Suggested Searches

Alternate Space Authorities Agreement Guide (SAAG) Clauses for use with NASA Jet Propulsion Laboratory (JPL)

This web page of standard clauses is intended for use in conjunction with the “Space Authorities Agreements Guide”, which is a NASA Advisory Implementing Instruction (NAII) document (NAII 1050-1) developed in accordance with NASA Policy Directive 1050.7, “Authority to Enter into Partnership Agreements.

AUTHORITY AND PARTIES

2.2.2 AUTHORITY & PARTIES

In accordance with the National Aeronautics and Space Act (51 U.S.C. § 20113(e)), this Agreement is entered into by the National Aeronautics and Space Administration, located at the Jet Propulsion Laboratory  (hereinafter referred to as “NASA”) and [PARTNERNAME] located at [PARTNERADDRESS] (hereinafter referred to as “Partner” or “[PARTNERSHORTNAME]”).  NASA and Partner may be individually referred to as a “Party” and collectively referred to as the “Parties.”

“Related Entity” as used herein, means a contractor, subcontractor, grantee, or other entity having a legal relationship with NASA or Partner that is assigned, tasked, or contracted with to perform specified NASA or Partner activities under this Agreement.

“Data” as used herein, means recorded information, regardless of form, the media on which it may be recorded, or the method of recording. The term includes, but is not limited to, data of a scientific or technical nature, computer software and documentation thereof, and data comprising commercial and financial information.

“Proprietary Data” as used herein, means Data embodying trade secrets or comprising commercial or financial information that is privileged or confidential and is marked with a suitable restrictive notice, unless the Data is:

a. known or available from other sources without restriction;

b. known, possessed, or developed independently, and without reference to the Proprietary Data;

c. made available by the owners to others without restriction; or

d. required by law or court order to be disclosed.  

“Scientific and Technical Articles” as used herein, means scientific and technical articles based on or containing Data first produced by the California Institute of Technology (Caltech) under the NASA/Caltech contract to operate the Jet Propulsion Laboratory (JPL) and published in academic, technical or professional journals, symposia proceedings or similar works.

“Protected Computer Software” as used herein, means copyrighted or patented Data embodied in source or object code or software documentation first produced by Caltech under the NASA/Caltech contract to operate JPL. Protected Computer Software is the property of Caltech and any use of such Protected Computer Software other than as authorized herein must be negotiated with the Office of Technology Transfer & Corporate Partnerships at Caltech.

“Related Invention” as used herein, means an invention related to the subject matter of this Agreement, but not made as a result of activities performed under this Agreement, that is covered by a patent application or patent owned by NASA, a NASA Related Entity, or Partner.

INTELLECTUAL PROPERTY RIGHTS – DATA RIGHTS

2.2.10.1.2.R DATA RIGHTS WITH PROPRIETARY DATA EXCHANGE (REIMBURSABLE)

A. General

1. Data exchanged under this Agreement is exchanged without restriction except as otherwise provided herein.

2. Notwithstanding any restrictions provided in the Authority and Definitions Article of this Agreement, the Parties are not restricted in the use, disclosure, or reproduction of Data provided under this Agreement that is not Proprietary Data as defined in the Authority and Definitions Article of this Agreement. If a Party believes that Data is not Proprietary Data because any of the listed exceptions apply, it shall notify the other Party before any unrestricted use, disclosure, or reproduction of the Data.

3. The Parties will not exchange preexisting Proprietary Data under this Agreement unless authorized herein or in writing by the owner.

4. If the Parties exchange Data having a notice that the Receiving Party deems is ambiguous or unauthorized, the Receiving Party shall tell the Providing Party. If the notice indicates a restriction, the Receiving Party shall protect the Data under this Article unless otherwise directed in writing by the Providing Party.

5. The Data rights herein apply to the employees and Contributing Entities of Partner. Partner shall ensure that its employees and Contributing Entity employees that perform activities under this Agreement know about and are bound by the obligations under this Article.

6. Disclaimer of Liability: Neither Party is restricted in, or liable for, the use, disclosure, or reproduction of Proprietary Data without a restrictive notice. NASA is not restricted in, or liable for, the use, disclosure, or reproduction of Data Partner gives, or is required to give, the U.S. Government without restriction.

7. Partner may use the following or a similar restrictive notice:

Proprietary Data Notice

The data herein include Proprietary Data and are restricted under the Data Rights provisions of Agreement [provide applicable identifying information].

Partner should also mark each page containing Proprietary Data with the following or a similar legend: “Proprietary Data – Use And Disclose Only Under the Notice on the Title or Cover Page.”

B. Data First Produced by Partner Under this Agreement

If Data first produced by Partner or its Contributing Entities under this Agreement is given to NASA, and the Data is Proprietary Data, and it includes a restrictive notice, NASA will use reasonable efforts to protect it. The Data will be disclosed and used (under suitable protective conditions) only for U.S. Government purposes.

C. Data First Produced by NASA Under this Agreement

1. Typically, all Data produced under this Agreement on behalf of NASA will be produced by Caltech under the NASA/Caltech contract to operate JPL. As such, any Data rights or protection not specifically provided to Partner under this Agreement must be negotiated under a separate agreement with the Office of Technology Transfer & Corporate Partnerships at Caltech through the Office of Contracts Management at JPL.

2. Protected Computer Software and Scientific and Technical Articles developed pursuant to this Agreement are the property of Caltech and any use of such Protected Computer Software or Scientific and Technical Articles by Partner other than as authorized by paragraph F. of this Article, or in the Invention and Patent Rights Article of this Agreement, must be negotiated with the Office of Technology Transfer & Corporate Partnerships at Caltech through the Office of Contracts Management at JPL.

D. Publication of Results

The National Aeronautics and Space Act (51 U.S.C. § 20112) requires NASA to provide for the widest practicable and appropriate dissemination of information concerning its activities and the results thereof. As such, NASA may publish unclassified and non-Proprietary Data resulting from work performed under this Agreement. As such, subject to applicable U.S. Export Control laws, NASA or NASA Contributing Entities shall have the right to publish the unclassified and non-Proprietary Data resulting from work performed under this Agreement. In accordance with the Invention and Patent Rights Article of this Agreement, reasonable precautions will be taken to safeguard against disclosure of potentially patentable inventions. NASA shall provide Partner a copy of proposed publications no later than upon release for publication.

E. Data Disclosing an Invention

If the Parties exchange Data disclosing an invention for which patent protection is being considered, and the furnishing Party identifies the Data as such when providing it to the Receiving Party, the Receiving Party shall withhold it from public disclosure for a reasonable time in order for patent application filing to be made.

F. Copyright

Data exchanged with a copyright notice and with no restrictive notice is presumed to be published. The following royalty-free licenses apply:

1. If indicated on the Data that it was produced outside of this Agreement, it may be reproduced, distributed, and used to prepare derivative works only for carrying out the Receiving Party’s responsibilities under this Agreement.

2. Data without the indication of F.1. is presumed to be first produced under this Agreement. Except as otherwise provided in paragraph E. of this Article, and in the Inventions and Patent Rights Article of this Agreement for protection of reported inventions, the Data may be reproduced, distributed, and used to prepare derivative works for any purpose.

3. If the Data is produced by Caltech under the NASA/Caltech contract to operate JPL and pursuant to this Agreement and is funded in part or in whole by Partner, Partner shall receive a royalty-free, non-exclusive, non-commercial, internal use license from the U.S. Government pursuant to the NASA/Caltech contract to operate JPL. Sublicenses shall not be permitted by Partner. Inquiries regarding commercial or exclusive licenses should be directed to Caltech’s Office of Technology Transfer & Corporate Partnerships though the Office of Contracts Management at JPL.

