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[Federal Register Volume 90, Number 15 (Friday, January 24, 2025)]
[Notices]
[Pages 8162-8164]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-01683]

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NATIONAL SCIENCE FOUNDATION

Request for Comments on the National Science Foundation's 
Proposed Intellectual Property Options

AGENCY: National Science Foundation.

ACTION: Request for comments. Extension of comment period.

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SUMMARY: On December 12, 2024, the National Science Foundation (NSF) 
published in the Federal Register a document entitled ``Request for 
Comments on NSF's Proposed Intellectual Property Options.'' In response 
to requests by prospective commenters that they would benefit from 
additional time to adequately consider and respond to the RFC, NSF has 
determined that an extension of the comment period until Friday, 
February 21, 2025, at 11:59 p.m. (eastern), is appropriate. NSF also is 
adding language to clarify the intent for intellectual property 
options.

DATES: The end of the comment period for the document entitled 
``Request for Comments on NSF's Proposed Intellectual Property 
Options'' published on December 12, 2024 (89 FR 101641), is extended 
from January 24, 2025, until February 21, 2025.

ADDRESSES: To respond to this Request for Comments, please use the 
official submission form available at: https://airtable.com/app9KPUhqR2lAb4Zf/pag9d0QhLcOXkGlud/form.
    Respondents only need to provide feedback on one or more questions 
of interest or relevance to them. Each question is voluntary and 
optional. The response to each question has a 4,000-character limit 
including spaces.

FOR FURTHER INFORMATION CONTACT: For further information, please direct 
questions to Allen Walker through email at [email protected], 
phone at 703-292-2291, or mail at National Science Foundation, ATTN: 
Allen Walker, 2415 Eisenhower Avenue, Alexandria, VA 22314, USA.

SUPPLEMENTARY INFORMATION: The National Science Foundation (NSF) seeks 
public comments to inform the proposed implementation of new 
intellectual property (IP) provision options for use in NSF public-
private partnerships, particularly those advancing research and 
development, that include co-funding of awards by private partners. NSF 
is committed to fostering innovation and promoting the translation of 
research into practical applications. To enhance the effectiveness of 
public-private partnerships, NSF seeks to implement a set of options 
for IP provisions that provide greater flexibility and balance the 
interests of both academia and industry.
    Please note that the intellectual property options discussed herein 
apply only to NSF awards that stem from direct partnerships between NSF 
and industry partners prior to issuance of the grant. These types of 
awards currently represent a small percentage of NSF's overall funding 
portfolio. NSF defines a direct partnership as an explicit agreement 
between NSF and one or more other organizations to jointly resource 
(i.e., via dollars and/or in-kind offerings) a funding opportunity.
    These IP options do not apply to the rest of the NSF award 
portfolio. NSF maintains a consistent policy of not claiming or 
retaining any intellectual property rights resulting from its awards, 
including those made through the Small Business Innovation Research 
(SBIR)/Small Business Technology Transfer (STTR) awards. NSF shall 
neither enforce nor participate in any such negotiations between 
awardees and industry partners. These IP options also do not apply to 
downstream partnerships, such as those developed by NSF awardees for 
additional non-NSF resources (financial and/or in-kind), thereby 
enhancing the activities of the original award.
    Recent engagements, including the 2023 NSF-Industry Partnership 
Summit and subsequent listening sessions, have highlighted the need for 
optional IP strategies that can adapt to the unique requirements of 
various funded projects. NSF intends to incorporate these IP options 
into partnership agreements involving industry and/or non-profit 
organizations for funding opportunities whose funded awards may result 
in the generation of IP.
    Through this Request for Comments (RFC), NSF invites input from a 
wide range of stakeholders, including industry, academia, non-profit 
organizations, other government agencies, and other interested parties.
    The 2023 NSF-Industry Partnership Summit and subsequent engagements 
revealed differing viewpoints in stakeholders' perspectives regarding 
NSF's existing IP terms. In response, the Directorate for Technology, 
Innovation and Partnerships (TIP) has developed a series of IP grant-
of-rights options to address these concerns. These options are informed 
by the Bayh-Dole Act and aim to promote the practical application and 
commercialization of federally funded research while preserving 
potential access to the IP for the U.S. Government.

[[Page 8163]]

    Below is the language for each of the three IP grant-of-rights 
options to be used in partnership agreements. These IP options can be 
tailored according to the particular research area and the specific 
terms and conditions agreed upon between NSF and the partner(s) in a 
particular public-private partnership.

A. Research License With Commercial Option

    The disposition of rights to inventions or works of authorship made 
during NSF-funded research is governed by federal law, regulation, and 
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR 401. 
Pursuant to applicable laws, regulations, and policies, the entire 
right, title, and interest of Intellectual Property (IP) that directly 
results from activities funded by NSF (``Project IP'') is retained by 
the entity that created it. While recipients are permitted to 
temporarily withhold the publication of data and software related to 
inventions to facilitate patent application filings, NSF terms and 
conditions require the subsequent prompt publication of all research 
outputs--including results, data, and software--generated in the 
performance of the research.
    All partners are entitled to a non-exclusive, royalty-free license 
for use of Project IP for research purposes for a period of 18 months 
from the date of disclosure of the Project IP. This license shall not 
extend to any IP other than Project IP. This 18-month period is 
structured as follows:
    1. Notice Period: For the first 12 months after disclosure of the 
Project IP, any partner shall have a right to indicate in writing that 
they are exercising their Right of First Negotiation (``ROFN'') for an 
opportunity to secure an exclusive commercial license during the 
Negotiation/Option Period.
    2. Negotiation/Option Period: Following the 12-month Notice Period, 
there shall be a 6-month period during which partners so exercising 
their ROFN may negotiate for an exclusive commercial license.
    If an exclusive commercial license is secured by one partner during 
the Negotiation/Option Period, all other partners' rights shall 
automatically become a perpetual, non-exclusive, royalty-free license 
for research purposes only.
    If no exclusive commercial license is secured by the end of the 
Negotiation/Option Period, the non-exclusive license granted herein 
shall, for all partners, automatically convert into a perpetual non-
exclusive, royalty-free license for research purposes only.
    Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive, 
irrevocable, paid-up license throughout the world for use of Project IP 
that directly results from activities funded by NSF.

