[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: 14CFR1245.107]



[Page 204]

 

                     TITLE 14--AERONAUTICS AND SPACE

 

                          SPACE ADMINISTRATION

 

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

Contents

 

                   Subpart 1_Patent Waiver Regulations

 

Sec. 1245.107  Reservations.



    (a) License to the Government. Any invention for which waiver of 

domestic or foreign rights has been granted under this subpart shall be 

subject to the reservation by the Administrator 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 foreign government pursuant to any treaty or agreement with the 

United States.

    (b) March-in rights. For any invention for which waiver of rights 

has been granted under this subpart, NASA has the right in accordance 

with 35 U.S.C. 203 and 210, and with the procedures set forth in Sec. 

1245.117 and 37 CFR 401.6, to require the contractor, an assignee, or 

exclusive licensee of the invention to grant a nonexclusive, partially 

exclusive, or exclusive license in any field of use to a responsible 

applicant or applicants, upon terms that are reasonable under the 

circumstances, and if the contractor, assignee, or exclusive licensee 

refuses such a request, NASA has the right to grant such a license 

itself if NASA determines that:

    (1) Such action is necessary because the contractor or assignee has 

not taken, or is not expected to take within a reasonable time, 

effective steps to achieve practical application of the invention in 

such field of use;

    (2) Such action is necessary to alleviate health or safety needs 

which are not reasonably satisfied by the contractor, assignee, or their 

licensees;

    (3) Such action is necessary to meet requirements for public use 

specified by Federal regulations and such requirements are not 

reasonably satisfied by the contractor, assignee, or licensees; or

    (4) Such action is necessary because the agreement required by the 

``Preference for United States industry'' has not been obtained or 

waived or because a licensee of the exclusive right to use or sell any 

invention in the United States is in breach of such agreement.

    (c) Additional reservations. In the event one or more of the 

situations set forth in Sec. 1245.104 (b)(1) through (b)(3) exist, the 

Board may determine to recommend partial grant of the waiver request 

(rather than denial) by making the grant subject to additional 

reservations (than those set forth in (a) and (b) of this section) to 

the extent necessary to address the particular situation. Such 

additional reservations may include, but not be limited to, field-of-use 

or terrestrial-use limitations, or additions to the march-in rights.