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NATIONAL AERONAUTICS AND SPACE ADMINISTRATION

PETITIONER: Midwest Research Institute

CONTRACT: INVENTION:

NAS 8-1540

Inorganic Solid Film Lubricant (Aluminum Phosphate)

Section 1245.106, NASA Patent Waiver Regulations (1964)--Incidental Commercial Utility-Government Funding v. Private Funding--Possibility of Preference or Dominance-Competition in Field--Identification of Field of Technology--Primary Developer of Field--Waiver as Effective Incentive--"Point of Practical Application"--Technical Competence of Petitioner--Inorganic Solid Film Lubricant (Aluminum Phosphate)-Lubricant Compositions and Apparatus--PETITION DENIED

FINDINGS AND RECOMMENDATION OF THE INVENTIONS AND CONTRIBUTIONS BOARD:

STATEMENT OF FACTS: The Petitioner, Midwest Research Institute, is a contractor of the National Aeronautics and Space Administration, under Contract NAS 8-1540. The petition was made for waiver of title of the United States in an invention entitled "Inorganic Solid Film Lubricant (Aluminum Phosphate)," described in an attachment to the petition. The invention was made by Donald Gaddis and Vernice Hopkins, 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 May 28, 1965, and reconsidered on November 29, 1965.

The Board expressly finds that waiver of title is not proscribed by any of the enumerated paragraphs of Section 1245.106(b) of the NASA Patent Waiver Regulations (1964). The reasons for the Board's findings are stated below.

SECTION 1245.106(b)(1). The present invention relates to an improved inorganic solid film lubricant providing a low coefficient of friction, compatibility with liquid oxygen, and lubricity maintained over a wide temperature range and under ultrahigh vacuum conditions, for particular application to the space environment. Although the inventive lubricant is also applicable to the atmospheric environment, and, as such, offers potentially wide commercial application, it actually resulted from a Governmental program designed to develop a

lubricant composition particularly suitable for effective and prolonged space use; accordingly, the invention is intended solely for use by the Government in its space program.

SECTION 1245.106(b)(2). Since the invention relates to an improved lubricant composition intended for use under the contract solely in the Governmental space program, it appears obvious that the Government will not require its use by the public by Governmental regulations.

SECTION 1245.106(b)(3). The present invention involves an improved lubricant composition having as its principal purpose improved lubrication, particularly under the vacuum conditions of the space environment, of two mating steel parts, with little or no effect on the physical properties of the substrate material, and therefore of no apparent relation to the health or welfare of members of the public.

SECTION 1245.106(b)(4). While the Petitioner has presented no specific information regarding the amount of either company or Government funds expended in developing the invention field, defined as being lubricant compositions, it is considered well-established that not only have considerable significant previous experience and activity been accomplished in the defined invention field through various company-funded programs, but also that the field has not been largely funded by the Government. Moreover, in view of the afore-mentioned considerable previous activity in the invention field through privately-financed sources,

significant competition is also indicated therein, and any finding that the Petitioner would acquire a position of control through the exclusive rights inherent in the present request, should waiver be granted, would be considered negated.

However, the Board further expressly finds that although waiver of title is not proscribed by Section 1245.106(b), it is precluded by Section 1245.106(c), in that the effective-incentive requirement of Section 1245.106(c)(1) cannot be met. The reasons for the Board's findings are stated below.

SECTION 1245.104(a)(1). The contract involved in the present invention relates to the continuation of a previously-started vacuum lubrication program, and requires the continuation of research, development, and evaluation of solid film lubricant materials and processes, as well as the development of improved inorganic binder materials. The contract further requires both development of new techniques for application of solid film lubricants to machine elements, and new ultrahigh vacuum test equipment. The principal purpose of these requirements is to develop improved solid film lubricants for lubricating machine elements, such as ball and roller bearings, gears, and journals and bushings, to be utilized in the high, vacuum conditions involved in space flight and orbiting of complex space vehicles. Therefore, it is considered obvious that the instant contract was designed to produce a product and process for use only in the Governmental space program, and not for commercial use or application to benefit the general public.

SECTION 1245.104(a)(2). The purpose of the present contract is to develop an improved solid film lubricant and process for application to various machine elements being utilized in space flight and orbiting vehicles under extreme and hightemperature vacuum conditions, and thus would appear to be obviously not related in any way to the field of health or welfare.

SECTION 1245.104(a)(3). Although not specifically identified in the petition, it appears manifest that the field of science or technology involved in the present contract may be defined as lubricant compositions and apparatus for applying the same. While the Petitioner itself has presented no information specifically meeting the requirements of this subsection, it is well recog

nized that lubricant compositions and apparatus to apply the same to various elements is a relatively old field of technology, in which extensive and widespread experience has been achieved through the expenditure of quite significant amounts of private monies, and, accordingly, the defined contract field is considered not to have been primarily developed through the expenditure of Government monies. Moreover, in view of the considerable industrial competition indicated by the prolonged private experience considered to be currently existing in the contract field, acquisition of exclusive rights by the Petitioner would not appear to place it in any position of advantage over its competitors in the field.

SECTION 1245.104(a)(4). A review of the pertinent provisions of the contract reveals that the Petitioner shall use its own personnel, facilities, and materials, and shall exert its best efforts to perform the research, development, and and evaluation of solid film lubricant materials and processes required under the contract.

