DoD Technology
Transfer Program
Focus: Patenting and Licensing
Presentation to the
Johns Hopkins Applied Physics Lab “Pizza & Patents”
Cynthia E. Gonsalves
DoD Technology Transfer Program Manager
February 11, 2003
http://www.dtic.mil/techtransit
Definition
 Technology Transfer (T2) is the intentional
communication of knowledge, expertise, facilities
and equipment, and other resources for
application to military and non-military systems.
It includes:



Spin-off activities demonstrating commercial viability of DoDdeveloped technologies
Spin-on activities demonstrating national security utility of
technologies developed outside DoD
Dual-use science and technology that develops technologies
having both defense and non-defense applications
Technology Transfer
15 USC 3701-3715
Ensure Full Use of the Result of the Nation’s Federal Investment in R&D
DoD Directive 5535.3
• Domestic Technology Transfer Activities are Integral Elements of DoD’s
National Security Mission
• Must have a high-priority role in all DoD Acquisition Programs
Technology Transfer Mechanisms
•
•
•
•
•
Cooperative Research and Development Agreements (CRADAs)
Patent License Agreements (PLAs)
Educational Partnership Agreements (EPAs)
State and Local Government Partnerships (incl Partnership Intermediaries)
etc.
Why “do” Tech Transfer?
 15 USC 3710(a)
“(1) It is the continuing responsibility of the Federal Government to
ensure the full use of the results of the Nation’s Federal investment in
research and development.”
 10 USC 2514. Encouragement of technology transfer
“(a) The Secretary of Defense shall encourage. . .the transfer of
technology between laboratories and research centers of the DoD
and other Federal agencies, State and local governments, colleges
and universities, and private persons in cases that are likely to result
in accomplishing the objectives set forth in section 2510(a) of this title.
“(b) The Secretary shall examine and implement methods. . .that are
consistent with national security objectives and will enable
Department of Defense personnel to promote technology transfer.”
Why “do” Tech Transfer?
 Federal Policy in 15 USC 3710:



Technology transfer . . . Is a responsibility of each
laboratory science and engineering professional.
Each lab director shall ensure that efforts to transfer
technology are considered positively in laboratory job
descriptions, employee promotion policies, and
evaluation of the job performance of scientists &
engineers in the laboratory.
Establishment of Research and Technology Applications
Offices (ORTAs)
 Each
Federal laboratory shall establish an ORTA
Practical Mechanisms for
Technology Commercialization
 Cooperative R&D Agreements (CRADAs)
 Patent License Agreements (PLAs)
 Educational Partnerships
 State & Local Government Partnerships
Partnership Intermediary: MT (TechLink Center)
Exchange of Personnel
Work for Others
Independent Research & Development (IR&D) Program
Small Business Innovation Research (SBIR) Program





CRADAs – Total Active
Quantity
Total
2,300
2,200
2,100
2,000
1,900
1,800
Numbers
FY98
FY99
FY00
Year
FY01
Technology Funnel
689
Useful
Fields of use
IP quality
Problem solve
Reduction
Pros & cons
Prototype/data
Risk & reward
Inventor & lab
Market atmosphere
AF 14%
Army 26%
Navy 60%
DoD Patent License Agreements
300
NUMBER
250
Army
Navy
Air Force
NSA
USUHS
TOTALS
200
150
100
50
0
FY 98
FY 99
FY 00
YEAR
FY 01
DoD ROYALTY INCOME
$7,000,000.00
INCOME
$6,000,000.00
$5,000,000.00
Army
Navy
Air Force
NSA
USUHS
TOTAL
$4,000,000.00
$3,000,000.00
$2,000,000.00
$1,000,000.00
$0.00
FY FY FY FY FY FY FY
1989 1992 1995 1998 1999 2000 2001
YEAR
P.L. 106-404 Report Requirement
 15 USC 3710(f): Reports on Utilization of Federal
Technology

Explanation of agency’s technology transfer program for
the preceding fiscal year (see next slide)

Agency’s plans for conducting its technology transfer
function, including its plans for securing IP rights in lab
innovations with commercial promise

Agency’s plans for managing IP so as to advance the
agency’s mission & benefit U.S. industrial
competitiveness
Patents and Licensing
Plan/Report
 Senate Report 107-151, SASC Report on Defense Auth Act
 Directs the Department to “develop a plan and to report to Congress
on specific strategies for marketing its intellectual property more
aggressively and for exploiting the findings of the DDR&E report.”
Include:





Recommendations on staffing levels for appropriate IP experts
Discussion on the role of ORTAs
Descriptions of planned cooperative activities with the private sector
& other government agencies
Analyses of any regulatory or statutory barriers to fully marketing
DoD IP
Forecast the potential for increased revenues to the Department’s
labs as a result of more aggressive marketing efforts.
Technology Transfer
Benefits:
• Technology developed in DoD lab licensed to commercial firms
• Military & Commercial applications produced on commercial line
• Royalty income to labs
− $6.2M in FY 2001
• Reduced cost of items to DoD
Maximally Security
Computer Network for
Processing Highly Sensitive
Data
Deicing
Nozzle
Baggage
Screening
Machine
(detect plastic
explosives)
iScreen
Keopsys Fiber Amplifier
Chemiluminescent
Lightsticks
OSD PoC: Cynthia Gonsalves, ODUSD (AS&C)
cynthia.gonsalvesy@osd.mil 703-607-5315
http://www.dtic.mil/techtransit
CRADA Funds
CRADA Income ($ in
M)
Cash-in
$60.000
$50.000
$40.000
$30.000
$20.000
$10.000
$0.000
Cash-in
6
7
8
9
0
1
9
9
9
9
0
0
FY
FY FY FY
FY FY
Years
Intellectual Property Management
Information System (IPMIS)
 How does DoD manage IP?
 How SHOULD DoD manage IP?
 Why IPMIS?

Tracking, managing, & reporting inventions, patents,
other IP, & related matters
 Current:


ONR working with Air Force Security
 Target date for resolution:
Navy, Air Force, Army/AMC commitment
 Future
What is a CRADA?
Cooperative Research & Development Agreement
 Legally-binding agreement signed by Federal laboratory
director
 Partners may be:






other Federal agencies
units of State or local governments
public & private foundations
other persons
industrial organizations
nonprofit organizations
 CRADAs allow:
 Federal lab to accept, retain, & use funds, personnel, services &
property from partner
 Federal lab to provide personnel, services, & use of property
 granting of patent licenses or options w/retention of government use
 waiving of rights to inventions except for government use
 former employees to participate in efforts to commercialize inventions
 Partner may choose prenegotiated field of use
Value Added to the Mission - CRADAs
General Findings
 Many Labs see CRADAs as mission extenders
 CRADAs can:
 provide a means for industry to talk openly with government
 advance research to points that would otherwise have taken
longer to achieve independently
 provide access to government/military facilities that are not
otherwise commercially available
 result in new, improved, or more cost effective
products/processes
 eliminate barriers arising as a result of a contract
 advance research for both partners leading to new
programs/contracts
 CRADAs continuing between organizations is an
indicator of progress
Value Added to the Mission
Derived Insights
 CRADAs do not take a simple linear route to commercialization and
may only serve as one step in a series of steps along the route.
 Each partnership is unique in its process to meet its objectives
 Some partnerships are a continuation of an earlier contractual
agreement for the purposes of commercialization of a product
 Some CRADAs are specifically for PLAs, bringing dollars back to
the labs
 Some CRADAs leverage R&D dollars and make small advances
in a specific technology area which over time (and maybe many
CRADAs later) may lead to a product/process which DoD can
access.
1
Leveraging
R&D
NVESD
2
Publications
R&D Community
Leveraging
R&D
TI
Naval Air
Warfare
Center
(NAWC)
Use of software
Developed
Free of charge
2nd- generation
software
$ 2nd- generation
software at a discount
1st/2nd Generation
Software
Motorola
Industry
$ Sales 1st/2nd Generation
&
Software
other
Government
Game-related
Software
$ Sales of
Game-related
Software
Air force
Research
Lab
(AFRL)
1
$ Contract
2
CRADA
Leveraging
Development $
5
$ Royalties
Commercial Product
Modern
Technologies
Corporation
(MTC)
3
4
$ Sales
Industry &
other
Government
P.L. 106-404 Report Requirement
(Details)
 Explanation of agency’s technology transfer program for the
preceding fiscal year: Information includes:







# of patent applications filed
# of patents received
# of fully executed licenses receiving royalty income
 exclusive, partially exclusive, or nonexclusive
 time from date license requested in writing to the date the license was
executed
total earned royalty income, including stats:
 total earned royalty income of top 1%, 5%, 20%
 range of royalty income
 median income
disposition of royalty income
# of licenses terminated for cause
other parameters relevant/unique to agency’s technology transfer practices