Effective Date: June 16, 2022
Expiration Date: June 16, 2027
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4.1.1 NASA only patents for the purpose of commercialization through licensing and in accordance with NPD 2090.6. NASA does not patent defensively or for prestige.
4.1.2 Decisions to file patent applications are made jointly by the Center Patent Counsel and the Center Technology Transfer Officer. The patent counsel can determine whether a technology meets the threshold for patentability, and the CTTO establishes whether a technology has commercial potential to merit investing in the patent and associated marketing.
4.1.3 All decisions are made jointly. Neither office is authorized to make decisions about filing new patent applications or maintaining existing patents without the recommendation of the other office.
Patentability assessments, including prior art searches, are the responsibility of the Center Patent Counsel or his or her delegate. The Innovator shall work with the Center Patent Counsel to ensure that he or she has all the information needed to make an accurate assessment.
4.3.1 NASA has established a standardized, evidence-based method for determining commercial potential, which includes a four-step process consisting of triage, export control, screening, and assessment. Each step will be documented in NTTS with all appropriate fields populated, associated files attached, and unique circumstances noted.
4.3.2 Triage, the first step in the process, establishes whether fundamental issues exist that would preclude a favorable patenting decision.
a. These include, but are not limited to: the degree to which software is part of the invention, ownership of the invention, previous enabling publications, whether it is related to other previously received disclosures, TRL, identified applications, benefits to the market, number of potential licensees, and current market interest.
b. The Center Technology Transfer Office shall conduct two independent triages for every new technology report with a government inventor.
c. The triage results in a recommendation to take one the following actions: pursue screening, request more information from the inventor, monitor the invention for further development, recommend publication, or inactivate the case and offer the rights back to the inventor.
d. Triage is conducted within 14 days of receipt of the NTR, and the inventor is provided feedback within 30 days of receipt of the NTR.
e. A technology does not move to the second step in the process, screening, unless it receives a favorable triage.
f. New Technology Reports classified as "software" will undergo an initial review by TTO personnel to identify whether software should proceed for placement in the software catalog or should be reviewed for patenting and/or commercial potential. Software identified during initial review as a potential candidate for the software catalog will be referred to the Software Release Authority, who will follow up within the 30-day window to encourage the developers to add the code to the Agency catalog.
4.3.3 Export Control. If the result of the triage is to pursue screening, the Center Technology Transfer Officer should next submit the NTR to the appropriate export control authority for ITAR/EAR review.
4.3.4 Screening. The next step in the process is screening, which is a more in-depth analysis and involves interviews with the inventor.
a. During the screening process, NASA conducts an in-depth inventor interview, performs secondary research around the intellectual property landscape and marketability and develops a non-enabling technology overview.
b. Ultimately, the screening results in a recommendation to pursue an assessment or return to one of the other options from the triage (i.e. request more information, monitor, publish, inactivate, etc.)
4.3.5 Assessment. The final step of the process is an assessment. The assessment involves interviews with multiple outside parties, including potential licensees and end users. The goal of the assessment is to increase confidence in the commercial potential of the invention, while continuing to look for both show-stoppers and additional promising applications.
4.3.6 Patent filing recommendations will only be made once all four steps of this process are complete.
An exception to this rule might be when a potential qualified licensee has been identified earlier in the process. In those instances, the current facts and circumstances should be reviewed to determine whether or not a patent application should be filed prior to the completion of the commercial assessment, but, even if the application is filed, the center technology transfer office should still proceed with the commercial analysis to determine if other opportunities exist to commercialize that technology.
4.4.1 In some instances, a publication or presentation is planned that may be enabling and would occur sooner than it would take for the full patentability assessment to occur, potentially creating a statutory bar. In these instances, a provisional patent application may be filed.
a. A provisional patent application should only be filed after triage analysis is completed by the Center Technology Transfer Office. If necessary, due to a statutory bar date, such Triaging should be expedited.
b. Once the provisional patent application is filed, the Center Technology Transfer Office shall begin the screening and assessment phases of the commercialization review.
The decision to maintain a patent will be made by the Center Technology Transfer Officer and concurred upon by the Office of the General Counsel, based on commercial potential. In general, maintenance fee payments should only be paid if there are active license negotiations, an active license, or there is significant potential for commercial application. If circumstances have materially changed since the initial commercialization determination was made and the patent is unlikely to attract potential licenses, it should be offered back to the inventor or allowed to expire.
4.6.1 Generally, NASA does not patent software, but on those occasions that it does, the software will 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.
4.6.2 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 in software and assign such ownership over to the Government.
4.6.3 Criteria for the evaluation and transfer of software should follow the requirements according to NPR 2210.1.
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