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the patent and for which an exclusive be by express written instrum.en's. No

Title 14-AERONAUTICS AND license is not in force, or

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(2) The public interest would be served by the expeditious granting of a nonexclusive license for practice of the invention by the public.

(e) The "Administrator" means the Administrator of the National Aeronautics and Space Administration, or his designee.

(f) "Government" means the Government of the United States of America.

(E) The "Inventions and Contribu-
tions Board" incans the NASA Inven-
tions and Contributions Board estab-

lished by the Administrator of NASA
within the Administration in accordance
with section 305 of the National Aero-
nautics and Space Act of 1958
amended (42 U.S.C. 2457).
§ 1215.202

as

Basic considerations.
(n) Much of the new technology
resulting from NASA sponsored re-
search and development in aeronautical
and space activities has application in
other fields. NASA has special author-
ity and responsibility under the Na-
tional Aeronautics and Space Act of
1958, as amended (42 U.S.C. 2451), to
provide for the widest practical dis-
semination and utilization of this new

AU.HORITY: The provisions of th: Subpart technology. In addition, NASA has been

2 sued under 42 U.S.C. 2457, 2173 (b) (3).

§ 1245.200 Scope of subpart.

This Subpart 2 prescribes the terms, conditions, and procedures for licensing

entions covered by US. patents and patent applications for which the Administrator of the National Aeronautics and Space Administration holds title on behalf of the United States.

$ 1215.201 Definitions.

For the purpose of this subpart, the follow in definitions apply:

Invention" means an invention coved by a US patent or patent appllcation for which the Admirustrator of NASA holds title on behalf of the United States and which is designated by the Administration as appropriate for the Krant of license (s) in accordance with this subpart.

(b) To practice an invention" means to make or have made, use or have used, sell or have sold, or otherwise dispose of According to law any machine, article of manufacture or composition of matter physically embodying the invention, or to use or have used the process or method comprising the invention.

(c) "Practical application" means the manufacture in the case of a composition of inatter or product, the use in the case of a process, or the operation in the case of a machine, under such conditions as to establish that the invention is being utilized and that its benefits are reasonably accessible to the public.

(d) "Special invention" ineans any invention designated by the NASA Assistent General Counsel for Patent Matters to be subject to short-form licensing procedures. An invention may be designated as a special invention when a determination is made that:

(1) Practical application has occurred and is likely to continue for the life of

given unique requirements to protect
the inventions resulting from NASA
activities and to promulgate licensing
regulations to encourage commercial
use of these inventions.

(b) NASA-owned inventions will best
serve the interests of the United States
when they are brought to practical ap-
plication in the shortest time possible.
Although NASA encourages the non-
exclusive licensing of its inventions to
promote competition and achieve their
widest possible utilization, the com-
mercial development of certain in-
ventions calls for a substantial capital
investment which private manufac-
turers may be unwilling to risk under
a nonexclusive license. It is the policy
of NASA to seek exclusive licensees
when such licenses will provide the
necessary incentive to the licensee to
achieve carly practical application of
the invention.

(c) The Administrator, in determinIng whether to grant an exclusive license, will evaluate all relevant information submitted by applicants and all other persons and will consider the necessity for further technical and market development of the inve..tion, the capabilities of prospective licensees, their proposed plans to undertake the required investment and development, the impact on competitors, and the benefits of the license to the Government and to the public. Preference for exclusive license shall be given to U.S. citizens or companies who intend to manufacture or use, in the case of a process, the invention in the United States of America, its territories and possessions. Consideration may also be given to assisting small businesses and minority business enterprises, as well as economically depressed, low income and labor surplus areas.

(d) All licenses for inventions shall

license shall be granted either expressly or by implication, for a NASA invention except as provided for in $$ 1245.203 and 1245.204 and in any existing or future treaty or agreement between the United States and any foreign government.

(c) Licenses for inventions covered by NASA-owned foreign patets and patent applications shall be grated in the NASA Foreign accordance with Patent Licensing Regulations (1245.4). Licenses for practical appli§ 1215.203 cation of inventions.

