1245.114

Waiver of foreign rights.

1245.115 Filing of patent applications. 1245.116 Publication.

AUTHORITY: The provisions of this Subpart 1 issued under 42 U.S.C. 2457(f). § 1245.100 Scope of subpart.

Section 305 of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457) provides that each invention determined by the Administrator of NASA to have been made in the performance of work under a NASA contract in the manner specified in that section becomes the exclusive property of the United States unless the rights of the United States are waived in accordance with the provisions of section 305 (f) of the Act. Thus title to each such invention vests in the United States unless a waiver is granted. This subpart sets forth the policies and procedures governing the waiver of rights of the United States to inventions under section 305 (f) of the Act.

As used in this subpart:

(a) "Contract" means any actual or proposed contract, understanding, or other arrangement with the National Aeronautics and Space Administration (NASA) or another Government agency on NASA's behalf, including any assignment, substitution of parties or subcontract executed or entered into thereunder, and including grants made by NASA under 42 US.C. 1891-1893.

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

(c) "Invention" means an invention made in the manner specified in paragraph (1) or (2) of section 305(a) of the National Aeronautics and Space Act of

1958 (42 U.S.C. 2457(a)) in the performance of work under a contract.

(d) "Board" means the NASA Inventions and Contributions Board established by the Administrator of NASA within the Administration under section 305 (f) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457 (f)).

(e) "To bring 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 and that its benefits are reasonably accessible to the public.

(a) In implementing the provisions of section 305 (f) of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457(f)) and in defining when the intertests of the United States would be served by waiver of rights in inventions made in the performance of work under NASA contracts, the Administrator is guided by the objectives set forth in the National Aeronautics and Space Act of 1958 and by the basic policy of the Presidential Memorandum and Statement on Government Patent Policy issued October 10, 1963 (28 F.R. 10943-46). Among the most important objectives of the regulations in this subpart are to provide incentives to foster inventiveness and encourage reporting of inventions made under NASA contracts, to provide for the widest practicable dissemination of new technology resulting from NASA's programs and to encourage the expeditious development and adoption of this new technology for commercial purposes.

(b) This subpart prescribes three different times at which waiver of title may be requested. Waiver of title to an individual invention may be requested under 1245.106 after the invention has been identified and reported to NASA. Waiver of title to inventions not yet identified and reported may be requested under 1245.104, prior to execution of the contract, or under § 1245.105, within sixty (60) days of contract execution. Waiver of title may be requested under any of these sections even though a request under a different section was not made or, if made, was not granted.

§ 1245.104 Waiver at the time of contracting.

(a) Where waiver of title is requested prior to contract execution, such waiver normally will be granted if the Board makes each of the six findings set forth in subparagraphs (1) through (6) of this paragraph prior to execution of the contract:

(1) It is not a principal purpose of the contract to create, develop or improve products, processes, or methods which are intended for commercial use (or which are otherwise intended to be made available for use) by the general public at home or abroad, or which will be required for such use by governmental regulations.

(2) It is not a principal purpose of the contract to explore into fields which directly concern the public health or public welfare.

(3) The contract is not in a field of science or technology in which there has been little significant experience outside of work funded by the Government, or where the Government has been the principal developer of the field, with respect to which the acquisition of exclusive rights at the time of contracting might confer on the contractor a preferred or dominant position.

(4) The contract is not for services of the contractor for (i) the operation of a Government-owned research or production facility or (ii) coordinating and directing the work of others.

(5) The purpose of the contract is to build upon existing knowledge or technology to develop information, products. processes, or methods for use by the Government.

(6) The work called for by the contract is in a field of technology in which the contractor has acquired technical competence (demonstrated by factors such as know-how, experience, and patent position) directly related to an area in which the contractor has an established nongovernmental commercial position.

(b) When a petition for waiver is section and sufficient information is not made pursuant to paragraph (a) of this presented to allow the Board to make findings of fact and recommendations to the Administrator of NASA without unduly delaying execution of the contract, the Board will inform the contracting officer that such findings of fact and recommendations have not been made. The contracting officer will so inform the petitioner, who may, upon execution of the contract, request the Board to consider the matter further under § 1245.105. If the Board proposes to recommend against the granting of a waiver under § 1245.105, the petitioner may then request reconsideration or a hearing under § 1245.111.

