NASA Patent Waivers, Licensing & IP Rights — Space Act Inventions

When a NASA contractor — a company like Boeing, Lockheed Martin, SpaceX, or a university receiving a NASA grant — makes an invention while working under a NASA contract, the National Aeronautics and Space Act generally vests ownership of that invention in the United States government (as represented by NASA), not in the contractor. This is the default for NASA contracts, unlike the Bayh-Dole Act (which gives universities and small businesses automatic title to inventions made under most federal grants). NASA's patent waiver regulations — at 14 CFR Part 1245 — establish the process by which contractors can petition NASA to waive the government's ownership rights back to the contractor, allowing the contractor to own and commercialize the invention privately while granting NASA a royalty-free license for government use.

Legal Authority

• 51 U.S.C. § 20135 — National Aeronautics and Space Act § 305; establishes the default rule that inventions made under NASA contracts vest in the United States; grants NASA authority to waive government patent rights to contractors; requires NASA to retain a royalty-free government license for any waived invention
• 51 U.S.C. § 20136 — Authorizes NASA to grant exclusive and non-exclusive licenses to patented NASA inventions; establishes terms for licensing NASA-owned technology to private parties
• 35 U.S.C. §§ 200–212 — Bayh-Dole Act; the general federal technology transfer law (does NOT apply to NASA contracts — NASA operates under its own statutory regime, which predates and differs from Bayh-Dole)
• 14 CFR Part 1245 — NASA implementing regulation; establishes the patent waiver petition process, criteria for granting waivers, advance waiver procedures, and terms of the government's reserved license

Key Mechanics

Unlike most federal agencies covered by the Bayh-Dole Act (which gives universities and small businesses automatic title to federally funded inventions), NASA operates under its own statutory regime: the National Aeronautics and Space Act vests contractor inventions in the U.S. government by default. Contractors who want to own their inventions must petition NASA for a waiver under 14 CFR Part 1245. Waivers may be granted either in advance (covering inventions made in a specific field of work before a contract is executed) or retroactively (after the invention is made). NASA evaluates waiver petitions based on factors including the contractor's capability and commitment to commercialize the invention, whether retention by the government would better serve the public, and the nature of the contract work. If a waiver is granted, the contractor receives title to the invention but must grant NASA a royalty-free, irrevocable license for government use and must report commercialization efforts. If the contractor fails to commercialize within a reasonable period, NASA retains the right to revoke the waiver and reclaim the patent. NASA also licenses its own (non-waived) patents to private parties under 51 U.S.C. § 20136, through exclusive or non-exclusive licenses with negotiated royalty terms.

Current Rule (2026)

What This Rule Does

The Space Act (51 U.S.C. § 20135) establishes a unique intellectual property regime for NASA contracts. Unlike the Bayh-Dole Act — which gives universities and small businesses automatic title to inventions made with federal funding — the Space Act gives the government a strong presumption of ownership over contractor inventions. Congress chose this approach because the early space program was built almost entirely on government investment and resources; contractors' ability to patent and commercialize space technology privately could effectively privatize the fruits of public investment.

The waiver system in 14 CFR Part 1245 creates a safety valve: a NASA contractor who believes it should own a particular invention — because it would commercialize it more effectively, because the invention was made primarily with contractor resources, or because commercial development would benefit the public — may petition NASA's Inventions and Contributions Board (ICB) for a waiver. The ICB evaluates whether waiver serves the public interest and, if so, grants the contractor title to the invention, subject to a reserved royalty-free license for government use. Without a waiver, the contractor has only a revocable, nonexclusive, royalty-free license to use the invention in its own activities — useful for the work it's already doing, but not a commercializable asset.

Part 1245 has three subparts: Subpart 1 (Patent Waiver Regulations, 19 sections) covers the process for contractors to petition for waivers of domestic and foreign rights; Subpart 2 (Claims for Patent and Copyright Infringement, 6 sections) covers how to file claims against NASA for using private IP without authorization; and Subpart 3 (Foreign Patent Program, 5 sections) covers NASA's authority to file and manage patent applications in foreign countries for NASA-owned inventions.

