Posts Tagged FAR
The Worldwide Rights are Not Enough
Posted by Andrew Rush in Patents, Space Law on April 18, 2012
"I'm sorry, Dave, I'm afraid I can't do that. Your license only applies on Earth, not outer space."
Pierce Brosnan declared the plot of his 1999 James Bond film The World is Not Enough convoluted and mystifying, a suitable description of Cold War villain-based movies more than a decade after the Cold War had effectively expired from hypothermia. At first glance, “convoluted and mystifying” is also an apt description for licensing deals. The beauty of a license is also its curse. You can make the license look almost any way you want, granting virtually unlimited rights or giving only the slimmest of rights to use the covered invention in Palatka, Florida on the 3rd Tuesday of every month. It is extremely important to consider each and every word in a license agreement in terms of how the technology involved will actually be used. For example, consider the following language that might appear in an R&D contract for the development of a new type of RCS thruster for satellites: the Satellite Manufacturer “shall retain a nonexclusive royalty-free license [to the developed technology] throughout the world.” What good does a merely worldwide license for a new RCS thruster do a satellite manufacturer? They need a license that actually applies to where they will use the developed technology: outer space. Read the rest of this entry »
Patent Rights and Obligations under SBIR Grants, Part 2 of 2
Posted by Andrew Rush in Patents on April 12, 2012
In 2011, NASA used the SBIR program to funnel over $150 million to small business to carry out research and development. Phase I grants of up to $150,000, Phase II grants of up to $1,000,000, and follow on Phase III grants are available to qualified companies. Since 1982, nearly 18,000 companies have participated in the SBIR program and over 67,500 patents have issued on SBIR-funded technologies. SBIR grants represent a great way for small aerospace companies to receive research and development dollars. Many of the technologies NASA wishes to develop through SBIR grants are directly in line with or closely related to the development paths of commercial spaceflight companies. Because these technologies are closely related to technologies small commercial spaceflight and space services companies wish to develop, ideally companies participating in the SBIR program will retain patent rights or a license to utilize the technologies they have developed under an SBIR grant. Luckily, NASA’s SBIR contracts include the contract provision FAR 52.227-11, which provides a clear path for retaining IP rights in SBIR funded technologies. Read the rest of this entry »
Patent Rights and Obligations under SBIR Grants, Part 1 of 2
Posted by Andrew Rush in Patents on April 11, 2012
ORBITEC developed the vortex combustion technology depicted above using SBIR funds. Image credit: NASA.
In 1982, the Small Business Innovative Research (SBIR) grant program was launched. Since then, small technology companies have received more than $26 billion to develop and commercialize new technologies. The SBIR program is designed to spur technological innovation, satisfy Federal R&D needs, and increase commercialization of technologies derived from Federal R&D. Eleven Federal agencies, including DARPA, NASA, and the DoD, participate in the SBIR program. These agencies must spend at least a portion of their annual R&D budgets on SBIR programs.
In order to qualify as a small business, the US company must have fewer than 500 employees and meet a few other criteria. Qualified small businesses are given money in phases to develop new technologies based on their proposed solution to R&D prompts issued by participating agencies. This research and development generally leads to the development of new technologies, some of which are patentable. To find out who owns the patent rights, and what obligations a small business has under SBIR grants, Read the rest of this entry »