With regard to the requirement of Section 1245.106(c)(1) that waiver of title be an effective incentive to bring the invention to the point of practical application at the earliest practicable date, the information in support thereof is deemed insufficient. For instance, petitioner's statements that title would "more readily stimulate the development of this invention to the point of practical application at the earliest date," and that it has "won wide repute in the collection, organization and dissemination of information in specific fields," while of a laudatory nature, are inadequate to show the "effective incentive" required under this subsection. To support a favorable determination, information must be submitted to show a capability and readiness of the Petitioner to bring the invention to the market place either through its own organization or by means of an active licensing program or a prospective licensing arrangement, plus a previous history of developing its inventions in this manner.

In its efforts to establish that it has the capability to bring the invention to the point of practical application, as that term is defined in the waiver regulations, the Petitioner notes that it has the necessary facilities and experienced personnel further

to develop these inventions and to "determine practical areas of application". Moreover, the Petitioner further indicates its some eleven years of continuous research and development in the field of lubricants and the "mechanism of friction," and it submits an exhibit of a list of contracts in support thereof. However, while it is readily apparent that the foregoing information provides support for the Petitioner's technical competence, which is not in issue, it is not considered to support a finding of an inherent organizational capability by the Petitioner itself to develop the invention up to and including the manufacture thereof, as is inherently required under the waiver regulations. Furthermore, a general program merely to search for uses and applications of new technology, or an active policy to seek organizations that can benefit from the further development of products and processes by the Petitioner, likewise fails to supply the requisite capability within the Petitioner's own organization to perform the necessary development of the invention.

Finally, the Petitioner has submitted information of an agreement with the Battelle Development Corporation to promote the development and licensing of Petitioner

owned inventions. However, it refers to this agreement only as another "existing avenue of further development and exploitation"; moreover, this agreement states only that the Petitioner "may" submit its inventions for evaluation. It is under no obligation to submit any of its inventions for further development, and, more important, the Petitioner has not in fact indicated any intention, should waiver be granted, of submitting the particular invention involved in the present case to the Battelle Development Corporation for evaluation. Since the Petitioner has indicated no other method by which it proposes to develop the invention to the point of practical application at the earliest practicable date, such as, for example, through use of any other prospective licensee, the "effective- incentive" requirement of this subsection appears to be clearly not established.

On the basis of all the above-enumerated findings, the Inventions and Contributions Board concludes that the best interests of the United States would not be served by waiving title under Section 1245.106 of the NASA Patent Waiver Regulations of August 27, 1964, and therefore RECOMMENDS THE DENIAL OF THE PETITION.

NATIONAL AERONAUTICS AND SPACE ADMINISTRATION

PETITIONER: Midwest Research Institute

CONTRACT: INVENTION:

NAS 8-1540

Inorganic Solid Film Lubricant (Potassium Silicate
and Sodium Fluoride)

Section 1245.106, NASA Patent Waiver Regulations (1964)--Incidental Commercial Utility--Government Funding v. Private Funding--Possibility of Preference or Dominance--Competition in Field--Identification of Field of Technology--Primary Developer of Field--Waiver as Effective Incentive--"Point of Practical Application"--Technical Competence of Petitioner--Inorganic Solid Film Lubricant (Potassium Silicate and Sodium Fluoride)--Lubricant Compositions and Apparatus--PETITION DENIED

FINDINGS AND RECOMMENDATION OF THE INVENTIONS AND CONTRIBUTIONS BOARD:

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Midwest Research Institute, is a contractor of the National Aeronautics and Space Administration, under Contract NAS 8-1540. The petition was made for waiver of title of the United States in an invention entitled "Inorganic Solid Film Lubricant (Potassium Silicate and Sodium Fluoride)," described in an attachment to the petition. The ivention was made by Donald Gaddis and Vernice Hopkins, 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 peti tion was considered by the Inventions and Contributions Board on May 28, 1965, and reconsidered on November 29, 1965.

The Board expressly finds that waiver of title is not proscribed by any of the enumerated paragraphs of Section 1245.106(b) of the NASA Patent Waiver Regulations (1964). The reasons for the Board's findings are stated below.

SECTION 1245.106(b)(1). The present invention relates to an improved inorganic solid film lubricant providing a low coefficient of friction, compatibility with liquid oxygen, and lubricity maintained over a wide temperature range and under ultrahigh vacuum conditions, for particular application to the space environment. Although the inventive lubricant is also applicable to the atmospheric environment, and, as such, offers potentially wide commercial application, it actually resulted from a Govern

mental program designed to develop a lubricant composition particularly suitable for effective and prolonged space use; accordingly, the invention is intended solely for use by the Government in its space program.

SECTION 1245.106(b)(2). Since the invention relates to an improved lubricant composition intended for use under the contract solely in the Governmental space program, it appears obvious that the Government will not require its use by the public by Governmental regulations.

SECTION 1245.106(b)(3). The present invention involves an improved lubricant composition having as its principal purpose improved lubrication, particularly under the vacuum conditions of the space environment, of two mating steel parts, with little or no effect on the physical properties of the substrate material, and therefore of no apparent relation to the health or welfare of members of the public.

SECTION 1245.106(b)(4). While the Petitioner has presented no specific information regarding the amount of either company or Government funds expended in developing the invention field, defined as being lubricant compositions, it is considered well-established that not only have considerable significant previous experience and activity been accomplished in the defined invention field through various company-funded programs, but also that the field has not been largely funded by the Government. Moreover, in view of the afore mentioned considerable previous activity in

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