Fighting back at 50

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After years in the wilderness, NASA’s star is rising again – and its IP Programme is at the heart of its new vision, as Caitlin Mackesy Davies reports

NASA turns 50 in just over a year, and to a certain extent, it may be feeling its age. The Challenger shuttle disaster in 2003 still casts a shadow over the agency’s achievements over the past few years. And while movies like Apollo 13 and The Right Stuff made NASA inventiveness and grit the stuff of legend, the agency has taken a beating in recent years, with the press and pundits declaring that it has lost its way. At the same time, a number of very Earth-bound concerns – including the Iraq war – have sapped both public interest in far-flung exploration and much of the will to fund it.

With this in mind, you might expect NASA staff to be showing the strain, but a conversation with Gary Borda, agency counsel for IP, clearly demonstrates
that there is still a fire in the belly of this historical agent of extraordinary innovation.

‘I grew up during the early space age and I always watched NASA: Gemini, Apollo, the Moon landings. I remember watching them live,’ says Borda. It was this exposure to the excitement of NASA’s early days that gave him a lifelong interest in space and in NASA. It didn’t mean a straight path into the agency, however, as Borda’s interests also drew him to a more local frontier of exploration. ‘I also had an interest in marine science and the ocean,’ he continues. ‘I had some early experiences working on sailing research vessels with Woods Hole Oceanographic Institution in Martha’s Vineyard in the US.’

Borda’s twin interests led him to pursue a degree in aerospace and ocean engineering, and into engineering positions at first the Department of Defence and then the Navy. After returning to education to study law, Borda worked for the Navy in patent law. As Borda himself says, it’s been an
interesting career, and one that has led him back to a source of childhood fascination. ‘Now I’m here at NASA and I love it,’ he enthuses.

From his desk at NASA’s headquarters in Washington DC, Borda provides overall leadership for the agency’s patent and IP programme and sets its intellectual law policy. This includes advising on matters relating to work with a huge array of external partners, contractors and agreement partners.
Borda leads a group of attorneys in DC and in eight of NASA’s 10 field centres, including creative powerhouses like the Goddard Space Flight Centre, where research and development takes place. It’s these colleagues who do the actual patenting, licensing and patent prosecution work, sometimes assisted by outside firms. ‘We don’t have enough people to do all the patent preparation work we need to do,’ Borda explains. ‘I wish we had more, so we will outsource some of that task to private law firms.’ Borda is quick to stress that the most important decisions are kept firmly in-house, however: ‘Patents are creating a property right, so determining claim
scope is an inherently governmental function and our patent attorneys are always very involved.’

A tight-knit community
The IP function is part of a larger ‘One NASA’ legal team that includes the general counsel and Borda’s staff at HQ: ‘The legal team works integrally with the other legal disciplines, so we’re not insulated in our little areas.’ It is, Borda says, ‘a tight-knit community’ in which the attorneys work closely together. ‘We’re all here at HQ, and I can walk over and talk to the other attorneys whenever I need to,’ Borda adds.

The team is so close, in fact, that the situation can play havoc with daily goals. ‘When I come in every day I have a plan of what I want to get done, and I rarely achieve it because so many new things come up each day. It’s very hard to predict what’s going to happen,’ Borda remarks.

Like Borda, the vast majority of NASA attorneys have a science or Engineering background since, as he points out, ‘we are first and foremost a technology development agency’. Borda also stresses that the primary goal of the IP programme is to support the agency’s mission, a mission that was restated and relaunched by President Bush in 2004 under the banner ‘Moon, Mars and Beyond’.

The new vision includes the retirement of the current space shuttles in 2010, the completion of the International Space Station alongside international partners, and a return to the Moon by a manned spacecraft. The long-term goal, says Borda, ‘is to build new ships to carry man forward into the universe, and to prepare man for journeys to worlds beyond our own. It’s a very exciting time at NASA’.

Borda is quick to bring the discussion back to ground level, though, and to put the role of the IP programme in achieving those goals into perspective. ‘When the president announced the new vision for space exploration, he also said that we should to the largest extent possible work with commercial industry,’ he explains. ‘So an important element of the vision is our mandate for providing commercial opportunities for space transportation and other services. We are doing that aggressively. We are embarking on a new technology development area of massive proportions, and we also have a responsibility to protect the IP developed at public expense.’

Early adopter
This isn’t a new priority, according to Borda, who says that IP has historically been important to the agency: ‘In fact, our authorising legislation, the National Aeronautics and Space Act of 1958, gave our administrator the authority to patent our inventions and created the first licensing authority in the government.’

The result is that NASA is a ‘title-taking agency’, which means that under US law, inventions made under NASA contracts are the property of the US government unless it chooses to waive title. This leaves the IP department with some complex decisions to make, since the legislation doesn’t apply to all work done under contract, and the determination of what kind of agreement it applies to is very fact-specific.

