Partnering & Funding Mechanisms

There are numerous ways to partner with the DOE National Lab Collaboratory sites to access their unique capabilities including:

  • Cooperative Research and Development Agreement (CRADA)
  • Strategic Partnership Project (SPP, formerly Work for Others)
  • User Agreement
  • Technology Licensing Agreement
  • DOE-released Funding Opportunity Announcements (FOAs)
  • Philanthropic Donations

It is noted that not all technology transfer mechanisms are available at each of the Collaboratory sites, and there may also be other mechanisms available at LLE (a university) and GA (a private company)

Cooperative Research and Development Agreement (CRADA)

A CRADA is a collaborative agreement that allows the Federal Government, through its laboratories, and non-federal partners to optimize their resources, share technical expertise in a protected environment, access intellectual property emerging from the effort, and advance the commercialization of federally developed technologies.

Industry partner(s) must provide research funds or in-kind contributions which may include personnel, services, facilities, equipment, intellectual property or other resources. The Laboratory may provide personnel, services, facilities, equipment, intellectual property or other resources. While, the Laboratory may also provide funds to support the CRADA activities, the Laboratory does not provide funds directly to the partner.

Each party retains title to its own inventions. An option to negotiate an exclusive license to the Laboratory’s CRADA inventions in a specified field of use is typically granted to the industry partner; any resulting license will be granted in exchange for reasonable compensation. CRADA-generated information may be protected from public disclosure for up to 5 years.

The CRADA Participant indemnifies the Government and the Contractor operating the Laboratory for product liability and the Government and the Contractor disclaim all warranties to work performed under a CRADA.

An Advance Payment is required before work can begin. This requirement was recently reduced from 90 to 60 days. Advance payment requirements may be waived for state and local governments that have a constitutional prohibition.

DOE has developed a model CRADA that establishes uniform conditions for doing business with the laboratories. The modular CRADA can be viewed using the following link: http://techtransfer.energy.gov/TemplateCRADAagreement.pdf

Strategic Partnership Project (SPP)

A SPP Agreement is a fee for service contract that enables Industry, non-profit institutions and other non-federal entities to pay the Laboratory to perform a defined scope of work or tasks that draws upon the unique facilities, equipment, and personnel of the Laboratory.

Rights to the inventions that arise under a SPP agreement will typically vest in the sponsor if the sponsor is a US entity and pays for the work with private funds. Sponsors are typically allowed to mark generated data as proprietary and obtain ownership of the data, subject to certain terms and conditions. If the sponsor is subcontracting federal funds to the national laboratory or the sponsor is a non-US entity, the rights in the intellectual property will typically vest with the laboratory. These dispositions can be varied based upon a variety of circumstances and are contingent upon approval from DOE. In all cases, the Government will retain a royalty-free license in Subject Inventions (inventions conceived or first actually reduced to practice under the SPP) for use by or on behalf of the government. Typically, this license is a broad license that enables the Government to use or enable others to use the inventions for any government purpose. However, a more limited Government research license may be obtained instead of the broader license upon DOE Patent Counsel approval. If a limited research license is applied, then the Government retains expanded data rights.

Laboratory Contractors cannot expend government resources without an appropriate allocation or set aside of funding to pay for those expenditures. Therefore, an Advance Payment is typically required before any work can begin on the project. The size of this set aside was recently reduced from 90 days to 60 days of expected cost. State and local governments that have a constitutional prohibition against such advance payments may obtain a waiver of this requirement from DOE.

SPP Agreements are “best efforts” contracts and the Sponsor receives no warranties for work performed under a SPP Agreement, and the Government and the Contractor operating the Laboratory are indemnified for certain risks including product liability. These are also full cost reimbursement contracts, so while a particular quantity may be agreed upon at the outset, all costs incurred in performing the work must be reimbursed by the sponsor. In the event that funds are exhausted the project may also be terminated. In view of these facts, successful SPP projects typically require communication between industry and the lab and an agreement on funding levels and sources before starting the SPP agreement process.

