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Office of Research & Technology Applications (ORTA) - Web Page
For Fermilab Employees
Royalty Sharing
The Laboratory rewards employees for furnishing information on inventions made during the course of their employment as required by the Inventions and Employee Patent Agreement signed by all employees at the time of employment by the Laboratory. Fermi Research Alliance, LLC (FRA) is obligated to make timely disclosures to the Department of Energy of inventions resulting from the work at the Laboratory. Similarly, Fermilab employees are obligated to report their inventions to the Office of Research and Technology Applications (ORTA) so that those inventions may be disclosed to DOE. Once disclosed to DOE, FRA may take title to those inventions, file patent applications, and execute royalty-bearing licenses with outside organizations on the inventions. The inventor(s) receives monetary payment(s) for submitting a properly completed Record of Invention form to ORTA and another monetary payment if a patent is issued. FRA will file a patent application only when it appears that patent filing and prosecution expenses can be recouped from license royalty payments. FRA will not pursue patents simply for the sake of increasing the number of patents credited to the Laboratory or to an individual (sometimes referred to as vanity patents), nor will FRA apply for so-called defensive patents (those which are filed only to thwart someone who might patent a similar invention in the future). If FRA elects not to file a patent application on a particular invention, the right to do so reverts to the Department of Energy. In certain cases, individual inventors may petition DOE for a waiver of the Government's rights in favor of the rights of the inventor(s). Software Copyrights ORTA is also involved in obtaining copyrights for computer software and associated documentation developed by Fermilab employees. FRA is required to request permission from DOE, on a case-by-case basis, to assert copyright in computer software and its associated documentation. Once such permission is granted, FRA may register the copyright and execute royalty-bearing licenses with outside organizations on the software. FRA will assert copyright in computer software only when it appears certain that a licensing agreement is imminent and that copyrighting expenses can be recouped from license royalty payments. As with inventions, under some circumstances individual developers may petition DOE for a waiver of the Government's rights in favor of those of the developer(s). Inventors and software developers will be expected to champion their technology. In particular, they will be asked to provide ORTA with the names of companies that may be, or should be, interested in licensing the technology. If a company becomes seriously interested in licensing, it will, of course, want to work closely with the Fermilab inventor(s)/developer(s) during the technology transfer process. Patent or Copyright Royalties When ORTA is successful in licensing a patent or copyrighting software, the inventor(s)/developer(s) will share in the net royalties. Direct expenses deducted from royalty revenue include the fees for the intellectual property attorney retained to file and prosecute the patent application or to register the software copyright. There is no attempt to recoup the costs associated with the efforts of Fermilab's own employees, including the ORTA staff and the staff of the Fermilab legal office. After the direct expenses are deducted, the inventor(s)/developer(s) receives 50 percent of the net when annual royalty revenue is $10,000 or less but in no event less than 15 percent of gross license royalties per year. If annual royalty revenue is greater than $10,000, the inventor(s)/developer(s) receives $5,000 plus 25 percent of the amount over $10,000 but in no event less than 15 percent of gross license royalties per year. For the General Public The Laboratory owns a holds a small number of patents that are available for licensing to interested parties. Such licensing may be either non-exclusive or exclusive depending on the interests of the Laboratory and the licensing party. A list of currently available patents can be found at Fermilab Patents Available for Licensing. Interested parties should contact the ORTA at the address shown below. Under authority granted by the US DOE the Laboratory may also enter into Work for Others (WFO) agreements and Cooperative Research and Development Agreements (CRADAs). WFO work may only be performed in areas where the Laboratory has a unique capability such that it does not compete with the private sector, with the full cost of the work covered by the private party. CRADAs permit the Laboratory to work with private companies on areas of common interest and involve cost sharing of the work. More specific information concerning these programs can be found at the DOE website for DOE Orders. http://www.directives.doe.gov. The WFO and CRADA Manuals are in the 400 series at 481 and 483 respectively. DOE forms found in these manuals are the forms DOE approved for these programs. These can be electronically downloaded. Interested parties should contact the ORTA at the address shown below.
Dr. Bruce Chrisman
Technology Transfer Ombudsman: |
| last modified 12/13/06 M.Smith - oboe@fnal.gov |
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