Collaborating with the Federal Government on R&D: A 101-Level Course Dr. J. Scott Deiter FLC Chair john.deiter@navy.mil
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1 The Only Government-wide Forum for Technology Transfer Collaborating with the Federal Government on R&D: A 101-Level Course Dr. J. Scott Deiter FLC Chair john.deiter@navy.mil
2 FEDERAL TECH TRANSFER POLICY Responsible to ensure full use of results of investment in R&D Shall strive to transfer federal technology to state and local governments and to the private sector Requires each lab and those providing tech transfer support to be responsible for tech transfer consistent with their mission Shall ensure improvements to the economic, environmental and social well-being of the U.S. and its citizens
3 SECNAV INST XX (AND OTHER CODE, INSTRUCTIONS) Laboratories and technical activities may be authorized to: Enter into CRADAs, PIAs, among other legal instruments License, assign, or waive rights to patents, inventions, trademarks, and copyrights Negotiate royalty on licensed IP Distribute royalties and other payments
4 ORTA FUNCTIONS RELATED TO IP To assure optimum government protection of inventions made by lab personnel and contractors To recognize potential commercial uses of military purpose invention To identify potential licensees for lab IP To negotiate and write patent licenses To ensure that the inventor s interests are protected To ensure that maintenance fees are paid for patents To publicize inventions at conferences, showcases, conventions, mailings, etc.
5 GREEN BOOK FEDERAL TECHNOLOGY TRANSFER LEGISLATION AND POLICY Principal statutory and presidential executive order policies that constitute the framework of federal technology transfer program Legal reference resource for ORTAs and policy makers Helps those outside government understand legal framework within which technology transfer works
6 WHAT IS A CRADA? A Cooperative Research and Development Agreement with one or more non-federal parties to perform cooperative and mutually beneficial research and development A CRADA can be executed without triggering legal conditions placed on: Procurement contracts Cooperative agreements Grants
7 ADVANTAGES OF A CRADA Provide personnel, data, services, and property to collaborating parties Not required to comply with competition requirements (Part 6 of Federal Acquisition Regulations [FARs]) Title, company name, objectives publicly available May be used to solve a business-related problem Can help commercialize a licensed technology Inventor may act as consultant to non-navy partner
![[FARs]) Title, company name, objectives publicly available May be used to solve a business-related](/docs-images/43/13581011/images/page_7.jpg "problem Can help commercialize a licensed technology Inventor may act as consultant to non-navy")
8 SUCCESSFUL T 2 USING A CRADA Research & development of explosive formulations, shaped charges and detonators Schlumberger Technology Corporation conducts oilfield exploration Signed CRADA Gained access to experts Collaborated on developing shaped charges New energetic tool for successful oilfield exploration Navy gets advanced manufacturing production expertise
9 SUCCESSFUL T2 USING A CRADA Autoliv develops air bag systems Needs help to develop NONTOXIC composition CRADA signed Access to experts in gas generants Collaborate on air bag system and Navy gas-generating compositions Novel nontoxic composition developed Navy increases database on potentially useful gas-generating systems New technology for passive restraint systems
10 Each agency of the government is authorized to license patents/patent applications License transfers certain rights under a patent or patent application LICENSING GOVERNMENT- OWNED INVENTIONS License my be nonexclusive or partially exclusive Federal govt. protects inventions with patents, but does not copyright any manuals, texts, etc. Navy patents software.
11 DEVELOPING TECHNOLOGIES FOR LICENSING Navy does NOT fund efforts to develop a commercial product Vast majority of federal patents are solely for protection Inventions are mission-specific Frequently, technologies need minimal modification to develop results, build prototypes, etc., for commercial products
12 FEDERAL LICENSING PROCESS AFTER APPLICATION TO LICENSE RECEIVED Review BP submitted by licensee with application Timeline for product Nature and amount of anticipated investment Capability to fulfill the plan Field of use in which invention will be practiced Anticipated sales several years from product Place Notice of Intent to License in Federal Register (exclusive and partially exclusive licenses only) Provide license boilerplate (varies by agency) Negotiate terms of license
13 FEDERAL LICENSING PROCESS (CONT.) Determine non-, partially, or exclusive licensing THREE required fees: Up-front fee due at signing Minimal annual royalty Annual royalty rate Licensee and commander of federal lab sign negotiated license Government retains right to use the invention for government purposes
14 FEDERAL SUPPORT FOR LICENSEE Licensee enters into CRADA with lab Provides access to inventor for consultation Access to millions of dollars of R&D data and results on technology Access to the federal lab for further development If a Maryland company, funding (if required) for CRADA may be provided by Maryland Technology Development Corporation (TEDCO)
15 SUCCESSFUL T 2 USING PATENT LICENSE Differential Pressure Flow Sensor for Marine, Auto and Aeronautical Applications Wickford Technologies is entrepreneurial company Wickford aware of flow sensor technology through University of Baltimore Lab to Market Program Patent license and CRADA negotiated CRADA allows Navy inventors to collaborate on development of sensor for the commercial market Product on market!
16 FLC TECHNOLOGY LOCATOR SERVICE Mission: In cooperation with the federal laboratories, the FLC Technology Locator serves as a clearinghouse for requests from businesses, industrial development organizations, state and local governments, academia, not-for-profit organizations, individuals, and other federal agencies and laboratories.
17 FLC TECHNOLOGY LOCATOR SERVICE (CONT.) Connects all federal labs through service Used by non-federal entities to solve problems, or to find expertise, unique facilities, or technologies sent from non-federal entity to Locator service Locator service sends with contents of need to all members of FLC registered as Laboratory Reps or ORTAs Laboratory Rep or ORTA reviews request and replies if the lab can help solve the problem Service is free, fast-acting, valuable mechanism for finding solutions to needs
18 CONSIDER LICENSING A PROVEN TECHNOLOGY Leverage a unique national asset of internationally recognized scientists, engineers, and world-class facilities for COMPETITIVE advantage Numerous technologies available with known commercial value Add to an existing business as an additional novel product Become an entrepreneur and create a business based on a federal innovation Federal inventors, R&D results, and facilities available for commercializing a product under a CRADA Available state and local support may be available for your business
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