How to Establish and Manage a
Technology Transfer Office
Dr. J. Scott Deiter
Naval Surface Warfare Center
Albuquerque, New Mexico
April 26, 2010
Dr. J. Scott Deiter
• Director of Technology Transfer Office, Naval Surface Warfare
Center (NSWC), Indian Head Division, for 15 years
• Technology transfer responsibilities include:
 Marketing and licensing Navy intellectual property
 Negotiating CRADAs among the lab, industry, state and local
governments, and academia
 Outreach activities to develop partnering opportunities
 Interaction with partnership intermediaries
• FLC Chair (2007-Present)
• ORTA Representative for NSWC, Indian Head Division
• Regional Coordinator and Deputy Coordinator, FLC Mid-Atlantic
Region
• Research Chemist at NSWC for 24 years
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ORTA—Focal Point for
Technology Transfer
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Know Your Lab Teammates
• Contact your Lab Director, OC, PA
• Introduce yourself to your
management
• Become aware of lab capabilities
• Attend tech meetings
• Seek competent HELP!
- Administrative and legal assistance
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Official Designations/
Authority
• Official letter of appointment as ORTA
- Written confirmation of your position from the
Director/Commander of the lab
• Authority to sign official correspondence related to
ORTA
• Obtain copies of all delegations of authority for your
lab
- To enter into CRADAs, protecting agency inventions
- Designation of tech transfer point of contact
- SECNAVINST 5700.16A (for the Navy)
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Important Registrations
• Become an FLC member
- Register as Lab Representative or ORTA
representative
- Ensure lab voting rights
- Attend meetings to make contacts and fill
Rolodex
- Mentors for guidance
• Register as Lab Representative and/or ORTA
representative with your agency
• Register within your FLC region, attend
meetings
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Verified Voting Locations by Regions
Current Structure
WA 4
MT 1
ME 0
ND 1
MN 0
OR 3
ID 1
WI 1
SD 0
WY 1
NY 3
MI 1
PA 6
IA 1
NE 1
NV 2
IL 5
UT 3
OH 13
(14)
IN 1
CO 10
KS 1
CA 23
MO 2
KY 0
OK 2
NM 4
RI 2
CT 2
NJ 6
VA 18
(23)
MD 53 (60)
DC 10 (15)
NC 5
AR 1
SC 2
MS 4
AK 0
MA 5
DE 0
WV 1
(2)
TN 3
AZ 2
VT
0 NH
1
TX 9
AL 6
(7)
PR 0
GA 2
(3)
LA 1
FL 11
(12)
Note: ( ) denotes total labs plus agency reps.
HI 0
Far West 35
Mid-Continent 37
Southeast 34 (37)
Mid-Atlantic 88 (106)
Midwest 21 (22)
Northeast 19
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Know Duties of ORTA Rep
• CRADAs
- Writing, negotiation, safekeeping original document
- Knowing when to use CRADA vs. some other legal
vehicle
- CANNOT release funding and SOW to third party
- Identifying nonprofits available for helping private
industry
• Patents
- Writing, negotiating patent licenses
• Maintaining latest versions of legal instruments
• Develop an Invention Evaluation Board
• Training scientists and engineers (S&Es) on CRADA and
patent processes (annually)
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Know Duties of ORTA Rep (Cont.)
• ORTA T2 training (through FLC, LES, AUTM)
• Market lab intellectual property (IP), capabilities
- FLC sponsors booth space at selected meetings
• Outreach (EDCs, state & local governments, private
businesses)
• Identify and utilize EDCs, state nonprofits
• Find POCs within educational institutions for
interaction
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BUILD A
TECHNOLOGY TRANSFER
LIBRARY!!