(c) A waiver granted pursuant to paragraph (a) of this section shall be effective only with respect to inventions which are reported during the term of the contract under which they are made and designated at the time of reporting as being inventions upon which the contractor intends to file c has filed a U.S. Patent application.

(d) A waiver granted pursuant to paragraph (a) of this section is subject to the reservations and conditions set forth in §§ 1245.107-1245.109.

§ 1245.105 Waiver prior to invention

identification.

(a) Where a waiver has not been granted under § 1245.104, a petition for

waiver of title to all inventions which may be made in the performance of work under a specific contract may be submitted by the contractor within sixty (60) days after execution of the contract. Such a petition may be made even though no petition for waiver was made prior to execution of the contract under § 1245.104. In the event a petition for waiver under § 1245.104 was previously made but not granted, the contractor may request the Board to consider the matter under this section on the record or, in the alternative, he may submit additional evidence and arguments in support of his petition.

(b) Waiver of title under this section normally will be granted when the Board makes the findings set forth in § 1245.104 (a)

(c) A waiver granted pursuant to paragraph (b) of this section shall be effective only with respect to inventions which are reported during the term of the contract under which they are made and designated at the time of reporting as being inventions upon which the contractor intends to file or has filed a United States patent application.

(d) A waiver granted pursuant to paragraph (b) of this section is subject to the reservations and conditions set forth in §§ 1245.107-1245.109.

to the reservations and conditions set forth in §§ 1245.107 through 1245.109. § 1245.107 Reservation of license.

With respect to any particular invention, waiver of title under any and all provisions of this subpart shall be subject to the reservation of an irrevocable, nonexclusive, nontransferable, royaltyfree license for the practice of the invention throughout the world by or on behalf of the United States or any agency thereof, State, or domestic municipal government, or any foreign government pursuant to any existing or future treaty or agreement with the United States. § 1245.108 Additional reservations.

(a) With respect to any particular invention, each walver of title shall be subject to the reservation of the right of the Administrator of NASA to require the granting of a license to any applicant on a nonexclusive, royalty-free basis unless:

(1) The contractor, his licensee, or his assignee has brought the invention to the point of practical application within three years after a U.S. patent issues on the invention and thereafter continues to work the invention and make its benefits reasonably accessible to the public; or

(2) Within three years after a U.S.

(a) The provisions of this section apply to petitions for waiver of title to individual inventions which have been reported to NASA and which are not subject to a waiver granted pursuant to § 1245.104 or § 1245.105.

(b) Waiver of title to an invention after reporting thereof will not be granted where the Board finds that the invention:

(1) Is directly related to a governmental program for creating, developing, or improving products, processes, or methods for use by the general public at home or abroad; or

(2) Will be required by governmental regulation for use by the general public at home or abroad; or

(3) Is directly related to the public health or public welfare; or

(4) Is in a field of science or technology in which there has been little significant experience outside of work funded by the Government, or where the Government has been the principal developer of the field, and the acquisition of exclusive rights might confer on the contractor a preferred or dominant position.

(c) Except for inventions falling within paragraph (b) of this section, waiver of title to an invention normally will be granted if the Board finds that, in view of the contractor's plans and intentions to bring the invention to the point of practical application, waiver of title to the contractor would be an effective incentive to bring the invention to the point of practical application at the earliest practicable date.

(d) A waiver granted pursuant to paragraph (c) of this section is subject

patent has been made available for nonexclusive licensing to any responsible applicant, royalty-free or on terms that are reasonable in the circumstances; or

(3) The contractor shows cause why he should retain the full benefits of waiver for a further period of time.

(b) With respect to any particular invention, each waiver of title shall be subject to the reservation, by the Administrator of NASA, of the right to require the granting of a license to any responsible applicant royalty-free or on terms that are reasonable in the circumstances for such practice of the invention as may be appropriate to satisfy the requirements which may be made by governmental regulations for public use of the invention or as may be necessary

to fulfill health needs.

(c) Before a contractor is required to grant a license under either paragraph (a) or (b) of this section, he shall be given an opportunity to show cause before the Board why he should not be required to grant such a license.

§ 1245.109 Voidability of waivers.

