citation of a number of patents is in itself inconclusive as a showing of the amount of commercial or privately-funded experience in the field.

SECTION 1245.104(a)(4). It is apparent that the Petitioner is to perform the contract in its own facilities, and by using its own personnel and equipment.

SECTION 1245.104(a)(5). Although alreadyexisting know-how and technology upon which the performance of the present contract may be based is more than adequately shown by the Petitioner's indication of its considerable experience in working on chromium-base alloys, and through its own privately-built refractory-metals facility, it is nevertheless considered that the purpose of the contract, to develop an alloy for eventual use in the supersonic commercial air transport, is therefore not to develop information, products, processes, or methods for use by the Governmer+

SECTION 1245.104(a)(6). Although the melting, reduction, and testing of a wide variety of chromium-base alloys, to achieve considerable know-how and experience, appears more than adequate to show the Petitioner's technical competence in the contract

field, the Petitioner does not appear tc have shown an established nongovernmental commercial position in any area directly related to the defined field of chromiumbase alloys. In an attempt to support the requisite showing, the Petitioner refers to its investment of $15 million to build a refractory-metals facility for the manufacture and sale of refractory metals; no showing is made, however, of the actual sales of any refractory-metal products in general, or of any product utilizing a chromium-base alloy in particular. Moreover, the Petitioner's reference to its acquisition of commercial rights in a number of patents in the field of chromium-base alloys, and its further indication of discussing the commercial licensing of one or more of said patents for the purpose of manufacturing and sale of heating elements, while appearing to indicate its capability to ensure further exploitation of certain patents encompassing the contract field, as well as indicating ongoing efforts designed eventually to accomplish such exploitation, is not considered sufficient to establish a showing of an established nongovernmental commercial position in an area to which the defined field is either applicable or directly related.

PETITIONER: Electro-Optical Systems, Inc.

CONTRACT: INVENTION:

N-21449

Integrated Circuit

STATEMENT OF FACTS: The Petitioner, Electro-Optical Systems, Inc., is a contractor of the National Aeronautics and Space Administration, under Subcontract N-21449, awarded under Prime Contract NASW-6 with JPL. The petition was made for waiver of title of the United States in an invention entitled "Integrated Circuit," described in an attachment to the petition. The invention was made by Stephen Raye and Irving Weiman, employees of the Petitioner, in the performance of work required under the above-identified contract, and in the manner specified in Section 305(a) of the National Aeronautics and Space Act of 1958, as determined by the Administrator. The petition was considered by the Inventions and Contributions Board on August 6, 1965.

The Board, having duly considered the allegations and claims of the Petition, expressly makes the findings required under Section 1245.106(b) of the NASA Patent Waiver Regulations (1964), (which Section, in its entirety, is hereby expressly incorporated by reference), and concludes that the invention does not fall within the enumerated proscriptions of the cited Section. The reasons for the Board's findings are stated below, corresponding in each instance to the respective criterion set forth in each subsection.

SECTION 1245.106(b)(1). The invention relates to thin-film semiconductor combination electrical circuits using active semiconductor substrates and passive thin-film elements. The governmental contract under which the invention was made relates to the development of advanced solid-state microelectronic techniques and devices for

space-vehicle application; more specifically, an electronic circuit for a space camera system. The invention may have commercial application in the microelectronics field, inasmuch as it is a by-product of an electronic circuit for a space camera system; however, such use is incidental to its use in the space program.

SECTION 1245.106(b)(2). The invention relates to a novel semiconductor integrated circuit and method of fabrication thereof. Inasmuch as no public-use considerations are involved in this contract, and, moreover, since the invention has utility only in the microelectronics field and requires further development for commercial applications, its use by the general public will not be required by governmental regulations. SECTION 1245.106(b)(3). The invention, a novel semiconductor integrated circuit and method of fabrication thereof, is not a product whose use has a direct or significant bearing on the public health or public welfare.

SECTION 1245.106(b)(4). The invention is in the field of technology of microelectronics. In support of the Petitioner's allegation that in this field there has been significant experience outside of work funded by the Government, and that the Government has not been its principal developer, it has presented a copy of a portion of the ELECTRONIC DESIGN Magazine for 28 September 1964, in which the re is set forth a list of more than 50 companies that are currently engaged in the manufacture and sale of devices in this field. This exhibit leaves little doubt that there has been a significant contribution by private industry, in terms of dollar

investment and basic development in the field. The exhibit also tends to show that the acquisition of exclusive rights to this invention would not confer on the Petitioner a preferred or dominant position, in that many concerns are in competition with the Petitioner. Moreover, the Petitioner has stated that the results obtained by the present invention can be attained by other comparable devices, such as those shown in at least three patents, none of which are held by the Petitioner.

The Board further expressly finds that the contract meets the criteria of Section 1245.106(c)(1), (which is hereby expressly incorporated by reference), which Section encompasses the criteria of Section 1245.104(a), subsections (1) through (4), (which are also hereby expressly incorporated by reference). The reasons for the Board's findings are stated below, corresponding in each case to the respective criterion set forth in each subsection.

SECTION 1245.104(a)(1). A principal purpose of the contract is to conduct a survey program directed toward the application of microelectronics to space-vehicle instrumentation systems, and particularly to a space camera system. No public-use considerations are involved in the contract; consequently, inventions likely to arise out of the contract will not be required for public use by governmental regulations.

