amount of risk capital would be necessary to develop and market the invention.

Prospective licensees are solicited primarily by personal contact. The Petitioner states that it actively pursues potential licensees in industry who, on their own initiative, call on the university requesting information as to new products. In this regard, several letters were submitted from corporations, including the 3M Company, IBM, and Armour and Company, inquiring about new technical leads to business opportunities. Other forms of solicitation include follow-up on persons who are led to CALTECH by the reputation of its employees or faculty, or by the publication of research work conducted at the university, and follow-up on existing relationships whose technology is related to the technology of the invention.

In regard to the subject invention, the contractor asserts that a concerted and concentrated effort has been made, and is being made, to license the invention as part of its licensing program. More specifically, it is reported that the invention has been offered for development to two extremely capable potential licensees, one of which is intensively studying it to determine whether

or not the interested company would wish to develop it further and offer it for sale. If these efforts should prove fruitless, the Petitioner states that it would continue to seek out an appropriate licensee for further development, manufacture, and sale of the invention. It is pointed out, however, that without waiver of title the Petitioner could not interest a prospective licensee in the invention, since it has nothing to sell; accordingly, no further effort would

be made to seek its development. Thus, waiver of title would provide the incentive needed to bring to fruition the contractor's past and continuing efforts toward development and commercialization of the invention.

The Petitioner states that the reporting provisions in its licensing agreements are highly effective in assuring that new technology will be developed and marketed. These provisions require that the licensee periodically report on the degree of activity in promoting the product or process involved; noncompliance with these provisions may result in the exercise of the licensor's right of cancellation. The Petitioner further states that in order to fulfill the objectives of its program, when it is deemed appropriate it will advise the licensee as to marketing the invention, and, where necessary, other licensees will be sought out. The effectiveness of the licensing program with these monitoring provisions is demonstrated by the fact that each of the 25 inventions licensed under the Petitioner's program has reach the market place. Thus, with waiver of title to the Petitioner, the invention becomes a part of the licensing program, and will accordingly receive the attention necessary under this program to bring the invention to full development and commercialization.

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.

PETITIONER: Monsanto Research Corporation

CONTRACT: INVENTION:

NAS 3-6014 and Subcontract MRC-7

The Petitioner,

and

STATEMENT OF FACTS: Monsanto Research Corporation, is a contractor of the National Aeronautics Space Administration, under Contract NAS 3-6014 and Subcontract MRC-7. The petition was made for waiver of title in an invention entitled "Process for the Preparation of Electronic Grade Materials and Epitaxial Structures," described in an attachment to the petition. The invention was made by Warren O. Groves, an employee 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 Feb. 25, 1966.

The Board, having duly considered the allegations and claims of the above-identified 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 case to the respective criterion set forth in each subsection.

SECTION 1245.106(b)(1). The invention, a process for the preparation of electronic grade materials and epitaxial structures, was made in the course of governmentsponsored work relating to the space program. Specifically, the invention is the

product of research for the development of improved layers of single crystal gallium phosphide semiconductors for use in solar cells. Although various commercial devices, such as rectifiers, electroluminescent diodes, transistors, varactor diodes, and switching diodes, may be fabricated from single crystal semiconductor materials prepared by the process of the invention, such practice of the invention is incidental to the purpose of the contract.

SECTION 1245.106(b)(2). The unique process of the invention is primarily useful in the art of single crystal preparation. Its practice will not be required by governmental regulations for use by the general public, inasmuch as it was not intended for such use, and, moreover, it is not related to the direct fabrication and/or use of any specific device.

SECTION 1245.106(b)(3). The practice of the invention, a process for producing single crystal semiconductor compounds and epitaxial structures having superior physical and electrical properties, may be useful in the fabrication of such products as rectifiers, electroluminescent diodes, transistors, varactor and switching diodes. Such products, however, do not have a direct or immediate impact on the public health or public welfare.

SECTION 1245.106(b)(4). The invention is in the field of technology relating to compound semiconductors. The Petitioner states that the Monsanto Company has been in a line of business pertinent to this field of technology for several years, and has

developed substantial privately-funded experience, know-how, and an established commercial position in this field. In this regard, the Petitioner alleges that the Monsanto Company has expended in excess of $1 million in the preparation of compound semiconductors. As further evidence of the Petitioner's experience in the art of semiconductors, an "Inventory List" has been submitted in which there is identified a wide variety of "Monsanto III-V Intermetallics" that are produced and sold by the Petitioner. The Petitioner has also identified 24 patents held by it that disclose various processes, products, and devices relating to semiconductors. It is also stated that in addition to this partial list of patents the Petitioner has numerous patent applications pending that relate to the technology of the invention, Inasmuch as the art relating to compound semiconductors is highly developed, and, morover, since the invention relates to only a small segment of this art, the acquisition of exclusive rights to the invention 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 conduct research relating to the development of improved layers of single crystal gallium phosphide semiconductors for use in solar cells. Inventions likely to arise out of the contract will not be required for use by the general public by governmental regulations, since the primary use of products or processes to be developed under the contract is in solar cells for space applications.

SECTION 1245.104(a)(2). The work to be performed under the contract relates to the development of improved layers of single crystal gallium phosphide semiconductors for use in solar cells. This work does not result in a product whose use has a direct or significant bearing on the public health or public welfare.

SECTION 1245.104(a)(3). The contract is in the field of technology of compound semiconductors. The Petitioner states that the Monsanto Company has been in a line of business pertinent to this field of technology for several years, and has developed substantial privately-funded experience, knowhow, and an established commercial position in this field. It is also alleged that the Petitioner has expended in excess of $1 million in the preparation of compound semiconductors. In further support of the Petitioner's experience in this field of technology, an "Inventory List" has been submitted that lists more than 40 intermetallic materials produced and sold by the Petitioner. The Petitioner has also identified 24 patents it holds pertaining to various processes, products, and devices relating to semiconductors, most of which were filed prior to the time of contracting. In addition, the Petitioner has indicated that a significant number of company-owned patent applications are pending in the U.S. Patent Office that pertain to related areas of technology. In view of the patent position already held by the contractor in the field of semiconductors, and, moreover, since the prior art discloses the use of various halogens as transfer agents in the vapor deposition of compound semiconductors (an area under investigation in the performance of the contract work) the acquisition of exclusive rights at the time of contracting would not confer on the contractor a preferred or dominant position.

indicates that waiver of title is necessary to call forth the investment of private risk capital and expense to bring the invention to the point of practical application.

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.