How to Establish and Manage a Technology Transfer Office

Dr. J. Scott Deiter Naval Surface Warfare

CenterAlbuquerque, New Mexico

April 26, 2010

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• Director of Technology Transfer Office, Naval Surface Warfare Center (NSWC), Indian Head Division, for 15 years

• Technology transfer responsibilities include: Marketing and licensing Navy intellectual property Negotiating CRADAs among the lab, industry, state and local

governments, and academia Outreach activities to develop partnering opportunities Interaction with partnership intermediaries

• FLC Chair (2007-Present)• ORTA Representative for NSWC, Indian Head Division• Regional Coordinator and Deputy Coordinator, FLC Mid-Atlantic

Region• Research Chemist at NSWC for 24 years

Dr. J. Scott Deiter

ORTA—Focal Point for Technology Transfer

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• Contact your Lab Director, OC, PA• Introduce yourself to your

management• Become aware of lab capabilities• Attend tech meetings• Seek competent HELP!

- Administrative and legal assistance

Know Your Lab Teammates

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Official Designations/ Authority• Official letter of appointment as ORTA

- Written confirmation of your position from the Director/Commander of the lab

• Authority to sign official correspondence related to ORTA

• Obtain copies of all delegations of authority for your lab- To enter into CRADAs, protecting agency inventions- Designation of tech transfer point of contact- SECNAVINST 5700.16A (for the Navy)

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Important Registrations• Become an FLC member

- Register as Lab Representative or ORTA representative

- Ensure lab voting rights- Attend meetings to make contacts and fill

Rolodex- Mentors for guidance

• Register as Lab Representative and/or ORTA representative with your agency

• Register within your FLC region, attend meetings

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Verified Voting Locations by RegionsCurrent Structure

ID 1

WA 4

OR 3

NV 2

CA 23

AZ 2

AK 0

HI 0

Far West 35

LA 1

KY 0

TN 3

MS 4 AL 6(7)

GA 2(3)

FL 11 (12)

SC 2

NC 5

Southeast 34 (37)

MN 0

WI 1

IL 5 IN 1OH 13

(14)

MI 1

Midwest 21 (22)

ND 1

SD 0

NE 1

OK 2

KS 1

AR 1

MO 2

IA 1

TX 9

MT 1

WY 1

CO 10

NM 4

UT 3

Mid-Continent 37

PA 6

Mid-Atlantic 88 (106)

MD 53 (60)

DE 0

VA 18(23)

WV 1(2) DC 10 (15)

NY 3

NJ 6CT 2

RI 2

MA 5

ME 0

VT 0 NH

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Northeast 19

PR 0

Note: ( ) denotes total labs plus agency reps.

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Know Duties of ORTA Rep• CRADAs

- Writing, negotiation, safekeeping original document- Knowing when to use CRADA vs. some other legal vehicle- CANNOT release funding and SOW to third party- Identifying nonprofits available for helping private

industry• Patents

- Writing, negotiating patent licenses• Maintaining latest versions of legal instruments• Develop an Invention Evaluation Board • Training scientists and engineers (S&Es) on CRADA and patent

processes (annually)

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Know Duties of ORTA Rep (Cont.)

• ORTA T2 training (through FLC, LES, AUTM)

• Market lab intellectual property (IP), capabilities

- FLC sponsors booth space at selected meetings

• Outreach (EDCs, state & local governments, private businesses)

• Identify and utilize EDCs, state nonprofits

• Find POCs within educational institutions for interaction

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BUILD A TECHNOLOGY TRANSFER

LIBRARY!!

