[Code of Federal Regulations]
[Title 14, Volume 5]
[Revised as of January 1, 2007]
From the U.S. Government Printing Office via GPO Access
[CITE: 14CFR1260.28]

[Page 289]
 
                     TITLE 14--AERONAUTICS AND SPACE
 
                   CHAPTER V--NATIONAL AERONAUTICS AND
                          SPACE ADMINISTRATION
 
PART 1260_GRANTS AND COOPERATIVE AGREEMENTS--Table of Contents
 
                            Subpart A_General
 
Sec.  1260.28  Patent rights.

                              Patent Rights

                                May 2006

    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).
    (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; 71 
FR 28775, May 18, 2006]

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