Fundamentals Introduc1on to Technology Transfer and the FLC
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1 Fundamentals Introduc1on to Technology Transfer and the FLC Paul Zielinski Rockville, MD 21 April 2014
2 2 Paul Zielinski Director, NIST Technology Partnerships Office (TPO) Coordinator, Interagency Workgroup on Technology Transfer Chair, FLC Execu1ve Board
3 3 Federal technology transfer is the process by which exis1ng knowledge, facili1es, or capabili1es developed under federal research and development (R&D) funding are u1lized to fulfill public and private needs T2 can occur: Between government en11es Between the government and the private sector Federal technology transfer What Is Federal Technology Transfer? Results in commercializa1on of new products Enhances laboratory and/or agency mission objec1ves
4 4 Federal Tech Transfer: Examples Movement of technology from or into federal laboratory system to promote commercializa1on or mission accomplishment (i.e., technology spin- in and spin- out ) Mission- related technology transfer between government ac1vi1es Technical assistance Collabora1ve R&D among government, nongovernment ac1vi1es, and user communi1es Commercial technology transferred for government applica1ons
5 5 Legisla1ve History Stevenson- Wydler Tech. Innova:on Act (1980) Small Bus. Innova:on Dev. Act (1982) Fed. Tech. Transfer Act (1986) Omnibus Trade & Comp. Act (1988) Amer. Tech. Preeminence Act (1991) Tech. Trans. Comm. Act (2000) Bayh- Dole (1980) EO (1987) Natl. Tech. Trans. & Adv. Act (1995) White House Memo on T2 (2011) Natl. Comp. Tech. Trans. Act (1989)
6 6 Office of Research & Technology Applica1ons Focal Point for Technology Transfer
7 7 Common T2 Mechanisms Patent License Agreement Coopera1ve Research and Development Agreement (CRADA) FLC Matrix of Mechanisms*** mechanisms/
8 Patent License Defini:on: Contract between IP owner and another party that permits the licensee to use the IP in accordance with the terms of the contract, 35 USC 209 Intent is to bring inven1ons to prac1cal and broad commercial applica1on (make, use, or sell) Requires business/commercializa1on plan Exclusive, par1al and nonexclusive type licenses Other highlights: Manufactured substan1ally in U.S. Preference to small businesses USG retains nontransferrable, irrevocable, paid- up license to prac1ce or have prac1ced on behalf of USG Royal1es only paid when end item sold to nonfederal en11es Ofen 1ed to CRADAs
9 9 Common T2 Mechanisms Collegial exchange - public disclosure/release of informa1on through: Informal and free exchange of informa1on among colleagues Laboratory open houses Presenta1ons at technical or professional conferences Ar1cles published in technical journals Cau1on should be taken not to disclose informa1on prematurely if patent applica1on or proprietary data involved Nondisclosure/authorized use agreements
10 10 Common T2 Mechanisms Other mechanisms available at agency level include: Educa1onal Partnership Agreement Partnership Intermediary Agreement Personnel Exchange
11 11 Common T2 Mechanisms (Cont.) Other mechanisms available at agency level include: Work for Private Party (Others) Agreement Use of Facili1es Agreement Memorandum of Agreement/Interagency Agreement Other Transac1ons Commercial Test Agreement Material Transfer Agreement Commercial Service Agreement
12 Discovery NSWC Crane IP- Oriented T2 Model IEB Protection Marketing Transfer IP Mining* Presentations Publications Training Tech Reviews Contracts (882s) CRADAs Prosecution Through Issuance Sources: Inventors Natl. & Local PIAs University Partners Workshops ORTAs Navy T2 Pilots Content: Tech Ops* Market Studies* Market Analysis* Business Plans* Eureka!Ranch* Brochures Tech Shorts* Videos Military-to-Market Business Translation Licenses * CRADAs * NDAs * Contracts Work With Private Parties Channels: PIAs (local/natl.)* Websites* Road shows* Showcases* Conferences* One-on-ones* * PIA involvement
13 13 Selected T2 Organiza1ons Federal Laboratory Consor1um for Technology Transfer (FLC): State Science and Technology Ins1tute (STTI): Na1onal Technical Informa1on Service (NTIS): Defense Technical Informa1on Center (DTIC): Assoc. of University Technology Managers (AUTM): Licensing Execu1ves Society (LES): America s Small Business Development Center Network (America s SBDC): us.org ***More at
14 14 Economic Impact: DOD T2 Studies to improve the economic, environmental & social well-being of the U.S. Indiana University study: 103 Navy T2 deals Results Economic ac:vity $545M Tax revenue $60M Jobs 2,630 Avg. salary $79.3K TechLink study: 600 DOD licenses Results Sales $13.4B new service and/or products Economic ac:vity $36.3B Jobs 163,067 Avg. salary $65,000