G. Data Subject to Export Control

Whether or not marked, technical Data subject to the export laws and regulations of the United States provided to Partner under this Agreement must not be given to foreign persons or transmitted outside the United States without proper U.S. Government authorization.

H. Handling of Background Data, Third Party Proprietary Data, Controlled Government Data, and Protected Computer Software

1. NASA or Partner (as Disclosing Party) may provide the other Party or its Contributing Entities (as Receiving Party):

a. Proprietary Data developed at Disclosing Party’s expense outside of this Agreement (referred to as Background Data);

b. Proprietary Data of third parties that Disclosing Party has agreed to protect or is required to protect under the Trade Secrets Act (18 U.S.C. § 1905) (referred to as Third Party Proprietary Data); and

c. U.S. Government Data, including software and related Data, Disclosing Party intends to control (referred to as Controlled Government Data).

d. Protected Computer Software as defined in the Authority and Definitions Article of this Agreement.

2. All Background Data, Third Party Proprietary Data, Controlled Government Data, and Protected Computer Software provided by Disclosing Party to Receiving Party shall be marked by Disclosing Party with a restrictive notice and protected by Receiving Party in accordance with this Article.

3. Disclosing Party provides the following Data to Receiving Party. The lists below may not be comprehensive, are subject to change, and do not supersede any restrictive notice on the Data.

a. Background Data:

The Disclosing Party’s Background Data, if any, will be identified in a separate technical document.

b. Third Party Proprietary Data:

The Disclosing Party’s Third Party Proprietary Data, if any, will be identified in a separate technical document.

c. Controlled Government Data:

The Disclosing Party’s Controlled Government Data, if any, will be identified in a separate technical document.

d. NASA software and related Data will be provided to Partner under a separate Software Usage Agreement (SUA). Partner shall use and protect the related Data in accordance with this Article. Unless the SUA authorizes retention, or Partner enters into a license under 37 C.F.R. Part 404, the related Data shall be disposed of as NASA directs:

e. The Disclosing Party’s Related Inventions, if any, will be identified in a separate technical document.

f. Protected Computer Software may be provided under a separate license agreement between Caltech and Partner with the express understanding that Partner will protect such Protected Computer Software in accordance with this Article and use such Protected Computer Software only for carrying out responsibilities under this Agreement. The Parties agree that the following Protected Computer Software may be provided to Partner; the list may not be comprehensive and is subject to change during the course of the work done under the Agreement and is not meant to supersede any restrictive markings which may be on Data provided:

The Disclosing Party’s Protected Computer Software, if any, will be identified in a separate technical document.

4. For such Data with a restrictive notice pursuant to H.2. or such Data identified in this Article, Receiving Party shall:

a. Use, disclose, or reproduce such Data only as necessary under this Agreement;

b. Safeguard such Data from unauthorized use and disclosure;

c. Allow access to such Data only to its employees and any Contributing Entity requiring access under this Agreement;

d. Except as otherwise indicated in 4.c., preclude disclosure outside Receiving Party’s organization;

e. Notify its employees with access about their obligations under this Article and ensure their compliance, and notify any Contributing Entity with access about their obligations under this Article; and

f. Dispose of such Data as Disclosing Party directs.

I. Oral and visual information

If Either Party discloses Proprietary Data orally or visually, the other Party will have no duty to restrict, or liability for disclosure or use, unless the disclosing Party:

1. Orally informs the other Party before initial disclosure that the Data is Proprietary Data, and

2. Reduces the Data to tangible form with a restrictive notice and gives it to the other Party within ten (10) calendar days after disclosure.

J. Classified Material

If classified material is used under this Agreement, Partner must provide a completed Contract Security Classification Specification (DD Form 254 or equivalent) to the NASA Point of Contact. Handling of classified material must be consistent with NASA and U.S Federal Government statutes, regulations, and policies.

2.2.10.1.2.NR DATA RIGHTS WITH PROPRIETARY DATA EXCHANGE (NONREIMBURSABLE)

A. General

1. Data exchanged under this Agreement is exchanged without restriction except as otherwise provided herein.

2. Notwithstanding any restrictions provided in the Authority and Definitions Article of this Agreement, the Parties are not restricted in the use, disclosure, or reproduction of Data provided under this Agreement that is not Proprietary Data as defined in the Authority and Definitions Article of this Agreement. If a Party believes that Data is not Proprietary Data because any of the listed exceptions apply, it shall notify the other Party before any unrestricted use, disclosure, or reproduction of the Data.

3. The Parties will not exchange preexisting Proprietary Data under this Agreement unless authorized herein or in writing by the owner.

4. If the Parties exchange Data having a notice that the Receiving Party deems is ambiguous or unauthorized, the Receiving Party shall tell the Providing Party. If the notice indicates a restriction, the Receiving Party shall protect the Data under this Article unless otherwise directed in writing by the Providing Party.

5. The Data rights herein apply to the employees and Contributing Entities of Partner. Partner shall ensure that its employees and Contributing Entity employees that perform activities under this Agreement know about and are bound by the obligations under this Article.

6. Disclaimer of Liability: Neither Party is restricted in, or liable for, the use, disclosure, or reproduction of Proprietary Data without a restrictive notice. NASA is not restricted in, or liable for, the use, disclosure, or reproduction of Data Partner gives, or is required to give, the U.S. Government without restriction.

7. Partner may use the following or a similar restrictive notice:

Proprietary Data Notice

The data herein include Proprietary Data and are restricted under the Data Rights provisions of Agreement [provide applicable identifying information].

Partner should also mark each page containing Proprietary Data with the following or a similar legend: “Proprietary Data – Use And Disclose Only Under the Notice on the Title or Cover Page.”

B. Data First Produced by Partner Under this Agreement

If Data first produced by Partner or its Contributing Entities under this Agreement is given to NASA, and the Data is Proprietary Data, and it includes a restrictive notice, NASA will use reasonable efforts to protect it. The Data will be disclosed and used (under suitable protective conditions) only for U.S. Government purposes.

C. Data First Produced by NASA Under this Agreement

1. Typically, all Data produced under this Agreement on behalf of NASA will be produced by Caltech under the NASA/Caltech contract to operate JPL. As such, any Data rights or protection not specifically provided to Partner under this Agreement must be negotiated under a separate agreement with the Office of Technology Transfer & Corporate Partnerships at Caltech through the Office of Contracts Management at JPL.

2. Protected Computer Software and Scientific and Technical Articles developed pursuant to this Agreement are the property of Caltech and any use of such Protected Computer Software or Scientific and Technical Articles by Partner other than as authorized by paragraph F. of this Article, or in the Invention and Patent Rights Article of this Agreement, must be negotiated with the Office of Technology Transfer & Corporate Partnerships at Caltech through the Office of Contracts Management at JPL.

D. Publication of Results

The National Aeronautics and Space Act (51 U.S.C. § 20112) requires NASA to provide for the widest practicable and appropriate dissemination of information concerning its activities and the results thereof. As such, NASA may publish unclassified and non-Proprietary Data resulting from work performed under this Agreement. As such, subject to applicable U.S. Export Control laws, NASA or NASA Contributing Entities shall have the right to publish the unclassified and non-Proprietary Data resulting from work performed under this Agreement. In accordance with the Invention and Patent Rights Article of this Agreement, reasonable precautions will be taken to safeguard against disclosure of potentially patentable inventions. NASA shall provide Partner a copy of proposed publications no later than upon release for publication.

E. Data Disclosing an Invention

If the Parties exchange Data disclosing an invention for which patent protection is being considered, and the furnishing Party identifies the Data as such when providing it to the Receiving Party, the Receiving Party shall withhold it from public disclosure for a reasonable time in order for patent application filing to be made.

