[Federal Register Volume 77, Number 49 (Tuesday, March 13, 2012)]
[Rules and Regulations]
[Pages 14686-14688]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-6047]
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NATIONAL AERONAUTICS AND SPACE ADMINISTRATION
14 CFR Part 1245
[Notice: (12-022)]
RIN 2700-AD63
Claims for Patent and Copyright Infringement
AGENCY: National Aeronautics and Space Administration.
ACTION: Final rule.
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SUMMARY: The following are National Aeronautics and Space
Administration (NASA) regulations relating to requirements for the
filing of claims against NASA where a potential claimant believes NASA
is infringing privately owned rights in patented inventions or
copyrighted works. The requirements for filing an administrative claim
are important since the filing of a claim carries with it certain
rights relating to the applicable statute of limitations for filing
suit against the Government. The regulations set forth guidelines as to
what NASA considers necessary to file a claim for patent or copyright
infringement, and they also provide for written notification to the
claimant upon completion of an investigation by NASA.
DATES: This rule is effective on March 13, 2012.
FOR FURTHER INFORMATION CONTACT: Ms. Helen M. Galus, National
Aeronautics and Space Administration, Office of the General Counsel,
Washington, DC 20546-0001. Telephone 202-358-3437.
SUPPLEMENTARY INFORMATION: On July 26, 2011, the Administrator
published a notice of proposed rulemaking (NPRM) for patent and
copyright infringement claims in the Federal Register (76 FR 44504). No
public comments were received. Accordingly, NASA is issuing this rule
with minor edits and only one change to reduce burden on respondents,
namely, Sec. 1245.202(b)(6), was amended to delete the request for a
brief summary of any defenses or counterclaims made and positions
maintained by opposing parties regarding noninfringement of patent(s),
in prior initiated litigation.
The National Aeronautics and Space Act (51 U.S.C. 20113) authorizes
the Administrator of NASA to settle administrative claims of patent and
copyright infringement by NASA. In addition to that authority to
acquire license rights and interests in patents and copyrights through
settlement of claims, the Administrator has authority to settle claims
of patent and copyright infringement pursuant to 22 U.S.C. 2356, 35
U.S.C. 183 and 286, and 28 U.S.C. 1498(b).
In accordance with these authorities, NASA is issuing regulations
setting forth requirements for the filing of claims against NASA where
a potential claimant believes NASA is infringing privately owned rights
in patented inventions or copyrighted works. The regulations are
designed to inform potential claimants as to what information must be
supplied in their communication to NASA regarding alleged infringement
before NASA will consider a claim to have been filed. The regulations
identify certain commonly received communications which are concerned
with rights in patents and copyrights, but which will not be considered
sufficient to constitute the formal filing of a claim.
The requirements for filing an administrative claim are important
since the filing of a claim carries with it certain rights relating to
the applicable statute of limitations for filing suit against the
Government. In the case of patent infringement claims, Title 35 U.S.C.
286 provides that the six-year statute of limitations for filing suits
for patent infringement may, in the case of claims against the
Government, be tolled up to six years between the date of receipt of a
written claim for compensation by the Government and the date of
mailing by the Government of a notice that the claim has been denied.
Copyright infringement claims can be tolled indefinitely under 28
U.S.C. 1498(b) between the date of receipt of a written claim for
compensation by the Government and the date of mailing by the
Government of a notice that the claim has been denied. The regulations
set forth guidelines as to what NASA considers necessary to file a
claim for patent or copyright infringement.
Section 1245.202(a) provides that in order for a potential
claimant's communication to NASA to formally instigate a claim, it must
specifically allege infringement by NASA, request compensation,
identify a patent or copyright alleged to be infringed, and indicate an
act or item which the potential claimant believes infringes the
claimant's patent or copyright. Section 1245.203(a) advises the
potential claimant where to forward communications regarding the
alleged infringement. Section 1245.202(b) of the regulation identifies
information which, although not necessary in order for a communication
to be considered sufficient to constitute the filing of a claim, is
usually necessary to process a claim and, therefore, if presented
initially with the claim, may serve to expedite the handling of the
claim. The regulations provide for written notification to the claimant
upon completion of an investigation by NASA.
The revisions to this rule are part of NASA's retrospective plan
under E.O. 13563 completed in August 2011. NASA's full plan can be
accessed at: http://www.nasa.gov/pdf/581545main_Final%20Plan%20for%20Retrospective%20Analysis%20of%20Existing%20Regulations.pdf.
Regulatory Analysis Section
Paperwork Reduction Act Statement
This rule does not contain an information collection requirement
subject to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.).
