1. Government Practices in Purchasing R&D: Intellectual Property Provisions at the Department of Energy Paul Gottlieb Assistant General Counsel for Tech. Transfer & IP 202-586-3439 (fax 2805) Paul.Gottlieb@HQ.DOE.GOV

2. DOE Missions zBasic research: High energy physics, human genome, etc. zApplied research to produce commercial technology: Clean Coal, FreedomCar, etc. zApplied research to produce products for DOE use: Stockpile Stewardship, clean up, etc.

3. Direct vs. labs zDOE procurement office (Chicago, Golden, Albuquerque, Oakland) or GOGO (NETL) zNational Lab (NREL-Hybrid vehicles, Livermore-supercomputers) zOthers-state grant programs

4. Patent Rights zBayh-Dole, 35 USC 201 et seq xFunding agreement with SB, UNIV, Non Profit xTitle to contractor subject to GPL, March-in, US Preference zAEC ACT, 42 USC 2182; Fed. Nonnuclear, 42 USC 5908 xAll R&D not subject to Bayh-Dole xTitle to government unless waived, subject to GPL, March-in, US Preference and US competitiveness(?), Background IP

5. Data Rights zDissemination statutes promote widespread dissemination of scientific information yTechnical Data including Databases ySoftware

6. Direct Transactions with DOE zAcquisition: yDOE implementation of FAR contained in DEAR (48 CFR Part 9) yFAR except for Patent waiver requirement yFAR except Data dissemination requirements limit DOE from giving Contractor special data rights yFixed price-Is it R&D? Phase I demo and are paid vs. commercial guarantee and price y42 USC 13542 requires cost sharing for EPACT projects

7. Direct Transactions with DOE zAssistance: Grants and Cooperative Agreements yDOE does many large R&D Cooperative Agreements for energy research, teaming arrangements (directly with industry USABC who then subs, Industry advisory group DOE issues prime) y10 CFR 600 still requires DEAR IP clauses y42 USC 13542 requires cost sharing for EPACT projects y10cfr600.500 eligibility requirements

8. Direct Transactions with DOE y10 CFR proposed changes (Assistance Streamlining Statute): xSeparate coverage for For Profits: Checklist class waivers, no Background, automatic copyright, no Authorization and Consent, Keep US competitiveness xUniv. and Non profits: no Authorization and Consent, no separate DEAR coverage, DATA RIGHTS NOT LIKE FAR_SHELBY bill

9. Direct Transactions with DOE zOther Transactions: Not authorized for use by DOE zManagement & Operating contracts, long term clean up contracts: IP transfer to successor contractor, DEAR coverage

10. Transactions with DOE Laboratories zSubcontracts: “Prudent Business practice with do respect for govt, requirements, mandatory flow downs, IP follows DOE acquisition rules, may be used for large R&D efforts Hybrid vehicles because of lab technical expertise, competition followed but no formal right of appeal through government contract appeals. DOE sensative to not having these transaction be used as a way to circumvent govt. rules. Cost sharing followed. zWork For others: access to unique capability, sponsor pays full cost and owns IP, DOE Order & Manual 481.1 zUser Facility: access to unique scientific machine, sponsor owns IP

11. Transactions with DOE Laboratories zCRADA: Collaborative Research of benefit to DOE mission DOE Order & Manual 483.1, IP negotiable -EUV zTechnical Assistance for small business zIP license: Patent, copyrighted software GRANT BACK, open source software, biological material bailments