[Federal Register Volume 80, Number 69 (Friday, April 10, 2015)]
[Rules and Regulations]
[Pages 19196-19199]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-08145]


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NATIONAL AERONAUTICS AND SPACE ADMINISTRATION

14 CFR Part 1245

[Docket No: NASA-2015-0001]
RIN 2700-AE02


Patents and Other Intellectual Property Rights

AGENCY: National Aeronautics and Space Administration (NASA).

ACTION: Direct final rule.

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SUMMARY: NASA has adopted as final, without change, a proposed rule 
amending its patent waivers regulations to update citations and the 
patent waiver policy, and to clarify and update

[[Page 19197]]

the patent waiver procedures, so they are more in line with the 
National Aeronautics and Space Act (Space Act), the authorizing 
statute.

DATES: This rule is effective May 11, 2015. Comments due on or before 
April 27, 2015. If adverse comments are received, NASA will publish a 
timely withdrawal of the rule in the Federal Register.

ADDRESSES: Comments must be identified with RIN 2700-AE02 and may 
be sent to NASA via the Federal E-Rulemaking Portal: http://www.regulations.gov. Follow the online instructions for submitting 
comments. Please note that NASA will post all comments on the Internet 
with changes, including any personal information provided.

FOR FURTHER INFORMATION CONTACT: Helen M. Galus, Office of the General 
Counsel, NASA Headquarters, telephone (202) 358-3437.

SUPPLEMENTARY INFORMATION:

I. Background

    NASA published a proposed rule in the Federal Register at 79 FR 
60119, on October 6, 2014, to amend its patent waiver regulations to 
update citations to the United States Code, to clarify the requirements 
and procedures for petitioning for a patent waiver so they follow more 
closely the terms of the Space Act, and to add grounds for denial of a 
petition for waiver of foreign rights. No comments were submitted on 
the proposed rule.

II. Discussion and Analysis

    The NASA Office of the General Counsel had no comments to consider. 
NASA has adopted the proposed rule as final with one additional section 
update. After the proposed rule was published, an outdated citation was 
found in §&thnsp1245.108 License to contractor. In paragraphs (b) 
and (c), 14 CFR 1245.2 was updated to 37 CFR part 404. Also, 
“Government-Owned” was substituted for “NASA” 
in paragraph (b), and “in accordance with applicable regulations 
in” was substituted for “under the Licensing of NASA 
Inventions” in order to clarify the sentence in paragraph (c).

A. Summary of Significant Changes

    No changes were made as a result of public comments.

B. Analysis of Public Comments

    No public comments were submitted.

III. Direct Final Rule

    NASA has determined this rulemaking meets the criteria for a direct 
final rule because it involves adopting a proposed rule amending its 
patent waivers regulations to update citations and the patent waiver 
policy, and to clarify and update the patent waiver procedures, so they 
are more in line with the National Aeronautics and Space Act (Space 
Act), the authorizing statute. This rule has one additional update to 
correct an outdated citation. No opposition to the changes and no 
significant adverse comments are expected. However, if NASA receives 
significant adverse comments, it will withdraw this direct final rule 
by publishing a notice in the Federal Register. A significant adverse 
comment is one that explains: (1) Why the direct final rule is 
inappropriate, including challenges to the rule's underlying premise or 
approach; or (2) why the direct final rule will be ineffective or 
unacceptable without a change. In determining whether a comment 
necessitates withdrawal of this direct final rule, NASA will consider 
whether it warrants a substantive response in a notice and comment 
process.

IV. 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, and of promoting 
flexibility. This rule has not been designated a “significant 
regulatory action” under section 3(f) of Executive Order 12866.

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 
submitting and reviewing petitions for waiver of the Government's 
rights to certain inventions made under government funded contracts, 
pursuant to section 20135(b)(1) of the National Aeronautics and Space 
Act, 51 U.S.C. 20135(b)(1). The provisions do not apply to inventions 
made under any contract, grant, or cooperative agreement with a 
nonprofit organization or small business firm that are afforded the 
disposition of rights as provided in 35 U.S.C. 200-204 (Pub. L. 
96-517, 94 Stat. 3019, 3020, 3022 and 3023; and Pub. L. 
98-620, 98 Stat. 3364-3367). Therefore, the rule will not 
have a significant economic impact on a substantial number of small 
entities.

