**Technology Transfer Handbook**

**for the U.S. Geological Survey**

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**2003**

ABBREVIATIONS USED IN THIS HANDBOOK 4

EXECUTIVE SUMMARY 5-6

> 1\. What is Federal Technology Transfer? 5
>
> 2\. Why Should Technology Transfer Be Important to You? 5
>
> 3\. How This Handbook Can Help 5

I. WHY TECHNOLOGY TRANSFER IS IMPORTANT 7-8

> 1\. Technology Transfer Defined 7
>
> 2\. Purpose of Technology Transfer 7
>
> 3\. Benefits 7
>
> 4\. Importance 7

II\. THE FEDERAL ENVIRONMENT 9-14

> 1\. History 9
>
> 2\. USGS Policy for Technology Transfer 13

III\. HOW TO DO IT 15-129

> 1\. Types of Tools 15-17
>
> A. Promotional Tools 15
>
> B. Proactive Technology Transfer Tools 16
>
> 2\. Related Procedures 18-20
>
> A. Contributions 18
>
> B. Work-for-Others 18
>
> C. User Facilities 20
>
> Model Contract For Work-For-Others 21-31
>
> 3\. Marketing Federally-Developed Technology 32-35
>
> A. Marketing: What Is It? 32
>
> B. Components of the Marketing Plan 32
>
> Sample Market Plans 36-47
>
> 4\. Cooperative Research and Development Agreements (CRADAs) 48-97
>
> A. CRADAs and Their Benefits 48
>
> B. Who May Enter Into a CRADA With the USGS 49
>
> C. Types of Resources Partners May Contribute 49
>
> D. Obligations of CRADA Parties 49

##### E. Completing the Legal/Financial Components of the CRADA 49

> F. Steps for Creating and Executing a CRADA 49
>
> CRADA Forms 54-97
>
> Form 1: Industrial Participant Questionnaire 55
>
> Form 2: Samples of Federal Register Announcements 58
>
> Form 3: The CRADA Document 61
>
> Form 4: Discipline Proposal 80

Form 5: Conflict of Interest Statement 82

###### 

###### 

###### Forms 6a - 6b: CRADA Decision-Tree and CRADA Criteria Checklist 84

> Form 7: Discipline Recommendation Memorandum 87
>
> Form 8: Transmittal Letter 89
>
> Form 9: Report of Invention Form 91
>
> Form 10: CRADA Report 95
>
> 5\. Inventions and Patents 98-103
>
> A. Background 98
>
> B. Rights in Inventions 98
>
> C. Types of Patents 99
>
> D. Basic Responsibility 99
>
> E. Patent Application Process 99
>
> F. Awards and Royalties 101
>
> G. Invention Disclosure 101
>
> H. Protecting Federal Inventions From Disclosure 101
>
> I. Record keeping 103
>
> 6\. Patent Licenses 104-129
>
> A. Policy for Awarding Licenses 104
>
> B. Background 104
>
> C. Licenses 105
>
> D. Rights to Sublicense 108
>
> E. License Applications 108
>
> F. Private Sector Invention Licensing to the Government 108
>
> G. Copyrights 109
>
> H. Trademarks/Service Marks 109
>
> Invention/Licensing Forms 110-129
>
> Forms 11: Non-Disclosure Agreements 111

Form 12: Patent License Application and Sample License Agreement 116

IV\. POSSIBLE PITFALLS 130

> 1\. Issues of Concern in Technology Transfer 130
>
> 2\. Barriers to Technology Transfer 130

V. RESOURCES FOR ASSISTANCE 132

> 1\. The Business Development Branch 132
>
> 2\. Other Sources for Assistance 132

APPENDIX A: GLOSSARY OF TERMS USED WITH TECHNOLOGY TRANSFER 133

APPENDIX B: MANUAL CHAPTERS AND OTHER DOCUMENTS 136

**ABBREVIATIONS USED IN THIS HANDBOOK**

BD Business Development Branch

BEC Business Enterprise Council

CFR Code of Federal Regulations

CRADA Cooperative Research and Development Agreement

DOI U.S. Department of the Interior

FAR Federal Acquisition Regulations

FIP Federal Information Processing

FLC Federal Laboratory Consortium

FOIA Freedom of Information Act

GOCO Government-owned Contractor-operated

GOGO Government-owned Government-operated

JFA Joint Funding Agreement

MOA Memorandum of Agreement

MOU Memorandum of Understanding

NIST National Institute for Standards and Technology

NTIS National Technical Information Service

ORTA Office of Research and Technology Assessment

P.L. Public Law

R&D research and development

SIC Standard Industrial Classification

SOW Statement of Work

TT technology transfer

USC United States Code

USPTO United States Patent and Trademark Office

**See Appendix A for Glossary of Terms**

**EXECUTIVE SUMMARY**

**1. What is Federal Technology Transfer?**

The concept of "technology transfer" from Federal laboratories is to get
the ideas, inventions, and technologies developed with taxpayer dollars
into the hands of the private sector as quickly as possible, and in
forms useful to that community. The idea is to get U.S. companies and
other private sector entities involved in the development of Federal
technology and technology products at an early stage so that the end
result is useful to U.S. industry and can make the United States more
competitive in world markets. In other words, let's use the technology
being paid for by taxpayers to benefit U.S. society by strengthening the
U.S. economy through better products and services offered to world
markets.

**2. Why Should Technology Transfer Be Important to You?**

Technology transfer is mandated by law. Federal research agencies must
support activities to enhance the awareness, adoption, and use of their
technology products. By law, technology transfer should be an element in
all Federal researchers' performance plans. The law states, \"Technology
Transfer consistent with the mission responsibilities, is a
responsibility of each laboratory science and engineering
professional.\" (Chapter 63 USC 15, Sec. 3710, (a)(2))

Technology transfer programs are the way to move federally funded
research products and technologies into commercial practice. For
researchers and Federal managers, this means that the products of your
research programs can obtain increased visibility and value, and
demonstrate the relevance of an agency in meeting the needs of your
constituents. This also brings recognition to you as inventors and
managers of the research development.

Technology transfer programs offer other benefits including:

> o permitting you to partner with private sector companies, leverage
> your resources, stretch your research budgets, and share ideas in a
> protected environment;
>
> o enabling you to earn additional income for some of your research;
>
> o allowing you to share intellectual property and obtain royalties.
> This can mean additional dollars for your research program, and
> monetary rewards to inventors of patented and licensed technology.

The bottom line: by participating in technology transfer activities, you
can help accelerate the adoption and use of your taxpayer-funded
research while optimizing your resources.

**3. How This Handbook Can Help**

This handbook has been designed to augment a 2-day training workshop in
technology transfer and to serve as a reference on the subject. The
handbook discusses:

o A definition of technology transfer and technology transfer terms

> o How Cooperative Research and Development Agreements (CRADAs) can
> help you leverage your research resources

o Why patents are important?

> o Why inventors should avoid disclosing information about inventions
> until a patent application has been filed
>
> o How to license federally-developed inventions and generate royalty
> income
>
> o Ways to use various marketing and technology transfer tools
>
> o How to design a marketing plan
>
> o Easy ways to identify users and markets for your technology

Questions about material contained in the handbook may be addressed to
the U.S. Geological Survey, Business Development Branch, 12201 Sunrise
Valley Drive, 500 National Center, Reston, VA 20192, fax: (703)
648-4706.

Beth Duff 703 648-4621

Steve Strader 703-648-4652

Or to U.S. Geological Survey, Technology Transfer, 12201 Sunrise Valley
Drive, 201

National Center, Reston, VA 20192, fax: 703-648-7219

Neil Mark 703-648-4344

Chapter V of this handbook lists other sources of information about
technology transfer in the Federal Government.

**I. WHY TECHNOLOGY TRANSFER IS IMPORTANT**

**1. Technology Transfer Defined**

Technology Transfer is a process through which technical information and
products developed by the Federal Government are provided to potential
users in a manner that encourages and accelerates their evaluation
and/or use. More than merely disseminating information, technology
transfer techniques feature marketing of federally developed technology
and products as well as demonstrating the use of these new technologies
when necessary. Marketing tools may include fact sheets and special
publications, magazine articles, seminars, workshops, exhibits,
demonstrations of new federally developed products, videotapes, and
market surveys. Other technology transfer tools are aimed at providing
incentives to potential users and commercializers of the technology and
include Cooperative Research and Development Agreements (CRADAs) and
exclusive patent licenses. Technology transfer activities include the
proactive identification of Federal research developments or
technologies with a high potential for commercialization; the
identification of market segments and user groups; ways to advertise and
highlight these products; and assistance in commercializing Federal
developments. Chapter III of this handbook provides more information
about Technology Transfer Tools and Marketing in the Federal Government.

**2. Purpose of Technology Transfer**

The main purpose of technology transfer is to aid the U.S. economy by
making U.S. products more competitive in world markets. The concept of
technology transfer from Federal laboratories is to get the ideas,
inventions and technologies developed with tax dollars into the hands of
the private sector as quickly as possible in a form useful to that
community. The idea is to get the private sector involved in the
development of Federal technology and technology products at an early
stage so that the end result is a useful new U.S. product or service
offered on world markets. In other words, let us use the technology
being paid for by taxpayers to benefit the Nation by strengthening the
U.S. economy through better products and services offered to world
markets.

**3. Benefits**

There are a multitude of benefits to all players in the technology
transfer arena. U.S. industry benefits with new and better products,
processes, and services that lead to increased efficiency and
effectiveness, greater market share and increased profits. By benefiting
U.S. industries, the U.S. economy is strengthened which, in turn,
benefits all citizens. Federal laboratories benefit by becoming more
responsive to the needs of the constituents that they serve,
demonstrating their viability and worth to the Federal sector, and
generating non-appropriated funds to aid them in performing their
important research and development missions. Individual Federal
employees can benefit by earning rewards above and beyond their regular
salary through patents, licenses, and other technology transfer awards.
They also can benefit intellectually and professionally through working
collaboratively with their peers in the industrial sector.

**4. Importance**

As can be seen from the purpose and benefits, technology transfer is
important for several reasons including the following:

> o It encourages use of technology developed using taxpayer dollars to
> benefit society.
>
> o It demonstrates research program relevancy and value.
>
> o It permits Federal researchers to partner with the private sector,
> leverage resources, and share ideas in a protected environment.
>
> o It gives increased visibility to researchers and enables them to
> generate and earn royalty income.

**II. THE FEDERAL ENVIRONMENT**

**1. History**

Over the years, Government's recognition of the need for expanding
technology transfer efforts to ensure the widest possible use of its
technological achievements has been seen in a number of legislative
actions including the establishment of the National Science Foundation
in 1950, the Defense Technical Information Center in 1951, and the
National Technical Information Service in 1970. By 1968, it had become
clear to some members of Congress that the Federal laboratory system
could be better utilized in solving national problems. The
Intergovernmental Cooperation Act of 1968 encouraged interagency
cooperation and authorized Federal agencies to provide some services to
State and local governments.

Significant efforts to utilize Federal laboratories and their
technologies to help solve growing societal problems and to aid U.S.
industry began in the early 1970s. Resource and environmental problems
were becoming worse and there was a perception that U.S. industry had
lost its competitive edge in world markets. We were no longer perceived
as the leading nation in the development of new technologies and
technological products. The Federal Council for Science and Technology
(FCST) issued a policy entitled, "Policy for Expanded Interagency
Cooperation in Use of Federal Laboratories," which was approved in
January 1972. It stated that interagency relationships should be:

> "Consistent with the existing laws and with established relationships
> with private industry, universities, and non-profit institutions. It
> is the policy of the Executive Branch that existing R&D capabilities
> in Federal establishments be utilized effectively to define and solve
> decisions relating to some of the urgent national civilian needs,
> e.g., environment, pollution, transportation, health, housing,
> communications, agriculture and forest resources, water and land
> resources, and energy."

Other activities during these years included the issuance of a General
Accounting Office (GAO) report stressing the need to use defense
technology to meet civilian needs, a grant program sponsored by the
National Science Foundation (NSF) and NASA to transfer aerospace
technology to municipal governments, and the establishment of the
Research Related to National Needs program within NSF.

A Department of Defense Consortium for technology transfer evolved into
the Federal Laboratory Consortium (FLC) in 1975 with the addition of
members from non-defense Federal laboratories. The FLC was not
officially recognized and funded by Congress until 1986 with the passage
of the Technology Transfer Act. Yet between 1975 and 1986, the
organization grew and became the advocate for and promoter of technology
transfer throughout the Federal laboratory system.

Throughout these earlier years and into the present, the Federal
laboratories continue to yield a tremendous amount of valuable
information, new technology, and useful products. A 1985 report by the
National Science Foundation and the Industrial Research Institute noted
that the Federal

Government employs about one-sixth of all scientists in the United
States and supports about one-third of U.S. industrial research and
development. A small percentage of the Government's expenditure is spent
on basic research without specific commercial objectives. The majority,
however, is allocated to applied research and the development of product
prototypes and processes relating to existing or potential business
markets. These efforts result in many new, usable technologies that may
have direct commercial application.

In 1980, the U.S. Congress formally recognized the value of these
technologies and the Government's responsibility to the Nation's
taxpayers to make this wealth of scientific information and products
more readily available. It passed the milestone legislation for
technology transfer, the Stevenson-Wydler Act (Public Law 96-480). This
was the pioneer legislation in promoting technology transfer from the
Federal laboratories to the private sector. This law recognized the need
for enhanced information dissemination from the Federal Government into
private industry. It also required Federal laboratories to take more
active roles in technical cooperation with potential users of federally
developed technology. With this Act, technology transfer became a
mandate for Federal laboratories.

Since 1980, the original Act has been augmented and amended to remove
restrictions and boost the transfer of federally developed technology
into the private sector. The total law forms Chapter 63, United States
Code, Title 15, sections 3701-3715, our technology innovation law.

