Request for Comments on the National Science Foundation's Proposed Intellectual Property Options

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Published

January 24, 2025

Issuing agencies

National Science Foundation

Abstract

On December 12, 2024, the National Science Foundation (NSF) published in the Federal Register a document entitled "Request for Comments on NSF's Proposed Intellectual Property Options." In response to requests by prospective commenters that they would benefit from additional time to adequately consider and respond to the RFC, NSF has determined that an extension of the comment period until Friday, February 21, 2025, at 11:59 p.m. (eastern), is appropriate. NSF also is adding language to clarify the intent for intellectual property options.

Full Text

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<title>Federal Register, Volume 90 Issue 15 (Friday, January 24, 2025)</title>
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[Federal Register Volume 90, Number 15 (Friday, January 24, 2025)]
[Notices]
[Pages 8162-8164]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2025-01683]

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NATIONAL SCIENCE FOUNDATION

Request for Comments on the National Science Foundation's
Proposed Intellectual Property Options

AGENCY: National Science Foundation.

ACTION: Request for comments. Extension of comment period.

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SUMMARY: On December 12, 2024, the National Science Foundation (NSF)
published in the Federal Register a document entitled ``Request for
Comments on NSF's Proposed Intellectual Property Options.'' In response
to requests by prospective commenters that they would benefit from
additional time to adequately consider and respond to the RFC, NSF has
determined that an extension of the comment period until Friday,
February 21, 2025, at 11:59 p.m. (eastern), is appropriate. NSF also is
adding language to clarify the intent for intellectual property
options.

DATES: The end of the comment period for the document entitled
``Request for Comments on NSF's Proposed Intellectual Property
Options'' published on December 12, 2024 (89 FR 101641), is extended
from January 24, 2025, until February 21, 2025.

ADDRESSES: To respond to this Request for Comments, please use the
official submission form available at: <a href="https://airtable.com/app9KPUhqR2lAb4Zf/pag9d0QhLcOXkGlud/form">https://airtable.com/app9KPUhqR2lAb4Zf/pag9d0QhLcOXkGlud/form</a>.
Respondents only need to provide feedback on one or more questions
of interest or relevance to them. Each question is voluntary and
optional. The response to each question has a 4,000-character limit
including spaces.

FOR FURTHER INFORMATION CONTACT: For further information, please direct
questions to Allen Walker through email at <a href="/cdn-cgi/l/email-protection#6f213c2942263f201f1b0600011c423d292c2f011c0941080019"><span class="__cf_email__" data-cfemail="98d6cbdeb5d1c8d7e8ecf1f7f6ebb5cadedbd8f6ebfeb6fff7ee">[email&#160;protected]</span></a>,
phone at 703-292-2291, or mail at National Science Foundation, ATTN:
Allen Walker, 2415 Eisenhower Avenue, Alexandria, VA 22314, USA.

SUPPLEMENTARY INFORMATION: The National Science Foundation (NSF) seeks
public comments to inform the proposed implementation of new
intellectual property (IP) provision options for use in NSF public-
private partnerships, particularly those advancing research and
development, that include co-funding of awards by private partners. NSF
is committed to fostering innovation and promoting the translation of
research into practical applications. To enhance the effectiveness of
public-private partnerships, NSF seeks to implement a set of options
for IP provisions that provide greater flexibility and balance the
interests of both academia and industry.
Please note that the intellectual property options discussed herein
apply only to NSF awards that stem from direct partnerships between NSF
and industry partners prior to issuance of the grant. These types of
awards currently represent a small percentage of NSF's overall funding
portfolio. NSF defines a direct partnership as an explicit agreement
between NSF and one or more other organizations to jointly resource
(i.e., via dollars and/or in-kind offerings) a funding opportunity.
These IP options do not apply to the rest of the NSF award
portfolio. NSF maintains a consistent policy of not claiming or
retaining any intellectual property rights resulting from its awards,
including those made through the Small Business Innovation Research
(SBIR)/Small Business Technology Transfer (STTR) awards. NSF shall
neither enforce nor participate in any such negotiations between
awardees and industry partners. These IP options also do not apply to
downstream partnerships, such as those developed by NSF awardees for
additional non-NSF resources (financial and/or in-kind), thereby
enhancing the activities of the original award.
Recent engagements, including the 2023 NSF-Industry Partnership
Summit and subsequent listening sessions, have highlighted the need for
optional IP strategies that can adapt to the unique requirements of
various funded projects. NSF intends to incorporate these IP options
into partnership agreements involving industry and/or non-profit
organizations for funding opportunities whose funded awards may result
in the generation of IP.
Through this Request for Comments (RFC), NSF invites input from a
wide range of stakeholders, including industry, academia, non-profit
organizations, other government agencies, and other interested parties.
The 2023 NSF-Industry Partnership Summit and subsequent engagements
revealed differing viewpoints in stakeholders' perspectives regarding
NSF's existing IP terms. In response, the Directorate for Technology,
Innovation and Partnerships (TIP) has developed a series of IP grant-
of-rights options to address these concerns. These options are informed
by the Bayh-Dole Act and aim to promote the practical application and
commercialization of federally funded research while preserving
potential access to the IP for the U.S. Government.

[[Page 8163]]

Below is the language for each of the three IP grant-of-rights
options to be used in partnership agreements. These IP options can be
tailored according to the particular research area and the specific
terms and conditions agreed upon between NSF and the partner(s) in a
particular public-private partnership.