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ORTA Handbook
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Legal foundation for the ORTA
Functions of ORTA
Technology transfer mechanisms
Federal T2 organizations
Nonfederal T2 organizations
Describes IP rights
T2 legislation and Executive Orders
Model CRADAs for GOGO and GOCO laboratories
Available on FLC website (free)
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Technology Transfer Desk
Reference
• Tech transfer overview
• Role of FLC in T2
• CRADA legislative authority
• IP issues
• Available on FLC website (free)
12
Federal Technology Transfer
Legislation & Policy (“Green Book”)
• Technology innovation legislation highlights
• Legislation applicable to all federal agencies
• Special legislative provisions applicable to
specific agencies
• Special provision language
• Executive orders
• Available on FLC website (free)
13
Licensing References
• “Licensing - A Strategy for Profits”
- Edward P. White, published by LES, 1997
• Licensing Executives Society
- Negotiating techniques
- IP valuation
- Foreign licensing
- Copyrights, trademarks, software
- www.usa-canada.les.org
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FLC SERVICES AND PRODUCTS
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FLC Communications
• FLC website management
• Monthly newsletter
• Publications
- Technology for Today
- FLC calendar
- FLC awards booklet
• Roundtable management
• Design of FLC promotional materials
• FLC presentations
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FLC Website Main Page
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FLC Technology Locator
Mission: In cooperation with the federal
laboratories, the FLC Technology Locator
provides a clearinghouse for requests from
businesses, industrial development
organizations, state and local governments,
academia, not-for-profit organizations,
individuals, and other federal agencies and
laboratories
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FLC Technology Locator Service
• Connects all federal labs through e-mail service
• Used by nonfederal entities to solve problems, find
expertise or unique facilities, find technologies
• E-mail sent from nonfederal entity to FLC Locator
Service
• Locator Service sends e-mail with contents of need to
all members of FLC registered as Lab Reps or ORTA
• Lab Rep or ORTA reviews request and replies if that lab
can help solve the problem
• Service is free, fast-acting, valuable mechanism for
finding solutions to needs
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FLC NewsLink
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FLC Store
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SECURING LAB INTELLECTUAL
PROPERTY
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ORTA IP Responsibilities
• ORTA Rep has major responsibility for
identifying and protecting lab IP
• Include ORTA signature line on route sheets
for papers and presentations OR copies of
papers
• Read lab newspapers and agency highlights
• Attend technical briefings
• Brief management on need to protect IP
• Monitor funding for basic research
- Remind scientists to contact you if
invention made
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Secure Lab IP
• Obtain disclosures from inventors
• Convene Invention Evaluation Board (IEB) meeting
• Make business decision to use federal funds to file for patent
protection
• Lab patent attorney conducts prior art search
• Identify any commercial applications for inclusion in claims
• Obtain copy of patent application
• Obtain copy of filing with USPTO
• Determine if PCT coverage is necessary
• Federal government protects inventions with patents, but does
not copyright any manuals, texts, etc. Navy does patent
software
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Establish an Invention
Evaluation Board
• Board includes: ORTA Rep, patent attorney, and
knowledgeable scientist from each scientific department
• Board makes a business decision to spend lab funds (up to
$8K or more) to attempt to patent an invention
• ORTA: Announces IEB meeting to all hands, develops
agenda, with presentations from each inventor
• IEB votes on invention based on rating factors, and PA
announces decision to inventors
• If IEB rejects an invention, the scientist keeps IP rights, but
government keeps royalty-free right
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IEB Rating Factors
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Navy needs/requirements – Degree to which invention addresses
need
Feasibility/use – Degree to which the invention could be expected
to be used by the Navy. Is it currently in actual use by the Navy?
Mission relevance – Degree to which the invention enhances the
core technical capabilities or status of the Division
Technological advancement – What is the relative significance of
the invention? Is it a pioneering invention? Is this a significant or a
marginal improvement in the art, etc.?
Degree of development – Has a working model been built? Has
comparative testing been done?
Dual use – Potential for commercialization, licensing (for income to
the command and the inventor(s)), attracting CRADA partners, etc
Affordability impact – To what degree could the invention be
expected to reduce acquisition or life-cycle costs?
Environmental impact – To what degree does the invention provide
a positive impact on the environment?
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IP Management
• Get access to IP MIS (or comparable)
- Access to filing, issue, maintenance dates
• Obtain market search tool(s)
- Dun & Bradstreet information
- iMarket marketplace software
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Use Novel Resources for IP
Market Assessments
• BE CREATIVE!