F. Copyright

Data exchanged with a copyright notice and with no restrictive notice is presumed to be published. The following royalty-free licenses apply:

1. If indicated on the Data that it was produced outside of this Agreement, it may be reproduced, distributed, and used to prepare derivative works only for carrying out the Receiving Party’s responsibilities under this Agreement.

2. Data without the indication of F.1. is presumed to be first produced under this Agreement. Except as otherwise provided in paragraph E. of this Article, and in the Inventions and Patent Rights Article of this Agreement for protection of reported inventions, the Data may be reproduced, distributed, and used to prepare derivative works for any purpose.

3. If the Data is produced by Caltech under the NASA/Caltech contract to operate JPL and pursuant to this Agreement, Partner shall receive a royalty-free, non-exclusive, non-commercial, internal use license from the U.S. Government pursuant to the NASA/Caltech contract to operate JPL. Sublicenses shall not be permitted by Partner. Inquiries regarding commercial or exclusive licenses should be directed to Caltech’s Office of Technology Transfer & Corporate Partnerships though the Office of Contracts Management at JPL.

G. Data Subject to Export Control

Whether or not marked, technical Data subject to the export laws and regulations of the United States provided to Partner under this Agreement must not be given to foreign persons or transmitted outside the United States without proper U.S. Government authorization.

H. Handling of Background Data, Third Party Proprietary Data, Controlled Government Data, and Protected Computer Software

1. NASA or Partner (as Disclosing Party) may provide the other Party or its Contributing Entities (as Receiving Party):

a. Proprietary Data developed at Disclosing Party’s expense outside of this Agreement (referred to as Background Data);

b. Proprietary Data of third parties that Disclosing Party has agreed to protect or is required to protect under the Trade Secrets Act (18 U.S.C. § 1905) (referred to as Third Party Proprietary Data); and

c. U.S. Government Data, including software and related Data, Disclosing Party intends to control (referred to as Controlled Government Data).

d. Protected Computer Software as defined in the Authority and Definitions Article of this Agreement.

2. All Background Data, Third Party Proprietary Data, Controlled Government Data, and Protected Computer Software provided by Disclosing Party to Receiving Party shall be marked by Disclosing Party with a restrictive notice and protected by Receiving Party in accordance with this Article.

3. Disclosing Party provides the following Data to Receiving Party. The lists below may not be comprehensive, are subject to change, and do not supersede any restrictive notice on the Data.

a. Background Data:

The Disclosing Party’s Background Data, if any, will be identified in a separate technical document.

b. Third Party Proprietary Data:

The Disclosing Party’s Third Party Proprietary Data, if any, will be identified in a separate technical document.

c. Controlled Government Data:

The Disclosing Party’s Controlled Government Data, if any, will be identified in a separate technical document.

d. NASA software and related Data will be provided to Partner under a separate Software Usage Agreement (SUA). Partner shall use and protect the related Data in accordance with this Article. Unless the SUA authorizes retention, or Partner enters into a license under 37 C.F.R. Part 404, the related Data shall be disposed of as NASA directs:

e. The Disclosing Party’s Related Inventions, if any, will be identified in a separate technical document.

f. Protected Computer Software may be provided under a separate license agreement between Caltech and Partner with the express understanding that Partner will protect such Protected Computer Software in accordance with this Article and use such Protected Computer Software only for carrying out responsibilities under this Agreement. The Parties agree that the following Protected Computer Software may be provided to Partner; the list may not be comprehensive and is subject to change during the course of the work done under the Agreement and is not meant to supersede any restrictive markings which may be on Data provided:

The Disclosing Party’s Protected Computer Software, if any, will be identified in a separate technical document.

4. For such Data with a restrictive notice pursuant to H.2. or such Data identified in this Article, Receiving Party shall:

a. Use, disclose, or reproduce such Data only as necessary under this Agreement;

b. Safeguard such Data from unauthorized use and disclosure;

c. Allow access to such Data only to its employees and any Contributing Entity requiring access under this Agreement;

d. Except as otherwise indicated in 4.c., preclude disclosure outside Receiving Party’s organization;

e. Notify its employees with access about their obligations under this Article and ensure their compliance, and notify any Contributing Entity with access about their obligations under this Article; and

f. Dispose of such Data as Disclosing Party directs.

I. Oral and visual information

If either Party discloses Proprietary Data orally or visually, the other Party will have no duty to restrict, or liability for disclosure or use, unless the disclosing Party:

1. Orally informs the other Party before initial disclosure that the Data is Proprietary Data, and

2. Reduces the Data to tangible form with a restrictive notice and gives it to the other Party within ten (10) calendar days after disclosure.

J. Classified Material

If classified material is used under this Agreement, Partner must provide a completed Contract Security Classification Specification (DD Form 254 or equivalent) to the NASA Point of Contact. Handling of classified material must be consistent with NASA and U.S Federal Government statutes, regulations, and policies.

2.2.10.1.2.R.U DATA RIGHTS WITH PROPRIETARY DATA EXCHANGE (REIMBURSABLE, UMBRELLA)

A. General

1. Data exchanged under this Agreement is exchanged without restriction except as otherwise provided herein.

2. Notwithstanding any restrictions provided in the Authority and Definitions Article of this Agreement, the Parties are not restricted in the use, disclosure, or reproduction of Data provided under this Agreement that is not Proprietary Data as defined in the Authority and Definitions Article of this Agreement. If a Party believes that Data is not Proprietary Data because any of the listed exceptions apply, it shall notify the other Party before any unrestricted use, disclosure, or reproduction of the Data.

3. The Parties will not exchange preexisting Proprietary Data under this Agreement unless authorized herein or in writing by the owner.

4. If the Parties exchange Data having a notice that the Receiving Party deems is ambiguous or unauthorized, the Receiving Party shall tell the Providing Party. If the notice indicates a restriction, the Receiving Party shall protect the Data under this Article unless otherwise directed in writing by the Providing Party.

5. The Data rights herein apply to the employees and Contributing Entities of Partner. Partner shall ensure that its employees and Contributing Entity employees that perform activities under this Agreement know about and are bound by the obligations under this Article.

6. Disclaimer of Liability: Neither party is restricted in, or liable for, the use, disclosure, or reproduction of Proprietary Data without a restrictive notice. NASA is not restricted in, or liable for, the use, disclosure, or reproduction of Data Partner gives, or is required to give, the U.S. Government without restriction.

7. Partner may use the following or a similar restrictive notice:

Proprietary Data Notice

The data herein include Proprietary Data and are restricted under the Data Rights provisions of Agreement [provide applicable identifying information].

Partner should also mark each page containing Proprietary Data with the following or a similar legend: “Proprietary Data – Use And Disclose Only Under the Notice on the Title or Cover Page.”

B. Data First Produced by Partner Under this Agreement

If Data first produced by Partner or its Contributing Entities under this Agreement is given to NASA, and the Data is Proprietary Data, and it includes a restrictive notice, NASA will use reasonable efforts to protect it. The Data will be disclosed and used (under suitable protective conditions) only for U.S. Government purposes.

C. Data First Produced by NASA Under this Agreement

1. Typically, all Data produced under this Agreement on behalf of NASA will be produced by Caltech under the NASA/Caltech contract to operate JPL. As such, any Data rights or protection not specifically provided to Partner under this Agreement must be negotiated under a separate agreement with the Office of Technology Transfer & Corporate Partnerships at Caltech through the Office of Contracts Management at JPL.