A. Research License With Commercial Option

The disposition of rights to inventions or works of authorship made
during NSF-funded research is governed by federal law, regulation, and
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR 401.
Pursuant to applicable laws, regulations, and policies, the entire
right, title, and interest of Intellectual Property (IP) that directly
results from activities funded by NSF (``Project IP'') is retained by
the entity that created it. While recipients are permitted to
temporarily withhold the publication of data and software related to
inventions to facilitate patent application filings, NSF terms and
conditions require the subsequent prompt publication of all research
outputs--including results, data, and software--generated in the
performance of the research.
All partners are entitled to a non-exclusive, royalty-free license
for use of Project IP for research purposes for a period of 18 months
from the date of disclosure of the Project IP. This license shall not
extend to any IP other than Project IP. This 18-month period is
structured as follows:
1. Notice Period: For the first 12 months after disclosure of the
Project IP, any partner shall have a right to indicate in writing that
they are exercising their Right of First Negotiation (``ROFN'') for an
opportunity to secure an exclusive commercial license during the
Negotiation/Option Period.
2. Negotiation/Option Period: Following the 12-month Notice Period,
there shall be a 6-month period during which partners so exercising
their ROFN may negotiate for an exclusive commercial license.
If an exclusive commercial license is secured by one partner during
the Negotiation/Option Period, all other partners' rights shall
automatically become a perpetual, non-exclusive, royalty-free license
for research purposes only.
If no exclusive commercial license is secured by the end of the
Negotiation/Option Period, the non-exclusive license granted herein
shall, for all partners, automatically convert into a perpetual non-
exclusive, royalty-free license for research purposes only.
Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive,
irrevocable, paid-up license throughout the world for use of Project IP
that directly results from activities funded by NSF.

B. Convertible Commercial License

The disposition of rights to inventions or works of authorship made
during NSF-funded research is governed by federal law, regulation, and
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR 401.
Pursuant to applicable laws, regulations, and policies, the entire
right, title, and interest of Intellectual Property (IP) that directly
results from activities funded by NSF (``Project IP'') is retained by
the entity that created it. While recipients are permitted to
temporarily withhold the publication of data and software related to
inventions to facilitate patent application filings, NSF terms and
conditions require the subsequent prompt publication of all research
outputs--including results, data, and software--generated in the
performance of the research.
All partners are entitled to a non-exclusive, royalty-free license
for use of Project IP for both research and commercial purposes for a
period of 18 months from the date of disclosure of the Project IP. This
license shall not extend to any IP other than Project IP. This 18-month
period is structured as follows:
1. Notice Period: For the first 12 months after disclosure of the
Project IP, any partner shall have the have a right to indicate in
writing that they are exercising their Right of First Negotiation
(``ROFN'') for an opportunity to secure an exclusive commercial license
during the Negotiation/Option Period.
2. Negotiation/Option Period: Following the 12-month Notice Period,
there shall be a 6-month period during which partners so exercising
their ROFN may negotiate for an exclusive commercial license.
If an exclusive commercial license is secured by one partner during
the Negotiation/Option Period, all other partners' rights shall
automatically convert into a perpetual non-exclusive, royalty-free
license for research purposes only.
If no exclusive commercial license is secured by the end of the
Negotiation/Option Period, the non-exclusive license granted herein
shall, for all partners, automatically convert into a perpetual non-
exclusive, royalty-free license for research purposes only.
Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive,
irrevocable, paid-up license throughout the world for use of Project IP
that directly results from activities funded by NSF.

C. Research-Only License

Questions for Public Comment

NSF welcomes comments from the public on any issues that are
relevant to this topic, and is particularly interested in answers to
the following questions:
Overall Impact: How do you believe these proposed IP options will
impact innovation, technology transfer, and economic growth?
Balance: Do these options ensure a balanced distribution of IP
rights between academia and industry partners? How can the proposed IP
options be further refined to ensure maximum balance in IP
arrangements?
Flexibility: What additional flexibility should be incorporated
into the IP options to accommodate and incentivize a range of research
initiatives?
Adoption: What strategies could NSF employ to encourage widespread
adoption of these IP options among potential partners?
Barriers: What potential barriers exist to implementing these IP
options, and how might they be overcome?
Translation and Incentives: Do the proposed IP options effectively
promote the translation of research into practice while incentivizing
industry participation and ensuring benefits for

[[Page 8164]]

universities and researchers? What improvements could be made to
enhance these aspects?
Additional Options: Are there other IP grant-of-rights options or
frameworks that NSF should consider to better support collaborative
research initiatives and facilitate research impact?
NSF, at its discretion, will use the information submitted in
response to this RFC to help inform future program directions, new
initiatives, and potential funding opportunities. The information
provided will be analyzed, may appear in reports, and may be shared
publicly on agency websites. Respondents are advised that the
government is under no obligation to acknowledge receipt of the
information or provide feedback to respondents with respect to any
information submitted. No proprietary, classified, confidential, or
sensitive information should be included in your response submission.
The government reserves the right to use any non-proprietary technical
information in any resultant solicitations, policies, or procedures.

(Authority: Public Law 117-167.)

Dated: January 22, 2024.
Suzanne H. Plimpton,
Reports Clearance Officer, National Science Foundation.
[FR Doc. 2025-01683 Filed 1-23-25; 8:45 am]
BILLING CODE 7555-01-P

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