Listed below are some frequently asked questions about technology transfer. If you have questions that you need answers to, contact the
FLC Management Support Office.
What is Technology Transfer?
Although there are many definitions of technology transfer, generally speaking, technology transfer is the process by which technology or knowledge developed in one place or for one purpose is applied and used in another. This broad definition covers a wide variety of procedures or mechanisms that can be used to transfer technology and is not necessarily restricted to federal activities.
However, the federal government has for many years been actively supporting and encouraging technology transfer with respect to federally generated technologies. Therefore, the phrase "technology transfer" most often refers specifically to transfers occurring between federal laboratories and any nonfederal organization, including private industry, academia, and state and local governments. The Federal Laboratory Consortium for Technology Transfer (FLC), which was formally chartered by Congress to facilitate technology transfer in the United States, has developed the following definition that accommodates the technology transfer activities of a wide variety of federal agencies and their R&D laboratories and centers:
Technology transfer is the process by which existing knowledge, facilities, or capabilities developed under federal research and development (R&D) funding are utilized to fulfill public and private needs.
In some cases, however, technology transfer also can occur between federal agencies, although the primary emphasis is on transfers to all types of nonfederal organizations. In addition, federal technology transfer activities are not always from a federal laboratory to another party. There are occasions when technology transfer mechanisms can be used by a federal laboratory to import from the outside technologies or knowledge that can assist the laboratory with achieving its mission goals. This might, in fact, be a lower-cost alternative to developing a technology or expertise entirely within the laboratory.
What is a CRADA?
The Cooperative Research and Development Agreement (CRADA) is one of the principal mechanisms used by federal laboratories to engage in collaborative efforts with non-federal partners to achieve the goals of technology transfer. The CRADA, which is not an acquisition or procurement vehicle, is designed to be a relatively easy mechanism to implement, requiring less time and effort to initiate than previous methods for working with non-government organizations. The CRADA is also intended to take into account the needs and desires of private industry when commercializing a product. Because each agency and laboratory is free to develop its own CRADA model, technology transfer personnel must ensure that they utilize their agency’s specific wording and format for CRADAs.
How can I license technologies developed by the federal government?
A license is a contract between a licensor (e.g., the holder of a patent) and a licensee (e.g., an industry partner) that ensures the licensee that the licensor will not sue the licensee for patent infringement. In other words, the government agrees not to sue the industry partner for infringing the government’s patent. It is the federal government’s technology transfer policy to promote the utilization and commercialization of inventions that arise from agency-supported R&D. The licensing of government-owned patents is one tool to achieve this goal.
For CRADAs, patent license agreements may be incorporated within the CRADAs and handled according to CRADA guidelines.
In granting a license to a government patent, the industry partner must satisfy a number of conditions. The company must supply the government with a satisfactory development or marketing plan, as well as information about its ability to implement the plan. The company must commercialize the invention within a specified period of time and must continue to make the benefits of the invention reasonably accessible to the public. The company must report its utilization of the patent periodically to the government agency holding the patent. The government always retains an irrevocable royalty-free right to practice the invention. Normally, licenses will be granted only to companies that agree that any products developed through the use of the invention will be manufactured substantially in the U.S.
Types of Licenses
The government may grant nonexclusive, partially exclusive, or exclusive licenses. Nonexclusive licenses are granted when participation by several companies offers better opportunities for the broad development and use of an invention or when an invention has already been substantially developed for commercial sale. Nonexclusive licenses may be granted without the publication of any notice, as is required for exclusive licenses (see below).
An exclusive or partially exclusive license (e.g., limited to a field of use or geographic area) (see 35 USC 209 and 37 CFR 404) can be granted if the following conditions are met:
- A notice is published in the Federal Register of the invention’s availability three months prior to the grant, or without such notice where the federal agency, laboratory director, or designee determines that expeditious granting of such a license will best serve the federal government and the public interest.
- An identification of the invention and the prospective licensee has been published in the Federal Register within at least a 15-day period for written objections to be filed.
- After objections have been considered, the laboratory director determines that the license is still in the public interest, the desired application will not be readily achieved under a nonexclusive license, the license is a reasonable incentive to attract the investment of risk capital or otherwise promote the utilization of the invention, and the terms of the license are no more than reasonably necessary.
- No determination has been made that the license will substantially lessen competition, result in any undue concentration in any section of the country in a line of commerce, or create a situation inconsistent with antitrust laws.
- First preference is given to small business firms that are capable of bringing the invention to practical application.
- The government retains an irrevocable royalty-free right to practice the invention or to have it practiced on its behalf.
- The federal agency, laboratory director, or designee reserves the right to require the licensee to grant sublicenses when necessary to fulfill health or safety needs.
