Technology Transfer for Beginners. FLC Annual Training Tuesday, April 28, 2015 Denver, CO

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1 Technology Transfer for Beginners FLC Annual Training Tuesday, April 28, 2015 Denver, CO

2 Welcome to Technology Transfer for Beginners Geared toward the new tech transfer professional (beginner) Brief overview of technology transfer, including lecture and case study Notecards for questions Evaluations

3 Sign in Procedures Look for the Training Course Sign in poster to sign in Sign in hours: 8:30 9:45 a.m. 1:00 1:30 p.m. 8

4 Course Materials Your materials include: Course book and handouts The Green Book Technology Transfer Desk Reference Don t have materials? Check in at registration to pick them up 8

5 Add/Drop Not the course for you? You can add/drop till 9:45 am Trade in your books at the registration desk Sign in to your new course 8

6 Evaluate the Course Your feedback is our most useful tool! Paper evaluation in your books hand it in at registration Online evaluation is also an option 8

7 Credit You can still register for continuing education credit at You ll receive credit for completing this course in the form of an online badge you can share with your social networks. Look for an from Credly for your badge 9

8 Maryam Azarion Deputy Assistant General Counsel, Office of General Counsel

9 Sarah Bauer Senior Coordinator, FTTA Program

10 John Dement Director of Technology Commercialization (on loan to the State of Indiana from NSWC Crane Division under an Intergovernmental Personnel Act)

11 Course Objectives Provide an overview of: Federal Technology Transfer Act (FTTA) FTTA Collaborative Agreements Cooperative Research and Development Agreements (CRADAs) Intellectual property (IP) Patent Licensing Agreements Other opportunities for tech transfer Provide basic knowledge to set up/support your T2 office

12 Course Objectives Any questions before we get started?

13 What Is Technology Transfer? Federal technology transfer is the process by which existing federal knowledge, facilities, or capabilities developed under federal research and development (R&D) funding are utilized to fulfill public and private needs Federal R&D is transferred to private or public parties for further development or commercialization Collaborative research between federal and nonfederal scientists identified Technologies developed by the federal government are moved into the marketplace Technologies with dual government and commercial uses emerge

14 Technology Transfer Partners T2 can occur: Between government entities Between the government and nongovernment entities T2 partners can include: Small, medium, and large businesses Academia Nonprofits Foreign entities Foreign, state, and local governments Private individuals Other

15 Why Do We Do Technology Transfer? Mandated Required to have authority and a vehicle to transfer property (IP, data, materials, equipment) Protect federal intellectual property Collaborate with partners Share and leverage resources Return on investment in labs Partner funds can mean more extensive research Support economic development

16 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

17 Technology Transfer Examples Movement of technology from or into federal laboratory system to promote commercialization or mission accomplishment (i.e., technology spin in and spin out ) Mission related technology transfer between government activities Technical assistance Collaborative R&D among government, nongovernment activities, and user communities Commercial technology transferred for government applications

18 History of Technology Transfer History until 1980: Until 1950, federal government employees owned their government funded inventions (U.S. v. Dubilier Condenser Corp., 289 U.S. 178 (1933)) After 1950, the federal government owned its employees inventions (E.O )

19 Federal government retained title (owned) to any invention it financed Any license granted by the government was generally a nonexclusive license A very counterproductive policy

20 Post WWII, the feds started spending billions through grants and contracts for: a. Cold War efforts (DoD) b. Health care (NIH) c. Space race (NASA) d. Nuclear energy (now DOE) e. Agriculture (USDA)

21 Until the 1990s, U.S. taxpayers were paying for 70% of the R&D in the United States Those billions in federally funded R&D investment produced thousands of potentially useful technologies to create products to improve the quality of our lives, create jobs, and keep U.S. companies competitive However, the federal government had no effective means, mechanisms, or policies to get the fruits of its billions of investment in R&D in its labs, its grantees, or its contractors into the hands of product developers and/or product commercializers

22 The U.S. economy started to sputter in the 1970s while the Japanese and German economies were growing by leaps and bounds Our national competitors were producing better quality and often cheaper products Their national investments in R&D were paying off better than ours

