[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: 14CFR1245.116]



[Page 207-208]

 

                     TITLE 14--AERONAUTICS AND SPACE

 

                          SPACE ADMINISTRATION

 

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

Contents

 

                   Subpart 1_Patent Waiver Regulations

 

Sec. 1245.116  Miscellaneous provisions.



    (a) Filing of patent applications and reimbursement of costs. In 

order to protect the interests of the Government and the petitioner in 

inventions, a petitioner may file United States patent applications for 

such inventions prior to the Administrator's determination on a petition 

for waiver. If an application on an identified invention is filed during 

the pendency of the petition, or within 60 days prior to the receipt of 

a petition, NASA will reimburse the petitioner for any reasonable costs 

of the filing and patent prosecution that may have occurred, provided:

    (1) Similar patent filing and prosecution costs are not normally 

reimbursed to the petitioner as direct or indirect costs chargeable to 

the Government contracts;

    (2) The petition is ultimately denied with respect to domestic 

rights, or with respect to foreign and domestic rights, if both are 

requested, and

    (3) Prior to reimbursement, petitioner assigns the application to 

the



[[Page 208]]



United States of America as represented by the Administrator of the 

National Aeronautics and Space Administration.

    (b) Statement of Government rights. The waiver recipient shall 

include, within the specification of any United States patent 

application and any patent issuing thereon for a waived invention, the 

following statement:



    The invention described herein was made in the performance of work 

under NASA Contract No. ------, and is subject to the provisions of 

Section 305 of the National Aeronautics and Space Act of 1958, as 

amended (42 U.S.C. 2457).



    (c) License to the Government. The waiver recipient shall return to 

NASA a duly executed and approved license to the Government (which will 

be prepared by the Government) fully confirming of all the rights, 

domestic and foreign, to which the Government is entitled.

    (d) Patent filing and issuance information. The waiver recipient 

shall furnish to either the Chairperson or the patent representative, 

the filing date, serial number and title, and upon request, a copy of 

any domestic or foreign patent application including an English language 

version if filed in a language other than English, and a copy of the 

patent or patent number and issue date, for any waived invention.

    (e) Transfer of rights. The waiver recipient shall notify the 

Chairperson prior to any transfer of principal rights in any waived 

invention to any party. Such transfer shall be subject to all rights 

reserved by the Government, and all obligations of the waiver recipient, 

as set forth in this subpart.

    (f) Utilization reports. (1) The waiver recipient shall provide to 

the Chairperson upon request, and no more frequently than annually, 

reports on the utilization of a waived invention or on efforts at 

obtaining such utilization being made by the waiver recipient or its 

licensees or assigns. Such reports shall include information regarding 

the status of the development, date of first commercial sale or use, and 

such other data and information as the Chairperson may reasonably 

specify. No utilization reports need be submitted after the term of the 

patent.

    (2) Such reports on the utilization of a waived invention, as well 

as information on the utilization or efforts at obtaining utilization 

obtained as part of a march-in proceeding under Sec. 1245.117, shall be 

treated by NASA as commercial and financial information obtained from a 

person and privileged and confidential and not subject to disclosure 

under 5 U.S.C. 552.

    (g) Communications. Unless otherwise specifically set forth in this 

subpart, all communications relating to waived inventions, and all 

information and documents required to be submitted to NASA in this 

subpart, shall be furnished to the patent representative designated in 

the contract under which the waived invention was made.



(Recordkeeping and reporting requirements contained in paragraph (f) 

were approved by the Office of Management and Budget under control 

number 2700-0050)