SECTION 1245.104(a)(2). The work to be performed under the contract relates to a study directed toward the application of microelectronics for a space camera system. The work does not produce an article whose use has a direct or immediate impact on the public health or public welfare. SECTION 1245.104(a) (3). The contract is in the field of technology of microelectronics. In support of the Petitioner's allegation that in this field there has been significant experience outside of work funded by the Government, and that the Government has not been its principal developer, it has presented a copy of a portion of the ELECTRONIC DESIGN Magazine for

28 September 1964, in which there is set forth a list of more than 50 companies that are currently engaged in the manufacture and sale of devices in this field. This exhibit leaves little doubt that there has been a significant contribution by private industry, in terms of dollar investment and basic development in the field. The exhibit also shows that the acquisition of exclusive rights at the time of contracting would not confer on the Petitioner a preferred or dominant position. In this regard, it is shown that numerous concerns are in competition with the Petitioner, many of which produce a wide range of devices similar to those produced by the Petitioner and its affiliated corporation, Xerox Corporation.

SECTION 1245.104(a) (4). The necessary facilities, personnel, and equipment to perform the work under the contract are to be furnished by the contractor. The contract does not require the services of the contractor for coordinating or directing the work of others.

Moreover, the Board expressly finds, as required by Section 1245.106(c)(1), that waiver of title would provide an effective incentive to bring the invention to the point of practical application at the earliest practicable date. The Petitioner asserts that because of the vigorous competition in the field some measure of exclusivity is needed now to afford an incentive to compensate for the investment of money and effort already expended, and will be needed in the future to develop the invention for commercial exploitation. The Petitioner also states that its affiliated corporation, Xerox Corporation, already active in the microelectronics field, is capable of developing and marketing this invention for the commercial market. On the basis of all the above-enumerated findings, the Inventions and Contributions Board concludes that the interests of the United States would best be served by waiving title under Section 1245.106 of the NASA Patent Waiver Regulations of August 27, 1964, and therefore RECOMMENDS THE GRANT OF THE PETITION.

significant number of both domestic and foreign patents relating to fuel-cell technology have been issued to various concerns, so that the acquisition of exclusive rights to this invention, which is directed to a small portion of fuel-cell technology, would not confer on the contractor a preferred or dominant position.

The Board further expressly finds that the contract meets the criteria of Section 1245.106(c)(1), (which is hereby expressly incorporated by reference), which Section encompasses the criteria of Section 1245.104(a), subsections (1) through (4), (which are also hereby expressly incorporated by reference). The reasons for the Board's findings are stated below, corresponding in each case to the respective criterion set forth in each subsection.

SECTION 1245.104(a)(1). A principal purpose of the contract is to develop a fuel cell for the Gemini spacecraft. Although the fuel cell to be developed under the contract may have commercial applications, such use is incidental to the purpose of the contract. Inasmuch as the work to be performed relates to the development of a fuel cell for space applications, inventions arising out of the contract will not be required by governmental regulations for use by the general public.

SECTION 1245.104(a)(2). A principal purpose of the contract is to develop a fuel cell for the Gemini spacecraft. The work to be performed does not require exploration into fields which directly concern the public health or public welfare.

SECTION 1245.104(a)(3). The contract is in the field of fuel-cell technology. Although in the past few years the Government has funded considerable work in this field, because of the needs of the space program, the basic concepts of the fuel cell were developed by nongovernmental research. A substantial number of companies throughout the world have done considerable research and development of fuel cells. The development of fuel cells has been and remains intensely competitive, since a large number of companies are seeking to develop fuel

cells for commercial applications. A significant number of both domestic and foreign patents relating to relating to fuel-cell technology have been issued to various concerns, so that the acquisition of exclusive rights at the time of contracting would not confer on the contractor a preferred or dominant position.

SECTION 1245.104(a)(4). The basic development of the fuel cell is to be performed at the contractor's facilities. Any supervision or specific operation at a Government-owned research or development facility, such as final testing, is only incidental to the purpose of the contract. The extent of coordinating and directing the work of others is limited to the necessary administrative work of the subcontracting under the contract.

Moreover, the Board expressly finds, as required by Section 1245.106(c)(1), that waiver of title would be an effective incentive to bring the invention to the point of practical application at the earliest practicable date. The present invention has been reduced to practice for experimental purposes only, and the Petitioner has stated that some measure of exclusivity is necessary in order to afford an incentive for the investment of money and effort needed to develop the invention for commercial applications. The contractor has also stated that it would not wish to devote additional expenditure of time and money to develop the invention further, if it could not be assured of protecting its investment by receiving exclusive commercial rights. The contractor has demonstrated its capability to develop the invention further, since it is currently engaged in programs for the investigation of fuel cells at several of its research and development laboratories. The Board finds that waiver of title would provide the assurance needed by the Petitioner to continue this work.

On the basis of all the above-enumerated findings, the Inventions and Contributions Board concludes that the interests of the United States would best be served by waiving title under Section 1245.106 of the NASA Patent Waiver Regulations of August 27, 1964, and therefore RECOMMENDS THE GRANT OF THE PETITION.