Substantial physics, engineering, and technological efforts have been required to build and operate magnetic fusion devices. This work has led to advances in the state of the art in a host of disciplines, including vacuum technology, mechanics and materials science, electronics, computer technology, and high-voltage power systems. The technological advancements arising out of magnetic fusion research are applicable to many other fields, including aerospace, defense, manufacturing, data processing, communications, and the power industry.
The transfer of technology to private industry, academic institutions, and other federal laboratories is one of the missions of the Princeton Plasma Physics Laboratory (PPPL). As a technology resource, PPPL seeks to provide its unique expertise to solutions of industrial problems. PPPL has also endeavored to enhance its contact with area small businesses and to provide technological help and guidance where possible. In addition, PPPL participates in the U.S. Department of Energy Technology Partnership Ombuds Initiative.
The PPPL Office of Technology Transfer is the initial point of contact for public and private organizations wishing access to PPPL's scientific and technological resources. The Office of Technology Transfer is prepared to assist industry, universities, state and local government, and others in the transfer process.
Working with PPPL: while the Plasma Physics Laboratory cannot compete with the private sector, there are numerous ways to partner to access our unique capabilities
• Cooperative Research and Development Agreement (CRADA)
• Work for Others (WFO) Agreement
• Technical Assistance (TA) Agreement
• Collaboration on proposals and on pre-proposal efforts
• Technology Licensing Agreement
• Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) proposal cooperation.
COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENTS (CRADA)
A CRADA is a collaborative agreement that allows the Federal Government and non-federal partners to optimize their resources, share technical expertise in a protected environment, access intellectual property emerging from the effort, and advance the commercialization of federally developed technologies. Industry partner(s) must provide research funds or in-kind contributions which may include personnel, services, facilities, equipment, intellectual property or other resources. The Laboratory may provide personnel, services, facilities, equipment, intellectual property or other resources. While, the Laboratory may also provide funds to support the CRADA activities, the Laboratory does not provide funds directly to the partner. Each party retains title to its own inventions. An option to negotiate an exclusive license to the Laboratory’s CRADA inventions in a specified field of use is typically granted to the industry partner; any resulting license will be granted in exchange for reasonable compensation. CRADA-generated information that is not patentable may be kept confidential for up to 5 years. The CRADA Participant indemnifies the Government and the Contractor operating the Laboratory (Princeton University) for product liability and the Government and the Contractor disclaim all warranties to work performed under a CRADA. An Advance Payment is required before work can begin. This requirement was recently reduced from 90 to 60 days. Advance payment requirements may be waived for state and local governments that have a constitutional prohibition.
WORK FOR OTHERS AGREEMENT (Non-Federal)
A WFO Agreement is a fee for service contract that enables Industry, non-profit institutions and other non-federal entities to pay the Laboratory to perform a defined scope of work or tasks that draws upon the unique facilities, equipment, and personnel of the Laboratory. Rights to the inventions and data that arise under such a contract will typically vest in the sponsor if the sponsor is a US entity and pays for the work with private funds. If the sponsor is subcontracting federal funds to the national laboratory or the sponsor is a non-US entity, the rights in the intellectual property will typically vest with the laboratory. These dispositions can be varied based upon a variety of circumstances and are contingent upon approval from DOE. In all cases, the Government will retain a royalty-free license in Subject Inventions (inventions conceived or first actually reduced to practice under the WFO) for use by or on behalf of the government. Typically, this license is a broad license that enables the Government to use or enable others to use the inventions for any government purpose. However, a more limited Government research license may be obtained instead of the broader license upon DOE Patent Counsel approval. If a limited research license is applied, then the Government retains expanded data rights. The Laboratory cannot expend government resources without an appropriate allocation or set aside of funding to pay for those expenditures. Therefore, an Advance Payment is typically required before any work can begin on the project. The size of this set aside was recently reduced from 90 days to 60 days of expected cost. State and local governments that have a constitutional prohibition against such advance payments may obtain a waiver of this requirement from DOE. WFO Agreements are “best efforts” contracts and the Sponsor receives no warranties for work performed under a WFO Agreement, and the Government and the Contractor operating the Laboratory are indemnified for certain risks including product liability. These are also full cost reimbursement contracts, so while a particular quantity may be agreed upon at the outset, all costs incurred in performing the work must be reimbursed by the sponsor. In the event that funds are exhausted the project may also be terminated. In view of these facts, successful WFO projects typically require communication between industry and the lab and an agreement on funding levels and sources before starting the WFO agreement process.
Nondisclosure Agreements (NDA) can easily be put in place to protect a partner’s proprietary information prior to the initiation of any work or even at the discussion stage if necessary. Please contact the Technology Transfer Office at LMeixler@PPPL.gov, or telephone 609-243-3009 for more information.
