[Federal Register Volume 76, Number 143 (Tuesday, July 26, 2011)]
[Proposed Rules]
[Pages 44504-44506]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-18711]


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NATIONAL AERONAUTICS AND SPACE ADMINISTRATION

14 CFR Part 1245

[Notice 11-070]
RIN 2700-AD63


Claims for Patent and Copyright Infringement

AGENCY: National Aeronautics and Space Administration.

ACTION: Proposed rule.

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SUMMARY: The National Aeronautics and Space Administration (NASA) 
proposes regulations relating to requirements for the filing of claims 
against NASA where a potential claimant believes NASA is infringing 
privately owned rights in patented inventions or copyrighted works. The 
requirements for filing an administrative claim are important since the 
filing of a claim carries with it certain rights relating to the 
applicable statute of limitations for filing suit against the 
Government. The proposed regulations set forth guidelines as to what 
NASA considers necessary to file a claim for patent or copyright 
infringement, and they also provide for written notification to the 
claimant upon completion of an investigation by NASA.

DATES: Comments must be received on or before August 25, 2011.

ADDRESSES: Comments must be identified with ``RIN 2700-AD63'' and may 
be sent to NASA by the following method:
     Federal E-Rulemaking Portal: http://www.regulations.gov. 
Follow the online instructions for submitting comments. Please note 
NASA may post all comments on the Internet without change, including 
any personal information provided.

FOR FURTHER INFORMATION CONTACT: Ms. Helen M. Galus, National 
Aeronautics and Space Administration, Office of the General Counsel, 
Washington, DC 20546-0001. Telephone 202-358-3437.

SUPPLEMENTARY INFORMATION: The National Aeronautics and Space Act (51 
U.S.C. 20113) authorizes the Administrator of NASA to settle 
administrative claims of patent and copyright infringement by NASA. In 
addition to that authority to acquire license rights and interests in 
patents and copyrights through settlement of claims, the Administrator 
has authority to settle claims of patent and copyright infringement 
pursuant to 22 U.S.C. 2356, 35 U.S.C. 183 and 286, and 28 U.S.C. 
1498(b).
    In accordance with these authorities, NASA is issuing proposed 
regulations setting forth requirements for the filing of claims against 
NASA where a potential claimant believes NASA is infringing privately 
owned rights in patented inventions or copyrighted works. The proposed 
regulations are designed to inform potential claimants as to what 
information must be supplied in their communication to NASA regarding 
alleged infringement before NASA will consider a claim to have been 
filed. The regulations identify certain commonly received 
communications which are concerned with rights in patents and 
copyrights, but which will not be considered sufficient to constitute 
the formal filing of a claim.
    The requirements for filing an administrative claim are important 
since the filing of a claim carries with it certain rights relating to 
the applicable statute of limitations for filing suit against the 
Government. In the case of patent infringement claims, Title 35 U.S.C. 
286 provides that the six-year statute of limitations for filing suits 
for patent infringement may, in the case of claims against the 
Government, be tolled up to six years between the date of receipt of a 
written claim for compensation by the Government and the date of 
mailing by the Government of a notice that the claim has been denied. 
Copyright infringement claims can be tolled indefinitely under 28 
U.S.C. 1498(b) between the date of receipt of a written claim for 
compensation by the Government and the date of mailing by the 
Government of a notice that the claim has been denied. The proposed 
regulations set forth guidelines as to what NASA considers necessary to 
file a claim for patent or copyright infringement.
    Section 1245.202(a) provides that in order for a potential 
claimant's communication to NASA to formally instigate a claim, it must 
specifically allege infringement by NASA, request compensation, 
identify a patent or copyright alleged to be infringed, and indicate an 
act or item which the potential claimant believes infringes the 
claimant's patent or copyright. Section 1245.203(a) advises the 
potential claimant where to forward communications regarding the 
alleged infringement. Section 1245.202(b) of the regulation identifies 
information which, although not necessary in order for a communication 
to be considered sufficient to constitute the filing of a claim, is 
usually necessary to process a claim and, therefore, if presented 
initially with the claim, may serve to expedite the handling of the 
claim. The proposed regulations provide for written notification to the 
claimant upon completion of an investigation by NASA.

Regulatory Analysis Section

Paperwork Reduction Act Statement

    This rule does not contain an information collection requirement 
subject to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et 
seq.).

Executive Order 12866 and Executive Order 13563

    Executive Orders 13563 and 12866 direct agencies to assess all 
costs and benefits of available regulatory alternatives and, if 
regulation is necessary, to select regulatory approaches that maximize 
net benefits (including potential economic, environmental, public 
health and safety effects, distributive impacts, and equity). Executive 
Order 13563 emphasizes the importance of quantifying both costs and 
benefits, of reducing costs, of harmonizing rules,

[[Page 44505]]

and of promoting flexibility. This rule has been designated a 
``significant regulatory action'' although not economically 
significant, under section 3(f) of Executive Order 12866. Accordingly, 
the rule has been reviewed by the Office of Management and Budget.

