CRADAs Under 15 U'S'C' 3710a

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CRADAs Under 15 U'S'C' 3710a

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There are a variety of tools for working with outside parties. The different tools are not in conflict ... RONALD REAGAN. The White House. April 10, 1987. 25 May 2004 ... – PowerPoint PPT presentation

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Title: CRADAs Under 15 U'S'C' 3710a

1
CRADAs Under 15 U.S.C. 3710a

Technology Innovation Legislation Applicable to
All Federal Agencies

2
Tools of T2

There are a variety of tools for working with
outside parties
The different tools are not in conflict
It is the responsibility of the laboratory with
the advice and review of legal counsel to select
the proper tool
A powerful tool for doing research with a
collaborator and/or teaching/learning from or/
with a collaborator is the Cooperative Research
and Development Agreement

3
History of Technology Innovation Legislation 1

1980
Stevenson-Wydler Technology Innovation Act (P.L.
96-480)
1st of a series of laws to define promote
technology transfer. S-W made it laboratory
mission to promote Technology Transfer (T2) and
set aside a portion of agency budget for T2.
Bayh-Dole Act (P.L. 96-517)
Created boundaries and allowed small business,
universities, and not-for-profit org. to own IP
from Federal Funded Research.

4
History of Technology Innovation Legislation 2

1982
Small Business Innovation Development Act (P.L.
97-219) (SBIR)
Established SBIR program requiring agencies to
set aside funds for small business RD.
1986
Federal Technology Transfer Act (P.L. 99-502)
Major legislation that created CRADAs and a
funding scheme for FLC

5
History of Technology Innovation Legislation 3

1987
Executive Order 12591
Facilitating Access to Science and Technology to
assist universities the private sector by
transferring technical knowledge.
Most important, 4 discuss the procedure for
dealing transferring information to a FOCI.
1988
Omnibus Trade and Competitiveness Act (P.L.
100-418)
Part of a series improving T2. established
Industrial Extension Services Information
clearing houses .

6
History of Technology Innovation Legislation 4

1989
National Competitiveness Technology Transfer Act
(P.L. 101-189)
Additional modifications of scope of CRADAs
specific clauses added for protection of Trade
Secrets as well as creating a Fed. Government
equivalent of trade secrets (FOIA exception).
1991
American Technology Preeminence Act (P.L.
102-245)
IP could be a contribution.
Excess equipment could be contributed to higher
Education.

7
History of Technology Innovation Legislation 5

1992
Small Business Research Development Enhancement
(P.L. 102-564)
Extended SBIR program established STTR program.
1994
National Department of Defense Authorization Act
(P.L. 103-160)
Broadened definition of a laboratory

8
History of Technology Innovation Legislation 6

1995
National Technology Transfer Advancement Act
(P.L. 104-113)
Major revisions to S-W Act making CRADAs more
attractive to laboratories, scientists and
private industry assuring them of IP rights in
joint research.
Increased Government inventors share of royalties
to up to 150,000.

9
History of Technology Innovation Legislation 7

2000
Technology Transfer Commercialization Act (P.L.
106-404)
Recognizes success of CRADAs and expanded
licensing authority.
Permitted licensing of background rights in
Government owned inventions without need to
advertise.
Reduced advertising period for Government
inventions to 15 days.

10
History of Technology Innovation Legislation 8

Each year, changes are often slipped into the
funding bills of DoD or DoE.
A bill is currently wending its way through
Congress that treats as an invention from one
party inventions made by collaborative research
so long as there is a formal agreement in writing
to do the research (exempt from consideration as
prior art).

11
Major Provisions of Title 15- Commerce
TradeChapter 63 Technology Innovation

3701 Findings
Central to economic etc. of US
Improve standard of living
Improvements occur at Government and University
labs need to be transferred to public through
cooperation and collaboration
Small business important to advancing innovation
Innovation in US maybe lagging

12
Major Provisions II

3701 Findings cont.
Increased innovation in US would reduce trade
deficit etc.
Government antitrust, economic, trade, patent,
procurement, regulatory, research and development
and tax policies have significant impacts on
industrial innovation
No comprehensive national policy exists need
domestic policy to better utilize technology at
Federal Government Labs
National interest to promote adaptation of
Federal innovation to State and local government
use.

