Technology Transfer - Frequently Asked Questions

Technology transfer is the process of transferring new technologies from the laboratory to the marketplace. Technology transfer agreements facilitate this process. NETL works with entrepreneurs, companies, universities, and others to move lab developed technologies to commercialization.

The transfer of technology enables laboratory research to transform into new products and services, so inventions can benefit the greatest number of people as quickly and efficiently as possible.

NETL inventions available for licensing or further collaboration are listed on NETL’s Available Technologies page. If you are interested in licensing any of these technologies, please contact the NETL Technology Transfer Agreements team to initiate discussions or request NETL’s Application for License.

Licenses will be based on your business’ needs and what type of technology you are interested in using. See the License page to learn more about different types of licenses that NETL provides.

The cost for each license varies depending on the type of license and other financial terms and market considerations that are unique to each technology and development path. A license may include an execution fee, minimum annual royalties, earned royalties on sales, and milestone or benchmark payments.

An exclusive license may be granted for a federally-owned invention to encourage the commercial development of inventions and is warranted in accordance with 37 CFR §404.7. An exclusive license is used when the licensor grants all rights to the licensee, and the licensor cannot grant rights to another.

A Notice of Intent to grant an exclusive license to the invention must be published on the Federal Laboratory Consortium website, by law for a minimum of 15 days, for public comment. This step can only be completed once it is determined that an exclusive license is warranted in accordance with 37 CFR §404.7 and the application is complete. An exclusive license application submitted for an invention developed under a CRADA does not require public notice.

A license application business plan should include, but is not limited to the following information:

• Objectives/goals
• Tasks and activities
• Milestones
• Plan to fulfill tasks and activities, including manufacturing, marketing, financial, and technical capabilities
• Anticipated investment of capital and other resources

Depending on the type of license and complexity of license terms, the length of time to obtain a license varies.

NETL reviews the required yearly reports submitted by its licensees outlining progress towards successful commercialization and achievement of the business plan which was submitted as part of the company’s Application for License.  NETL’s role is to ensure that the inventions are commercialized and the practical application is realized for public benefit.

Technical discussions between inventors and potential licensees on the invention are encouraged. Due to potential conflicts of interest, inventors cannot be involved in business discussions or the negotiation of license agreements with potential licensees.

A CRADA is required when NETL and an outside party(ies) have developed and settled on a specific body of work to collaboratively perform together.

A CRADA is not appropriate if the outside party is a non-DOE U.S. Government agency, or if NETL needs to transfer funding to the outside party.

If the outside party will simply provide data or samples to validate their technology or that NETL would perform the bulk of the work under the CRADA, then a CRADA would not be appropriate.

Under a CRADA, new inventions made solely by the outside party are owned by that party. New inventions made jointly by NETL and the outside party(ies) are owned jointly. New inventions made solely by NETL are owned by NETL. The outside party(ies) will get an option to negotiate an exclusive license for a pre-negotiated field of use. An exclusive license application submitted for an invention developed under a CRADA does not require public notice. Also, the CRADA can serve as replacement for an application for license which would have been required if the invention was developed outside of the CRADA. These steps can help speed up the development and commercialization of the technology.

No, NETL is not able to send funding to another party via a CRADA.

NETL benefits from a CRADA by allowing collaboration with IP protection. Through collaboration under a CRADA, NETL can gain results or impact and market information. It leverages its resources by having access to the outside party’s unique expertise, facilities, equipment, and IP. NETL can receive funds to cover costs in full or in part. A potential licensing partner can be identified at the early stage of collaboration under a CRADA.

A CRADA allows for cost sharing and profit to an outside party. A CRADA can allow an outside party access to NETL’s unique expertise, facilities, equipment, and IP. An outside party will have first right to an exclusive license for a pre-negotiated field of use for NETL’s solely or jointly developed inventions under a CRADA.  A CRADA can also protect specific information generated from the CRADA for up to 5 years.

An MOU/MOA is used when NETL and an outside party desire, usually for optics or relationship-building reasons, to outline the cooperative spirit and summary-level detail behind high-level, long-term, or far-reaching initiatives and do not want to legally bind one another to any granular scope of work or responsibilities. An MOU/MOA can exist in parallel with other agreements between the parties, e.g. CRADAs, NDAs, etc.

