[Federal Register Volume 89, Number 241 (Monday, December 16, 2024)]
[Notices]
[Pages 101641-101643]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-29523]
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NATIONAL SCIENCE FOUNDATION
Request for Comments on NSF's Proposed Intellectual Property
Options
AGENCY: U.S. National Science Foundation.
ACTION: Request for comments.
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SUMMARY: The U.S. National Science Foundation (NSF) seeks public
comments to inform the experimental implementation of new intellectual
property (IP) provisions to be used in public-private partnerships,
particularly those advancing research and development, that include co-
funding by private partners. NSF is committed to fostering innovation
and promoting the translation of research into practical applications.
To enhance the effectiveness of public-private partnerships, NSF seeks
to implement a set of options for IP provisions that provide greater
flexibility and balance the interests of both academia and industry.
Recent engagements, including the 2023 NSF-Industry Partnership Summit
and subsequent listening sessions, have highlighted the need for
optional IP strategies that can adapt to the unique requirements of
various funded projects. NSF intends to incorporate these IP options
into partnership agreements involving industry and/or non-profit
organizations for funding opportunities whose funded awards may result
in the generation of IP. Through this Request for Comments (RFC), NSF
invites input from a wide range of stakeholders, including industry,
academia, non-profit organizations, other government agencies, and
other interested parties.
DATES: Interested persons or organizations are invited to submit
comments on or before 11:59 p.m. (EST) on Friday, January 24, 2025.
ADDRESSES: To respond to this Request for Comments, please use the
official submission form available at: https://airtable.com/app9KPUhqR2lAb4Zf/pag9d0QhLcOXkGlud/form.
Respondents only need to provide feedback on one or more questions
of interest or relevance to them. Each question is voluntary and
optional. The response to each question has a 4,000-character limit
including spaces.
FOR FURTHER INFORMATION CONTACT: For further information, please direct
questions to Allen Walker through email at [email protected],
phone at 703-292-2291, or mail at U.S. National Science Foundation,
ATTN: Allen Walker, 2415 Eisenhower Avenue, Alexandria, VA 22314, USA.
SUPPLEMENTARY INFORMATION: The 2023 NSF-Industry Partnership Summit and
subsequent engagements revealed differing viewpoints in stakeholders'
perspectives regarding NSF's existing IP terms. In response, the
Directorate for Technology, Innovation and Partnerships (TIP) has
developed a series of IP grant-of-rights options to address these
concerns. These options are informed by the Bayh-Dole Act and aim to
promote the practical application and commercialization of federally
funded research while preserving potential access to the IP for the
U.S. Government.
Below is the language for each of the three IP grant-of-rights
options to be used in partnership agreements. These IP options can be
tailored according to the particular research area and the specific
terms and conditions agreed upon between NSF and the partner(s) in a
particular public-private partnership.
A. Research License With Commercial Option
The disposition of rights to inventions or works of authorship made
during NSF-funded research is governed by Federal law, regulation, and
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR part
401. Pursuant to applicable laws, regulations, and policies, the entire
right, title, and
[[Page 101642]]
interest of Intellectual Property (IP) that directly results from
activities funded by NSF (``Project IP'') is retained by the entity
that created it. While recipients are permitted to temporarily withhold
the publication of data and software related to inventions to
facilitate patent application filings, NSF terms and conditions require
the subsequent prompt publication of all research outputs--including
results, data, and software--generated in the performance of the
research.
All partners are entitled to a non-exclusive, royalty-free license
for use of Project IP for research purposes for a period of 18 months
from the date of disclosure of the Project IP. This license shall not
extend to any IP other than Project IP. This 18-month period is
structured as follows:
1. Notice Period: For the first 12 months after disclosure of the
Project IP, any partner shall have a right to indicate in writing that
they are exercising their Right of First Negotiation (``ROFN'') for an
opportunity to secure an exclusive commercial license during the
Negotiation/Option Period.
2. Negotiation/Option Period: Following the 12-month Notice Period,
there shall be a 6-month period during which partners so exercising
their ROFN may negotiate for an exclusive commercial license.
If an exclusive commercial license is secured by one partner during
the Negotiation/Option Period, all other partners' rights shall
automatically become a perpetual, non-exclusive, royalty-free license
for research purposes only.
If no exclusive commercial license is secured by the end of the
Negotiation/Option Period, the non-exclusive license granted herein
shall, for all partners, automatically convert into a perpetual non-
exclusive, royalty-free license for research purposes only.
Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive,
irrevocable, paid-up license throughout the world for use of Project IP
that directly results from activities funded by NSF.
B. Convertible Commercial License
The disposition of rights to inventions or works of authorship made
during NSF-funded research is governed by Federal law, regulation, and
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR part
401. Pursuant to applicable laws, regulations, and policies, the entire
right, title, and interest of Intellectual Property (IP) that directly
results from activities funded by NSF (``Project IP'') is retained by
the entity that created it. While recipients are permitted to
temporarily withhold the publication of data and software related to
inventions to facilitate patent application filings, NSF terms and
conditions require the subsequent prompt publication of all research
outputs--including results, data, and software--generated in the
performance of the research.
All partners are entitled to a non-exclusive, royalty-free license
for use of Project IP for both research and commercial purposes for a
period of 18 months from the date of disclosure of the Project IP. This
license shall not extend to any IP other than Project IP. This 18-month
period is structured as follows:
1. Notice Period: For the first 12 months after disclosure of the
Project IP, any partner shall have the have a right to indicate in
writing that they are exercising their Right of First Negotiation
(``ROFN'') for an opportunity to secure an exclusive commercial license
during the Negotiation/Option Period.
2. Negotiation/Option Period: Following the 12-month Notice Period,
there shall be a 6-month period during which partners so exercising
their ROFN may negotiate for an exclusive commercial license.
If an exclusive commercial license is secured by one partner during
the Negotiation/Option Period, all other partners' rights shall
automatically convert into a perpetual non-exclusive, royalty-free
license for research purposes only.
If no exclusive commercial license is secured by the end of the
Negotiation/Option Period, the non-exclusive license granted herein
shall, for all partners, automatically convert into a perpetual non-
exclusive, royalty-free license for research purposes only.
Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive,
irrevocable, paid-up license throughout the world for use of Project IP
that directly results from activities funded by NSF.
C. Research-Only License
The disposition of rights to inventions or works of authorship made
during NSF-funded research is governed by Federal law, regulation, and
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR part
401. Pursuant to applicable laws, regulations, and policies, the entire
right, title, and interest of Intellectual Property (IP) that directly
results from activities funded by NSF (``Project IP'') is retained by
the entity that created it, following applicable Federal law. While
recipients are permitted to temporarily withhold the publication of
data and software related to inventions to facilitate patent
application filings, NSF terms and conditions require the subsequent
prompt publication of all research outputs--including results, data,
and software--generated in the performance of the research.
All partners are entitled to a non-exclusive, royalty-free license
for use of Project IP for research purposes. This license shall not
extend to any intellectual property other than Project IP.
Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive,
irrevocable, paid-up license throughout the world for use of Project IP
that directly results from activities funded by NSF.
Questions for Public Comment
NSF welcomes comments from the public on any issues that are
relevant to this topic, and is particularly interested in answers to
the following questions:
Overall Impact: How do you believe these proposed IP options will
impact innovation, technology transfer, and economic growth?
Balance: Do these options ensure a balanced distribution of IP
rights between academia and industry partners? How can the proposed IP
options be further refined to ensure maximum balance in IP
arrangements?
Flexibility: What additional flexibility should be incorporated
into the IP options to accommodate and incentivize a range of research
initiatives?
Adoption: What strategies could NSF employ to encourage widespread
adoption of these IP options among potential partners?
Barriers: What potential barriers exist to implementing these IP
options, and how might they be overcome?
Translation and Incentives: Do the proposed IP options effectively
promote the translation of research into practice while incentivizing
industry participation and ensuring benefits for universities and
researchers? What improvements could be made to enhance these aspects?
Additional Options: Are there other IP grant-of-rights options or
frameworks that NSF should consider to better support collaborative
research initiatives and facilitate research impact?
NSF, at its discretion, will use the information submitted in
response to this RFC to help inform future program directions, new
initiatives, and potential funding opportunities. The information
provided will be analyzed, may appear in reports, and may be shared
publicly on agency websites. Respondents are advised that the
government is under no obligation to acknowledge receipt of the
information or provide feedback to
[[Page 101643]]
respondents with respect to any information submitted. No proprietary,
classified, confidential, or sensitive information should be included
in your response submission. The government reserves the right to use
any non-proprietary technical information in any resultant
solicitations, policies, or procedures.
(Authority: Pub L. 117-167.)
Dated: December 11, 2024.
Suzanne H. Plimpton,
Reports Clearance Officer, National Science Foundation.
[FR Doc. 2024-29523 Filed 12-13-24; 8:45 am]
BILLING CODE 7555-01-P