LOADING...
Text Size
Licensing Agreements

Download instructions on how to apply for a Licensing Agreement.

NASA has the authority to grant licenses on its domestic and foreign patents, patent applications, and software. All NASA licenses are individually negotiated with the prospective licensee, and each license contains terms concerning commercialization (practical application), license duration, royalties, and periodic reporting. NASA patent and copyright licenses may be exclusive, partially exclusive, or nonexclusive.

Types of Licenses:
Exclusive, Nonexclusive, and Limited (partially) Exclusive Licenses

Exclusive License
A legal document granting intellectual property rights to another party for their sole use in a given field of use or geographic area.

Nonexclusive License
A legal document granting intellectual property rights to an unlimited number of parties in a given field of use or geographic area.

Limited (partially) Exclusive License
A legal document granting intellectual property rights to a pre-determined number of recipients (more than one) for a specific field of use or geographic area. This is also referred to as a Field of Use license.

Applying for a License:

NASA owns over 1,000 patents and patent applications that protect inventions in hundreds of different subject matter categories. NASA makes these inventions available to industry through its Patent Licensing Program, which is administered by the NASA Office of the General Counsel, NASA Headquarters, Washington, D.C.

Legal Requirements:

NASA has the authority to grant licenses on its domestic and foreign patents and patent applications pursuant to 35 USC 207-209. NASA has implemented this authority by means of the NASA Patent Licensing Regulations, 14CFR 1245.200 et. Seq.

All NASA licenses are individually negotiated with the prospective licensee, and each license contains terms concerning transfer (practical application), license duration, royalties, and periodic reporting. NASA patent licenses may be exclusive, partially exclusive, or nonexclusive.

To apply for a license on a NASA Ames patent, please send us a letter providing the following information:
 

Paragraph A:
The identity of the particular invention: either the patent application serial number, the patent number, or the NASA case number. When possible, include the title of the invention and patent issue date.

Paragraph B:
Identify the type of license being applied for (e.g. exclusive, partially exclusive, or non-exclusive) and any desired limitations (e.g. field of use, geographic, etc.).

Paragraph C:
Identify the applicant. Provide the name and address of the person, company or organization applying for the license, citizenship, place of incorporation and the name of the parent corporation.

Paragraph D:
List the name, address, and telephone number of the applicant's representative with whom NASA should correspond and negotiate. The representative must have authority to conduct licensing negotiations for the applicant.

Paragraph E:
Describe the nature and type of the applicant's business. The description should include any products or services that the applicant has successfully commercialized in the last 5 years and the approximate number of people employed by the applicant. Please submit a company annual report and income/balance sheet [or equivalent] to comply with this paragraph requirement.

Paragraph F:
Explain how the applicant became aware of the invention sought to be licensed.

Paragraph G:
Indicate whether the applicant is a small business firm. Please refer to guidelines at 37CFR.404.3(c) on the Small Business Administration website.

Paragraph H:
Provide a detailed commercialization plan for developing and/or marketing the invention. More information on the required components of the commercialization plan is presented below:

  1. An overview of how the company plans to use the licensed technology, including but not limited to: (a) developing a new product (b) enhancing an existing technology or product (c) incorporating the technology to improve existing processes
  2. If a product is to be developed, include a pro forma income statement for a 3- to 5-year period detailing total and per unit revenues, and direct and indirect expenses resulting from the licensed technology. The pro forma should reflect the proposed licensing terms such as royaties, up front fee, yearly minimums, and duration of the license. In general, provide data relevant to valuation of the technology in the proposed use, based up on market evaluation and research.
  3. A chart showing what milestones need to be achieved and when. Provide a timeline of key steps or milestones the applicant believes will be required to bring the invention to practical application.
  4. A statement of anticipated investment of capital and other resources the applicant believes will be necessary to bring the invention to practical application. This statement should include the nature, amount and timing of such anticipated investments.
  5. A statement of the field(s) of use in which your company intends to apply the technology
  6. The identified role of the NASA Field Center. Will it be as technical consultant or will NASA research, design, or other engineering be required? Define anticipated manpower requirements
  7. A statement of the geographic areas in which the applicant intends to manufacture any products embodying the invention and the geographic areas where the applicant intends to use or sell any products embodying the invention.
  8. A statement indicating the applicant's sources of funding.
  9. The participant shall identify its top level management team and key personnel for this effort, including a description of the reporting structure, biographical information, history of relevant experience and business ventures, and professional references for each.
  10. A statement indicating the applicant's capability and intention to fulfill this plan for development and marketing. With regard to the applicant's capability, this statement should include information pertaining to the applicant's manufacturing, marketing, financial and technical resources, with balance sheet, an income statement and an annual report as attachments.
  11. Market analysis and plan outlining targeted market sector and customers, foreign markets, etc.

Paragraph I:
Identify any licenses that were previously granted to the applicant under any federally owned inventions.

Paragraph J:
Provide a statement, containing the applicants' best current knowledge, pertaining to the extent the invention is being practiced by private industry, the government, or both, and the extent the invention is commercially available. Identify the competing companies and products in the market sector.

Paragraph K:
Provide any other information the applicant believes will support a determination to grant the requested license to the applicant.

Mail completed information to:

NASA Ames Research Center, Technology Partnerships Division,
M.S. 202A-3, Moffett Field, CA 94035-1000.
Attn: Trupti Sanghani
Phone: 650-604-6889, Email: Trupti.D.Sanghani@nasa.gov

Image Token: 
[image-47]
Image Token: 
[image-62]
Image Token: 
[image-62]
Page Last Updated: April 23rd, 2014
Page Editor: Jon Welch