15 15 What Is the FLC? The FLC is the only government- wide forum for technology transfer
16 16 What Is the FLC? (Cont.) Formally chartered by Congress under the Federal Technology Transfer Act Composed of technology transfer professionals from more than 700 federal laboratories, their respec1ve agencies, and affiliated organiza1ons 18 departments and agencies par1cipate, conduc1ng $ billions in R&D annually and employing over 100,000 scien1sts & engineers
17 17 FLC Vision Ac1vely promote the fullest applica1on and use of federal research and development by providing an environment for successful technology transfer Be the recognized leader in maximizing collabora1ve research and transferring federal technologies to enhance the socioeconomic well- being of the na1on in the global marketplace
18 18 FLC Mission To add value to the federal agencies, laboratories, and their partners to accomplish the rapid integra1on of research and development resources within the mainstream of the U.S. economy
19 19 FLC Statutory Mandates 15 USC 3710(e)(1) mandates the following: (A) Develop and administer technology transfer techniques, training courses, and materials to increase the awareness of Federal laboratory employees regarding the commercial poten>al of laboratory technology and innova>ons; (B) Furnish advice and assistance by federal agencies and laboratories for use in their technology transfer programs (See Green Book, pp )
20 20 FLC Statutory Mandates (Cont.) (C) Provide a clearinghouse for technical assistance from state and local governments, business, industrial development organiza1ons, not- for- profit organiza1ons, including universi1es, federal agencies and laboratories, and other persons, and. (D) Facilitate communica>on and coordina>on between ORTAs of Federal laboratories (E) U1lize the exper1se and services of the Na1onal Science Founda1on, the Department of Commerce, NASA, and other federal agencies as necessary
21 21 FLC Statutory Mandates (Cont.) (F) Facilitate the use of appropriate technology transfer mechanisms (G) Assist laboratories with establishing programs using technical volunteers to provide technical assistance to local communi1es (H) Facilitate communica>on and coopera>on between federal laboratory ORTAs and regional, state, and local technology transfer organiza>ons (I) Assist colleges or universi>es, businesses, nonprofit organiza>ons, state or local governments, or regional organiza>ons with establishing programs to s>mulate research and to encourage technology transfer
22 22 FLC Statutory Mandates (Cont.) (J) Seek advice in each FLC region from representa1ves of state and local governments, large and small businesses, universi1es, and other appropriate persons on the effec1veness of the technology transfer program (K) Work with the Director of the Na1onal Ins1tute on Disability and Rehabilita1on Research to compile a compendium of current and projected federal laboratory technologies and projects with an impact on assis1ve technology for individuals with disabili1es
23 23 FLC Objec1ves Make broader use of the technologies and exper1se developed in federal laboratories Focus on interagency/interlaboratory interac1on Emphasize technology transfer through person- to- person mechanisms Enhance communica1on Leverage R&D investments Improve and innovate the technology transfer process
24 24 FLC Strategies Create innova1ve partnerships Influence technology policy Op1mize diverse resources Strengthen the FLC structure Establish a clearinghouse for technical assistance requests from federal agencies, labs, etc. Lead the vision Project a posi1ve and consistent image
25 Departments Agriculture Commerce DOD: Army, Navy, Air Force Educa1on Energy Health and Human Services Homeland Security Interior Jus1ce Labor Transporta1on Veterans Affairs FLC Membership Agencies Central Intelligence Agency Environmental Protec1on Agency Na1onal Aeronau1cs and Space Administra1on Na1onal Science Founda1on Smithsonian Ins1tu1on Tennessee Valley Authority Na1onal Ins1tute of Standards and Technology (NIST) serves as host agency for finances
26 26 FLC Structure General Membership Agency Representa:ves Execu:ve Commifee/ Execu:ve Board Standing Commifees Na:onal Advisory Council Chair Vice- Chair DC Liaison Northeast Region Mid- Atlan:c Region Southeast Region Midwest Region Mid- Con:nent Region Far West Region
27 27 FLC Regions Provide improved communica1on and accessibility to individual labs in each region Midwest Northeast Far West Mid- Atlan:c Mid- Con:nent Southeast
28 28 FLC Commisees Planning & Policy Standing Commisees - Educa1on & Training - Communica1ons Get involved - Awards join a - Legal Issues commi0ee! - Program - State & Local Government Special Commisees ad hoc (elec1ons, etc.)
