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1.2.10. INTELLECTUAL PROPERTY AND DATA RIGHTS:

This section addresses the allocation and protection of rights in the following five areas: (1) rights in patents and inventions generated or used in the performance of the agreement; (2) data rights; (3) publication of resulting data; (4) handling of data; and (5) release of general information to the public. In addition, it addresses the U.S. Government’s authorization and consent for use of a third party’s patent or copyright and the ensuing patent indemnification requirement (each of which should be addressed in every agreement). Guidance for choosing among these clauses is set forth below.

A Space Act agreement is an "other transaction" as authorized by 305(a) of the Space Act [42 U.S.C. § 2473(c)(5) and (6)]. A Space Act agreement is not a procurement contract. The principal purpose of a contract is to procure property or services, such as the performance of work of an inventive type, for the direct benefit of NASA with little or no involvement of NASA. The fact that a Space Act agreement is not a contract is important in the intellectual property area because a different allocation of rights results under a contract for the procurement of property or services than under a Space Act agreement. Under a contract, section 305(a) of the Space Act applies, vesting title in inventions, made in the performance of work under a contract, with the U.S. Government. Therefore, under a contract, the contractor receives title to inventions from the U.S. Government either through an election (35 U.S.C. § 200 et seq.) or a waiver (42 U.S.C. § 2457(f)) process. However, under a Space Act agreement, if work of an inventive type is not being performed for NASA, NASA can tailor the allocation of intellectual property rights according to the nature of the particular agreement and contributions of the parties.

The following factors are considered in determining the content of the intellectual property provisions in agreements: (1) the identity of the other party to the agreement; (2) the purpose of the agreement; (3) whether the agreement is reimbursable or nonreimbursable; (4) whether NASA’s responsibilities involve inventive or creative activities, or only provide use of facilities, or involve exchange of information; (5) whether there is adequate coverage of royalty sharing opportunities for NASA employee inventors; and (6) the avoidance of inappropriate technology transfer in agreements with foreign entities.

The intellectual property and data clauses provided in this manual reflect NASA’s basic approach that has evolved over the years for commonly encountered circumstances. However, since the Space Act permits flexibility in these matters, it may be desirable to modify the clauses to fit particular circumstances, within the following parameters. Any questions regarding the applicability of, or deviations from, intellectual property and data clauses should be referred to intellectual property/patent counsel.

NASA’s ability to protect intellectual property is affected by the Freedom of Information Act (FOIA) [5 U.S.C. § 552]. The FOIA permits any person the right of access to Federal agency records unless specifically exempted by the Act. Proprietary documents containing private sector trade secrets and commercial or financial information, generated outside the Government, but in the control of NASA, are exempt from disclosure by FOIA exemption 4. Information disclosing inventions and information that is part of a patent application may be withheld under FOIA exemption 3.

1.2.10.1.   PATENT AND INVENTION RIGHTS:

With respect to the patent and invention clauses, any NASA invention licensed to a participant must be licensed in accordance with the requirements of 37 CFR Part 404, and NASA must retain a Government-purpose license. Under NASA policy, licenses granted to inventions developed under a reimbursable agreement are usually irrevocable to the extent permitted by 35 U.S.C. § 209.

Sample clauses 1.2.c.c. - 1.2.e.e. in appendix 1 are intended for use in reimbursable or nonreimbursable Space Act agreements with domestic nongovernmental entities. Partially reimbursable Space Act agreements would use a combination of the clauses, i.e., reimbursable clauses for the reimbursable portion of the agreement and nonreimbursable clauses for the nonreimbursable portion of the agreement.

The Short Form Nonreimbursable and Reimbursable patent and invention rights sample clause 1.2.c.c. in appendix 1 is to be used in agreements where the probability that an invention may result from the activities to be carried out by NASA is relatively low (e.g., use of facilities to provide test and evaluation of a participant’s hardware, simple information, or technology exchange agreements, and the like). It assures that no background rights in intellectual property are to be acquired. In the unlikely event that an invention may be made under the agreement, it adopts the policy that each party keeps rights to its own intellectual property (which would occur under the common law anyway, lacking express agreement to the contrary). The clause also provides that the parties will discuss and agree on responsibilities and rights should there be a joint invention. Under these circumstances, and under this policy, it should make no difference whether the activities under the agreement are reimbursable or nonreimbursable, and therefore the clause may be used in either situation where the probability is low that NASA will carry out inventive (or creative) activities under the agreement.