List of Subjects in 14 CFR Part 1245

    Inventions, Patents and waivers.

    Accordingly, 14 CFR part 1245 is amended as follows:

PART 1245-PATENTS AND OTHER INTELLECTUAL PROPERTY RIGHTS

Subpart 1-Patent and Waiver Regulations

0
1. The authority citation for Part 1245, Subpart 1, is revised to read 
as follows:

    Authority:  51 U.S.C. 20135, 35 U.S.C. 200 et seq.


0
2. Section 1245.100 is revised to read as follows:


§&thnsp1245.100  Scope.

    This subpart prescribes regulations for the waiver of rights of the 
Government of the United States to inventions made under NASA contract 
in conformity with section 20135 of the National Aeronautics and Space 
Act (51 U.S.C. Chapter 201).

0
3. Section 1245.101 is revised to read as follows:


§&thnsp1245.101  Applicability.

    The provisions of the subpart apply to all inventions made or which 
may be made under conditions enabling the Administrator to determine 
that the rights therein reside in the Government of the United States 
under section 20135(b)(1) of the National Aeronautics and Space Act, 51 
U.S.C. 20135(b)(1). The provisions do not apply to inventions made 
under any contract, grant, or cooperative agreement with a nonprofit 
organization or small business firm that are afforded the disposition 
of rights as provided in 35 U.S.C. 200-204 (Pub. L. 96-517, 
94 Stat. 3019, 3020, 3022 and 3023; and Pub. L. 98-620, 98 Stat. 
3364-3367).

0
4. Section 1245.102 is amended by revising paragraph (c), redesignating 
paragraphs (d) through (j) as paragraphs (e) through (k), and adding 
new paragraph (d) to read as follows:

[[Page 19198]]

§&thnsp1245.102  Definitions and terms.

* * * * *
    (c) Invention means any, new and useful process, machine, 
manufacture, or composition of matter, or any new and useful 
improvement thereof, or any variety of plant, which is or may be 
patentable under the Patent Laws of the United States of America or any 
foreign country.
    (d) Class of inventions means inventions directed to a particular 
process, machine, manufacture, or composition of matter, or to a 
narrowly drawn, focused area of technology.
* * * * *

0
5. Section 1245.103 is amended by revising paragraphs (a) and (b) to 
read as follows:


§&thnsp1245.103  Policy.

    (a) In implementing the provisions of section 20135(g) of the 
National Aeronautics and Space Act (51 U.S.C. Chapter 201), and in 
determining when the interests of the United States would be served by 
waiver of all or any part of the rights of the United States in an 
invention or class of inventions made in the performance of work under 
NASA contracts, the Administrator will be guided by the objectives set 
forth in the National Aeronautics and Space Act, by the basic policy of 
the Presidential Memorandum and Statement of Government Patent Policy 
to the Heads of the Executive Departments and agencies dated February 
18, 1983, by the goals and objectives of its current Authorization Act, 
Strategic Plan, and other pertinent National policies or laws, such as 
the National Space Policy of the United States of America. Any such 
waiver may be made upon such terms and under such conditions as the 
Administrator shall determine to be required for the protection of the 
interests of the United States. Among the most important goals are to 
provide incentives to foster inventiveness and encourage the reporting 
of inventions made under NASA contracts, to provide for the widest 
practicable dissemination of new technology resulting from NASA 
programs, and to promote early utilization, expeditious development, 
and continued availability of this new technology for commercial 
purposes and the public benefit. In applying this regulation, both the 
need for incentives to draw forth private initiatives and the need to 
promote healthy competition in industry must be weighed.
    (b) Several different situations arise when waiver of all or any 
part of the rights of the United States with respect to an invention or 
class of invention may be requested and are prescribed in 
§§&thnsp1245.104 through 1245.106. Under 
§&thnsp1245.104, advance waiver of any or all of the rights of 
the United States with respect to any invention or class of inventions 
which may be made under a contract may be requested prior to the 
execution of the contract, or within 30 days after execution of the 
contract. Waiver of rights to an identified invention made and reported 
under a contract are to be requested under §&thnsp1245.105, and 
may be requested under this provision even though a request under 
§&thnsp1245.104 was not made, or if made, was not granted. Waiver 
of foreign rights under §&thnsp1245.106 may be requested 
concurrently with domestic rights under §&thnsp1245.104 or 
§&thnsp1245.105, or may be made independently.
* * * * *

