of the prescribed insignia shall be issued by the Director of Business Administration.

§ 1221.204 Distribution, issuance, and retail sale.

No distribution, issuance, or retail sale of the prescribed insignia or official articles shall be made except upon the authorization of the Director of Business Administration.

§ 1221.205 Prohibited use.

No person shall possess or wear the prescribed insignia or any device in colorable imitation thereof with intent to deceive or mislead, or for the purpose of inducing the false impression that such person is engaged in the performance of an authorized Administration activity. § 1221.206 Violations.

Whoever manufactures, sells, or possesses the prescribed insignia or any colorable imitation thereof, or photographs, prints, or in any other manner makes or executes any engraving, photograph, print, or impression in the likeness of the prescribed insignia, or any colorable imitation thereof, except as authorized under this subpart, shall be subject to a fine or not more than $250.00 or imprisonment of not more than six months, or both (18 U.S.C. 701). § 1221.290

Sec.

Illustration.

PART 1245-PATENTS

Subpart 1-Patent Waiver Regulations

1245.108 1245.109

Acceptance of waiver. 1245.110 Advisory opinions.

AUTHORITY: §§ 1245.100 to 1245.110 issued under 42 U.S.C. 2457(f), 2473 (b) (1).

SOURCE: §§ 1245.100 to 1245.110 appear at 24 F.R. 8788, Oct. 29, 1959.

§ 1245.100 Scope of subpart.

This subpart prescribes regulations under section 305 (f) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457 (f)) for the waiver of rights of the United States to inventions. § 1245.101 Definitions.

As used in this subpart:

(a) "Contract of the Administration" means any agreement or arrangement, and any subcontract thereunder, with the National Aeronautics and Space Administration (NASA) or another Government agency on the Administration's behalf, including grants made by the Administration under Public Law 85-934 (42 U.S.C. 1891-1893).

(b) "Contractor" means a party which has undertaken to perform work under a contract of the Administration.

(c) "To develop to the point of practical application" means to manufacture in the case of a composition or product, to practice in the case of a process, or to operate in the case of a machine, and under such conditions as to establish that the invention is being worked or that its benefits are reasonably accessible to the public.

§ 1245.102 Applicability.

This subpart applies to all inventions which may be conceived or first actually reduced to practice under conditions enabling the Administrator, NASA, to acquire exclusive rights therein on behalf of the United States pursuant to section 305(a) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457 (a)) and as to which title has not been formally conveyed to the United States. § 1245.103 Policy.

The Administrator considers that waiver would be in the interests of the United States where (a) the stimulus of private ownership of patent rights

will encourage the development of the invention to the point of practical application earlier than would otherwise be the case, or (b) there are substantial equities justifying the retention of private rights in the invention.

§ 1245.104 Criteria for granting waivers.

(a) Inventions not generally eligible for waivers. Pending the further development of space technology, the interests of the United States would not generally be served by waiver of rights of the United States with respect to any invention which is:

(1) Primarily adapted for and especially useful in the development and operation of vehicles, manned or unmanned, capable of sustained flight without support from or dependence upon the atmosphere, or

(2) Of basic importance in continued research toward the solution of problems of sustained flight without support from or dependence upon the atmosphere; provided, that the foregoing shall not preclude the Administrator from granting a waiver as to such inventions under paragraph (d) of this section.

(b) Prima facie case for waiver. Except for inventions described in paragraph (a) of this section, the Administrator considers that a prima facie case that the interests of the United States would be served by waiver of title or an exclusive license shall have been established when:

(1) It is shown that the invention was conceived prior to and independently of, but was first actually reduced to practice in the performance of work under a contract of the Administration, and the invention is covered by a United States patent issued or application filed prior to the award of the contract; or

(2) It is shown that the invention was conceived or first actually reduced to practice in the performance of a contract of the Administration for research work with a nonprofit institution of higher education or a nonprofit organization whose primary purpose is the conduct of scientific research, and the contract does not call for the delivery of models or equipment or the development of practical processes; or

(3) It appears that the invention has only incidental utility in the conduct of activities with which the Administration is particularly concerned and has sub

46016-60- -33

stantial promise of commercial utility;

or

(4) It is shown that the invention is directed specifically to a line of business of the contractor with respect to which the contractor's previous expenditure of funds in the field of technology to which the invention pertains has been large in comparison to the amount of funds for research or development work in the same field of technology expended under the contract of the Administration in which the invention was conceived or first actually reduced to practice.