Sample Clause, see appendix 1, clause 1.2.c.c. "Intellectual Property and Data Rights" Patent and Invention Rights (Nonreimbursable and Reimbursable Space Act Agreement) Short Form Sample Clause.

The Standard Nonreimbursable patent and invention rights sample clause 1.2.d.d. in appendix 1 is to be used in agreements for joint activities (i.e., each party funding its own agreed-to activities), wherein NASA may perform research, experimental, developmental, engineering, demonstration, or design work of the type that could result in inventions being made in carrying out activities under the agreement. In this situation, the principle that each party keeps rights to their own intellectual property still applies, except that as an incentive to commercialize NASA-developed technology, NASA will use reasonable efforts to grant the participant, in accordance with the requirements of 37 CFR Part 404, an exclusive or partially exclusive commercial license (on terms and conditions to be negotiated) to any NASA invention that may be made under the agreement or for any invention NASA acquires title from its contractor and, on which NASA decides to file a patent application and receives a patent.

This license to the private participant will be subject to the retention of a Government-purpose license, and a nonexclusive license to the contractor (where title is acquired from a support contractor). The commercial license to the private participant is to be royalty-bearing and revocable if the invention is not commercialized consistent with NASA (and Governmentwide) policy in licensing its inventions. It also provides an opportunity for royalty-sharing with the employee-inventor, consistent with NASA, and Governmentwide policy under the National Technology Transfer and Advancement Act (P.L. 104-113), [codified as amended at 15 U.S.C. § 3710 et seq.] The foregoing will also apply to any undivided interest NASA acquires for any invention made jointly with the private participant. As to an invention made solely by the private participant, NASA generally acquires no rights whatsoever, but may, under certain circumstances, negotiate a license to use the invention for research,demonstration, test, and evaluation purposes.

Sample Clause, see appendix 1, clause 1.2.d.d. "Intellectual Property and Data Rights" Patent and Invention Rights (Nonreimbursable Space Act Agreement) Standard Form Sample Clause.

The Standard Reimbursable patent and invention rights sample clause 1.2.e.e in appendix 1 is to be used in any agreement wherein NASA may perform research, experimental, developmental, engineering, demonstration, or design work for which NASA is to be reimbursed by the private participant. The same principle that each party keeps rights to its own intellectual property also applies, but in recognition that NASA is reimbursed for its activities, both the license to the private participant, and the rights retained by the Government are different. Specifically, the license to the private participant will be an exclusive, royalty-free, irrevocable license consistent with the requirements of 37 CFR Part 404. The rights retained by NASA (should the private participant be licensed) normally will be limited to NASA’s research, demonstration, test, and evaluation purposes. The foregoing also applies to any undivided interest NASA acquires for any invention made jointly with the private participant under a reimbursable agreement. Generally, NASA acquires no rights to any invention made solely by the private participant.

Sample Clause, see appendix 1, clause 1.2.e.e. "Intellectual Property and Data Rights" Patent and Invention Rights (Reimbursable Space Act Agreement) Standard Form Sample Clause.

1.2.10.2.   RIGHTS IN DATA:
The data sample clauses 1.2.f.f. - 1.2.i.i. in appendix 1 are structured to facilitate the exchange of data necessary for the performance of the agreement, while providing assurances and safeguards for the protection of any proprietary information that is exchanged or developed. In addition, the clauses do not ALTer the common law ability of the participant to assert copyright in its works of authorship created under the agreement, but the participant is required to grant NASA a Government-purpose license in the copyrighted material. Any of the data clauses may be tailored or customized to fit the circumstances. For example, selected features of the more specific, protective data rights allocation scheme of the standard clause may be added to the short form clause as needed and applicable. Other matters, such as special treatment of computer software may be added if needed for the activities to be carried out. Where protection of computer software under a Space Act agreement is a concern, the policies and procedures of NPD/NPG 2210.2B should be followed. Usually the basic protective and rights allocation scheme of the applicable clauses should be adopted without change; however, should there be a need to modify the clauses the cognizant patent or intellectual property counsel should be consulted.

The sample clauses 1.2.f.f. - 1.2.i.i. in appendix 1 are intended for use in any reimbursable or nonreimbursable Space Act agreement with domestic nongovernmental entities. Partially reimbursable Space Act agreements would use a combination of the clauses, i.e., reimbursable clauses for the reimbursable portion of the agreement and nonreimbursable clauses for the nonreimbursable portion of the agreement.

