[Federal Register Volume 73, Number 229 (Wednesday, November 26, 2008)]
[Notices]
[Pages 72036-72038]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-28187]
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DEPARTMENT OF ENERGY
Questions Concerning Technology Transfer Practices at DOE
Laboratories
AGENCY: Department of Energy.
ACTION: Notice of Inquiry; Technology transfer practices at Department
of Energy (DOE) laboratories.
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SUMMARY: DOE hereby publishes the following questions concerning
technology practices at DOE laboratories. Interested parties are
requested to answer some or all of the questions at their discretion.
In answering the questions parties are requested to identify whether
they represent a large business (> 500 employees), a small business, a
non-profit organization, a university, or other.
DATES: Written comments are to be received at the address listed below
no later than January 26, 2009.
ADDRESSES: Comments may be submitted electronically at: [email protected]; or by mail at: Office of the Assistant General Counsel
for Technology Transfer and Intellectual Property, U.S. Department of
Energy, 1000 Independence Ave., SW., Washington, DC 20585. ATTN:
TECHNOLOGY TRANSFER QUESTIONS.
FOR FURTHER INFORMATION CONTACT: Paul A. Gottlieb, Assistant General
Counsel for Technology Transfer and Intellectual Property, U.S.
Department of Energy, Forrestal Building, Room 6F-067, 1000
Independence Ave., SW., Washington, DC 20585; Telephone: (202) 586-
3439.
SUPPLEMENTARY INFORMATION:
Questions About DOE Laboratory Technology Transfer Seeking Input From
All Parties Including Industry, Universities, Non-Profits and the
General Public
As part of an ongoing review of technology partnering agreements at
Department of Energy (DOE) laboratories and facilities, DOE solicits
input from all parties including industry, universities, non-profits
and the general public on the following questions related to technology
partnering mechanisms utilized by DOE Laboratories and facilities:
1. Existing and Other Agreements (4 sub questions): The DOE labs
currently offer CRADAs, WFO Agreements, and User Agreements, all
briefly referenced below. The DOE Orders and model agreements for
CRADAs, WFO and User Agreements can be found at http://www.gc.doe.gov/lab_partnering.htm. Questions for Comment: (i) What improvements to
the existing transactions (e.g. CRADAs, WFOs, User Agreements, etc.)
would you suggest that DOE consider? (ii) Are there terms and
conditions that are troublesome and what steps might DOE take to
streamline these agreements? (iii) Are there other types of research
agreements or mechanisms that should be offered at DOE labs? (iv) How
would such new agreement types or mechanisms be an improvement on or
augment the existing agreements
2. Best Practices (2 sub questions) DOE is interested in improving
the ways the laboratories collaborate, and improving the transfer and
deployment of laboratory technologies into the marketplace. Question
for Comment: (i) Are there other agency, industry, non-profit or
university technology transfer ``best practices'' DOE should consider
adopting? (ii) What are they and how would they improve DOE's current
technology transfer program??
3. U.S. Competitiveness: (6 sub questions) Under Cooperative
Research and Development Agreements (CRADAs) with DOE labs and under
license agreements to lab inventions, the relevant statutes require
that a ``preference'' be given to companies who agree to manufacture
new inventions made under those agreements substantially in the U.S. As
a matter of DOE policy, DOE has imposed a stricter standard than that
required by statute under which every partner must agree to manufacture
new technology substantially in the U.S. or make a legally binding
commitment to provide an ``alternate net benefit to the U.S. economy.''
The DOE policy is more fully described in the DOE model
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CRADA at Article XXII and the guidance provided for that Article. This
standard is also more stringent than the standard imposed under 35
U.S.C. Sec. 200 et seq. (``Bayh-Dole'') for funding agreements with
Federal agencies. Bayh-Dole recipients may take ownership of new
technologies without limitation on their own manufacture, but must
agree not to assign or exclusively license those new technologies to
other parties who do not agree to substantially manufacture in the U.S.
DOE maintains its commitment to the U.S. economy, but is open to
streamlining negotiation of the U.S. Competitiveness issue in view of
the practical realities of a global economy. Questions for Comment: (i)
What alternate approaches to addressing U.S. competitiveness would you
suggest DOE consider? (ii) How would these alternatives help
transactions/interface with DOE facilities? (iii) background: For
example, one possible way to streamline this process is to forego a
legally binding commitment from any partner that has a ``substantial
presence'' in the U.S. This could be accomplished in a number of ways,
such as where a partner indicates in writing that it or its intended
suppliers will make best efforts to manufacture products resulting from
the agreement in the U.S., and provides factually supported statements
that it satisfies at least two of the following three factors: (1) The
partner has or plans to have a manufacturing facility in the U.S. where
its products resulting from the agreement will be manufactured; (2)
more than half of the partner's assets are located in the U.S. or it
derives more than half of its revenue or profits from the U.S.; and (3)
significant design and development (other than the CRADA) will be done
in the U.S. in an existing U.S. research facility. Another alternative
would be to limit the legally binding commitment for substantially
manufacturing in the U.S. to a specified number of years, e.g., 5
years. That would give the U.S. manufacturing facility a head start on
sales (and setting up supply chains) before manufacturing might be
moved offshore, as well provide some certain benefit to U.S.
competitiveness. (iii) Would any of these three be a useful approach to
industry to better streamline the process of the U.S. Competitiveness
negotiation process? (iv) Does DOE's current implementation of U.S.