One of the most significant amendments was the Technology Transfer Act
of 1986. This Act created Cooperative Research and Development
Agreements (CRADAs), officially recognized the Federal Laboratory
Consortium, established royalty sharing with Federal inventors, and
established many other important precedents. This is the Act that
instituted and promoted the collaborative partnerships that we now have
with industry.

A summary of the contents of the 1980 Act, its amendments, and other
related statutes follow.

**Stevenson‑Wydler Technology Innovation Act 1980 (Public Law 96‑480)**

> ‑ Focused on dissemination of information.
>
> ‑ Required Federal laboratories to take an active role in technical
> cooperation
>
> ‑ Established Offices of Research and Technology Application (ORTA) at
> major Federal laboratories. At many laboratories and agencies, these
> are simply called technology transfer offices.
>
> ‑ Established the Center for the Utilization of Federal Technology (in
> the National Technical Information Service)

**Bayh‑Dole Act of 1980 (Public Law 96‑517)**

> ‑ Permitted universities, non-profit organizations, and small
> businesses to obtain title to inventions developed with governmental
> support.
>
> ‑ Allowed Government‑owned, Government‑operated (GOGO) laboratories to
> grant exclusive licenses to patents.

**Trademark Clarification Act of 1984 (Public Law 98‑620)**

> \- Primarily pertains to non-Department of the Interior laboratories,
> such as Department of Energy National laboratories (many of which are
> Government-owned, Contractor-operated-GOCOs).
>
> ‑ Permitted decisions to be made at the laboratory level in
> Government‑owned, Contractor‑operated (GOCO) laboratories regarding
> the awarding of licenses for patents.
>
> ‑ Permitted contractors to receive patent royalties for use in R&D,
> awards, or for education
>
> ‑ Permitted private companies, regardless of size, to obtain exclusive
> licenses.
>
> ‑ Permitted laboratories run by universities and non‑profit
> institutions to retain title to inventions within limitations.

**Federal Technology Transfer Act (1986)**

> ‑ Made technology transfer a responsibility of all Federal laboratory
> scientists and engineers.
>
> ‑ Mandated that technology transfer responsibility be considered in
> Federal laboratory employee performance evaluations.
>
> ‑ Defined a new kind of collaborative agreement to encourage Federal
> laboratory and private sector partnerships: the Cooperative Research
> and Development Agreement (CRADA).
>
> ‑ Established royalty sharing for Federal inventors (15% minimum) and
> set up a reward system for other innovators.
>
> ‑ Chartered the Federal Laboratory Consortium for Technology Transfer
> (FLC).
>
> ‑ Provided specific requirements, incentives and authorities for the
> Federal laboratories.
>
> ‑ Empowered each agency to give the director of GOGO laboratories
> authority to enter into cooperative R&D agreements (CRADAs) and
> negotiate licensing agreements with streamlined headquarters review.
>
> ‑ Allowed laboratories to make advance agreements with large and small
> companies on title and license to inventions resulting from
> Cooperative R&D Agreements (CRADAs) with government laboratories.
>
> ‑ Allowed directors of GOGO laboratories to negotiate licensing
> agreements for inventions made at their laboratories.
>
> ‑ Provided for the exchange of GOGO laboratory personnel, services,
> and equipment with research partners.
>
> ‑ Made it possible to grant and waive rights to GOGO laboratory
> inventions and intellectual property.

**Executive Orders 12591 and 12618 (1987): Facilitating Access to
Science and Technology**

> ‑ Promoted the commercialization of Federal science and technology.

**Omnibus Trade and Competitiveness Act of 1988 (Public Law 100‑418)**

> ‑ Placed emphasis on the need for public/private cooperation to
> assuring full use of results of research.
>
> ‑ Established centers for transferring manufacturing technology.
>
> ‑ Established Industrial Extension Services within states and an
> information clearinghouse on successful state and local technology
> programs.
>
> ‑ Changed the name of the National Bureau of Standards to the National
> Institute of Standards and Technology and broadened its technology
> transfer role.
>
> ‑ Extended royalty payment requirements to non‑government employees of
> Federal laboratories.
>
> ‑ Authorized Training Technology Transfer centers administered by the
> Department of Education.

**National Competitiveness Technology Transfer Act 1989 (Public Law
101‑189)** (included as Section 3131 et seq. of Department of Defense
(DOD) Authorization Act for FY 1990)

> ‑ Granted GOCO laboratories opportunities to enter into CRADAs and
> other activities with universities and private industry, in
> essentially the same ways as highlighted under the Federal Technology
> Transfer Act of 1986 for GOGOs.
>
> ‑ Allowed information and innovations brought into, and created
> through, CRADAs to be protected from disclosure.
>
> ‑ Provided a technology transfer mission for the nuclear weapons
> laboratories.

**American Technology Preeminence Act 1991 (Public Law 102‑245)**

> ‑ Extended the Federal Laboratory Consortium (FLC) mandate, removed
> FLC responsibility for conducting a grant program, and required the
> inclusion of the results of an independent annual audit in the FLC
> Annual Report to Congress and the President.
>
> ‑ Included intellectual property as a potential contribution under
> CRADAs
>
> ‑ Required the Secretary of Commerce to report on the advisability of
> authorizing a new form of CRADA that permits Federal contributions of
> funds.
>
> ‑ Allowed laboratory directors to give excess equipment to educational
> institutions and non-profit organizations as a gift.

**The National Technology Transfer and Advancement Act of 1996**

> \- Guarantees a Cooperative Research and Development Agreement (CRADA)
> industrial partner the option to choose an exclusive license to the
> resulting invention in a field-of-use.
>
> \- Clarifies that agencies may use royalties to hire temporary
> personnel to assist in CRADA or related projects.
>
> \- Gives first \$2,000 of royalty income to the inventors and
> increases an inventor\'s maximum royalty award to \$150,000 per year.
>
> \- Allows laboratories to use royalties for related research in the
> laboratory.
>
> \- Refines the laws concerning excess scientific equipment

**2. USGS Policy for Technology Transfer**

The U.S. Geological Survey (USGS) has defined a flexible policy for its
technology transfer programs. This policy, expressed in the Strategic
Plan^1^, is aimed at:

> o improving USGS relationships with partners in both the public and
> private sectors;
>
> o developing networks and expanding partnerships to promote
> collaboration between the USGS, private companies and nonprofit
> organizations, including universities;
>
> o transferring technologies by teaching and training USGS employees,
> partners, and the public;
>
> o creating opportunities to transfer and market USGS-developed
> technologies including promoting the public availability and
> commercialization of USGS inventions;

To implement this policy, the USGS promotes the commercialization of
employee inventions through patents and licensing and the development of
collaborative partnerships with the private sector through Cooperative
Research and Development Agreements (CRADAs). Chapter III, sections 4,
5, and 6, of this handbook, explores both of these technology transfer
tools in more detail.

^1^ [Strategic Plan for the U.S. Geological Survey: 1996 to
2005]{.underline}, published May 1996.

**III. HOW TO DO IT**

**1. Types of Tools**

**A. Promotional Tools**

Several tools or mechanisms are used to showcase federally developed
technologies and enhance the effective transfer of these products to
commercial use. All of these tools are geared toward alerting the
general public or technical segments of society to technology transfer
opportunities. Some useful promotional tools include:

**Fact sheets** - Quick, simple, one-page descriptions of federally
developed technologies, patent licensing opportunities, and potential
partnerships. These may be available electronically through the Internet
and World Wide Web, and are suitable for distribution as paper copies at
exhibits, conferences, and trade showcases. They are designed to
stimulate interest and provide points-of-contact for additional
information.

**Publications** ‑ Government research and development results are
frequently published in learned journals, open file reports and other
technical media. Articles published in non-Federal or trade publications
often, but not always, incur a fee.

Government publications are normally distributed by the authoring agency
as well as through the U.S. Department of Commerce\'s National Technical
Information Service (NTIS). Privately owned, copyrighted material should
not be included in publications without written permission from the
copyright owner. All manuscripts, when reviewed within the Discipline
prior to publication, should be examined from the viewpoint of
preventing inadvertent loss of patent rights through premature
disclosure of proprietary information as well as for technical content
and merit.

**Videotapes** - Excellent media for training applications or for
demonstrating a product or process to better describe research
developments and attract attention. Videotapes are often used at
exhibits and showcases; in these applications, the length of videotapes
should be kept to 2 minutes or less to hold viewer attention.

**CD-ROMs** - Versatile and interactive, CDs may often contain several
publications, data sets, graphics and/or photographs, or be used in
training applications.

**Exhibits** - Static displays held at trade shows and conferences.
Exhibits may range from small tabletop displays requiring no attendant
to large showcases encompassing several hundred square feet of
exhibition space and requiring a large staff. The purpose of a federally
sponsored exhibit (for example, information dissemination, advertisement
of partnering opportunities, or heightening awareness of new technology)
should be clearly understood before an exhibit is planned.

**Meetings** - Meetings, which can take the form of seminars, workshops
and demonstrations, can be effective ways to discuss federally developed
technology and technology transfer opportunities with targeted users.
Meetings encourage two-way interaction. Federal scientists can often
meet with potential users of their technology and share ideas or obtain
feedback. Workshops are designed to train potential commercializers in
the use of the technology. Demonstrations, sometimes conducted at
field-testing locations, show the technology in operation.

**Internet marketing** - Highlighting technology transfer opportunities
through Bureau Home pages on the Internet and World Wide Web can be
effective in increasing visibility. These can also stimulate the
interest of potential customers and partners in DOI technology.

**Advertising** - Federal agencies can place advertisements in any
magazines, newspapers, and other sources to highlight technology
transfer opportunities. Fees are usually required. It is common practice
for agencies to place ads in the [Federal Register]{.underline} and
[Commerce Business Daily]{.underline} to ensure fairness-of-opportunity
for CRADAs, contracts or procurement activities. Care should be
exercised when using the [Commerce Business Daily]{.underline} to
promote technology since this could be misinterpreted as a request for a
bid or contract.

Section 3 of this chapter further explores the use of these tools in the
context of marketing.

**B. Proactive Technology Transfer Tools**

Recent Congressional legislation has boosted the use of some unique and
proactive technology transfer tools. These include Cooperative Research
and Development Agreements (CRADAs) and patent licenses. Sections 4, 5,
and 6 of this chapter will describe these mechanisms in detail and give
an overview of DOI procedures and policies. A short definition of these
and some other proactive technology transfer tools follows:

**Cooperative Research and Development Agreements (CRADAs)** - A CRADA
is basically a written agreement between a private sector organization
and a government agency to work together on a project. The agreement
involves no transfer of funds from the Government and is not considered
a procurement action. Through a CRADA, all parties may agree to keep
research results emerging from the CRADA activity confidential to the
extent permitted by the law (up to 5 years) or until they are published
in scientific literature or presented at a public forum. The partners
can agree to share patent and intellectual property rights in any manner
agreeable to both parties. The CRADA vehicle also enables the Government
to protect the partner\'s trade secrets and proprietary data. Criteria
for entering into a CRADA are covered within Chapter 500.20 of the
Survey Manual (see Appendix B for pointers to the Survey Manual).

**Patents** ‑ Federal technology transfer policy allows the use of the
patent system and licensing to promote the use of inventions arising
from federally supported research and development. Toward this end, a
patent helps protect a market by giving the owner the right to exclude
anyone else from making, using, or selling an invention for 20 years
from the date of the patent application. Patents issued by the United
States Patent and Trademark Office (USPTO) are valid throughout the
United States. Foreign patent protection is also available. The U.S.
Department of the Interior policy and procedures are set forth in 453
DM1. The USGS policy and procedure is covered in Survey Manual Chapter
453.1 (see Appendix B for pointers).

**Patent Licenses** - A license is an agreement between the owner of a
patent or intellectual property and another party interested in using
the owned property or protected invention. In the Federal Government,
licenses are usually granted to a private sector partner for the right
to practice, make and/or sell a patented invention. Licenses may be
granted in specific fields-of-use. Federal Government licensing policy
requires that the industry partner must develop and execute a plan for
commercializing the invention. The partner must also agree that any
products developed through use of the invention will be manufactured
substantially in the United States. Patents owned by the Department of
the Interior are offered for licensing through the Office of the
Solicitor or the Bureau holding the patent.

**MOAs/MOUs** ‑ Memorandums of Agreement (MOA) and Memorandums of
Understanding (MOU) are agreements between parties identifying and
defining potential areas of coordination and cooperation. Usually they
are employed between two or more Federal agencies or a Federal agency
and foreign government, but they can be used between any two parties.
USGS policy on work for non-Federal agencies is set forth in Survey
Manual Chapter 500.2. Policy on work for other Federal agencies is
covered in Survey Manual Chapter 500.3 (Appendix B).

**JFA** ‑ A Joint Funding Agreement (JFA) permits a DOI Bureau to enter
into cooperative programs with, and at the request of, State, local, or
regional agencies, American Indian/Alaska Native governments, or other
entities having taxing authority (or public institutions that are
integral parts of such entities), either formally or informally,
whenever it is mutually advantageous and feasible. These agreements
require cost sharing by the DOI Bureau and partner organization and
cannot be used with private companies. USGS policy and procedures for
JFAs are set forth in Survey Manual Chapter 500.1 (Appendix B).

**Research Fellowships** ‑ An industrial Research Associate Program has
been established within the USGS for the purpose of promoting technology
transfer between the Government and the private sector consistent with
the mission of the USGS. The program enables the Survey to accept
Research Associates on a temporary basis in order to collaborate with
Federal scientists on specific projects proposed by the Associate's
sponsoring organization. Policy and procedures for this program are
covered in Survey Manual Chapter 500.21 (Appendix B).

