NASA Procedures and Guidelines
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NPR 7500.2 Eff. Date: December 19, 2014 Cancellation Date:	NASA Technology Transfer Requirements
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Chapter 4: Pursuing Intellectual Property Protection

4.1 Determining the Commercial Potential of a Technology

4.1.1 NASA will pursue intellectual property protection, consistent with available resources, on technologies with commercial potential, for which NASA has an ownership interest, to enable licensing of NASA's intellectual property in accordance with NPD 2090.6, "Authority To Enter Into License Agreements and Implementation of Licensing Authority".

4.1.2 Commercial potential is tied to the value of the technology--its potential benefits, its advantages in the marketplace, and its impact on profitability. A variety of technical, market, and intellectual property issues can be addressed when assessing value. Secondary sources of information (e.g., published data, market research reports, Internet searches) and primary sources may be probed. Primary sources include inventors, experts, end-users, and potential licensees. Experts can be found in industry, academia, and Government laboratories.

4.1.3 Assessment of commercial viability can be formulated in a variety of ways. Some general questions that may be addressed include:

a. Does the technology add value throughout the supply chain?

b. Does it make a product that is better than the existing and emerging technologies?

c. Is someone willing and able to develop and build, and someone willing to buy the end product, and will both realize increased value?

d. Can the technology be commercialized while a market opportunity exists?

4.1.4 As an example, one method of assessing commercial potential is to consider the following two factors: the technology's commercialization readiness (internally determined); and the technology's market readiness (externally determined).

a. Commercialization readiness--If a technology has been successfully demonstrated in an advanced prototype, it is much more likely to gain the attention of the market. If the innovation is merely a concept, even a good one, the prospective technology adopters may not give it much credence.

b. Market readiness--Evaluation for market readiness is primarily based on externally gathered data. Favorable market acceptance is judged by the following factors:

(1) Can the technology be developed into a product that meets a substantiated need?

(2) Have companies been identified that can and will take the technology from its current stage of development to a commercial product (or cause this to happen)?

(3) Can the adopting companies commercialize the technology at a cost and price that will provide an acceptable return on investment?

(4) Have sufficient end users been identified that not only need the innovation but are willing to pay an acceptable price to provide a reasonable profit margin?

4.2 Patentability Assessments

4.2.1 Prior to pursuing patent protection on an invention described in an NTR, a determination will be made as to whether or not the invention is patentable. Patentability assessments are typically made by a NASA Intellectual Property/Patent Counsel or Attorney. A patentability assessment should take into account the following criteria:

a. Patentable Subject Matter: The invention will fall into a category of subject matter deemed patentable under U.S. Patent Law. Patentable inventions are broadly defined in 35 U.S.C. § 101, as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

b. Novelty: Is the invention novel? Pursuant to 35 U.S.C. § 102, the invention should not have been patented before. Also, if the invention has been publically disclosed in a publication, or in public use, on sale, or otherwise made publically available, prior to filing a patent application, a statutory bar that would preclude receiving a patent may result. A prior art search may be necessary to determine if there are any patents or public information that would deem the invention to not be "novel."

c. Non-obviousness: Patents are also only granted to inventions that would not be considered "obvious" to those with "ordinary skill" in the relevant technical area, as set forth in 35 U.S.C. § 103. An assessment should also be done, typically by the Center Patent Counsel or her delegate, to determine if the invention can pass this legal test before a patent is pursued.

4.2.2 Once deemed patentable, a determination to pursue patent protection should be based primarily on the commercial potential and marketability of a technology. This analysis and recommendation is the responsibility of the Center Technology Transfer Officer.

4.2.3 NASA considers technology transfer the primary justification for patent protection.

4.2.4 As stated in section 2.5, patentability assessments, including prior art searches, are the responsibility of the Center Patent Counsel or her delegate. The Innovator should work with the Center Patent Counsel to ensure that she has all the information that is readily available to make an accurate assessment.

4.3 Invention Rights Determination

4.3.1 For NASA employees' inventions, the determination of the respective rights of the Government and the employee in the invention, will conform to policy as set forth by NPD 2091.1B.

4.3.2 For NASA Partners' inventions, the type of entity performing the work (i.e., small business, large business, college or university, or nonprofit organization) and the partnership vehicle and terms will determine the invention rights. Typically, recipients of NASA contracts, grants, or cooperative agreements who develop a technology under a NASA-funded contract or agreement have, at their option, the right to either elect to retain title to the NASA-funded invention (small business, college or university, or nonprofit organization) or to petition to obtain title to the invention through the NASA waiver process (large business). However, recipients of NASA contracts, grants, or cooperative agreements that obtain/retain title to NASA-funded inventions through the election or waiver process are required by law to file patent applications and pursue commercial utilization of the inventions, either directly or through a licensee or assignee.

4.3.3 NASA managers contemplating commercialization of a technology should consult their Center's Intellectual Property/Patent Counsel to determine the respective rights of the Government and its contractors, grantees, and recipients in NASA-funded technologies.

4.3.4 Given how closely NASA employees and NASA Partners' employees work together, some inventions may be jointly invented, and therefore jointly owned by both NASA and a NASA Partner. In such cases the inventive contribution of each party should be completely understood and documented. For inventions that are determined to be truly jointly owned, the NASA and Non-NASA entity should, when appropriate, also enter into a "joint ownership agreement" to determine who will pursue the needed intellectual property protections to encourage technology transfer.

4.4 Intellectual Property Protections for Software

4.4.1 Generally, NASA does not patent software, but in the rare occasions that it does, the software must meet the statutory patentability standards, such as novelty and non-obviousness. Before patenting software, the center Technology Transfer Officer should determine that patenting and licensing is consistent with NASA's patent strategy, and is the most effective method for transferring this technology for the greatest public benefit.

4.4.2 Although there is no U.S. copyright protection available for works produced solely by civil servant employees (U.S. Government Works), the Government may however assert foreign copyright in such works. Further, the Government can receive and hold copyrights (both U.S. and foreign) that are transferred to it by assignment. Under FAR-based contracts, NASA has the right under the Agency FAR supplement clause to direct a contractor to assert copyright over software and assign such ownership over to the Government.

4.4.3. Criteria for the evaluation and transfer of software should follow the requirements set forth in NPR 2210.1.

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