2. Protected Computer Software and Scientific and Technical Articles developed pursuant to this Agreement are the property of Caltech and any use of such Protected Computer Software or Scientific and Technical Articles by Partner other than as authorized by paragraph F. of this Article, or in the Invention and Patent Rights Article of this Agreement, must be negotiated with the Office of Technology Transfer & Corporate Partnerships at Caltech through the Office of Contracts Management at JPL.

D. Publication of Results

The National Aeronautics and Space Act (51 U.S.C. § 20112) requires NASA to provide for the widest practicable and appropriate dissemination of information concerning its activities and the results thereof. As such, NASA may publish unclassified and non-Proprietary Data resulting from work performed under this Agreement. As such, subject to applicable U.S. Export Control laws, NASA or NASA Contributing Entities shall have the right to publish the unclassified and non-Proprietary Data resulting from work performed under this Agreement. In accordance with the Invention and Patent Rights Article of this Agreement, reasonable precautions will be taken to safeguard against disclosure of potentially patentable inventions. NASA shall provide partner a copy of proposed publications no later than upon release for publication.

E. Data Disclosing an Invention

If the Parties exchange Data disclosing an invention for which patent protection is being considered, and the furnishing Party identifies the Data as such when providing it to the Receiving Party, the Receiving Party shall withhold it from public disclosure for a reasonable time in order for patent application filing to be made.

F. Copyright

Data exchanged with a copyright notice and with no restrictive notice is presumed to be published. The following royalty-free licenses apply:

1. If indicated on the Data that it was produced outside of this Agreement, it may be reproduced, distributed, and used to prepare derivative works only for carrying out the Receiving Party’s responsibilities under this Agreement.

2. Data without the indication of F.1. is presumed to be first produced under this Agreement. Except as otherwise provided in paragraph E. of this Article, and in the Inventions and Patent Rights Article of this Agreement for protection of reported inventions, the Data may be reproduced, distributed, and used to prepare derivative works for any purpose.

3. If the Data is produced by Caltech under the NASA/Caltech contract to operate JPL and pursuant to this Agreement and is funded in part or in whole by Partner, Partner shall receive a royalty-free, non-exclusive, non-commercial, internal use license from the U.S. Government pursuant to the NASA/Caltech contract to operate JPL. Sublicenses shall not be permitted by Partner. Inquiries regarding commercial or exclusive licenses should be directed to Caltech’s Office of Technology Transfer & Corporate Partnerships through the Office of Contracts Management at JPL.

Whether or not marked, technical Data subject to the export laws and regulations of the United States provided to Partner under this Agreement must not be given to foreign persons or transmitted outside the United States without proper U.S. Government authorization.

H. Handling of Background Data, Third Party Proprietary Data, Controlled Government Data, and Protected Computer Software

1. NASA or Partner (as Disclosing Party) may provide the other Party or its Contributing Entities (as Receiving Party):

a. Proprietary Data developed at Disclosing Party’s expense outside of this Agreement (referred to as Background Data);

b. Proprietary Data of third parties that Disclosing Party has agreed to protect or is required to protect under the Trade Secrets Act (18 U.S.C. § 1905) (referred to as Third Party Proprietary Data); and

c. U.S. Government Data, including software and related Data, Disclosing Party intends to control (referred to as Controlled Government Data).

d. Protected Computer Software as defined in the Authority and Definitions Article of this Agreement.

2. All Background Data, Third Party Proprietary Data, Controlled Government Data, and Protected Computer Software provided by Disclosing Party to Receiving Party shall be marked by Disclosing Party with a restrictive notice and protected by Receiving Party in accordance with this Article.

3. Identification of Data:

a. All Background Data, Third Party Proprietary Data, and Controlled Government Data, and Protected Computer Software provided by Disclosing Party shall be identified in the Annex under which it will be provided.

b. NASA software and related Data will be provided to Partner under a separate Software Usage Agreement (SUA). Partner shall use and protect the related Data in accordance with this Article. Unless the SUA authorizes retention, or Partner enters into a license under 37 C.F.R. Part 404, the related Data shall be disposed of as instructed by NASA.

c. Protected Computer Software may be provided under a separate license agreement between Caltech and Partner with the express understanding that Partner will protect such Protected Computer Software in accordance with this Article and use such Protected Computer Software only for carrying out responsibilities under this Agreement.

4. For such Data identified with a restrictive notice pursuant to H.2. or Data identified in an Annex, Receiving Party shall:

a. Use, disclose, or reproduce such Data only as necessary under this Agreement;

b. Safeguard such Data from unauthorized use and disclosure;

c. Allow access to such Data only to its employees and any Contributing Entity requiring access under this Agreement;

d. Except as otherwise indicated in 4.c., preclude disclosure outside Receiving Party’s organization;

e. Notify its employees with access about their obligations under this Article and ensure their compliance, and notify any Contributing Entity with access about their obligations under this Article; and

f. Dispose of such Data as Disclosing Party directs.

I. Oral and visual information

If either Party discloses Proprietary Data orally or visually, the other Party will have no duty to restrict, or liability for disclosure or use, unless the disclosing Party:

1. Orally informs the other Party before initial disclosure that the Data is Proprietary Data, and

2. Reduces the Data to tangible form with a restrictive notice and gives it to the other Party within ten (10) calendar days after disclosure.

J. Classified Material

If classified material is used under this Agreement, Partner must provide a completed Contract Security Classification Specification (DD Form 254 or equivalent) to the NASA Point of Contact. Handling of classified material must be consistent with NASA and U.S Federal Government statutes, regulations, and policies.

2.2.10.1.2.NR.U DATA RIGHTS WITH PROPRIETARY DATA EXCHANGE (NONREIMBURSABLE, UMBRELLA)

A. General

1. Data exchanged under this Agreement is exchanged without restriction except as otherwise provided herein.

2. Notwithstanding any restrictions provided in the Authority and Definitions Article of this Agreement, the Parties are not restricted in the use, disclosure, or reproduction of Data provided under this Agreement that is not Proprietary Data as defined in the Authority and Definitions Article of this Agreement. If a Party believes that Data is not Proprietary Data because any of the listed exceptions apply, it shall notify the other Party before any unrestricted use, disclosure, or reproduction of the Data.

3. The Parties will not exchange preexisting Proprietary Data under this Agreement unless authorized herein or in writing by the owner.

4. If the Parties exchange Data having a notice that the Receiving Party deems is ambiguous or unauthorized, the Receiving Party shall tell the Providing Party. If the notice indicates a restriction, the Receiving Party shall protect the Data under this Article unless otherwise directed in writing by the Providing Party.

5. The Data rights herein apply to the employees and Contributing Entities of Partner. Partner shall ensure that its employees and Contributing Entity employees that perform activities under this Agreement know about and are bound by the obligations under this Article.

6. Disclaimer of Liability: Neither Party is restricted in, or liable for, the use, disclosure, or reproduction of Proprietary Data without a restrictive notice. NASA is not restricted in, or liable for, the use, disclosure, or reproduction of Data Partner gives, or is required to give, the U.S. Government without restriction.

7. Partner may use the following or a similar restrictive notice:

Proprietary Data Notice

The data herein include Proprietary Data and are restricted under the Data Rights provisions of Agreement [provide applicable identifying information].

Partner should also mark each page containing Proprietary Data with the following or a similar legend: “Proprietary Data – Use And Disclose Only Under the Notice on the Title or Cover Page.”

B. Data First Produced by Partner Under this Agreement

If Data first produced by Partner or its Contributing Entities under this Agreement is given to NASA, and the Data is Proprietary Data, and it includes a restrictive notice, NASA will use reasonable efforts to protect it. The Data will be disclosed and used (under suitable protective conditions) only for U.S. Government purposes.

