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 SPP 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 SPP 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 accommodate 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 viewed here(link is external).