[Code of Federal Regulations]
[Title 14, Volume 5]
[Revised as of January 1, 2008]
From the U.S. Government Printing Office via GPO Access
[CITE: 14CFR1245.104]

[Page 204-205]
 
                     TITLE 14--AERONAUTICS AND SPACE
 
                          SPACE ADMINISTRATION
 
PART 1245_PATENTS AND OTHER INTELLECTUAL PROPERTY RIGHTS--
Table of Contents
 
                   Subpart 1_Patent Waiver Regulations
 
Sec. 1245.104  Advance waivers.

    (a) The provisions of this section apply to petitions for waiver of 
domestic rights to any or all of the 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 eliminating 
all or part of the rights of the contractor in one or more of the 
following situations:
    (1) When the contractor is not located in the United States or does 
not have a place of business in the United States or is subject to the 
control of a foreign government;
    (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 
elimination of the right to retain title 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 elimination of the right to retain title will better 
promote one or more of the following objectives:
    (i) Promoting the utilization of inventions arising from federally 
supported research and development;
    (ii) Encouraging maximum participation of industry in federally-
supported research and development;
    (iii) Ensuring that inventions are used in a manner to promote free 
competition and enterprise;
    (iv) Promoting the commercialization and public availability of 
inventions made in the United States by United States industry and 
labor; and
    (v) Ensuring that the Government obtains 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

[[Page 205]]

set forth in Sec. 1245.107. Normally, the reservations of Sec. 
1245.107(a), License to the Government, and Sec. 1245.107(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 
restricting or eliminating only part of the rights of the contractor to 
the extent necessary to address the particular situation, consistent 
with the policy and goals of Sec. 1245.103. In that event, the waiver 
grant will be subject to additional reservations as provided for in 
Sec. 1245.107(c).
    (2) 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 305(a) of the National Aeronautics and Space Act of 
1958, as amended, 42 U.S.C. 2457(a). 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.
    (3) The 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 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 has been made and the reasons therefor. The contracting 
officer will then notify the petitioner of the Board's action.
    (e) After notification by the contracting officer under paragraph 
(d) of this section, the petitioner may, upon its execution of the 
contract, or within 30 days, request the Board to reconsider the matter 
under paragraph (b) of this section either on the record or with any 
additional statements submitted in the subpart of the original petition.
    (f) A waiver granted pursuant to a petition submitted under this 
section shall extend to any contract changes, modifications, or 
supplemental agreements, so long as the purpose of the contract or the 
scope of work to be performed is not substantially changed.