C. Data First Produced by NASA Under this Agreement

1. Typically, all Data produced under this Agreement on behalf of NASA will be produced by Caltech under the NASA/Caltech contract to operate JPL. As such, any Data rights or protection not specifically provided to Partner under this Agreement must be negotiated under a separate agreement with the Office of Technology Transfer & Corporate Partnerships at Caltech through the Office of Contracts Management at JPL.

2. Protected Computer Software and Scientific and Technical Articles developed pursuant to this Agreement are the property of Caltech and any use of such Protected Computer Software or Scientific and Technical Articles by Partner other than as authorized by paragraph F. of this Article, or in the Invention and Patent Rights Article of this Agreement, must be negotiated with the Office of Technology Transfer & Corporate Partnerships at Caltech through the Office of Contracts Management at JPL.

D. Publication of Results

The National Aeronautics and Space Act (51 U.S.C. § 20112) requires NASA to provide for the widest practicable and appropriate dissemination of information concerning its activities and the results thereof. As such, NASA may publish unclassified and non-Proprietary Data resulting from work performed under this Agreement. As such, subject to applicable U.S. Export Control laws, NASA or NASA Contributing Entities shall have the right to publish the unclassified and non-Proprietary Data resulting from work performed under this Agreement. In accordance with the Invention and Patent Rights Article of this Agreement, reasonable precautions will be taken to safeguard against disclosure of potentially patentable inventions. NASA shall provide partner a copy of proposed publications no later than upon release for publication.

E. Data Disclosing an Invention

If the Parties exchange Data disclosing an invention for which patent protection is being considered, and the furnishing Party identifies the Data as such when providing it to the Receiving Party, the Receiving Party shall withhold it from public disclosure for a reasonable time in order for patent application filing to be made.

F. Copyright

Data exchanged with a copyright notice and with no restrictive notice is presumed to be published. The following royalty-free licenses apply:

1. If indicated on the Data that it was produced outside of this Agreement, it may be reproduced, distributed, and used to prepare derivative works only for carrying out the Receiving Party’s responsibilities under this Agreement.

2. Data without the indication of F.1. is presumed to be first produced under this Agreement. Except as otherwise provided in paragraph E. of this Article, and in the Inventions and Patent Rights Article of this Agreement for protection of reported inventions, the Data may be reproduced, distributed, and used to prepare derivative works for any purpose.

3. If the Data is produced by Caltech under the NASA/Caltech contract to operate JPL and pursuant to this Agreement, Partner shall receive a royalty-free, non-exclusive, non-commercial, internal use license from the U.S. Government pursuant to the NASA/Caltech contract to operate JPL. Sublicenses shall not be permitted by Partner. Inquiries regarding commercial or exclusive licenses should be directed to Caltech’s Office of Technology Transfer & Corporate Partnerships though the Office of Contracts Management at JPL.

G. Data Subject to Export Control

Whether or not marked, technical Data subject to the export laws and regulations of the United States provided to Partner under this Agreement must not be given to foreign persons or transmitted outside the United States without proper U.S. Government authorization.

H. Handling of Background Data, Third Party Proprietary Data, Controlled Government Data, and Protected Computer Software

1. NASA or Partner (as Disclosing Party) may provide the other Party or its Contributing Entities (as Receiving Party):

a. Proprietary Data developed at Disclosing Party’s expense outside of this Agreement (referred to as Background Data);

b. Proprietary Data of third parties that Disclosing Party has agreed to protect or is required to protect under the Trade Secrets Act (18 U.S.C. § 1905) (referred to as Third Party Proprietary Data); and

c. U.S. Government Data, including software and related Data, Disclosing Party intends to control (referred to as Controlled Government Data).

d. Protected Computer Software as defined in the Authority and Definitions Article of this Agreement.

2. All Background Data, Third Party Proprietary Data, Controlled Government Data, and Protected Computer Software provided by Disclosing Party to Receiving Party shall be marked by Disclosing Party with a restrictive notice and protected by Receiving Party in accordance with this Article.

3. Identification of Data:

a. All Background Data, Third Party Proprietary Data, and Controlled Government Data, and Protected Computer Software provided by Disclosing Party shall be identified in the Annex under which it will be provided.

b. NASA software and related Data will be provided to Partner under a separate Software Usage Agreement (SUA). Partner shall use and protect the related Data in accordance with this Article. Unless the SUA authorizes retention, or Partner enters into a license under 37 C.F.R. Part 404, the related Data shall be disposed of as instructed by NASA.

c. Protected Computer Software may be provided under a separate license agreement between Caltech and Partner with the express understanding that Partner will protect such Protected Computer Software in accordance with this Article and use such Protected Computer Software only for carrying out responsibilities under this Agreement.

4. For such Data identified with a restrictive notice pursuant to H.2. or Data identified in an Annex, Receiving Party shall:

a. Use, disclose, or reproduce such Data only as necessary under this Agreement;

b. Safeguard such Data from unauthorized use and disclosure;

c. Allow access to such Data only to its employees and any Contributing Entity requiring access under this Agreement;

d. Except as otherwise indicated in 4.c., preclude disclosure outside Receiving Party’s organization;

e. Notify its employees with access about their obligations under this Article and ensure their compliance, and notify any Contributing Entity with access about their obligations under this Article; and

f. Dispose of such Data as Disclosing Party directs.

I. Oral and visual information

If either Party discloses Proprietary Data orally or visually, the other Party will have no duty to restrict, or liability for disclosure or use, unless the Disclosing Party:

1. Orally informs the other Party before initial disclosure that the Data is Proprietary Data, and

2. Reduces the Data to tangible form with a restrictive notice and gives it to the Other Party within ten (10) calendar days after disclosure.

J. Classified Material

If classified material is used under this Agreement, Partner must provide a completed Contract Security Classification Specification (DD Form 254 or equivalent) to the NASA Point of Contact. Handling of classified material must be consistent with NASA and U.S Federal Government statutes, regulations, and policies.

2.2.10.1.2.1 DATA RIGHTS WITH PROPRIETARY DATA EXCHANGE (ANNEX)

Under paragraph H. of the Intellectual Property Rights – Data Rights Article of the Umbrella Agreement, Disclosing Party provides the following Data to Receiving Party. The lists below may not be comprehensive, are subject to change, and do not supersede any restrictive notice on the Data provided.

1. Background Data:

The Disclosing Party’s Background Data, if any, will be identified in a separate Technology Plan or Technical Protocol document.

2. Third Party Proprietary Data: 

The Disclosing Party’s Third Party Proprietary Data, if any, will be identified in a separate Technology Plan or Technical Protocol document.

3. Controlled Government Data: 

The Disclosing Party’s Controlled Government Data, if any, will be identified in a separate Technology Plan or Technical Protocol document.

4. The following software and related Data will be provided to Partner under a separate Software Usage Agreement: 

The Disclosing Party’s NASA software and related Data, if any, will be identified in a separate technical document.

5. The Parties agree that the following Protected Computer Software may be provided to Partner; the list may not be comprehensive and is subject to change during the course of the work done under the Agreement and is not meant to supersede any restrictive markings which may be on Data provided:

[Insert name and JPL Case # of the software; if none, insert “TBD.”]

INTELLECTUAL PROPERTY RIGHTS – INVENTION AND PATENT RIGHTS

2.2.10.3.2.R INVENTION & PATENT RIGHTS (REIMBURSABLE, HIGHER PROBABILITY OF INVENTION)

A. General

1. NASA has determined that 51 U.S.C. § 20135(b) does not apply to this Agreement. Therefore, title to inventions made (conceived or first actually reduced to practice) under this Agreement remain with the respective inventing party(ies). No invention or patent rights are exchanged or granted under this Agreement, except as provided herein.