(a) General. As an incentive to encourage practical application of inventions, licenses will be granted to responsible applicants according to the circumstances and conditions set forth in this section.

(b) Noncxclusive licenses. (1) Each invention will be made available to responsible applicants for nonexclusive, revocable licensing in accordance with § 1245.206, consistent with the provisions of any existing exclusive license.

(2) The duration of the license shall be for a period as sp cified in the license.

(3) The license all require the 11censce to achieve the practical application of the invention and to then practice the invention for the duration of the license.

(4) The license may be granted for all or less than all fields of use of the invention and throughout the United States of America, its territories and possessions, Puerto Rico, and the District of Columbia, or in any lesser geographic portion thereof.

(5) The license shall extend to the subsidiaries and affiliates of the licensee and shall be nonassignable without approval of the Administrator, NASA, except to the successor of that part of the licensee's business to which the invention pertains.

(c) Short-form nonexclusive licenses A nonexclusive, revocable license for a special invention, as defined in 1245.201 (d), shall be granted upon written request, to any applicant by the Patent Counsel of the NASA installation having cognizance of the invention.

(d) Exclusive licenses. (1) A limited exclusive license may be granted on an invention available for such licensing provided that:

(1) The Administrator has determined that: (a) The invention has not been brought to practical application by a nonexclusive licensee in the fields of use or in the geographical locations covered by the application for the exclusive 11cense, (b) practical application of the invention in the fields of use or geographi cal locations covered by the application for the exclusive license is not likely to be achieved expeditiously by the further funding of the invention by the Govern ment or under a nonexclusive license requested by any applicant pursuant to these regulations, and (c) the exclusive license will provide the necessary incentive to the licensee to achieve the practlcal applicatior. of the invention; and

(ii) Either a notice pursuant to

$124 205 list the invention as avall

ble for licencang has been published in the FEDERAL GRIER for at least 9 month or a patent cover the invention hn. bea asued for at least 6 monte, However, a limited exclusive 11

cense may granted prior to the periods specified above it the Administrator determines that the public interest will best be served by the earlier grant of an exclusive license.

2) The license may be granted for all or less then all felds of use of the invention, and throughout the United States of America, its territories and To sessions, Puerto Rico, and the District of Columbia, or in any lesser geographic portion thereof.

3 The exclusive period of the license shall be negotiated, but shall be for less thin the terminal portion of the patent, and shall be related to the period necessary to provide a reasonable incentive to invest the necessary risk capital.

(4) The license shall require the 1censee to practice the invention within a period specified in the license and then to achieve practical application of the Invention.

The lense shall require the 11censee to expend a specifled minimum sum of money and for to take other speclfed actions, within indicated period (s) aster the effective date of the license, nan efort to achieve practical applition of the invention.

5 The cense shall be subject to at fest an artesecable royalty-free right of the Government of the United States to practice and have practiced the inven

n throughout the world by or on behef of the Government of the United States and on behalf of any foreign government pursuant to any existing or future treaty or agreement with the United States.

(7 The license may reserve to the Administrator, NASA, under the following circumstances, the right to require the granting of a sublicense to responsible applicant(s) on terms that are considered reasonable by the Administrator, taking into consideration the current Loyalty rates under similar patents and other pertinent facts: (1) To the extent that the invention is required for public use by Government regulation, or (1) as may be necessary to fulfill health or safety needs, or (1) for other purposes stipulated in the license.

(8) The license shall be nontransferable except to the successor of that part of the licensee's business to which the invention pertains.

(9) Subject to the approval of the Administrator, the licensee may grant sublicenses under the license. Each sublicense granted by an exclusive licensee shall make reference to and shall provide that the sublicense is subject to the terms of the exclusive license including the rights retained by the Government under the exclusive license. A copy of each sublicense shall be furnished to the Administrator.

(10) The license may be subject to such other reservations as may be in the public interest.

$12 15.204 Other licenses.

