12273 Title 14-AERONAUTICS AND SPACE Chapter V-National Aeronautics Subpart 1 is revised in its entirety as follows: Reservation of license. 1245.109 Voidability of waivers. 1245.110 1245.111 1245.112 1245.113 Content of petitions. Processing of petitions. Waiver of foreign rights. 1245.114 Filing of patent applications. AUTHORITY: The provisions of this Part 1245 issued under 42 U.S.C. 2457(1). § 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 the 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 prescribes regulations under section 305 (f) of the Act for waiver of rights of the United States to inventions. In all other instances, title will vest in the United States. § 1245.101 Definitions. As used in this subpart: (a) "Contract" means any agreement or arrangement, and any subcontract thereunder, with the National Aeronautics and Space Administration (NASA) or another Government agency on NASA's behalf, including grants made by NASA under 42 U.S.C. 1891-1893. (b) "Contractor" means a party which has undertaken to perform work under a contract. (c) "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. (d) "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. § 1245.102 Applicability. This subpart applies to all inventions reduced to practice under conditions which may be conceived or first actually enabling the Administrator, NASA, to determine rights therein on behalf of the United States pursuant to section 305 of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457). § 1245.103 Policy. tion 305 (f) of the National Aeronautics In administering the provisions of sec(f)), NASA follows the basic policy and Space Act of 1958 (42 U.S.C. 2457 established by the President's memoran (a) Subject to the limitations in paragraphs (b) and (c) of this section, title is hereby waived to all inventions made in the performance of work under a specific contract if the contracting officer makes in writing each of the six findings set forth in the following subparagraphs (1) through (6) at the time of or prior to execution of the contract. (or (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 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 resive rights at the time of contracting spect to which the acquisition of exclumight confer on the contractor a preferred or dominant position. (4) The contract is not for services of the contractor for (1) the operation of a Government owned research or production facility or (ii) coordinating and directing the work of others. build upon existing knowledge or tech(5) The purpose of the contract is to processes, or methods for use by the nology to develop information, products, 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) The waiver provided in paragraph (a) of this section shall apply only 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. (c) The waiver set forth in paragraph (a) of this section is subject to the reservations and conditions set forth in §§ 1245.107-1245.109. § 1245.105 Waiver after contract execution but prior to invention reporting. (a) Where the contracting officer does not make the finding described in § 1245.104(a) at the time of or prior to execution of a specific contract, a petition for waiver of title to all inventions which may be made in the performance of work under such contract may be submitted by the contractor within 60 days after the contract has been executed. (b) Waiver of title to all inventions made in the performance of work under a specific contract will be granted prior to reporting thereof when the NASA Inventions and Contributions Board makes the findings set forth in § 1245.104(a). (c) The NASA Inventions and Contributions Board may consider, but will not be bound by, any findings by the contracting officer differing from those set forth in § 1245.104(a). § 1245.106 Waiver after reporting of inventions. (a) The provisions of this § 1245.106 apply to petitions for waiver of title to inventions which have been reported and which are not subject to the waiver of § 1245.104 or to a waiver granted pursuant to § 1245.105. (b) Waiver of title after reporting of inventions will not be granted where the NASA Inventions and Contributions 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 will be granted if the NASA Inventions and Contributions Board from the proffer of waiver pursuant to finds that§ 1245.106, an application for United States Letters Patent disclosing and claiming the invention, and include within the first paragraph of the specification of such application and any patent issuing thereon the following statement: (1) The contract under which the invention was made does not have as a principal purpose, is not in a field, and is not for the services specified in § 1245.104 (a) (1) through (4) and 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; or (2) Although the contract under which the invention was made has as a principal purpose, or is in a field, or is for the services specified in § 1245.104(a) (1) through (4) — (i) The making of the invention was not a primary object of the contract, and (ii) Waiver of title is a necessary incentive to call forth private risk capital and expense to bring the invention to the point of practical application. § 1245.107 Reservation of license. Each waiver of title shall be subject to the reservation of an irrevocable, nonexclusive, nontransferable, royalty-free 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) Each waiver of title shall be subject to the reservation, by the Administrator, NASA, of the right 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 taken effective steps within three years after a patent issues on the invention to bring the invention to the point of practical application or has made the invention available for licensing royalty-free or on terms that are reasonable in the circumstances; or (2) The contractor shows cause why he should retain the full benefits of waiver for a further period of time. (b) Each waiver of title shall be subject to the reservation, by the Administrator, NASA, of the right to require the granting of a license to any 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 either of the rights set forth in paragraphs (a) and (b) above is exercised, notice shall be given the contractor that he may show cause before the NASA Inventions and Contributions Board why he should not be required to grant such a license. § 1245.109 Voidability of waivers. (a) Each waiver of title shall be voidable at the option of the Administrator, NASA, unless the contractor shall: (1) File within eight months from the date of reporting of an invention subject to the waiver of § 1245.104 or a waiver pursuant to § 1245.105 or eight months 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.S.C. 2457). (2) Furnish to the Administrator, NASA, a copy of each patent application, domestic or foreign, filed on such invention together with identifying serial number and filing date promptly upon receipt thereof; (3) Execute and furnish to the Administrator, NASA, instruments fully confirmatory of the rights herein reserved by the Government; (4) In the event the contractor elects not to continue prosecution of any application filed on such invention, notify the Administrator, NASA, within sufficient time to allow assumption of prosecution by the Government, and deliver to the Administrator, 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) Convey to the Administrator, NASA, on written request, the contractor's entire right, title and interest in any foreign country in which