U.S. Geological SM 500.20 - Technology Transfer Authority

U.S. Geological Survey Manual

500.20 - Technology Transfer Authority

6/6/12

OPR: Office of Administration and Enterprise Information, Office of Policy and Analysis

Instruction: The SM chapter is updated to add the DOI delegation of authority.

1. Purpose. This chapter establishes the U.S. Geological Survey (USGS) policy for engaging in technology transfer under the provisions of the Stevenson-Wydler Technology Innovation Act of 1980, as amended. Within the USGS Office of Administration and Enterprise Information, the Office of Policy and Analysis (OPA) is responsible for implementing the objectives of technology transfer. The goal of Federal technology transfer is to promote public/private sector partnerships that enhance U.S. competitiveness and leverage the Nation’s investment in Federal research and development.

2. Authority. The Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a) as amended in 1986, 1988, 1989, 1995, and 2000, and Executive Order 12591, Facilitating Access to Science and Technology, authorizes each Federal agency to permit the director of any of its Government-operated Federal laboratories to enter into: (1) cooperative research and development agreements, on behalf of such agency, with other Federal agencies; units of State or local government; industrial organizations (including corporations, partnerships and limited partnerships, and industrial development organizations); public and private foundations; non-profit organizations (including universities); or other persons (including licensees of inventions owned by the Federal agency); and (2) to negotiate licensing agreements under Section 207 of Title 35 or under other authorities for inventions made or other intellectual property developed at the laboratory and other inventions or other intellectual property that may be voluntarily assigned to the Government. This authority does not extend to technology transfer agreements with foreign governments or official international organizations.

3. Delegation of Authority. Department of the Interior, 207 DM 8, delegated the authority for Federal technology transfer and negotiation of licenses of USGS-owned intellectual property, to the Director of the USGS and allows for further re-delegation to Federal laboratory directors, or their equivalent. The equivalent entity to a Federal laboratory in the USGS is defined as centers and offices that use a facility or group of facilities owned, leased, or otherwise used by USGS, a substantial purpose of which is the performance of research, development, or engineering by employees of the Federal Government. The delegation of authority to execute technology transfer agreements is listed in SM 205.13, Delegations of Authority to Enter into Agreements and to Accept Contributions.

A. Technology Transfer. Technology transfer is the process by which existing knowledge, facilities, or capabilities developed under Federal funding are utilized to fulfill public and private needs. The goal of Federal technology transfer is to promote public/private sector partnerships that enhance U.S. competitiveness and leverage the Nation’s investment in Federal research and development.

B. Cooperative Research and Development Agreements. Pursuant to the statute, the term “cooperative research and development agreement” encompasses any agreement between one or more Federal laboratories and one or more non-Federal parties under which the Government, through its laboratories, provides personnel, services, facilities, equipment, intellectual property, or other resources with or without reimbursement, but no funds out. The non-Federal parties provide funds, personnel, services, facilities, equipment, intellectual property, or other resources toward the conduct of specified research or development efforts that are consistent with the missions of the Bureau. Any property and equipment provided under technology transfer mechanisms will be provided in accordance with established USGS property management policies and procedures.

C. License Agreements. Pursuant to the statute, a license agreement is an agreement between the owner of a patent or intellectual property and another party interested in using the owned property or protected invention. In the USGS, licenses are usually granted to a private sector partner for the right to practice, make, and/or sell a patented invention owned by the USGS.

D. Laboratory. Pursuant to the statute, the term laboratory may encompass an entire Federal agency or a facility or group of facilities owned, leased, or otherwise used by a Federal agency, a substantial purpose of which is the performance of research, development, or engineering by employees of the Federal Government. For purposes of technology transfer, the USGS designated itself as a single laboratory in 1987, thereby, permitting any USGS office, e.g., a USGS Science Center, to enter into technology transfer agreements.

E. Principal Investigator. For the purposes of this chapter, the principal investigator is defined as the research and development employee with the primary responsibility for carrying out the technical work outlined in the technology transfer agreement.

5. Scope. This chapter applies only to technology transfer agreements under the general legislative authority described above in paragraph 2 and does not encompass a procurement contract or cooperative agreement as those terms are used in Sections 6303, 6304, and 6305 of Title 31. The processes described in this chapter do not apply to license agreements. This chapter deals with one type of funds-in authority available to the USGS and does not allow for the transfer of funds from the USGS.

A. It is USGS policy to participate in technology transfer with private and public sources that support scientific research and/or data systems and technological developments that serve national needs.

(4) Require experience and support which is available from resources to which the USGS has access.