(a) License to contractor. There is

hereby granted to the contractor report-
ing an invention made in the perform
auce of work under a contract of NASA
in the manner specified in section 305(a)
(1) or (2) of the National Aeronautics
and Space Act of 1958 as amended (42
... 2457(a) (1) or (2)), a revocable,
nonexclusive, royalty-free license for the
practice of such invention, 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.
(b) Miscellaneous licenses. Subject to
any outstanding licenses, nothing in this
subpart 2 shall preclude the Administra-
tor from granting other licenses for in-
ventions, when he determines that do so
would provide for an equitable distribu-
tion of rights. The following exemplify
circumstances wherein such licenses may
be granted:

(1) In consideration of the settlement
of an interference:

(2) In consideration of a release of a claim of infringement; or

(3) In exchange for or as part of the
consideration for a license under ad-
versely held patent(s).

§ 1245.205 Publication of NASA inven-
tions available for license.

(a) A notice will be perodically pub-
lished in the FEDERAL REGISTER listing in-
ventions available for licensing. Abstracts
of the inventions will also be published
in the NASA Scientific and Technical
Acrospace Reports (STAR) and other
NASA publications.

(b) Copies of pending patent applica-
tions for inventions abstracted in STAR
may be purchased from the National
Technical Information Service, Spring-
fleld, Va. 22151.

§ 1245.206 Application for nonexclusive
license.

(a) Submission of application. An ap-
plication for nonexclusive license under
§ 1245.203(b) or a short-form nonexclu-
sive license for special inventions under
§ 1245.203 (c) shall be addressed to the
NASA Patent Counsel of the NASA in-
stallation having cognizance over the
NASA invention for which a license is

desired or to the NASA Assistant Gen

eral Counsel for Patent Matters.

(b) Contents of an application for nonexclusive license. An application for nonexclusive license under § 1245.203(b) shall include:

(1) Identification of invention for which license is desired, including the NASA patent case number, patent application serial number of patent number, title and date, if known;

(2) Name and address of the person, company or organization applying for license and whether the applicant is a U.S. citizen or a U.S. corporation;

(3) Name and address of representative of applicant to whom correspond ence should be sent;

(4) Nature and type of applicant's business;

(5) Number of employees;

(6) Purpose for which license is desired;

(7) A statement that contains the applicant's best knowledge of the extent to which the invention is being practiced by private industry and the Government;

(8) A description of applicant's capability and plan to undertake the development and mketing required to achieve the practical application of the invention, including the geographical location where the applicant plans to manufacture or use, in the case of a process, the invention; and

(3) A statement indicating the minito be licensed. mum term of years the applicant desires

(c) Contents of an application for a short-form nonexclusive license. An application for a short-form nonexclusive license under $1245.203(c) for a special invention shall include:

(1) Identification of invention for which license is desired, including the NASA patent case number, patent application serial number or patent number, title and date, if known;

(2) Name and address of company or organization applying for license; and (3) Name and address of representative of applicant to whom correspondence should be sent.

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(a) Submission of application. An application for exclusive license under § 1245.203 (d) may be submitted to NASA at any time. An application for exclusive license shall be addressed to the NASA Assistant General Counsel for Patent Matters.

(b) Contents of an application for exclusive license. In addition to the requirements set forth in § 1245.206(b), the application for an exclusive license shall include:

(1) Applicant's status, if any, in any one or more of the following categories: (i) Small business firm:

(ii) Minority business enterprise; (iii) Location in a surplus labor area: (iv) Location in a low-income urban area; and

(v) Location in an area designed by the Government as economically depressed.

expenditure, and other acts which the (2) A statement indicating the time, applicant considers necessary to achieve practical application of the invention. and the applicant's offer to invest that sum and to perform such acts if the license is granted:

(3) A statement whether the applicant would be willing to accept a license for all or less than all fields of use of the invention throughout the United States of America, its territories and possessions, Puerto Rico, and the District of Columbia, or in any lesser geographic portion thereof.

of royalty fees or other consideration, if (4) A statement indicating the amount any. the applicant would be willing to pay the Government for the exclusive license; and

(5) Any other facts which the applicant believes to show it to be in the interests of the United States of America for the Administrator to grant an exclusive ilcense rather than a nexclusive 11

cense and that such an exclusive license should be granted to the applicant.