(a) With respect to any particular invention, each waiver of title shall be voidable at the option of the Administrator of NASA unless:

(1) Within eight months from the date of reporting of an invention subject to a waiver granted pursuant to 1245.104 or 1245.105, or eight months from the date of the granting by the Administrator of NASA of a waiver pursuant to § 1245.108, the contractor files an application for U.S. Letters Patent disclosing and claiming the invention and includes within the first paragraph of the specification of such application and any patent issuing thereon the following statement:

The invention described herein was made in the performance of work under a NASA contract and is subject to the provisions of section 305 of the National Aeronautics and Space Act of 1958, Public Law 85-568 (72 Stat. 435; 42 U.B.C. 2457).

(2) The contractor furnishes to the Administrator of NASA à copy of each patent application, domestic or foreign, filled on such invention together with identifying serial number and filing date promptly upon receipt thereof;

(3) The contractor executes and furnishes to the Administrator of NASA instruments fully confirmatory of the rights herein reserved by the Government;

(4) In the event he elects not to continue prosecution of any application filed on such invention, the contractor notifies the Administrator of NASA within sufficient time to allow assumption of prosecution by the Government, and delivers to the Administrator of NASA such duly executed instruments as are necessary to vest in the Administrator title thereto, including an instrument of assignment to such patent application;

(5) The contractor conveys to the Administrator of NASA, on written request, his entire right, title and interest in any foreign country in which he has not filed an application on said invention within

(1) Nine months from the date a corresponding U.S. application is filed; (ii) Six months from the date permission is granted to file foreign applications where such filling has been prohibited for security reasons; or

(iii) Such longer periods as may be expressly approved by the Administrator of NASA;

(6) The contractor grants any license which the Administrator of NASA may require to be granted pursuant to 1245.108; and

(7) The contractor reports, upon NASA's written request, not more often than annually, the commercial use that is being made or is intended to be made of the invention.

(b) With respect to any particular invention, each waiver of title shall be voidable if the patent disclosing and claiming such invention is held to have been used in violation of the antitrust laws in an unappealed or unappealable judgment or order of a court or administrative tribunal of competent jurisdiction.

§ 1245.110 Content of petitions.

(a) Forms which may be used in petitioning for waiver are available from the NASA Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, D.C., 20546. Each request for waiver under § 1245.104,

1245.105, or 1245.106 shall be by petition to the Administrator of NASA and shall include:

(1) An identification of the petitioner, his place of business and address, and if the petitioner is represented by counsel, his name and address;

(2) An identification by number and date of the pertinent NASA contract or proposed contract;

(3) A specification of the kind of waiver requested and of the section hereof under which the petition is submitted; and

(4) The signature of the petitioner or his authorized representative.

(b) Petitions for waiver under §§ 1245.104 and 1245.105: In addition to the information specified in paragraph (a) of this section, each petition for waiver under § 1245.104 or § 1245.105 shall include:

(1) A copy of the statement of work of the pertinent NASA contract or proposed contract; and

(2) A statement of facts tending to show that the contract is of a type specified in § 1245.104 (a), relating such facts to the statement of work of the contract. (c) Petitions for waiver under § 1245.106: A separate petition shall be submitted for each reported invention. In addition to the information specified in paragraph (a) of this section, such petition shall include:

(1) The full names of all inventors; (2) A concise description of the invention, pointing out the relation of the invention to the known prior art, isolating what the petitioner regards as new, and relating the invention to the work required to be performed under the

contract;

(3) A statement whether a patent application has been filed on the invention, together with a copy of such application if filed;

(4) If a patent application has not been filed, any information which may indicate a potential statutory bar to the filing of a patent application under 35 U.S.C. 102 (1958), or a statement that no bar is known to petitioner to exist; and

(5) A statement of facts tending to show that the invention qualifies for waiver of title under § 1245.106.

§ 1245.111 Processing of petitions.

(a) Submission. Petitions for waiver under 1245.104 must be submitted through the contracting officer to the

Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, D.C., 20546. All other petitions may be submitted directly to the Board or through the contracting officer to the Board.