Executive Order 12866 and Executive Order 13563
Executive Orders 13563 and 12866 direct agencies to assess all
costs and benefits of available regulatory alternatives and, if
regulation is necessary, to select regulatory approaches that maximize
net benefits (including potential economic, environmental, public
health and safety effects, distributive impacts, and equity). Executive
Order 13563 emphasizes the importance of quantifying both costs and
benefits, of reducing costs, of harmonizing rules, and of promoting
flexibility. This rule has been designated a ``significant regulatory
action'' although not economically significant, under section 3(f) of
Executive Order 12866. Accordingly, the rule has been reviewed by the
Office of Management and Budget.
Regulatory Flexibility Act
It has been certified that this rule is not subject to the
Regulatory Flexibility Act (5 U.S.C. 601) because it would not, if
promulgated, have a significant economic impact on a substantial number
of small entities. The rule sets forth policies and procedures for the
filing and disposition of claims of infringement of privately owned
rights in patented inventions or copyrighted works asserted against
NASA. These policies and procedures would not have a significant
economic impact on a
[[Page 14687]]
substantial number of small entities as NASA typically has less than 10
of such claims asserted against it annually.
List of Subjects in 14 CFR Part 1245
Claims, Inventions, Patent and copyright infringement..
For the reasons stated in the preamble, NASA amends 14 CFR part
1245, by adding Subpart 2 to read as follows:
PART 1245--PATENTS AND OTHER INTELLECTUAL PROPERTY RIGHTS
Subpart 2--Claims for Patent and Copyright Infringement
Sec.
1245.200 Purpose.
1245.201 Objectives.
1245.202 Contents of communication initiating claim.
1245.203 Incomplete notice of infringement.
1245.204 Indirect notice of infringement.
1245.205 Processing of administrative claims.
Subpart 2--Claims for Patent and Copyright Infringement
Authority: 51 U.S.C. 20112-20113; 22 U.S.C. 2356; 35 U.S.C.
181-188 and 286; and 28 U.S.C. 1498.
Sec. 1245.200 Purpose.
The purpose of this subpart is to set forth policies and procedures
for the filing and disposition of claims of infringement of privately
owned rights in patented inventions or copyrighted works asserted
against NASA.
Sec. 1245.201 Objectives.
Whenever a claim of infringement of privately owned rights in
patented inventions or copyrighted works is asserted against NASA, all
necessary steps shall be taken to investigate and to administratively
settle, deny, or otherwise dispose of such claim prior to suit against
the United States. The General Counsel, or designee, is authorized to
investigate, settle, deny, or otherwise dispose of all claims of patent
and copyright infringement, pursuant to the above-cited statutory
authority.
Sec. 1245.202 Contents of communication initiating claim.
(a) Requirements for claim. A patent or copyright infringement
claim for compensation, asserted against the United States as
represented by NASA under any of the applicable statutes cited above,
must be actually communicated to and received by an organization,
office, or within a NASA Center. Claims must be in writing and must
include the following:
(1) An allegation of infringement.
(2) A request for compensation, either expressed or implied.
(3) A citation to the patent(s) or copyright(s) alleged to be
infringed.
(4) In the case of a patent infringement claim, a sufficient
designation to permit identification of the accused subject matter
(e.g. article(s) or process(es)) alleged to infringe the patent(s),
giving the commercial designation, if known to the claimant, or, in the
case of a copyright infringement claim, the accused subject matter
(e.g. act(s) or work(s)) alleged to infringe the copyright.
(5) In the case of a patent infringement claim, a designation of at
least one claim of each patent alleged to be infringed or, in the case
of a copyright infringement claim, a copy of each work alleged to be
infringed.
(6) As an alternative to paragraphs (a)(4) and (5) of this section,
certification that the claimant has made a bona fide attempt to
determine the accused subject matter, which is alleged to infringe the
patent(s), or the accused subject matter alleged to infringe the
copyright(s), but was unable to do so, giving reasons and stating a
reasonable basis for the claimant's belief that the patent(s) or
copyright(s) is being infringed.
(b) Additional information for patent infringement claims. In
addition to the information listed in paragraph (a) of this section,
the following material and information generally are necessary in the
course of processing a claim of patent infringement. Claimants are
encouraged to furnish this information at the time of filing a claim to
permit rapid processing and resolution of the claim.
(1) A copy of the asserted patent(s) and identification of all
claims of the patent(s) alleged to be infringed.
(2) Identification of all procurements known to the claimants that
involve the accused item(s) or process(es), including the identity of
the vendor(s) or contractor(s) and the Government acquisition activity
or activities.
(3) A detailed identification and description of the accused
article(s) or process(es) used or acquired by the Government,
particularly where the article(s) or process(es) relate to a
component(s) or subcomponent(s) of an item acquired, and an element-by-
element comparison of representative claim(s) with the accused
article(s) or process(es). If available, the identification and
description should include documentation and drawings to illustrate the
accused article(s) or process(es) in sufficient detail to enable
determining whether the claim(s) of the asserted patent(s) read on the
accused article(s) or process(es).
