Legal Requirements
How to Find Information on NASA Patents
How to Apply for a License
How to Prepare a Commercialization Plan
Evaluation Criteria for Commercialization Plans
Processing of Licensing Applications

NASA owns over 1,000 patents and patent applications that protect inventions in hundreds of subject matter categories. NASA makes these inventions available to industry through its Patent Licensing Program, which is administered by the NASA Office of General Counsel, NASA Headquarters, Washington, D.C.

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. NASA has implemented this authority by means of the NASA Patent Licensing Regulations, 14§CFR 1245.200 et seq.

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

How to Find Information on NASA Patents

Information on NASA patents and patent applications can be found from:

• Patent and technical literature searches
  
• NASA Tech Briefs
  
• NASA Regional Technology Transfer Centers
  
• NASA Field Center Technology Transfer/Commercialization Offices ( MSFC patents are listed online)
• NASA Field Center Patent Counsel
  
• NASA Headquarters Office of General Counsel
  
• NASA TechTracS
  
  

How to Apply for a Patent License

If you wish to apply for a patent license for a particular MSFC technology, send an application to MSFC's Technology Transfer Program. The application, at a minimum, should contain the following information:

A. The identity of the particular invention--either the patent application serial number, the patent number, or the NASA case number. When possible, include the title of the invention and patent issue date.

B. The type of license being applied for (i.e., exclusive, partially exclusive, or nonexclusive) and any desired limitations (e.g., field of use, geographic).

C. The name and address of the person, company, or organization applying for the license. Where applicable, include citizenship, place of incorporation, and name of the patent corporation.

D. The name, address, and telephone number of the applicant's representative who has authority to conduct licensing negotiations.

E. A description of the nature and type of applicant's business. This description should include any products or services that the applicant has successfully commercialized and the approximate number of people employed by the applicant.

F. An explanation of how the applicant became aware of the particular invention.

G. A statement as to whether the applicant is a small business, which is generally defined as an independently owned and operated business with less than 500 employees.

H. A detailed commercialization plan for developing and/or marketing the invention.

I. The identity of licenses previously granted to the applicant under any federally owned inventions.

J. A statement describing (to the applicant's best knowledge) the extent to which the invention is being practiced by private industry, government, or both and the extent to which the invention is commercially available.

K. Any other information the applicant believes will support a determination to grant the requested license to the applicant.

How to Prepare a Commercialization Plan

All patent/copyright license applications must be accompanied by a commercialization plan. This plan must include the information listed below. All technical and business information will be kept confidential if marked as such.

1. The nature of the company's business, identifying products and services that have been successfully commercialized in the past 5 years or are proposed for commercialization.
2. A copy of the company's financial report (e.g., Dun & Bradstreet report) and/or the latest annual report.
3. A statement indicating whether your company qualifies as a small business firm as defined in 37 CFR 404.3(c).
4. An overview of how the company plans to use the licensed technology, including any products that will be developed and their potential customers, if applicable.
5. If a product is to be developed, include a 3- to 5-year pro forma income statement, including number of units per year, average price per unit, direct and indirect expenditure estimates, and other relevant data.
6. A chart showing what milestones need to be achieved and when.
7. A statement of the nature and amount of anticipated manpower, money, and other company resources believed to be required.
8. A statement of the field(s) of use in which your company intends to apply the technology.
9. The identified role of MSFC. Will it be as technical consultant or will NASA research, design, or other engineering be required? Define anticipated manpower requirements.
10. Proposed royalty rates, including up-front fees and yearly minimums.
    

Evaluation Criteria for Commercialization Plans

MSFC considers a variety of factors when evaluating a company's business proposal, whether it is a license application or a commercialization plan.