User Agreements

Specialized, standard agreements are available to expedite user access to DOE Designated User Facilities. Each facility manages its allocation of facility resources, typically granting access through merit review of submitted research proposals. Prospective non-proprietary users may propose independent or collaborative research. In most cases there is no charge for users who are doing non-proprietary work, with the understanding that they are expected to publish their results; access is also typically available on a full cost recovery basis for proprietary research that is not intended for publication.

Under the provisions of the Patent Class Waivers, the non-proprietary user can elect title to his/her inventions, and research data generated under non-proprietary research is typically not protected. With limited exceptions the proprietary user retains as proprietary the technical data generated, as well as the rights to any new inventions.

Technology Licensing Agreement

Intellectual Property (IP) developed by DOE’s National Laboratories is typically held and licensed by the Contractor for the Laboratory where the technology was developed.

A licensing agreement typically provides commercialization rights to patented and/or copyrighted IP developed at DOE’s National Laboratories. Due to the unique set of laws and policies governing the licensing of federally funded research and DOE policies regarding intellectual property, licensing agreements for technology developed at DOE Laboratories have some provisions that may not be present in a license agreement between private entities, including march-in-rights, government- use rights, and indemnification policies. A Guide to Licensing and Sample License has been created to describe a “typical” DOE Laboratory IP license agreement in order to provide prospective licensees with an understanding of the terms and conditions found in most DOE laboratory IP license agreements. This guide is available at the following link: http://techtransfer.energy.gov/LicensingGuideFINAL.pdf.

Typical financial and milestone terms present in a commercial license include: 

  • An issue fee, which is non-refundable and due upon execution of the agreement
  • A running royalty, which is most commonly based on a percentage of sales
  • A minimum annual royalty
  • Other financial terms appropriate to the technology and market, such as milestone payments and patent cost reimbursements
  • Equity ownership terms which may be negotiated in some cases in lieu of cash payments
  • Milestone commitments for development (e.g. alpha & beta products) and introduction of commercial product in marketplace

Licenses may be exclusive for a particular field of use or geographic region, or non-exclusive.

Most of the technologies available for licensing will require additional development before they are commercially viable. An Option Agreement is available that protects an entity’s right to license a technology at a future time. Option Agreements are generally available for a time period of one year. Many labs will approve an extension to the Option Agreement if sufficient milestones towards making the technology commercially-viable have been met.

DOE Funding Opportunity Announcements (FOAs)

DOE FOAs include the INFUSE (https://infuse.ornl.gov) program, Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR), potential other cost-share or milestone-based programs.

INFUSE provides funds for business awards to assist applicants seeking access to the world class expertise and capabilities available across the U.S. DOE national labs and accredited U.S. universities. The FES partnership awards are not financial awards made directly to applicants. INFUSE awards provide funding to a laboratory or university in order to help eligible private-sector companies overcome critical scientific and technological challenges in the pursuit of fusion energy. 

SBIR and STTR are U.S. Government programs in which federal agencies with large research and development (R&D) budgets set aside a small fraction of their funding for competitions among small businesses only. Small businesses that win awards in these programs keep the rights to any technology developed and are encouraged to commercialize the technology. Only U.S. small business concerns (SBCs) are eligible to submit SBIR and STTR applications.

Other FOAs may be released as cost-share or milestone-based programs, with grant applications that must be responsive to a specific topic included in the FOA, and terms and eligibility as specified by the FOA criteria.

Philanthropic Donations

While some DOE National Labs are not able to directly accept charitable gifts or philanthropic donations, tax-deductible collaborative opportunities are available via entities such as the Livermore Lab Foundation, a 501c3 nonprofit organization dedicated to supporting LLNL’s science and research efforts. Individuals, corporations, universities, non-governmental organizations, foundations and nonprofits may work with lab-affiliated foundations on direct grants and overall tax-deductible philanthropic support for research, technology development, and educational endeavors consistent with Lab programs. For more information on collaboration opportunities at LLNL contact Sally Allen, Livermore Lab Foundation Executive Director at sally [at] livermorelabfoundation.org (sally[at]livermorelabfoundation[dot]org).  For opportunities associated with other Collaboratory members, please reach out to the Collaboratory institution’s POC.

 

 

This information provided only as a guide. 

Much of this information was taken and adapted from the Guide to Partnering with DOE’s National Laboratories.