2. The invention and patent rights herein apply to employees of Partner and employees of Contributing Entities of Partner. Partner shall ensure that its employees and Contributing Entity employees know about and are bound by the obligations under this Article.

B. NASA Inventions

NASA will use reasonable efforts to report inventions made under this Agreement by its employees. Upon request, NASA will use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, a negotiated license to any NASA invention made under this Agreement. This license is subject to paragraph E.1. of this Article.

C. NASA Contributing Entity Inventions

1. NASA will use reasonable efforts to report inventions made under this Agreement by its Contributing Entity employees, or jointly between NASA employees and Contributing Entity employees, where NASA has the right to acquire title. Upon request, NASA will use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, a negotiated license to any of these inventions where NASA has acquired title. This license is subject to paragraph E.2. of this Article.

2. For inventions made as a result of activities performed under this Agreement, elected upon by Caltech under the NASA/Caltech contract to operate JPL, and funded in part or in whole by the Partner, reasonable efforts will be made to report such inventions to Partner. Partner shall receive a royalty-free, non-exclusive, non-commercial, internal use license to such inventions. Sublicenses shall not be permitted by Partner. Please refer any request for license rights greater than those provided herein to the Caltech Office of Technology Transfer & Corporate Partnerships through the Commercial Program Office at JPL at (818) 354-3821.

D. Joint Inventions With Partner

The Parties will use reasonable efforts to report, and cooperate in obtaining patent protection on, inventions made jointly between NASA employees, Partner employees, and employees of either Party’s Contributing Entities. Upon timely request, NASA may, at its sole discretion and subject to paragraph E. of this Article:

1. refrain from exercising its undivided interest inconsistently with Partner’s commercial business; or

2. use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, an exclusive or partially exclusive negotiated license.

3. For inventions made jointly between employees of Partner and employees of Caltech under the NASA/Caltech contract to operate JPL, Caltech may provide a license as described in paragraph C.2 of this Article.

E. Rights to be Reserved in Partner’s License

Any license granted Partner under paragraphs B., C., or D. of this Article is subject to the following:

1. For inventions made solely or jointly by NASA employees, NASA reserves the irrevocable, royalty-free right of the U.S. Government to practice the invention or have it practiced on behalf of the United States or on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States.

2. For inventions made solely or jointly by employees of a NASA Contributing Entity, NASA reserves the rights in 1. above, and a revocable, nonexclusive, royalty-free license retained by the Contributing Entity under 14 C.F.R. § 1245.108 or 37 C.F.R. § 401.14 (e).

3. For inventions made solely or jointly by employees of Caltech and elected upon by Caltech under the NASA/Caltech contract to operate JPL, Caltech retains ownership rights, subject to the rights reserved by NASA set forth in paragraph E.2. of this Article.

F. Protection of Reported Inventions

For inventions reported under this Article, the Receiving Party shall withhold all invention reports or disclosures from public access for a reasonable time (1 year unless otherwise agreed or unless restricted longer herein) to facilitate establishment of patent rights.

G. Patent Filing Responsibilities and Costs

1. The invention and patent rights herein apply to any patent application or patents covering an invention made under this Agreement. Each Party is responsible for its own costs of obtaining and maintaining patents covering sole inventions of its employees. The Parties may agree otherwise, upon the reporting of any invention (sole or joint) or in any license granted.

2. Partner shall include the following in patent applications for an invention made jointly between NASA employees and/or its Contributing Entity employees and Partner employees:

The invention described herein may be manufactured and used by or for the U.S. Government for U.S. Government purposes without the payment of royalties thereon or therefore.

H. Related Inventions

1. No preexisting Related Inventions will be exchanged between the Parties under this Agreement unless specifically authorized in this Article or in writing by the owner of the Related Inventions.

2. To the extent NASA Related Invention(s) are known, and to the extent such Related Inventions are available for licensing, NASA may enter into negotiations with Partner for a license to such Related Invention(s) consistent with the requirements of 37 C.F.R. Part 404.

3. For Related Inventions owned by Partner, Partner grants to NASA and NASA Contributing Entities a non-exclusive, royalty-free license to use the Related Inventions in order to perform under this Agreement. If Partner Related Inventions can be separated from inventions produced under this Agreement, upon completion of activities under this Agreement, such Partner Related Inventions will be returned to Partner and the license to use the Related Inventions herein will expire. If such Partner Related Inventions cannot be separated from inventions produced under this Agreement, the Parties and any Contributing Entities with an ownership right in such inventions agree to negotiate appropriate licenses for the continued use of Partner Related Inventions.

4. For Related Inventions owned by Caltech, please refer any request for a license to the Caltech Office of Technology Transfer & Corporate Partnerships.

5. The parties agree that the following inventions are Related Inventions which may be used in performance of this Agreement. This list may not be comprehensive and is subject to change during the course of work under this Agreement:

The Disclosing Party’s Related Inventions, if any, will be identified in a separate technical document.

2.2.10.3.2.NR INVENTION & PATENT RIGHTS (NONREIMBURSABLE, HIGHER PROBABILITY OF INVENTION)

A. General

1. NASA has determined that 51 U.S.C. § 20135(b) does not apply to this Agreement. Therefore, title to inventions made (conceived or first actually reduced to practice) under this Agreement remain with the respective inventing party(ies). No invention or patent rights are exchanged or granted under this Agreement, except as provided herein.

2. The invention and patent rights herein apply to employees of Partner and employees of Contributing Entities of Partner. Partner shall ensure that its employees and Contributing Entity employees know about and are bound by the obligations under this Article.

B. NASA Inventions

NASA will use reasonable efforts to report inventions made under this Agreement by its employees. Upon request, NASA will use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, a negotiated license to any NASA invention made under this Agreement. This license is subject to paragraph E.1. of this Article.

C. NASA Contributing Entity Inventions

1. NASA will use reasonable efforts to report inventions made under this Agreement by its Contributing Entity employees, or jointly between NASA employees and Contributing Entity employees, where NASA has the right to acquire title. Upon request, NASA will use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, a negotiated license to any of these inventions where NASA has acquired title. This license is subject to paragraph E.2. of this Article.

2. For inventions made as a result of activities performed under this Agreement, elected upon by Caltech under the NASA/Caltech contract to operate JPL, reasonable efforts will be made to report such inventions to Partner. Partner shall receive a royalty-free, non-exclusive, non-commercial, internal use license to such inventions. Sublicenses shall not be permitted by Partner. Please refer any request for license rights greater than those provided herein to the Caltech Office of Technology Transfer & Corporate Partnerships through the Commercial Program Office at JPL at (818) 354-3821.

D. Joint Inventions With Partner

The Parties will use reasonable efforts to report, and cooperate in obtaining patent protection on, inventions made jointly between NASA employees, Partner employees, and employees of either Party’s Contributing Entities. Upon timely request, NASA may, at its sole discretion and subject to paragraph E. of this Article:

1. refrain from exercising its undivided interest inconsistently with Partner’s commercial business; or

2. use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, an exclusive or partially exclusive negotiated license.

3. For inventions made jointly between employees of Partner and employees of Caltech under the NASA/Caltech contract to operate JPL, Caltech may provide a license as described in paragraph C.2 of this Article.

E. Rights to be Reserved in Partner’s License

Any license granted Partner under paragraphs B., C., or D. of this Article is subject to the following:

1. For inventions made solely or jointly by NASA employees, NASA reserves the irrevocable, royalty-free right of the U.S. Government to practice the invention or have it practiced on behalf of the United States or on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States.