0
6. Section 1245.104 is amended by:
0
a. Revising paragraphs (a), (b) introductory text, (b)(2), (b)(3) 
introductory text, (b)(3)(v), (c), and (d);
0
b. Removing paragraph (e); and
0
c. Redesignating paragraph (f) as paragraph (e).
    The revisions read as follows:


§&thnsp1245.104  Advance waivers.

    (a) The provisions of this section apply to petitions for waiver of 
domestic rights of the United States with respect to any invention or 
class of inventions which may be made under a contract.
    (b) The NASA Inventions and Contributions Board normally will 
recommend grant of a request for advance waiver of domestic rights 
submitted prior to execution of contract or within 30 days after 
execution of the contract unless the Board finds that the interests of 
the United States will be better served by restricting or denying all 
or part of the requested rights in one or more of the following 
situations:
* * * * *
    (2) When a determination has been made by Government authority 
which is authorized by statute or Executive order to conduct foreign 
intelligence or counter-intelligence activities that the restriction or 
denial of the requested rights to any inventions made in the 
performance of work under the contract is necessary to protect the 
security of such activities; or
    (3) Where the Board finds that exceptional circumstances exist, 
such that restriction or denial of the requested rights will better 
promote one or more of the following objectives:
* * * * *
    (v) Ensuring that the Government retains sufficient rights in 
federally supported inventions to meet the needs of the Government and 
protect the public against nonuse or unreasonable use of inventions.
    (c)(1) An advance waiver, when granted, will be subject to the 
reservations set forth in §&thnsp1245.107. Normally, the 
reservations of §&thnsp1245.107(a), License to the Government, 
and §&thnsp1245.107(b), March-in rights, will apply. However, 
should one or more of the situations set forth in paragraphs (b)(1) 
through (b)(3), of this section exist, rather than denying the advance 
waiver request, the Board may recommend granting to the contractor only 
part of the requested rights, to the extent necessary to address the 
particular situation, consistent with the policy and goals of 
§&thnsp1245.103. In that event, the waiver grant will be subject 
to additional reservations as provided for in §&thnsp1245.107(c).
    (2) To meet the National Aeronautics and Space Act standard of 
“any invention or class of inventions,” for advance 
waivers, the petition shall identify the invention(s) and/or class(es) 
of inventions that the Contractor believes will be made under the 
contract and for which waiver of rights is being requested. Therefore, 
the petition must be directed to a specific invention(s) or to 
inventions directed to a particular process, machine, manufacture, or 
composition of matter, or to a narrowly drawn, focused area(s) of 
technology.
    (3) An advance waiver, when granted, will apply only to inventions 
reported to NASA under the applicable terms of the contract and a 
designation made within 6 months of the time of reporting (or a 
reasonable time thereafter permitted for good cause shown) that the 
contractor elects title to the invention and intends to file or has 
filed a U.S. patent application. Such election will be made by 
notification in writing to the patent representative designated in the 
contract. Title to all other inventions made under the contract are 
subject to section 20135(b)(1) of the National Aeronautics and Space 
Act, 51 U.S.C. 20135(b)(1). The granting of the advance waiver does not 
otherwise relieve a contractor of any of the invention identification 
or reporting requirements set forth in the applicable patent rights 
clause in the contract.
    (4) The advance waiver shall extend to the invention claimed in any 
patent application filed on the reported invention, including any 
subsequent divisional or continuation application thereof, provided the 
claims of the subsequent application do not substantially change the 
scope of the reported invention.
    (d) When a petition for waiver is submitted under paragraph (b) of 
this section, prior to contract execution, it will be processed 
expeditiously so that a decision on the petition may be

[[Page 19199]]

reached prior to execution of the contract. However, if there is 
insufficient time or insufficient information is presented, or for 
other reasons which do not permit a recommendation to be made without 
unduly delaying execution of the contract, the Board will inform the 
contracting officer that no recommendation can be made prior to 
contract execution and the reasons therefor. The contracting officer 
will then notify the petitioner of the Board's action.
* * * * *

0
7. Section 1245.106 is amended by revising paragraphs (c) and (d) to 
read as follows:
* * * * *


§&thnsp1245.106  Waiver of foreign rights.