13
Major Provisions III

3701 Findings cont.
The Federal laboratories and other performers of
federally funded research and development
frequently provide scientific and technological
developments of potential use to State and local
governments and private industry. These
developments, which include inventions, computer
software, and training technologies, should be
made accessible to those government and industry.
There is a need to provide means of access and
to give adequate personnel and funding support to
these means.
The Nation should give fuller recognition to
individuals and companies which have made
outstanding contributions to the promotion of
technology improvement of the economic,
environmental, or social well-being of the United
States.

14
Major Provisions IV

3702. Purpose
It is the purpose of this chapter to improve the
economic, environmental, and social well-being of
the United States by
(1) establishing organizations in the executive
branch to study and stimulate technology
(2) promoting technology development through the
establishment of cooperative research centers
(3) stimulating improved utilization of federally
funded technology developmentsby Stateand the
private sector

15
Major Provisions V

3702. Purpose (cont.)
(4) providing encouragement for the development
of technology through the recognition of
individuals and companies which have made
outstanding contributions in technology and
(5) encouraging the exchange of scientific and
technical personnel among academia, industry, and
Federal laboratories.
3703. Definitions see text

16
Major Provisions VI

3704. Commerce and Technological Innovation
Established a technology administration that
includes Nat. Institute of Standards Nat.
Technical Information Service a policy analysis
office known as Office of Technology Policy.
Among duties is Japanese technical literature
Experimental Program to Stimulate Competitive
Technology

17
Major Provisions VII

3704a. Clearinghouse for StateInitiatives on
3704b. National Technical Information Service
3704b-1. (NTIS) Recovery of Operating Costs
Through Fee Collections
3704b-2. Transfer of federal Scientific and
Technical Information (through NTIS)
3705. Cooperative Research Centers
3706. Grants Cooperative Agreements (in
support of this section)

18
Major Provisions VIII

3707. National Science Foundation Cooperative
Research Centers
3708. Administrative Arrangements
Sense of Congress that departments and
agenciesshouldsupport and participate in
activities or projects authorized by this
chapter.
3709. Repealed

19
Major Provisions IX

3710. Utilization of Federal Technology
(a) Policy
(1) It is the continuing responsibility of the
Federal Government to ensure the full use of the
results of the results of the Nations Federal
investment in research and development. To this
end the Federal Government shall strive where
appropriate to transfer federally owned or
originated technology to Stateand to the private
sector.
(2) Technology transfer, consistent with mission
responsibilities, is a responsibility of each
laboratory science and engineering professional.

20
Major Provisions X

3710. cont.
(3) Each laboratory 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 scientist and engineers in
the laboratory.
(b) Establishment of Research and Technology
Applications Offices (ORTA)
Each lab with 200 should have full-time
equivalent
Sufficient funding
Training

21
Major Provisions XI

3710. cont.
(c) Functions of Research and Technology
Applications Offices
(d) Dissemination of technical information (by
NTIS)
(e) Establishment of Federal Laboratory
Consortium for Technology Transfer (supported by
tax on RD )
(f) Agency reports on utilization (with budget
submission)
(g) Functions of Secretary (DoC)

22
Major Provisions XII

3710. cont.
(h) Duplication of reporting
(i) Research equipment
The Director of a laboratorymay loan, lease, or
give research equipment that is excess to the
needs of the laboratory, agency, or department to
an educational institution or nonprofit
organization for the conduct of technical and
scientific education and research activities.
Title of ownership shall transfer with a gift
under this section.