2. For inventions made solely or jointly by employees of a NASA Contributing Entity, NASA reserves the rights in 1. above, and a revocable, nonexclusive, royalty-free license retained by the Contributing Entity under 14 C.F.R. § 1245.108 or 37 C.F.R. § 401.14 (e).

3. For inventions made solely or jointly by employees of Caltech and elected upon by Caltech under the NASA/Caltech contract to operate JPL, Caltech retains ownership rights, subject to the rights reserved by NASA set forth in paragraph E.2. of this Article.

F. Protection of Reported Inventions

For inventions reported under this Article, the Receiving Party shall withhold all invention reports or disclosures from public access for a reasonable time (1 year unless otherwise agreed or unless restricted longer herein) to facilitate establishment of patent rights.

G. Patent Filing Responsibilities and Costs

1. The invention and patent rights herein apply to any patent application or patents covering an invention made under this Agreement. Each Party is responsible for its own costs of obtaining and maintaining patents covering sole inventions of its employees. The Parties may agree otherwise, upon the reporting of any invention (sole or joint) or in any license granted.

2. Partner shall include the following in patent applications for an invention made jointly between NASA employees and/or its Contributing Entity employees and Partner employees:

The invention described herein may be manufactured and used by or for the U.S. Government for U.S. Government purposes without the payment of royalties thereon or therefore.

H. Related Inventions

1. No preexisting Related Inventions will be exchanged between the Parties under this Agreement unless specifically authorized in this Article or in writing by the owner of the Related Inventions.

2. To the extent NASA Related Invention(s) are known, and to the extent such Related Inventions are available for licensing, NASA may enter into negotiations with Partner for a license to such Related Invention(s) consistent with the requirements of 37 C.F.R. Part 404.

3. For Related Inventions owned by Partner, Partner grants to NASA and NASA Contributing Entities a non-exclusive, royalty-free license to use the Related Inventions in order to perform under this Agreement. If Partner Related Inventions can be separated from inventions produced under this Agreement, upon completion of activities under this Agreement, such Partner Related Inventions will be returned to Partner and the license to use the Related Inventions herein will expire. If such Partner Related Inventions cannot be separated from inventions produced under this Agreement, the Parties and any Contributing Entities with an ownership right in such inventions agree to negotiate appropriate licenses for the continued use of Partner Related Inventions.

4. For Related Inventions owned by Caltech, please refer any request for a license to the Caltech Office of Technology Transfer & Corporate Partnerships.

5. The parties agree that the following inventions are Related Inventions which may be used in performance of this Agreement. This list may not be comprehensive and is subject to change during the course of work under this Agreement:

The Disclosing Party’s Related Inventions, if any, will be identified in a separate technical document.

2.2.10.3.2.R.U INVENTION & PATENT RIGHTS (REIMBURSABLE, UMBRELLA, HIGHER PROBABILITY OF INVENTION)

A. General

1. NASA has determined that 51 U.S.C. § 20135(b) does not apply to this Agreement. Therefore, title to inventions made (conceived or first actually reduced to practice) under this Agreement remain with the respective inventing party(ies). No invention or patent rights are exchanged or granted under this Agreement, except as provided herein.

2. The invention and patent rights herein apply to employees of Partner and employees of Contributing Entities of Partner. Partner shall ensure that its employees and Contributing Entity employees know about and are bound by the obligations under this Article.

B. NASA Inventions

NASA will use reasonable efforts to report inventions made under this Agreement by its employees. Upon request, NASA will use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, a negotiated license to any NASA invention made under this Agreement. This license is subject to paragraph E.1. of this Article.

C. NASA Contributing Entity Inventions

1. NASA will use reasonable efforts to report inventions made under this Agreement by its Contributing Entity employees, or jointly between NASA employees and Contributing Entity employees, where NASA has the right to acquire title. Upon request, NASA will use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, a negotiated license to any of these inventions where NASA has acquired title. This license is subject to paragraph E.2. of this Article.

2. For inventions made as a result of activities performed under this Agreement, elected upon by Caltech under the NASA/Caltech contract to operate JPL, and funded in part or in whole by the Partner, reasonable efforts will be made to report such inventions to Partner. Partner shall receive a royalty-free, non-exclusive, non-commercial, internal use license to such inventions. Sublicenses shall not be permitted by Partner. Please refer any request for license rights greater than those provided herein to the Caltech Office of Technology Transfer & Corporate Partnerships through the Commercial Program Office at JPL at (818) 354-3821.

D. Joint Inventions With Partner

The Parties will use reasonable efforts to report, and cooperate in obtaining patent protection on, inventions made jointly between NASA employees, Partner employees, and employees of either Party’s Contributing Entities. Upon timely request, NASA may, at its sole discretion and subject to paragraph E. of this Article:

1. refrain from exercising its undivided interest inconsistently with Partner’s commercial business; or

2. use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, an exclusive or partially exclusive negotiated license.

3. For inventions made jointly between employees of Partner and employees of Caltech under the NASA/Caltech contract to operate JPL, Caltech may provide a license as described in paragraph C.2 of this Article.

E. Rights to be Reserved in Partner’s License

Any license granted Partner under paragraphs B., C., or D. of this Article is subject to the following:

1. For inventions made solely or jointly by NASA employees, NASA reserves the irrevocable, royalty-free right of the U.S. Government to practice the invention or have it practiced on behalf of the United States or on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States.

2. For inventions made solely or jointly by employees of a NASA Contributing Entity, NASA reserves the rights in 1. above, and a revocable, nonexclusive, royalty-free license retained by the Contributing Entity under 14 C.F.R. § 1245.108 or 37 C.F.R. § 401.14 (e).

3. For inventions made solely or jointly by employees of Caltech and elected upon by Caltech under the NASA/Caltech contract to operate JPL, Caltech retains ownership rights, subject to the rights reserved by NASA set forth in paragraph E.2. of this Article.

F. Protection of Reported Inventions

For inventions reported under this Article, the Receiving Party shall withhold all invention reports or disclosures from public access for a reasonable time (1 year unless otherwise agreed or unless restricted longer herein) to facilitate establishment of patent rights.

G. Patent Filing Responsibilities and Costs

1. The invention and patent rights herein apply to any patent application or patents covering an invention made under this Agreement. Each Party is responsible for its own costs of obtaining and maintaining patents covering sole inventions of its employees. The Parties may agree otherwise, upon the reporting of any invention (sole or joint) or in any license granted.

2. Partner shall include the following in patent applications for an invention made jointly between NASA employees and/or its Contributing Entity employees and Partner employees:

The invention described herein may be manufactured and used by or for the U.S. Government for U.S. Government purposes without the payment of royalties thereon or therefore.

H. Related Inventions

1. No preexisting Related Inventions will be exchanged between the Parties under this Agreement unless specifically authorized in this Article or in writing by the owner of the Related Inventions.

2. To the extent NASA Related Invention(s) are known, and to the extent such Related Inventions are available for licensing, NASA may enter into negotiations with Partner for a license to such Related Invention(s) consistent with the requirements of 37 C.F.R. Part 404.

3. For Related Inventions owned by Partner, Partner grants to NASA and NASA Contributing Entities a non-exclusive, royalty-free license to use the Related Inventions in order to perform under this Agreement. If Partner Related Inventions can be separated from inventions produced under this Agreement, upon completion of activities under this Agreement, such Partner Related Inventions will be returned to Partner and the license to use the Related Inventions herein will expire. If such Partner Related Inventions cannot be separated from inventions produced under this Agreement, the Parties and any Contributing Entities with an ownership right in such inventions agree to negotiate appropriate licenses for the continued use of Partner Related Inventions.

