applications licensed nonexclusively in force...
Inventions covered by nonexclusive licenses .........................

Different licensees.....
Exclusive licenses:

Foreign patents and patent applications licensed exclusively in force.........
Inventions covered by exclusive licenses ....
Different licensees.

4

117

Commercial use of NASA owned inventions licensed by NASA in the United

States-Dec. 31, 1978
Nonexclusive licenses:
Nonexclusive license in force ....

242 Utilization reports received from licensees ......

138 Positive use reports:

Reports of commercial use.....
Inventions covered by these reports ........

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