05-15665. NASA Grant and Cooperative Agreement Handbook-Intellectual Property Required Reports and Publications

AGENCY:

National Aeronautics and Space Administration (NASA).

ACTION:

Final rule.

SUMMARY:

This final rule amends the NASA Grant and Cooperative Agreement Handbook (Handbook) to clarify intellectual property provisions. Provision § 1260.28, “Patent rights” is amended to refer to NASA contractors as “Contractors” and not “Recipients”. Provision § 1260.30, “Rights in data” is amended to clarify the definition of the word “data”. Provision § 1260.75, “Summary of report requirements”, is amended to correct the cross-references to the intellectual property provisions of the Handbook. These changes are administrative in nature. No change is being made to the actual reporting requirements.

DATES:

Effective August 9, 2005.

FOR FURTHER INFORMATION CONTACT:

Monique Sullivan, NASA Headquarters, Code HK, Washington, DC, (703-553-2560) e-mail: [e-mail].

SUPPLEMENTARY INFORMATION:

A. Background

This final rule amends the NASA Grant and Cooperative Agreement Handbook (Handbook) to make three clarifications to intellectual property provisions: (1) Provision § 1260.28, “Patent rights” currently refers to NASA Contractors as “Recipients”. This final rule amends § 1260.28 to refer to NASA contractors as “Contractors” and not “Recipients”; (2) Paragraph (a)(1) of Provision § 1260.30, “Rights in data” is amended to correct previous revisions of the definition of the word “data” to include copyrightable work in which the recipient asserts copyright, or for which copyright ownership was purchased. The words “created under the grant or cooperative agreement” are added to the Provision for clarification; and (3) Intellectual Property provisions are reflected in Provisions § 1260.28, § 1260.30, § 1260.50, § 1260.57, and § 1260.59 of the Handbook. Provision § 1260.75 of the Handbook summarizes the reporting responsibilities of the recipient as are stated in the intellectual property provisions. This final rule amends § 1260.75 to correct the cross-references between the intellectual property provisions and the reporting requirements of § 1260.75.

This is not a significant regulatory action and, therefore, was not subject to review under section 6(b) of Executive Order 12866, Regulatory Planning and Review, dated September 30, 1993. This final rule is not a major rule under 5 U.S.C. 804.

B. Regulatory Flexibility Act

NASA certifies that this final rule will not have a significant economic impact on a substantial number of small entities within the meaning of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., because the changes are for clarification only and do not impose additional requirements.

C. Paperwork Reduction Act

The Paperwork Reduction Act does not apply because this final rule does not impose any new recordkeeping or information collection requirements, or collection of information from offerors, contractors, or members of the public that require the approval of the Office of Management and Budget under 44 U.S.C. 3501, et seq.

List of Subjects in 14 CFR Part 1260

• Grant programs, science and technology

Tom Luedtke,

Assistant Administrator for Procurement.

Accordingly, 14 CFR part 1260 is amended as follows:

PART 1260—GRANTS AND COOPERATIVE AGREEMENTS

1. The authority citation for 14 CFR 1260 continues to read as follows:

Authority: 42 U.S.C. 2473(c)(1), Pub. L. 97-258, 96 Stat. 1003 (31 U.S.C. 6301, et seq.)

2. Amend § 1260.28 by revising the date of the provision to read “August 2005”, and revising paragraph (h) to read as follows:

§ 1260.28

Patent rights.

* * * * *

(h) In the event NASA contractors are tasked to perform work in support of specified activities under a cooperative agreement and inventions are made by Contractor employees, the Contractor will normally retain title to its employee inventions in accordance with 35 U.S.C. 202, 14 CFR Part 1245, and Executive Order 12591. In the event the Contractor decides not to pursue rights to title in any such invention and NASA obtains title to such inventions, NASA will use reasonable efforts to report such inventions and, upon timely request, will use reasonable efforts to grant the Recipient an exclusive, or partially exclusive, revocable, royalty-bearing license, subject to the retention of a royalty-free right of the Government to practice or have practiced the invention by or on behalf of the Government.

