[Code of Federal Regulations]

[Title 14, Volume 5]

[Revised as of January 1, 2006]

From the U.S. Government Printing Office via GPO Access

[CITE: 14CFR1245.104]



[Page 202-203]

 

                     TITLE 14--AERONAUTICS AND SPACE

 

                          SPACE ADMINISTRATION

 

PART 1245_PATENTS AND OTHER INTELLECTUAL PROPERTY RIGHTS--Table of 

Contents

 

                   Subpart 1_Patent Waiver Regulations

 

Sec. 1245.104  Advance waivers.



    (a) The provisions of this section apply to petitions for waiver of 

domestic rights to any or all of the inventions which may be made under 

a contract.

    (b) The NASA Inventions and Contributions Board normally will 

recommend grant of a request for advance waiver of domestic rights 

submitted prior to execution of contract or within 30 days after 

execution of the contract unless the Board finds that the interests of 

the United States will be better served by restricting or eliminating 

all or part of the rights of the contractor in one or more of the 

following situations:

    (1) When the contractor is not located in the United States or does 

not have a place of business in the United States or is subject to the 

control of a foreign government;

    (2) When a determination has been made by Government authority which 

is authorized by statute or Executive order to conduct foreign 

intelligence or counter-intelligence activities that the restriction or 

elimination of the right to retain title to any inventions made in the 

performance of work under the contract is necessary to protect the 

security of such activities; or

    (3) Where the Board finds that exceptional circumstances exist, such 

that restriction or elimination of the right to retain title will better 

promote one or more of the following objectives:

    (i) Promoting the utilization of inventions arising from federally 

supported research and development;

    (ii) Encouraging maximum participation of industry in federally-

supported research and development;

    (iii) Ensuring that inventions are used in a manner to promote free 

competition and enterprise;

    (iv) Promoting the commercialization and public availability of 

inventions made in the United States by United States industry and 

labor; and

    (v) Ensuring that the Government obtains sufficient rights in 

federally-supported inventions to meet the needs of the Government and 

protect the public against nonuse or unreasonable use of inventions.

    (c)(1) An advance waiver, when granted, will be subject to the 

reservations set forth in Sec. 1245.107. Normally, the reservations of 

Sec. 1245.107(a), License to the Government, and Sec. 1245.107(b), 

March-in rights, will apply. However, should one or more of the 

situations set forth in paragraphs (b)(1) through



[[Page 203]]



(b)(3), of this section exist, rather than denying the advance waiver 

request, the Board may recommend restricting or eliminating only part of 

the rights of the contractor to the extent necessary to address the 

particular situation, consistent with the policy and goals of Sec. 

1245.103. In that event, the waiver grant will be subject to additional 

reservations as provided for in Sec. 1245.107(c).

    (2) An advance waiver, when granted, will apply only to inventions 

reported to NASA under the applicable terms of the contract and a 

designation made within 6 months of the time of reporting (or a 

reasonable time thereafter permitted for good cause shown) that the 

contractor elects title to the invention and intends to file or has 

filed a U.S. patent application. Such election will be made by 

notification in writing to the patent representative designated in the 

contract. Title to all other inventions made under the contract are 

subject to section 305(a) of the National Aeronautics and Space Act of 

1958, as amended, 42 U.S.C. 2457(a). The granting of the advance waiver 

does not otherwise relieve a contractor of any of the invention 

identification or reporting requirements set forth in the applicable 

patent rights clause in the contract.

    (3) The waiver shall extend to the invention claimed in any patent 

application filed on the reported invention, including any subsequent 

divisional or continuation application thereof, provided the claims of 

the subsequent application do not substantially change the scope of the 

reported invention.

    (d) When a petition for waiver is submitted under paragraph (b) of 

this section, prior to contract execution, it will be processed 

expeditiously so that a decision on the petition may be reached prior to 

execution of the contract. However, if there is insufficient time or 

insufficient information is presented, or for other reasons which do not 

permit a recommendation to be made without unduly delaying execution of 

the contract, the Board will inform the contracting officer that no 

recommendation has been made and the reasons therefor. The contracting 

officer will then notify the petitioner of the Board's action.

    (e) After notification by the contracting officer under paragraph 

(d) of this section, the petitioner may, upon its execution of the 

contract, or within 30 days, request the Board to reconsider the matter 

under paragraph (b) of this section either on the record or with any 

additional statements submitted in the subpart of the original petition.

    (f) A waiver granted pursuant to a petition submitted under this 

section shall extend to any contract changes, modifications, or 

supplemental agreements, so long as the purpose of the contract or the 

scope of work to be performed is not substantially changed.