§ 1245.208 Processing applications for license.

(a) Initial review. Applications for nonexclusive and exclusive licenses under § 1243.206 and 1245.207 will be reviewed by the Patent Counsel of the NASA installation having cognizance for the invention and the NASA Assistant General Counsel for Patent Matters, to determine the conformity and appropriateness of the application for license and the availability of the specific invention for the license requested. The Assistant General Counsel for Patent Matters will forward all applications for license conforming to §§ 1245.206(b) and 1245.207(b) to the NASA Inventions and Contributions Board when the invention 1 available for consideration of the requested license. Prior to forwarding applications for exclusive licenses to the Inventions and Contributions Board, noLice in writing will be given to each nonexclusive licensee for the specific invention advising of the receipt of the application for the exclusive license and providing each nonexclusive licensee with a 30-day period for submitting either evidence that practical application of the invention has occurred or is about to occur or, an application for an exclusive license for the invention.

(b) Recommendations of Inventions and Contributions Board. The Inventions and Contributions Board shall, in accordance with the basic considerations set forth in $$ 1245.202 and 1245.203, evaluate all applications for license forwarded by the Assistant General Counsel for Patent Matters. Based upon the facts. presented to the Inventions and Contributions Board in the application and any other facts in its possession, the Inventions and Contributions Board shall recommend to the Ad:ninistrator: (1) Whether a nonexclusive or exclusive license should be granted, (2) the identity of the licensee, and (3) any special terms or conditions of the license.

(c) Determination of Administrator and grant of nonexclusive licenses. The Administrator shall review the recom

mendations of the Inventions and Contributions Board and shall determine whether to grant the nonexclusive 11cense as recommended by the Board. If the Administrator determines to grant the license, the license will be granted upon the negotiation of the appropriate terms and conditions of the Office of

General Counsel.

(d) Determination of Administrator and grant of exclusive licenses (1) Notice. If the Administrator determines that the best interest of the United States will be served by the granting of an exclusive license in accordance with the basic considerations set in forth §§ 1245.202 and 1245.203, a notice shall be published in the FEDERAL REGISTER announcing the intent to grant the exclusive license, the identification of the invention, special terms or conditions of the proposed license, and a statement that NASA will grant the exclusive 11cense unless within 30 days of the publication of such notice the Inventions and Contributions Board receives in writing

any of the following together with sup- time shall default in making any report porting documentation: required by the license, or shall make any (1) A statement from any person false report, or shall commit any breach setting forth reasons why it would not be in the best interest of the United of any covenant or agreement therein. States to grant the proposed exclusive contained, and shall fail to remedy any such default, false report, or breach license; or

(11) An application for a nonexclusive within 30 days after written notice, or if license under such invention, in accord- the patent is deemed unenforceable ance with 1245.206(b), in which appli- either by the Attorney General or a final cant states that he has already brought decision of a U.S. court. or is likely to bring the invention to practical application within a reasonable period.

The Inventions and Contributions Board shall, upon receipt of a written request within the 30 days' notice period, grant an extension of 30 days for the submission of the documents designated above. (2) Recommendation of Inventions and Contributions Board. Upon the expiration of the period required by subparagraph (1) of this paragraph, the Board shall review all written responses to the notice and shall then recommend to the Administrator whether to grant the exclusive license as the Board initially recommended or whether a different form of license, if any, should instead be granted.

(3) Grant of exclusive licenses. The Administrator shall review the Board's recommendation and shall determine if the interest of the United States would best be served by the grant of an exclusive license as recommended by the Board. If the Administrator determines to grant the exclusive license, the license will be granted upon the negotiation of the appropriate terms and conditions by

the Office of General Counsel.

§ 1245.209 Royalties and fees.

(a) Normally, a nonexclusive license for the practical application of an invention granted to a U.S. citizen or company will not require the payment of royalties; however, NASA may require other consideration.

(b) An exclusive license for an invention may require the payment of royalties, fees or other consideration when the licensing circumstances and the basic considerations in § 1245.202, considered together, indicate that it is in the public interest to do so.

§ 1245.210 Reports.

