NRL Technology Transfer
Office: Mission and
Services
Cameron Childs
May 22nd, 2012
Why Have a Tech Transfer Office?
• Stevenson-Wydler Technology Innovation Act of
1980
– Office of Research and Technology Applications
(ORTA) required
• Leveraging of the facility’s R&D dollars
• Lower-cost, readily-available goods to the Fed Govt.
• US job creation
• Increase Navy facility name recognition and publicity
• Royalty income stream (to inventors and to facility)
• Inventor rewards – monetary and intangible
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NRL’s Technology Transition and
Technology Transfer
“Technology Transition” : transition from research
to the field (military applications)
• Reports
• Web postings
• Government Purpose Licenses to fulfill a specific government
contract
• Publications
“Technology Transfer”: collaborate to generate new
intellectual property (IP) or transfer IP to a
commercial partner
•
•
•
•
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Proprietary Discussions (Confidentiality)
Material Transfers
Collaborations (CRADAs, Sabbaticals, Visiting Scientists)
Patent licenses
Publications
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NRL’s Tech Transfer Office
Mission
It is the mission of the Technology Transfer Office to
facilitate the implementation of NRL's innovative
technologies in products and services to benefit
the public. This includes contractually protecting
NRL’s IP and tracking IP obligations.
Primary
“Get the technology out there….”
Secondary
“If you can bring in a lot of money also, that’s great …”
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How Does a Tech Transfer Office
Fulfill Its Obligations?
The Tech Transfer Office manages all contractual
obligations to IP in order to assure NRL has clear legal
standing to license it technologies.
• Protects against disclosure of NRL proprietary information
(information not patented or previously published) NDA
• Protects against selling or reverse engineering NRL materials.
MTA
• Protects against unauthorized distribution or modification of
NRL software. STA
• Negotiates Agreements between joint owners of IP (IAA)
• Negotiates collaborative agreements. CRADA
• Negotiates Sabbatical Agreements; Visiting Scientist
Agreements
• Negotiates licenses (PLA and GPL)
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Primary Mechanisms for Tech
Transfer
• Non Disclosure Agreements
• Material Transfer Agreements
• Co-operative Research and
Development Agreements
(CRADAs)
• Patent Licenses
(least transfer to most)
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NDAs and MTAs
Non-Disclosure Agreement
A collaboration is anticipated and:
– Proprietary information is to be exchanged, and/or
– The other party wants NRL software and/or material.
Material Transfer Agreement
No collaboration is anticipated and:
– Material will be transferred; investigator would like the
results of what happens to the material (testing,
processing etc.)
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CRADAs
• Between NRL and one or more non-Federal parties to
collaborate on mutually beneficial R&D in any area that is
consistent with NRL’s mission.
• NRL may provide personnel, services, facilities, and
equipment to the joint R&D effort but no funds to the other
party.
• The non-Federal party may provide funds, in addition to
personnel, services, facilities, and equipment to the joint
R&D effort.
• Not subject to FAR (Federal Acquisition Regulations) –
advertisement not required; can choose CRADA partner
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CRADAs
•
IP Rights
– Subject Inventions under a CRADA (jointly or solely
developed):
• Government retains right to use for Government purposes.
• Collaborator retains free non-exclusive license for internal
use, and option for fee-bearing commercial license.
• Personnel performing substantial work on a CRADA on
behalf of NRL must be NRL employees (not contractors)
– Rights to Background Inventions not included and may need to
be licensed for CRADA partner’s commercial endeavors
•
Best effort basis (mission comes first)
•
Often executed prior to a license for evaluation purposes.
•
CRADAs with foreign entities require special approvals and
may require an export license.
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Licenses
• Navy can license issued patents, patent
applications, “patentable inventions”, trademarks
• Licenses can be Non-Exclusive (NX), PartiallyExclusive (PX), Exclusive (EX)
– Partially exclusive = exclusive in a field of use
– Intent to Grant notice in Federal Register required for PX or
EX licenses
– Application for License required, including Business Plan,
Date of Practical Application, Sales Forecast
– “Substantially manufacture in the US” required
• Government Purpose Licenses
- right to manufacture and sell to US Government only in the
performance of a Government Contract.
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Licenses
• Typical License Financial Terms:
– Upfront fee, typically paid upon execution but
installment payments are possible
• Cash (preferred)
• Deferred compensation (“phantom stock”)
– Milestone payments – lump sums tied to achievements
– Running Royalty, paid annually
– Minimum annual royalties, paid in advance
– Out-of-pocket patent expenses reimbursement required
(foreign filing; other fees)
• Other Terms
– Diligence (required milestones)
– Field of Use
– Territory
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Other Agreements
• Memorandum of Understanding (MOU) - Use
only with other Government agencies; not legally binding;
general agreement of intent
• Memorandum of Agreement (MOA) - Use only
with other Government agencies; not legally binding; firm
agreement for action
• Agreement to Provide Goods and Services
(WFOPA) – use when …
– No collaboration anticipated
– NRL performs work on contractor’s problem
– Leasing unique, excess capacity facilities or performing
services not available commercially
– No IP rights at issue
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Researcher’s Role
• Create the Intellectual Property
– Patents (Including Patentable Software)
• NRL currently has ~700 issued patents and 400 nonprovisional patent applications available for licensing
– Trademarks
• Assist the Tech Transfer Office in Marketing
– Alert TTO of potential commercial uses and companies that
express interest (contacts at scientific meetings)
• Participate in CRADAs if appropriate
The Navy and Marine Corps Corporate Laboratory
Royalty Sharing Example
$15,000
$5K
Patent A
$5K
Patent B
$5K
Patent C
Inventors
$1666.67 each
$2000 + $600
$2000 + $100
$3766.67
Assumes the first $2K has not already been received from another
payment on that invention in the current fiscal year. Cap at $150,000/yr.
The Navy and Marine Corps Corporate Laboratory
How We Market the Technology
• Inventor is usually the primary source of leads
• TTO targeted marketing
• NRL tech transfer website:
http://techtransfer.nrl.navy.mil
• DoD TechMatch website:
http://www.dodtechmatch.com
• Partnership Intermediaries
– TechLink/ Springboard
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Contact Info and Q&A
• Contact Info:
– Rita Manak, Head, Technology Transfer Office
(202) 767 3083 Rita.manak@nrl.navy.mil
– http://www.nrl.navy.mil/techtransfer
The Navy and Marine Corps Corporate Laboratory