The Short Form Nonreimbursable data sample clause 1.2.f.f. in appendix 1 is to be used in agreements where no extensive research, experimental, developmental, engineering, demonstration, or design activities are to be carried out by NASA, (e.g., use of facilities to provide test and evaluation of a participant’s hardware, and simple information or technology-exchange agreements). It assumes that normally no proprietary information is to be developed or exchanged, but provides assurances and safeguards for the protection of such information in the event such should occur. In addition, there is a section for detailing NASA’s permitted use of such information. Permitted uses, for example, include use only for purposes of the agreement as well as use for research and development purposes. To the extent permitted by law, the clauses provide protection of some data produced by NASA that may have some commercial (or proprietary) value to the participant. Since any activities under the agreement are to be cooperative or collaborative in nature (i.e., each party funding its own agreed-to activities), there often will be agreement on the publication or dissemination, or on NASA or Government-use rights, of some of the results of the activities as consideration for the agreement. Where publication is agreed upon, an optional paragraph may be added at the end of the clause to acknowledge that some of the results of the agreement, (and under what conditions and understandings) may be published or disseminated. This may be done in the optional paragraph to the clause, with a cross-reference in the agreement, or vice versa. This short form clause normally should be used in an agreement containing the short form patent and invention rights clause, or no patent and invention rights clause, unless it is known that there will be significant development and exchange of, or access to, data that may be considered proprietary (in which case the standard nonreimbursable data rights sample clause 1.2.h.h. in appendix 1 should be used).

Sample Clause, see appendix 1, clause 1.2.f.f. "Intellectual Property and Data Rights" Rights in Data (Nonreimbursable Space Act Agreement) Short Form Sample Clause.

The Short Form Reimbursable data rights sample clause 1.2.g.g. in appendix 1 is to be used in the same type of activities as above, but for which the participant is to reimburse NASA. Thus, the same assurances and safeguards are provided in the event proprietary information is to be developed or exchanged. However, since NASA is to be reimbursed, no other consideration is needed, and thus there normally would not be any agreement on the publication or dissemination of any results of the activity, nor would NASA or the Government obtain any rights to use the data. This short form clause normally should be used in an agreement containing the short form patent and invention rights clause, or no patent and invention rights clause, unless it is known that there will be significant development and exchange of, or access to data that may be considered proprietary (in which case the standard reimbursable data rights sample clause 1.2.i.i. in appendix 1 should be used).

Sample Clause, see appendix 1, clause 1.2.g.g. "Intellectual Property and Data Rights" Rights in Data (Reimbursable Space Act Agreement) Short Form Sample Clause.

The Standard Nonreimbursable data rights sample clause 1.2.h.h. in appendix 1 is to be used for cooperative or collaborative type activities where it is anticipated that extensive research, experimental, developmental, engineering, demonstration, or design activities are to be carried out, such that it is likely that proprietary information will be developed or exchanged under the agreement. The same basic protective and rights allocation scheme is provided as in the short form nonreimbursable clause, but with more procedural specificity to address matters that often arise when it is anticipated that proprietary information is to be developed or exchanged in any activity. The same optional paragraph regarding the publication and dissemination of results can be used as in the short form nonreimbursable clause. Also, copyright is specifically addressed. With respect to data first produced by the participant, the parties who may use the data (for example, NASA or the Government) and the permissible purposes can be inserted as appropriate under the circumstances.

Sample Clause, see appendix 1, clause 1.2.h.h. "Intellectual Property and Data Rights" Rights in Data (Nonreimbursable Space Act Agreement) Standard Sample Clause.

The Standard Reimbursable data rights sample clause 1.2.i.i in appendix 1 is to be used in agreements involving research, experimental, developmental, engineering, demonstration, or design activities for which NASA is reimbursed, where it is likely that proprietary information will be developed or exchanged under the agreement. Again, the same basic protective and rights allocation scheme is provided as in the short form reimbursable clause, but with more procedural specificity to address matters that often arise when it is anticipated that proprietary information is to be developed or exchanged in any activity. Also, copyright is specifically addressed.

Sample Clause, see appendix 1, clause 1.2.i.i. "Intellectual Property and Data Rights" Rights in Data (Reimbursable Space Act Agreement) Standard Form Sample Clause.