The Director of the USGS is responsible for formally accepting sponsored
proposals into the Industrial Research Associate Program, subject to
specified terms and conditions. Research Associate Programs may only be
established at government facilities designated as Federal laboratories
under 15 U.S.C. 3710.

**2. Related Procedures**

Although not as directly related to technology transfer as the
aforementioned tools, the USGS has two additional procedures for working
with, and accepting funds from, the private sector. These two acceptable
procedures, and one ***unacceptable*** (User Facilities) procedure, are
discussed below.

**A. Contributions -** The USGS is allowed to accept lands, buildings,
equipment, or other contributions from public or private sources by 43
USC 36C. It is USGS policy to accept only contributions that support
scientific research, technological development, and data systems
pertaining thereto. USGS will not accept contributions of Federal
Information Processing (FIP) resources specifically prohibited by 376 DM
4.4G. USGS Survey Manual Chapter 500.19 is a more comprehensive
statement of USGS policy and procedures for accepting contributions
(Appendix B).

**B. Work-for-Others -** The USGS has established the following
standards for conducting "work-for-others":

1\) The service being offered is "not readily available" outside the
USGS.

2\) There is no conflict of interest or apparent conflict of interest
for the USGS or its employees performing the service.

3\) The service rendered "promotes the objectives of the USGS."

4\) Even though the main benefit is to the private party requesting the
service, there is a secondary benefit to the USGS in providing the
service. The USGS has an interest in ensuring that data, technologies,
appraisals, and/or evaluations, made by the private sector in
Disciplines related to the USGS mission, are accurate (for example:
properly calibrated aerial cameras and current meters).

5\) All data and information produced as a product of "work-for-others"
shall be available to the public.

6\) In general, costs associated with conducting "work-for-others"
should be fully recovered as required by 31 USC 9701 and the USGS
Pricing Policy. As discussed in 31 USC 9701, the charges must be:

a\) Fair; and

b\) Based upon:

1\) Costs to government,

2\) Value of service or thing to the recipient,

3\) Public policy or interest served, and

4\) Other relevant facts.

Pointers to 31 USC 9701 and the USGS Pricing Policy are included in
Appendix B.

There are two distinct kinds of activities involved in work-for-others:

1\) Standard, repetitive activity, e.g., instrument calibration or
sample analyses, and

2\) Unique, complex, detailed activities, e.g., performing an experiment
or other kinds of research.

Type 1 activities require a pre-established price list for the services
offered. That list is prominently displayed in the area where users come
for the services or is made readily available as a handout.

Type 2 activities involve a written contract between the USGS
(contractee) and the party receiving the service (contractor). The
following are the policy guidelines to be considered before entering
into any contractual arrangement where the USGS is the contractee
providing services in a work-for-others arrangement.

A contract is used when a private source provides funds to the USGS, but
wants some assurance on how the money will be spent. There should be
little difference between research to be done by USGS under a contract
and work that is supported by money given to USGS as a contribution.
However, a contract can specify a particular area of research to be
done, a time frame for the work, and reporting requirements.

In addition to the standards that must be met when considering
work-for-others, the following conditions must be considered prior to
entering any contractual arrangement:

o A contract to do work should be accepted only if the work to be done
is compatible with the USGS mission, and expected to aid USGS programs.

o The contract will in no way adversely affect the scientific integrity
of the USGS.

o The work performed under the contract will not be in conflict with the
USGS Organic Act or other applicable laws.

o The contract shall not be written to significantly advantage or
disadvantage any private or public group. Although the results from the
work performed under the contract may end up weakening or strengthening
the support for a particular product or point of view, the outcome of
the study will not be influenced by the source of funding and results
will be scientifically unbiased.

o All information obtained under the contract will be available in the
public domain. Progress reports to the funding entity will be in the
form of a USGS memorandum or open-file report or other publication
format that has been USGS-approved. The final report will be published,
preferably in a peer-reviewed journal or in a widely disseminated USGS
publication.

o The USGS will retain the freedom to decide how the work specified by
the contract will be done and where the results from the work will be
published.

o Each contract will be considered on a case-by-case basis. A contract
will be accepted only if there is no perceived advantage to the private
funding source. In general, a contract will not be accepted if it is
with a private individual or a single private company. A contract with a
large consortium of companies is more likely to be accepted, but the
contract must in no way be written to provide an advantage to that
consortium.

o The money from a contract will benefit the USGS, not any individual.

Work-for-others contracts must be recommended by the Discipline wherein
the work is to be performed and the Business Enterprise Council (BEC)
prior to approval and signature by one of the Associate Directors. These
contracts must go through the same internal review process as CRADAs.
The contract is first reviewed and recommended, in writing, by the
appropriate Associate Director. It is then submitted to the BEC, through
the Discipline representative**,** for final review and recommendation
prior to approval and signature by the Associate Director. Review by the
DOI Office of the Solicitor will be part of the BEC approval process
when necessary.

Following is a generic model of a contract that can be used in
work-for-others situations. Usually, though, the contractor, rather than
the contractee (USGS), will provide the contract. This model illustrates
the articles that may be included and terms to which the USGS can agree.
If the contractor requests terms and/or articles different from those
presented here, the Office of the Solicitor, DOI, must review the
contract before it can be approved. The Business Development Branch may
be called upon to secure this Departmental review.

**C. User Facilities** - This is a mechanism that allows private sector
entities to use unique equipment or facilities owned and operated by a
Federal agency. Basically, it is a rental of the equipment or facility
to the private sector party with minimal or no participation by the
Federal agency's staff in the party's use of that facility.

It is the policy of the USGS ***not*** to enter into this kind of
activity with the private sector. CRADAs and work-for-others activities
are far better ways to utilize our facilities in serving the private
sector.

**Model Contract For Work-For-Others**

**AGREEMENT**

**between**

**\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**(The External Organization)**

**and the**

**U.S. GEOLOGICAL SURVEY**

**Externally Funded Agreement No.:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**Project Title:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**AGREEMENT dated this \_\_\_\_\_\_day of
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ by and between**

**\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ (the
\"External Organization\") and the U.S. Geological Survey (\"USGS\")
whose principal office is located at 12201 Sunrise Valley Drive, Reston,
Virginia 20192.**

**Article I**

**Definitions**

Section 1.01. Definitions. Unless the context otherwise requires, the
terms defined below shall have, for purposes of this Agreement, the
respective meanings set forth below, the following definitions to be
equally applicable to both the singular and plural forms of any of the

terms defined:

External Organization: A non-Governmental entity that is providing funds
and or property to the USGS to pursue a project mutually benefiting both
parties.

Externally Funded Agreement: This Agreement and Exhibits A, B, and C
attached

hereto, which are made a part hereof as though set forth in full herein.
This type of agreement is used where the conditions of the Geological
Survey Manual Chapter on "Work for Others" are met.

Budget: The Budget set forth in Exhibit C hereto.

Agreement Administrator: The Agreement Administrator shall be
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_, or such other person who
may be designated, in writing, by the External Organization.

Final Report: The Final Report required by Section 3.02 hereof.

Progress Reports: The reports required by Section 3.01 hereof.

Schedule of Work: The Schedule of Work set forth in Exhibit B.

Statement of Work: The Statement of Work attached hereto as Exhibit A.

Work: The Work described in Exhibit A (including the procurement of
equipment and supplies in connection therewith) and the performance of
all other requirements imposed upon the USGS under this Agreement.

**Article II**

**Performance of Work & Type of Agreement**

Section 2.01. Manner of Performance. The USGS shall perform all of the
Work described in the Statement of Work in an efficient and expeditious
manner and in accordance with all of the terms and provisions of this
Agreement. The USGS shall perform the Work in accordance with the
highest scientific standards. The USGS shall furnish such personnel and
shall, unless otherwise provided by the External Organization as
stipulated in Exhibit C, procure such supplies, equipment, and other
items as may reasonably be necessary or appropriate to perform the Work
in accordance with this Agreement.

Section 2.02. Project Personnel. It is understood and agreed that
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ (USGS‑\_\_\_\_\_\_\_\_\_\_\_\_\_), as
principal investigator, shall direct and personally supervise the Work
on behalf of the USGS and that the persons described in the Statement of
Work shall serve in the capacities described therein. The USGS shall
notify the External Organization in writing of any change in key project
personnel.

Section 2.03. Format. All correspondence, reports, invoices, and
manuscripts concerning this project shall contain the above Externally
Funded Agreement Number and \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
(the identifying number provided by the External Organization) and shall
be in English.

Section 2.04 Type of Agreement: This is a cost, level-of-effort
agreement.

**Article III**

**Technical Reports/Deliverables**

Section 3.01. Progress Reports. The USGS shall provide to the External
Organization on a semi‑annual basis a written progress report describing
the Work performed during the previous 6 months. The Progress Reports
may include an approved USGS Open File Report [and]{.underline}

[shall be in the public domain]{.underline}. The Progress Reports shall
include a description of the Work completed during the reporting period
and any significant findings and observations made and shall be in a
format agreeable to the parties. Such reports shall describe any
circumstances occurring during the reporting period that may affect the
quality or integrity of the research results and any other difficulties
encountered during the reporting period and the remedial action taken. A
timetable for completion of the Work shall be included in each Progress
Report, including an assessment of the progress to date compared with
the Schedule of Work set forth in Exhibit B. Any delays that have
occurred or are expected to affect the timely completion of the Work
shall be addressed in the Progress Report together with an explanation
for such delays. The Progress Report also shall include a statement of
activity anticipated for the next reporting period. Progress Reports
shall be submitted electronically, if practicable, in a manner mutually
agreeable to the parties.

Section 3.02. Final Report. The USGS shall prepare a detailed final
report covering all of the Work performed (the \"Final Report\"). The
Final Report shall comply with the requirements set forth in the
Statement of Work and shall identify the objectives of the Work,
describe the methodology employed, record essential data, and discuss
USGS\' results and conclusions. Appropriate graphics, worksheets,
listings and tabulations of data and references shall be included. The
report must indicate \"DRAFT FINAL REPORT\" on the cover and all pages
of the report. Five (5) copies of a draft of the Final Report shall be
submitted to the External Organization not later than
\_\_\_\_\_\_\_\_\_\_ for confidential review. The External Organization
shall provide its comments to the USGS within 45 days after receipt of
such draft. Within 20 working days after receipt of the comments, the
USGS shall prepare the Final Report in a mutually agreed to format and
shall submit one (1) unbound camera‑ready master copy along with \_\_\_
(\_\_) bound copies to the External Organization. The report must be
marked \"FINAL REPORT\" on the cover and include the date issued. Copies
of the Final Report shall be submitted to the External Organization not
later than \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_.

**Article IV**

**Compensation**

Section 4.01. Compensation. The USGS shall be compensated, on an advance
basis, for the services performed by its employees under the terms of
this Agreement at the rates set forth in the Budget shown in Exhibit C.
Such rates shall not be increased during the term hereof without the
written consent of the External Organization. The External Organization
agrees to compensate the USGS for the level-of-effort expended, and
other direct and indirect costs as agreed by the parties, in pursuit of
the objectives of the project. While absolute satisfaction of both
parties with the results of the project cannot be guaranteed, both
parties will strive for that result in the project. Every reasonable
effort will be made to assure that both parties agree that the final
report is an acceptable document.

\(a\) Foreign travel costs are allowable only when each such foreign
trip has been approved in writing by the Agreement Administrator prior
to the trip or is specified in the Budget. For purposes of this
Agreement, foreign travel is defined as any travel outside the country
of the researcher\'s principal place of business. (Note: The USGS is
also required to obtain internal Governmental approvals for foreign
travel. If such approvals are denied, the need for foreign travel and
the impact on the Agreement, if any, will need to be reviewed by the
parties and appropriate actions will need to be taken.)

\(b\) Payment of compensation as herein provided includes and covers all
charges for direct and indirect expenses of every nature for the
performance of the Work, including, without limitation, for recovery of
the capital cost of investment in facilities, equipment, secretarial,
and other support costs.

Section 4.02. Payments. The USGS shall submit requests for advance
payments as follows: (1) upon signature of the Agreement for the costs
estimated to be expended in the first 6 months of the agreement, and;
(2) just prior to each succeeding 6-month period. Such requests shall be
in such form and include such information and documentation as may be
reasonably requested by the External Organization, including expenses
for salaries, supplies, equipment, travel and overhead and other
indirect expense assessments. The External Organization requires that
invoices/billings be sent to:

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Subsequent to the initial invoice, invoices will not be considered for
payment until the corresponding Progress Report required pursuant to
Section 3.01 has been received and accepted by the External
Organization.

The External Organization shall pay to the USGS, within 30 days after
receipt of an invoice/billing for payment and the corresponding Progress
Report, the amount so requested, unless the External Organization should
determine that any such amounts are incorrect or that the payment or any
part thereof is otherwise not properly payable pursuant to the terms of
this Agreement or the Budget.

Section 4.03. Final Expense Report. Upon receipt by the External
Organization of the Final Report pursuant to Section 3.02 and Section
6.02 hereof, the USGS shall submit a list setting forth a description of
all equipment purchased under the agreement that was paid for by the
External Organization. Additionally, the USGS shall submit a statement
as to whether it is possible that any invention or patentable devices
resulted from the performance of the work under this Agreement.

Section 4.04. Title to Equipment. Title to equipment provided to the
USGS for use under this Agreement by the External Organization, if any,
shall be retained by the External Organization. Title shall vest in the
External Organization to all equipment purchased by the USGS the cost of
which has been paid by the External Organization hereunder. The cost of
shipping any equipment to a consignee designated by the External
Organization at the completion of the Agreement shall be borne by the
External Organization either as part of this agreement or under a
separate billing.