(5) Offer the USGS an opportunity to expand its own technical capabilities and understanding as a result of the exchange with the collaborator.

(a) They cannot be in conflict with the USGS Organic Act, as amended, current USGS appropriations acts, anti-trust laws, or other applicable laws and regulations.

(b) No individual member of the USGS, the Department of the Interior, other Government agencies, or a Member of Congress can benefit personally from the project; except that a Government inventor participating in cooperative research and development project or whose technology is licensed by a third party may receive royalties for such inventions, as allowed by law and regulation.

(c) Projects must be structured to ensure that conflict-of-interest statutes and regulations will not be compromised, proprietary information can be protected to the extent permitted or required by law, and safeguards against the premature release of sensitive information are included.

(10) Ensure that Non-proprietary information about the projects will be in the public domain.

(11) Be supported by funding which is sufficient to complete the identified research/services, i.e.:

(b) In-kind support provided by the USGS must come from a USGS appropriated budget activity related to the type of assistance being provided through the technology transfer project, e.g., Earthquake Hazard Program funding is used to support technology transfer seismic-related projects.

C. It is the policy of the USGS that no work will begin on a project until there is an executed technology transfer agreement in place.

D. All technology transfer projects must be assessed in accordance with the USGS cost distribution policies. [See SM 501.1, Cost Distribution.]

E. The USGS interest and expertise in conducting technology transfer projects is openly disseminated. The USGS uses multiple approaches to promote its technology transfer capabilities and interests, including the issuance of public announcements; statements on its Web sites and through its various publications; and by the continued participation of its researchers in scientific, technical, and educational presentations and programs. Guidance on marketing USGS capabilities may be found in the USGS Technology Transfer Handbook.

7. Technology Transfer Mechanisms. The USGS utilizes the following types of agreements to accomplish technology transfer objectives:

A. Cooperative Research and Development Agreement (CRADA). A CRADA is a formal written agreement (not a funds-out cooperative agreement, grant, or procurement) between Federal and non-Federal parties to exchange services, equipment, or other resources. It may/can include funds in to the USGS but not funds out to the partner. A CRADA may anticipate co-development of new intellectual property. Projects should have mission value to the USGS and commercial potential for the partner. The templates for this mechanism are provided as Figure 20-1 (Form 9-2040) and Figure 20-2.

B. Technical Assistance Agreement (TAA). The TAA is a short-term agreement that allows a Government laboratory and its researchers to provide more focused technical or research efforts to a non-Federal party with or without reimbursement. Typically, intellectual property is not anticipated. A TAA requires that the project have a mission value to the USGS and some technical or commercial significance for the partner. TAAs can also be collaborative with both parties providing technical or scientific expertise to accomplish a mutual objective. The template for this mechanism is provided as Figure 20-3.

C. Facility Use/Service Agreement (FUSA). The FUSA is a short-term agreement that allows one party to use unique USGS laboratory facilities and specialized equipment and/or capabilities. This agreement may only be used for providing access to unique equipment and/or capabilities that are not available from the private sector for use in research activities or technology development. USGS locations interested in tailoring a FUSA template for their laboratory or equipment must contact the OPA Technology Transfer Officer for guidance. After the FUSA template has been completed and approved by OPA, the Science Center may apply the template to future customers without review by the OPA, provided that the approved template wording is not changed or revised in any way. If the template needs to be revised to accommodate a partner, then OPA must approve the revised FUSA. The template for this mechanism is provided as Figure 20-4.

D. License Agreement (LA). The LA is a contract that authorizes one party to use solely or jointly developed Government technology (patents) or other intellectual property in some commercial undertaking. It is a long-term contractual agreement that allows the USGS (licensor) to give exclusive or non-exclusive use rights to the user (licensee) in exchange for express commitments to develop the technology, make annual and royalty payments based upon a negotiated formula, undertake patent defense in the case of infringement, and, finally, insulate the Government from liability for the technology’s use in any licensee product. [See SM 453.1, Inventions.]

E. Material Transfer Agreement (MTA). The MTA is a short-term agreement that allows for the exchange of a quantity of a unique material (natural or synthetic) between the USGS and another party for research purposes only. The MTA allows the USGS or the other party to use the material for research purposes. It does not transfer title to the material and, at the conclusion of time limited use, the material is either returned or destroyed, as specified in the MTA. The policy of the USGS is to execute an MTA for all materials that need to be returned or have unique handling and/or environmental and safety concerns. The MTA will require that the recipient abide by all applicable Federal standards for handling biological, radiological, and other hazardous materials. The template for this mechanism is provided as Figure 20-5.

