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Expanding federal intramural technology transfer

SBIR TT Program: A new approach to partnering accelerating federal technologies through effective SBIR relationships

June 27, 2012

Clara Asmailformer NIST SBIR Program ManagerSenior Technical Advisor, MEP

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Federal Technologies with commercial application

Technologies resulting from federal intramural research may have commercial viability but often require additional research that feds will not conduct

That research can at times be appropriate for a small business to undertake

Could be scoped to track the SBIR two-phase structure

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Goals of the SBIR Program(per legislation)

To increase private sector commercialization of innovations derived from federal R&D

To use small business to meet federal research and development needs

To stimulate small business innovation in technology

To foster and encourage participation by minority and disadvantaged persons in technological innovation

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SBIR TT Emphasizes an “increase in private sector commercialization of

innovations derived from federal R&D” per legislation

IDENTIFY: Background technology, ie commercially promising federal patents and technologies

- and -

the research gaps that delay their commercialization

Fund and orient innovations that build upon valuable federal background technology through open competition

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SBIR TT – IP considerations Some background technologies are in public domain .

If patented and available*, SBIR award will include a non-exclusive, royalty-free research license (ie, right to use/make only, no right to sell) for duration of ph1 award OR negotiate other terms* no CRADA obligation, no non-fed co-owner

Proposal acts as research plan for license application

Provide the opportunity of a non-exclusive commercialization license to the awardee (no deviation from 37 CFR 404)

Rights to all SBIR funded research will be owned by the small business awardee Gov’t use license reserved

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IP treatment for work performed under SBIR award

Trade Secret

If small business chooses to keep research results confidential, Gov’t will hold confidence for 4 years

Patent Protectionper 37 CFR 401

If small business chooses to seek patent protection, must disclose invention to agency and small business will own and retain rights

… Gov’t use right

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Typical NIST SBIR TT subtopic includes: Succinct description of the NIST’s background technology

- includes: citations to paper(s), issued patent or application as applicable, any other reference such as ppts, website

Focused description of research that must be conducted to advance NIST technology from bench to market

- includes specifications of end goals but not approach

Complete description and extent of NIST’s assets to be made available during SBIR project, ie collaboration on xyz area(s), materials, equipment, facility, …

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Results so far…

FY08

11 ph1

1 comm lic2 research lic’s

FY09

16 ph1

9 ph2

1 comm lic9 research lic’s+ 1 co-owned patent

FY10

2 ph1

2 ph2

1 research lic

Cumulatively: 29 NIST technologies11 research licenses & 2 commercialization licenses

Prevention of COI

Named inventors: may author subtopics may not participate in proposal review or selection may monitor project progress

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Explicit benefits of SBIR TT approach Systematically creates spin-outs dedicated to commercialization of

federal IP

Engenders the spirit of SBIR by enabling/supporting small business growth and accelerating commercialization

Expands S-W mandated federal technology transfer by providing new tool and channel for marketing

Access to background fed tech enhances the “vetted” credential of SBIR awardee for 3rd party funding

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Lessons Learned Press release trade journals

Launch year mistakes: two separate solicitations … poor techs inventory

Launch year successes: hand pick collaborative fed researchers … predetermined template license language embedded in awards

Follow on years success… word of mouth among fed researchers

Surplus techs licensing and/or collaboration leads

Manage expectations

SBC re licensing, access to fed researcher

Fed researcher re time commitment

Launch year: devoted ½ of budget to SBIR TT, opened 22 subtopics and only one received no proposals, made 11 SBIR TT awards

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Other agencies implementing SBIR TT: NIH (5 institutes) DOE and NASA working out last minute operations

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Other agencies exploring SBIR TT: Army DOT (FHWA, FAA) DOEd

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Clara AsmailSnr Technical AdvisorNIST MEP

301 975 2339asmail@nist.gov

Licensing of Gov’t-owned inventions

37 CFR § 404.2   Policy and objective.

It is the policy and objective of this subpart to use the patent system to promote the utilization of inventions arising from federally supported research or development.

§ 404.4   Authority to grant licenses.

Federally owned inventions shall be made available for licensing as deemed appropriate in the public interest and each agency shall notify the public of these available inventions. The agencies having custody of these inventions may grant nonexclusive, co-exclusive, partially exclusive, or exclusive licenses thereto under this part. Licenses may be royalty-free or for royalties or other consideration….

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Contract Management COTR duties centralized at SBIR Program

interfaces with CO, secures mgmt direction for technical monitoring, tracks project compliance with contract, manages invoice payments and

modifications, …

COTR relies on technical monitoring of projects by TR at intramural program level allowing for collaboration between researchers to not be impeded by administrative matters

TR drafts original subtopic for solicitation, identifies federal resources to be made available to awardee, reviews* proposals, collaborates with awardee according to predetermined & mgmt-approved extent, reviews progress

reports and consults with COTR re acceptability

*unless named inventor on a patent

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