TECHNOLOGY LICENSING AGREEMENT
Intellectual Property (IP) developed by the Princeton Plasma Physics laboratory is typically held and licensed by the Princeton University for the Laboratory. A licensing agreement typically provides commercialization rights to patented and/or copyrighted IP developed at the Plasma Physics Laboratory. Due to the unique set of laws and policies governing the licensing of federally funded research and DOE policies regarding intellectual property, licensing agreements for technology developed at DOE Laboratories have some provisions that may not be present in a license agreement between private entities, including march-in-rights, government use rights, and indemnification policies. A Guide to Licensing and Sample License has been created to describe a “typical” DOE Laboratory IP license agreement in order to provide prospective licensees with an understanding of the terms and conditions found in most DOE laboratory IP license agreements. This guide is available at the following link:
Typical financial and milestone terms present in a commercial license include:
• An issue fee, which is non-refundable and due upon execution of the agreement
• A running royalty, which is most commonly based on a percentage of sales
• A minimum annual royalty
• Other financial terms appropriate to the technology and market, such as milestone payments and patent cost reimbursements
• Equity ownership terms which may be negotiated in some cases in lieu of cash payments
• Milestone commitments for development (e.g. alpha & beta products) and introduction of commercial product in marketplace
Licenses may be exclusive for a particular field of use or geographic region, or non-exclusive.
Most of the technologies available for licensing will require additional development before they are commercially viable. An Option Agreement is available that protects an entity’s right to license a technology at a future time. Option Agreements are generally available for a limited time period. In some cases it may be possible to extend the Option Agreement if sufficient milestones towards making the technology commercially-viable have been met. See the PPPL Patent and Disclosure database of technologies available for licensing.
SMALL BUSINESS INNOVATION RESEARCH AND SMALL BUSINESS TECHNOLOGY TRANSFER
Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) are U.S. Government programs in which federal agencies with large research and development (R&D) budgets set aside a small fraction of their funding for competitions among small businesses only. Small businesses that win awards in these programs keep the rights to any technology developed and are encouraged to commercialize the technology. Only U.S. small business concerns (SBCs) are eligible to submit SBIR and STTR applications. Joint ventures, as defined in “Appendices/Reference Material,” may apply, provided the entity created also qualifies as a small business at the time of the award. An SBC is one that, at the time of award for both Phase I and Phase II SBIR/STTR awards, meets all of the following criteria:
• Organized for profit, with a place of business located in the United States (U.S.), which operates primarily within the U.S. or which makes a significant contribution to the U.S. economy through payment of taxes or use of American products, materials or labor;
• In the legal form of an individual proprietorship, partnership, limited liability company, corporation, joint venture, association, trust or cooperative, except that where the form is a joint venture, there can be no more than 49% participation by foreign business entities in the joint venture;
• At least 51% owned and controlled by one or more individuals who are citizens of, or permanent resident aliens in, the U.S., or it must be a for-profit business concern that is at least 51% owned and controlled by another for-profit business concern that is at least 51% owned and controlled by one or more individuals who are citizens of, or permanent resident aliens in, the U.S. (except in the case of a joint venture, where each entity to the venture must be 51% owned and controlled by one or more individuals who are citizens of, or permanent resident aliens in, the U.S.); and
• Has, including its affiliates, not more than 500 employees and meets the other regulatory requirements found in 13 CFR Part 121. Business concerns, other than investment companies licensed, or state development companies qualifying under the Small Business Investment Act of 1958, 15 U.S.C. 661 et seq., are affiliates of one another when either directly or indirectly, (a) one concern controls or has the power to control the other; or (b) a third-party/ parties controls or has the power to control both. Control can be exercised through common ownership, common management, and contractual relationships. The term "affiliates" is defined in greater detail in 13 CFR 121. The term "number of employees" is defined in 13 CFR 121.
Grant applications submitted to a DOE SBIR/STTR Funding Opportunity Announcement (FOA) by small businesses must be responsive to a specific Topic and Subtopic as included in the open FOA. These topics may be found on the DOE SBIR/STTR web page "Funding Opportunities. " SBIR/STTR programs have three distinct phases listed below:
• At DOE, Phase I explores the feasibility of innovative concepts with awards up to $225,000 over 9 months.
• Phase II is the principal R&D effort, with awards up to $1,000,000 over two years. NOTE: Only DOE Phase I award winners may compete for DOE Phase II funding.
• Phase III offers opportunities to small businesses to continue their Phase I and II R&D work to pursue commercial applications of their R&D with non-SBIR/STTR funding. Under Phase III, Federal agencies may award noncompetitive, follow-on grants or contracts for products or processes that meet the mission needs of those agencies, or for further R&D.
Under SBIR Phase I a minimum of two-thirds of the funded research or analytical effort must be performed by the grantee; a maximum of one-third of the effort may be performed by consultants or subcontractors, including the DOE’s Government-owned Contractor Operated (GOCO) National Laboratories such as PPPL. Under SBIR Phase II a minimum of one-half of the research and analytical effort of Phase II must be performed by the grantee and up to one-half of the research or analytical effort may be performed by consultants or subcontractors.