29 29 FLC Educa1on & Training Training at na1onal and regional mee1ngs Technology Transfer Desk Reference Federal Technology Transfer Legisla>on and Policy ( Green Book ) T2 Mechanisms Matrix/Database Online courses and webinars T2 Training DVD Set
30 30 FLC Communica1ons FLC website communica1ons FLC on Social Media (Twiser, Facebook, LinkedIn, YouTube) FLC NewsLink (online) Trade show exhibits
31 FLC Website 31
32 32 FLC Technology Locator The Technology Locator personalized guidance Reviews and routes requests from poten1al partners to the appropriate resource Uses network of representa1ves and online resources to put poten1al partner in contact with the right federal laboratory POC: Frank Koos
33 33 FLC Technology Locator (Cont.) Available Technologies online search tool Scans available technologies across the federal lab system to locate most relevant licensing opportuni1es You can download or print search results or create a login to save frequent queries
34 34 FLC Mee1ngs Na<onal Mee<ng - One annual na1onal mee1ng, highlights include: Training Awards Relevant T2 topics Expert panels Networking Regional Mee<ngs - Promote networking and ac1vi1es within the six FLC regions
35 35 FLC Awards Excellence in Technology Transfer Interagency Partnership Outstanding T2 Professional Laboratory Director State & Local Econ. Development STEM Rookie of the Year Service Awards - Harold Metcalf - Lab Rep of the Year - Outstanding Service Be a reviewer!
36 36 Tech Transfer Works: Selected Success Stories
37 Mobile Personal Theater PNNL - Real Vision Head- Mounted Display: High- quality, low- cost, comfortable, immersive, 3D experience Avegant licensed; PNNL supported development Glyph launches this year to high demand over $1.5 million raised on Kickstarter to produce Headlines:
38 NeuVax Breast Cancer Vaccine USU transferred E75 vaccine technology to Galena Biopharma to create NeuVax T2 mechanisms included license agreement, NDA, clinical trial agreement NeuVax uses the pa1ent s immune system to fight cancer Now in Phase III trials, NeuVax could prevent 50% of breast cancer recurrences, save up to 20,000 lives per year Headline: Image: Galena 38
39 Pteros1lbene Pteros1lbene, a compound found in blueberries, supports healthy mind and body func1ons USDA licensee ChromaDex launched pteros1lbene on the market as pteropure Featured in BlūScience dietary supplements, sold at major drugstores Result: From , annual sales of pteropure increased by 1100%, to $3 million per year Source: 39
40 Geothermal Heat Pump Under a CRADA, ClimateMaster and ORNL developed an integrated heat pump system, introduced to the U.S. market as the Trilogy 40 Q- Mode It can reduce electricity consump1on by 80% and save a typical residence or small business as much as 65% The system won an R&D 100 award in 2013 Headlines:
41 Ultrashort Pulse Laser Technology NSWC Crane s ultrashort pulse laser technology removes material more cleanly and precisely than ever before Partners gained access through CRADAs, EPAs, PIAs Results: Startup of 2 new businesses 30% greater fuel efficiency in automo1ve fuel injectors Eye surgery improvements Stronger screens for consumer electronics Military uses Photo: NSWC Crane
42 Thank You! We hope you enjoy the training and the annual mee1ng The FLC is only as good as its members please play an ac1ve role Contact Info: Paul Zielinski
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