A license shall require the licensee to submit periodic reports of his efforts to work the invention. The reports shall contain information within his knowledge, or which he may acquire under normal business practice, pertaining to the commercial use that is being made of the invention and such other inforination which the Administrator may determine pertinent to the licensing program and which is specified in the license.

§ 1245.211

Revocation of licenses.

(a) Any license granted pursuant to 1245.203 may be revoked, either in part or in its entirety, by the Administrator if in his opinion the licensee at any time shall fail to use adequate efforts to bring to or achieve practical application of the invention in accordance with the terms of the license, or if the licensee at any

(b) Any license granted pursuant to 1245.204 (a) may be revoked, either in part or in its entirety, by the Administrator if in his opinion such revocation is necessary to achieve the earliest practical application of the invention pursuant to an application for exclusive license submitted in accordance with § 1245.207, or the licensee at any time shall breach any covenant or agreement contained in the license, and shall fail to remedy any such breach within 30 days after written notice thereof.

revoking any license (c) Before granted pursuant to this Subpart 2 for any cause, there will be furnished to the licensee a written notice of intention to revoke the license, and the licensee will be allowed 30 days after such notice in which to appeal and request a hearing before the Inventions and Contributions Board on the question of revocation. After a hearing, the Inventions and Contributions Board shall transmit to the Administrator the record of proceedings, its findings of fact, and its recommendation whether the license should be revoked either in part or in its entirety. The Administrator shall review the recommendation of the Board and determine whether to revoke the license in part or in its entirety. Revocation of a license shall include revocation of all sublicenses which have been granted. § 1245.212 Appeals.

Any person desiring to file an appeal pursuant to § 1245.211(c) shall address. the appeal to Chairman, Inventions and Contributions Board. Any person filling an appeal shall be afforded an opportunity to be heard before the Inventions and Contributions Board, and to offer evidence in support of his appeal. The procedures to be followed in any such matter shall be determined by the Administrator. The Board shall make find

ings of fact and recommendations with respect to disposition of the appeal. The decision on the appeal shall be made by the Administrator, and such decision shall be final and conclusive, except on questions of law, unless determined by a court of competent jurisdiction to have been fraudulent, or capricious, or arbitrary, or so grossly erroneous as necessarily to imply bad faith, or not supported by substantial evidence. § 1245.213 Litigation.

An exclusive licensee shall be granted the right to suc at his own expense any party who infringes the rights set forth in his license and covered by the licensed patent. The licensee may join the Government, upon consent of the Attorney General, as a party complainant in such sult, but without expense to the Government and the licensee shall pay costs and any final judgment or decree that may be rendered against the Govern

ment in such sult. The Government shall also have an absolute right to intervene In any such suit at its own expense. The licensee shall be obligated to promptly furnish to the Government, upon request, copies of all pleadings and other papers filled in any such suit and of evidence adduced in proceedings relating to the licensed patent including, but not limited to, negotiations for settlement and agreements settling claims by a 11censee based on the licensed patent, and all other books documents, papers, and

records pertaining to such suit. If, as a addressed to the Assistant General Coun-
result of any such litigation, the patent sel for Patent Matters, Code GP, Na-
shall be declared invalid, the licensee tional Aeronautics and Space Adminis-
shall have the right to surrender his 11-tration, Washington, DC. 20548.
cense and be relieved from any further
obligation thereunder.
§ 1245.214

Address of communications.

(a) Communications to the Assistant

General Counsel for Patent Matters in
accordance with §§ 1245.206 and 1245.207
and requests for information concerning
licenses for NASA inventions should be

(b) Communications to the Inventions and Contributions Board in accordwith 1245.208, 1245.211, and ance 1245.212 should be addressed to Chairman, Inventions and Contributions Board, National Aeronautics and Space Administration, Washington, D.C. 20546.

Effective date. The regulations set
forth in this subpart 2 are effective
April 1, 1972.
JAMES C. FLETCHER,
Administrator.

Appendix F

NATIONAL AERONAUTICS AND SPACE ADMINISTRATION WASHINGTON, D. C. 20546

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