3. Amend § 1260.30 by revising the date of the provision to read “August 2005”, and revising paragraph (a)(1) to read as follows:

§ 1260.30

Rights in data.

* * * * *

(a) Fully Funded Efforts.

(1) “Data” means recorded information, regardless of form, the media on which it may be recorded, or the method of recording, created under the grant or cooperative agreement. The term includes, but is not limited to, data of a scientific or technical nature, and any copyrightable work, including computer software and documentation thereof, in which the recipient asserts copyright, or for which copyright ownership was purchased, under the grant or cooperative agreement.

* * * * *

4. Amend § 1260.75 by—

(a) Removing paragraphs (b)(5) and (b)(11);

(b) Redesignating paragraphs (b)(6) through (b)(12) as (b)(5) through (b)(10);

(c) Revising the newly designated paragraphs (b)(5) through (b)(10); and

(d) Revising paragraph (c)(1).

The revised paragraphs are to read as follows:

§ 1260.75

Summary of report requirements.

* * * * *

(b) * * *

(5) A Disclosure of Subject Invention or a Disclosure of Reportable Item is required, as applicable, in accordance with § 1260.28 for all grants and cooperative agreements (except Education and Training Grants) with educational institutions, nonprofit organizations and small businesses, and § 1260.57 for all grants and cooperative agreements (except Education and Training Grants) with large businesses, respectively. The reporting of a subject invention under § 1260.28 shall be made within two months after the inventor discloses it to the recipient. The reporting of a reportable item under § 1260.57 shall be made within two months after the inventor discloses it to the recipient or, if earlier, within six months after the recipient becomes aware that a reportable item has been made. Disclosures of subject inventions and reportable items will be reported using either the electronic or paper version of NASA Form 1679, “Disclosure of Invention and New Technology (Including Software)”. Electronic disclosures may be submitted at the electronic New Technology Reporting web site (eNTRe) at: http://invention.nasa.gov.

(6) An Election of Title to a Subject Invention is required for all grants and cooperative agreements (except Education and Training Grants), as applicable, in accordance with § 1260.28. The notice is due within two years of disclosure of a subject invention being elected, except in any case where publication, on sale or public use of the subject invention being elected has initiated the one year statutory period wherein valid patent protection can still be obtained in the United Stated, notice is due at least 60 days prior to the end of the statutory period.

(7) An Interim Summary Report listing all subject inventions or reportable items required to be disclosed during the preceding year is required for all grants and cooperative agreements (except Education and Training Grants), in accordance with § 1260.28 or § 1260.57, respectively. The listing is due annually. Interim Summary Reports may be submitted electronically on the electronic New Technology Reporting web site (eNTRe) at: http://invention.nasa.gov.

(8) A Notification of Decision to Forego Patent Protection is required for all grants and cooperative agreements (except Education and Training Grants), as applicable, in accordance with § 1260.28. The notification is due not less than thirty days before the expiration of the response period required by the relevant patent office.

(9) A Utilization of Subject Invention Report is required for all grants and cooperative agreements (except Education and Training Grants) where the recipient has elected title to a subject invention in accordance with § 1260.28. The report is due annually from the election date.

(10) An Annual NASA Form 1018, NASA Property in the Custody of Contractors, is required for all grants and cooperative agreements with commercial organizations. The reports are due October 31st of each year. Negative reports (i.e. no reportable property) are required.

(c) * * *

(1) A Final Summary Report listing all subject inventions or reportable items, or certifying that there are none, is required for all grants and cooperative agreements (except Education and Training Grants), in accordance with § 1260.28 or § 1260.57, respectively. The report is due within 90 days after the expiration of the grant or cooperative agreement. The Final Summary Report may be submitted electronically on the electronic New Technology Reporting web site (eNTRe) at: http://invention.nasa.gov.

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