MOUs/MOAs are not legally binding agreements and are not appropriate for the more targeted tasks outlined in a statement of work for a specific project; that is better accomplished via a CRADA, CFA, or InterAgency Agreement. 

No specific obligations or rights with respect to patentable IP are called out in an MOU/MOA. By statute, the Government will own any resulting patents unless another agreement is executed.
 

A CFA is required when an outside party desires to reimburse NETL 100% to conduct a body of work for the outside party and allows them to have access to NETL’s unique facilities, capabilities, and expertise.

A CFA is not appropriate when both parties anticipate collaborating together on a body of work (this type of agreement would be a Cooperative Research and Development Agreement (CRADA).

New inventions made under a CFA are owned by NETL because NETL is the only party performing the work. No option is granted to the outside sponsoring party to retain title to NETL's inventions or elect an option to negotiate a license to NETL's inventions.

An NDA, also known as a confidentiality agreement, is an agreement stating that one party will maintain in confidence certain information provided by another party. The document describes the information to be kept confidential and may be unilateral or bilateral.

An NDA is required if NETL plans to share potentially patentable information with an outside party, regardless of whether or not the outside party intends to share its proprietary information with NETL. An NDA can protect the exchange of:

• NETL’s potentially patentable information
• Both NETL’s potentially patentable information AND an outside party’s proprietary information

Potentially patentable information includes the following:

• New, useful, and non-obvious products, machines, processes, compositions of matter, and improvements to these items
• Non-public research data and manuscripts
• Planned research pathways
• Reports of invention and the information and data contained therein
• Provisional patent applications and the information and data contained therein
• Non-provisional patent applications and the information and data contained therein
• Patent Cooperation Treaty patent applications and the information and data contained therein

Potentially patentable information does not include the following:

• Issued patents and the information contained therein
• Prior art or previous public disclosures (U.S. Patent and Trademark Office defines prior art as, “Information known publicly before the effective filing date of a U.S. patent application.”)
  • For U.S. patent protection, previous public disclosures may be patentable up to one year after the disclosure date. However, for foreign patent protection, if the invention is publicly disclosed before securing a patent priority date, most foreign patent offices would disqualify an invention from patent protection. 
• Data structures, non-functional descriptive materials like books or music, electromagnetic signals, laws of nature, and other abstract ideas 
• A discovery, scientific theory, or mathematical method
• A patent cannot be obtained upon a mere idea or suggestion. A complete description of the subject matter for which a patent is sought is required.

Proprietary information includes various forms of the following:

• Trade secrets
• Processes
• Operations
• Style of Work or apparatus
• Privileged commercial information
• Privileged financial information

An NDA is not required if an outside party plans to share proprietary information with NETL, but NETL does not plan to share potentially patentable information with the outside party. If the outside party agrees that the Trade Secrets Act is sufficient to protect their proprietary information, then the Trade Secrets Act can be used in place of an NDA. 

Proprietary information is protected by the Trade Secrets Act (18 USC § 1905. Disclosure of confidential information generally)

• This statute states that Federal employees are bound by law to keep confidential any information gained during the course of their employment, and outlines the penalties for the disclosure of said information (loss of position, in addition to fines and/or imprisonment).

No, an NDA is only to protect the exchange of intellectual property for the purposes defined in the NDA. Typical language for the purpose is “to perform a review and evaluation of . . . “ the potentially patentable (and/or proprietary) information as defined in the NDA. An NDA does not include intellectual property terms; therefore, if intellectual property is generated as a result of discussions/evaluations, then the DOE would own it, regardless of what party invented it.

No funding is exchanged between the parties as the result of an NDA.

Proprietary information received under an NDA can be shared with other federal employees that need to know the information to conduct work for the purpose of receiving the information, but federal employees are informed that such information is considered proprietary and are not to be shared with others. NETL may share the information with appropriate markings with its site support contractors, who are covered by confidentiality terms in their contract with DOE. NETL will not share proprietary information received under and NDA with other companies.