Industry “How To” Training: FLC Your Open Innovation Partner FLC –Your Open Innovation Partner Dr. J. Scott Deiter

Industry “How To” Training:
FLC Your Open Innovation Partner
FLC –Your Open Innovation Partner
Dr. J. Scott Deiter
FLC Chair
FLC Chair
[email protected]
(301) 744 6111
(301) 744‐6111
FEDERAL TECH TRANSFER POLICY
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 SECNAV INST 5700.16XX
SECNAV
INST 5700 16XX
(AND OTHER CODE, INSTRUCTIONS)
Laboratories and technical activities may be authorized to:
ƒ Enter into CRADAs, PIAs, among other legal instruments
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ƒ License, assign, or waive rights to patents, inventions, trademarks, and copyrights
ƒ Negotiate royalty on licensed IP
ƒ Distribute royalties and other payments GREEN BOOK
BOOK—FEDERAL
FEDERAL TECHNOLOGY TECHNOLOGY
TRANSFER LEGISLATION AND POLICY
• Principal statutory and l
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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
WHAT IS A CRADA?
WHAT IS A CRADA?
• A Cooperative Research and D l
Development Agreement with one or tA
t ith
more non‐federal parties to perform cooperative and mutually beneficial
cooperative and mutually beneficial research and development
• A CRADA can be executed without A CRADA can be executed without
triggering legal conditions placed on: 


Procurement contracts Procurement
contracts
Cooperative agreements Grants
ADVANTAGES OF A CRADA
ADVANTAGES OF A CRADA
• Provide personnel, data, services, and property to p
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collaborating parties
• Not required to comply with “competition requirements” (Part 6 of Federal Acquisition i
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Regulations [FARs])
• Title, company name, objectives publicly available
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• May be used to solve a business‐related problem
• Can help commercialize a licensed technology
• Inventor may act as consultant to non‐Navy partner
SUCCESSFUL TT2 2 USING A CRADA
SUCCESSFUL
USING A CRADA
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Research & development of explosive p
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formulations, shaped charges and detonators
Schlumberger Technology Corporation conducts oilfield exploration
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 Signed CRADA
 Gained access to experts
 Collaborated on developing shaped charges
 New energetic “tool” for successful oilfield exploration
oilfield exploration
Navy gets advanced manufacturing production expertise
SUCCESSFUL T2 USING A CRADA
SUCCESSFUL T2 USING A CRADA
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Autoliv develops air bag systems
Needs help to develop NONTOXIC composition
CRADA i d
CRADA signed Access to experts in gas generants Collaborate on air bag system and Navy g g
gas‐generating compositions
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Novel nontoxic composition developed
Navy increases database on potentially
useful gas‐generating systems New technology for passive restraint systems LICENSING GOVERNMENT‐
OWNED INVENTIONS
• EEach agency of the government
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is authorized to license
patents/patent applications • License transfers certain rights
• under a patent or patent application
• License my be “nonexclusive” or “partially exclusive”
• Federal govt. protects inventions with patents, but does not copyright any manuals texts etc Navy patents
manuals, texts, etc. Navy patents software.
DEVELOPING TECHNOLOGIES DEVELOPING
TECHNOLOGIES
FOR LICENSING
• Navy does NOT fund efforts to develop a commercial product
commercial product
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
Vast majority of federal patents are solely for protection Inventions are mission‐specific
• Frequently,
Frequently, technologies need minimal technologies need minimal
modification to develop results, build prototypes, etc., for commercial products
FEDERAL LICENSING PROCESS AFTER 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
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 Anticipated sales several years from product
•
Place Notice of Intent to License in Federal Register
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(exclusive and partially exclusive licenses only)
•
Provide license boilerplate (varies by agency)
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Negotiate terms of license
FEDERAL LICENSING PROCESS (CONT.)