Section 4.05. The parties to this Agreement may, by mutual agreement,
make written changes to it. If any such change causes a decrease in the
cost of, or the time required for, the performance of the Work, or
otherwise affects any other provision of this Agreement, an equitable
adjustment shall be made (i) in the cost for such Work; and (ii) in such
other provisions of this Agreement as may be so affected, and the
Agreement shall be modified in writing accordingly. If any such change
causes an increase in the cost of the performance of the

Work, the USGS shall, within 10 days of receipt of such notice, notify
the External Organization in writing of the increase in costs. In such
event, the USGS shall not be obligated to perform any such change until
a written amendment to the Agreement setting forth the increase in costs

shall have been executed by the parties hereto.

Section 4.06. Maintenance of Records. The USGS shall keep, maintain, and
preserve at its principal office throughout the term of this Agreement
and for a period of 1 year after completion of the Work, full and
detailed books, accounts, and records pertaining to the performance of
this Agreement, including without limitation, all bills, invoices,
payrolls,

and other data evidencing or in any material way related to the costs
and expenses incurred by the USGS in the course of such performance. The
USGS' accounting practices and procedures are annually reviewed by the
Department of the Interior Office of the Inspector General under the
Chief Financial Officer Act, and the USGS commits to the External
Organization that the amounts billed will reflect accurate accounting of
the expenses incurred to the maximum extent possible.

**Article V**

**Assignments and Subcontracts**

Section 5.01. General Restrictions. Except as specifically provided
otherwise in this Article, the assignment, transfer, conveyance,
subcontracting or other disposal of this Agreement or any of the USGS
rights, obligations, interests or responsibilities hereunder, in whole
or in part, without the express consent in writing of the External
Organization shall be void and of no effect as to the External
Organization. A reimbursable agreement with another U.S. Government
instrumentality shall not be considered a subcontract. Purchases of
goods or services proposed initially in Exhibit C shall be deemed to
have met with the External Organization's approval upon signature on the
Agreement.

Section 5.02. Subcontract Procedures. Without relieving it of, or in any
way limiting, its obligations to the External Organization under this
Agreement, the USGS may enter into subcontracts for the performance of
Work, provided, however, that the USGS, prior to execution of any
subcontract shall have obtained from the Agreement Administrator written
approval thereof, but see the last sentence of Section 5.01. All
subcontracts shall be subject to all of the terms, covenants, and
conditions contained in this Agreement. The approval of the External
Organization shall be based on the technical justification and budget
considerations. The USGS shall follow the Federal Acquisition
Regulations, Competition in Contracting Act, and the Procurement
Integrity Act in establishing who shall be awarded any subcontract.
Accordingly, the External Organization shall not be provided source
selection information regarding any subcontract prior to it being made
public information by the USGS.

Section 5.03. Performance. The USGS shall promptly and diligently comply
with its obligations under each subcontract and shall take no action
that would impair its rights thereunder.

**Article VI**

**Schedule of Work & Level-of-Effort Objectives**

Schedule of Work. The draft and final versions of the Final Report shall
be submitted by the dates specified in Section 3.02 hereof. If, for any
reason, any delay has occurred or is expected to affect the timely
completion of the draft or Final Report, the USGS must submit a written
request to the External Organization for a revised completion date and
must include in such request a justification for the extension. Based
upon this request the External Organization and the USGS shall mutually
agree whether to revise the Agreement's completion date. Such request
should be made as soon as the need for additional time becomes evident.
Except where impracticable, no request for an extension shall be made
less than 30 days prior to the original completion date.

**Article VII**

**Presentation of Research Results**

Section 7.01. Data and Patent Rights. All data and deliverables produced
by the USGS in performing the Work will fall into the public domain and
will not be available for copyright. Both the USGS and the External
Organization may reproduce and distribute such documents without
restriction. Within the limits of the Freedom of Information Act (5
U.S.C. S 522), the USGS shall expend reasonable effort to ensure that
data and deliverables are not released outside of the Government before
they are released to the External Organization. If the USGS discovers
any patentable invention in the course of performing the Work, the
rights to patent such inventions and exploit the resulting patents shall
vest in the U.S. Department of the Interior,

U.S. Geological Survey.

Section 7.02. Acknowledgment and Disclaimer. The USGS may acknowledge
financial support from the External Organization in the Final Report and
any other publications relating to the Work. In the event that the USGS
does acknowledge such financial support, the report or

publication may include the following statement:

> \"This work has been funded in whole or part by the
> \_\_\_\_\_\_\_\_\_\_\_\_\_\_ under Agreement
> \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ to the U.S. Geological Survey.\"

**Article VIII**

**Quality Assurance**

Access. The employees of the External Organization, representatives of
companies and consultants retained by the External Organization, shall
have access, at all reasonable times, to the USGS\' personnel and
facilities engaged in the Work in order to assure appropriate quality
control of the Work.

**Article IX**

**Conflicts of Interest**

Conflicts of Interest. The USGS agrees to disclose promptly to the
External Organization any conflict of interest (whether business,
financial or other relationship) that might affect or appear to
interfere with the objective performance of the Work to be provided by
the USGS hereunder.

**Article X**

**Confidentiality**

Confidentiality. Notwithstanding anything to the contrary in this
Agreement the USGS shall not disclose, publish, or reproduce, in whole
or in part, any information, both oral and written, or embodied in
materials provided to the USGS by the External Organization and
identified as confidential. This obligation of confidentiality shall not
apply to information which:

\(a\) Is subject to disclosure under the Freedom of Information Act;

\(b\) The External Organization informs the USGS is to be made available
to the public. It is anticipated that research funded by this Agreement
will be made available to the public promptly after completion but will
require review by scientific peers of the researchers. Such information
may be made available to other researchers where appropriate as soon as
needed to advance the state of the science that are the subject of
program;

\(c\) Was already known to the USGS at the time it is received by the
USGS as shown by its prior written records;

\(d\) Is or becomes publicly known without breach of this Agreement by
the USGS;

\(e\) Becomes available to the USGS from a third party entitled to
disclose the information; or

\(f\) Subsequent of receipt it is developed by an employee or consultant
of the USGS, the employee or consultant having no knowledge of all or
part of the information of the earlier disclosure to the USGS.

**Article XI**

**Termination**

Termination. Either party may terminate this Agreement at any time
during the term of this Agreement, upon 60 days prior written notice to
the other party. In such event, compensation shall be paid for Work
performed and expenses incurred prior to the effective date of
termination in accordance with the provisions of Article IV, including
reasonable and necessary expenses incurred in terminating the Work in an
appropriate manner and in payment for the proper storage of the raw data
from the completed portion of testing for a reasonable period, as agreed
to by the parties, and in reimbursement of any amounts required to

be paid by the USGS pursuant to subcontracts; provided, however, that
upon receipt of any such notice of termination, the USGS shall cease the
performance of Work, shall make no further commitments with respect
thereto and shall reduce insofar as possible the amount of outstanding
commitments (including, to the extent requested by the External
Organization, through termination of subcontracts containing provisions
therefor). Upon such termination, the USGS shall deliver to the External
Organization within 45 days of the notice of termination, all data and
information related to the Work accomplished prior to the date of
termination.

**Article XII**

**Independent Entity**

Independent entity. The USGS acknowledges that it will retain the right
to select its own methods or manner of performing the Work, provide its
own facilities, and have exclusive control over its employees and agents
in the performance of the Work. The status of the USGS under this
Agreement shall be that of an independent entity and not that of an
agent, and in accordance with such status, the USGS, the subcontractors,
and their respective officers, agents, employees, representatives and
servants shall at all times during the term of this Agreement conduct
themselves in a manner consistent with such status and shall neither
hold themselves out as, nor claim to be acting in the capacity of,
officers, employees, agents, representatives or servants of the External
Organization.

**Article XIII**

**Miscellaneous**

Section 13.01. Notices. All notices, requests, consents, approvals and
other communications which may or are required to be given by either
party to the other under this Agreement shall be deemed to have been
sufficiently given for all purposes hereunder when delivered or mailed
by registered or certified mail, postage prepaid, return receipt
requested,

\(i\) If to the External Organization, to the attention of:

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Or at such other address as the External Organization shall have
furnished to the USGS in writing,

\(ii\) If to the USGS, to the attention of:

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Or at such other address as the USGS shall have furnished to the
External Organization in writing.

Section 13.02. Written Statement. The USGS agrees, upon request by the
External Organization, to prepare a written statement on the scientific
aspects of the Work, if not already included in the Statement of Work.
The USGS\' fees for the preparation of such written statement will be
negotiated between the parties.

Section 13.03. Entire Agreement, Amendment. This Agreement embodies the
entire Agreement and understanding between the External Organization and
the USGS and supersedes all prior agreements and understandings relating
to the subject matter hereof. Except as otherwise expressly provided for
herein, this agreement may be changed, waived, discharged or terminated
only by an instrument in writing, signed by the party against which
enforcement of such change, waiver, discharge or termination is sought.

Section 13.04. Disputes. The monitors of the Agreement shall expend
their best efforts to amicably resolve any dispute that may arise under
this Agreement. Any dispute they are unable to resolve shall be
submitted, in writing, to the Director of the USGS for resolution. The
decision of the Director shall be binding upon the USGS. The External
Organization may ultimately contest such decision in the appropriate
Federal court. Before resorting to the courts to resolve any disputes,
the parties agree that they will consider attempting to resolve the
issue via an Alternative Disputes Resolution process.

Section 13.05. Laws and Regulations. The Federal Government is governed
by the laws of the United States.

Section 13.07. Benefit. The provisions of this Agreement shall be
binding upon and inure to the benefit of each of the parties and their
respective successors and assignees.

IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the day, month and year first above written.

**EXTERNAL ORGANIZATION U. S. GEOLOGICAL SURVEY**

By [By]{.underline}

Printed Name Printed Name

Title Title [Associate Director]{.underline}

Date Date

**3. Marketing Federally Developed Technology**

Technology transfer in the Federal Government uses marketing concepts of
the private sector. The objectives of both marketing and technology
transfer are to target user audiences and encourage the adoption, use,
and commercialization of products. Many of the tools used in Federal
technology transfer programs are proven marketing tools (some of these
were described in section 1 of this chapter). Marketing offers a means
of enhancing technology transfer activities. Marketing concepts can help
researchers and technology transfer professionals target audiences and
identify appropriate user segments. Because of its importance to
technology transfer, this chapter focuses on marketing, its definition,
and its functions.

**A. Marketing: What Is It?**

Marketing is the process of determining the target audience or set of
users for a product or service, understanding the needs of this
audience, and matching these needs to a new product in a manner that
causes these users to prefer the new product over existing products. To
market effectively, marketing plans are developed. The plan is an
arranged structure designed to guide the marketing process. A good
marketing plan usually includes what is called a market analysis or
market survey. The market survey analyzes the current marketplace and
existing products or competition. The market survey also helps identify
potential problems (including health and safety, regulatory, political,
and economic) as well as opportunities (potential growth areas) and
provides a gauge for estimating the success of a new product.

Once the market survey is completed, it is integrated into a plan of
action that defines the targeted market, includes sales objectives (or
in the case of the Federal Government, commercialization objectives),
offers marketing strategies for meeting those objectives, provides a
budget for accomplishing the objectives, and describes an annual
evaluation plan.

**B. Components of the Marketing Plan**

The following are components of a typical marketing plan:

**A Commercialization Objective:** A good marketing plan is driven by
the commercialization objectives for a given technology. This section of
a marketing plan describes the product to be commercialized, its
principal uses, its benefits, its advantages over the competition, and
commercialization goals (number of units to be sold and a time frame for
full commercialization).

**Defining the Target Users and Market:** The first step in ensuring the
timely transfer of federally developed technology is to identify
potential users of that technology. There are many tools available for
this purpose. **Standard Industrial Classification (SIC) Codes**,
available in almost any library, list all industries and market sectors
by numerical codes and sub-codes. These codes can be used to obtain
lists of companies in these markets and market segments. Segments are
manageable groups with common characteristics of a broad consuming
market that enable marketers to target users with the highest likelihood
of adopting technology while minimizing costs. Targeting specific
demographic and geographic market profiles can further narrow these
segments. In addition, markets can be divided into primary and secondary
groups. Primary markets may be the direct consumers of a technology.
Secondary markets are often the manufacturers of the technology.
Technology transfer efforts should consider both markets since one
market will create a \"demand\" that might lead to commercialization by
the other group.

There are several publications available at most libraries that list
**associations** of industry groups and segments. Associations may also
help create a demand or interest in the technology being transferred.
Identifying trade journals used by specific market groups and segments
is also helpful in targeting potential users. Additionally, **technical
experts** in the technology field may be able to offer contacts that can
lead to further identification of potential users. State Business
Development Centers, Chambers of Commerce, and Small Business
Development Centers can also be of assistance.

**Market surveys** will be very helpful in identifying potential users.
Market surveys often contain lists of companies that might have an
interest in the product. A market survey usually provides the following
information:

> **WHAT A MARKET SURVEY WILL TELL YOU**
>
> \- A description of the \"new\" technology and its potential functions
> and/or applications
>
> \- A description of \"existing\" technology that performs the same
> basic functions and applications
>
> \- The market size of the \"existing\" technology/product in units
> and/or dollars
>
> \- The advantages of the \"new\" technology over \"existing\"
> technology. These can be advantages in function, specific markets,
> pricing, manufacturing capability, etc.
>
> \- Identification and ranking of the top three to five end-user
> industries with the greatest likelihood of adopting the new
> technology/product.
>
> \- Identification and ranking of the most important end-use products
> that could result from a given technology by potential market size
>
> \- A ranking of companies as potential licensees
>
> \- A review of published literature available on the
> technology/product and specific companies using, making, and/or
> selling the technology/product

Conducting a market assessment involves identifying potential users (by
using Standard Industrial Classification (SIC) Codes, association
listings, on-line market databases), contacting a cross-section of
anticipated users, and interviewing potential users regarding the
viability of the technology, conducting literature and on-line computer
searches for similar technology, and discussing the technology with
technical experts in the field. Market surveys are conducted in close
coordination with research development principals and inventors. In some
cases, Federal agencies have used contractors to conduct market surveys
of their technologies. In other cases, certain Federal laboratories,
such as the National Institute for Standards and Technology (NIST), have
the expertise needed to conduct market assessments.

