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DoD Technology Transfer Program Focus: Patenting and Licensing

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 .

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DoD Technology Transfer Program Focus: Patenting and Licensing

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  1. DoD Technology Transfer ProgramFocus: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

  2. 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 DoD-developed 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

  3. 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.

  4. 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.”

  5. 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

  6. Practical Mechanisms forTechnology 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

  7. CRADAs – Total Active

  8. Technology Funnel 689 Useful IP quality Reduction Prototype/data Inventor & lab Fields of use Problem solve Pros & cons Risk & reward Market atmosphere AF 14% Army 26% Navy 60%

  9. DoD Patent License Agreements NUMBER YEAR

  10. DoD ROYALTY INCOME INCOME YEAR

  11. 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

  12. 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.

  13. Deicing Nozzle iScreen Chemiluminescent Lightsticks 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 Baggage Screening Machine (detect plastic explosives) Maximally Security Computer Network for Processing Highly Sensitive Data Keopsys Fiber Amplifier OSD PoC: Cynthia Gonsalves, ODUSD (AS&C) cynthia.gonsalvesy@osd.mil 703-607-5315 http://www.dtic.mil/techtransit

  14. CRADA Funds

  15. 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

  16. 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

  17. Value Added to the Mission - CRADAsGeneral 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

  18. Leveraging R&D NVESD TI R&D Community Publications 1 1 Leveraging R&D Naval Air Warfare Center (NAWC) Motorola Industry & other Government 1st/2nd Generation Software $ Contract Commercial Product Air force Research Lab (AFRL) Modern Technologies Corporation (MTC) Industry & other Government 2 Use of software Developed Free of charge CRADA Leveraging Development $ 3 $ Sales 1st/2nd Generation Software 2nd- generation software Game-related Software 2 4 5 $ Royalties $ Sales of Game-related Software $ Sales $ 2nd- generation software at a discount Value Added to the MissionDerived 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.

  19. 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

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