FEDERAL LICENSING PROCESS (CONT )
• Determine
Determine non‐, partially, or exclusive non partially or exclusive
licensing
 THREE required fees:
THREE required fees:
ƒ Up‐front fee due at signing
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ƒ Minimal annual royalty
ƒ Annual royalty rate
• Licensee and commander of federal lab sign negotiated license
• Government retains right to use the invention f
for government purposes
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FEDERAL SUPPORT FOR LICENSEE
• Licensee enters into CRADA with lab
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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
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)
SUCCESSFUL TT2 2 USING PATENT LICENSE
SUCCESSFUL
USING PATENT LICENSE
Differential Pressure Flow Sensor for Marine,,
Auto and Aeronautical Applications
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Wickford Technologies is entrepreneurial company
Wickford aware of flow sensor technology through University of Baltimore Lab to Market Program
Lab to Market Program Patent license and CRADA negotiated CRADA allows Navy inventors to collaborate on development of sensor for p
the commercial market
Product on market!
Partnership Intermediary Agreements (PIA)
ƒ Statutory authority is Title 15 U.S.C. Section 3715
ƒ PIA is a contract or memorandum of understanding between a f d ll b d
federal lab and an entity known as a partnership intermediary
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ƒ PIA provides for the partnership intermediary to perform services for the federal laboratory that increase the likelihood y
of success in the conduct of cooperative or joint activities with small business firms, institutions of higher education, or educational institutions
educational institutions
PIA cont’d:
ƒ Defined
Defined by organization
by organization’ss “structure
structure & function
& function”
ƒ Structure
An agency of a state or local government or
ƒ An agency of a state or local government, or
ƒ A nonprofit entity owned, operated and funded in
whole or in part by state or local government
whole or in part by state or local government
ƒ Function
ƒ Assist
Assist, counsel, advise, evaluate, or cooperate with
counsel advise evaluate or cooperate with
small business firms, institutions of higher education
EXAMPLES OF A PARTNERSHIP INTERMEDIARY
Nonprofits such as:
such as:
ƒ Maryland TEDCO ƒ Franklin Partnerships
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ƒ Any local economic development center
ƒ Universities with business marketing programs
Partnership Intermediaries
in North Carolina
•
NC Biotechnology Center
– Supports biotechnology research, business and b
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– education statewide.
•
NC Economic Development Board
– Oversees state economic development research and Oversees state economic development research and
– planning; makes policy recommendations to the – Secretary of Commerce, the governor and the General – Assembly.
•
AdvantageWest Economic Development Group
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– Western North Carolina's regional economic – development commission.
•
Research Triangle Regional Partnership (RTRP)
Research Triangle Regional Partnership (RTRP)
– Helps market the 13‐county region for inward – investment and direct strategic efforts to ensure the – region remains economically competitive.
Partnership Intermediaries
in North Carolina
• North Carolina Economic Developers • Association (NCEDA)
– Helps recruit investment to the state and supports the – growth of existing businesses and entrepreneurial – ventures. • Golden LEAF Foundation
– Endeavors to strengthen the state’s economy through
– diverse grantsmaking. • City of Raleigh Economic Development • Program
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– Supports job creation and capital investment in the
– city of Raleigh. • Additional local county/city‐based groups
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FLC TECHNOLOGY LOCATOR SERVICE
Mission: In cooperation with the federal laboratories the FLC Technology Locator serves
laboratories, the FLC Technology Locator serves as a clearinghouse for requests from businesses, industrial development organizations, state and
industrial development organizations, state and local governments, academia, not‐for‐profit organizations, individuals, and other federal agencies and laboratories.
FLC TECHNOLOGY LOCATOR SERVICE FLC
TECHNOLOGY LOCATOR SERVICE
(CONT.)
• Connects all federal labs through e‐mail service
• Used by non‐federal entities to solve problems, or to find expertise, unique facilities, or technologies
• E‐mail sent from non‐federal entity to Locator service
• Locator service sends e
Locator service sends e‐mail
mail with contents of need to with contents of need to
all members of FLC registered as Laboratory Reps or ORTAs
• Laboratory Rep or ORTA reviews request and replies 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
CONSIDER LICENSING A 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 commercial value • Add to an existing business as an additional novel product
• Become an entrepreneur and create a business based on a federal innovation
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• Federal inventors, R&D results, and facilities available for commercializing a product under a CRADA
• Available state and local support available for your business