[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

[[Page 72037]]

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.

[[Page 72038]]

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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