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ORTA Handbook

• Legal foundation for the ORTA• Functions of ORTA• Technology transfer mechanisms• Federal T2 organizations• Nonfederal T2 organizations• Describes IP rights• T2 legislation and Executive Orders• Model CRADAs for GOGO and GOCO laboratories• Available on FLC website (free)

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Technology Transfer Desk Reference

• Tech transfer overview

• Role of FLC in T2

• CRADA legislative authority

• IP issues

• Available on FLC website (free)

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Federal Technology Transfer Legislation & Policy (“Green Book”)

• Technology innovation legislation highlights

• Legislation applicable to all federal agencies

• Special legislative provisions applicable to specific agencies

• Special provision language

• Executive orders

• Available on FLC website (free)

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Licensing References

• “Licensing - A Strategy for Profits”- Edward P. White, published by LES, 1997

• Licensing Executives Society- Negotiating techniques- IP valuation- Foreign licensing- Copyrights, trademarks, software- www.usa-canada.les.org

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FLC SERVICES AND PRODUCTS

FLC Communications• FLC website management• Monthly newsletter• Publications

- Technology for Today- FLC calendar- FLC awards booklet

• Roundtable management• Design of FLC promotional materials• FLC presentations

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FLC Website Main Page

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FLC Technology Locator

Mission: In cooperation with the federal laboratories, the FLC Technology Locator provides a clearinghouse for requests from businesses, industrial development organizations, state and local governments, academia, not-for-profit organizations, individuals, and other federal agencies and laboratories

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FLC Technology Locator Service• Connects all federal labs through e-mail service

• Used by nonfederal entities to solve problems, find expertise or unique facilities, find technologies

• E-mail sent from nonfederal entity to FLC Locator Service

• Locator Service sends e-mail with contents of need to all members of FLC registered as Lab Reps or ORTA

• Lab Rep or ORTA reviews request and replies if that lab can help solve the problem

• Service is free, fast-acting, valuable mechanism for finding solutions to needs

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FLC NewsLink

FLC Store

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SECURING LAB INTELLECTUAL PROPERTY

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ORTA IP Responsibilities• ORTA Rep has major responsibility for

identifying and protecting lab IP• Include ORTA signature line on route sheets

for papers and presentations OR copies of papers

• Read lab newspapers and agency highlights• Attend technical briefings• Brief management on need to protect IP• Monitor funding for basic research

- Remind scientists to contact you if invention made

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Secure Lab IP• Obtain disclosures from inventors

• Convene Invention Evaluation Board (IEB) meeting

• Make business decision to use federal funds to file for patent protection

• Lab patent attorney conducts prior art search

• Identify any commercial applications for inclusion in claims

• Obtain copy of patent application

• Obtain copy of filing with USPTO

• Determine if PCT coverage is necessary

• Federal government protects inventions with patents, but does not copyright any manuals, texts, etc. Navy does patent software

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Establish an Invention Evaluation Board• Board includes: ORTA Rep, patent attorney, and

knowledgeable scientist from each scientific department

• Board makes a business decision to spend lab funds (up to $8K or more) to attempt to patent an invention

• ORTA: Announces IEB meeting to all hands, develops agenda, with presentations from each inventor

• IEB votes on invention based on rating factors, and PA announces decision to inventors

• If IEB rejects an invention, the scientist keeps IP rights, but government keeps royalty-free right

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IEB Rating Factors• Navy needs/requirements – Degree to which invention addresses

need• Feasibility/use – Degree to which the invention could be expected

to be used by the Navy. Is it currently in actual use by the Navy?• Mission relevance – Degree to which the invention enhances the

core technical capabilities or status of the Division• Technological advancement – What is the relative significance of

the invention? Is it a pioneering invention? Is this a significant or a marginal improvement in the art, etc.?

• Degree of development – Has a working model been built? Has comparative testing been done?

• Dual use – Potential for commercialization, licensing (for income to the command and the inventor(s)), attracting CRADA partners, etc

• Affordability impact – To what degree could the invention be expected to reduce acquisition or life-cycle costs?

• Environmental impact – To what degree does the invention provide a positive impact on the environment?

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IP Management

• Get access to IP MIS (or comparable)- Access to filing, issue, maintenance dates

• Obtain market search tool(s)- Dun & Bradstreet information- iMarket marketplace software

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Use Novel Resources for IP Market Assessments • BE CREATIVE!• University of Baltimore “Lab to Market”

Program• Johns Hopkins University Business

Opportunities• Partnership intermediaries such as Tech Link,

Tech Match, First Link, Maryland TEDCO• Novel Venture Capital Groups

- Genesis Technologies

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The Omnipak™ - Container Technology for a New Age

Objective: Transfer, commercialize and transition container technology developed by the Navy for a new age in shipping

Benefits: • Saves DoD $millions yearly by reducing

packaging costs, damage to goods, injury• Eliminates unit load failure• Increases shipment size and security

Technology: A container technology that is highly durable, cost-effective and safe. The containers open easily for inspection and will greatly reduce any negative impact on the environment. They are collapsible, reusable, interlocking and built for all modes of shipping.

