t NASA Langley Research Center (LaRC), we're committed to giving you the best possible access to newer and more effective technologies. Our goal is to encourage and support the use of many LaRC-developed technologies in industrial and academic communities through licensing.
Since we want to facilitate doing business with us, we've put together a variety of information and documents to help explain the process and some of the possibilities. If you still have questions, or need assistance, please don't hesitate to contact us.
+ License vs. Partnership Agreements
+ License Agreement Steps and Forms
+ Partnership Agreement Steps and Forms
+ Frequently Asked Questions
|License vs. Partnership Agreements|
There are two types of working relationships with LaRC and/or its technology: licenses and partnerships.LaRC could help co-develop a technology to benefit product and/or to address a NASA need
LaRC could participate in a shared-resource project that supports and stimulates advanced research and technology developments
LaRC facilities could be made available for individual and/or cooperative research
A license agreement grants exclusive, partially exclusive, or nonexclusive rights to use a LaRC technology. Additional support to facilitate the transfer of technology can also be provided by LaRC-this support would be granted through a partnership agreement.
In some cases, LaRC will participate actively in the technology transfer process. For example:
Partnerships might be formalized as a Space Act Agreement (SAA), a Cooperative Research and Development Agreement (CRADA), or a Cooperative Agreement. Regardless of the agreement vehicle, the partnering process is the same.
|License Agreement Steps and Forms|
NASA owns over a thousand patents and patent applications that protect inventions in hundreds of subject matter categories.
+ Legal Requirements
+ How to Apply for a Patent License
NASA has the authority to grant licenses on its domestic and foreign patents and patent applications pursuant to 35 USC §§207-209. NASA follows the regulations set forth in 37 CFR §404
All NASA licenses are individually negotiated with the prospective licensee, and each license contains terms concerning technology transfer (practical application), license duration, royalties, and periodic reporting.
NASA patent licenses may be exclusive, partially exclusive, or nonexclusive.
How to Apply for a Patent License
The license application process takes place in two stages to minimize the forms required and expedite the negotiation process. Note that the forms and processes are the same for both patent and copyright license interest. The Intellectual Property Manager will incorporate all final agreement information into a formal license for signature by both parties.
The Intellectual Property Manager uses the information listed below to assist in the license negotiation process. All information should be submitted to:
NASA Langley Research Center
Strategic Relationships Office (SRO)
ATTN: Kathy A. Dezern, Mail Stop 218
Hampton, VA 23681
Provide all information requested in the License Application
- Patent application serial number, patent number, and/or NASA case number of the invention
- Title of the invention
- Patent issue date (if applicable)
- Name of and contact information for the person, company, or organization requesting license
- Type of license being applied for (i.e., exclusive, partially exclusive, or nonexclusive) and any desired limitations (e.g., field of use, geographic)a
- Initial offer for royalty rate schedule, upfront fee, yearly minimums, and milestonesb
a. For exclusive and partially exclusive licenses, a notice of a prospective license (identifying the invention and the prospective licensee) is posted in the Federal Register, providing the opportunity for written objections to be filed within a 15-day period.
b. The negotiation of the license fee is an integral part of the entire licensing process and is determined in light of a variety of considerations.
Once the Term Sheet is reviewed and considered to match NASA interests, a Development/Marketing Plan
must be submitted. This document provides a detailed description of the applicant's plan for the invention:
- Anticipated investment capital and other resources necessary to bring the invention to practical application.
- Capability and intention to fulfill this plan, including information on manufacturing, marketing, financial, and technical resources.
- A timeline of key steps or milestones required to bring the invention to practical application.
- A financial and/or annual report.
- Attachment A: Pro-forma Income Statement, specifically related to the products and services using the subject NASA technology.
- Attachment B: The previously prepared Term Sheet.
- Any other information the applicant believes will support the application.
- A recent balance sheet and income statement also are required.
|Partnership Agreement Steps and Forms|
As indicated above, SAAs, CRADAs, and Cooperative Agreements are vehicles used to partner with LaRC researchers to work cooperatively to develop a product based on LaRC technology and/or to solve NASA technological needs. Partnerships also are formed in making LaRC facilities available to outside users.
Partnerships can be either non-reimbursable or partially/fully reimbursable.
+ How to Apply for a Partnership Agreement
How to Apply for a Partnership Agreement
The partnership application process takes place in two stages to minimize the forms required and expedite the negotiation process. The New Business Team Lead will incorporate all final agreement information into a formal partnership agreement for signature by both parties.
All information should be submitted to:
NASA Langley Research Center
Innovative Partnerships Office (IPO)
ATTN: Kathy Dezern,
Mail Stop 218
Hampton, VA 23681
Provide all information requested in the Partnership Application
- Title of project
- Name of researcher(s), NASA projects, and/or lab facilities desired in partnership
- Name and address of the person, company, or organization
- Where applicable, give citizenship, place of incorporation, and the name of the parent corporation
- Description of the nature and type of applicant's business.
- If applicable, statement as to whether the applicant is a small business, as defined in 37 CFR §404.3(c).