Regulatory Flexibility Act

    It has been certified that this rule is not subject to the 
Regulatory Flexibility Act (5 U.S.C. 601) because it would not, if 
promulgated, have a significant economic impact on a substantial number 
of small entities. The rule sets forth policies and procedures for the 
filing and disposition of claims of infringement of privately owned 
rights in patented inventions or copyrighted works asserted against 
NASA. These policies and procedures would not have a significant 
economic impact on a substantial number of small entities as NASA 
typically has less than 10 of such claims asserted against it annually. 
Any small entities that believe they are being adversely affected by 
this rule are encouraged to submit comments; please see information 
under the DATES and ADDRESSES headings above for guidance.

List of Subjects in 14 CFR Part 1245

    Claims, Inventions, Patent and copyright infringement.

    Accordingly, Part 1245, Subpart 2, of Title 14 of the Code of 
Federal Regulations is proposed to be added to read as follows:

PART 1245--PATENTS AND OTHER INTELLECTUAL PROPERTY RIGHTS

Subpart 2--Claims for Patent and Copyright Infringement
Sec.
1245.200 Purpose.
1245.201 Objectives.
1245.202 Contents of communication initiating claim.
1245.203 Incomplete notice of infringement.
1245.204 Indirect notice of infringement.
1245.205 Processing of administrative claims.

Subpart 2--Claims for Patent and Copyright Infringement

    Authority:  51 U.S.C. 20112-20113; 22 U.S.C. 2356; 35 U.S.C. 
181-188 and 286; and 28 U.S.C. 1498.


Sec.  1245.200  Purpose.

    The purpose of this part is to set forth policies and procedures 
for the filing and disposition of claims of infringement of privately 
owned rights in patented inventions or copyrighted works asserted 
against NASA.


Sec.  1245.201  Objectives.

    Whenever a claim of infringement of privately owned rights in 
patented inventions or copyrighted works is asserted against NASA, all 
necessary steps shall be taken to investigate and to administratively 
settle, deny, or otherwise dispose of such claim prior to suit against 
the United States. The General Counsel, or designee, is authorized to 
investigate, settle, deny, or otherwise dispose of all claims of patent 
and copyright infringement, pursuant to the above-cited statutory 
authority.


Sec.  1245.202  Contents of communication initiating claim.

    (a) Requirements for claim. A patent or copyright infringement 
claim for compensation, asserted against the United States as 
represented by NASA under any of the applicable statutes cited above, 
must be actually communicated to and received by an organization, 
office, or within a NASA Center. Claims must be in writing and must 
include the following:
    (1) An allegation of infringement.
    (2) A request for compensation, either expressed or implied.
    (3) A citation to the patent(s) or copyright(s) alleged to be 
infringed.
    (4) In the case of a patent infringement claim, a sufficient 
designation to permit identification of the accused subject matter 
(e.g. article(s) or process(es)) alleged to infringe the patent(s), 
giving the commercial designation, if known to the claimant, or, in the 
case of a copyright infringement claim, the accused subject matter 
(e.g. act(s) or work(s)) alleged to infringe the copyright.
    (5) In the case of a patent infringement claim, a designation of at 
least one claim of each patent alleged to be infringed or, in the case 
of a copyright infringement claim, a copy of each work alleged to be 
infringed.
    (6) As an alternative to paragraphs (a)(4) and (5) of this section, 
certification that the claimant has made a bona fide attempt to 
determine the accused subject matter, which is alleged to infringe the 
patent(s), or the accused subject matter alleged to infringe the 
copyright(s), but was unable to do so, giving reasons and stating a 
reasonable basis for the claimant's belief that the patent(s) or 
copyright(s) is being infringed.
    (b) Additional information for patent infringement claims. In 
addition to the information listed in paragraph (a) of this section, 
the following material and information generally are necessary in the 
course of processing a claim of patent infringement. Claimants are 
encouraged to furnish this information at the time of filing a claim to 
permit rapid processing and resolution of the claim.
    (1) A copy of the asserted patent(s) and identification of all 
claims of the patent(s) alleged to be infringed.
    (2) Identification of all procurements known to the claimants that 
involve the accused item(s) or process(es), including the identity of 
the vendor(s) or contractor(s) and the Government acquisition activity 
or activities.
    (3) A detailed identification and description of the accused 
article(s) or process(es) used or acquired by the Government, 
particularly where the article(s) or process(es) relate to a 
component(s) or subcomponent(s) of an item acquired, and an element-by-
element comparison of representative claim(s) with the accused 
article(s) or process(es). If available, the identification and 
description should include documentation and drawings to illustrate the 
accused article(s) or process(es) in sufficient detail to enable 
determining whether the claim(s) of the asserted patent(s) read on the 
accused article(s) or process(es).
    (4) Names and addresses of all past and present licensees under the 
patent(s) and copies of all license agreements and releases involving 
the patent(s). In addition, an identification of all assignees of the 
patent(s).
    (5) A list of all persons to whom notices of infringement have been 
sent, including all departments and agencies of the Government, and a 
statement of the status or ultimate disposition of each.
    (6) A brief description of all litigation involving the patent(s) 
which was initiated at any time prior to the claim being filed and 
their present status. This includes any defenses or counterclaims made 
and positions maintained by opposing parties regarding invalidity and/
or noninfringement of the patent(s).
    (7) A description of Government employment or military service, if 
any, by the inventor(s) or patent owner(s) including a statement from 
the inventor(s) or patent owner(s) certifying whether the invention 
claimed in the patents was conceived or reduced to practice, in part or 
in whole, during Government employment and whether such inventor(s) or 
owner(s) occupied any position from which such inventor(s) or owner(s) 
was capable of ordering, influencing, or inducing use of the invention 
by the Government.
    (8) A list of all contract(s) between the Government and 
inventor(s), patent owner(s), or anyone in privity with the patent 
owner(s), under which work relating to the patented subject matter was 
performed.

