NASA Advisory Council Recommendation 

Reduce Barriers to ISS Utilization, Including Intellectual Property Rights 

2013-02-06 (CSC-Ol) 

Recommendation: 

The Council recommends that NASA explore reduction ofbarriers to ISS utilization, including 

Intellectual Property (IP) rights. 

Major Reasons for Proposing the Recommendation: 


Non-NASA funded users ofISS must be able to retain their IP rights. The ability to retain their 


IP is critical to supporting research and promoting business opportunities. 


Consequences ofNo Action of the Proposed Recommendation: 


ISS will be unattractive to universities, private industry, including pharmaceutical companies; 


and research institutions, thereby limiting utilization. 


NASA Response: 


NASA concurs with the recommendation. NASA is currently operating a share ofthe 


United States' accommodations on the International Space Station (ISS) as a National 


Laboratory in accordance with Section 507 ofthe NASA Authorization Act of 2005 


(P.L.109-155). Section 504 ofthe NASA Authorization Act of 2010 (P.L. 111-267) authorizes 


NASA to maximize the value ofthe investment the U.S. Government has made in the ISS and 


demonstrates the scientific and technological productivity ofthe ISS over the next decade by 


entering into a Cooperative Agreement with a 501(c)(3) entity to support research and 


development and to manage the activities ofthe ISS National Laboratory. 


NASA implemented the direction ofthe 2010 Authorization Act by initially funding the 


operation of an independent 501(c)(3) entity (the National Laboratory Entity) to manage non­


NASA utilization ofthe ISS through the ISS National Laboratory.! The National Laboratory 


Entity is expected to capitalize on the unique venue ofthe ISS as a national resource to promote 


opportunities for advancing science and technology to other U.S. Government agencies, 


university-based researchers, and private firms for utilization ofthe ISS. These organizations 


will use the ISS as the nation's newest national laboratory to pursue basic and applied research 


in fields such as human health, energy, and the environment, as well as stimulate educational 


opportunities in science, technology, engineering, and mathematics (STEM) for the next 


generation ofU.S. scientists and engineers. 


The operation ofthe ISS National Laboratory will open new paths for the exploration and 


economic development of space through opportunities to expand the U.S. economy in space­


based research, applications, and operations through the use of a unique and highly visible 


national asset with surplus capacity available for a wide spectrum of applications. To facilitate 


the acceptance and use ofthe ISS National Laboratory as an attractive and cost-effective 


1 The current National Laboratory Entity is the Center for the Advancement of Science in Space (CASIS) under a 

cooperative agreement awarded in September 2011. 

Enclosure 
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platfonn for commercial research applications, NASA will continue to coverl\cost ofoperating 

and maintaining the ISS and is highly motivated to work with other agencies and organizations 

to pursue applications. 

Use of the ISS National Laboratory for commercial research is still perceived as a risky 

venture. Although NASA continues to fund the ISS and has agreed to provide transportation to 

and from the ISS for research activities, the conduct ofmicro gravity research is an expensive 

proposition for commercial finns. In order to increase the perceived value of conducting 

commercial development activities in a micro gravity environment, it is incumbent upon NASA 

to ensure that commercial finns have the maximum opportunity to leverage their investment in 

activities conducted on the ISS National Laboratory and remove any identified barriers to 

developing successful commercial applications. 

NASA is subject to a set ofgenerally applicable Government-wide statutes and regulations 

pertaining to rights in intellectual property (both inventions and data) arising from the work 

conducted under the cooperative agreement. These include, but are not limited to, the BayhDole Act, 35 U.S.C. §§ 200-212; the Stevenson-Wydler Act, 15 U.S.C. § 3701, et seq.; and 

OMB Circular A-I10. Under these laws and regulations NASA, like all Federal agencies, is 

required to retain, on behalf ofthe Federal Government, certain rights in intellectual property 

generated under cooperative agreements to which it is a party. Intellectual property generated 

under a cooperative agreement includes intellectual property generated by the other, nonFederal party (the "Recipient") and intellectual property generated by entities the Recipient 

works with under the cooperative agreement (the "sub-recipients"). 

Recipients and sub-recipients can generally retain the majority of rights in the intellectual 

property they generate under a cooperative agreement with Federal agencies. However, 

regulations mandate that the Federal government retain Government-purpose rights in said 

intellectual property. For example, the Federal Government retains a nonexclusive, 

nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalfof 

the United States any inventions created under a cooperative agreement to which a Federal 

agency is a party. Similarly, the Federal Government gets the right to (1) obtain, reproduce, 

publish or otherwise use data produced under the cooperative agreement, and (2) authorize 

others to receive, reproduce, publish, or otherwise use said data for Federal purposes. 

It is important to understand that, in addition to the laws and regulations governing other 

Federal agencies when they enter into cooperative agreements, NASA is also subject to the 

Space Act, found in Title 51 ofthe United States Code. The Space Act makes NASA a "titletaking" agency - i.e., NASA is authorized to take title to inventions created under agreements 

with NASA as well as inventions created using NASA resources (including funds). NASA 

may waive its right to take title to said inventions. However, the Space Act, like the more 

generally applicable laws and regulations described above, requires that the Federal 

Government retain the right to use said inventions for government purposes. 

In summary, while NASA has some discretion in the amount ofrights it takes to intellectual 

property developed under cooperative agreements to which it is a party, the applicable 
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guidance, regulations, and laws mandate that NASA retain certain minimum rights to said 

intellectual property on behalfofthe entire Federal Government. 