(4) Names and addresses of all past and present licensees under the
patent(s) and copies of all license agreements and releases involving
the patent(s). In addition, an identification of all assignees of the
patent(s).
(5) A list of all persons to whom notices of infringement have been
sent, including all departments and agencies of the Government, and a
statement of the status or ultimate disposition of each.
(6) A brief description of all litigation involving the patent(s)
which was initiated at any time prior to the claim being filed and
their present status. This includes any defenses or counterclaims made
and positions maintained by opposing parties regarding invalidity of
the patent(s).
(7) A description of Government employment or military service, if
any, by the inventor(s) or patent owner(s) including a statement from
the inventor(s) or patent owner(s) certifying whether the invention
claimed in the patents was conceived or reduced to practice, in part or
in whole, during Government employment and whether such inventor(s) or
owner(s) occupied any position from which such inventor(s) or owner(s)
was capable of ordering, influencing, or inducing use of the invention
by the Government.
(8) A list of all contract(s) between the Government and
inventor(s), patent owner(s), or anyone in privity with the patent
owner(s), under which work relating to the patented subject matter was
performed.
(9) Evidence of title to the asserted patent(s) or other right to
make the claim.
(10) A copy of the United States Patent and Trademark Office
(USPTO) file history of each patent, if it is available to the
claimant. Indicate whether the patent has been the subject of any
interference proceedings, certification of correction request,
reexamination, or reissue proceedings at the USPTO, or lapsed for
failure to pay any maintenance fee. In addition, the status of all
corresponding foreign patents and patent applications and full copies
of the same.
(11) Pertinent prior art known to the claimant not contained in the
USPTO file, for example, publications and foreign prior art. In
addition to the foregoing, if claimant can provide a statement that the
investigation may be limited to the specifically identified accused
article(s) or process(es) or to a specific acquisition (e.g. identified
contract(s)), it may speed disposition of the claim. Claimants are also
[[Page 14688]]
encouraged to provide information on any ancillary matters that may
have a bearing on validity or infringement.
(c) Denial for refusal to provide information. In the course of
investigating a claim, it may become necessary for NASA to request
information in the control and custody of the claimant that is relevant
to the disposition of the claim. Failure of the claimant to respond to
a request for such information shall be sufficient reason alone for
denying a claim.
Sec. 1245.203 Incomplete notice of infringement.
(a) If a communication alleging patent infringement or copyright
infringement is received that does not meet the requirements set forth
in Sec. 1245.202(a), the sender shall be advised in writing by the
Agency Counsel for Intellectual Property:
(1) That the claim for infringement has not been satisfactorily
presented; and
(2) Of the elements necessary to establish a claim.
(b) A communication, in which no infringement is alleged in
accordance with Sec. 1245.202(a), such as a mere proffer of a license,
shall not be considered a claim for infringement.
Sec. 1245.204 Indirect notice of infringement.
A communication by a patent or copyright owner to addressees other
than those specified in Sec. 1245.202(a), such as NASA contractors,
including contractors operating Government-owned facilities, alleging
that acts of infringement have occurred in the performance of a
Government contract, grant, or other arrangement, shall not be
considered a claim within the meaning of Sec. 1245.202(a) until such
communication meets the requirements specified therein.
Sec. 1245.205 Processing of administrative claims.
(a) Filing and forwarding of claims. All communications regarding
claims should be addressed to: Agency Counsel for Intellectual
Property, Office of the General Counsel, National Aeronautics and Space
Administration, Washington, DC 20546-0001. If any communication
relating to a claim or possible claim of patent or copyright
infringement is received by an agency, organization, office, or field
installation within NASA, it shall be forwarded to the Agency Counsel
for Intellectual Property.
(b) Disposition and notification. The General Counsel, or designee,
shall investigate and administratively settle, deny, or otherwise
dispose of each claim. When a claim is denied, the Agency shall so
notify the claimant or the claimant's authorized representative and
provide the claimant with the reasons for denying the claim. Disclosure
of information shall be subject to applicable statutes, regulations,
and directives pertaining to security, access to official records, and
the rights of others.
(c) Termination of claims. If, while an administrative claim for
patent or copyright infringement is pending against NASA, the claimant
brings suit for patent or copyright infringement against the United
States in the Court of Federal Claims based on the same facts or
transactions as the administrative claim, the administrative claim
shall thereupon be automatically dismissed, with no further action
being required of NASA.
Charles F. Bolden, Jr.,
Administrator.
[FR Doc. 2012-6047 Filed 3-12-12; 8:45 am]
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