Participants: • Invented by the Indian Head Division of

the Naval Surface Warfare Center• Exclusively licensed to Baltimore

Shipping Technologies, Inc. by Navy Dir. of Technology (Dr. J. Scott Deiter, ORTA)

Status: • Baltimore Shipping Technologies

awarded $75K from TEDCO to develop prototype

• 1st commercial sale in June 2006• DoD will replace 120-plus pallets with

the OmniPak™ container technology

A new defense against a major bioterror threat while reducing DoD packaging and

shipping costs

OmniPak™

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Develop Marketing Tools• Tech transfer brochures

- Describe how to do business with your lab- Provide some success stories

• Technology one-pagers for technologies with commercial value

• Develop exhibition booth for technology transfer - IP with commercial value - Unique facilities - Unique expertise

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Federal Register Notices

• NOTICES MUST BE EXACT!• Get copies for:

- Notices of availability - Notices of intent to license- Notice of correction

john.deiter@navy.mil or JAG office for copies

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DEPARTMENT OF DEFENSEDepartment of the NavyNotice of Availability of Government-Owned Inventions;Available for LicensingAGENCY: Department of the Navy, DOD.ACTION: Notice.SUMMARY: The following inventions are assigned to the U.S. Government as represented by the

Secretary of the Navy and are available for licensing by the Department of the Navy. U.S. Patent Application Serial Number 11/009847 entitled “Multiple Shock Event Sensing

Device.” U.S. Patent Application Serial Number 11/040,291 entitled “MEMS Inertial Delay Device.” U.S. Patent Application Serial Number 10/826,791 entitled “Container, and Related Methods.” U.S. Patent Application Serial Number 11/040,300 entitled “MEMS Multi-Directional Shock Sensor.” U.S. Patent Application Serial Number 10/040,292 entitled “Method and Device for Clearing Firebreaks and Controlling Fire.” U.S. Patent Application Serial Number 11/010,701 entitled “Inhibition of Aluminum Oxidation Through the Vapor Depositions of a Passivation Layer and Method Thereof.”

ADDRESS: Requests for copies of the Patent Applications cited should be directed to the Naval Surface Warfare Center, Code CAB, 101 Strauss Avenue, Indian Head, MD 20640-5035.

FOR FURTHER INFORMATION, CONTACT: Dr. J. Scott Deiter, Head, Technology Transfer Office, Naval Surface Warfare Center Indian Head Division, Code CAB, 101 Strauss Avenue, Indian Head, MD 20640-5035, telephone (301) 744-6111.

Sample Federal Register Notice

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Appropriate Contacts For Non-standard Agreements• U.S. Trade Representative (as of March 18, 2009)

- Ron Kirkrkirk@ustr.eop.gov

• Federal Register- LCDR Ann Vallandingham, JAGC (as of January 2, 2009)USN, Office of the Judge Advocate GeneralAdministrative Law Division (Code 13)1322 Patterson Avenue SE, Suite 3000Washington Navy Yard, DC 20374

COMM: 703-614-7245 (DSN: 224-7245)

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Ethical Issues in Licensing• Who may become involved in developing a patent

license

- Inventor having an interest in the deal

• How is royalty income used?

• What is publicly available when reporting a CRADA?

