DoD Technology Transfer ProgramFocus: Patenting and Licensing
Presentation to theJohns Hopkins Applied Physics Lab “Pizza & Patents”
Cynthia E. GonsalvesDoD Technology Transfer Program ManagerFebruary 11, 2003
http://www.dtic.mil/techtransit
Definition Technology Transfer (T2) is the intentional
communication of knowledge, expertise, facilities and equipment, and other resources for application to military and non-military systems. It includes: Spin-off activities demonstrating commercial viability of DoD-
developed technologies Spin-on activities demonstrating national security utility of
technologies developed outside DoD Dual-use science and technology that develops technologies
having both defense and non-defense applications
Technology Transfer
15 USC 3701-3715Ensure Full Use of the Result of the Nation’s Federal Investment in R&D
DoD Directive 5535.3• Domestic Technology Transfer Activities are Integral Elements of DoD’s National Security Mission• Must have a high-priority role in all DoD Acquisition Programs
Technology Transfer Mechanisms• Cooperative Research and Development Agreements (CRADAs)• Patent License Agreements (PLAs)• Educational Partnership Agreements (EPAs)• State and Local Government Partnerships (incl Partnership Intermediaries)• etc.
Why “do” Tech Transfer? 15 USC 3710(a)
“(1) It is the continuing responsibility of the Federal Government to ensure the full use of the results of the Nation’s Federal investment in research and development.”
10 USC 2514. Encouragement of technology transfer“(a) The Secretary of Defense shall encourage. . .the transfer of technology between laboratories and research centers of the DoD and other Federal agencies, State and local governments, colleges and universities, and private persons in cases that are likely to result in accomplishing the objectives set forth in section 2510(a) of this title.“(b) The Secretary shall examine and implement methods. . .that are consistent with national security objectives and will enable Department of Defense personnel to promote technology transfer.”
Why “do” Tech Transfer?
Federal Policy in 15 USC 3710: Technology transfer . . . Is a responsibility of each
laboratory science and engineering professional. Each lab director shall ensure that efforts to transfer
technology are considered positively in laboratory job descriptions, employee promotion policies, and evaluation of the job performance of scientists & engineers in the laboratory.
Establishment of Research and Technology Applications Offices (ORTAs)
Each Federal laboratory shall establish an ORTA
Practical Mechanisms forTechnology Commercialization
Cooperative R&D Agreements (CRADAs) Patent License Agreements (PLAs) Educational Partnerships State & Local Government Partnerships
Partnership Intermediary: MT (TechLink Center) Exchange of Personnel Work for Others Independent Research & Development (IR&D) Program Small Business Innovation Research (SBIR) Program
CRADAs – Total Active
Total
1,8001,9002,0002,1002,2002,300
FY98 FY99 FY00 FY01
Year
Qua
ntity
Numbers
Technology Funnel
AF 14% Army 26% Navy 60%
689
Useful
IP quality
Reduction
Prototype/data
Inventor & lab
Fields of use
Problem solve
Pros & cons
Risk & reward
Market atmosphere
DoD Patent License Agreements
0
50
100
150
200
250
300
FY 98 FY 99 FY 00 FY 01
ArmyNavyAir ForceNSAUSUHSTOTALS
YEAR
NU
MB
ER
DoD ROYALTY INCOME
$0.00$1,000,000.00$2,000,000.00$3,000,000.00$4,000,000.00$5,000,000.00$6,000,000.00$7,000,000.00
FY1989
FY1992
FY1995
FY1998
FY1999
FY2000
FY2001
ArmyNavyAir ForceNSAUSUHSTOTAL
YEAR
INC
OM
E
P.L. 106-404 Report Requirement
15 USC 3710(f): Reports on Utilization of Federal Technology Explanation of agency’s technology transfer program for
the preceding fiscal year (see next slide)
Agency’s plans for conducting its technology transfer function, including its plans for securing IP rights in lab innovations with commercial promise
Agency’s plans for managing IP so as to advance the agency’s mission & benefit U.S. industrial competitiveness
Patents and Licensing Plan/Report
Senate Report 107-151, SASC Report on Defense Auth Act Directs the Department to “develop a plan and to report to Congress
on specific strategies for marketing its intellectual property more aggressively and for exploiting the findings of the DDR&E report.” Include: Recommendations on staffing levels for appropriate IP experts Discussion on the role of ORTAs Descriptions of planned cooperative activities with the private sector
& other government agencies Analyses of any regulatory or statutory barriers to fully marketing DoD
IP Forecast the potential for increased revenues to the Department’s
labs as a result of more aggressive marketing efforts.