23 Congress met, debated, and came up with some radical solutions to foster federal technology transfer Stevenson Wydler Act Bayh Dole Act

24 Stevenson Wydler (P.L ) Technology transfer (T2) to be a mission of the federal government and judged responsibility of federal scientists and engineers Office of Research and Technology Applications (ORTAs) (aka tech transfer) established and funded at federal Labs 15 USC 3710

25 Bayh Dole (P.L ) Small businesses, universities, and not for profits get title to their inventions developed with federal funds 15 USC 3710 Subject to the government retaining a Government Use License Promote commercialization of subject inventions; promote free competition; promote commercialization of inventions by U.S. industry and labor

26 History from The federal labs now have a mandate to implement T2, but no specific authority, mechanisms, or incentives to collaborate with the outside world, nor to pass along the intellectual property rights produced

27 History Since 1986 Federal Technology Transfer Act of 1986 and later amendments provide: CRADA authority Incentives

28 Legislative History Stevenson Wydler Tech. Innovation Act (1980) Small Bus. Innovation Dev. Act (1982) Fed. Tech. Transfer Act (1986) Omnibus Trade & Comp. Act (1988) Amer. Tech. Preeminence Act (1991) Tech. Trans. Comm. Act (2000) America Invents Act (2011) 2010 Bayh Dole (1980) EO (1987) Natl. Tech. Trans. & Adv. Act (1995) White House Memo on T2 (2011) Natl. Comp. Tech. Trans. Act (1989)

29 Formal Collaboration Agreements Other authorities NASA Space Act Agreements (NASA only) 42 U.S.C. sec 2451 et seq. Partnership Intermediary Agreements (PIAs) 15 USC 3715 Software Usage Agreements (NASA only) NASA Policy Directive (NPD) Work for others (DoD, DOE) Gift acceptance authority (VA) Education Partnership Agreements 10 USC 2194

30 T2 Mechanisms Used by Federal Agencies See Federal Technology Transfer Mechanisms Database on FLC website mechanisms/

31 Setting Up Your Technology Transfer Office Office of Research and Technology Applications (ORTA)

32 The Technology Transfer Office 15 USC 3710 (b) Establishment of Research and Technology Applications Offices 15 USC 3710 (c) Functions of Research and Technology Applications Offices

33 Official Designations/ Authority (Differs Agency to Agency) Official letter of appointment as Office of Research and Technology Applications (ORTA/aka tech transfer) Written confirmation of your position from the director/commander of the lab Authority to sign official correspondence related to ORTA Obtain copies of all delegations of authority for your lab To enter into CRADAs, protecting agency inventions Designation of tech transfer point of contact

34 15 USC 3710 Established Offices of Research and Technology Applications and their functions See appendix or Green Book, pp

35 Focal Point for Technology Transfer

36 Duties of an ORTA/T2 Specialist CRADAs Writing, negotiation, safekeeping original document Knowing when to use CRADA vs. some other legal vehicle CANNOT release funding and SOW to third party Identifying nonprofits available for helping private industry Patents Writing, negotiating patent licenses Maintaining latest versions of legal instruments Develop an Invention Evaluation Board Training scientists and engineers (S&Es) on CRADA and patent processes (annually)

37 Duties of an ORTA/T2 Specialist (Cont.) ORTA T2 training (through FLC, LES, AUTM) Market lab intellectual property (IP), capabilities FLC sponsors booth space at selected meetings Outreach (EDCs, state & local governments, private businesses) Identify and utilize EDCs, state nonprofits Find POCs within educational institutions for interaction Annual Report to Commerce 15 USC 3710 (f)(2) DOC/NIST has templates and prepares comprehensive report to Congress

38 Role Inside the Lab Management T2 Office Chief Instigator Cheerleader Facilitator Comptroller Legal Security

39 Know Your Lab Team Contact your Lab Director Introduce yourself to your management Become aware of lab capabilities Attend tech meetings Get training Seek competent HELP! Administrative and legal assistance

40 Outreach Efforts Promote CRADAs Create awareness of patents available for licensing Promote awareness of capabilities, personnel, facilities Collaborate for problem solving Present at business, state and local government meetings Education/training