[[Page 44506]]

    (9) Evidence of title to the asserted patent(s) or other right to 
make the claim.
    (10) A copy of the United States Patent and Trademark Office 
(USPTO) file history of each patent, if it is available to the 
claimant. Indicate whether the patent has been the subject of any 
interference proceedings, certification of correction request, 
reexamination, or reissue proceedings at the USPTO, or lapsed for 
failure to pay any maintenance fee. In addition, the status of all 
corresponding foreign patents and patent applications and full copies 
of the same.
    (11) Pertinent prior art known to the claimant not contained in the 
USPTO file, for example, publications and foreign prior art. In 
addition to the foregoing, if claimant can provide a statement that the 
investigation may be limited to the specifically identified accused 
article(s) or process(es) or to a specific acquisition (e.g. identified 
contract(s)), it may speed disposition of the claim. Claimants are also 
encouraged to provide information on any ancillary matters that may 
have a bearing on validity or infringement.
    (c) Denial for refusal to provide information. In the course of 
investigating a claim, it may become necessary for NASA to request 
information in the control and custody of the claimant that is relevant 
to the disposition of the claim. Failure of the claimant to respond to 
a request for such information shall be sufficient reason alone for 
denying a claim.


Sec.  1245.203  Incomplete notice of infringement.

    (a) If a communication alleging patent infringement or copyright 
infringement is received that does not meet the requirements set forth 
in Sec.  1245.202(a), the sender shall be advised in writing by the 
Agency Counsel for Intellectual Property:
    (1) That the claim for infringement has not been satisfactorily 
presented; and
    (2) Of the elements necessary to establish a claim.
    (b) A communication, in which no infringement is alleged in 
accordance with Sec.  1245.202(a), such as a mere proffer of a license, 
shall not be considered a claim for infringement.


Sec.  1245.204  Indirect notice of infringement.

    A communication by a patent or copyright owner to addressees other 
than those specified in Sec.  1245.202(a), such as NASA contractors, 
including contractors operating Government-owned facilities, alleging 
that acts of infringement have occurred in the performance of a 
Government contract, grant, or other arrangement, shall not be 
considered a claim within the meaning of Sec.  1245.202(a) until such 
communication meets the requirements specified therein.


Sec.  1245.205  Processing of administrative claims.

    (a) Filing and forwarding of claims. All communications regarding 
claims should be addressed to: Agency Counsel for Intellectual 
Property, Office of the General Counsel, National Aeronautics and Space 
Administration, Washington, DC 20546-0001. If any communication 
relating to a claim or possible claim of patent or copyright 
infringement is received by an agency, organization, office, or field 
installation within NASA, it shall be forwarded to the Agency Counsel 
for Intellectual Property.
    (b) Disposition and notification. The General Counsel, or designee, 
shall investigate and administratively settle, deny, or otherwise 
dispose of each claim. When a claim is denied, the Agency shall so 
notify the claimant or the claimant's authorized representative and 
provide the claimant with the reasons for denying the claim. Disclosure 
of information shall be subject to applicable statutes, regulations, 
and directives pertaining to security, access to official records, and 
the rights of others.
    (c) Termination of claims. If, while an administrative claim for 
patent or copyright infringement is pending against NASA, the claimant 
brings suit for patent or copyright infringement against the United 
States in the Court of Federal Claims based on the same facts or 
transactions as the administrative claim, the administrative claim 
shall thereupon be automatically dismissed, with no further action 
being required of NASA.

Charles F. Bolden, Jr.,
Administrator.
[FR Doc. 2011-18711 Filed 7-25-11; 8:45 am]
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