Technology Transfer
Baggage Screening Machine
(detect plastic explosives)
Chemiluminescent Lightsticks
Deicing Nozzle
iScreen
Benefits:Benefits:• Technology developed in DoD lab licensed to commercial firms • Military & Commercial applications produced on commercial line• Royalty income to labs
− $6.2M in FY 2001• Reduced cost of items to DoD
OSD PoC: Cynthia Gonsalves, ODUSD (AS&C)[email protected] 703-607-5315
http://www.dtic.mil/techtransit
Maximally Security Computer Network for Processing Highly Sensitive Data
Keopsys Fiber Amplifier
CRADA Funds
Cash-in
$0.000$10.000$20.000$30.000$40.000$50.000$60.000
Years
CR
AD
A In
com
e ($
in
M)
Cash-in
Intellectual Property Management Information System (IPMIS)
How does DoD manage IP? How SHOULD DoD manage IP? Why IPMIS?
Tracking, managing, & reporting inventions, patents, other IP, & related matters
Current: ONR working with Air Force Security
Target date for resolution: Navy, Air Force, Army/AMC commitment
Future
What is a CRADA?Cooperative Research & Development Agreement
Legally-binding agreement signed by Federal laboratory director
Partners may be: other Federal agencies units of State or local governments public & private foundations other persons industrial organizations nonprofit organizations
CRADAs allow: Federal lab to accept, retain, & use funds, personnel, services &
property from partner Federal lab to provide personnel, services, & use of property granting of patent licenses or options w/retention of government use waiving of rights to inventions except for government use former employees to participate in efforts to commercialize inventions Partner may choose prenegotiated field of use
Value Added to the Mission - CRADAsGeneral Findings
Many Labs see CRADAs as mission extenders CRADAs can:
provide a means for industry to talk openly with government advance research to points that would otherwise have taken
longer to achieve independently provide access to government/military facilities that are not
otherwise commercially available result in new, improved, or more cost effective
products/processes eliminate barriers arising as a result of a contract advance research for both partners leading to new
programs/contracts CRADAs continuing between organizations is an
indicator of progress
Value Added to the MissionDerived Insights
CRADAs do not take a simple linear route to commercialization and may only serve as one step in a series of steps along the route. Each partnership is unique in its process to meet its objectives Some partnerships are a continuation of an earlier contractual
agreement for the purposes of commercialization of a product Some CRADAs are specifically for PLAs, bringing dollars back to
the labs Some CRADAs leverage R&D dollars and make small advances
in a specific technology area which over time (and maybe many CRADAs later) may lead to a product/process which DoD can access.
NVESDLeveraging
R&D TI
R&D CommunityPublications
1
2
ModernTechnologiesCorporation
(MTC)
Air forceResearch
Lab(AFRL)
Industry &other
Government
$ Contract
$ Royalties
CRADALeveraging
Development $
$ Sales
Commercial Product
1
2
5
3
4
Motorola
Naval AirWarfareCenter
(NAWC)
Industry &
other Government
1st/2nd GenerationSoftware
$ Sales 1st/2nd GenerationSoftware
Game-relatedSoftware
$ Sales ofGame-related
Software
$ 2nd- generationsoftware at a discount
2nd- generationsoftware
Use of softwareDeveloped
Free of charge
LeveragingR&D
P.L. 106-404 Report Requirement (Details)
Explanation of agency’s technology transfer program for the preceding fiscal year: Information includes: # of patent applications filed # of patents received # of fully executed licenses receiving royalty income
exclusive, partially exclusive, or nonexclusive time from date license requested in writing to the date the license was
executed total earned royalty income, including stats:
total earned royalty income of top 1%, 5%, 20% range of royalty income median income
disposition of royalty income # of licenses terminated for cause other parameters relevant/unique to agency’s technology transfer practices