Competitiveness have a negative impact on technology transfer? How? (v)
Would approaches taken by other Federal Agencies with regard to U.S.
Competitiveness in CRADAs be useful? If so, (vi) what are those
approaches and how are they implemented?
4. The Intellectual Property Rights disposition in Work For Others
(WFO) Agreements: (4 sub questions) Under WFO Agreements with DOE labs,
the sponsor may access highly specialized or unique DOE facilities,
services, or technical expertise. The sponsor pays the full cost of the
research with non-federal funds, and, with very limited exceptions may
elect ownership in any new inventions by lab employees. Those new
inventions are subject to a Government use license, March-In Rights,
and U.S. preference provisions in licensing of the patent rights. In
addition, at many laboratories the sponsor may mark all newly generated
data as proprietary. The current DOE model provides that the sponsor
retains title to lab inventions because the sponsor pays full cost and
bears all of the risk. On the other hand, one might argue that the
laboratory contractor should own the IP it develops because it would
allow the laboratory to better ensure full utilization of the
intellectual property for the benefit of the public and provide
additional benefits to inventors through laboratory royalty sharing
policies. If the laboratory owns such inventions, as is the norm under
sponsored research at most universities, it could also provide free use
of the inventions to non-profit research organizations and
universities. As a matter of general policy, the latter position is
reflected in the provisions in Bayh-Dole when government funding is
involved. One proposal aimed at satisfying both sides of the issue is
to modify the terms and conditions of DOE's WFO Agreements so that the
labs may retain title to lab employee inventions but grant the sponsor
a nonexclusive, royalty-free, non-transferrable, non-sublicensable
worldwide license in a field of use with no requirements concerning
U.S. manufacture, no Government use license where the Government is not
a likely user of the technology, and no March-In Rights. In addition,
the sponsor would be offered the opportunity to negotiate an exclusive
license in a field of use for reasonable compensation and consideration
of U.S. competitiveness. Question for Comment: (i) How would these
proposed changes affect the attractiveness of WFO Agreements? (ii) What
other options do you recommend for DOE to consider? (iii) What is the
desirable disposition of IP rights that would stimulate working with a
DOE laboratory or facility? (iv) Do the Government reserved license in
Sponsor inventions, March-In Rights, and U.S. preference clauses pose
any problems for a successful project?
5. Negotiable or Non-negotiable User Agreements: (3 sub questions)
DOE labs also offer User Facility Agreements under which parties may
gain access to designated unique lab equipment and facilities to
perform their own experiments. Under the Non-proprietary User
Agreement, which is aimed primarily at non-commercial, basic science
research, a user may access lab equipment/facilities and may
collaborate with lab scientists in carrying out its research. The user
and the lab share the costs of the research by each absorbing their own
costs, the lab and the user may elect to retain ownership of their
respective new inventions, and the research data is made publicly
available. The Proprietary User Agreement permits the sponsor to
conduct proprietary research using unique lab equipment/facilities. In
this case, the user pays the full cost of the research, and the user
retains ownership of research data and inventions. User Agreements have
been used successfully at labs for over 25 years. Typically User
Agreements have relatively short durations, their terms and conditions
are non-negotiable, and labs are authorized to enter into the
agreements without additional DOE approval. As such, execution takes
relatively little time. The most recent changes to these agreements
permit some terms and conditions to be negotiable, but changes require
DOE approval. These new Interim User Agreements and the class patent
waivers to which they are attached can be found at http://www.gc.doe.gov/1002.htm. Comments are solicited on the terms of these
agreements. Question for Comments: (i) Do you think these new DOE-wide
standardized User Agreement formats which allow for some negotiation
will promote more timely placement of User Agreements? (ii) Should DOE
allow some negotiability of the terms or utilize agreements that are
non-negotiable? (iii) Please describe the pros and cons of each
approach.
6. Are there any other issues, concerns, or experiences that could
make working with DOE laboratories and facilities more effective and
efficient.
Disclaimer
This RFI is issued solely for information and planning purposes and
does not constitute a solicitation. In accordance with FAR 15.202(e)
responses to this notice are not offers and cannot be accepted by the
Government to form a binding contract.
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Respondents are solely responsible for all expenses associated with
responding to this RFI. Respondents should not include any confidential
information in any information they furnish. Responses to the RFI will
not be returned. Respondents will not be notified of the result of the
review.
Issued in Washington, DC, on November 20, 2008.
Devon Streit,
Office of Science.
[FR Doc. E8-28187 Filed 11-25-08; 8:45 am]
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