Technology Transfer: NASA Patent Licensing Program

# Commercializing NASA Technology 

## 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. This
authority has been implemented by means of \"Licensing of Government
Owned Inventions,\" 37 C.F.R., Part 404.

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

## How to Prepare a License Application 

If your company wishes to apply for a NASA Langley Research Center
(LaRC) patent license, the information that must be provided with your
application (reference 37 C.F.R. § 404.8) is shown on the attached form,
which may be used as an aid to completing your application. If the
layout or use of the attached form is inconvenient, your application may
follow a format of your choosing, as long as the required information is
provided. Your completed application should be sent to:

> Patent Counsel Office
>
> NASA Langley Research Center

Mail Stop 141

> 3 Langley Boulevard
>
> Hampton, VA 23681-2199

Note: All technical and business information designated confidential or
proprietary will be maintained in confidence if appropriately marked.

**[Processing of License Applications]{.underline}**

[All License Applications]{.underline}:

After the Patent Counsel Office has received your license application,
it will be reviewed for completeness. After it has been reviewed you
will be given the opportunity to amend any deficiencies that are found.

Once we have a complete license application and we determine to proceed
with your license request, you will be so notified, and negotiation of
terms can begin. After mutually acceptable terms are reached, the
license may be executed. The authority for final approval and execution
of all licenses is NASA Headquarters.

Should a determination be made to deny the license following review of
your application and any requested amendments, you will be so notified
by the Patent Attorney. The notification will state the reasons for the
denial as well as explain how an appeal of the denial may be made.

[Exclusive and Partially Exclusive License Applications]{.underline}:

If your application is for an exclusive or partially exclusive license,
NASA is required to place a notice of a prospective license in the
Federal Register, identifying the invention and the prospective
licensee, before a final determination to grant a license can be made.
This notice is followed by a 15-day period for the filing of written
objections, appeals, and additional license applications. If any such
written responses are received during the 15-day period, they will be
taken into consideration by NASA LaRC and NASA Headquarters'
intellectual property personnel prior to granting the license.

**Application for a NASA Langley Research Center Patent License**

  -------------------------- -------------------- ---------------- ----------------
  ***Section 1: Information                                        
  about the Applicant***                                           

  1(a). Name and address of  1(b). Company's                       1(c). Employer
  the person, company, or    place of                              identification
  organization applying for  incorporation or                      number (EIN)
  the license.               citizenship of                        
                             applicant                             

                                                                   

  1(d). Name and address of                       1(e). Phone      
  the applicant\'s                                number of        
  representative with whom                        applicant's      
  future correspondence                           representative   
  should be exchanged.                                             

                                                                   

  1(f). A description of the                                       
  nature and type of                                               
  applicant\'s business.                                           
  This description should                                          
  include the identification                                       
  of any products or                                               
  services that the                                                
  applicant has successfully                                       
  commercialized within the                                        
  last 5 years and the                                             
  approximate number of                                            
  people employed by the                                           
  applicant.                                                       

                                                                   

  1(g). A statement                                                
  indicating whether the                                           
  applicant qualifies as a                                         
  small business firm as                                           
  defined in section 2 of                                          
  Pub. L. 85-536 (15 U.S.C.                                        
  632). A small business is                                        
  generally defined as one                                         
  that is independently                                            
  owned and operated, and                                          
  has fewer than 500                                               
  employees.                                                       

                                                                   

  1(h). Identification of                                          
  licenses that were                                               
  previously granted to the                                        
  applicant for any                                                
  federally owned                                                  
  inventions.                                                      

                                                                   
  -------------------------- -------------------- ---------------- ----------------

  -----------------------------------------------------------------------
  ***Section 2: Information about the Technology***

  2(a). Identify the invention for which a license is desired: (state
  NASA (LAR) case number, title of the invention, patent number, or
  patent application serial number, if known)

  2(b). State how the applicant became aware of the invention sought to
  be licensed.

  -----------------------------------------------------------------------

  -----------------------------------------------------------------------
  ***Section 3: The Applicant's Commercialization Plan***

  3(a). Type of license being applied for (e.g., exclusive, partially
  exclusive, or nonexclusive).

  3(b). A description of the key steps (development phases, milestones,
  and the like) that the applicant believes will be necessary to bring
  the invention to practical application. "Practical application" is
  interpreted to mean that the invention is being utilized and that its
  benefits are available to the public on reasonable terms. Each step
  should include information regarding the time, nature and amount of
  capital and other resources anticipated.

  3(c). A description of the applicant\'s capability and intention to
  fulfill this plan to achieve a successful commercial product. This
  statement shall include information pertaining to the applicant\'s
  manufacturing, marketing, financial, and technical resources.

  3(d). Field(s) of use in which the applicant intends to apply the
  technology.

  3(e). Geographic areas in which the applicant intends to use or sell
  any products embodying the invention.

  3(f). Geographic areas in which the applicant intends to manufacture
  any products embodying the invention.

  3(g). Describe any anticipated support from NASA Langley Research
  Center (technical consultation, research, design, etc.)

  3(h). Statement containing the applicant's best knowledge as to the
  extent the invention is being practiced by private industry, the
  Government, or both, or is otherwise available commercially.

  -----------------------------------------------------------------------

+-----------------------------------------------------------------------+
| ***Section 4: Addenda and Financial Information***                    |
+-----------------------------------------------------------------------+
| Please include, as attachments, the following information:            |
|                                                                       |
| 4(a). A five-year projected income statement that should include, as  |
| a minimum, expected sales, cost of goods sold, and operating costs    |
| associated with the commercialization of this technology.             |
|                                                                       |
| 4(b). A copy of the applicant's most recent balance sheet and income  |
| statement. If not available, i.e. if this is a newly formed business, |
| please explain.                                                       |
|                                                                       |
| 4(c). Any additional information, such as a copy of your business     |
| plan, that the applicant feels will support their selection as a NASA |
| commercial partner.                                                   |
+-----------------------------------------------------------------------+