Under STTR Phase I and II a minimum of 40% of the work must be performed by the small business and at least 30% of the work must be performed by the nonprofit research institution partner. Such institutions include Federally Funded Research and Development Centers (FFRDCs), all of DOE’s National Laboratories with the exception of NETL, universities, teaching hospitals, and other non-profits.
A minimum of 40% of the funding, excluding any purchased or leased equipment, materials, and supplies, must be allocated to the small business; a minimum of 30% of the funding, excluding any purchased or leased equipment, materials, and supplies, must be allocated to the research institutions.
In addition, there are also some SBIR/STTR topics that include a Technology Transfer Opportunity (TTO). A Technology Transfer Opportunity (TTO) is an opportunity to leverage technology that has been developed at a DOE National Laboratory. Typically the technology was developed with DOE funding of either basic or applied research at a DOE National Laboratory and is available for transfer to the private sector. The level of technology maturity will vary and applicants are encouraged to contact the appropriate Laboratory prior to submitting an application.
FREQUENTLY ASK QUESTIONS
Question #1: Why does DOE retain a government-use license and march-in rights?
Answer #1: Retention of these rights in agreements involving federally-funded research is required by law. The Government license is viewed as recognition of the Government investment that created the facility and the research from which the technology arises. March-in rights are retained by the Government to assure that technology arising from laboratories is made available to the public. Should a laboratory licensee or CRADA partner abandon use or dissemination of the technology yet retain a license to the technology, the government has the right to require the partner to license to a third party, who is interested in commercializing the technology, at a reasonable royalty.
Question #2: How can companies protect their confidential and proprietary information while working with the DOE national laboratories?
Answer #2: CRADAs and WFO arrangements can be contracted to contain provisions addressing protection of a partner’s proprietary data. In addition, Nondisclosure Agreements (NDA) can easily be put in place to protect a partner’s proprietary information prior to the initiation of any work or even at the discussion stage if necessary. While a company’s proprietary information agreement template can be used as a starting point the nature and contractual requirements of the National Laboratories will require amendments and the use of the standard agreement offered by the Laboratory of interest often expedites the signature of these agreements. Data generated in the performance of a CRADA can be protected from public release by the laboratory or the Government for five years. It is important that companies mark all of the information that they provide to the laboratories’ staff in accordance with the agreements between the parties for protection of data. Data generated under a WFO can be kept proprietary by the Sponsor indefinitely in many cases.
Question #3: How can the intellectual property interests of multiple collaborators be accommodated?
Answer #3: There are examples of successful multi-party collaborations that accommodated the interests of various organizations, including multiple DOE laboratories. Clear communications and up-front negotiations of intellectual property rights can help save time. For example, in the alternative feedstocks for chemicals program, five laboratories set up agreements for sharing intellectual property among themselves and with a company. The intellectual property developed by one laboratory was used by other laboratories, and the company benefited from inventions at several laboratories.
Question #4: Why are liability provisions in user agreements of Management and Operating (M&O) contractors so complex and frequently different from conventional commercial provisions?
Answer #4: Government laboratories are taxpayer-funded and self-insured, therefore, they must be limited in their ability to indemnify third parties.
Question #5: How long does it take to negotiate a license?
Answer #5: This varies from negotiation to negotiation and technology to technology. It generally takes from a few weeks to a few months.
Question #6: How much does a license cost?
Answer #6: This varies depending on the market value of the technology, common licensing practices in the relevant industrial sector, additional development costs involved in bringing the technology to market, and the scope of the field of use or geographic region.
Question #7: Are licenses available to non-U.S. companies?
Answer #7: Yes, although as federally-funded facilities, DOE’s National Laboratories and Facilities, have a preference to license to U.S. companies and an obligation to consider US competitiveness in all license agreements. The requirement for U.S. competitiveness can be satisfied by either substantially manufacturing in the United States or by having a business unit in the United States and providing a significant economic and technical benefit to the United States. All DOE Laboratories are also required to include an export control clause in their license agreement. This clause simply states that the Licensee agrees to comply with export control laws designed to protect items and information important to the United States.
Question #8: I am interested in working with a National Lab on my particular technology. What is the best way to determine which lab(s) are doing research in my technology area?
Answer#8: The Federal Lab Consortium (FLC) has set up a Technology Locator tool to put a potential partner in contact with a federal laboratory with expertise and capability in a specific area of interest. This Technology Locator service may determine that a federal lab outside of the DOE laboratory system is best suited to work on the specific interest, in which case different agreements and requirements may be applicable. The FLC Technology Locator can be found on the FLC WEB site www.federallabs.org.
Send questions or comments to L. Meixler (firstname.lastname@example.org)