Many Federal agencies have used market surveys not only to help them
assess the commercial viability of their research developments, but also
to assist in making future research funding decisions.

Another tool for identifying users of federally developed technology and
its utility is a **citation analysis** on an agency's existing patents.
A citation analysis lists references to a specific agency patent in
other inventor's patents and patent applications.

**Marketing Strategies:** Once potential users have been identified,
marketing of the technology can proceed by using marketing strategies.
Marketing strategies form the core of a marketing plan. Many of the
technology transfer tools discussed in section 1 of this chapter are
marketing strategies of one form or another. They include:

Advertising - Building awareness of the technology by paid media such as
magazines, newspapers, and television and radio, and direct mail. The
Federal Government can advertise its technologies, but prudence should
be exercised when doing so. Advertisements are not inexpensive, but are
usually much more effective than publicity (which, by definition, is
free), because the advertiser is in control of the communication.

Publicity - Non-paid media communication that helps build target market
awareness and positively affects attitudes about the technology being
transferred. Publicity can be obtained through press releases, news
stories and articles, opinion pieces, interviews, public service
announcements, and visibility at conventions, seminars, and public
events. In developing publicity strategies, it is useful to consider
providing a unique twist to interest the media and to follow-up to
ensure that news releases will be used.

Merchandising - A method used to reinforce advertising messages and to
communicate product information and promotions through non-mass
communications vehicles. Merchandising includes brochures, sell sheets,
product displays and exhibits, video presentations, banners, posters, or
other tools that can be used to describe the technology\'s attributes,
positioning in the marketplace (why the technology is superior to
existing technology), and economics. Merchandising techniques may be
expensive, but they are usually targeted to specific users audiences.
"Showcasing\" and exhibits are merchandising methods, as are meetings.
Seminars, demonstrations and workshops with companies interested in
Federal technology and presentations at technical meetings, and
one-on-one meetings between researchers and interested parties can often
be one of the best means for transferring technology, expertise and
know-how, but could involve travel and the need for non-disclosure
agreements. Fairness-of-opportunity must factor into one-on-one
discussions.

**Evaluation:** The final important component of any marketing plan is
evaluation. At a minimum, progress toward technology transfer should be
assessed on an annual basis and the marketing plan refined accordingly.
Often, initial marketing efforts lead to feedback from potential users
that can be used to improve the subject technology or products.
Marketing efforts can also lead to CRADAs. Marketing plans may need to
be adjusted to accommodate situation changes created during these
partnerships. These technology transfer activities can help increase the
likelihood of successful commercialization.

**A simple marketing plan and sample market search conducted for an
actual USGS invention follows.**

**Sample Market Plans**

Quick Market Search for

Hydrothermal Reactor Cell
Users![](media/image2.wmf){width="2.1326388888888888in"
height="3.2930555555555556in"}

**Office of Technology Transfer**

**July 1996**

# Quick Market Research on

**Rosenbauer Hydrothermal Reactor Cells**

**About the Development**

USGS researchers have designed and constructed two reactor cells that
provide a new level of experimental capability in terms of corrosion
resistance. The cells are useful for testing and research aimed at
understanding characteristics of fluids, particularly their response to
high temperatures and pressures.

One of the new cells is an all gold flexible cell with iridium gaskets.
The gold top on this cell replaces the current design, which uses a
titanium top, a source of corrosion in reducing environments. The
iridium seal prevents self-alloying problems.

The second cell is a fixed-volume Rene autoclave with a Pt-Rh liner. The
cell is designed for use with extremely corrosive fluids to 500^o^ C.

**Possible Markets**

The cells offer widespread potential application to diverse industries
involved in highly corrosive and high-temperature and pressure systems,
such as nuclear, geothermal power, and oil.

Market segment search categories include:

petroleum research

geothermal power research

nuclear power research

chemical research

minerals research

associations related to these areas

suppliers of analytical and laboratory equipment

**Project Objective**

The cells both require extensive testing before they are ready for
transfer to the private sector. A partnership with a company with
interest in the cells will be pursued under the auspices of a
Cooperative Research and Development Agreement.

**Promotional Strategy**

Promotional strategies include conducting a quick market search and
providing fact sheets to companies and associations identified through
the search. A market search of potential petroleum research entities and
associations has been conducted and is attached. Other searches can be
conducted upon request.

In addition, this partnership opportunity will be highlighted on the
USGS Technology Transfer Home Page.

Additional searches can provide lists of periodicals, newsletters,
journals, etc. of interest to specific market segments, such as the
petroleum research segment.

**U.S. Department of the Interior**

**U.S. Geological Survey**

**Technology Transfer Opportunities:**

**Partnerships**

**Development of Corrosion-Resistant Hydrothermal Cells**

**About the Development**

Researchers at the U.S. Geological Survey (USGS) have designed and
constructed two laboratory test cells that provide a new level of
experimental capability in terms of corrosion resistance. A USGS
laboratory tasked with conducting research on submarine hydrothermal and
continental geothermal systems has used the cells. Researchers have used
the high temperature and high pressure testing cells to investigate the
chemical and mineralogical changes that occur during rock/water
interactions at elevated temperature. These tests are conducted in fixed
and flexible volume reaction cells. The USGS has conducted considerable
research and experimentation to design and build reaction cells that are
inert and also have desirable mechanical properties. A new flexible and
a new fixed reaction cell are the products of this research.

**The Flexible and Fixed Cells**

One of the new USGS cells is an all gold flexible cell with iridium
gaskets. The gold top on this cell replaces the current design, which
uses titanium, a source of corrosion in reducing environments. The
iridium seal prevents self-alloying problems.

The other USGS cell is a fixed-volume Rene autoclave with a Pt-Rh liner.
This cell is designed for use with extremely corrosive fluids and
temperatures up to 500^o^ C.

**Partnership Opportunity**

Before the two new reaction cells can be transferred to the private
sector for commercial use, USGS researchers need to refine and test
them. The USGS is seeking an industrial partner to work with it through
a Cooperative Research and Development Agreement (CRADA). The industrial
partner would assist the USGS in testing the cells and in developmental
work.

**For More Information**

Additional information about the reaction cells and the partnership
opportunity can be obtained by contacting:

Robert Rosenbauer

U.S. Geological Survey

Geologic Discipline

345 Middlefield Road

M.S. 999

Menlo Park, CA 94025

Tel: (415) 329-4198

FAX: 415/329-4463

email:brosenbau@usgs.gov

List of Companies/Associations With Possible Interest in Hydrothermal
Reactor Cells

## Associations

American Hardware Manufacturers Assn

931 N. Plum Grove Rd

Schaumburg, IL 60173-4796

tel: 708/605-1025

American Machine Tool Distributors' Assn

1335 Rockville Pike

Rockville, MD 20852-1400

tel: 301/738-1200

American Petroleum Institute

1220 L Street, NW

Washington, DC 20005-4073

tel: 202/682-8000

American Society for Quality Control

310 W. Wisconsin Avenue

Milwaukee, WI 53203-2211

tel: 414/272-8575

American Supply Association

20 N. Wacker Drive, Suite 2260

Chicago, IL 60606-3003

Tel: 312/236-4082

Associated Equipment Distributors

615 W. 22nd St

Oak Brook, IL 60521-1977

Tel: 608/574-0650

Chemical Specialties Manufacturers Assn

1001 Connecticut Avenue NW

Suite 1120

Washington, DC 20036-5594

Tel: 202/872-8110

Environmental Industry Council

1825 K Street, NW, Suite 210

Washington, DC 20006-1202

tel: 202/331-7706

Fabricators and Manufacturers Assn International

5411 E State St

Rockford, IL 61108-2376

Tel: 815/339-8700

Fluid Controls Institute Inc.

31 South St, Suite 303

Morristown, NJ 07960-4137

tel: 201/829-0990

Independent Petroleum Assn of America

1101 16th St NW

Washington, DC 20036-4886

tel: 202/857-4722

Industrial Research Inst.

1550 M St. , NW, 11th floor

Washington, DC 20036-0000

tel: 202/872-6350

National Assn of Manufacturers

1331 Pennsylvania Ave, NW

Suite 1500N

Washington, DC 20004-1703

tel: 202/637-3000

National Petroleum Refiners Assn

1899 L St NW, Suite 100

Washington, DC 20036-3896

tel: 202 457-0480

National Solid Wastes Management Assn

1730 Rhode Island Ave, NW

Suite 1000

Washington, DC 20036-3196

tel: 202/659-4613

American Institute of Mining, Metallurgical and Petroleum Engineers

345 E 47th St, 14th floor

New York, NY 10017-2330

tel: 212/705-7695

Metallurgical Society of AIME

420 Commonwealth Drive

Warrendale, PA 15086-7514

tel: 412/776-9000

National Assn of Corrosion Engineers

P.O. Box 218340

Houston, TX 77218-8340

tel: 713-492-0535

Society of Petroleum Engineers

222 Palisades Creek Drive

Richardson, TX 75080-2040

tel: 214/669-3377

American Assn of Petroleum Geologists

1444 S Boulder Ave

Tulsa, OK 74119-3604

tel: 918/584-2555

American Nuclear Energy Council

410 1st St SE

Washington, DC 20003-1894

tel: 202/484-2670

American Society for the Testing of Materials

1916 Race St

Philadelphia, PA 19103-1108

tel: 215/299-5400

Institute of Nuclear Power Operations

1100 Circle 75 Pkwy, NW, Suite 1500

Atlanta, GA 30339-3024

tel: 404/953-3600

Materials Properties Council

345 E 47th St, 14th fl

New York, NY 10017-2330

tel: 212/705-7693

Scientific Apparatus Makers Assn

1101 16th St NW, Suite 300

Washington, DC 20036-4884

tel: 202/223-1360

## Industrial Corporations With Research Laboratories - Oil and Gas Extraction

Amoco Production Co

200 E Randolph Dr

Chicago, IL

tel: 312/856-2222

Coastal Oil and Gas Corp

9 Greenway Plaza

Houston, TX 77046-0979

tel: 713/877-1400

Conoco Inc

1000 S Pine St

Ponca City, OK 74603-0001

tel: 405/767-3456

Conoco Inc

600 N Dairy Ashford Road

Houston, TX 77079-1121

tel: 713/293-1000

Continental Laboratories Inc

6600 Fairbanks-North Houston Rd

Houston, TX 77040-4309

tel: 713/460-0780

Discovery Oil Ltd

2049 Century Park E Suite 1930

Los Angeles, CA 90067-3121

tel: 213/277-7692

Dupont El de Nemours & Co Inc

Petrochemicals Div

1007 Market St

Wilmington, DE 19898-0001

tel: 302/774-1000

Exxon Chemical Americas

13501 Katy Freeway

Houston, TX 77079-1398

tel: 713/870-6000

Exxon Co USA

800 Bell St

Houston, TX 77002-7426

tel: 713/656-3636

Freeport-McMoran Oil and Gas

1301 Fannin St

Houston, TX 77002-7008

tel: 713/658-7145

International Mineral and Chemical Corp

2315 Sanders Rd

Northbrook, IL 60062-6108

tel: 708//564-8600

Meridian Oil Inc

801 Cherry St

Fort Worth, TX 76102-6803

tel: 504/582-4000

Mobil Exploration & Producing US Inc

12450 Greens Point Dr

Houston, TX 77060-0000

tel: 713/775-2000

Mobil Oil Corp Exploration & Production

150 E 42nd St

New York, NY 10017-5666

tel: 212/883-7433

Newhall Refining Co Inc

22674 N Clampitt Rd

Newhall, CA 91321-0000

tel: 805/259-2660

Occidental Petroleum Corp

10889 Wilshire Blvd

Los Angeles, CA 90024-4201

tel: 213/879-1700

Pacific Enterprises Oil

Pacific Enterprises Oil

2001 Ross Ave Suite 1000

Dallas, TX 75201-2916

tel: 214/979-6900

Phillips Petroleum Co

4th & Keeler Sts

Bartlesville, OK 74004-0001

tel: 918/661-6600

Quaker State Corp

255 Elm St

Oil city, PA 16301-1412

tel: 814/676-7676

Quinoco Petroleum Inc

4582 S Ulster St Pkwy Suite 1700

Denver, CO 80237-2641

tel: 303/850-7373

Royal Oil & Gas Corp

P.O. Box 809

Indiana, PA 15701-0809

tel: 412/463-0246

Santa Fe Energy Co

12070 Telegraph Rd

Santa Fe Springs, CA 90670-3746

tel: 213/944-0311

Shell Oil Co

900 Louisiana St

Houston, TX 77002-4901

tel: 713/241-6161

Texas Meridian Resources Inc

580 Westlake Pk Suite 825

Houston, TX 77070-2676

tel: 713/558-8080

Texas Oil and Gas Corp

1700 Pacific Avenue

Dallas, TX 75201-4618

tel: 214/954-2000

Total Petroleum North America Ltd

999 18th St Suite 2201

Denver CO 80202-2492

tel: 303/291-2000

Union Pacific Corp

8th & Eaton Aves

Bethlehem, PA 18018-2297

tel: 215/861-3200

**A Model \"Marketing Plan\"**

(Note: This plan is intended to serve as an overall guide; it contains
some specifics to convey in general how such a plan may be written.)

