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3.5.10.   INTELLECTUAL PROPERTY RIGHTS/TRANSFER OF GOODS AND TECHNICAL DATA:
International agreements should address the allocation of rights in any intellectual property that may arise under the proposed activity. In general, NASA's cooperative activities with foreign entities are not directed to the joint development of technology, or products or processes that are potentially of commercial value. Each party is fully responsible, technically and financially, for a clearly defined element of the project. Where NASA’s international cooperative activities are not directed to the joint development of technology, sample clauses 3.5.l. - 3.5.q. in appendix 3 should be used. The clauses are structured so that each party can protect its sensitive technology while still providing necessary interface information. The clauses allow each party to retain intellectual property rights in the technology/hardware it has developed independently of the other party. Scientific results of NASA’s cooperation with foreign entities, however, are shared among the cooperating parties and made available to the international community.
Although rare, it is possible that the situation may arise where NASA is involved in "joint" research, i.e., where both parties jointly develop an element of the project. In such instances, the applicability of the intellectual property provisions in existing Government-level "umbrella" agreements covering joint research in general science and technology cooperation may also need to be considered.
In either case, of primary concern in agreements with foreign entities, is the avoidance of unauthorized or unnecessary transfer of U.S. technology and compliance with U.S. export control laws and regulations.
3.5.10.1   INVENTION AND PATENT RIGHTS:
Sample Clause, see appendix 3, clause 3.5.l. "Intellectual Property Rights/Transfer of Goods and Technical Data" Invention and Patent Rights Sample Clause.
3.5.10.2.   INVENTION AND PATENT RIGHTS/JOINT INVENTION:   Where there is a possibility of a joint invention but the use of the existing Government-level "umbrella" agreements is not appropriate, sample clause 3.5.m. in appendix 3 is added to the Invention and Patent Rights sample clause 3.5.l. in letter agreements with foreign governmental entities under international law. In addition, sample clause 3.5.m. in appendix 3 is typically included in agreements with foreign entities under U.S. law.
Sample Clause, see appendix 3, clause 3.5.m. "Intellectual Property Rights/Transfer of Goods and Technical Data" Invention and Patent Rights/Joint Invention Sample Clause.
3.5.10.3.   TRANSFER OF TECHNICAL DATA AND GOODS:   Sample clause 3.5.n. addresses the transfer of hardware and its associated technical data (e.g., data directly related to the interfaces, integration, testing, use or operation of an item of hardware) required for the parties to meet their obligations under the agreement. Also, to the extent applicable, the provision should cover the rights and obligations of the parties with respect to transferred proprietary data and export-controlled data and goods.
A significant percentage of NASA's international activities may involve transfers by NASA, or other U.S. parties, of commodities, software, or technologies to foreign partners. These transfers are generally subject to export control laws and regulations, regardless of whether they occur in the United States, overseas, or in space. Export controls are imposed on such transfers and activities in order to protect the national security and to further U.S. foreign policy objectives. NASA’s Export Control Policy was articulated as follows by the Administrator in October 1995.
"As a U.S. Government Agency on the forefront of technological development and international cooperation in the fields of space, aeronautics, and science, the National Aeronautics and Space Administration will strive to fulfill its mission for cooperative international research and civil space development in harmony with the export control laws and regulations of the United States and the world, including risks posed by the spread of missile technologies and weapons of mass destruction, and in view of the significant criminal, civil, and administrative penALTies that may affect the Agency and its employees as a result of a failure to comply with U.S. export control laws and regulations, it is the responsibility of every NASA official and employee to ensure that the export control policies of the United States, including nonproliferation objectives, are fully observed in the pursuit of NASA’s international mission."
Overall, each party is obligated to transfer to the other party only those technical data and goods necessary to fulfill the transferring party’s responsibilities under the agreement. When appropriate, the type of data to be exchanged without restrictions is specified, e.g., "interface, integration, and safety data (excluding detailed design, manufacturing, and processing data, and associated software.") Sample clause 3.5.n. in appendix 3 is structured to allow the parties to exchange data without restrictions, except for possible proprietary or export controlled data. Additionally, the clause precludes the unwarranted transfer of technology by limiting use of the transferred, marked proprietary data, data subject to export control and goods to the specific purposes of the programs implemented by the agreement. [For additional information on NASA’s Export Control Program, See the "NASA Export Control Program" (NASA/ECP), dated April 1997].
Sample Clause, see appendix 3, clause 3.5.n. "Intellectual Property Rights/Transfer of Goods and Technical Data" Transfer of Technical Data and Goods Sample Clause.
In certain cases, transfers of particularly sensitive items, including technologies, warrant more restrictive provisions regarding transfers of technical data and goods between parties. Such cases may include launch activities, transfers of advanced payloads or other items with heightened export control concerns, or activities which raise special security, foreign policy, or nonproliferation issues. In these cases, it is appropriate to provide the parties with the ability to review proposed retransfers of items among the receiving party’s related entities (contractors, subcontractors, etc.), if desired.
3.5.10.4.   RIGHTS IN RESULTING DATA:   Sample clause 3.5.o. in appendix 3 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 data to others. In appropriate circumstances, the parties may agree that the raw scientific data derived from experiments will be reserved to Principal Investigators for scientific analysis purposes and first publication rights for a set period of time, usually not exceeding 1 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. Such "reserved use" periods are not usually provided in Earth science data arrangements or in other arrangements where rapid, open, and unrestricted data access is desired.
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 3, clause 3.5.o. "Intellectual Property Rights/Transfer of Goods and Technical Data" Rights in Resulting Data Sample Clause.
3.5.10.5.   PATENT AND COPYRIGHT USE -- AUTHORIZATION, CONSENT, INDEMNIFICATION:   One of the remedies available to a patent or copyright owner for patent or copyright 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 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 MOU or letter 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, NASA’s cooperating partner should be required 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 (sample clauses 1.2.v. and 1.2.w. in appendix 1) sufficiently provide for intellectual property infringement indemnification.
Sample Clause, see appendix 3, clause 3.5.p. "Intellectual Property Rights/Transfer of Goods and Technical Data" Patent and Copyright Use -- Authorization, Consent, Indemnification Sample Clause.
3.5.10.6.   RELEASE OF GENERAL INFORMATION TO THE PUBLIC:   It is customary to include, if applicable, sample clause 3.5.q. in appendix 3 in agreements with foreign entities that provides for the release of general information to the public.
Sample Clause, see appendix 3, clause 3.5.q. "Intellectual Property Rights/Transfer of Goods and Technical Data" Release of General Information to the Public Sample Clause.