In light ofthe above, NASA is also concerned that the requirements under current law provide 

a disincentive for commercial companies to invest in microgravity research. Microgravity 

research activities for NASA applications are not conducted through the ISS National 

Laboratory. Therefore, any research conducted on the ISS National Laboratory is not being 

conducted to meet a NASA need or mission requirement. Because work through the ISS 

National Laboratory is not being conducted to support any NASA need, the traditional 

approach to intellectual property under which the Government retains rights for Government 

purposes does not directly benefit the Agency and encumbers the commercialization efforts of 

ISS National Laboratory users. NASA, therefore, has supported legislation that maximizes the 

intellectual property rights retained by ISS National Laboratory users: 

• 	 The legislation does not affect or impair intellectual property rights that the 

Federal Government may receive under other agreements. For example, if an 

ISS National Laboratory user is working under a grant from National Institutes 

ofHealth (NIH), the terms and conditions ofthe grant relating to intellectual 

property will still apply. However, the Federal Government will not get rights 

simply because a researcher uses the ISS National Laboratory. 

• 	 The proposed legislation exempts inventions arising from use ofthe ISS under 

the ISS National Laboratory from NASA's title-taking authority under the Space 

Act. 

• 	 The proposed legislation does include the requirements found in the Bayh-Dole 

Act that ISS National Laboratory users: (1) disclose inventions and elect to 

retain title; (2) file patents on elected inventions; and (3) provide reports on their 

success at commercializing the invention. These requirements are adapted from 

the Bayh-Dole Act at 35 USC 202(c). The purpose ofthese provisions is to: 

o 	 Ensure that NASA has the opportunity to evaluate the success ofthe ISS 

National Laboratory through reporting ofnew inventions. 

o 	 Collect and maintain metrics ofinventions and "spinoffs" developed 

with NASA support through the Office ofChiefTechnologist. 

o 	 Ensure that ISS National Laboratory users diligently pursue commercial 

applications for inventions developed on the ISS National Laboratory. 

• 	 Unlike the Bayh-Dole Act, ifthe ISS National Laboratory user complies with its 

requirement to report and patent inventions, the Federal Government does not 

retain Government purpose rights. The user retains all rights in the inventions. 

If the user does not retain title or protect the invention, then NASA will have the 

option to step in and pursue practical use ofthe invention. 
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• 	 The ISS National Laboratory user has the right to exclusively license any 

inventions created by NASA during the conduct of activities on the ISS National 

Laboratory. This ensures that the user has the opportunity to consolidate 

commercial rights in any inventions arising from its use ofthe ISS National 

Laboratory, even ifthe invention would otherwise belong to the Government. 

This provision is drawn from the Cooperative Research and Development 

Agreement (CRADA) authority in the Stevenson-Wydler Act at 15 USC 3710a 

(b)(I). 

• 	 The Government retains no right to use data created during the conduct of 

activities on the ISS National Laboratory and, ifproprietary data would 

otherwise be subject to disclosure under the Freedom of Information Act 

(FOIA), NASA can protect that data for up to five years. The five-year FOIA 

protection is identical to protection provided to Space Act Agreement partners 

under 51 USC 20131(b). 

Through this proposed legislation, NASA believes that an appropriate balance was struck 

between the legitimate commercial needs ofthe ISS National Laboratory users who are being 

asked to make investments in commercial micro gravity research and the Government's interest 

in ensuring that inventions developed using Government resources and taxpayer-funded 

facilities are appropriately commercialized. This legislation does not impact NASA's research 

needs or the rights ofthe Government in its own research since (1) work for NASA will be 

conducted outside the ISS National Laboratory and (2) other arrangements between ISS 

National Laboratory users and the Federal Government are not impacted by the proposed 

legislation. 

Intellectual property rights in inventions made on the ISS is addressed in the Section 223 of 

S. 1317, NASA Authorization Act of2013; however, NASA has identified five primary 

deficiencies in the current bill ifthe goal ofthe legislation is to provide ISS researchers with 

maximum intellectual property rights: 

1. Under the language in the Senate bill, inventions created by large-entity contractors during 

the non-NASA utilization ofthe ISS National Laboratory would still be required to submit 

requests for waivers ofNASA's title-taking authority under the Space Act in accordance with 

14 CFR 1245 Subpart 1. NASA is required under those regulations to determine whether 

waiving NASA's title-taking authority is in the best interest ofthe Agency. Commercial 

utilization is a factor supporting a decision to waive NASA's rights, but a determination that 

NASA would, in fact, waive its rights under the Space Act is not guaranteed in all cases. 

2. The Senate bill provides that NASA obtain Government purpose rights in inventions in the 

event a large-entity researcher fails to comply with its obligations to commercialize that 

invention. The Senate language does not address that large-entity users are already required to 

comply with commercialization obligations and the penalty for non-compliance is not that 

NASA takes Government purpose rights but that NASA takes title to the invention on behalf of 

the U.S. Government. 
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3. The Senate language does not address inventions created by small entities. Under the 

Senate language, small entities would still be subject to Bayh-Dole, and the Government would 

take Government purpose rights. 

4. The Senate language creates ambiguity around the rights of other agencies who may be in 

funding or other relationships with non-NASA researchers and may be entitled to receive rights 

in inventions as a result ofthose other contracts or agreements. The Senate language does not 

address the rights that Federal agencies other than NASA may have in ISS research. 

5. The Senate language does not address rights in data generated as a result of activities 

undertaken on the ISS National Laboratory. NASA would continue to receive Government 

rights in data created by the researcher under that legislation. 

The legislation that NASA supports addresses all ofthe above in a consistent matter and has 

been coordinated with the United Patent and Trademark Office for consistency with current 

intellectual property statutes.