1. The Navy and Marine Corps Corporate Laboratory UNIVERSITY/ FEDERAL LABORATORY COLLABORATIONS RITA C. MANAK, PHD HEAD, TECHNOLOGY TRANSFER OFFICE NAVAL RESEARCH LABORATORY Rita.manak@nrl.navy.mil Best Practices FLC Midatlantic 2015

2. The Navy and Marine Corps Corporate Laboratory Value of University Collaborations - Most university funding is from the Federal government (Almost) all funding of Federal Laboratories is from the Federal government Funding is highly competitive and diminishing Each leverages its resources with the resources of the other

3. The Navy and Marine Corps Corporate Laboratory Funding ( follow the money ) Universities: Federal grants, Federal contracts State funding Not-for profit funding Commercial funding ( IP ownership vs. bond issues) Federal laboratories: Capital funded federal laboratories vs. line item budgets Work for Others Agreements Cooperative Research and Development Agreements (CRADAs) (funded, in-kind) -

4. The Navy and Marine Corps Corporate Laboratory Federal/University Collaborations - Cooperative Research and Development Agreements (CRADAs); funding through university from third parties -Separate funding from same federal source -Educational Partnerships -Sabbaticals (federal/university) -Informal

5. The Navy and Marine Corps Corporate Laboratory Jointly Owned Invention Issues CRADAs Defined Statement of Work Each owns its sole inventions Collaborator has option to license Laboratory subject inventions Both have rights to use subject IP internally Educational Partnership – each owns own inventions subject to university’s funding agreements Separate federal funding – ownership follows FARS/DFARS? 35 202 (e)?? Informal collaborations – it depends

6. The Navy and Marine Corps Corporate Laboratory Jointly Owned Invention Issues CRADAs Defined Statement of Work Each owns its sole inventions Collaborator has option to license Laboratory subject inventions Both have rights to use subject IP internally Educational Partnership – each owns own inventions; it depends Separate federal funding – ownership follows FARS/DFARS? §USC 35 202 (e)?? Informal collaborations – it depends

7. The Navy and Marine Corps Corporate Laboratory Jointly Owned Invention Issues Follow the money Non-federal funding: University owns Separate federal funding – ownership follows FARS/DFARS? §USC 35 202 (e)??

8. The Navy and Marine Corps Corporate Laboratory Jointly Owned Invention Issues The FARS (or DFARS) - are inserted into every federal grant or contract - do not anticipate joint invention with federal employee - grantee/contractor has two years or 60 days before bar date to elect/another year to file Patent law has changed to first-to-file Separate federal funding – ownership follows FARS/DFARS? §USC 35 202 (e)??

9. The Navy and Marine Corps Corporate Laboratory Jointly Owned Invention Issues Interinstitutional Agreements – University may file Agency may file Navy will not file a jointly owned inventions; requires assignment from university

10. The Navy and Marine Corps Corporate Laboratory Solution? Literal interpretation of USC 35 § 202(e) as intended in the Commercialization Act of 2000 (In any case when a Federal employee is a co-inventor with a non-profit organization, for the purpose of consolidating, the federal employing Agency may license, assign or acquire rights…) And: 35 USC §207 (3) Undertake all other suitable and neceassry steps to protect and administer rightsof federally owned inventions.. OR clearer(?) legislative relief