41 In reach Efforts Training Agency Staff Technical Administrative Managerial Intranet site

42 Important Registrations Become an FLC member Register as Lab Representative or ORTA representative Ensure lab voting rights Attend meetings to make contacts and fill Rolodex Mentors for guidance Manage your lab s info on FLCBusiness.com Register as Lab Representative and/or an Agency/ORTA representative with your agency Register within your FLC region; attend meetings

43 Develop Your Tool Box

44 Technology Transfer Desk Reference Tech transfer overview Role of FLC in T2 CRADA legislative authority IP rights, issues Legal foundation, functions for the ORTA Technology transfer mechanisms Federal/nonfederal T2 organizations Nonfederal T2 organizations Available on FLC website (free)

45 Federal Technology Transfer Legislation & Policy ( The Green Book ) Technology innovation legislation highlights Legislation applicable to all federal agencies Special legislative provisions applicable to specific agencies Special provision language Executive Orders Available on FLC website (free)

46 Technology Transfer Website Maintain tech transfer website Use as marketing tool for partnering opportunities Provide all forms and instructions List patents and identify those with commercial potential Identify unique facilities Describe partnering success stories Acquire tech transfer button on home page

47 Marketing Tools Tech transfer brochures Describe how to do business with your lab Provide some success stories Program one pagers Basic program information how to do business with your lab Highlight technologies with commercial value Provide some success stories Develop exhibition booth for technology transfer IP with commercial value Unique facilities Unique expertise

48 FLC Technology Locator Services Mission: In cooperation with the federal laboratories, the FLC provides 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

49 Matchmaker: FLC Technology Locator Free, personalized assistance connecting labs and potential partners Uses powerful network to find expertise, unique facilities, and technologies The Locator will contact Lab Reps/ORTAs with technology requests the lab may be able to meet If you can help meet the requestor s need, Locator puts you in touch to discuss T2 opportunities

50 The Search: Available Technologies Search lab technologies

51 Click to search for: Try it out! Go to flcbusiness.com

52 Technology Transfer Organizations Federal Laboratory Consortium for Technology Transfer (FLC): State Science and Technology Institute (SSTI): National Technical Information Service (NTIS): Defense Technical Information Center (DTIC): Assoc. of University Technology Managers (AUTM): Licensing Executives Society (LES): America s Small Business Development Center Network (America s SBDC): us.org ***More at

53 Securing Lab Intellectual Property

54 The Concept of Property Tangible Real Property (e.g., real estate) Personal Property (e.g., vehicle) Intangible Intellectual Property

55 IP Property Similar to other property, it can be: Owned Sold Assigned Licensed Willed In general, rights can be transferred

56 Types of Intellectual Property Patents Copyrights Trademarks Trade Secrets

57 IP Jurisdiction Article I, Section 8, Clause 8, of the U.S. Constitution Authorizes Congress to enact patent and copyright laws Commerce Clause (Article I, Section 8, Clause 3) Basis for Congress to regulate trademarks States retain concurrent jurisdiction to regulate IP under the Tenth Amendment

58 Intellectual Property Law and Policy Public policy goal is a balancing act: Promote creation by giving property rights to the creators for their creativity Provide public access in order to promote a competitive marketplace Provides creator/owner right to exclude or control use of IP, a government granted monopoly

59 Patent Temporary grant from U.S. government that allows owner to EXCLUDE others from making using offering to sell or selling invention that is claimed in patent document Patent does not give patent holder any affirmative rights to make, use, etc. Patent protection is territorial, by country(ies)

60 Types of Patents 1. Utility Patent* most common and familiar Process, machine, article of manufacture, composition of matter, improvement thereof (35 U.S.C. 101) Duration 20 years after effective filing date 2. Design Patent new ornamental appearance for a product (35 U.S.C. 171) 3. Plant Patent for asexually produced plants (35 U.S.C. 161)

61 What Is Patentable (35 U.S.C. 101) Invention must be, at minimum, conception of an idea and reduced to practice and be: process machine manufacture composition of matter new and useful improvement

62 Conditions of Patentability Useful some utility, no matter how limited Novel at least some new element not described by prior art or previously known or used (35 U.S.C. 102) Non obvious unexpected or surprising development from the viewpoint of an individual ordinarily skilled in the art (35 U.S.C. 103)

