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Title 14-AERONAUTICS AND

SPACE

Chapter V-National Aeronautics and Space Administration

PART 1245-PATENTS Subpart 4-Foreign Patent Licensing Regulations

New Subpart 4 is added:

Subpart 4-Foreign Patent Licensing Regulations Be.

1948.400 Boupe of subpart. 1944.401 Policy.

1246.402 Types of licenses and terms and conditions.

1245.403

Government license.

1945.404 Enforcement of patent rights. 1245.408 Prcedures.

AUTHORITY: The provisions of this Subpart 4 lasted under 43 U.S.C. 2457 (g) and (h). #1245.400 Scope of rubpart.

(a) The subpart establishes the policy, terms, conditions, and procedures under which NASA-owned foreign patents and patent applications may be licensed.

(b) The provisions of this subpart apply to all NASA-owned patents granted in countries other than the United States and to NASA-owned patent applications pending in such countries and supplement the provisions of Subpart 2 of this part for foreign patent licensing.

1245.401 Policy.

The foreign licensing program of the National Aeronautics and Space Administration serves to promote and utilize foreign patent rights vested in the Administration. The objectives of this program are to further the interests of United States industry in foreign commerce, to enhance the economic interests of the United States, and to advance the international relationships of the United States.

#1245.403 Types of licenses and terms and conditions.

Licenses will be individually negotiated and may be granted to any applicant, foreign or domestic, on a nonexclusive or exclusive basis for royalties or other considerations and on such other terms and conditions as are deemed sppropriate to the interests of the United States. Preference in the granting of foreign license rights will be abown to those applicants who have previously been granted a license under the corresponding U.S. patent or patent application.

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

(b) NASA will also furnish written notice of the availability for licensing of NASA-owned foreign patents or patent applications to any licensee under the corresponding US. patent or patent application.

(e) Applications for license should be addressed to the Administrator, National Aeronautics and Space Administration, Washington, D.C. 20456. The application must fully identify the patent or patent application, and state the type of license 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 staff offices, and their coordination will be obtained as deemed appropriate.

(e) NASA will publish notice in the FEDERAL REGISTER, and elsewhere as may be appropriate, of its intention to grant an exclusive license under an identified patent or patent application. An exclusive license will not be granted until the expiration of 60 days from the date of notice in order to provide a suitable time interval for interested persons or other Government agencies to interpose comment or objection.

(f) All licenses shall become effective upon the written acceptance by the beensee of a license instrument specifying the type of license and terms and conditions thereof.

Effective date. The provisions of this Subpart 4 are effective upon publication in the FEDERAL REGISTER.

JAMES E. WEBB, Administrator.

[P.R. Doc. 66-8920; Filed, Aug. 17, 1966; 8:45 a.m.)

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NASA licensing statistics U.S. patents and patent applications-Dec. 31, 1978

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NASA licensing statistics, foreign patents and patent applications-Dec. 31, 1978 Foreign patents held by NASA:

Foreign patents and patent applications available for licensing. Inventions covered by foreign patents and patent applications.. Nonexclusive licenses:

787

184

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

11

1

Different licensees...

3

Exclusive licenses:

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

117

58

Different licensees.....

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

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APPENDIX H

NATIONAL AERONAUTICS AND SPACE ADMINISTRATION OFFICE OF GENERAL COUNSEL-SUMMARY OF NASA

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The first year of the Federal Council on Science and Technology reporting requirements. During 1959-62. 366 inventions were received from NASA employees and 429 from NASA contractors.

APPENDIX I

Statistics on 305(c) and (d) activities—June 30, 1979

I. Patent applications and 305(c) affidavits reviewed at NASA headquarters (1959 through June 30, 1979)...........

Jan. 1, 1979 to June 30, 1979.

1978

1977

1976

1975

1974

1973

1972

1971

1970

1969

1968

1967

1966

1965

Prior to 1965.

II. Complete file wrappers ordered on basis of 305(c) statements (during 1979).....

III. Total number of 305(d) requests to Commissioner of Patents and Trademarks as of June 30, 1979

Jan. 1, 1979 to June 30, 1979.

