1Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 Technology Transfer Follows Many Pathways: “It’s a Contact Sport” Work for.

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1Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 Technology Transfer Follows Many Pathways: “It’s a Contact Sport” Work for Others, Work for Others, User Agreement CRADA License S&T Park S&T Park Dana Christensen Associate Laboratory Director Energy and Engineering Sciences May 5, 2010

2Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 Intellectual Property License A License is: – A contract enabling a partner to make, use, or sell intellectual property – Associated with patent(s) (granted or pending) – Associated with defined field(s) of use – Exclusive or Non-Exclusive Payment typically includes – Patent cost reimbursement – Execution fee (in some cases equity in lieu of cash may be negotiated) – Royalty fees Options may also be executed, which provide partners with an exclusive right to negotiate a license for a defined period of time License

3Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 Work for Others (WFO) A Work for Others Agreement is: – Performance of work for non-federal entities by contractor personnel (industry) – Utilization of DOE or other Federal resources not directly funded by appropriations Success requires clear goals and expectations and a knowledgeable industrial partner Work for Others, Work for Others,

4Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 Cooperative Research & Development Agreement (CRADA) A CRADA is… An agreement between researchers and private sector partner(s) to conduct specified research or development activities consistent with product requirements Each party provides personnel, services, facilities, equipment, intellectual property or other resources (intense collaboration) Funding Mechanisms: 100% Funds-In by the Participant. Participant funds researcher’s portion of the project. Split funding: DOE funds ORNL’s portion of the project.* Participant provides both funds-in and in-kind contributions. Split contribution: DOE funds ORNL’s portion of the project.* Participant provides in-kind contribution.. CRADA

5Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 User Facilities Building Technologies Research & Integration Center Center for Nanophase Materials Sciences Center for Structural Molecular Biology High Flux Isotope Reactor High Temperature Materials Laboratory Holifield Radioactive Ion Beam Facility National Center for Computational Sciences National Transportation Research Center Safeguards Laboratory National User Facility Shared Research Equipment User Facility Spallation Neutron Source User Agreement

6Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 User Agreement A User Agreement is A mechanism for private industry or academia to conduct research at the contractor’s designated user facilities An agreement (proprietary or non-proprietary) stipulating terms and conditions, including disposition of intellectual property An agreement under which the partner directs the activity, within framework of agreement Types of User Agreements: Nonproprietary: funded by DOE program and/or cost-recovery from User Proprietary: cost-recovery required for all users Pre-competitive: allows collaboration; currently available for only a few facilities User Agreement

7Managed by UT-Battelle for the Department of Energy We have many success stories that reinforce our work as an engine of innovation. Start-up licensee Established licensee CRADA Project WFO Project Local Life Sciences Licensee

8Managed by UT-Battelle for the U.S. Department of Energy ITS America May 2010 In summary… WFOCRADAUser Agreement Funding Full cost recovery DOE cost- shares thru UTB only Free if DOE- sponsored and nonproprietary Invention Rights Sponsor may elect UTB subject inventions Each party may elect its inventions; licensing rights in all inventions User may elect title; Gov’t gets unlimited rights Technical Data Sponsor provides nonproprietary report in which Gov’t has unlimited rights Protects identified resulting data for up to 5 yrs User owns; Gov’t gets unlimited rights