23
Summary to This Point

1. Congress thinks that research done at Federal
Labs is of value.
2. Congress thinks that transferring the Federal
funded research product to the private sector for
manufacture use in US will help US economy.
3. Yes! This is a wrap-yourself in the Flag type
of law.
4. Periodically, Congress wants a report on
CRADAs submitted to it with agency Budget request.

24
Major Provisions XIII

3710a. Cooperative Research Development
Agreements
(a) General Authority
Each Federal agency may permit the director
ofFederal laboratories
(1) to enter into cooperative research and
development agreements with just about anyone
except another foreign government and
(2) to negotiate licensing agreements under 207
of title 35 for inventions made or other
intellectual property developed at the laboratory

25
Major Provisions XIV

3710a. Cont.
(b) Enumerated authority
(1) laboratory may grant, or, in advance , to a
collaborating party patent licenses or
assignments, or options in any invention made
in whole or in part by a laboratory employee
under the agreement Navy policy prefers only
granting an option
Subject to 35 U.S.C. 209, can option or
license pre-existing Fed owned invention related
to Subject of CRADA
Pre-negotiated field of use.
If more than one party, collective license.
Government license.

26
Major Provisions XV

3710a(b)(1) cont.
(A) A nonexclusive, nontransferable, irrevocable,
paid-up license (Government license) from the
collaborating party to the laboratory to practice
the invention or have the invention practiced
throughout the world
Government shall not publicly disclose trade
secrets etc. or Government equivalent.
(B) If a laboratory assigns title
March-in-rights
(C) Government may exercise its right under
subparagraph (B) only in exceptional
circumstances with determination relating to
health and safety in view of non-performance

27
Major Provisions XVI

3710a(b)(2) cont.
(2) Under agreements pursuant to subsection
(a)(1) laboratory shall ensure that a
collaborating party may retain title subject
to Government license
Original existing statute language
3710a(b)(3)
(3) Under an agreement entered into pursuant to
subsection (a)(1) of this section, a laboratory
may-

28
Major Provisions XVII

3710a(b)(3) laboratory may - cont.
(A) accept, retain, and use funds, personnel,
services, and property from a collaborating party
and provide personnel, services, and property to
a collaborating party
(B) use funds received from a collaborating party
in accordance with subparagraph (A) to hire
personnel to carry out the agreement who will not
be subject to full-time-equivalent restrictions
(C) to the extent consistent with any applicable
agency requirements or standards of conduct
permit inventor to commercialize invention

29
Major Provisions XVIII

3710a(b)(3) cont.
(D) waive subject to Government license in
advance, in whole or in part, any right of
ownership Feds may have to any subject
invention made under the agreement by
collaborator
3710a(b)(4)
(4) A collaborating party in an exclusive license
in any invention made under an agreement entered
into pursuant to subsection (a)(1) of this
section shall have the right of enforcement under
chapter 29 of title 35.

30
Major Provisions XIX

3710a(b)(5)
(5) A GOCO provisions relating to GOCOs
3710a(c) Contract considerations
(1) A Federal agency may issue regulations
Navy has!
(2) The agency in permitting a Federal laboratory
to enter into agreements under this section shall
be guided by the purposes of this chapter. Hey,
go back and read 3702 again!!!!!

31
Major Provisions XX

3710a(c)(3)
(A) Any agency using the authority given under
subsection (a) of this section shall review
standards of conduct for its employees problem
areas in approving CRADAs and licenses and
receiving royalties are mentioned
(B) If, in implementing subparagraph (A), an
agency is unable to resolve potential conflicts
of interest propose necessary statutory changes
to be forwarded to its authorizing committees in
Congress.

