How to License a Marshall Patent or Patent Application
NASA licenses pending patent applications and existing patents to private industry in compliance with 37 CFR, Section 404 (link opens new browser window) entitled, "Licensing of Government-Owned Inventions.”
Companies interested in licensing one or more of Marshall’s innovative technologies are encouraged to contact Sammy Nabors at (256-544-5226) or by e-mail at firstname.lastname@example.org to discuss their licensing needs and objectives.
The license application process takes place in two stages:
During the first stage, you, as the prospective licensee, submit a license application and business terms and an income pro forma to the Marshall licensing manager, following the guidelines provided. You and licensing manager then negotiate and agree to the business terms. Marshall negotiates each license individually and contains terms such as license duration, up-front fees, ongoing royalties, and level of exclusivity.
Licenses may be exclusive, non-exclusive, or partially exclusive within a particular field of use or geographic area. Requests for exclusive and partially exclusive licenses must go through an additional step prior to granting the license. For these licenses, Marshall must place a notice of the prospective license, identifying the invention and the prospective licensee, in the Federal Register, and providing an opportunity for other prospects to file written objections within a 15-day period. Any objections are taken into consideration by the Director of Patent Licensing in making the final recommendation to the NASA Associate General Counsel for Intellectual Property.
During the second stage of the license application process, you submit a commercialization plan and milestones, following the guidelines provided. The commercialization plan outlines your product development and marketing plans. Append the final agreed upon terms to your commercialization plan before submitting the plan to the Marshall licensing manager.
Once you have submitted the commercialization plan and you and Marshall have agreed to the final business terms, the license is written, reviewed, and executed. Both Parts I and II of the license application are appended to the final license.
The Marshall Technology Transfer Office will maintain the license application, business terms, commercialization plan, and license itself in strict confidence. None of this information is subject to disclosure under the Freedom of Information Act.
After the license is granted, the Marshall Technology Transfer Office monitors the licensee’s sales of products and services incorporating the licensed technologies. Marshall may write success stories and, upon approval by the licensee, these may be published on the Marshall Web site, in NASA Spinoff magazine or other publications and on various NASA Web sites.
Government inventors are entitled to a share of the royalties generated from licensing. The remaining fees come to the Marshall Technology Transfer Office and are used to fund additional technology development projects at Marshall.
For additional licensing assistance, please contact Sammy Nabors at (256-544-5226) or by e-mail at email@example.com.