harry danforth or sherry a. cohen bldg. 003, rm. 208, barc-w 504-6421 504-6001 fax...
TRANSCRIPT
Harry Danforth or Sherry A. Cohen
Bldg. 003, Rm. 208, BARC-W
504-6421
504-6001 FAX
www.ba.ars.usda.gov/techt/
OTT, Beltsville Area
ARS is Increasingly Being Asked to Demonstrate the Positive
Impact of our Programs
Federal Technology Transfer Acts of 1986 and 1996
To help translate research results into practical products
To give taxpayers a return on their investment in research
To promote economic competitiveness and job creation
Philosophy of Technology Transfer
U.S. Company
ARS Mission Interests
Area Ripe for Technology Transfer
Not all Successful Technology Transfer Uses Formal Mechanisms
How is Technology Transferred?
Types of Formal Agreements
Confidentiality Agreement
Material Transfer Agreement (MTA)
Cooperative Research and Development Agreement (CRADA)
Trust Fund Cooperative Agreements
Memorandum of Understanding (MOU)
Patents – License Agreement
Confidentiality Agreement
Used only when contemplating entering into a CRADA, MOU or License Agreement. Otherwise, do not disclose or receive confidential information.
Can be one way or two way
Protects patent rights
Do not sign non-standard confidentiality agreements without first checking with the Technology Transfer Coordinator (TTC).
Can be signed by any permanent ARS scientist.
Provide copy of executed agreement to TTC.
Material Transfer Agreement
Used when transferring materials which may be or will be or are patented.
Do not sign non-standard MTAs without first checking with TTC.
Signed by scientist, RL and then sent to TTC for signature and transmittal to cooperator.
TTC will let you know when it is OK to send/receive materials.
Example (transfer of cell lines to a U.S. company for production of viral pesticides.)
Develop a CRADA When:
A joint research effort with a non-Federal, U.S. partner has the possibility of contributing to a commercial product.
A partner requires limited confidentiality and or exclusivity.
Negotiations are between TTC and cooperator, not scientist and cooperator. Watch out for sensitive issues.
Examples of Sensitive Issues
Creation of transgenic food or feed organisms by genetic engineering (human-directed splicing, altering, deletion, antisense reassembly, or other asexual recombining of DNA or RNA, including subsequent activities to regenerate whole transgenic organisms from cells or tissues, or to transfer genetically-engineered DNA from one organism to another to enhance its potential utility).
Cloning of animals by somatic cell nuclear transfer.
Herbicide-resistant crop plant research.
Antibiotic/Antimicrobial Resistance.
Cooperative Research and Development Agreement (CRADA)
Benefits to Firms:
First right to Exclusive License
Access to ARS
Confidentiality
Benefits to ARS:
Results-Oriented Research
Identification of Licensee
Resources (For the Project)
CRADA Negotiations
Firms May Provide
Expertise
Materials
Equipment
Employees
Money
Facilities
ARS May Provide Any of the Above
Except Money
Trust Fund Cooperative Agreements
Multiple agreements can be used with multiple partners for same project.
Involves funding to ARS from Cooperator.
No confidentiality provisions (with exceptions).
No right to negotiate an exclusive license.
Memorandum of Understanding
Used for collaborative research or evaluation
No money changes hands
No confidentiality (with exceptions)
No rights to exclusive license
Confidentiality
Always Remember
Proprietary Information or Intellectual Property (IP)
PATENTING GUIDELINES
ARS Can Patent
Cooperator Can Patent
Can be individually
or jointly owned
INVENTOR GUIDELINES
CALL THE PATENT ADVISOR FIRST!!
Janelle Graeter 504-5676
INVENTOR GUIDELINES
1. Use Permanently bound Research Notebooks.
2. Critical Dates in Patent Law to Avoid Loss of Patent Rights:
a. Protection Intellectual Property - invention reporting, confidential agreements, CRADA’s.
b. Invention Report’s (IR) to Patent Advisor (PA) ASAP.
c. Report publication of invention to PA ASAP.
d. Foreign patents must be filed before publication.
e. Avoid disclosing inventive concepts in abstracts, CRIS reports and interpretative summaries.
INVENTOR GUIDELINES
3. Conduct Thorough Search Before Writing IR.
4. Provide Advice to PA-talk to the PA.
5. Assist the PA in Prosecution of the Patent:
a. Review and comment on patent office actions.
6. Plant Variety Protection Certificates Considerations -
Associate Deputy Administrator from Plant Sciences
7. General Information on PVPC Obtained from: Commissioner,
Plant Variety Protection Office, AMS, NAL Building, Beltsville, MD 20705. Tel. No. 504-5518 or visit their website at www.ams.usda.gov/science/pvp.htm
ARS Patent Committee Evaluation Criteria
The Patent Committee meets every 3 to 4 months and recommends whether invention disclosures on the docket should be accepted for patent application preparation, deferred, or suspended.
If there is a patent….
License Agreements
Negotiated by Licensing Coordinator or TTC only
Exclusive agreements require publication in Federal Register, except for CRADA inventions.
Scientist receives incentive award:
First $2,000 plus 25% thereafter of all license revenue exclusive of reimbursed fees.
For All Formal Agreements
Negotiations of language and scope of the agreement are almost always necessary to protect ARS’ rights and policies.
Flexibility, compromise and communication within the guidelines and policies of OTT is necessary to develop successful agreements.
“Compromise, if not the spice of life, is its solidity.”
Questions ?www.ba.ars.usda.gov/techt/