Title: Technology Transfer of a Research Product

Person Responsible: Principal Investigator, Bureau Research Center

FYXXX Funding: \$XXXX

### FTE\'s: X

Related Projects: Title of Related Projects

Background: (SAMPLE) The U.S. Bureau of Mines conducts research to
ensure that the Nation\'s minerals and mineral materials supplies are
readily available to consumers. Research focuses on making mining a
safer and healthier occupation for mine workers, making the minerals
industry more competitive through the development of advanced mining and
mineral processing technologies, and helping the Nation conserve its
valuable mineral resources by developing minerals and metals
conservation and recycling techniques. Another very important facet of
the Bureau\'s research program is to make mining and minerals processing
compatible with the environment.

About (the Research Product): (SAMPLE) Research on the (product) was
conducted in concert with the Bureau\'s mission to make mining and
minerals processing more compatible with the environment and to provide
mine and mineral processing plant operators with low-cost, effective
technology to meet their environmental responsibilities and obligations.
(Continue with a description of what the product is, what it does, why
it is important.)

(Market Position Statement) Goal of Market Plan: It is the objective of
this plan to transfer the (research product) to (continue with a
description of what will be accomplished with this project, i.e., that
the product be transferred to at least one or two commercial
manufacturers, who will produce XXX quantities of the product during the
next XXX years.)

(Basic Selling Idea) Benefits to Industry: (Start with a problem
statement and tie into the research product. How does the research
product address the problem, what benefits does it offer the industry or
potential marketers and their customers, etc.)

(Market Analysis, Current Market\--a market analysis may be a task of
the TT Project) The Market: The immediate, target market for the
(research product) is\.... (Which type of industry? Who in the industry
specifically if this is known? What incentives does this industry have
to use the technology, i.e., are there expected regulatory requirements
within the next few years? What other segments of the industry may be
interested in marketing? The construction? Agriculture? Aerospace? Who
will the customers of the marketers be?)

(Promotional Strategy) Technology Transfer Strategy: We propose the
following as part of our overall strategy plan to actively transfer the
(research product) technology. This plan will use economic benefits data
delineated through a study conducted by the XYZ office/company.

Task 1: Conduct a thorough market analysis of manufacturers, venture
capitalists, entrepreneurial companies that may have possible interest
in marketing the (research product). This will be contracted to XXX
Market Survey
Company.\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$
X,000

> Target date: XX,XX,9X

Task 2: Conduct a market analysis of industries and users who would
serve as the customer base/market for the (research product).

> Target date: XX,XX,9X\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$ X,000

Task 3: Identify procedures, equipment, processes for (producing large
quantities of research product or accommodating process/technology).

> Target date: XX,XX,9X\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$ X,000

Task 4: Prepare an informational handout on the (research product) and
send this to companies identified in market
survey.\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$ X,000

> Target date: XX,XX,9X

Task 5: Conduct \"sales visits\" to promising companies identified
through market survey. Present concept and economic benefits data to
company.\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$XX,000

> Target date: XX,XX,9X

Task 6: Identify a suitable site where technology can be demonstrated.

\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$XX

> Target date: XX,XX,9X

Task 7: Schedule and conduct a demonstration of the (research product)
at the identified site. Invite interested companies identified in market
survey. Invite other companies who are interested in using the
technology. Invite secondary and tertiary market companies to generate
interest within these sectors.\-\-\-\-\-\-\-\-\-\-\-\--\$XX,000

> Target date: XX,XX,9X

Task 8: Follow-up with additional \"sales visits\" to companies
appearing to have further interest in marketing the research product.

Task 9: Advertise exclusive patent licensing opportunity in the Commerce
Business Daily. Select licensee(s) (to be coordinated through
WO)\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$X

Target date: XX,XX,9X

Task 10: Establish MOAs or CRADAs with licensee(s) to study scale-up of
(research product)
development/fabrication.\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$X

Target date: XX,XX,9X

Task 11: Conduct large-scale testing with cooperator.

> Target date: XX,XX,9X\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$XX

Task 12: Initiate commercial production/fabrication and produce at least
XXXX.

> Target date: XX,XX,9X\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--\$XX

Estimated Cost to Implement Plan:

(based on tasks list) \$XXXX,XXXX

Progress and Evaluation:

**4. Cooperative Research and Development Agreements (CRADAs)**

**A. CRADAs and Their Benefits**

Cooperative Research and Development Agreements (CRADAs) are a key
feature of the Federal Technology Transfer Act of 1986. The Act permits
CRADAs to be developed by Federal laboratories to encourage non-Federal
parties and the Government to work together and stretch their research
budgets. By entering into a CRADA, the Federal Government can optimize
its resources and cost-effectively perform research by sharing the costs
of this research with the CRADA partner. The collaborating partner
agrees to provide resources that may consist of funds, personnel,
services, facilities, equipment or other resources needed to conduct a
specific research or development effort while the Federal laboratory
agrees to provide similar resources **but not funds** directly to the
partner.

The CRADA vehicle provides incentives that help speed the
commercialization of federally developed technology. The Government
protects any proprietary information brought to the CRADA effort by the
partner. Federal scientists can work closely with their non-Federal
counterparts exchanging ideas and information while protecting company
secrets. Also, all parties may mutually agree to keep research results
emerging from the CRADA confidential and out of public domain for up to
5 years. CRADAs also enable the Government and the collaborating partner
to share patents and patent licenses. This can ultimately result in
royalties paid to the Government and to the Federal inventor(s).

To summarize, CRADAs offer the following benefits:

> \- Enable both partners to leverage their research budgets and
> optimize resources.
>
> \- Provide a means for sharing technical expertise, ideas, and
> information in a protected environment. The Federal Government can
> protect from disclosure any proprietary information brought to the
> CRADA effort by the partner(s).
>
> \- Permit Federal scientists to work closely with their non-Federal
> counterparts.
>
> \- Offer non-Federal partners access to a wide range of expertise in
> many Disciplines.
>
> \- Allow the partners to agree to share intellectual property emerging
> from the effort. This can result in royalties to the Government and
> the Federal inventor.
>
> \- Permit the Federal Government to protect information emerging from
> the CRADA from disclosure for up to 5 years, if this is desirable.

A CRADA is not a procurement contract, grant, or cooperative agreement
as those terms are used in 31 USC 6303‑6305. In other words: a CRADA
does not fall under Federal Acquisition Regulations (FAR).

CRADAs typically consist of two main components: General Provisions (the
legal framework) and a Statement of Work or SOW (the objectives, tasks,
and deliverables of the CRADA activity).

**B. Who May Enter Into a CRADA With the USGS**

Virtually any organization may enter into a CRADA with the USGS.
According to statute (P.L. 99‑502), \"units of State or local
government; industrial organizations (including, but not limited to,
corporations, partnerships, limited partnerships, and industrial
development organizations); public and private foundations; nonprofit
organizations (including universities); or persons (including licensees
of inventions owned by the Federal agency)\" may enter into CRADAs with
the USGS.

**C. Types of Resources Partners May Contribute**

Non‑Federal partners may contribute funds, personnel, equipment,
facilities, services, and intellectual property to a cooperative
research and development effort. Federal laboratories may also
contribute personnel, equipment, facilities, services, and intellectual
property to the cooperative effort to the non‑Federal partner.

USGS funds, however (or other Federal funds contributed to the CRADA),
cannot flow to the non‑Federal partner‑‑directly or indirectly. For
example, software or equipment contributions by the non‑Federal partner
that are part of the CRADA cannot have maintenance contracts that
require payment by the Federal partner. Also, when purchasing supplies,
equipment, or services with CRADA funds, the USGS must follow Government
procurement rules.

**D. Obligations of CRADA Parties**

Obligations of the CRADA partners are described in the Statement of Work
(SOW). The SOW is the technical core of the CRADA, the basis for initial
approval/rejection by USGS, and the source of technical information in
certain articles of the CRADA. It describes the CRADA effort, the
individual tasks involved and the anticipated outcomes. The SOW must be
short enough to encourage swift review and action, but long enough to
allow a review of its merits. Information within the SOW from the
obligated parties should be complete enough, and clear enough, to permit
the Principal Investigator and the Business Development Branch to
independently evaluate the success of the project. The goal must be
verifiable and the objectives must be measurable.

**E. Completing the Legal/Financial Components of the CRADA**

A CRADA is a legal contract forming a business agreement. Unlike the
typical contract for procured services regulated by Federal Acquisition
Regulations, the CRADA between the USGS and a private sector partner is
a type of "deal." Unless the non-USGS partner perceives sufficient
safety in the activity (for example, the protection of proprietary data)
and a high enough expected return, it will not invest its resources or
risk its know-how on the project. Occasionally the Federal research
principal investigator may have a choice of potential partners and may
be looking for the "best deal" for the agency and for the USGS inventor.

Most articles in the CRADA General Provisions are negotiable. Negotiable
items include intellectual property rights, protection of information,
publication rights, and deadlines.

**F. Steps for Creating and Executing a CRADA**

There are basically five steps for establishing and executing a CRADA
with the USGS:

**STEPS FOR EXECUTING A CRADA**

1\. Determine the Validity of a Potential Partner

2\. Negotiation of the CRADA Terms and Statement of Work (SOW)

3\. Applicable Bureau Discipline Review and Recommendation

4\. Associate Director Approval

5\. Post‑Project Evaluation

Complementing these five steps are seven key documents and forms that
should be completed to organize and establish a CRADA:

**KEY DOCUMENTS FOR A CRADA [Steps Where Used]{.underline}**

1\. Optional Industrial Participant Questionnaire 1

2\. Federal Register Notice 2

3\. CRADA Document (Cover Page, Statement of Work, and

General Provisions) 2

4\. The Discipline Proposal 3

5\. The Principal Investigator\'s Conflict of Interest Statement 3

6\. The CRADA Decision-Tree and Criteria Checklist 3

7\. The Discipline's Recommendation Memorandum 3

**Step 1: Determine the Validity of a Potential Partner**

Most technology transfer and Cooperative Research and Development
Agreement activities occur at the laboratory, branch and Discipline
levels of an agency. The researcher or Principal Investigator (PI) may
be the first point-of-contact for a potential CRADA cooperator. To
assist the researcher in determining whether or not the prospective
partner is technically and financially suitable for a CRADA, an optional
Industrial Participant Questionnaire (Form 1) has been prepared.
Although there is no requirement for completing this form, the
researcher should use some documented system that will provide a
satisfactory audit trail and demonstrate that an effort was made to
establish the viability of a potential cooperator. This information
should be provided to the applicable research division.

Suitability of a potential partner also must be considered from ethical
and public perception points of view. The Decision-Tree (Form 6a) has
been prepared to help the researcher evaluate these subtler but very
important issues when considering a potential partner. It is highly
recommended that the researcher seriously go through the decision tree
at this point in considering a potential CRADA partner. If the
Decision-Tree creates doubts or develops questions, the researcher
should consult with his or her supervisors and/or the Business
Development Branch before proceeding further towards a CRADA. If the
Decision-Tree is completed successfully, proceed with the questions on
Form 6b and make sure they are answered properly.

**Step 2: Negotiation of CRADA Terms and Statement of Work**

[Statement of Work (SOW)]{.underline}

Once the researcher determines that the technical and economic
objectives of an industrial partner matches the needs of his/her
research program, the researcher should work with the potential
cooperator to draft a Statement of Work (SOW) that describes the CRADA
effort and its outcomes. The SOW should be a concise, technical proposal
containing the kinds of information found in typical contracts. It
should consist of the following subsections:

> Background -- Include the history of the opportunity or problem; the
> market demand, industry need, or commercial potential of the idea;
> earlier attempts to solve the problem or exploit the opportunity;
> projections of increasing need or demand.
>
> Objective -- Include the specific measurable result of the current R&D
> (or evaluation) project: the problem to be solved; the device to be
> designed, enhanced, tested, or refined.
>
> Tasks -- Identify each task or step necessary to reach the stated
> objective should be described in detail. Included in the description
> should be a list of the Federal laboratory responsibilities for that
> task and the responsibilities of the CRADA partner.
>
> Expected Results -- Determine the implications of the project;
> short‑term generations of additional projects or research; longer‑term
> commercialization of the research materials; estimates of expected
> financial return on the inventions associated with the project.
>
> Constraints -- Identify uncertainties in the future or estimates
> associated with the project; assumptions about future events and the
> availability of resources, personnel, or equipment; questions of
> technical feasibility; deadlines, windows‑of‑opportunity, or other
> constraints.
>
> Resources - A detailed list of all resources being supplied to the
> CRADA by the partners including cash contributions and an estimate of
> in-kind expenses **MUST** be included.

Once approved, the SOW becomes the key part of the completed CRADA.

Detailed instructions for completing the Cover Page (form 9 - 2040) and
Statement of Work are included under CRADA form 3. Also, these
instructions cover amendments to a CRADA.

[Federal Register Notice]{.underline}

It is suggested that before pursuing further negotiations, a [Federal
Register]{.underline} notice similar to the samples included in Forms 2a
and 2b should be prepared and published by the applicable Bureau
Discipline to substantiate that the Bureau has met the
fairness-of-opportunity obligations required by technology transfer
statutes. The fairness-of-opportunity standard encompasses two elements:

1\) The Government agency or Bureau engaging in the technology transfer
activity has widely communicated or advertised its scientific capability
and its interest in collaborations; and

2\) The selection of a single company from multiple applicants is based
on objective criteria. The objective of most Federal agencies or Bureaus
should be to accommodate as many collaborative partners as possible in a
single CRADA; however, in many situations, a single partner is the best
approach for transferring a particular technology.

Forms 2a and 2b show two types of [Federal Register]{.underline}
notices. The first format is most suited for CRADAs where only one
partner is appropriate. The second format is appropriate for situations
in which the primary collaborator is willing to open the CRADA to others
in order to increase the resource pool or expertise base.

Once replies have been received in response to the [Federal
Register]{.underline} notice, the principal investigator may wish to
conduct preliminary discussions about possible partnership opportunities
with other companies expressing interest.

