Thursday, November 23, 2017

NOAA Technology Transfer Process Home

Step 1:  New Projects - Working with Partners

The NOAA Technology Transfer Process begins when a new project is initiated.  The PI should determine if any formal agreements are needed to address intellectual property ownership should the R&D project result in a new technology or other innovation.  The best way to accomplish this with non-federal partners is through a Cooperative Research and Development Agreement or CRADA, but you may also use a basic Non-Disclosure Agreement (See US DoC Intellectual Property page for template and guidance) if you are very early in the process.  

The CRADA will establish who contributes what to the project and who owns what percentage of the end result. The CRADA is largely pro-forma, so the PI and partners only need to attach a statement of work.  The CRADA can be initiated by the lab and approved by the Assistant Administrator, so the time to implement is short. 

When working with an academic partner that is part of cooperative or joint institute, a CRADA is not necessary, as ownership is defined in the CI handbook.  Non-CI partnerships will benefit greatly from a CRADA, however.

Step 2:  New Inventions/Innovations - Disclose Internally BEFORE Going Public

Traditionally, once a project results in a new or improved product or technology - be it a model, a sensor, or even a new process - the first thoughts are generally toward publishing the results.  However, before doing so, it is very important the PI disclose the invention using the invention disclosure process established by the Technology Partnerships Office in NOAA Administrative Order 201-103.  

Note:  any public disclosure of a new invention, including presentations at public fora and scientific publications, may hamper future attempts to patent an invention.  Disclosing the invention both to the lab director and to the TPO establishes a milestone for inventorship, provides the technical basis for a future patent filing, and allows TPO to keep an accurate list of all NOAA inventions and innovations.  

Step 3:  New Inventions/Innovations - Who Owns It?

Once the PI has disclosed the invention, the TPO will submit the disclosure to Department of Commerce General Counsel for a Rights Determination.  The resulting memo will indicate if the U.S. Government has some claim of ownership over the invention.  Determining ownership is a critical step that sets the stage for any future patent filings and/or licensing of the invention.

Step 4:  Decision Time - Patent, License, Manufacture, or Publish?

Once ownership is established, there are a number of options to consider including the possibility of filing a provisional or full patent application on the invention.  TPO may conduct, or may help identify firms to conduct, a high-level patentability and marketability research at the request of the lab.  The result will be a detailed cost-benefit analysis for moving forward with a patent on the invention.  If the assessment is positive, TPO can assist the PI with a provisional patent filing.  Otherwise, the invention will be cataloged and the PI is free to publish.

For inventions with a provisional patent application in place, TPO with guidance from the PI, will help to seek out potential licensing partners for the invention.  The provisional patent allows 1 year for this process before filing for a full patent.   If we are unable to locate a licensing partner, we will likely let the patent lapse, unless the lab feels strongly about filing for a full patent.  Either way, the PI is free to publish and conduct discussions regarding the innovation after the provisional patent is filed.  

There are often many variables to consider, so we recommend working closely with TPO and lab management to determine the best path.  It is especially important to know, under new patent laws, publishing your results may prohibit NOAA or the USG from patenting the invention in the future.  Therefore, you should always disclose any inventions before publishing your results publicly.

Step 5:  Report Back

TPO staff are here to help you quickly and effectively navigate the disclosure and, if appropriate, patent and license process.  We will perform high-level patent reviews, market assessments, and arrangements for legal counsel to prosecute the patent.  

For licensing, we will promote your innovations and technologies through the Federal Register, through our website, and through various trade shows and tech fora.  We can assist you in finding partners who may, in turn, bring money back to your lab either through royalties or under additional cooperative research and development agreements.   We are also responsible for negotiating all NOAA licensing agreements for you.  

Finally, we will report all your successful innovations and transfers of technology in our annual report to Congress and through this website.  Your success is our success!