A license grants the right to use, make, and sell a technology owned by another.  The objective of licensing is to use the patent system to promote the use of inventions arising from federally supported research and development.  There are three types of licenses:  non-exclusive defined in 37 CFR § 404.6; exclusive; and partially exclusive defined in 37 CFR § 404.7.  The type of license sought depends on many factors including field of use, commercialization plan, and geographical field of use.

In general, GRC obtains about 1 to 3 licenses per year.  A common practice and something to consider is to bundle several patents into one license.  Licensing discussions should be relayed to the TTPO so we can provide assistance and guidance both to the inventor and potential licensee.  Finally, royalty payments to inventors at GRC are distributed by GRC.

Licensing Process

1. Agency notifies public via Federal Register of availability of technologies for licensing.
2. Application submitted pursuant to 37 CFR § 404.8.
3. Application reviewed for compliance by TTPO.
4. Corrections and/or revisions made by applicant.
5. For exclusive licenses:  Federal register notice published for 15 days providing opportunity for written objections.
6. Negotiation of terms, fees, and royalty schedule.
7. License drafted based on negotiations.
8. Commercialization Plan becomes addendum to license.
9. Sent to applicant for their execution.
10. Applicant returns signed license to GRC Chief Counsel Office.
11. GRC Patent Counsel then provides a written recommendation to HQ Associate General Counsel to grant or deny a license.
12. For exclusive licenses:  GRC Patent Counsel includes a statutory determination based on factors in 35 USC 209 to HQ Associate General Counsel.
13. NASA HQ General Counsel reviews and approves the package.
14. GRC Chief Counsel Office arranges for signature on the license and makes distribution to applicant of executed license.

Primary contacts

› :  (216) 433-2772
› :  (216) 433-5754