The information provided here is offered as an overview of the NASA JSC licensing process. Formal procedures for licensing Government inventions have been codified in
+ 37 CFR, Part 404

License Application Review and Recommendation
Upon receiving your application for license, appropriate personnel at JSC's Technology Transfer and Commercialization Office will review the application for completeness and compliance with + 37 CFR 404.8. We will then make a preliminary recommendation to NASA Headquarters. The recommendation may be to: (1) grant the license as requested, (2) grant the license with modification after negotiation with the licensee, or (3) deny the license. If a recommendation to grant the license is approved, JSC will negotiate mutually acceptable terms for the proposed agreement.

Exclusive and Partially Exclusive Licenses
NASA JSC will consider requests for either exclusive or nonexclusive licenses. However, for exclusive and partially exclusive licenses, NASA is required to publish a notice of a prospective license in the Federal Register identifying the invention and proposed licensee, and providing at least a 15-day period for the public to file written objections. Any objections received during this time period will be reviewed and evaluated by NASA prior to making a final licensing determination.
Nonexclusive licenses may be granted under federally owned inventions without publication of availability or notice of a prospective license.

License Negotiations
Once a final determination is made to grant a license, final license negotiations commence at the respective NASA Center where the invention occurred. Final negotiations for JSC technologies take place between the prospective licensee and JSC. All NASA licenses are negotiated individually. JSC Center Patent Counsel is responsible for negotiating, or supervising the negotiation of, all NASA JSC licenses.

License Terms and Provisions
Licenses shall contain such terms and conditions as the Federal agency determines are appropriate for the protection of the interests of the Federal Government and the public, including the following required terms and conditions [37 CFR 404.5(b)]:

• The duration of the license shall be for a period specified in the license agreement, unless sooner terminated in accordance with this part.
  
  
• The license may be granted for all or less than all fields of use of the invention or in specified geographical areas, or both.
  
  
• The license may extend to subsidiaries of the licensee or other parties if provided for in the license but shall be non-assignable without approval of the Federal agency, except to the successor of that part of the licensee's business to which the invention pertains.
  
  
• The license may provide the licensee the right to grant sublicenses under the license, subject to the approval of the Federal agency. Each sublicense shall make reference to the license, including the rights retained by the Government, and a copy of such sublicense shall be furnished to the Federal agency.
  
  
• The license shall require the licensee to carry out the plan for development and/or marketing of the invention, to bring the invention to practical application within a period specified in the license, and to continue to make the benefits of the invention reasonably accessible to the public.
  
  
• The license shall require the licensee to report periodically on the utilization or efforts at obtaining utilization that are being made by the licensee, with particular reference to the plan submitted.
  
  
• Licenses generally require the payment of royalties or other consideration.
  
  
• The license shall provide for the right of the Federal agency to terminate the license, in whole or in part, under conditions specified by law. A license may be revoked for specific reasons such as failure to achieve practical application of the technology or to comply with other terms of the agreement.

Fees and Royalties
Proposal and negotiation of license fees are integral parts of the entire licensing process. The License Agreement will normally include terms setting forth the royalty payments. Royalties may consist of a nonrefundable license fee to be paid by the licensee upon execution of the license; continuing royalties, either based on the sales of the licensed product or usage of a process, or which can be expressed in terms of a fixed amount per year; and a minimum royalty which will be due only if the continuing royalty is not met in a given year.

License Approval
Once NASA JSC, in coordination with its Patent Counsel, and the prospective licensee have agreed to a licensing agreement, the agreement is forwarded to NASA Headquarters for final review and approval. The final determination to grant or deny the license is made by the NASA General Counsel, and is based on the recommendation of JSC's Patent Counsel.

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+ License Application Checklist


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