Government Practices in Purchasing R&D: Intellectual Property Provisions at the Department of Energy

Paul GottliebAssistant General Counsel

for Tech. Transfer & IP202-586-3439 (fax 2805)Paul.Gottlieb@HQ.DOE.GOV

DOE Missions

Basic research: High energy physics, human genome, etc.

Applied research to produce commercial technology: Clean Coal, FreedomCar, etc.

Applied research to produce products for DOE use: Stockpile Stewardship, clean up, etc.

Direct vs. labs

DOE procurement office (Chicago, Golden, Albuquerque, Oakland) or GOGO (NETL)

National Lab (NREL-Hybrid vehicles, Livermore-supercomputers)

Others-state grant programs

Patent Rights

Bayh-Dole, 35 USC 201 et seqFunding agreement with SB, UNIV, Non

ProfitTitle to contractor subject to GPL, March-in,

US Preference

AEC ACT, 42 USC 2182; Fed. Nonnuclear, 42 USC 5908

All R&D not subject to Bayh-DoleTitle to government unless waived, subject

to GPL, March-in, US Preference and US competitiveness(?), Background IP

Data Rights

Dissemination statutes promote widespread dissemination of scientific information Technical Data including Databases Software

Direct Transactions with DOE

Acquisition: DOE implementation of FAR contained in DEAR (48 CFR

Part 9) FAR except for Patent waiver requirement FAR except Data dissemination requirements limit DOE

from giving Contractor special data rights Fixed price-Is it R&D? Phase I demo and are paid vs.

commercial guarantee and price 42 USC 13542 requires cost sharing for EPACT projects

Direct Transactions with DOE

Assistance: Grants and Cooperative Agreements DOE 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)

10 CFR 600 still requires DEAR IP clauses 42 USC 13542 requires cost sharing for EPACT projects

10cfr600.500 eligibility requirements

Direct Transactions with DOE

10 CFR proposed changes (Assistance Streamlining Statute):Separate coverage for For Profits: Checklist

class waivers, no Background, automatic copyright, no Authorization and Consent , Keep US competitiveness

Univ. and Non profits: no Authorization and Consent, no separate DEAR coverage, DATA RIGHTS NOT LIKE FAR_SHELBY bill

Direct Transactions with DOE

Other Transactions: Not authorized for use by DOE

Management & Operating contracts, long term clean up contracts: IP transfer to successor contractor, DEAR coverage

Transactions with DOE Laboratories

Subcontracts: “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.

Work For others: access to unique capability, sponsor pays full cost and owns IP, DOE Order & Manual 481.1

User Facility: access to unique scientific machine,

sponsor owns IP

Transactions with DOE Laboratories

CRADA: Collaborative Research of benefit to DOE mission DOE Order & Manual 483.1, IP negotiable -EUV

Technical Assistance for small businessIP license: Patent, copyrighted software

GRANT BACK, open source software, biological material bailments