• University of Baltimore “Lab to Market”
Program
• Johns Hopkins University Business
Opportunities
• Partnership intermediaries such as Tech Link,
Tech Match, First Link, Maryland TEDCO
• Novel Venture Capital Groups
- Genesis Technologies
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The Omnipak™ - Container
Technology for a New Age
Objective: Transfer, commercialize and
transition container technology
developed by the Navy for a new age in
shipping
Benefits:
• Saves DoD $millions yearly by reducing
packaging costs, damage to goods, injury
• Eliminates unit load failure
• Increases shipment size and security
Participants:
• Invented by the Indian Head Division of
the Naval Surface Warfare Center
• Exclusively licensed to Baltimore
Shipping Technologies, Inc. by Navy Dir.
of Technology (Dr. J. Scott Deiter, ORTA)
Status:
• Baltimore Shipping Technologies
awarded $75K from TEDCO to develop
prototype
• 1st commercial sale in June 2006
• DoD will replace 120-plus pallets with
the OmniPak™ container technology
Technology: A container technology that is
highly durable, cost-effective and safe. The
containers open easily for inspection and will
greatly reduce any negative impact on the
environment. They are collapsible, reusable,
interlocking and built for all modes of shipping.
OmniPak™
A new defense against a
major bioterror threat while
reducing DoD packaging and
shipping costs
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Develop Marketing Tools
• Tech transfer brochures
- Describe how to do business with your lab
- Provide some success stories
• Technology one-pagers for technologies
with commercial value
• Develop exhibition booth for technology
transfer
- IP with commercial value
- Unique facilities
- Unique expertise
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Federal Register Notices
• NOTICES MUST BE EXACT!
• Get copies for:
- Notices of availability
- Notices of intent to license
- Notice of correction
[email protected] or JAG office for copies
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Sample Federal Register Notice
DEPARTMENT OF DEFENSE
Department of the Navy
Notice of Availability of Government-Owned Inventions;
Available for Licensing
AGENCY: Department of the Navy, DOD.
ACTION: Notice.
SUMMARY: The following inventions are assigned to the U.S. Government as represented by the
Secretary of the Navy and are available for licensing by the Department of the Navy.
U.S. Patent Application Serial Number 11/009847 entitled “Multiple Shock Event Sensing
Device.” U.S. Patent Application Serial Number 11/040,291 entitled “MEMS Inertial Delay
Device.” U.S. Patent Application Serial Number 10/826,791 entitled “Container, and Related
Methods.” U.S. Patent Application Serial Number 11/040,300 entitled “MEMS MultiDirectional Shock Sensor.” U.S. Patent Application Serial Number 10/040,292 entitled
“Method and Device for Clearing Firebreaks and Controlling Fire.” U.S. Patent Application
Serial Number 11/010,701 entitled “Inhibition of Aluminum Oxidation Through the Vapor
Depositions of a Passivation Layer and Method Thereof.”
ADDRESS: Requests for copies of the Patent Applications cited should be directed to the Naval
Surface Warfare Center, Code CAB, 101 Strauss Avenue, Indian Head, MD 20640-5035.
FOR FURTHER INFORMATION, CONTACT: Dr. J. Scott Deiter, Head, Technology Transfer Office,
Naval Surface Warfare Center Indian Head Division, Code CAB, 101 Strauss Avenue, Indian
Head, MD 20640-5035, telephone (301) 744-6111.
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Appropriate Contacts For Nonstandard Agreements
• U.S. Trade Representative (as of March 18, 2009)
- Ron Kirk
[email protected]
• Federal Register
- LCDR Ann Vallandingham, JAGC (as of January 2, 2009)
USN, Office of the Judge Advocate General
Administrative Law Division (Code 13)
1322 Patterson Avenue SE, Suite 3000
Washington Navy Yard, DC 20374
COMM: 703-614-7245 (DSN: 224-7245)
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Ethical Issues in Licensing
• Who may become involved in developing a patent
license
- Inventor having an interest in the deal
• How is royalty income used?
• What is publicly available when reporting a CRADA?
