Editor’s Note: This story was updated Dec. 6, 2013 to add comments from NanoRacks, a Houston-based company that found a way to retain intellectual property rights for customers performing research aboard the international space station.

SAN FRANCISCO — Zero Gravity Solutions Inc. plans to conduct research in the international space station’s U.S. National Laboratory aimed at producing plants that thrive in new environments: rice that grows in brackish water, drought-resistant corn and citrus trees immune to cold snaps. If the company succeeds in developing those new crops on Earth, the U.S. Plant Varieties Protection Act would provide it with exclusive control over discoveries for at least 20 years. 

If the discoveries occur on the space station, however, Zero Gravity Solutions would have exclusive rights to its inventions for only five years. 

“It could take five years of research to get to the point where you have something you can patent,” said Richard Godwin, director for Boca Raton, Fla.-based Zero Gravity Solutions.

Other commercial researchers eager to explore the potential benefits of microgravity on plants, pharmaceuticals and materials express similar concerns that government rules limiting their intellectual property rights could prevent them from profiting from new discoveries. 

People working for the Center for the Advancement of Science in Space (CASIS), the organization selected by NASA to promote and manage commercial research aboard the orbiting outpost, “have come into contact with people, particularly from the pharmaceutical companies, who have a lot of anxieties about their potential loss of rights as a result of involving international space station research in their projects,” said Brad Carpenter, acting director of NASA’s Space Life and Physical Sciences Research and Applications Division. “We are doing everything we can to make sure they don’t have those anxieties.”

At the root of the problem is legislation that designated part of the space station a U.S. National Laboratory. In the NASA Authorization Act of 2010, the U.S. Congress directed the space agency to create a cooperative agreement with a nonprofit organization to manage the space station’s National Laboratory. Cooperative agreements established by federal agencies include standard, U.S. government-wide terms and conditions, including requirements for intellectual property rights, said Courtney Graham, NASA associate general council for commercial and intellectual property law. “If you look at any of the cooperative agreements from NASA’s Science Mission Directorate or any other part of NASA, you’ll see the same type of terms and conditions,” Graham said. 

In addition, since NASA is a title-taking agency, any large contractor that wants to retain title to an invention developed through the use of a NASA facility has to submit a waiver. If not, the space agency automatically acquires a license for government use of the invention. 

Organizations routinely submit requests for NASA to waive that title-taking authority. NASA reviews the waiver and “pretty much always says, ‘Sure you can have rights to your invention,’” Graham said. That process is required by all NASA cooperative agreements. It is in all NASA contracts and funded Space Act Agreements as well, Graham said.

Although the process of obtaining waivers is routine for NASA contractors, NASA, CASIS and industry officials see these intellectual property rules as a potential stumbling block to widespread use of the international space station for commercial research. NASA and its international partners have agreed to provide funding for the orbiting outpost until 2020. People who would like to see U.S. financial support for the space station continue beyond 2020 say significant commercial research and discovery would make their case stronger. 

“We would like to encourage more research on the international space station, especially by people working through CASIS to look for commercial applications,” Graham said. “So we’ve been exploring whether we can create a special intellectual property regime for space station-based research that would provide researchers with an increased amount of intellectual property ownership. There is no downside to the government in doing that. Space station research will be a small part of the overall commercialization effort [for any product],” Graham said.

To create those special intellectual property rules, NASA and CASIS are working with congressional committees. Language was included in a NASA authorization bill the Senate Commerce Committee approved in July. The bill — which stalled on its way to the floor and is not likely to get a vote this year — would give the NASA administrator authority to waive the license to any inventions made during scientific utilization of the national laboratory that is unrelated to NASA work if reservation of the license “would substantially inhibit the commercialization of an invention.”

While that provision would help large contractors maintain rights to inventions, it would not assist small businesses and would not help researchers maintain rights to data produced. “NASA would prefer to see something that would cover both inventions and data and that would address both large entity researchers as well as small businesses and nonprofits,” Graham said. 

NASA is proposing legislation that would direct researchers to provide the space agency with information on inventions and patents stemming from space station research, but would allow the researcher to retain all rights to those inventions and patents as well as data created during the conduct of space station activities. 

“Through this proposed legislation, NASA believes that it strikes a balance between the legitimate commercial needs of the International Space Station National Laboratory users who are being asked to make investments in commercial microgravity research and the government’s interest in ensuring that inventions developed using government resources and taxpayer-funded facilities are appropriately commercialized,” a copy of the proposed legislation states. “This legislation does not impact NASA’s research need or the rights of the government in its own research since (1) work for NASA will be conducted outside the ISS National Laboratory and (2) other arrangements between International Space Station National Laboratory users and the Federal Government are not impacted by this proposal.”

Traditionally, this type of legislation would be included in an annual appropriations bill. If the House and Senate are not able to agree on 2014 funding levels for NASA and other federal agencies, however, Congress is likely to provide the space agency with funding through a continuing resolution. 

“We think we are headed towards a continuing resolution and we are working with our partners on Capitol Hill to identify some other bill or provision in which we can have language inserted,” said Duane Ratliff, CASIS chief operating officer. “I’m confident it will be resolved. It’s a matter of trying to find the right congressional vehicle.” 

Waived Through

One company that found a way to retain intellectual property for its customers was Houston-based NanoRacks LLC. When the company was established in 2009 to give commercial customers access to space, NanoRacks and NASA signed a Space Act Agreement. Chris Cummins, NanoRacks chief financial officer, rejected the first draft of that agreement which included the standard government provisions on intellectual property rights.

“We said this does not fit our business model,” said Jeffrey Manber, NanoRacks managing director. “If customers invest their own money and we invest our money, the customers should have rights to their intellectual property.”

NASA officials provided NanoRacks with a waiver from traditional intellectual property rules. “This is not a space station issue, it’s an issue for any organization that does not enjoy such a waiver,” Manber said. “This is yet another example of the value of having two pathways to utilization of the space station’s U.S. national laboratory. On the one hand, you want peer-review of taxpayer-funded research to ensure full protection of the taxpayer’s investment. It’s also good to have a commercial pathway where investors can risk capital and reap rewards.”

Debra Werner is a correspondent for SpaceNews based in San Francisco. Debra earned a bachelor’s degree in communications from the University of California, Berkeley, and a master’s degree in Journalism from Northwestern University. She is...