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How To Apply For A Patent License

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

Legal Requirements
NASA has the authority to grant licenses on its domestic and foreign patents and patent applications pursuant to 35 U.S.C. 207-209. NASA has implemented this authority by means of the NASA Patent Licensing Regulations, 14 § CFR 1245.200 et seq.

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

How to Find Information on NASA Patents
Information on NASA patents and patent applications can be found from:

  • Patent and technical literature searches
  • NASA Tech Briefs
  • NASA Patent Abstracts Bibliography, which contains indices of NASA patents and patent applications arranged by technical subject matter, inventor, source and number. This publication is available for $15 from the National Technical Information Service, Springfield, VA 22161; (703) 487-4600
  • NASA Regional Technology Transfer Centers
  • NASA Field Center Technology Transfer/Commercialization Offices
  • NASA Field Center Patent Counsel
  • NASA Headquarters Office of General Counsel
  • NASA TechTracS

How to Apply for a Patent License
If you wish to apply for a patent license for a particular NASA technology, send an application to the Technology Transfer Program Office at the Field Center where the technology was developed. The application, at a minimum, should contain the following information:

  1. The identity of the particular invention¾either the patent application serial number, the patent number, or the NASA case number. When possible, include the title of the invention and patent issue date.

  2. The type of license being applied for (e.g., exclusive, partially exclusive, or nonexclusive) and any desired limitations (e.g., field of use, geographic, etc.).
  3. The name and address of the person, company, or organization applying for the license. Where applicable, include citizenship, place of incorporation, and name of the patent corporation.

  4. The name, address, and telephone number of the applicant’s representative who has authority to conduct licensing negotiations.

  5. A description of the nature and type of the applicant’s business. This description should include any products or services that the applicant has successfully commercialized and the approximate number of people employed by the applicant.
  6. An explanation of how the applicant became aware of the particular invention.

  7. A statement as to whether the applicant is a small business, which is generally defined as an independently owned and operated business with less than 500 employees.
  8. A detailed commercialization plan for developing and/or marketing the invention. More information on the required components of the commercialization plan is presented below.

  9. The identity of licenses previously granted to the applicant under any federally owned inventions.
  10. A statement describing (to the applicant’s best knowledge) the extent to which the invention is being practiced by private industry, government, or both, and the extent to which the invention is commercially available.

  11. Any other information the applicant believes will support a determination to grant the requested license to the applicant.

 

How to Prepare a Commercialization Plan (Item H)
All patent/copyright license applications must be accompanied by a commercialization plan. This plan must include the information listed below. All technical and business information will be kept confidential if marked as such.

1. An overview of how the company plans to use the licensed technology, including any products or services that will be developed and their potential customers, if applicable.
2. A statement of the time, nature and amount of anticipated investment of capital and other resources which the applicant believes will be required to bring the invention to practical application (include a 5-year Pro forma Income Statement)
3. A statement as to applicant's capability and intention to fulfill the plan, including information regarding manufacturing, marketing, financial, and technical capabilities and resources; 37 CFR Part 404
4. A statement of the fields of use for which the applicant intends to practice the invention; and
5. A statement of the geographic areas in which applicant intends to manufacture any products embodying the invention and geographic areas where the applicant intends to use or sell the invention, or both
6. A detailed chart showing what commercialization milestones need to be achieved and when to bring the product to market
7. Proposed royalty rates, including up-front fees and yearly minimums
8. A copy of the company’s financial report (e.g., Dun & Bradstreet report) and/or the latest annual report.

 

Evaluation Criteria for Commercialization Plans
NASA considers a variety of factors when evaluating a company’s business proposal, whether it is a license application or a commercialization plan.

Technical Factors

  • Understanding the technology
  • Technical capabilities and facilities
  • Awareness of technical challenges and constraints and a plan for solving
  • Available and accessible technical and engineering skills
  • Assessment of design changes necessary to achieve commercialization

Business Factors

  • Goals of project agree with company’s overall mission and goals
  • Demonstration of strength of company in field of technology relating to product
  • Clear identification of existing and potential customers
  • Characterization of market, including size and estimate of penetration
  • Competitive advantage and position
  • Clear work/business plan, including well-defined roadmap to commercialization
  • Demonstrated development, manufacturing, and marketing capabilities
  • Financial condition of company

Management Factors

  • Leadership and commitment of management
  • Well-defined project management, schedule, and resources
  • Reasonableness of proposed effort, including time and resource estimates
  • Strengths and capabilities of management team, including past experience
  • Record of successful and unsuccessful technology development leading to commercial products

Economic Impact

  • Financial benefit to company and NASA
  • Number and quality of jobs expected to be created
  • Impact on consumers and taxpayer benefits
  • Time to commercialization impact
  • Expectations for exportation of product
  • Financial and organizational impact on company
  • Economic impact in company’s local community

Processing of License Applications
Once the Field Center has received a complete license application, including the commercialization plan, the Center’s Technology Transfer Program Office and the Patent Counsel review it for completeness and make a preliminary recommendation to NASA’s Director of Patent Licensing. This recommendation will be either:

  • To grant the license as requested
  • To grant the license with modification after negotiation with the licensee
  • To deny the license.

For exclusive and partially exclusive licenses, an additional step is required before a final determination to grant a license can be made. This step involves placing a notice of a prospective license, identifying the invention and the prospective licensee, in the Federal Register and providing opportunity for filing written objections within a 15-day period. Any objections are taken into consideration by the Director of Patent Licensing in making the final recommendation to the NASA Associate General Counsel (Intellectual Property).

Proposal and negotiation of the license fee are integral parts of the entire licensing process; there is no single point in the process where such fee is the exclusive concern, nor is there any point where such fee does not interplay with other considerations.

The license application and commercialization plan can be emailed to Sammy Nabors at sammy.nabors@nasa.gov.