the contractor has not filed an application on said invention within (i) 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 filing has been prohibited for security reasons; or (iii) Such longer periods as may be expressly approved by the Administrator, NASA. (6) Grant any license which the Administrator, NASA, may require to be granted pursuant to § 1245.108. (7) Report, upon written request not more often than annually, the commercial use that is being made or is intended to be made of the invention. § 1245.110 Content of petitions. (a) After the signing of the relevant contract or subcontract, or after the reporting of a given invention, a petition All petitions for waiver may be filed. for waiver of title shall be addressed to the Administrator, NASA, and shall include: (1) An identification of the pertinent contract by number and date; (2) A copy of the statement of work of the contract; (3) A specification of the kind of waiver requested and of the paragraph or paragraphs hereof under which the petitioner seeks to qualify for waiver; and (4) The signature of the petitioner or his authorized representative. (b) Petitions for waiver under § 1245.105. In addition to the information specified in paragraph (a) of this section, petitions for waiver prior to invention reporting shall state facts tending to show that the contract is of a type specified in § 1245.104 (a) and shall relate such facts to the statement of work. (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 name 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 may be submitted directly to the Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, D.C., 20546, or through the contracting officer to the Board. (b) Noticed of proposed recommendation. The NASA Inventions and Contributions Board will notify the petitioner: (1) Whether it proposes to recommend to the Administrator, NASA, that the petition be (i) Granted in the extent requested; (ii) Granted in an extent different from that requested; or (iii) Denied. (2) Of any conditions on which it proposes to recommend the granting of waiver; (3) Of the reasons for any recommended action adverse to or different from the waiver requested by the petitioner; and (4) That the petitioner may, within such period as the NASA Inventions and Contributions Board may set, but not less than 30 days, request either an oral hearing before or reconsideration by the NASA Inventions and Contributions Board. (c) Hearing. If the petitioner requests a hearing within the time set pursuant to paragraph (b) (4) of this section, the NASA Inventions and Contributions 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) (4) of this section, the NASA Inventions and Contributions 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 petitioner does not request a hearing or reconsideration during the period set for such action, or informs the NASA Inventions and Contributions 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, NASA. (2) After a hearing or reconsideration as provided in paragraph (c) or (d) of this section, the NASA Inventions and Contributions Board shall transmit to the Administrator, 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, 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 License to contractor. There is hereby granted to any contractor reporting an invention an irrevocable, nonexclusive, royalty-free l1cense 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. § 1245.113 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, 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 practice of the invention throughout the world by or on behalf of the United States or any agency thereof 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). § 1245.114 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 United States 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 the petition is ultimately denied and the petitioner assigns the application to the United States as represented by the Administrator, NASA. Effective date. The provisions of this subpart are effective September 28, 1964, and supersede NASA Patent Waiver Regulations of October 29, 1959 (24 F.R. 8788-8790) as amended August 28, 1962 (27 F.R. 8584) as of September 28, 1964, except that (a) any petition pending September 28, 1964, will be considered under the latter regulations unless withdrawn by the petitioner and (b) any petition received prior to October 20, 1964, will be considered under the latter regulations if specifically requested by the petitioner at the time of submission. Any petitions received on and after October 20, 1964, will be considered under the new revised Patent Waiver Regulations. JAMES E. WEBB, Administrator. [F.R. Doc. 64-8656; Filed, Aug. 26, 1964; 8:45 a.m.] NATIONAL AERONAUTICS AND SPACE ADMINISTRATION PETITIONER: Varian Associates NOnr 2611 (00) CONTRACT: Section 1245.106, NASA Patent Waiver Regulations (1964)--Incidental Commercial Utility-Identification of Relevant Field of Technology--Extent of Nongovernment-Funded Experience--Government as Principal Developer--Waiver as Effective Incentive--Point of Practical Application--Optical Magnetometers and Gradiometers--Magnetic Field Measuring Instruments--PETITION GRANTED FINDINGS AND RECOMMENDATION OF THE INVENTIONS AND CONTRIBUTIONS BOARD: STATEMENT OF FACTS: The Petitioner, Varian Associates, is a contractor of the National Aeronautics and Space Administration, under Contract NOnr 2611, (00). The petition was made for waiver of title of the United States in an invention entitled "Optical Magnetometers and Gradiometers," described in an attachment to the petition. The invention was made by Kenneth A. Ruddock, William E. Bell, Arnold L. Bloom, James T. Arnold, and Lynn R. Sarles, 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 February 24, 1965. 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). Although the invention can be utilized commercially in such areas, for example, as airborne geophysical surveys, detection of subterranean deposits, and plotting of magnetic fields and gradients, it is self-evident that it was not developed for use by the general public, but was specifically developed for use solely to detect the presence of magnetic fields applicable to the governmental space program. SECTION 1245.106(b)(2). No governmental regulations have been issued, nor can any be foreseen, which would specifically require the invention to be placed in general use. SECTION 1245.106(b)(3). The alkali vapor magnetometer of the invention is especially useful in exploring ore deposits and in measuring magnetic fields, and therefore has no apparent relationship to the field of public health or public welfare. SECTION 1245,106(b)(4). While the Petitioner indicates that the general line of business to which the invention is directed is that of "quantum electronic instruments," and further contends that it is a pioneer and leader in this field (submitting exhibits, including brochures and a list of patents as evidence) the field of technology of the invention is not considered sufficiently identified. Petitioner apears to define this field as "quantum electronics"; however, this definition is considered too broad in scope, and a more accurate definition would be "magnetic field measuring instruments". Although the Petitioner itself failed to present adequate information to show 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, the NASA technical evaluator supports such a finding by stating that many companies are engaged in the field of magnetic field measuring instruments, and has |