* * * * *
    (c) The Board will normally recommend the waiver of foreign rights 
be granted under paragraph (a) or paragraph (b) of this section in any 
designated country unless:
    (1) The Board finds that exceptional circumstances exist, such that 
restriction or denial of the requested foreign rights will better 
promote one or more of the objectives set forth in 
§&thnsp1245.104(b)(3)(i) through (v); or
    (2) The Board finds that the economic interests of the United 
States will not be served thereby; or unless
    (3) In the case of an individual identified invention under 
paragraph (b) of this section, NASA has determined, prior to the 
request, to file a patent application in the designated country.
    (d) If, subsequent to the granting of the petition for foreign 
rights, the petitioner requests and designates additional countries in 
which it wishes to secure patents, the Chairperson may recommend such 
request, in whole or in part, without further action by the Board.

0
8. Section 1245.107 is amended by revising the introductory text of 
paragraph (b) to read as follows:


§&thnsp1245.107  Reservations.

* * * * *
    (b) March-in rights. For any invention for which waiver of rights 
has been granted under this subpart, NASA has the same right as set 
forth in 35 U.S.C. 203 and 210, with the procedures set forth in 
§&thnsp1245.117 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:
* * * * *

0
9. Section 1245.108 is amended by revising the first sentence of 
paragraph (b) and the last sentence of paragraph (c).


§&thnsp1245.108  License to contractor.

* * * * *
    (b) The contractor's domestic license may be revoked or modified by 
the Administrator to the extent necessary to achieve expeditious 
practical application of the invention pursuant to an application for 
an exclusive license submitted in accordance with the Licensing of 
Government-Owned Inventions (37 CFR part 404). * * *
    (c) * * * The contractor shall have the right to appeal, 
in accordance with applicable regulations in 37 CFR part 404, any 
decision concerning the revocation or modification of its license.

0
10. Section 1245.110 is amended by redesignating paragraphs (b) and (c) 
as paragraphs (c) and (d), and by adding new paragraph (b) to read as 
follows:


§&thnsp1245.110  Content of petitions.

* * * * *
    (b) Advance waiver petitions shall also identify the invention(s) 
and/or class(es) of inventions that the Contractor believes will be 
made under the contract and for which waiver of rights is being 
requested, in accordance with §&thnsp1245.104(c)(2).
* * * * *

0
11. Section 1245.112 is amended by revising paragraph (a) to read as 
follows:


§&thnsp1245.112  Notice of proposed Board action and 
reconsideration.

    (a) Notice. Except as provided by §&thnsp1245.104(d), the 
Board will notify the petitioner, through the contracting officer, with 
respect to petitions for advance waiver prior to contract execution, 
and directly to the petitioner for all other petitions:
    (1) When it proposes to recommend to the Administrator that the 
petition be:
    (i) Granted in an extent different from that requested; or
    (ii) Denied.
    (2) Of the reasons for the recommended action adverse to or 
different from the waiver of rights requested by the petitioner.
* * * * *

0
12. Section 1245.116 is amended by revising paragraph (b) to read as 
follows:


§&thnsp1245.116  Miscellaneous provisions.

* * * * *
    (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. lll, and is subject to the provisions of 
Section 20135 of the National Aeronautics and Space Act (51 U.S.C. 
Chapter 201).
* * * * *

0
13. Section 1245.117 is amended by revising paragraph (a) to read as 
follows:


§&thnsp1245.117  March-in and waiver revocation procedures.

    (a) The exercise of march-in procedures shall be in conformance 
with 35 U.S.C. 203 and the applicable provisions of 37 CFR 401.6, 
entitled “Exercise of march-in rights for inventions made by 
nonprofit organizations and small business firms.”
* * * * *

Nanette Jennings,
Federal Register Liaison Officer.
[FR Doc. 2015-08145 Filed 4-9-15; 8:45 am]
 BILLING CODE 7510-13-P