the invention field through through privatelyfinanced 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 in 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 temperature and high 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 informa

mation specifically meeting the requirements of this subsection, it is well recognized 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 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 de

velopment 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.

PETITIONER: CONTRACT:

United Aircraft Corporation NAS 9-3906

STATEMENT OF FACTS: The Petitioner, United Aircraft Corp., is a contractor of the National Aeronautics and Space Administration, under contract NAS 9-3906. The petition was submitted to NASA within the time allowed by the Regulations for consideration of waiver of title to all inventions made or that may be made under the aboveidentified contract, and was considered by the Inventions and Contributions Board on June 25, 1965.

The Board, having duly considered the allegations and claims of the petition, expressly makes the findings under 1245.104(a) of the NASA Patent Waiver Regulations (1964), (which Section, in its entirety, is hereby expressly incorporated by reference), as required by Section 1245.105(b); concludes that the Petitioner fully satisfies each of the criteria specifically enumerated by the cited Section as a condition; further concludes that the interests of the United States would best be served by waiving title under Section 1245,105 of the Regulations, and therefore RECOMMENDS THE GRANT OF THE PETITION. The reasons for the Board's findings are stated below, corresponding in each instance to the respective criterion set forth in each subsection of Section 1245.104(a) of the Regulations.

SECTION 1245.104(a)(1). The principal purpose of the contract is a study to establish the feasibility and to define the pertinent parameters involved in space shutdown and restart of fuel cell modules.

SECTION 1245.104(a)(2). Since the contract involves an analysis of fuel-cell power plants for shutdown and restart in space,

and developing procedures and designs to accomplish these ends, its principal purpose is therefore not directly concerned with public health or public welfare.

SECTION 1245.104(a)(3). The field of science or technology involved in this contract is fuel cells. Substantial work in this field has occurred over many years in Europe and Japan, as well as in the United States, where several companies are active and competitive in the development and manufacture of fuel cells. It is highly unlikely that the effort to be expended under this contract ($83,000) would result in the contractor's achieving a preferred or dominant position in this field.

SECTION 1245.104(a)(4). The contract requires the Petitioner to furnish the necessary personnel, facilities, and equipment. SECTION 1245.104(a)(5). The contract requires a feasibility study, and the development of processes and designs to accomplish shutdowns and restarts in fuel cells in space operations, and contemplates building on existing knowledge to develop an improved fuel-cell power supply.

SECTION 1245.104(a)(6). The contractor has acquired technical competence, as demonstrated by its patent position, in the field of technology of the contract, fuel cells, which field is directly related to the contractor's established nongovernmental commercial position in fuel cells. The contractor has expended substantial funds in the development of fuel cells for commercial application, and has made sales of such devices in the commercial market.