[Sharing the CRADA General Provisions]{.underline}

At the same time he/she is preparing the [Federal Register]{.underline}
notice, the principal investigator should send the potential cooperator
a copy of the Bureau's General Provisions for a CRADA. The researcher
may wish to indicate to the cooperator that elements of the CRADA are
negotiable, however, terms of the General Provisions cannot be changed
from the model without involving the Business Development Branch. If the
potential partner has any questions concerning the General Provisions or
wishes to change any of the articles, they should be referred to the
Business Development Branch. Copies of the USGS General Provisions are
included as part of Form 3 of this section.

The principal investigator must keep his/her respective branch, office
and/or Discipline apprised of discussions conducted with the potential
cooperator since all proposed CRADAs must be supported by the
researcher's immediate supervisor and Discipline chief. The principal
investigator must follow any applicable Discipline policy on the
submission of CRADAs.

**Step 3: Applicable Bureau Discipline Review**

The researcher would prepare a Discipline proposal (see Form 4) for
official Discipline review while final negotiations are underway.
Proposals should be submitted for Discipline review, as soon as
possible, to allow time for modifications or clarifications. Final
Discipline agreement is normally not granted until the negotiations are
concluded.

The researcher should also complete a Conflict of Interest Statement
(Form 5). This form identifies any potential conflict that the
researcher may have other than possible patent royalties.

Completion of the CRADA Decision-Tree (Form 6a) and meeting the criteria
for acceptance as evidenced by a properly completed checklist (Form 6b),
as well as a brief memorandum (Form 7) signed by the Discipline\'s
approving authority complete the Discipline Approval Package. This
package basically certifies that the Discipline has the resources and
interest in pursuing the CRADA activity.

**Step 4: Associate Director\'s Approval**

The Discipline-approved CRADA package, including:

> 1\) The complete CRADA document consisting of cover page, statement of
> work, and General Provisions (Form 3),
>
> 2\) A copy of the Federal Register notice (Form 2),
>
> 3\) A copy of the Discipline-approved Conflict of Interest Statement
> (Form 5),
>
> 4\) Completion of the Decision-Tree and a copy of the CRADA Criteria
> for Acceptance checklist (Form 6b), and
>
> 5\) The memorandum from the Discipline recommending the CRADA for
> approval (Form 7)
>
> should be forwarded to members of the Business Enterprise Council
> (BEC) through the Discipline's representative on the BEC. This
> council, consisting of representatives from the Office of the
> Director, Business Development Branch and the Disciplines, reviews all
> CRADAs. If the CRADA effort meets USGS objectives and standards, the
> council recommends approval of the CRADA. Any negotiations over
> changes to the General Provisions will have occurred prior to the
> Discipline approval of the CRADA. Within the USGS, these negotiations
> are conducted by Business Development Branch personnel with support
> from the Department's Office of the Solicitor.
>
> Once the BEC recommends approval of the CRADA, the Discipline is
> notified. The Discipline prepares the transmittal letter for the
> Associate Director\'s signature (Form 7). The Associate Director signs
> the two copies of the CRADA and forwards both to the partner for
> signature. The Associate Director\'s letter of transmittal to the
> partner asks that the partner sign both copies, retain one copy and
> return the other to the Business Development Branch. (See Form 8).
>
> When the original signed CRADA copy is returned to the Discipline, it
> should be treated as a valuable document, particularly since the final
> agreement may contain some proprietary data from the partner.

**Step 5: Post-Project Evaluation**

The principal researcher involved with the CRADA effort should track
progress and ensure that expenditures of any incoming collaborator
dollars and program funds are reported as per their Discipline's policy.
Form 10 may assist in annual project reporting and closeout to the
Discipline concerning CRADA progress, expenditures, and milestones. This
type of reporting also provides audit trails.

Under the terms of the CRADA, each party to the agreement has the
obligation to report inventions to the other partner. The CRADA\'s
General Provisions at Article 4 (Patent Rights) provides a detailed
invention disclosure format. USGS employees can use the Department\'s
form DI-1215 (shown in this handbook as Form 9). The cooperator can use
any format that provides the details called for in the CRADA. It is the
principal researcher\'s responsibility to make sure that these
disclosures are incorporated into the Discipline\'s monitoring program
for each project.

**CRADA Forms**

**Form 1: Industrial Participant Questionnaire**

**(OPTIONAL)**

INDUSTRIAL PARTICIPANT QUESTIONNAIRE

Form to be sent and completed by the Industrial Participant, University
or Consortia interested in a CRADA or a possible license with USGS.

**Corporate Information**

1\. Legal Name/Address:

a\. Are you a subsidiary of a larger corporation?

\_\_\_\_Yes \_\_\_ No

If yes, please list parent company and nationality of parent
corporation.

b\. If you operate in more than one location in what state or country
could research or

manufacture take place?

2\. Do you qualify as any of the following:

a\. a small business \_\_\_\_Yes \_\_\_No.

b\. a minority or woman owned business \_\_\_\_ Yes \_\_\_No

c\. University \_\_\_\_Yes \_\_\_\_No

d\. Consortia \_\_\_\_Yes \_\_\_\_No

3\. What USGS technology/patent you are interested in?

4\. How did you learn about USGS technical capability in this area?
(Example: Attended a technical talk, attended a technology transfer
session.)

5\. What type of technical exchange are you interested in?

\_\_\_\_CRADA \_\_\_License \_\_\_Other

a\. If you are interested in a CRADA, identify the types of resources
that you could contribute to the project by

checking all appropriate boxes.

\(1\) \_\_\_personnel \_\_\_engineering \_\_\_scientific

\_\_\_marketing \_\_\_other estimated \$ value\_\_\_

\(2\) \_\_\_facilities \_\_\_equipment estimated \$ value\_\_\_

6\. What is your primary business technology or product? How does the
USGS technology compliment or enhance your organization\'s current
products? Is this technology intended as a new product line?

7\. What applications for the technology are you interested in?
(Example: medical, automotive, environmental remidation for water.)

8\. Does your company already have technical background or patents in
this area? \_\_\_Yes \_\_\_No

If yes, please describe briefly.

9\. Is your organization on any department list or under any type of EPA
non‑compliance list?

**Form 2: Samples of Federal Register Announcements**

**SAMPLE FEDERAL REGISTER NOTICE Format 2a**

**Geological Survey**

**Technology Transfer Act of 1986**

**Agency:** United States Geological Survey, Interior.

**Action:** Notice of proposed cooperative research and development
agreement (CRADA) negotiations.

**SUMMARY:** The United States Geological Survey (USGS) is contemplating
entering into a Cooperative Research and Development Agreement (CRADA)
with **(insert partner name)** to **(insert purpose of CRADA)**.

**INQUIRIES:** If any other parties are interested in similar activities
with the USGS, please contact: **(insert principal investigator or
designated USGS contact)**.

**SUPPLEMENTARY INFORMATION:** This notice is to meet the USGS
requirement stipulated in the Survey Manual.

Dated: **(insert date)**

**(Name of Federal Register notice submitter)**

**SAMPLE FEDERAL REGISTER NOTICE Format 2b**

**Geological Survey**

**Technology Transfer Act of 1986**

**Agency:** United States Geological Survey, Interior.

**Action:** Notice of proposed cooperative research and development
agreement (CRADA) negotiations and invitations for other participants.

**SUMMARY:** The United States Geological Survey and **(insert partner
name)** are considering forming a Cooperative Research and Development
Agreement (CRADA) to **(insert purpose)**. We are interested in other
possible partners in this effort. We are looking for a partner or
partners that meet the following requirements: **(insert partner
requirements, i.e., capabilities, etc.)**

Requirement 1: **(insert)**

Requirement 2 **(etc.)**

INQUIRIES: If your company is interested and it meets the aforementioned
requirements, please submit a letter of interest addressing these
requirements to: **(name of principal investigator or designated USGS
contact)**.

**SUPPLEMENTARY INFORMATION:** This notice is to meet the USGS
requirement stipulated in the Survey Manual.

Dated: **(insert date)**

**(Name of Federal Register submitter)**

> **Form 3: The CRADA Document**
>
> **a) COVER PAGE (FORM 9 - 2040)**
>
> **b) STATEMENT OF WORK**
>
> **c) GENERAL PROVISIONS**
>
> **d) FORM FOR AMENDMENTS (FORM 9 - 2041)**
>
> **e) INSTRUCTIONS FOR COMPLETING THE CRADA DOCUMENT AND AMENDMENTS**

![](media/image3.png){width="6.6375in" height="8.942361111111111in"}

**Page \_\_\_ of \_\_\_\_**

**STATEMENT OF WORK**

**(A detailed Statement of Work (SOW) follows the Cover Page. See the
following instructions for contents of the SOW. All pages throughout the
entire CRADA document, Cover Page through General Provisions, are
sequentially numbered.)**

**COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENT**

**FOR A PROJECT BETWEEN THE U.S. GEOLOGICAL SURVEY AND**

**ONE COLLABORATOR**

[General Provisions]{.underline}

This Cooperative Research and Development Agreement (\"CRADA\") is
entered into by and between
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ (\"the Collaborator\"),
and \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_of the United States
Geological Survey(\"USGS\"). The parties agree as follows:

Article 1. **[Definitions]{.underline}**

1.1 The term \"Cooperative Research and Development Agreement\" (CRADA)
means the document describing research activities that are jointly
undertaken by the USGS and one or more non-Federal parties that have
entered into a CRADA with USGS for that purpose.

1.2 The term \"Invention\" means any invention or discovery which is or
may be patentable under Title 35 of the United States Code.

1.3 The term \"made\" in relation to any invention means the conception
or first actual reduction to practice of such invention.

1.4 The term \"Proprietary Information\" means information which
embodies trade secrets developed at private expense outside of this
CRADA or which is confidential technical, business, or financial
information provided that such information:

\(i\) Is not generally known or available from other sources without
obligations concerning its confidentiality;

\(ii\) Has not been made available by the owners to others without
obligation concerning its confidentiality; and

\(iii\) Is not already available to the Government without obligation
concerning its confidentiality.

1.5 The term \"Subject Data\" means all recorded information first
produced in the performance of this CRADA.

1.6 The term \"Subject Invention\" means any invention of the
Collaborator or USGS conceived or first actually reduced to practice in
the performance of work under this CRADA.

1.7 The term \"Intellectual Property\" means patents, trademarks,
copyrights, trade secrets, mask works and other forms of comparable
property protectable be Federal, State, or foreign laws.

1.8 The term \"Background Intellectual Property\" (BIP) refers to a
patent or patent application covering an invention or discovery of
either party, or a copyrighted work, a mask work, trade secret or
trademark developed with separate funds outside of the CRADA by one of
the parties or with others. BIP is not considered as a Subject
Invention.

1.9 The term \"Created\" in relation to any copyrightable software work
means when the work is fixed in any tangible medium of expression for
the first time, as provided for at 17 U.S.C. 101.

1.10 The term "Generated Information\" means information produced in the
performance of the CRADA.

1.11 The term \"Protected CRADA Information\" means Generated
Information which is marked as being Protected CRADA Information by a
party to this agreement and which would have been Proprietary
Information had it been obtained from a non-Federal entity.

1.12 The term \"Collaborator\'s Assigned Employees\" means those
employees of the Collaborator who are present at USGS facilities for a
continuous period of more than 2 weeks.

Article 2. **[Statement of Work]{.underline}**

Cooperative research performed under this CRADA shall be performed in
accordance with the Statement of Work attached hereto as pages 2 through
\_\_\_. Any modification to this initial scope shall be made by mutual
agreement between the Collaborator and USGS and shall be incorporated
herein by a formally executed written amendment to this CRADA as per
Article 12.5.

Article 3. **[Financial Obligation]{.underline}**

3.1 The term of the joint project is from \_\_\_\_\_\_\_\_\_
to\_\_\_\_\_\_\_\_\_\_. The Collaborator\'s total contribution is
estimated at \$\_\_\_\_\_\_\_\_\_\_\_\_\_. Of the total stated above,
\$\_\_\_\_\_\_\_\_\_ is direct contribution to the USGS and
\$\_\_\_\_\_\_\_\_\_\_\_ is in-kind services and resources. Method and
scheduling of payment for current and subsequent years is included on
cover attachment

9-2040 or will be provided annually by amendment to the CRADA General
Provisions.

3.2 The contribution of USGS shall be in the form of labor, equipment,
facilities, information, and/or computer software estimated at
\$\_\_\_\_\_\_\_\_\_\_\_\_\_subject to available funding.

3.3 Royalty payments, when required, shall be made by the Collaborator
to USGS in accordance with provisions of Articles 4.6. and 6.1. All
payments by the Collaborator shall be made payable to the United States
Geological Survey and mailed to the following address:

U.S. Geological Survey

Reston, Virginia 20192

Article 4. **[Patent Rights]{.underline}**

4.1 **[Reporting]{.underline}**. The parties agree to disclose to each
other every Subject Invention, which may be patentable or otherwise
protectable, within 60 days of the time that an inventing party reports
such invention to the person(s) responsible for patent matters in the
inventing organization. These disclosures should be in sufficient enough
detail to enable a reviewer to make and use the invention under 35
U.S.C. 112. The disclosure shall also identify any statutory bars, i.e.,
printed publications describing the invention or public use or sale of
the invention in this country. The parties further agree to disclose to
each other any subsequent statutory bar that occurs for an invention
disclosed but for which a patent application has not been filed. All
invention disclosures shall be marked as confidential under 35 U.S.C.
205.

