Posts Tagged patent rights
Traditional cost-plus and FAR contracting serves NASA well with traditional contractors when budgets were more flexible. In many areas where the contractor will do the majority of the development and innovation, traditional contracting approaches fail because NASA is a title taking agency. As a title taking agency, anything intellectual property developed under a traditional NASA contract belongs to NASA. Traditionally, this has discouraged innovative companies from working with NASA.
Under NASA’s COTS, CCDev and CCiCap programs, unmanned space freighters and astronaut-carrying space taxis are currently under development by several innovative companies. Substantial development has been done by these companies which are valuable from the perspective of working with NASA, but potentially more valuable in the commercial sector. The use of Space Act Agreements and providing a clear path to returning ownership of intellectual property to the companies doing the development has played a pivotal role in making these programs successful from NASA’s standpoint and from a commercial standpoint. Let’s take a look at the structure of these agreements and how they are being implemented.
Aladdin’s genie had “Phenomenal cosmic powers! Itty-bitty living space!” Space Act Agreements (SAAs) are very similar. They give NASA considerable flexibility to partner with private entities. NASA can start from essentially a blank slate in order to create an agreement aimed toward a specific goal like using the International Space Station as a national laboratory or developing robotic vehicles capable of delivering supplies to low earth orbit. On the other hand, SAAs may not be used in many circumstances. For example, funded SAAs are typically used only where a NASA objective cannot be achieved through the use of traditional contracts. When SAAs are used, The Chiles Act may force NASA to take ownership of any intellectual property developed under the SAA. However, there are ways to avoid the title taking action. Even when NASA does take title to the IP, many SAAs provide a clear path to returning ownership of patents and other IP that is developed under the SAA to the private developer.
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 »