PATENTS, DATA, AND COPYRIGHTS

tional Aeronautics and Space Act of 1958 (42 U.S.C. 2457(a)) (hereinafter called the Act" ), and the above presumption shall be conclusive unless at the time of reporting the Reportable Item the Contractor submits to the Contracting Officer a written statement containing supporting details, demonstrating that the Reportable Item was not made in the manner specified in paragraph (1) or (2) of Section 305 (a) of the Act.

(ii) Regardless of whether title to a given Subject Invention would otherwise be subject to an advance waiver or is the subject of a petition for waiver, the Contractor may nevertheless file the statement described in paragraph (b) (1) (1) above. The Administrator will review the information furnished by the Contractor in any such statement and any other available information relating to the circumstances surrounding the making of the Subject Invention and will notify the Contractor whether the Administrator has determined that the Subject Invention was made in the manner specified in paragraph (1) or (2) of Section 305(a) of the Act.

(2) Property Rights in Subject Invention. Each Subject Invention for which the presumption of paragraph (b) (1) (i) of this clause is conclusive, or for which there has been a determination that it was made in the manner specified in paragraph (1) or (2) of Section 305 (a) of the Act, shall be the exclusive property of the United States as represented by the National Aeronautics and Space Administration unless the Administrator waives all or any part of the rights of the United States, as provided in paragraph (b) (3) below.

(3) Waiver of Rights.

The Contractor, and where appropriate the employee-inventor of the Contractor, may petition the Administrator for waiver of greater rights to any Subject Invention than the nonexclusive license granted by paragraph (d) of this clause, in accordance with the NASA Patent Waiver Regulations, 14 CFR Section 1245, Subpart 1.

(c) Minimum Rights Reserved by the Government. (1) With respect to each Subject Invention for which a waiver of rights is applicable pursuant to 14 CFR Section 1245, Subpart 1, the Government shall reserve:

(i) An irrevocable, nonexclusive, nontransferrable, royalty-free license for the practice of such invention throughout the world by or on behalf of

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the United States or any foreign government pursuant to any treaty or agreement with the United States;

(ii) Such other rights as set forth in 14 CFR 1245.107.

(2) Nothing contained in this paragraph (c) shall be deemed to grant to the Government any rights with respect to any invention other than Subject Invention.

1245.204 (a)

granted,

a

pursuant to

non

(d) Minimum Rights to the Contractor. (1) The Contractor is 14 CFR a revocable, exclusive, royalty-free license in each patent application filed in any country on a Subject Invention reported in accordance with paragraph (e) of this clause, and in any resulting patent in which the Government acquires title. The license shall extend to the Contractor's domestic subsidiaries and affiliates, if any, within the corporate structure of which the Contractor is a part and shall include 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. The license shall be transferrable only with the approval of the Administrator except when transferred to the successor of that part of the Contractor's business to which the invention pertains.

(2) The Contractor's nonexclusive domestic license granted pursuant to paragraph (d)(1) of this clause may be revoked or modified by the Administrator to the extent necessary to achieve the earliest practical application of the Subject Invention pursuant to an application for an exclusive license submitted in accordance with 14 CFR 1245.207. This license shall not be revoked in that field of use and/or the geographical areas in which the Contractor has achieved practical application and continues to make the benefits of the invention reasonably accessable to the public. The Contractor's nonexclusive license in any foreign country granted pursuant to paragraph (d) (1) of this clause may be revoked or modified at the discretion of the Administrator to the extent the Contractor or its domestic affiliates have failed to achieve practical application in that foreign country.

of the

(3) Before revocation or modification license, pursuant to paragraph (d) (2) clause, the Contractor shall be furnished a written notice of intention to revoke or modify, and

of this

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the Contractor shall be allowed 30 days (or such other time as may be allowed by the Administrator for good cause shown by the Contractor) after the notice to show cause why the license should not be revoked or modified. The Contractor shall have the right to appeal, in accordance with 14 CFR 1245.211(c), any decision concerning the revocation or modification of its license.