63 Prior Art Used to determine whether invention is novel or nonobvious Information available to the public in any form before the effective filing date that may be relevant to patent claims from viewpoint of individual ordinarily skilled in the art Known relevant prior art must be disclosed to USPTO during patent prosecution. Inequitable conduct may invalidate patent

64 Invention May Be Patentable Unless (35 U.S.C. 102a) Novelty Requirement Unless claimed invention was patented or described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date Unless claimed invention was described in a published patent application that names another inventor was filed before the claimed invention Exceptions for disclosures by or obtained from inventors made 1 year or less before the effective filing date (35 USC 102b)

65 U.S. and Rest of World Priority of Invention U.S. law switched from first to invent to first to file effective March 16, 2013 Leahy Smith America Invents Act (AIA) passed September 16, 2011 Now consistent with the rest of the world

66 Proper Patent Subject Matter Proper Organisms: modified seeds (Monsanto), mice Business methods, e.g., Amazon 1 click Processes Composition, e.g., drugs Articles of manufacture, e.g., complementary DNA (cdna) (Myriad decision) Improper Immoral Mathematical formulas Naked ideas Product of nature, e.g., isolated DNA (Myriad decision)

67 Patent Prosecution Terms Provisional Patent Application Inexpensive way to establish a filing date Not reviewed by USPTO No patent is granted unless followed by standard patent application Good for one year Regular Patent Application Standard patent application in the Patent Office May refer to a previously filed provisional application for priority date PCT (Patent Cooperation Treaty) PCT patent application is called an international application Establishes a filing date in all contracting states National Stage Filing After PCT application to obtain patent rights in individual countries

68 Copyrights A copyright is a form of protection provided to the authors of original works of authorship, including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished

69 Copyright Owner s Rights The 1976 Copyright Act generally gives the owner of a copyright exclusive right to reproduce copyrighted work, to prepare derivative works, to distribute copies or phonorecords of copyrighted work, to perform copyrighted work publicly, or to display copyrighted work publicly

70 Copyright Subject Matter (17 U.S.C. 102a) An exclusive right to reproduce, distribute, perform, display, or prepare derivative works of copyrightable material such as: Audiovisual work Musical works Software Literary works Architectural works Motion pictures Sound recordings

71 Copyright Requirements Authorship undefined under the Act But includes individuals and legal entities Fixed in any tangible medium of expression Sufficiently permanent or stable to permit it to be perceived for more than transitory duration directly or with aid of a machine or device

72 Copyright Duration Individual author: life of the author plus 70 years Joint work: life of last to die author plus 70 years Made for Hire works: The shorter of: 95 years from the first publication OR 120 years from creation

73 Copyrights and Federal Agencies Copyright protection not available for any work of U.S. Government employees as part of their official duties (17 U.S.C. 105) The U.S. Government may receive and hold copyrights transferred to it CENDI s publications:

74 Trade Secrets Information that has economic value because it is generally not known and is subject to reasonable efforts to keep secret

75 Trade Secrets Advantages May cover ideas, processes, algorithms, information: that may not qualify as patentable that are not subject to copyright protection Do not require disclosure

76 Trade Secrets May Include: Business and financial information Software Algorithms Databases Processes/ideas Formulas and recipes

77 How to Protect Trade Secrets Limit access to information Communicate to individuals that have access to information: Sign nondisclosure agreements (confidentiality and employment agreements) Stamp information Screen talks and publications (but be careful of First Amendment)

78 Trade Secrets and Federal Labs Common terminology: Confidential Information Proprietary Information 18 U.S.C Federal officers and employees can be fined and imprisoned for an unauthorized disclosure of trade secrets 18 U.S.C (Economic Espionage Act of 1996) Theft of a trade secret may be considered espionage States laws prohibiting unauthorized disclosure of trade secrets (Uniform Trade Secrets Act) Government created information is not protected by Trade Secret

79 Trademark SM Any word, term, symbol, device, sound, colors or any combination of these that indicates source and quality of goods and services TM, unlike patents, can be renewed forever as long as they are being used in commerce For example: note chime for NBC, McDonald s double arch, MSN s butterfly, shape of Coca Cola bottle