8. Technology Transfer Mechanism Selection. The table in Figure 20-6 provides initial guidance for selecting one of the traditional USGS technology transfer mechanisms. The OPA Technology Transfer Officer assists researchers or administrators in selecting the best format for a specific project.

A. USGS employees can also access the USGS Technology Transfer Handbook for a discussion of the agreement formulation process and sample agreements used in developing technology transfer projects. Agreement templates are available at the end of this chapter.

A. Principal Investigator (PI). The PI develops the technology transfer proposal in accordance with the policies set forth in this chapter. After consultation with the OPA, the PI may draft the agreement, subject to OPA review. The PI conducts the work according to the USGS scientific guidelines, adheres to the requirements of the agreement, communicates with the partner on the progress of project work, and promptly brings issues related to the agreement to the attention of his/her supervisor and the OPA.

B. OPA Technology Transfer Officer (TTO). The TTO selects the appropriate technology transfer mechanism, reviews the agreement, assists in negotiations, and coordinates with the U.S. Trade Representative, if applicable.

(1) Records Retention. For CRADAs and their modifications, OPA will retain the original executed agreement/modification and will provide a copy to the Science Center/Cost Center. The official agreement file will contain records relevant to executing the CRADA or its modification. Note: The Science Center/Cost Center will maintain records on work product details and funding transaction details related to CRADAs/modifications.

C. OPA Intellectual Property Advisor (IPA). The IPA prepares license agreements and maintains official agreement records.

D. Science Center Directors and Cost Center Managers. Science Center Directors and Cost CenterManagers ensure that all technology transfer agreements are prepared in accordance with the policy set forth in paragraph 5 of this chapter.

(a) For TAAs, FUSAs, and MTAs, the Science Centers/Cost Centers will retain the original executed agreement and will provide a copy to OPA. The official agreement file will contain records relevant to executing the agreement, including records on work product details and funding transaction details.

(b) For CRADAs and their modifications, the Science Center/Cost Center will maintain records on work product details and related funding transaction details.

E. Associate Directors and Regional Executives. Associate Directors and Regional Executives are authorized to approve CRADAs. [See SM 205.13, Delegations of Authority to Enter into Agreements and to Accept Contributions, Appendix A.]

F. Ethics Office. The Ethics Office reviews all proposed technology transfer agreements with non-Governmental and non-educational partners for a determination that they are in compliance with conflict-of-interest regulations.

10. Funding. The USGS preferred business practice is for the non-Government partner to provide advance funds before work on an agreement is initiated. However, since the legislation authorizes cooperative research with and without reimbursement, the Science Center Director or the cost center manager may execute a technology transfer agreement that omits the requirement of an advance payment. The cost center manager must ensure that reimbursement for an activity is received before the end of the fiscal year. If reimbursement is not received by the end of the fiscal year, the cost center manager must cover the expenses with appropriated funds. The cost center manager is also responsible for all billings in accordance with SM 336.2, Billing Non-Federal Customers and Former and Current Employees.

A. Guidance on appropriate technology transfer mechanisms, reviews of agreements, coordination of the internal ethics reviews, or any special legal or program clearances, along with final signatures, is coordinated by OPA.

B. The PI is required to sign a conflict-of-interest statement for all CRADAs. For TAAs, a conflict-of-interest statement is required when:

(1) The Partner in the TAA is listed on the USGS prohibited or limited source list.

(2) The USGS PI has any official or personal relationships with the partner in the TAA.

C. Extensions or modifications to technology transfer agreements require a written amendment, executed by all parties. The format for such extensions or modifications is available in the on-line USGS Technology Transfer Handbook or by contacting the OPA Technology Transfer Officer. Amendments to extend the expiration date of any agreement must be executed prior to the expiration date of the original agreement so that lapses in work and funding can be avoided. Extensions or modifications to technology transfer agreements require review by OPA. Science/Cost Centers must provide a copy of all executed modifications to OPA.

D. Approval authority for technology transfer agreements is set forth in item E, Appendix A, in SM 205.13, Delegations of Authority to Enter into Agreements and to Accept Contributions. Typically, the USGS prepares two original documents for final execution. One copy is retained by the USGS and the other copy is retained by the partner.

/s/ Kelly L. Bradley for                                                                                  June 6, 2012
_____________________________________                                  _____________________
Diane K. Wade                                                                                                   Date
Associate Director for Administration and
Enterprise Information and
Acting Associate Director for Human Capital