(e) Reportable Item Identification and Reports. (1) The Contractor shall furnish the Contracting Officer:

(i) A full and complete technical report for each Reportable Item within six (6) months after conception or first actual reduction to practice, whichever occurs first in the performance of work under the contract. But, in any event, for Subject Inventions, such report shall be furnished prior to any on sale, public use, or publication known to the Contractor. The report shall identify the contract and the inventor or innovator and shall be sufficiently complete in technical detail and appropriately illustrated by sketch or diagram to convey to one skilled in the art to which the Reportable Item pertains, a clear understanding of the nature, purpose, operation, and to the extent known, the physical, chemical, biological, or electrical characteristics of the item;

(ii) Interim reports, at least every twelve (12) months from the date of the contract, listing Reportable Items for that period and certifying that all Reportable Items have been disclosed or that there are no such Reportable Items;

(iii) A final report within three (3) months after completion of the contract work, listing all Roportable Items or certifying that there were no such Reportable Items.

(2) The Contractor shall furnish, upon written request by the Contracting Officer, additional technical and other information available to the Contractor as is necessary for the preparation of a patent application and for prosecution patent application, and in addition shall execute or endeavor to secure execution of all lawful documents determined by the Administrator to be necessary for the preparation and prosecution of application for Letters Patent covering any Subject Invention.

(3) The Contractor agrees that the Government may use, duplicate, and disclose, in whole or in part, in any manner and for any purpose whatsoever, and have others so do, all reports of

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Reportable

Items and all other reports and papers furnished or required to be furnished pursuant to this clause.

(f) Subcontracts.

(1) Unless otherwise authorized or directed by the Government Contracting Officer, the Contractor shall,

(i) Include this New Technology Clause (Short Form), modified to identify the parties, in any subcontract hereunder for the performance of experimental, developmental, research, design, or engineering work;

(ii) Promptly notify the Contracting Officer of the award of any such subcontract by providing him with a copy of the subcontract and any amendments thereto.

9.107-7 Foreign Contracts.

A Patent Rights clause allocating the property rights in inventions shall be included in every contract having, as one of its purposes, the conduct of experimental, developmental, or research work which is to be performed outside the United States, its possessions, or Puerto Rico. The clauses of 9.107-5 or 9.107-6 are not appropriate, and a substitute or modified clause is to be used after consultation with the installation patent counsel to meet the requirements peculiar to the foreign procurement.

9.107-8 Patent Rights Under Product Improvement Programs or Independent Research and Development Programs.

When NASA under its established procedures provides, as an item in the computation of overhead, financial support to (i) a contractor's product improvement program, or (ii) a contractor's independent research and development program, the inventions resulting from such programs are not subject to the " New Technology clause (or other patent rights clause) merely by virtue of the provision of such financial support. The clause set forth below may be included at the request of the contractor in the schedule of a cost-reimbursement type contract wherein NASA is providing such support to the contractor's product improvement program or independent research and development program.

NASA PROCUREMENT REGULATION

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INVENTIONS MADE UNDER CONTRACTOR'S INDEPENDENT RESEARCH AND DEVELOPMENT PROGRAMS (NOVEMBER 1976)

Any invention made in the performance of any work by the Contractor under the Contractor's own product improvement program, or the Contractor's independent research and development program, even though supported by an allowance of costs for such program as a part of the overhead costs thereof, will not be subject to the " New Technology clause (regardless of form) or any other patent rights clause included in this contract unless said work is identified in writing as being required in the performance of this contract.

TOL

9.107-9 Procurement Using Funds Transferred Or Received From, Another Government Agency. (a) Whenever NASA requests another Government agency to perform work of a type defined in 9.107-4(a) (1), and unless special agreements relating to patent rights exist between NASA and such other agency, the contracting officer shall determine whether such agency contemplates contracting for such work or performing the work inhouse. If it is determined that the other agency may contract for such work or a portion thereof, the following is to be provided to the agency along with the instrument requesting the agency to perform the work:

(1) Names and addresses of NASA New Technology Representative and Patent Representative;

(2) Instructions pursuant to 9.107-4 (a) to include an appropriate New Technology clause in any contract which it awards for the performance of experimental, developmental, research, design, engineering, or test and evaluation work for the purpose of fulfilling the NASA request;

(3) Instructions to furnish the NASA New Technology Representative with the name and address of the office or unit within the agency having technical cognizance of the work to be performed under any contract of the type referred to in subparagraph (2) above;

(4) A request to supply a copy of any contract, of the type referred to in subparagraph (2) above, to the NASA New Technology Representative;

(5) Instructions for contractors to forward promptly, through the agency contracting officer, requests and petitions for waiver to the Chairman, Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, DC 20546; and

(6) Instructions to forward promptly to the NASA

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