Key Provisions — Subpart 1: Patent Waiver Regulations

• § 1245.100 — Scope: the subpart applies to all inventions made under conditions enabling the NASA Administrator to determine that government rights reside in the United States under § 20135 of the Space Act; this covers both NASA-funded research contracts and situations where NASA employees collaborate with contractors
• § 1245.103 — Policy: the ICB evaluates waiver petitions based on whether waiver would serve the interests of the United States — specifically, whether private ownership would lead to more effective commercialization, more widespread public availability of the technology, or other public benefits that government retention would not achieve; the policy explicitly follows § 20135(g) of the Space Act, which directs NASA to use waivers to promote commercial development of space technology
• § 1245.104 — Advance waivers: contractors may petition for a waiver before the contract is signed or early in performance, covering any or all inventions that may be made under the contract; advance waivers are advantageous because the contractor does not have to identify specific inventions; the ICB evaluates the proposed contract's subject matter, the contractor's commercialization plan, and whether advance waiver is consistent with the NASA program's goals
• § 1245.105 — Waiver after reporting inventions: if a contractor has reported a specific identified invention to NASA and NASA has not already granted an advance waiver, the contractor may petition for a waiver of rights to that specific invention; the petition must be filed before NASA initiates patent prosecution; once NASA begins filing patent applications, the opportunity for contractor waiver effectively ends
• § 1245.106 — Waiver of foreign rights: foreign patent rights — the right to file patent applications in other countries — may be waived separately from or concurrently with domestic (U.S.) patent rights; contractors seeking to commercialize space technology internationally often request concurrent foreign waiver to gain control of the technology's commercial exploitation worldwide
• § 1245.107 — Reservations upon waiver: even when the ICB grants a waiver, the government retains: (a) an irrevocable, nonexclusive, nontransferable, royalty-free license for government use of the invention — NASA (and all federal agencies) can continue using the technology for their own programs without paying the contractor; (b) the right to require the contractor to grant licenses to third parties if the contractor fails to commercialize the invention within a reasonable time; (c) the right to revoke the waiver if the contractor does not use the invention within 2 years of the patent being granted
• § 1245.108 — License to contractor: in situations where NASA retains ownership (no waiver granted), the contractor receives an automatic, revocable, nonexclusive, royalty-free license in each patent application and resulting patent; this allows the contractor to use the invention in its own work without restriction, but the contractor cannot license it to others without NASA authorization
• § 1245.109 — Assignment of title to NASA: if a waiver has been granted and the contractor fails to file a patent application within 1 year of the waiver (or a NASA-approved extension), NASA may void the waiver and reclaim title to the domestic invention; this use-it-or-lose-it provision prevents contractors from warehousing waived inventions without pursuing commercialization
• § 1245.110 — Petition contents: each petition must identify the petitioner and the contract, describe the invention, identify any related patents already held, explain why waiver would serve the public interest (citing commercialization plans, contractor resources committed, and market opportunities), and commit to specific commercialization milestones
• § 1245.111 — Submission: advance waiver petitions go to the NASA contracting officer; post-invention petitions go to the NASA office responsible for the technical program area; the ICB reviews all petitions centrally

Key Provisions — Subpart 2: Patent and Copyright Infringement Claims

• § 1245.200–1245.205 — Infringement claims process: entities that believe NASA is using their patented invention or copyrighted work without authorization may file a claim; NASA reviews the claim and may agree to license the technology, negotiate compensation, or contest the claim; unresolved claims may proceed to federal court under 28 U.S.C. § 1498 (the government's waiver of sovereign immunity for patent and copyright infringement)
• The infringement claim process reflects the reverse scenario from waiver: instead of a contractor asking to own government-funded technology, a private IP owner is asserting rights against the government's use of their technology; Section 1498 requires the claimant to sue in the Court of Federal Claims and limits the remedy to "reasonable and entire compensation" — injunctions against ongoing government use are not available

Key Provisions — Subpart 3: Foreign Patent Program

• §§ 1245.300–1245.304 — NASA foreign patent filings: NASA may file and maintain patent applications in foreign countries for U.S. government-owned inventions when it determines that foreign patent protection would serve U.S. interests (promoting technology licensing, protecting U.S. government use abroad, or supporting international cooperative programs); NASA's foreign patent program is administered in coordination with the Government Patent Branch of the Department of Justice

How It Affects You

If you are a company or university with a NASA contract: Your contract's intellectual property clause will specify whether Bayh-Dole or the Space Act applies; for most NASA contracts, the Space Act applies, meaning the government initially owns contractor inventions. If you invent something valuable during contract performance, file a petition for advance or post-invention waiver promptly — if NASA begins its own patent prosecution, your waiver opportunity may be foreclosed. A successful waiver gives you title with the government's royalty-free license reserved; a failed waiver leaves you with only a nonexclusive contractor license. The ICB evaluates petitions on a roughly 90-day cycle; the process is less adversarial than a patent prosecution but requires a credible commercialization plan.

If you are a technology transfer professional at a university or research institution: Note that the NASA/Space Act framework is distinct from Bayh-Dole. Under Bayh-Dole (which applies to most NSF, NIH, and DOE grants), universities have automatic title to inventions. Under the Space Act (which applies to NASA grants and contracts), NASA retains default title. If your institution has a NASA contract, your standard Bayh-Dole compliance procedures may not apply — you need to work within the waiver petition process of Part 1245 instead. This is a common source of confusion for research offices that handle both NASA and other federal agency contracts.