32
Major Provisions XXI

(c) Contract considerations cont.
(4) The laboratory director in deciding what
cooperative research and development agreements
to enter into shall
(A) give special consideration to small business
firms, and consortia involving small business
firms and
(B) give preference to business units located in
the United States which agree that products
embodying inventions made under the (CRADA) or
produced through the use of such invention will
be manufactured substantially in the (US) FOCI

33
Major Provisions XXII

(c) Contract considerations cont.
(5)(A) If the head of the agency or his designee
desires an opportunity to disapprove or require
the modification of any such agreement presented
by the director of a Government-operated
laboratory, the agreement shall provide a 30-day
period
(B) In any case which the head of an agency
disapproves head shall transmit a written
explanation to the head of the laboratory
concerned.
(C) (D) both subparagraphs pertain to GOCOs

34
Major Provisions XXIII

(c) Contract considerations cont.
(6) Each agency shall maintain a record of all
agreements entered into under this section.
(7)
(A) No trade secrets or commercial or financial
information that is privileged or confidential
which is obtained in the conduct of research or
as a result of activities from a non-Federal
party participating in a CRADA shall be
disclosed. Note no time limit
(B) The director for a period of up to 5 years
after development of information that results
from CRADA that would have been trade secret
if from a non-Federal parties it can be
protected

35
Major Provisions XXIV

(d) Definitions cont.
As used in this section
(1) the term cooperative research and
development agreement means 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 not funds to
non-Federal parties) and the non-Federal parties
provide funds, personnel, services, facilities,
equipment, intellectual property, or other
resources toward conduct of specified research
consistent with the missions of the laboratory
except not a contract or cooperative agreement
under 31 U.S.C. 6303, 6304 6305

36
Major Provisions XXV

(d) Definitions cont.
(2) the term laboratory means
(A) 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
(B) specific to GOCO
(C) specific to GOCO
(3) specific to GOCO
(4) specific to DoE

37
Major Provisions XXVI

(e) Determination of laboratory missions
For the purposes of this section, an agency shall
make separate determinations of the mission or
missions of each of its laboratories.
(f) Relationship to other laws
Nothing in this section is intended to limit or
diminish existing authorities of any agency.
(g) Principles this is specific GOCO

38
Review to this Point 2

A CRADA can be signed by the laboratory CO or
designee in chain of command (Navy Policy).
A lab can accept money under a CRADA.
A lab can not fund the CRADA partner.
Conflicts of Interest should be avoided.
All DoN facilities (Navy USMC) that do test,
evaluation, research engineering are designated
as a laboratory for 15 U.S.C. 3710a. (Navy
Policy Determination)

39
A Comparison of Trade Secret Treatment
40
Executive Order 12591(a)

Section 1. Transfer of Federally Funded
Technology encourages T2
Section 2. Establishment of the Technology Share
Program
Section 3. Technology Exchange Scientists and
Engineers
Section 4. International Science and Technology
Requires review of T2 with FOCI

41
Executive Order 12591(b)

Section 5. Technology Transfer from the DoD
the Secretary of Defense shall identify a list
of funded technologies that would be potentially
useful to US industries and universities. The
Secretary shall then accelerate efforts to make
these technologies more readily available to US
industries and universities.
Section 6. Basic Science and Technology Centers
Section 7. Reporting Requirements
Section 8. Relation to Existing Law
RONALD REAGAN
The White House
April 10, 1987

42
Major Provisions XXVII

15 U.S.C. 3710b. Rewards for Scientific,
Engineering, and Technical Personnel of Federal
Agencies
Inventions, innovations, computer software, etc.
Exemplary activities that promote the domestic
transfer
15 U.S.C. 3710c.
long complicated system of sharing royalties
received by the Government for patented invention
with inventor(s).

43
Major Provisions XXVIII

15 U.S.C. 3710d. Employee Activities
(a) Where US can take title and declines, it can
be left with inventors subject to certain
conditions
(b) Special Government employees defined
(c) Relationship to other laws
15 U.S.C. 3711. National Technology Medal
15 U.S.C. 3711a. Malcolm Baldrige National
Quality Award
15 U.S.C. 3711b. Conference on Advanced
Automotive Tech.
15 U.S.C. 3711c. Advanced Motor Vehicle Rsch.
Award

44
Major Provisions XXIX