• Responsibility for protecting proprietary information (invention disclosures)

• Potential issues dealing with Invention Evaluation Board

• Safekeeping of files, such as invention disclosures and original CRADA documents

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Maintain Databases

• Keep table of yearly metrics on:- Number of CRADAs (annual and cumulative

active)- Amount of CRADA funding- Number of patents- Patent royalty income- Number of patent licenses- Other legal instruments (PIAs, EPAs)

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DTTIS Database• Report T2 Agreements (CRADAs, patent licenses, etc.) to DOD

through Navy version of the Defense Technology Transfer Information System (DTTIS) database

• Within 30 days after agreement is signed, you must report the agreement through the Navy DTTIS

• DTTIS website URL is <www.onr.navy.mil/dttis>

• Accessing DTTIS

- Enter the DTTIS URL in the location box of your browser

- Click on the first link on the home page to go to the primary information Technology Transfer Database

Elizabeth McLaughlin at emclaughlin@dttis-onr.rk.anteon.com

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Tech Transfer Business Plan• List CRADAs, patents, licenses• Report metrics from databases• Report success stories• Present financial data• Fact sheets on success stories• Think about your future plans/add them

Keeping track of this info throughout the year will prepare you for numerous data calls!

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Tech Transfer Via Internet• Maintain tech transfer website

- Use as marketing tool for patents, patent applications

- Provide all forms and instructions- List patents and identify those with

commercial potential- Identify unique facilities- Describe partnering success stories

• Acquire tech transfer button on home page

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PARTNERSHIP INTERMEDIARIESAND

PARTNERSHIP INTERMEDIARY AGREEMENTS

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What is a PIA?

• Statutory authority is Title 15 U.S.C. Section 3715

• PIA is a contract or Memorandum of Understanding between a federal lab and an entity known as a partnership intermediary

• PIA provides for the partnership intermediary to perform services for the federal laboratory that increase the likelihood of success in the conduct of cooperative or joint activities with small business firms, institutions of higher education, or educational institutions

Partnership Intermediary Agreement

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Partnership Intermediary• Defined by organization’s “structure & function”

- Structure An agency of a state or local government, or A nonprofit entity owned, operated and

funded in whole or in part by state or local government

- Function Assist, counsel, advise, evaluate, or

cooperate with small business firms, institutions of higher education

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Examples of a Partnership IntermediaryTech Link: Dr. John Dennis, jdennis@montana.edu• Free, very successful, will help write FLC award nomination

packages, other

Foresight Science & Technology: Dr. Phyllis Speser phyllis.speser@foresightst.com

• Cost, GSA contractor, very successful, numerous offices

Nonprofits such as:• TEDCO • Franklin Partnerships• Any local economic development center• Universities with business marketing programs

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Example of Partnership Intermediary Maryland TEDCO• A nonprofit public corporation• Provides link between capabilities at federal lab and

technology needs of businesses throughout Maryland• Serves as intermediary to locate and advise on R&D

capabilities that may be made available to small businesses and universities

• Develops technology marketing programs and

showcases federal lab technologies • Sponsors activities and programs that showcase technology

and capabilities of small businesses and educational institutions which may be of interest to federal labs

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PIA BOILERPLATE

Contact ME for Navy version!! I’ll forward PIA boilerplate to you. Or Call your agency for appropriate boilerplate

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CRADAS vs. Work for Others

• Routine work conducted• Work description submitted, proposal

requested, cost estimate, time schedule, delivery package

• Must be proprietary subject to customer’s requirements

• R&D not conducted under Work for Others

10 USC 2539b, 2563

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Outreach Efforts

• Educate public on value of technology transfer

- Promote CRADAs

- Create awareness of patents available for licensing

- Promote awareness of capabilities, personnel, facilities

- Collaborate for problem solving

- Present at business, state and local government meetings

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For Technology Transfer Help

• Contact the Federal Laboratory Consortium for Technology Transfer

www.federallabs.org (856) 667-7727

Flc-all@flc2.federallabs.org (All FLC subscribers)

Flc-eb@flc2.federallabs.org (EB members)

Flc-votingNational@flc2.federallabs.org (national voting info)

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T2 Mechanisms Used by Federal Agencies

• See Federal Technology Transfer Mechanisms Database on FLC website

- www.federallabs.org/flc/education/t2-matrix

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CONTACT INFORMATION

J. Scott DeiterNaval Surface Warfare Center – Indian Head DivisionIndian Head, MD 20640E-mail: john.deiter@navy.milPhone: 301-744-6111