1978

1977

10,872

175

325

265

286

297

368

441

544

853

819

894

701

646

737

1,027

2,494

1

195

0

10

1976

1975

1974

1973

1972

1971

1970

1969

1968

1967

1966

1965

Prior to 1965.

A. Pending cases before the Patent Office Board of Patent Interferences as of
June 30, 1979..

B. Completed cases...

1. NASA obtains rights

(a) By patent issuing to NASA.

(b) By petition for waiver filed and granted.

(c) By agreement and license..

(d) By decision of Board...

(e) Other........

2. Applicant obtains rights.

(a) NASA's withdrawal of request.......

(b) NASA's withdrawal upon entry of amendment to cancel claims......
(c) By decision of Board

(d) Failure to request within 90-day period

3. Appealed to the CCPA after board decision

(a) NASA obtains rights by decision of CCPA..

(b) Applicant obtains rights by decision of CCPA

Senator SCHMITT. Thank you, Mr. Mossinghoff.

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We will listen to Mr. Denny next, and then ask questions of both of you.

Mr. DENNY. Thank you, Senator.

Senator Schmitt, I am James Denny, Assistant General Counsel for Patents for the Department of Energy.

As I am sure you are aware, the administration is presently reviewing its own position on the issue of Government patent policy and I therefore cannot give you an administration-approved position on S. 1215. But I do hope to give the subcommittee information regarding the patent policy at DOE and our experience under it, and some benefit of my experience on what I believe to be the most critical patent policy issues.

The Department of Energy patent policy is controlled by both the Nuclear and Non-nuclear Acts. These acts both provide for the Government to acquire title to inventions and provide authority to grant waivers. The primary difference is that the Non-nuclear Act is more recent and considerably more detailed. We believe these legislative patent policies are technically sufficient and appropriately flexible to allow DOE to support a wide variety of research activities that it must undertake in every field of technology and with a wide variety of private, industrial and university entities. Our policies are not without problems, however. DOE has the flexibility to grant waivers and makes use of that flexibility.

DOE has utilized its ability to grant both advance waivers at the time of contracting and identified waivers to individual inventions on a case-by-case basis.

We have granted waivers to the largest corporations in America, and to firms which employ six people.

We have granted waivers to all inventions to be made under a contract, and only to inventions which fall within a particular field of technology.

We have granted waivers covering both domestic and foreign rights to inventions, and waivers only to foreign rights.

We have granted waivers to individually identified inventions, as well as to all inventions of a class of contractors undertaking a particular type of work.

Our waivers have been limited in fields of technology, fields of use, and period of duration.

We have also denied waivers where it was believed to be in the public interest to do so.

In my more detailed comments, I provide waiver statistics. But I would like to emphasize for the subcommittee our three most relevant pieces of information.

First, we have granted advance waivers to approximately 3 percent of the prime contracts and major subcontracts to which they could have been made applicable.

Second, we have granted identified waivers to less than 1 percent of the individual inventions which are reported under our contracts and subcontracts; and

Third, the whole waiver process is a substantial administrative work load for both DOE and its prospective and actual contractors. My more detailed remarks provide information about what we have found to be our average delays. We try to place our priority on those waiver decisions that hold up contracts. The rest of them are relegated to a lesser degree of priority and our delays in acting on these waivers run into some months, averaging somewhere between 10 and 20 months.

Although not all delays are caused by DOE, there is concern that in at least some cases the delays may well affect the commercialization efforts on the inventions involved. At present, the delays caused by DOE are simply due to the lack of sufficient personnel to promptly and properly process them.

Our experience under a title plus a waiver policy would be the same for the administration of any policy where the Government acquires title subject to a waiver. It involves substantial burdens for both the Government and the prospective contractor with respect to petitioning for waivers, negotiating, and determining waiver requests. This, in turn, can create delays in the research and development contracting process and may cause delays in the commercialization process because ownership of patent rights is frequently an important issue in both areas.

Additionally, a patent policy that provides for Government ownership of inventions places the burden and responsibilities upon the Government to see that the resulting technology is utilized. These responsibilities include:

The review of inventions to assess their importance, operability, feasibility, and commercial potential.

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