If you track NASA's technology transfer program: NASA's Technology Transfer Program (code.nasa.gov, technology.nasa.gov) licenses out government-owned NASA inventions to the private sector — the flip side of the waiver process. When NASA retains title to a contractor invention, it can license that technology to commercial entities, often on a royalty basis. Notable NASA-derived technologies that were licensed out include memory foam (originally developed for astronaut seats), water filtration systems, and anti-icing aircraft systems. Part 1245 is the legal framework underlying both directions of this technology flow.

Statutory Authority

This rule implements:

• 51 U.S.C. § 20135 (Space Act § 305) — establishes government ownership of contractor inventions made under NASA contracts; authorizes the Administrator to waive those rights when in the public interest; requires the government license reservation in all waivers; specifies the 1-year use-it-or-lose-it trigger for voiding waivers
• 51 U.S.C. § 20136 (Space Act § 306) — authorizes NASA to file patent applications abroad and enter licensing agreements to promote commercial use of NASA technology internationally
• 51 U.S.C. § 20138 — protects NASA contractors from third-party patent liability for activities conducted under NASA contracts involving patented inventions used with NASA's authorization; an important contractor protection that makes the waiver process less critical for contractors primarily concerned about infringement risk during contract performance

NASA Inventions and Contributions Board Awards (14 CFR Part 1240)

Separate from the patent waiver process — which determines who owns an invention — NASA's Inventions and Contributions Board (ICB) monetary award program compensates individuals whose scientific or technical contributions are actually used by NASA. This program is codified at 14 CFR Part 1240 and implements the Space Act's authority to make discretionary monetary awards to persons whose contributions benefit NASA programs.

Key provisions:

• § 1240.100 — Purpose: Part 1240 establishes the process for any person — including NASA employees, contractor personnel, and members of the public — to apply for a monetary award for a contribution or invention used by NASA in one of its programs; unlike the patent waiver process (which involves legal title), Part 1240 awards are cash compensation for the value of a contribution to NASA operations
• § 1240.103 — Criteria: to qualify for an award, the contribution must have been actually used in a NASA program; a scientific insight, engineering improvement, or novel technique that NASA adopted and deployed qualifies; theoretical contributions not implemented in a NASA program do not
• § 1240.104 — Eligibility: any person may apply — the program is not limited to NASA employees or contractors; a university researcher, an independent inventor, or an industry engineer who contributed something NASA uses can apply; eligibility is determined by whether the contribution was actually NASA's source for the technique, not by formal contractual relationship
• § 1240.105 — NASA employee and contractor awards: NASA employees and contractor personnel have a modified path — their contributions during normal employment or contract performance may be recognized through this program, but compensation is considered alongside the compensation already received for the underlying work; the ICB may make supplemental awards where the contribution's value to NASA substantially exceeds what was reflected in ordinary compensation
• § 1240.106 — Review: the ICB reviews applications and determines whether a qualifying contribution was made and, if so, what monetary award reflects the contribution's value to NASA; the ICB considers the importance of the contribution to the program, the novelty of the approach, and whether NASA would have achieved the same result through other means
• § 1240.107 — Board notification: the ICB must notify both the applicant and NASA program offices of its determination; program office input is important because NASA field centers that actually used the contribution are best positioned to assess its value in practice
• § 1240.109 — Hearing procedure: applicants who disagree with an ICB determination may request a hearing before the Board; the hearing process is administrative, not judicial, and the Board's final determination is not subject to further administrative review within NASA (though judicial review through APA remains available)

The distinction between Part 1245 (patent waivers — who owns the IP) and Part 1240 (contribution awards — who gets compensated for a used contribution) matters in practice: a contractor can receive a Part 1240 award for a contribution NASA used even if the contractor never sought a patent waiver, and an inventor can receive a Part 1240 award for a contribution that was never patented at all. The program is relatively low-volume — the ICB handles dozens of applications per year — but it represents NASA's statutory obligation to share the value of beneficial contributions with their originators.

Recent Rulemakings

No major amendments since 2004. The Commercial Space Act developments — particularly the growth of New Space companies (SpaceX, Blue Origin, Rocket Lab) conducting business with NASA — have raised questions about whether the Space Act's government-ownership default remains appropriate for commercial contracts where the contractor contributes substantial private capital. The 2015 SPACE Act (Pub. L. 114-90) and subsequent commercial space legislation did not amend the Space Act patent provisions; this area remains an ongoing policy discussion in the space commerce community.

Pending Action