• Responsibility for protecting proprietary information
(invention disclosures)
• Potential issues dealing with Invention Evaluation
Board
• Safekeeping of files, such as invention disclosures and
original CRADA documents
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Maintain Databases
• Keep table of yearly metrics on:
- Number of CRADAs (annual and cumulative
-
active)
Amount of CRADA funding
Number of patents
Patent royalty income
Number of patent licenses
Other legal instruments (PIAs, EPAs)
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DTTIS Database
• Report T2 Agreements (CRADAs, patent licenses, etc.) to DOD
through Navy version of the Defense Technology Transfer
Information System (DTTIS) database
• Within 30 days after agreement is signed, you must report the
agreement through the Navy DTTIS
• DTTIS website URL is <www.onr.navy.mil/dttis>
• Accessing DTTIS
- Enter the DTTIS URL in the location box of your browser
- Click on the first link on the home page to go to the primary
information Technology Transfer Database
Elizabeth McLaughlin at [email protected]
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Tech Transfer Business Plan
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List CRADAs, patents, licenses
Report metrics from databases
Report success stories
Present financial data
Fact sheets on success stories
Think about your future plans/add them
Keeping track of this info throughout the year will
prepare you for numerous data calls!
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Tech Transfer Via Internet
• Maintain tech transfer website
- Use as marketing tool for patents,
patent applications
- Provide all forms and instructions
- List patents and identify those with
commercial potential
- Identify unique facilities
- Describe partnering success stories
• Acquire tech transfer button on home
page
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PARTNERSHIP INTERMEDIARIES
AND
PARTNERSHIP INTERMEDIARY
AGREEMENTS
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What is a PIA?
Partnership Intermediary Agreement
• Statutory authority is Title 15 U.S.C. Section
3715
• PIA is a contract or Memorandum of
Understanding between a federal lab and an
entity known as a partnership intermediary
• PIA provides for the partnership intermediary
to perform services for the federal laboratory
that increase the likelihood of success in the
conduct of cooperative or joint activities with
small business firms, institutions of higher
education, or educational institutions
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Partnership Intermediary
• Defined by organization’s “structure & function”
- Structure
 An agency of a state or local government, or
 A nonprofit entity owned, operated and
funded in whole or in part by state or local
government
- Function
 Assist, counsel, advise, evaluate, or
cooperate with small business firms,
institutions of higher education
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Examples of a Partnership
Intermediary
Tech Link: Dr. John Dennis, [email protected]
• Free, very successful, will help write FLC award nomination
packages, other
Foresight Science & Technology: Dr. Phyllis Speser
[email protected]
• Cost, GSA contractor, very successful, numerous offices
Nonprofits such as:
• TEDCO
• Franklin Partnerships
• Any local economic development center
• Universities with business marketing programs
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Example of Partnership
Intermediary
Maryland TEDCO
• A nonprofit public corporation
• Provides link between capabilities at federal lab and
technology needs of businesses throughout Maryland
• Serves as intermediary to locate and advise on R&D
capabilities that may be made available to small businesses
and universities
• Develops technology marketing programs and
showcases federal lab technologies
• Sponsors activities and programs that showcase technology
and capabilities of small businesses and educational
institutions which may be of interest to federal labs
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PIA BOILERPLATE
Contact ME for Navy version!! I’ll
forward PIA boilerplate to you.
Or
Call your agency for appropriate
boilerplate
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CRADAS vs. Work for Others
10 USC 2539b, 2563
• Routine work conducted
• Work description submitted, proposal
requested, cost estimate, time schedule,
delivery package
• Must be proprietary subject to
customer’s requirements
• R&D not conducted under Work for
Others
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Outreach Efforts
• Educate public on value of technology transfer
- Promote CRADAs
- Create awareness of patents available for
licensing
- Promote awareness of capabilities, personnel,
facilities
- Collaborate for problem solving
- Present at business, state and local government
meetings
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For Technology Transfer Help
• Contact the Federal Laboratory Consortium
for Technology Transfer
www.federallabs.org
(856) 667-7727
[email protected]
(All FLC subscribers)
[email protected]
(EB members)
[email protected] (national voting info)
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T2 Mechanisms Used by
Federal Agencies
• See Federal Technology Transfer Mechanisms Database
on FLC website
- www.federallabs.org/flc/education/t2-matrix
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CONTACT INFORMATION
J. Scott Deiter
Naval Surface Warfare Center – Indian Head Division
Indian Head, MD 20640
E-mail: [email protected]
Phone: 301-744-6111
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