(c) Foreign rights. Upon request, waiver will be granted of rights to an invention in countries other than the United States in which the Administration does not desire to file an application for patent for such invention.

(d) Other inventions. In the case of inventions not coming within the scope of paragraph (b) of this section, waiver may be granted on such terms as may be appropriate whenever it appears to the satisfaction of the Administrator that waiver would be in the interests of the United States in accordance with the policy enunciated in § 1245.103.

(e) Inventions pertaining to atomic energy. Waivers will not be granted for inventions relating to atomic energy or special nuclear material except with the approval of the Atomic Energy Commission.

§ 1245.105 Reservation of nonexclusive license.

All waivers shall be subject to the reservation of an irrevocable, nonexclusive, nontransferable, royalty-free license for the practice of such invention throughout the world by or on behalf of the United States or any foreign government pursuant to any treaty or agreement with the United States.

§ 1245.106 Voidability of waivers.

(a) All waivers other than those described in paragraph (b) of this section will be voidable at the option of the Administrator unless the recipient of the waiver shall, on or before the end of the fifth year from the date of the grant of a United States patent on such invention or the end of the eighth year from the date of acceptance of waiver, whichever is sooner, demonstrate to the Administrator that:

(1) The invention has been developed to the point of practical application, or

Page 497

(2) The invention has been made available for licensing either royalty-free or at a reasonable royalty rate, or

(3) There are circumstances justifying failure to comply with either of the foregoing and concurrently justifying continuance of the waiver.

(b) Waivers will not be voidable, except for failure to comply with conditions imposed under paragraph (c) of this section, when they relate to:

(1) An invention conceived prior to and independently of, but first actually reduced to practice in the performance of, work under a contract of the Administration, or

(2) An invention which has been developed to the point of practical application prior to the request for waiver.

(c) All waivers will be voidable at the option of the Administrator for failure to comply with:

(1) Such conditions concerning the filing and prosecution of patent applications as may be necessary to protect the rights retained by the United States, and

(2) Such special conditions applicable to the particular invention as may be required in the interests of the United States.

(d) Before voiding a waiver for failure to comply with the conditions imposed on such waiver, whether under paragraphs (a) or (c) of this section, there will be furnished to the recipient of the waiver a written notice of intention to void the waiver, and the recipient of the waiver will be allowed 30 days after receipt of such notice in which to request a hearing before the Inventions and Contributions Board on the question of whether the waiver should be voided. § 1245.107 Waivers are not contracts. Waivers shall not be deemed to be contracts requiring the performance of work within the meaning of section 305(b) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457(b)). Inventions made in connection with the development of any invention to the point of practical application as a part of compliance, or in attempting to comply, with a condition of a waiver, shall not be deemed from such fact alone to be inventions made in the performance of work under a contract of the Administration within the meaning of section

305(a) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457(a)). § 1245.108 Procedures.

(a) Petition. Petitions for waiver may be filed by a contractor, an assignee of a contractor, or an inventor who is not under an obligation to assign the invention to the contractor by which he was employed when the invention was made. Petitions shall be addressed to the Administrator and shall:

(1) Identify by number and date the contract under which the invention was made;

(2) Identify the invention by name of inventor, brief description, and the location of records wherein the invention is disclosed;

(3) State facts showing that the invention qualifies under the criteria of § 1245.104 for consideration for waiver;

(4) Specify the extent of waiver requested, i.e., title to the invention, exclusive license, or title to foreign rights;

(5) State whether or not a patent application has been filed for such invention;

(6) If a patent application has not been filed, present information concerning publication, public use, or sale of the invention, which would indicate the need for prompt action on the petition;

(7) Include any additional statements, information, or reasons in support of its requests which the petitioner desires to submit; and

(8) Be signed by the petitioner. Any statements pertaining to subparagraphs (1) through (7) of this paragraph may be attached to the petition if suitably identified and cross-referenced in the petition.

