[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: 14CFR1260.28]



[Page 287]

 

                     TITLE 14--AERONAUTICS AND SPACE

 

                          SPACE ADMINISTRATION

 

PART 1260_GRANTS AND COOPERATIVE AGREEMENTS--Table of Contents

 

                            Subpart A_General

 

Sec. 1260.28  Patent rights.



                              Patent Rights



                               August 2005



    As stated at Sec. 1260.136, this award is subject to the provisions 

of 37 CFR 401.3(a) which requires use of the standard clause set out at 

37 CFR 401.14 ``Patent Rights (Small Business Firms and Nonprofit 

Organizations)'' and the following:

    (a) Where the term ``contract'' or ``Contractor'' is used in the 

``Patent Rights'' clause, the term shall be replaced by the term 

``grant'' or ``Recipient,'' respectively.

    (b) In each instance where the term ``Federal Agency,'' ``agency,'' 

or ``funding Federal agency'' is used in the ``Patent Rights'' clause, 

the term shall be replaced by the term ``NASA.''

    (c) The following item is added to the end of paragraph (f) of the 

``Patent Rights'' clause: ``(5) The Recipient shall include a list of 

any Subject Inventions required to be disclosed during the preceding 

year in the performance report, technical report, or renewal proposal. A 

complete list (or a negative statement) for the entire award period 

shall be included in the summary of research.''

    (d) The term ``subcontract'' in paragraph (g) of the ``Patent 

Rights'' clause shall include purchase orders.

    (e) The NASA implementing regulation for paragraph (g)(2) of the 

``Patent Rights'' clause is at 48 CFR 1827.304-4(a)(i)(B).

    (f) The following requirement constitutes paragraph (l) of the 

``Patent Rights'' clause:

    ``(l) Communications. A copy of all submissions or requests required 

by this clause, plus a copy of any reports, manuscripts, publications or 

similar material bearing on patent matters, shall be sent to the Center 

Patent Counsel and the NASA Grant Officer in addition to any other 

submission requirements in the grant provisions. If any reports contain 

information describing a ``subject invention'' for which the recipient 

has elected or may elect to retain title, NASA will use reasonable 

efforts to delay public release by NASA or publication by NASA in a NASA 

technical series until an application filing date has been established, 

provided that the Recipient identify the information and the ``subject 

invention'' to which it relates at the time of submittal. If required by 

the NASA Grant Officer, the Recipient shall provide the filing date, 

serial number and title, a copy of the patent application, and a patent 

number and issue date for any ``subject invention'' in any country in 

which the Recipient has applied for patents.''

    (g) NASA Inventions. NASA will use reasonable efforts to report 

inventions made by NASA employees as a consequence of, or which bear a 

direct relation to, the performance of specified NASA activities under 

this agreement and, upon timely request, will use reasonable efforts to 

grant the Recipient an exclusive, or partially exclusive, revocable, 

royalty-bearing license, subject to the retention of a royalty-free 

right of the Government to practice or have practiced the invention by 

or on behalf of the Government.

    (h) In the event NASA contractors are tasked to perform work in 

support of specified activities under a cooperative agreement and 

inventions are made by Contractor employees, the Contractor will 

normally retain title to its employee inventions in accordance with 35 

U.S.C. 202, 14 CFR Part 1245, and Executive Order 12591. In the event 

the Contractor decides not to pursue rights to title in any such 

invention and NASA obtains title to such inventions, NASA will use 

reasonable efforts to report such inventions and, upon timely request, 

will use reasonable efforts to grant the Recipient an exclusive, or 

partially exclusive, revocable, royalty-bearing license, subject to the 

retention of a royalty-free right of the Government to practice or have 

practiced the invention by or on behalf of the Government.



                           [End of provision]



[65 FR 62900, Oct. 19, 2000, as amended at 70 FR 46079, Aug. 9, 2005]



[[Page 288]]