80 Trademark Examples Army Ten Miler Be All You Can Be Green Berets HOOAH! Blue Button

81 Types of Trademark Trademark Service mark Trade name Collective mark Certification mark

82 Trademark Law Common law State law Registration Federal law (the Trademark Act of 1946, 5 U.S.C. 1051, et seq., as amended Lanham Act ) registration: use intent to use

83 Resources U.S. Patent and Trademark Office U.S. Copyright Office part of Library of Congress Cendi publications 8copyright.pdf Trademark guidebook

84 Technology Transfer Agreements

85 T2 Mechanisms NOTE! Agencies have different authorities Within agencies, there are often different policies, processes, standards, forms, interpretations, etc. Consult with agency s T2 POC and your lab s legal and contracts!

86 Technology Transfer Agreements CRADAs Technologies developed in the private sector can be improved upon jointly by agency and the partner Technologies developed by agency can be improved upon jointly by agency and the partner Technologies may be co developed by agency and the partner Materials CRADAs (MCRADAs) Hybrid of a CRADA and an MTA Providing materials with some collaboration Duration of a year or less

87 Technology Transfer Agreements Material Transfer Agreements Agency can provide research materials to or receive research materials from a partner Licenses Technologies developed in agency labs can be transferred to the partner for further development and/or commercialization. Jointly developed technologies may also be licensed to a partner Nondisclosure Agreements Allow for in depth discussions prior to a CRADA or license agreement

88 Cooperative Research and Development Agreements (CRADAs) Agency can enter into an agreement with an outside partner (e.g., industry, academia, nonprofits, tribes, states, local governments, international companies, and governments) to perform research Research performed under the agreement must be collaborative and must be consistent with the mission of the laboratory or office Agency can provide personnel, services, facilities, equipment, or other resources, but not funds to the joint research A nonfederal party can provide funds, personnel, services, facilities, equipment or other resources Incoming funds may be used for travel related to the effort

89 CRADA Benefits To Agency Laboratories and Researchers: Collaborating with peers Professional recognition Leveraging of research dollars Further research and development Funding for laboratory or office

90 CRADA Benefits (Cont.) To Industry: Access to researchers, facilities, expertise Advancing environmental research Licensing of new technologies Leveraging of research dollars Improved and cost effective technology development

91 CRADA Benefits (Cont.) To the U.S. taxpayer: Protecting human health and the environment Better return on investment Better products Getting environmental technology to the field quickly

92 Components of an Agreement Non Disclosure Agreement (NDA) NOTE: may not be necessary for all agreements Letter of Intent (LOI) Cooperative Research and Development Agreement (CRADA) Statement of Work (SOW)

93 Proprietary Information Under a CRADA, EPA can treat submitted information as confidential business information (CBI) Cooperator CBI may be exempt from release under the Freedom of Information Act (FOIA) In addition, information generated under a CRADA can be exempted from disclosure under FOIA for up to 5 years Information created by the laboratory can be exempted from disclosure until a patent application has been filed

94 Review Process Partner contacts Lab/ORTA (see next slide for Agency initiation) Lab completes a LOI Lab and Partner draft the SOW ORTA reviews drafts, contacts OGC for issues, works with Lab and Partner ORTA sends final draft to OGC for concurrence Signature process Original signed documents sent to ORTA for safekeeping

95 Agency Initiation of Partnership Must provide a fair and open opportunity for all Be sure to have clear selection criteria developed for partner selection

96 Ways to Advertise Opportunities Lab website Announce at conferences FedBizOpps Federal Register

97 Post Signature Management The agreement is held between the laboratory and partner Once signed the effort is managed by the laboratory, whether a CRADA or license Copies of all reports are to be sent to the ORTA for record keeping ORTA would become engaged if an amendment to the agreement is required, or to notify the parties that the agreement is expiring and needs to be closed out Final reports are due to the ORTA ORTA may track the required renewal of license agreements

98 Licensing

99 Why License? Clear context and framework for an agreement Enable the licensee to make, use, and sell the product See the product reach the marketplace Fairly allocate income from the technology s success Define procedures for managing the license Have the ability to resolve dispute fairly and quickly Get out of the deal if it s not working out Stop infringers Fairly allocate liability

