Non-CRADATechnology Transfer

Mechanisms

John Dement Naval Surface Warfare Center

Crane Division

Nashville, Tennessee May 2, 2011

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• Technology Transfer Officer, Naval Surface Warfare Center (NSWC), Crane Division, for 5 years

• Technology transfer responsibilities include: Invention mining Marketing and licensing Navy intellectual property Negotiating CRADAs between the lab, industry, state and

local governments, and academia Outreach activities to develop partnering opportunities– Interaction with partnership intermediaries

• FLC Member-at-Large (2008-present) Education and Training Committee State and Local Government Committee

• ORTA Representative for NSWC, Crane Division• Engineering Manager at NSWC for 21 years

John Dement

TT Mechanisms• Publication

• Open, relatively informal collaboration

• Formal collaboration agreements

• License agreements

• Agency-funded agreements

• Facility use agreements

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TT Mechanisms (Cont.)

• Material Transfer Agreements

• Personnel Exchange Agreements

• Work for Others

• Nondisclosure Agreements

• Partnership Intermediary Agreements

• Seminars/Workshops

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TT Mechanisms (Cont.)

• Field Days

• Release of Public Plant Varieties

• Memorandum of Understanding (MOU)

• Trust Fund Agreement

• Reimbursable Agreement

• Specific Cooperative Agreement

• Non-funded Cooperative Agreement

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Agency/laboratory examples and information on each of these T2 mechanisms is available in the Federal Technology Transfer Mechanisms Database on the FLC website at:

http://www.federallabs.org/education/t2-matrix

TT Mechanisms (Cont.)

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Agencies have different authorities

Within agencies, there are often different policies, processes, standards, interpretations, etc.

Consult with agency’s T2 POC and your lab’s legal and contracts!

TT Mechanisms – NOTE!

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Publication

• Peer-reviewed publication

• Lab/agency PR activities

• Conference presentations, seminars, etc.

• Poster sessions

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Open, Informal Collaboration

• Informal collaboration

• Guest researcher agreements

• NRC post-doctorate personnel – term employee?

• Other agency post-doctorate personnel – IP rights?

• Professional Committees (formerly Standards Committees)

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Formal Collaboration Agreements• CRADAs

• NASA Space Act Agreements

Partnership Intermediary Agreements (PIAs)

Interagency Agreements

Software Usage Agreements (NASA only)

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A not for profit entity or agency that is owned, chartered, funded, operated in whole or in part by a state or local government….

“that assists, counsels, advises, evaluates, or otherwise cooperates with small business firms” or educational institutions….

“that need or can make demonstrably productive use of technology related assistance from a Federal laboratory”

Ref 15 USC 3715(c)

Partnership Intermediary Agreement

Generic Roles & Responsibilities (Navy template)• Lab can:

– provide information on “shareable” R&D capabilities, resources, requirements, needs, etc.

– support partner’s programs as appropriate• Partner can:

– help companies submit technical proposals to Broad Agency Announcements & other funding programs

– showcase lab’s inventions for licensing & collaboration,then help the companies take the next steps

– showcase client’s technologies & capabilities that are of interest to the lab

Possible Themes: Commercialization, Technology Transition, R&D Broker, STEM, etc…

PIAs – What Can That Mean

License Agreements

• Patent

• Plant variety

• Copyrighted software (limited circumstances)

• Other “inventions”

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License Agreements (Cont.)

• May be exclusive, nonexclusive, partially exclusive

• May be research and/or commercialization licenses

• May be royalty-free or income bearing

• May divide the rights by field of use, geographically, etc.

• May involve laboratory support in further development/ commercialization, with or without additional compensation

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Agency-funded Agreements

• Cooperative agreements (as distinct from a Cooperative Research and Development Agreement, or CRADA)

– Federal guidelines for using a cooperative agreement (as distinct from a contract or grant) are basically the same as those for a grant, except that the funding agency expects to be substantially involved with the recipient of the research funds in carrying out the funded activities

• SBIR/STTR

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Facility Use Agreements

• Types – Proprietary, nonproprietary

• Typical policy considerations

– Cost recovery

– No equivalent private sector capability

– Fairness of access

– “Designated” facilities

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Material Transfer Agreements• Material Transfer Agreement (MTA) is a contract that

governs the transfer of tangible research materials between two organizations when the recipient intends to use it for his or her own research purposes

– MTA defines the rights of the provider and the recipient with respect to the materials and any derivatives

– Biological materials are the most frequently transferred materials, but MTAs may also be used for other types of materials, such as chemical compounds and even some types of software

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Material Transfer Agreements (Cont.)

• Who is providing what to whom and why

• Research restriction

• Relevant safety requirements

• IP language, which may require considerable negotiation

• Return/destruction of the transferred material

Typical issues addressed in an MTA include:

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Personnel Exchange Agreements• Guest researchers

• Industry/lab fellows

• Intergovernmental Personnel Act (IPA) program—Purpose is to facilitate cooperation through the temporary assignment of skilled personnel between the federal government, state and local governments, institutions of higher education, federally funded research and development centers maintained by the National Science Foundation, Indian tribal governments, and other nonprofit organizations for limited periods without loss of employee rights and benefits

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Nondisclosure Agreements

• A nondisclosure agreement (NDA) is typically used when lab personnel are going to receive proprietary information from external organizations

• Nondisclosure agreement defines the treatment of this proprietary information under terms that are acceptable to both parties’ cooperative agreements

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Nondisclosure Agreements (Cont.)

• An NDA protecting incoming information creates an express obligation for federal employees under the Trade Secrets Act. This is a criminal statute

• However, the Trade Secrets Act applies to a very broad definition of “proprietary information,” whether received informally or under a formal agreement such as an NDA or CRADA

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A typical definition of proprietary information is “confidential scientific, business, or financial information,” with the exception of:

• Information already in the lab’s possession becomes a matter of public knowledge through no fault of the lab

• Is received by the lab from another party without a duty of confidentiality

• Is disclosed by the provider to a third party without a duty of confidentiality on the third party, or

• Is independently developed by the lab

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Proprietary Information

Nondisclosure Agreements (Cont.)

• There are relatively few circumstances under which a government-owned, government-operated (GOGO) lab would protect lab information under an NDA, because most lab information is subject to the Freedom of Information Act

• One such case would be to protect information about an invention prior to the filing of a provisional or nonprovisional patent application to avoid premature “public disclosure” as defined in the patent statute

Nondisclosure Agreements (Cont.)

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Commercial Sales Agreements

• Agreement between government and nonfederal party

• Sell, rent, or lend government equipment or materials or services

• Testing of materials, equipment, models, computer software, and other items for a fee

• Not subject to procurement regulations

• Cannot compete with private sector

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Top Ten Reasons for Collaborating With an Industry Partner

• Impact!• To make sure your research is market-driven• To develop strong ties with stakeholders• To strengthen your scientific plans• To spread the word about what the lab does• To be reasonably sure that your inventions will be licensed• To better understand how your project fits into the big picture• To gain access to specific expertise• To gain access to unique facilities• To provide funding for your project

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