significant experience in this field outside

of

work funded by the Government, the NASA technical evaluator notes the existence of much competition by numerous companies engaged in private activity in the defined field. The evaluator further notes that electromechanical control systems are used in numerous manufacturing systems and in servo systems to control the operation of machine tools, and in other places where it is necessary to convert an electrical signal into mechanical motion. Therefore, the considerable competition indicated in the invention field would counter any otherwise dominant or preferred position the Petitioner might achieve from the acquisition of title to the present invention. The widespread nature of this competition is also considered to negate any finding that the Government has been the principal developer of the field.

The Board further expressly finds, as required by Section 1245.106(c), that in view of the Petitioner's plans and intentions, waiver of title would be an effective incentive to bring the invention to the point of practical application at the earliest practicable date. The Board finds that additional work appears to be required before the invention can be placed on the market, and that the Petitioner is considered to

have the experience, know-how, and capability to engage in this further development. Moreover, in support of a favorable finding under this subsection, the Petitioner points out that it had previously submitted a proposal incorporating the invention to another company, and that it is presently engaged in a company program involving a feasibility study applicable to the invention. This study is indicated as being preparatory to the submission of a second proposal to another division of the same company, the techniques of the present invention being directly applicable to the latter proposal, and appearing to constitute a distinct improvement over currently-used methods. In this connection, the Petitioner states that, in view of its present company program and its pending proposal, its plans and intentions are specifically to develop the invention to the point of practical application, provided its request for waiver of title is favorably considered.

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 June 1, 1966, and therefore RECOMMENDS THE GRANT OF THE PETITION.

by the highly developed state of the art. Specifically, there are numerous patents held by various private concerns, in addition to the 24 Bendix patents listed by Petitioner, that relate to this field. Therefore, it is apparent that the invention is not in a field of 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 would not confer on the Petitioner a preferred or dominant position.

The Board further expressly finds, as required by Section 1245.106(c), that, in view of Petitioner's plans and intentions, waiver of title would be an effective incentive to bring the invention to the point of practical application at the earliest practicable date. In support of this finding, the Petitioner has indicated specific plans and intentions to adapt the present invention for use in helicopter control systems, and, in addition, it is already working on the de

velopment of a throttle actuator system embodying the invention. Furthermore, Petitioner has stated that additional development of the invention is required, before its use in the above-noted applications may be achieved. Moreover, the Petitioner has indicated an intent to practice the invention, and is currently engaged in developing markets therefor. In this regard, it is noted that the Petitioner has been developing sales outlets for devices of this type over a 20-year period, during which time it has undoubtedly achieved competence in the invention field. Thus, waiver of title would encourage Petitioner to bring to fruition these plans for the commercial development of the invention.

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 June 1, 1966, and therefore RECOMMENDS THE GRANT OF THE PETITION.

PETITIONER: California Institute of Technology

CONTRACT: NAS 7-100

INVENTION: Burrowing Apparatus

STATEMENT OF FACTS: The Petitioner, CALTECH, is a contractor of the National Aeronautics and Space Administration, under Contract NAS 7-100. The petition was made for waiver of title of the United States in an invention entitled "Burrowing Apparatus," described in an attachment to the petition. The invention was made by Ronald F. Scott, Earle A. Howard, and George M. Hotz, 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 October 3, 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 (1966), (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 present invention relates to a remote-controlled burrowing apparatus for use in soils and the like, and which has the capability of performing the function of a self-propelled penetrometer capable of effecting its own penetration into the soil at locations remote from a central control and recording or telemetry station. The inventive apparatus was developed directly under a govern

mental contract involving a Surveyor Lander Project, having as a part of its objectives the scientific observation and measurement of the lunar surface and the telemetry of the data thus acquired to the Earth for analysis. Therefore, it appears self-evident from a review of the pertinent contract provisions to which the present development is directly related that the invention was neither developed for, nor it it directly related to, any governmental program for creating, developing, or improving products, processes, or methods for use by the general public.

SECTION 1245.106(b)(2). No governmental regulations have been issued requiring use of the inventive penetrometer by the general public. Moreover, since the present penetrometer device was developed particularly to analyze the lunar surface specifically and only for the advancement of the governmental space program, it is not foreseeable that the Government would issue future regulations requiring public use of the invention.

SECTION 1245.106(b)(3). The invention is useful in exploration and penetration of soil deposits, and therefore has no apparent direct relationship to the field of public health or public welfare.

SECTION 1245.106(b)(4). The field of science or technology involved in the present invention is considered to be that of soilpenetrating devices. Private industry has acquired vast experience and provided a multitude of devices capable of performing numerous soil-penetrating functions, as is readily apparent from only a cursory review of many prominent vocations or fields of endeavor, including agriculture, building,

mining, petroleum, and general geological studies. Hence, Petitioner's allegation that the Government has not been the principal developer or funder of the field is considered to be an uncontrovertible statement of fact. In view of the fact that this invention is in a field of technology that includes many different devices and techniques for performing similar functions, the acquisition of exclusive rights would not confer a preferred or dominant position on the Petitioner.

The Board further expressly finds, as required by Section 1245.106(c), that in view of the Petitioner's plans and intentions, waiver of title would be an effective incentive to bring the invention to the point of practical application at the earliest practicable date. Petitioner asserts that the invention is of the type that will require large amounts of private risk capital to bring it to the point of practical application in ordinary commerce. Petitioner, through documents attached to the petition, clearly establishes that it has had, and now has in existence, an active licensing program expressly devoted to introducing into the

ex

commercial field new items of commerce, through granting licenses negotiated with appropriate degrees of of protective clusivity. Furthermore, Petitioner has established that its licensing program has been successful in introducing new products into the stream of commerce, and that its success can be attributed, at least in part, to its capability to grant licenses with the degree of exclusivity necessary to induce expenditures of risk capital in bringing inventions to the public. Thus, in view of Petitioner's past efforts and experience, coupled with its purposes in acquiring waiver of title, as well as its expressed willingness to negotiate a license, should waiver be granted, the effective-incentive requirement of this Section is well established.

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 June 1, 1966, and therefore RECOMMENDS THE GRANT OF THE PETITION.