100 Patent License 35 USC 207 Domestic and foreign protection of federally owned inventions 35 USC 209 Patent Rights in Inventions Made with Federal Assistance 37 CFR, Chapter IV, Part 404 (terms and conditions) Licensing of Government Owned Inventions

101 Patent License Definition: Contract between IP owner and another party that permits the licensee to use the IP in accordance with the terms of the contract, 35 USC 209 Intent is to bring inventions to practical and broad commercial application (make, use, or sell) Requires business/commercialization plan Exclusive, partial, and nonexclusive type licenses Other highlights: Manufactured substantially in U.S. Preference to small businesses Government retains nontransferrable, irrevocable, paid up license to practice or have practiced on behalf of government Royalties negotiable A license could be tied to CRADAs

102 License Agreements Patent Plant variety Software Other inventions 35 USC 207(a)(2) and 35 USC 209

103 License Agreements (Cont.) May be exclusive, nonexclusive, partially exclusive, coexclusive May be research and/or commercialization licenses May be royalty free or income bearing May divide the rights by field of use, geography, sublicensing, etc. May involve laboratory support in further development/ commercialization, with or without additional compensation

104 Exclusivity Determination the proposed scope of exclusivity is not greater than reasonably necessary to provide the incentive for bringing the invention to practical application 35 USC 209(a)(2) and 37 CFR 404.7(a)(1)(ii)(D) granting the license will not tend to substantially lessen competition 35 USC 209(a)(4)

105 Exclusivity Determination (Cont.) the desired practical application has not been achieved, or is not likely expeditiously to be achieved, under any non exclusive license 37 CFR 404.7(a)(1)(ii)(B) exclusive or partially exclusive licensing is a reasonable and necessary incentive to call forth the investment of risk capital and expenditures to bring the invention to practical application. 37 CFR 404.7(a)(1)(ii)(C)

106 Ethical Issues in Licensing Who may become involved in developing a patent license Inventor having an interest in the deal How is royalty income used? What is publicly available when reporting a CRADA? Responsibility for protecting proprietary information (invention disclosures) Potential issues dealing with Invention Evaluation Board Safekeeping of files, such as invention disclosures and original documents

107 Licensing References Licensing A Strategy for Profits Edward P. White, published by LES, 1997 Licensing Executives Society Negotiating techniques IP valuation Foreign licensing Copyrights, trademarks, software

108 Other Technology Transfer Mechanisms

109 T2 Mechanisms Why You Care Mechanisms represent how you help your lab accomplish things Mechanisms are the manifestation of the authorities your lab has been given to accomplish T2 Being THE mechanisms expert IS one of your chief reasons for being!

110 My favorite line Don t tell me how to do it tell me what you want to do!

111 T2 Mechanisms: Beyond Licensing and CRADAs Nondisclosure Agreements Material Transfer Agreements Publications Open, relatively informal collaboration

112 T2 Mechanisms (Cont.) Formal Collaboration Agreements Agency funded Agreements Facility Use Agreements Personnel Exchange Agreements Work for Others/Facility Use Agreements Partnership Intermediary Agreements Seminars/Workshops Educational Partnership Agreements

113 T2 Mechanisms (Cont.) Partnership Intermediary Agreements Field Days (ARS) Release of Public Plant Varieties (ARS) Memorandum of Understanding Trust Fund Agreement Reimbursable Agreement Specific Cooperative Agreement Non funded Cooperative Agreement

114 T2 Mechanisms Don t Forget! Agency differences apply For details and agency/lab examples, see the T2 Mechanisms Database: mechanisms/

115 Publications Peer reviewed publication Lab/agency PR activities Conference presentations, seminars, etc. Discover innovation! Poster sessions Identify potential partners! Marketing your lab!