(b) Processing of petitions-(1) Petitions will be submitted to the Office of the General Counsel, National Aeronautics and Space Administration, Washington 25, D.C.

(2) The Assistant General Counsel for Patent Matters will review such petitions for compliance with paragraph (a) of this section and submit to the Inventions and Contributions Board a Findings of Fact and Recommendation with respect to each such petition which will state:

(i) Whether, in his opinion, the petition sets forth facts which qualify the invention for waiver under one or more of the criteria in § 1245.104;

(ii) A recommendation that waiver in the extent requested either be or not be granted, or, in the alternative, that waiver in an extent different from that requested be granted; and

(iii) Any special conditions which should be included in the instrument of waiver.

(3) The Inventions and Contributions Board will consider the petition and Findings of Fact and Recommendation of the Assistant General Counsel for Patent Matters and notify the petitioner:

(i) Whether it proposes to recommend to the Administrator the granting of waiver in the extent requested, in an extent different from that requested, or denial of the request;

(ii) of any conditions upon which it proposes to recommend the granting of waiver;

(iii) of the reasons for any recommended action adverse to or different from the waiver requested by the petitioner; and

(iv) That the petitioner may, within 30 days from receipt of the notification, request an oral hearing before the Board, in the event the petitioner is not satisfied with the action the Board proposes to recommend.

(4) If the petitioner requests a hearing, the Board will set a place and date for such hearing and notify the petitioner and the Assistant General Counsel for Patent Matters.

(5) If the Board proposes to recommend the granting of a waiver, and the petitioner does not request a hearing within 30 days as above provided or informs the Board that a hearing will not be requested, the Board shall transmit its recommendation to the Administrator.

(6) After a hearing as provided in subparagraph (4) of this paragraph, the Board shall transmit to the Administrator the petition, the record of proceedings, its findings of fact with respect to the request for waiver, and its recommendation.

(c) Procedure when there is a potential statutory bar. Whenever it appears that a statutory bar is running against the filing of an application for patent for the invention or that the securing of a valid patent in any country appears to be threatened by the passage of time, and delay in acting on the petition for

waiver might result in loss of the patent rights in the invention, the Assistant General Counsel for Patent Matters will arrange with the petitioner for the preparation and filing of the patent application by the petitioner pending action on the petition for waiver, subject to reimbursement of the reasonable costs of the petitioner in preparing and filing such patent application if waiver is not granted, or, if granted, is not accepted by the petitioner.

§ 1245.109 Acceptance of waiver.

No waiver shall be valid unless accepted in writing by the petitioner. § 1245.110 Advisory opinions.

(a) Action by contractor. Paragraph (d) (iv) of the "Property Rights in Inventions" clause1 authorizes a contractor to request an advisory opinion as to whether a waiver might be granted in advance of submitting the written statement required by paragraph (d)(i) of the "Property Rights in Inventions" clause. Whenever a contractor desires such an opinion, and desires to know the extent, terms and conditions of the waiver which the Board would recommend to the Administrator, in order to aid it in determining whether to submit a statement for the purpose of contesting the presumption that the invention was made in the performance of work under the contract by a person described in paragraphs (1) and (2) of section 305(a) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457(a)), and under the conditions therein described, it may do so by a letter addressed to the Inventions and Contributions Board, to which shall be attached a petition prepared and signed in the same manner as provided in § 1245.108 (a).

(b) Action by NASA. Such petition shall be processed and considered in the manner provided in § 1245.108(b). The contractor may be invited to appear before the Board for an informal hearing, but the hearing provided in § 1245. 108(b) (4) will not be accorded as a matter of right in connection with a request for an advisory opinion. The Board will render such an advisory opinion within three months after receipt by NASA of the request therefor.

1 Clause IX-A contained in § 1201.190 of Chapter V, Title 14 of the Code of Federal Regulations (24 F.R. 3574, 3577, as amended by 24 F.R. 6615).