4. For Related Inventions owned by Caltech, please refer any request for a license to the Caltech Office of Technology Transfer & Corporate Partnerships.

5. The parties agree that the following inventions are Related Inventions which may be used in performance of this Agreement. This list may not be comprehensive and is subject to change during the course of work under this Agreement:

The Disclosing Party’s Related Inventions, if any, will be identified in a separate technical document.

2.2.10.3.2.NR.U INVENTION & PATENT RIGHTS (NONREIMBURSABLE, UMBRELLA, HIGHER PROBABILITY OF INVENTION)

A. General

1. NASA has determined that 51 U.S.C. § 20135(b) does not apply to this Agreement. Therefore, title to inventions made (conceived or first actually reduced to practice) under this Agreement remain with the respective inventing party(ies). No invention or patent rights are exchanged or granted under this Agreement, except as provided herein.

2. The invention and patent rights herein apply to employees of Partner and employees of Contributing Entities of Partner. Partner shall ensure that its employees and Contributing Entity employees know about and are bound by the obligations under this Article.

B. NASA Inventions

NASA will use reasonable efforts to report inventions made under this Agreement by its employees. Upon request, NASA will use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, a negotiated license to any NASA invention made under this Agreement. This license is subject to paragraph E.1. of this Article.

C. NASA Contributing Entity Inventions

1. NASA will use reasonable efforts to report inventions made under this Agreement by its Contributing Entity employees, or jointly between NASA employees and Contributing Entity employees, where NASA has the right to acquire title. Upon request, NASA will use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, a negotiated license to any of these inventions where NASA has acquired title. This license is subject to paragraph E.2. of this Article.

2. For inventions made as a result of activities performed under this Agreement, elected upon by Caltech under the NASA/Caltech contract to operate JPL, reasonable efforts will be made to report such inventions to Partner. Partner shall receive a royalty-free, non-exclusive, non-commercial, internal use license to such inventions. Sublicenses shall not be permitted by Partner. Please refer any request for license rights greater than those provided herein to the Caltech Office of Technology Transfer & Corporate Partnerships through the Commercial Program Office at JPL at (818) 354-3821.

D. Joint Inventions With Partner

The Parties will use reasonable efforts to report, and cooperate in obtaining patent protection on, inventions made jointly between NASA employees, Partner employees, and employees of either Party’s Contributing Entities. Upon timely request, NASA may, at its sole discretion and subject to paragraph E. of this Article:

1. refrain from exercising its undivided interest inconsistently with Partner’s commercial business; or

2. use reasonable efforts to grant Partner, under 37 C.F.R. Part 404, an exclusive or partially exclusive negotiated license.

3. For inventions made jointly between employees of Partner and employees of Caltech under the NASA/Caltech contract to operate JPL, Caltech may provide a license as described in paragraph C.2 of this Article.

E. Rights to be Reserved in Partner’s License

Any license granted Partner under paragraphs B., C., or D. of this Article is subject to the following:

1. For inventions made solely or jointly by NASA employees, NASA reserves the irrevocable, royalty-free right of the U.S. Government to practice the invention or have it practiced on behalf of the United States or on behalf of any foreign government or international organization pursuant to any existing or future treaty or agreement with the United States.

2. For inventions made solely or jointly by employees of a NASA Contributing Entity, NASA reserves the rights in 1. above, and a revocable, nonexclusive, royalty-free license retained by the Contributing Entity under 14 C.F.R. § 1245.108 or 37 C.F.R. § 401.14 (e).

3. For inventions made solely or jointly by employees of Caltech and elected upon by Caltech under the NASA/Caltech contract to operate JPL, Caltech retains ownership rights, subject to the rights reserved by NASA set forth in paragraph E.2. of this Article.

F. Protection of Reported Inventions

For inventions reported under this Article, the Receiving Party shall withhold all invention reports or disclosures from public access for a reasonable time (1 year unless otherwise agreed or unless restricted longer herein) to facilitate establishment of patent rights.

G. Patent Filing Responsibilities and Costs

1. The invention and patent rights herein apply to any patent application or patents covering an invention made under this Agreement. Each Party is responsible for its own costs of obtaining and maintaining patents covering sole inventions of its employees. The Parties may agree otherwise, upon the reporting of any invention (sole or joint) or in any license granted.

2. Partner shall include the following in patent applications for an invention made jointly between NASA employees and/or its Contributing Entity employees and Partner employees:

The invention described herein may be manufactured and used by or for the U.S. Government for U.S. Government purposes without the payment of royalties thereon or therefore.

H. Related Inventions

1. No preexisting Related Inventions will be exchanged between the Parties under this Agreement unless specifically authorized in this Article or in writing by the owner of the Related Inventions.

2. To the extent NASA Related Invention(s) are known, and to the extent such Related Inventions are available for licensing, NASA may enter into negotiations with Partner for a license to such Related Invention(s) consistent with the requirements of 37 C.F.R. Part 404.

3. For Related Inventions owned by Partner, Partner grants to NASA and NASA Contributing Entities a non-exclusive, royalty-free license to use the Related Inventions in order to perform under this Agreement. If Partner Related Inventions can be separated from inventions produced under this Agreement, upon completion of activities under this Agreement, such Partner Related Inventions will be returned to Partner and the license to use the Related Inventions herein will expire. If such Partner Related Inventions cannot be separated from inventions produced under this Agreement, the Parties and any Contributing Entities with an ownership right in such inventions agree to negotiate appropriate licenses for the continued use of Partner Related Inventions.

4. For Related Inventions owned by Caltech, please refer any request for a license to the Caltech Office of Technology Transfer & Corporate Partnerships.

5. The parties agree that the following inventions are Related Inventions which may be used in performance of this Agreement. This list may not be comprehensive and is subject to change during the course of work under this Agreement:

The Disclosing Party’s Related Inventions, if any, will be identified in a separate technical document.

2.2.10.3.2.A INVENTION & PATENT RIGHTS (ANNEX)

The parties agree that the following inventions are Related Inventions which may be used in performance of this Agreement. This list may not be comprehensive and is subject to change during the course of work under this Agreement:

[Insert name and NASA Case # of the inventions; if none, insert “TBD.”]

USE OF PARTIES’ NAMES AND IDENTIFIERS

2.2.11 USE OF PARTIES’ NAMES & IDENTIFIERS

A. NASA Name and Initials

Partner shall not use “National Aeronautics and Space Administration” or “NASA” in a way that creates the impression that a product or service has the authorization, support, sponsorship, or endorsement of NASA, which does not, in fact, exist. Except for releases under the “Release of General Information to the Public and Media” Article, Partner must submit any proposed public use of the NASA name or initials (including press releases and all promotional and advertising use) to the NASA Associate Administrator for the Office of Communications or designee (“NASA Communications”) for review and approval. Approval by NASA Office of Communications shall be based on applicable law and policy governing the use of the NASA name and initials.

B. NASA Emblems

Use of NASA emblems (i.e., NASA Seal, NASA Insignia, NASA logotype, NASA Program Identifiers, and the NASA Flag) is governed by 14 C.F.R. Part 1221. Partner must submit any proposed use of the emblems to NASA Communications for review and approval.

C. Caltech and Related Entity Names, Initials and Emblems

Partner shall similarly not use the names, initials, or emblems of Caltech (including the “California Institute of Technology”) or of a NASA Related Entity in any of the ways restricted in paragraph A. of this Article. Prior approval for any such use must be requested from Caltech or the appropriate Related Entity.

D. Partner Name and Trademarks

NASA shall not use Partner’s name or trademarks in any way that suggests Partner endorses NASA. NASA will make no use of the Partner trademarks except as permitted by law and this Agreement.