B. Convertible Commercial License

    The disposition of rights to inventions or works of authorship made 
during NSF-funded research is governed by federal law, regulation, and 
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR 401. 
Pursuant to applicable laws, regulations, and policies, the entire 
right, title, and interest of Intellectual Property (IP) that directly 
results from activities funded by NSF (``Project IP'') is retained by 
the entity that created it. While recipients are permitted to 
temporarily withhold the publication of data and software related to 
inventions to facilitate patent application filings, NSF terms and 
conditions require the subsequent prompt publication of all research 
outputs--including results, data, and software--generated in the 
performance of the research.
    All partners are entitled to a non-exclusive, royalty-free license 
for use of Project IP for both research and commercial purposes for a 
period of 18 months from the date of disclosure of the Project IP. This 
license shall not extend to any IP other than Project IP. This 18-month 
period is structured as follows:
    1. Notice Period: For the first 12 months after disclosure of the 
Project IP, any partner shall have the have a right to indicate in 
writing that they are exercising their Right of First Negotiation 
(``ROFN'') for an opportunity to secure an exclusive commercial license 
during the Negotiation/Option Period.
    2. Negotiation/Option Period: Following the 12-month Notice Period, 
there shall be a 6-month period during which partners so exercising 
their ROFN may negotiate for an exclusive commercial license.
    If an exclusive commercial license is secured by one partner during 
the Negotiation/Option Period, all other partners' rights shall 
automatically convert into a perpetual non-exclusive, royalty-free 
license for research purposes only.
    If no exclusive commercial license is secured by the end of the 
Negotiation/Option Period, the non-exclusive license granted herein 
shall, for all partners, automatically convert into a perpetual non-
exclusive, royalty-free license for research purposes only.
    Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive, 
irrevocable, paid-up license throughout the world for use of Project IP 
that directly results from activities funded by NSF.

C. Research-Only License

    The disposition of rights to inventions or works of authorship made 
during NSF-funded research is governed by federal law, regulation, and 
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR 401. 
Pursuant to applicable laws, regulations, and policies, the entire 
right, title, and interest of Intellectual Property (IP) that directly 
results from activities funded by NSF (``Project IP'') is retained by 
the entity that created it, following applicable federal law. While 
recipients are permitted to temporarily withhold the publication of 
data and software related to inventions to facilitate patent 
application filings, NSF terms and conditions require the subsequent 
prompt publication of all research outputs--including results, data, 
and software--generated in the performance of the research.
    All partners are entitled to a non-exclusive, royalty-free license 
for use of Project IP for research purposes. This license shall not 
extend to any intellectual property other than Project IP.
    Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive, 
irrevocable, paid-up license throughout the world for use of Project IP 
that directly results from activities funded by NSF.

Questions for Public Comment

    NSF welcomes comments from the public on any issues that are 
relevant to this topic, and is particularly interested in answers to 
the following questions:
    Overall Impact: How do you believe these proposed IP options will 
impact innovation, technology transfer, and economic growth?
    Balance: Do these options ensure a balanced distribution of IP 
rights between academia and industry partners? How can the proposed IP 
options be further refined to ensure maximum balance in IP 
arrangements?
    Flexibility: What additional flexibility should be incorporated 
into the IP options to accommodate and incentivize a range of research 
initiatives?
    Adoption: What strategies could NSF employ to encourage widespread 
adoption of these IP options among potential partners?
    Barriers: What potential barriers exist to implementing these IP 
options, and how might they be overcome?
    Translation and Incentives: Do the proposed IP options effectively 
promote the translation of research into practice while incentivizing 
industry participation and ensuring benefits for

[[Page 8164]]

universities and researchers? What improvements could be made to 
enhance these aspects?
    Additional Options: Are there other IP grant-of-rights options or 
frameworks that NSF should consider to better support collaborative 
research initiatives and facilitate research impact?
    NSF, at its discretion, will use the information submitted in 
response to this RFC to help inform future program directions, new 
initiatives, and potential funding opportunities. The information 
provided will be analyzed, may appear in reports, and may be shared 
publicly on agency websites. Respondents are advised that the 
government is under no obligation to acknowledge receipt of the 
information or provide feedback to respondents with respect to any 
information submitted. No proprietary, classified, confidential, or 
sensitive information should be included in your response submission. 
The government reserves the right to use any non-proprietary technical 
information in any resultant solicitations, policies, or procedures.

(Authority: Public Law 117-167.)

    Dated: January 22, 2024.
Suzanne H. Plimpton,
Reports Clearance Officer, National Science Foundation.
[FR Doc. 2025-01683 Filed 1-23-25; 8:45 am]
BILLING CODE 7555-01-P
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