- Description of why NASA is an essential component of the partnership (e.g., unique facilities or capabilities, infusion into NASA program, know-how for NASA-based technology)
- Description of benefit provided to NASA as a result of the collaboration
- Statement of work with milestones and resource requirements (including reimbursement offer if applicable)
Once the Partnership Application is reviewed and considered to match NASA interests, the appropriate agreement vehicle (SAA, CRADA, or Cooperative Agreement) will be determined. Additional information may be requested, such as a Development/Marketing Plan
, documentation of cost-sharing valuation, or a more detailed work plan.
|Frequently Asked Questions about Working with LaRC|
This section answers some of the basic questions about technology transfer, patent licensing, and privacy issues. Feel free to contact us
for more information.
+ The Technology Transfer and Partnership Program
+ Available Technologies
+ Partnership Agreements
+ Patent Licenses
+ Privacy Issues
The Technology Transfer and Partnership Program
Why is it important for LaRC to transfer its technology?
The U.S. Congress and the NASA Administrator are putting great emphasis on transferring NASA-developed technology and expertise to U.S. industry to increase U.S. industrial competitiveness, create jobs, and improve the balance of trade. In addition, there is an emphasis on bringing technologies and expertise into NASA that can facilitate achievement of space program goals.
Will LaRC assist an organization in solving its technical problems or improving its products?
If LaRC has technology available that would be useful, the Strategic Relationships Office (SRO) would be pleased to discuss its possible applications. As one option, a joint-development effort could be conducted if NASA has interest in the research and if it has unique facilities and capabilities to contribute.
How do I find out what technologies and facilities LaRC has available?
In addition to the various print publications available, this Web site has an entire section devoted to LaRC’s technologies
Whom do I contact to receive further information on a particular LaRC technology?
Send email to LARC-DLemail@example.com
What's the difference between an SAA, a CRADA, and a Cooperative Agreement?
SAAs and CRADAs are essentially the same. Authorized by the National Aeronautics and Space Act of 1958 (as amended), SAAs are flexible arrangements that allow NASA to work cooperatively with industry and academia. The Technology Innovation Act of 1980 authorizes other government research organizations, which did not have similar provisions in their charters, to use CRADAs. Cooperative Agreements with profit-making firms allow LaRC to enter into a cost/resource-sharing arrangement for research and technology development
Do I need to know what kind of partnership agreement I want?
No. It is not necessary to specify the type of partnership desired. In fact, LaRC will determine which agreement vehicle is best based upon the specifics of the request.
Can collaborations begin before the partnership agreement is officially signed?
Certain activities (e.g., non-disclosing technical discussions) can occur prior to signing the agreement.
What can LaRC contribute and what can my organization contribute (i.e., money, workforce, materials, facilities, and services) under a partnership agreement?
LaRC can contribute nearly all of these items; however, it cannot transfer appropriated funds to the partner. The partner can contribute all of these items. The contributions of each party are negotiated by LaRC and the partner.
Who receives patent rights to technologies developed under a partnership agreement?
Industry or academia may retain the rights if the technology is invented solely by its employees. LaRC may retain the rights if the technology is invented solely by LaRC employees. A jointly owned patent will result if employees of each party invent the item. In any event, patent rights will be spelled out in the agreement or negotiated in accordance with applicable law.
Can industry, academia, or individuals use LaRC facilities? Is there a charge for the usage?
LaRC facilities can be used on a space-available basis. Should the research to be conducted be of interest to NASA, LaRC may cover some of the expenses; however, the results could eventually be publicly released by NASA. (See Privacy Issues
Will LaRC grant exclusivity for a particular technology?
An organization may apply for an exclusive, an exclusive field-of-use, or a nonexclusive license. Exclusive rights to a technology can be licensed depending on how many parties are interested in the technology and depending on the license application. Other factors taken into account are the technology transfer plan and the organization's demonstrated wherewithal to carry it out. (For more information, see License Agreement Steps and Forms
What happens if another organization is interested in the same technology that I want to license?
As stated earlier, there are a number of possible license agreements: nonexclusive, exclusive, co-exclusive, exclusive in a particular field of use or in a geographic region, and various combinations of these. LaRC requires interested parties to submit a technology transfer plan for the particular technology. LaRC uses this plan to determine which licensing arrangement will be best for everyone involved.
How long does the patent licensing process take? How much will it cost me in upfront money?
The process generally takes about 3 to 4 months after receipt of the Patent License Request and Development/Marketing Plan for a nonexclusive license. Exclusive licenses take longer and are highly dependent on the complexity of the application. The time frame for exclusive licenses includes a mandatory waiting period of 15 days, during which time a member of the public can file a written objection. Upfront fees generally are set according to the value of the technology and are negotiable.
What percentage in royalties does LaRC require under a license agreement?
The percentage in royalties to be paid to LaRC under a license agreement is negotiable depending on a number of factors, including the type of license issued (i.e., exclusive or nonexclusive). It is likely to be between 2% and 8% of sales.
Are discussions with LaRC personnel kept confidential? What about the Freedom of Information Act (FOIA)?
LaRC personnel are obligated by law to keep all proprietary information confidential if identified as such. Company trade secret information revealed to LaRC in the process of developing, negotiating, and signing a partnership agreement is exempt from FOIA.
Must the data resulting from a partnership with LaRC be made public?
Partnership agreements can contain their own nondisclosure and IP ownership clauses based on what is appropriate for each arrangement.
Must the data resulting from the work in a LaRC facility be made public?
If the user pays the total cost associated with use of the facility, the data will not be made public unless otherwise agreed to. However, if the research to be conducted is of interest to NASA and LaRC covers some of the expenses, then the results could eventually be publicly released by NASA.