- The licensing of inventions arising under a CRADA must follow CRADA guidelines on licensing.
How do I contact the U.S. Patent and Trademark Office?
A patent for an invention is a grant of a property right by the government to the inventor, who may assign his or her rights to others. It gives the owner of the patent the right, among other things, to exclude anyone else from making, using, or selling the invention for the life of the patent. Patents are issued by the United States Patent and Trademark Office (USPTO) and are valid throughout the United States. If patent protection is desired in other countries, applications must be filed in those countries, where laws and regulations governing the patent application process may differ from those in the U.S.
Mail:
USPTO
Mail Stop OED
Director of the U.S. Patent and Trademark Office
P. O. Box 1450
Alexandria, VA 22313-1450
Telephone:
800-786-9199
571-272-1000
Email:
usptoinfo@uspto.gov
Website:
www.uspto.gov
What is intellectual property?
Intellectual, or intangible, assets include any products of the human intellect—such as inventions, discoveries, technologies, creations, developments, or other forms of expressing an idea—whether or not the subject matter is protectable under the laws governing the different forms of intellectual property. Intellectual property is that subset of intellectual assets that can be legally protected, and includes patents, plant variety protection certificates, copyrights, trademarks and trade secrets. Just as our legal system provides rights and protection for owners of real property such as real estate, it also provides rights and protection to owners of intellectual property (intangible property). The intangible right to intellectual property can be bought, sold, leased, rented, or otherwise transferred between parties. The transfer of intellectual property rights can affect the marketability of a product, as well as the selection of a producer or manufacturer of a product; therefore, the right to intellectual property often involves considerable discussion among the parties in a technology transfer endeavor.
Which federal laboratories have technology transfer offices on the Internet?
For a list of federal laboratories and their associated technology transfer websites, click here.
Are there any university courses on technology transfer?
For a list of technology transfer courses, visit the FLC Technology Transfer Training Resource Database.
What legislation covers federal technology transfer activities?
Stevenson-Wydler Technology Innovation Act of 1980 (P.L. 96-480)
The Stevenson-Wydler Act of 1980 is the first of a continuing series of laws to define and promote technology transfer. The Act made it easier for federal laboratories to transfer technology to nonfederal parties and provided outside organizations with a means to access federal laboratory developments.
The primary focus of the Stevenson-Wydler Act concerned the dissemination of information from the federal government and getting federal laboratories more involved in the technology transfer process. The law requires laboratories to take an active role in technical cooperation and to set apart a percentage of the laboratory budget specifically for technology transfer activities. The law also established an Office of Research and Technology Applications (ORTA) in each laboratory to coordinate and promote technology transfer.
Bayh-Dole Act of 1980 (P.L. 96-517)
The Bayh-Dole Act of 1980, together with the Patent and Trademark Clarification Act of 1984 (P.L. 98-620), established more boundaries regarding patents and licenses for federally funded research and development. Small businesses, universities, and not-for-profit organizations were allowed to obtain title to inventions developed with federal funds. Government-owned and government-operated (GOGO) laboratories were permitted to grant exclusive patent licenses to commercial organizations.
Federal Technology Transfer Act of 1986 (P.L. 99-502)
The Federal Technology Transfer Act of 1986 was the second major piece of legislation to focus directly on technology transfer. All federal laboratory scientists and engineers are required to consider technology transfer an individual responsibility, and technology transfer activities are to be considered in employee performance evaluations.
This 1986 law also established a charter and funding mechanism for the previously existing Federal Laboratory Consortium for Technology Transfer (FLC). In addition, the law enabled government-owned and government-operated (GOGO) laboratories to enter into CRADAs and to negotiate licensing arrangements for patented inventions made at the laboratories. It also required that government-employed inventors share in royalties from patent licenses. Further, the law provided for the exchange of personnel, services, and equipment among laboratories and nonfederal partners.
Other specific requirements, incentives and authorities were added, including the ability of GOGO laboratories to grant or waive rights to laboratory inventions and intellectual property, and permission for current and former federal employees to participate in commercial development, to the extent that there is no conflict of interest.
Executive Order 12591 (1987)
Executive Order 12591, Facilitating Access to Science and Technology (1987), was written to require that federal laboratories and agencies assist universities and the private sector by transferring technical knowledge. The Order required agency and laboratory heads to identify and encourage individuals who would act as conduits of information among federal laboratories, universities, and the private sector. It also underscored the government’s commitment to technology transfer and urged GOGOs to enter into cooperative agreements to the limits permitted by law.
The Order also promoted commercialization of federally funded inventions by requiring that, to the extent permitted by law, laboratories grant to contractors the title to patents developed in whole or in part with federal funds, as long as the government is given a royalty-free license for use.
