FEDERAL REGULATIONS:

Through its GRC Technology Transfer and Partnership Office, NASA licenses pending patent applications and existing patents to private industry in compliance with 37 CFR, Part 404, "Licensing of Government Owned Inventions."

LICENSING OF NASA GRC TECHNOLOGIES:

The licensing process commences at the respective NASA Center where the invention occurred. NASA licenses are individually negotiated with the prospective licensee, and each license contains terms concerning commercialization (practical application), license duration, royalties, and periodic reporting. License royalties are negotiable.

NASA licenses may be exclusive, partially exclusive, or nonexclusive; and may be for all or less than all fields of use of the technology or limited to all or specific geographic areas. In some instances, foreign patents and applications are available for licensing.

Licenses are non-assignable, unless approved by NASA, and may be revoked for non-compliance. When evaluating an application for license in one or more of its patents, NASA reviews the development and marketing plan submitted by the license applicant and evaluates factors such as the applicant's technical, financial, manufacturing, and marketing resources.

As in any business venture or new product introduction, the applicant's present and past business activities, and it's anticipated investment of capital and other resources for carrying out the development and marketing plan, are of importance.

OVERVIEW OF THE LICENSING PROCESS:

The information provided here is offered as an overview of the NASA GRC licensing process. Formal procedures for licensing Government inventions have been codified in 37 CFR, Part 404.   GRC License Application Instructions is a compilation of requirements from 37 CFR 404.8 and must be followed in order to be considered for a license.

License Application Review and Recommendation

Upon receiving your application for license, appropriate personnel at GRC's Technology Transfer and Partnership 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, or

(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, GRC will negotiate mutually acceptable terms for the proposed agreement.

Exclusive and Partially Exclusive Licenses

NASA GRC 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 GRC technologies take place between the prospective licensee and GRC. All NASA licenses are negotiated individually. GRC Center Patent Counsel is responsible for negotiating, or supervising the negotiation of, all NASA GRC 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 non-refundable 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 GRC, 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 GRC's Patent Counsel.

Downloads(Downloads may require Adobe Acrobat Reader - A Free Plugin)

- License Application Instructions
- Model License Terms and Conditions
- 37 CFR, Part 404

HOW DO I APPLY FOR A LICENSE?

To apply for a license under one or more patents, you should determine how you intend to commercialize the technology, and how you intend to structure and fund your enterprise. Then, you must also prepare a license application, which outlines your plans for developing and marketing the technology.

 

A completed application for license should be submitted to:

NASA John H. Glenn Research Center at Lewis Field
Technology Transfer and Partnership Office
ATN: Robert A. Kistemaker, Mail Stop 4-8
21000 Brookpark Road
Cleveland, Ohio, 44135

 

While there is no form to fill out, GRC License Application Instructions and 37 CFR, Part 404 will help guide you through this process. You may wish to consult the SBA Table of Small Business Size Standards in order to determine your actual corporate status for Federal government identification purposes. Copies of all documents may be downloaded from the bottom of this page. For additional licensing assistance, please contact our office at 216-433-2775.