Agreements For Commercializing Technology (ACT)

Act

Agreements for Commercializing Technology (ACT) is a new business-friendly technology transfer tool offered at several DOE Laboratories. ACT differs from traditional lab partnership agreements because the laboratory contractor can accept terms and risks that the government is prohibited from accepting, such as offering a performance guarantee or taking on indemnification risk. In exchange for taking on risks the government is unable to accept, the Laboratory contractor is authorized to receive a fee from its R&D partner.

This mechanism was put in place in response to concerns that were raised in public responses to a Notice of Inquiry regarding Technology Transfer practices at U.S. Department of Energy (DOE) laboratories.

A new pilot, FedACT, expands the use of ACT to allow organizations that have received federal funding for R&D to partner with DOE’s National Labs.

Info Description: Labs and a partner outside the federal government complete a project using specialized or unique facilities or expertise.
Uses Typical Uses: To develop new products; To conduct scientific research; For partners that need flexible terms and conditions
Advantages Advantages: Flexible (negotiable terms and conditions on intellectual property provisions); Fast (10 day approval process); Gov’t may only retain a research license on IP; Easier to conduct multi-party research
Coin Cost: Participant pays full cost, plus fees to contractor
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Ins and Outs of Agreements & Licenses

CRADAs, SPPs, and ACT arrangements can be contracted to contain provisions addressing protection of a partner’s proprietary data. User Agreements often include such provisions as well. In addition, Nondisclosure Agreements (NDA) can easily be put in place to protect a partner’s proprietary information prior to the initiation of any work or even at the discussion stage if necessary. While a company’s proprietary information agreement template can be used as a starting point the nature and contractual requirements of the national laboratories will require amendments and the use of the standard agreement offered by the laboratory of interest often expedites the signature of these agreements. Data generated in the performance of a CRADA can be protected from public release by the laboratory or the Government for five years. It is important that companies mark all of the information that they provide to the laboratories’ staff in accordance with the agreements between the parties for protection of data. Data generated under an SPP or ACT can be kept proprietary by the Sponsor indefinitely in many cases.
Retention of these rights in agreements involving federally-funded research is required by law. The government license is viewed as recognition of the Government investment that created the facility and the research from which the technology arises. March-in rights are retained by the government to assure that technology arising from laboratories is made available to the public. Should a laboratory licensee or CRADA partner abandon use or dissemination of the technology yet retain a license to the technology, the government has the right to require the partner to license to a third party, who is interested in commercializing the technology, at a reasonable royalty.
There are examples of successful multi-party collaborations that accommodated the interests of various organizations, including multiple DOE laboratories. Clear communications and up-front negotiations of intellectual property rights can help save time. For example, in the alternative feedstocks for chemicals program, five laboratories set up agreements for sharing intellectual property among themselves and with a company. The intellectual property developed by one laboratory was used by other laboratories, and the company benefited from inventions at several laboratories.
Although as federally-funded facilities, DOE’s national laboratories have a preference to license to U.S. companies and an obligation to consider U.S. Competiveness in all license agreements. The requirement for U.S. Competiveness can be satisfied by either substantially manufacturing in the United States or by having a business unit in the United States and providing a significant economic and technical benefit to the United States. All DOE Laboratories are also required to include an export control clause in their license agreement. This clause simply states that the Licensee agrees to comply with export control laws designed to protect items and information important to the United States. It restates the existing requirement and does not impose additional requirements.

Additional Ways to Partner with a National Lab