1.2.10.3.   RIGHTS IN RESULTING DATA:
This section addresses the parties’ exchange of and right to use the data (usually of a scientific nature) resulting from the agreement, as well as the availability of the data to others. Earth science data should be made available as soon as practicable after acquisition and without any period of exclusive access for any user group (see NMI 8000.3). Where other types of scientific data are involved, the parties usually agree that the raw data derived from experiments will be reserved to Principal Investigators for scientific analysis purposes and first publication rights for a set period of time. ALThough negotiable, NASA encourages the earliest dissemination of data and normally the negotiated time period should not exceed one year. The period begins with receipt of the raw data and any associated (e.g., spacecraft) data in a form suitable for analysis. In appropriate instances, Principal Investigators may be requested to share the data with other investigators, including interdisciplinary scientific and guest investigators, to enhance the scientific return from the mission/program under procedures decided by a designated group under the agreement.

It is also usually agreed that the parties to the agreement will have access to, and use of, the raw data and any associated data, but, during the exclusive-use period, such parties’ use will not prejudice the first publication rights of the Principal Investigators. The parties customarily agree that, following the exclusive-use period, the data will be deposited with designated data repositories or data libraries, as appropriate, and, thereafter, will be made available to the scientific community for further scientific use.

Sample Clause, see appendix 1, clause 1.2.j.j. "Intellectual Property and Data Rights" Rights in Resulting Data Sample Clause.

1.2.10.4.   HANDLING OF DATA:
A "Handling of Data" clause is included for use where it is likely that NASA will provide the participant with data whose dissemination is restricted. Examples of this type of data include the proprietary data of a third party or Government data where the Government intends to control its dissemination. Use of this clause would be appropriate, for instance, when providing a participant with a third party’s proprietary information for evaluation purposes. Also, in accordance with section 303(b) of the Space Act [42 U.S.C. § 2454(b)], NASA may agree that any such data that would embody trade secrets or financial information that is privileged or confidential if it had been obtained from a private participant, will be marked with an appropriate legend and maintained in confidence for an agreed period of up to 5 years. This, of course, is data other than that for which there has been agreement regarding publication or dissemination. Where the parties negotiate that NASA itself may use the marked data (under suitable protective conditions) for agreed to purposes, use of this clause is appropriate when this data must be disclosed to a third party. While sample clause 1.2.k.k. in appendix 1 has currently only been used in nonreimbursable agreements with domestic nongovernmental entities, it may be used in all other Space Act agreements if circumstances require it.

Sample Clause, see appendix 1, clause 1.2.k.k. "Intellectual Property and Data Rights" Handling of Data Sample Clause.

1.2.10.5.   RELEASE OF GENERAL INFORMATION TO THE PUBLIC:
To encourage consistency between the participants, it is customary to include, if applicable, a clause in agreements with domestic entities that addresses the appropriate process for the release of general information to the public by either participant.

Sample Clause, see appendix 1, clause 1.2.l.l. "Intellectual Property and Data Rights" Release of General Information to the Public Sample Clause.

1.2.10.6.   PATENT AND COPYRIGHT USE -- AUTHORIZATION, CONSENT, INDEMNIFICATION:
One of the remedies available to a patent or copyright owner for infringement is an injunction preventing the alleged infringer from making, using, or selling the invention or work, or carrying out the process, which is the subject of the patent or copyright, until a court resolves the legal dispute. The U.S. Government has waived sovereign immunity with respect to monetary compensation for patent or copyright infringement, but not with respect to injunction. Under 28 U.S.C. § 1498, whenever an invention or work covered by a U.S. patent or copyright is used by the United States, or for the United States and with its authorization and consent, the patent or copyright owner’s only remedy is an action against the United States in the U.S. Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.

Where cognizant patent or intellectual property counsel determine that activities undertaken by NASA’s cooperating partner, its contractors, and subcontractors are likely to be legally enjoined by a patent or copyright owner in the United States, then an authorization and consent clause should be included in an agreement in order to avoid an injunction. This also avoids any legal arguments regarding whether authorization and consent, if not expressed, should be implied because of the beneficial cooperation involved in the agreement. If not included in the agreement, however, it can be added subsequently by the parties by mutual agreement.

In order to protect the United States financially, whenever authorization and consent is granted, the clause should also contain a provision, sample clause 1.2.m.m. in appendix 1, that requires NASA’s cooperating partner to indemnify the U.S. Government if infringement liability is incurred, as decided by the U.S. Court of Federal Claims. When no authorization and consent is granted, the broad indemnification clauses (appendix 1, sample clauses 1.2.v. and 1.2.w.) sufficiently provide for intellectual property infringement indemnification.

Sample Clause, see appendix 1, clause 1.2.m.m. "Intellectual Property and Data Rights" Patent and Copyright Use -- Authorization, Consent, Indemnification Sample Clause.