(b) Notice of proposed recommendation. With respect to petitions for waiver under 1245.105 or 1245.106, the Board will notify the petitioner:

(1) Whether it proposes to recommend to the Administrator of NASA the the petition be

(i) Granted in the extent requested; (ii) Granted in an extent different from that requested; or

(iii) Denied.

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

(3) If the Board proposes to recommend that the petition be denied or granted to an extent different from that requested, that the petitioner may, within such period as the Board may set, but not less than thirty (30) days, re

quest either an oral hearing before or reconsideration by the Board.

(c) Hearing. If the petitioner requests a hearing within the time set pursuant to paragraph (b) (3) of this section, the Board will set a place and date for such hearing and notify the petitioner.

(d) Reconsideration. If the petitioner requests reconsideration within the time set pursuant to paragraph (b) (3) of this section, the Board will reconsider the petition, together with any additional material submitted by the petitioner during the period set for requesting reconsideration.

(e) Transmittal to Administrator. (1) If the Board proposes to recommend that the petition be granted in the extent requested, or in other cases if the petitioner does not request a hearing or reconsideration during the period set for such action, or informs the Board that a hearing or reconsideration will not be requested, the Board shall transmit the petition, its findings of fact with respect thereto, and its recommendation to the Administrator of NASA.

(2) After a hearing or reconsideration as provided in paragraph (c) or (d) of this section, the Board shall transmit to the Administrator of NASA the petition, the record of proceedings, its findings of fact with respect to the request for waiver, and its recommendation.

(f) Notice of denial. In the event of denial of the petition by the Administrator of NASA, a written notice of such denial will be given promptly to the petitioner. The written notice will be accompanied with a statement of the grounds for the denial.

§ 1245.112 Hearing procedure.

Hearings held by the Board shall be in accordance with the procedures set forth in this section.

(a) Public notice. In addition to the notice to the petitioner required by § 1245.111 (c), notice of each hearing shall be published in the FEDERAL REGISdate thereof. Such notice shall specify TER at least thirty (30) days prior to the that written comments regarding the matter before the Board may be submitted prior to the hearing or within fifteen (15) days thereafter.

(b) Hearings to be public. Each hearing shall be open to the public. (c) Representation of petitioner. Petitioners may be represented by attorneys and any other appropriately designated persons.

(e) Record. A written transcript of the proceeding shall be arranged for by the Board. The petitioner shall submit for the record a copy of any exhibit or visual aid utilized during the hearing. § 1245.113 License to contractor.

There is hereby granted to any contractor reporting an invention an irrevocable, nonexclusive, royalty-free license for the practice of such invention throughout the world, together with the right to grant sublicenses of the same scope, to the extent the contractor was legally obligated to do so at the time the contract was awarded. Such license and right is nontransferable except to the successor of that part of the contractor's business to which the invention pertains.

§ 1245.114 Waiver of foreign rights.

Upon request, waiver of title to any identified invention will be granted in countries other than the United States in which the Administrator of NASA does not desire to file an application for patent for such invention, subject to the reservation of an irrevocable, nonexclusive, nontransferable, royalty-free license for the practite of the invention throughout the world by or on behalf of the United States or any agency thereof or any foreign government pursuant to any existing or future treaty or agreement with the United States and subject to the conditions set forth in § 1245.109 (a) (2) through (5) and (7). § 1245.115 Filing of patent applications.

In order to protect adequately the interests of the Government and the contractor in inventions, contractors are encouraged to file patent applications prior to final disposition of petitions for waiver of title. If a petitioner for waiver of title files a U.S. patent application disclosing and claiming the invention during the pendency of the petition, NASA will reimburse the petitioner for the reasonable costs of filing and such prosecution as may have ensued in the event that petitioner assigns the application to the the petition is ultimately denied and the United States as represented by the Administrator of NASA.

§ 1245.116 Publication.

There shall be published at least annually:

(a) The findings of fact and recommendations of the Board with respect to each petition for waiver;

(b) Appropriate statistics regarding inventions made under NASA contracts, and actions taken with respect thereto; and

(c) The decision of the Board in each proceeding under § 1245.108 (c).

Effective date. The provisions of this subpart are effective June 1, 1966, and supersede NASA Patent Waiver Regulations of August 27, 1964 (29 F.R. 12273– 12275), as of that date.

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JAMES E. WEBB, Administrator.