Added to the mix is the Bayh-Dole Act of 1980, which gives small businesses, nonprofits and academic institutions the right to elect title over something they’ve invented during a NASA-funded period. This change to the Space Act was made to promote the transfer of commercially viable technology into the US economy and gives inventors a period of time to elect title. Opting to elect title doesn’t mean taking NASA out of the equation, however. If an inventor chooses to do so, new technology representatives in the NASA IP department will evaluate and test the claim and help the inventor through the filing process.

The result is that NASA is a 'title-taking agency', which means that, under US law, inventions made under NASA contracts are the property of the US government unless it chooses to waive title.

Why is NASA’s continued involvement crucial? Although, as Borda declares, ‘the Cold War is over’, there are still security and protection issues related to all this research and development work. Borda cites terrorist groups as the main adversaries who might be interested in some of the launch vehicle and tracking technology developed, but there are more mundane factors at work also.

For a start, one of the responsibilities of the agency is to disseminate information about its activities. This, says Borda, can create some tension – particularly when you are working with international partners in territories where ‘first to file’ supersedes ‘first to invent’. ‘We do disseminate information, but we also need to watch what we are doing and make the scientists involved, who like to publish, cognisant of the fact that public disclosure of their inventive work can jeopardise IP protection,’ Borda explains. ‘They need to disclose their inventions to us and let us evaluate them first.’

Money matters
Evaluating the commercial potential of an invention is also key, since as Borda points out, ‘it costs money to file patents’. Borda and his colleagues must make difficult judgements on which work warrants a patent and which doesn’t.

It is this kind of hard decision-making that allows Audi to claim in a TV ad that it has filed more patents related to its A6 than NASA has in its entire history, a claim that doesn’t impress Borda. ‘We are interested in patenting things with financial potential,’ he asserts. ‘If they have commercial potential for use out in industry and to benefit the US public, we will patent those for the purpose of technology transfer. So we don’t get the number of patents annually that an IBM might get, but we do file on important inventions. We are looking to protect the public and benefit the public, so there is a different incentive behind what we do.’

Borda’s enthusiasm for the NASA dream, both the heroic past and the path ahead, is clear, and this is a journey in which he and his team will continue to play a vital role. ‘All through the history of NASA, we have really driven the productivity of this society,’ he says. ‘We think that it’s what we can do along the journey that is important. We explore, we discover, we try to understand things, we try to come up with the technologies that are really going to move us all forward as a society. I hope that the technology can get out and be used by the public, and that’s one of the things that our IP law team is very integral in doing.’

Licensing NASA IP
NASA owns over 1,000 patents and patent applications that protect inventions in hundreds of subject categories. These inventions are available to industry through NASA’s Patent Licensing Program, which is administered from NASA HQ in Washington DC. These patent licenses may be exclusive, partially exclusive, or nonexclusive, but all are individually negotiated with the prospective licensee, and each license contains terms concerning transfer (practical application), license duration, royalties, and periodic reporting. Featured NASA technologies available for licensing and more information about the programme can be accessed via technology.nasa.gov.

The right stuff
Research shows that the key to NASA’s continued public support is demonstrating how the agency touches everyday lives. Here are just some of the ways in which NASA innovation has made it into the mainstream:

1 Solar solutions – NASA pioneered the use of photovoltaic power to provide an energy source in environments where no other power generation options exist.

2 Body image – digital image processing was developed in the mid-1960s by NASA’s Jet Propulsion Laboratory. The technology is now used to record images of the internal workings of the human body in the form of CAT and MRI scans.

3 Heat beater – with heatstroke a leading cause of death among athletes, a method for reading core temperature during practice and events represents a safety breakthrough for every sports programme. Once swallowed, the CorTemp Ingestible Core Body Thermometer Pill (HQ Inc.) transmits data on body temperature to a PDA, PC or handheld recorder for analysis. The data is being used to help keep sports players safe from heat, and to study the relationship between symptoms such as chills, nausea and cramps and core body temperature.

4 Cordless technology – if you use a cordless drill or a Dustbuster® vacuum, you are benefiting from Apollo technology. When astronauts needed a way to drill into the Moon they needed it small, portable and battery-powered. NASA chose Black & Decker to pioneer the project, and the company now sells upwards of US$400m worth of battery-powered gadgets each year.

5 Smoke safe – the world’s first smoke detector was installed on SkyLab, the first US space station.

6 Fog free – anti-fog coating developed at Johnson Space Centre to keep spacecraft windows clear has been used to keep your vision clear on the ski slopes and has been applied to developments in helmets, eyeglasses, deep-sea diving masks and vehicle windows.

7 Intelligent dating – Dr Michael Georgeff has assisted NASA by developing the first ‘intelligent agent’ software system ever to go into space. A computer equipped with this software can make decisions and deal with problems by applying reasoning strategies similar to those of humans. First employed to monitor Discovery's engines in 1997, the software has also been used to power weAttract.com, a matchmaking search engine.

This article first appeared in IP Review, issue 20

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