1Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 Technology Transfer Follows Many Pathways: “It’s a Contact Sport” Work for

1 Managed by UT-Battellefor the U.S. Department of Energy ITS America May 2010

Technology Transfer Follows Many Pathways: “It’s a Contact Sport”

Work for

Others

,

User

AgreementCRADA

License

S&TPark

Dana Christensen

Associate Laboratory Director Energy and Engineering Sciences

May 5, 2010


Intellectual Property License

• A License is:– A contract enabling a partner to make, use, or sell

intellectual property– Associated with patent(s) (granted or pending) – Associated with defined field(s) of use– Exclusive or Non-Exclusive

• Payment typically includes– Patent cost reimbursement– Execution fee (in some cases equity in lieu of cash may be

negotiated)– Royalty fees

• Options may also be executed, which provide partners with an exclusive right to negotiate a license for a defined period of time

License


Work for Others (WFO)

• A Work for Others Agreement is:– Performance of work for non-federal entities by contractor

personnel (industry)– Utilization of DOE or other Federal resources not directly funded by

appropriations

• Success requires clear goals and expectations and a knowledgeable industrial partner

Work for

Others

,


Cooperative Research & Development Agreement (CRADA)

A CRADA is…

• An agreement between researchers and private sector partner(s) to conduct specified research or development activities consistent with product requirements

• Each party provides personnel, services, facilities, equipment, intellectual property or other resources (intense collaboration)

Funding Mechanisms:

• 100% Funds-In by the Participant. Participant funds researcher’s portion of the project.

• Split funding: DOE funds ORNL’s portion of the project.* Participant provides both funds-in and in-kind contributions.

• Split contribution: DOE funds ORNL’s portion of the project.* Participant provides in-kind contribution.

.

CRADA


User Facilities

• Building Technologies Research & Integration Center

• Center for Nanophase Materials Sciences

• Center for Structural Molecular Biology

• High Flux Isotope Reactor

• High Temperature Materials Laboratory

• Holifield Radioactive Ion Beam Facility

• National Center for Computational Sciences

• National Transportation Research Center

• Safeguards Laboratory National User Facility

• Shared Research Equipment User Facility

• Spallation Neutron Source

User

Agreement


User Agreement

A User Agreement is

• A mechanism for private industry or academia to conduct research at the contractor’s designated user facilities

• An agreement (proprietary or non-proprietary) stipulating terms and conditions, including disposition of intellectual property

• An agreement under which the partner directs the activity, within framework of agreement

Types of User Agreements:• Nonproprietary: funded by DOE program and/or cost-recovery from

User• Proprietary: cost-recovery required for all users• Pre-competitive: allows collaboration; currently available for only a few

facilities

User

Agreement

7 Managed by UT-Battellefor the Department of Energy

We have many success stories that reinforce our work as an engine of innovation.

Start-up licensee

Established licensee

CRADA Project

WFO Project

Local Life Sciences Licensee


In summary… WFO CRADA User

Agreement

Funding Full cost recovery

DOE cost-shares thru UTB only

Free if DOE- sponsored and non-proprietary

Invention Rights

Sponsor may elect UTB subject inventions

Each party may elect its inventions; licensing rights in all inventions

User may elect title; Gov’t gets unlimited rights

Technical Data

Sponsor provides non-proprietary report in which Gov’t has unlimited rights

Protects identified resulting data for up to 5 yrs

User owns; Gov’t gets unlimited rights

Documents

1Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 Technology Transfer Follows Many Pathways: “It’s a Contact Sport” Work for