116 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) Guest lecturers Technology showcases

117 Formal Collaboration Agreements CRADAs NASA Space Act Agreements (NASA only) Software Usage Agreements (NASA only) Interagency Agreements Partnership Intermediary Agreements (PIAs)

118 Agency funded Agreements Cooperative Agreements (distinct from CRADAs) 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 Other Transactional Agreements SBIR/STTR

119 Commercial Sales Agreements Other names: Work for Others, Work for Private Parties, CSAs, etc. 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

120 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

121 Facility Use Agreements Types Proprietary, nonproprietary Typical policy considerations Cost recovery No equivalent private sector capability Fairness of access Designated facilities

122 Partnership Intermediary Agreement An 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

123 PIAs What Can That Mean? Possible Themes: Commercialization, Technology Transition, R&D broker, STEM, etc 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 of interest to the lab

124 Partnership Intermediary Network Leveraging Resources! Channels Content University Collaboration Business & entrepreneurship programs (market studies, business plans, etc.) Law schools (IP prosecution/research) Partnership Intermediary Agreements Regional (trapper): know the local players National (skinner): closes the deal Win / Win: Partners are chartered, funded, motivated, and looking for good technical content leveraging functional expertise

125 National PIAs: Skinners FREE SERVICES* (OSD funded) Roles Help find private sector partners Educate company to work with federal labs T2 transactional experts Help company with application & commercialization plans Help both parties on terms, expectations Virtual extension of lab s T2 office

126 Innovation Discovery Results 7 Events with 29 projects reviewed 114 potential disclosures identified 428 commercialization potentials So far 15 patents, 15 filed, and 5 disclosures 24 partners exposed to Crane & our innovation 50 Crane inventors exposed & trained

127 Innovation Discovery Results Process Report Developed: methodology, templates, and lessons learned* Process expanded and transferred: AFRL Rome and Kirtland, SSC A, SSC P, NAVAIR, NAWC TSD, NPT Indirect results: Licenses: 3 signed 1 negotiated CRADAs: 2 signed 2 in process Startups: 4

128 T2 Success Story: Military 2 Market* * PIA and Educational Partnership Agreement By the Numbers (since Jan 10) 7 Crane technologies successfully presented at infamous E Day 5 startup companies established 4 technologies presented at 11 national business plan competitions 6 signed CRADAs 3 exclusive licenses signed Great National & Local PR! 15+ press releases (local and national) BSU business college flyer (mailed to 34,000) U.S. News & World Report #1 ranking for classroom impact, Apr 11 Presented at annual FLC national events 11 and 12 NDIA s National Defense Magazine article Aug 11 edition Inside Indiana Business: TV and radio interviews 3 FLC awards

129 University & PIA Collaboration: Innovation Discovery Events What tough technical problem did you solve to support the warfighter? Identifying IP & commercial applications Exposing PIAs to Crane s shareable resources Training lab personnel

130 University & PIA Collaboration: Innovation Discovery Events Expert Panel PIAs (econ dev & IP experts) Universities Technologists T2/IP experts Telling the Story Inventors present Scripted template Hands on & seeing stuff Facilitated Process Potential inventions Potential commercial applications Real time training

131 Crane T2 in Indiana Building Technology Infrastructure Since awards plus 4 more awards for partners The Indiana PIA/Univ Network / total U.S. Partnership Intermediary signed 17/20 Univ. Edu. Partnerships signed 11/28 projects 16 (+4 planned)/20+ The Indiana Deals & Output / total U.S. Patent License signed 11 (+2 in process)/21 CRADA signed 21/40 START UPs 17/33 Assoc. Company Partners 25/29

132 University & PIA Collaboration: Technology Commercialization Academy Private funding 3 years in funded for 3 more 8 technologies/21 patents 1,000+ commercialization ideas To date: 1 startup w/ license 1 T2 award 2 PLA applications in process Attracting partners Prototypes Engineers & business undergrads Presenting to biz & investor community

133 Local/Regional PIAs*: Trappers Signed: GAGE, Evansville Terre Haute Economic Dev. Corp (EDC) Bloomington EDC Radius Indiana (EDC) University of So. Indiana Muncie Innovation Connector Ball State University IPFW Ft. Wayne Indiana University Wright Brothers Institute (OH) Greater Lafayette Commerce SCRA (SC) Battery Innovation Center State of Indiana/IN Office of Def. Dev Ivy Tech Purdue University Purdue Research Foundation Penn State University EOC Indianapolis Chamber * Per Navy policy, no funding of PIAs

134 Questions Thank you!