4.2 **[Collaborator Employee Inventions]{.underline}**. USGS, on behalf
of the U.S. Government, waives any ownership rights the U.S. Government
may have in Subject Inventions made by the Collaborator\'s employees
under the Agreement and agrees that the Collaborator shall have the
option to retain title to any such employee Subject Invention. The
Collaborator shall promptly notify USGS upon making this election and
agrees to file patent applications on such Subject Invention at its own
expense and in a timely fashion. The Collaborator agrees to grant to the
U.S. Government on its employee\'s Subject Inventions a nonexclusive,
irrevocable, paid-up license in the patents covering a Subject Invention
to practice or have practiced, throughout the world by, or on behalf of
the U.S. Government. Such nonexclusive license shall be evidenced by a
confirmatory license agreement prepared by the Collaborator in a form
satisfactory to USGS. (See Article 4.4)

4.3 **[USGS Employee Inventions]{.underline}**.

4.3.1 USGS, on behalf of the U.S. Government, shall have the initial
option to retain title to each Subject Invention made by its employees
under this Agreement. If an invention is made jointly by personnel of
both parties under this Agreement, it and all patent applications
and\\or patents issued thereon shall be jointly owned by the parties,
and available for use and licensing without obligation to account to the
other party, subject to the obligations contained in Articles 4, 7, and
9. USGS may release the rights provided for by this Article to employee
inventors or to the Collaborator subject to a license in USGS (See
Article 4.4).

4.3.2 If the USGS agrees to grant, convey, and assign the entire title
to any invention made under this agreement to the Collaborator for less
than the fair market value of the invention or the portion conveyed, and
if the inventor is an employee of the U.S. Government at the time the
invention is made or any portion thereof, then the USGS and the
Collaborator shall mutually agree with respect to an appropriate sum of
monies to be given as fair compensation to the government employee. This
agreement shall be reached before such conveyance is consummated.
Compensation agreements shall be made in accordance with the Federal
Technology Act of 1986 and Executive Order 12591 dated April 10, 1987.

4.4 **[Filing of Patent Applications]{.underline}**. The party having
the right to retain title and file patent applications on a specific
Subject Invention may elect not to file patent applications thereon
provided that it so advises the other party within 90 days from the date
it reports the Subject Invention to the other party. Thereafter, the
other party may elect to file patent applications on the Subject
Invention and the party initially reporting such Subject Invention
agrees to assign its right title and interest in such Subject Invention
to the other party and cooperate with such party in the preparation and
filing of patent applications thereon. The assignment of the entire
right title and interest to the party pursuant to this Article shall be
subject to the retention by the party assigning title of a nonexclusive,
irrevocable, paid-up license to practice, or have practiced, the Subject
Invention throughout the world. In the event that neither of the parties
to this agreement elect to file a patent application on subject
invention, either or both (if a joint invention) may, at their sole
discretion and subject to reasonable conditions, release the right to
file to the inventor(s) with a license in each party of the same scope
as set forth in the immediate preceding sentence.

4.5 **[Patent Expenses]{.underline}**. All of the expenses attendant to
the filing of patent applications as specified in 4.4 above, shall be
borne by the party filing the patent application. Any post filing and
post patent fees shall also be borne by the same party. Each party shall
provide the other party with copies of the patent applications it files
on any Subject Invention along with the power to inspect and make copies
of all documents retained in the official patent application files by
the applicable patent office.

4.6 **[License Provisions.]{.underline}** If requested, the USGS agrees
to negotiate with the Collaborator for an exclusive license to sole or
jointly developed inventions in the following identified field of use
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_.
Any such license shall be negotiated independently from the CRADA and
shall include reasonable commercial terms. The collaborator\'s right to
negotiate a license(s) begins at the time that an invention disclosure
is filed and ceases 6 months after the termination of this CRADA for all
subject inventions.

Article 5. **[Copyrights]{.underline}**

5.1 The Collaborator shall have the option to own the copyright in all
software (including modifications and enhancement thereto),
documentation, or other works created in whole or in part by the
Collaborator under this CRADA, which is subject to being copyrighted
under Title 17, United States Code. The Collaborator shall mark any such
works with a copyright notice showing the Collaborator as the author or
c-author and shall in its reasonable discretion determine whether to
file applications for registration of copyright.

5.2 The Collaborator agrees to grant to the U.S. Government, solely for
U.S. Government purposes, a nonexclusive, irrevocable, paid-up,
worldwide license (hereinafter referred to as Government Purpose
License) in all copyrighted software or other works developed under this
agreement. The Government Purpose License (GPL) conveys to the
Government the right to use, duplicate or disclose the copyrighted
software or other works in whole or in part, and in any manner, for
government purposes only, and to have or permit others to do so for
government purposes only. Government purposes include competitive
procurement, but do not include the right to have or permit others to
use the copyrighted software or other works for non-Governmental or
commercial purposes.

5.3 The Collaborator will clearly mark all copyrighted software or other
works subject to the GPL with their name and the words \"Government
Purpose License\".

5.4 The Collaborator shall furnish USGS at no cost to USGS at least one
copy of each software, documentation, or other work developed in whole
or in part by the Collaborator under this CRADA, subject to the terms
and conditions of the GPL granted to USGS at Article 5.2.

Article 6. **[Copyright Royalties]{.underline}**

6.1 If material is copyrighted, an amendment to this CRADA will be
negotiated for royalties that reflects the USGS contribution to the
copyrighted item(s). The Collaborator shall pay to USGS, at a rate to be
determined within the amendment, royalties over the life of the
copyright by the Collaborator or its affiliates from the licensing,
assignment, sale, lease and/or rental (hereinafter \"disposition\") of
any copyrighted work created under this CRADA. Payments by the
Collaborator to USGS shall be made payable to USGS, and sent to USGS,
Reston, Virginia, 20192, and submitted not later than [sixty
(60)]{.underline} days after the calendar year ending December 31st in
which the Collaborator receives the royalties or other income. Royalty
payments made under this Article by the Collaborator to USGS shall
continue for the life of the copyright(s), whether or not this CRADA has
been terminated or has expired.

6.2 Concurrently with each payment of royalties as required in Article
6.1 of this CRADA, or at such other time as payments are due, the
Collaborator shall submit a written report setting forth the period for
which the payment is made, the amount and a description of the
copyrighted works upon which a royalty is payable as provided at Article
6.1, the net sales and other income received therefrom by the
Collaborator, and the amount of royalties due thereon. If no royalties
are due USGS for any report period, the report shall so state. The
reports required under this article shall also be made within 30 days of
the termination of this CRADA. The Collaborator agrees to keep records
showing the sales or other dispositions of the copyrighted works upon
which royalties are due under the provisions of Article 6.1 in
sufficient detail to enable the royalties payable hereunder by the
Collaborator to be determined, and further agrees to permit its books
and records to be examined from time to time during its ordinary
business hours and not more often than once a year to extent necessary
to verify the reports provided for in this article, such examination to
be made at the expense of USGS by any auditor appointed by USGS who
shall be acceptable to the Collaborator. Auditor approval shall not be
unreasonably withheld by the Collaborator.

Article 7. **[Data and Publication]{.underline}**

7.1 **[Release Restrictions.]{.underline}** USGS shall have the right to
use all Subject Data for any governmental purpose, but shall not release
such Subject Data publicly except: (i) USGS when reporting on the
results of sponsored research may publish Subject Data, subject to the
provisions of Article 7.4 below; and (ii) USGS may release such Subject
Data where such release is required pursuant to a request under the
Freedom of Information Act (5 U.S.C. Section 552); provided, however,
that such data shall not be released to the public if a patent
application is to be filed (35 U.S.C. Section 205) until the party
having the right to file has had a reasonable time to file.

7.2 **[Information Identification]{.underline}**

7.2.1 **[Proprietary Information]{.underline}**. The Collaborator shall
place a Proprietary notice on all information it delivers to USGS under
this CRADA which the Collaborator asserts is proprietary. USGS agrees
that any information designated as proprietary which is furnished by the
Collaborator to USGS under this CRADA, shall be used by USGS only for
the purpose of carrying out this CRADA. Information designated as
proprietary shall not be disclosed, copied, reproduced, or otherwise
made available in any form whatsoever to any other person, firm,
corporation, partnership, association, or other entity without the
consent of the Collaborator except as such information may be subject to
disclosure under the Freedom of Information Act (5 U.S.C. 552).

USGS agrees to use its best efforts to protect information designated as
proprietary from unauthorized disclosure. The Collaborator agrees that
USGS is not liable for the disclosure of information designated as
proprietary which, after notice to and consultation with the
Collaborator, USGS determines may not lawfully be withheld or which a
court of competent jurisdiction requires disclosure.

7.2.2 **[Background Intellectual Property.]{.underline}** Both parties
agree to identify in advance or during the course of the CRADA
Background Intellectual Property (BIP) that has value for joint research
but which was developed with separate funds outside the CRADA. BIP does
not qualify as a subject invention(s) and is not subject to a government
use license unless originally developed with non-CRADA government funds.

7.3 **[Protected CRADA Information]{.underline}**.

7.3.1 Each party may designate as Protected CRADA Information, as
defined in Article 1, any Generated Information produced by its
employees, and with the agreement of the other party, mark any Generated
Information produced by the other party\'s employees. All such
designated Protected CRADA Information shall be appropriately marked.

7.3.2 For a period of \_\_\_\_\_\_\_\_\_ (not to exceed 5 years) from
the date Protected CRADA Information is produced, Parties agree not to
further disclose such Information except:

\(1\) as necessary to perform this CRADA;

\(2\) as mutually agreed by the Parties in advance.

7.3.3 The obligation of 7.3.2 above shall end sooner for any Protected
CRADA Information which shall become publicly known without fault of
either party, shall come into a party\'s possession without breach by
that party of the obligations of 7.3.2 above, or shall be independently
developed by a party\'s employees who did not have access to the
Protected CRADA Information or as required by the Freedom of Information
Act.

7.4 **[Publication]{.underline}**.

7.4.1 USGS may submit for publication the results of the research work
associated with this project. Depending on the extent of contribution
made, employees of the Collaborator may be cited as coauthors. In no
event, however, shall the name of the Collaborator or any of its
trademarks and trade names be used in any publications without its prior
written consent.

7.4.2 USGS and the Collaborator agree to confer and consult at least 30
days prior to either party\'s submission for publication of Subject Data
to assure that no Proprietary Information or Protected CRADA Information
is released and that patent rights are not jeopardized. The party
receiving the document for review has 30 days from receipt to object in
writing detailing the objections to the proposed submissions.

Article 8. **[Rights In Generated Information]{.underline}**

The Parties understand that the Government shall have unlimited rights
in all Generated Information or information provided to the Parties
under this CRADA which is not marked as being copyrighted (subject to
Article 5) or as Proprietary Information or as Background Intellectual
Property (subject to Article 7.2) or as Protected CRADA Information
(subject to Article 7.3).

Article 9. **[Termination]{.underline}**

9.1 The Collaborator and USGS each have the right to terminate this
agreement upon 30 days notice in writing to the other party.

9.2 In the event of withdrawal of the Collaborator, payments previously
received by USGS pursuant to Article 3 of this CRADA will be retained by
USGS to be used in support of the project.

9.3 In the event of termination by USGS, USGS shall repay the
Collaborator any prorated portion of payments previously made to USGS
pursuant to Article 3.1 of the CRADA in excess of actual costs incurred
by USGS in pursuing this project. A report on results to date of
termination will be prepared by USGS and the cost of the report will be
deducted from any amounts due to participants from USGS.

9.4 Termination of this CRADA by either party for any reason shall not
affect the rights and obligations of the parties accrued prior to the
effective date of termination of this CRADA. No termination or
expiration of this CRADA, however effectuated, shall release the parties
hereto from their rights, duties, and obligations under Articles 3.3, 4,
5, 6, 7, 8, and 11.

Article 10. **[Disputes]{.underline}**

10.1 **[Settlement]{.underline}**. Any dispute arising under this CRADA
which is not disposed of by agreement of the parties shall be submitted
jointly to the signatories of this CRADA. A joint decision of the
signatories or their designees shall be the disposition of such dispute.

10.2 If the signatories are unable to jointly resolve a dispute within a
reasonable period of time after submission of the dispute for
resolution, the matter shall be submitted to the Director of the USGS,
or his designee for resolution.

10.3 **[Continuation of Work]{.underline}**. Pending the resolution of
any dispute or claim pursuant to this article, the parties agree that
performance of all obligations shall be pursued diligently in accordance
with the direction of the USGS signatory.

Article 11. **[Liability]{.underline}**

11.1 **[Property]{.underline}.** The U.S. Government shall not be
responsible for damages to any property of the Collaborator provided to
USGS pursuant to this CRADA.

11.2 **[Collaborator's Employees.]{.underline}**

11.2.1 During any temporary assignment at USGS facilities that may
result from this Agreement, the Collaborator's Assigned Employees (as
defined in Article 1.12 of this Agreement) shall pursue their activities
on the work schedule mutually agreed upon between them, the
Collaborator, and the USGS. The Collaborator's Assigned Employees must
agree to comply with Federal Government security and conduct regulations
that apply to USGS employees. The Collaborator\'s Assigned Employees
shall conform to the requirement of the Office of Government Ethics
"Standards of Ethical Conduct for Employees of the Executive Branch\" (5
CFR Parts 2635 and 2636) and Security Regulations, hereby made part of
this Agreement, to the extent that these regulations prohibit private
business activity or interest incompatible with the best interests of
the Department.

11.2.2 The Collaborator\'s Assigned Employees shall comply with
regulations that apply to USGS employees with regard to disclosure of
proprietary or procurement-sensitive information, recusal from any
activities which may present a conflict of interest, including
procurements or other actions in which the Collaborator may have an
interest. The Collaborator\'s Assigned Employees may not represent the
Collaborator or work for the Collaborator in competing for award from
any other Federal agency during the term of the CRADA (see Article 3) or
extension thereto.

11.2.3 The Collaborator\'s Assigned Employees are permanently prohibited
from representing or performing activities for the Collaborator on any
matters before the USGS on which the Collaborator\'s employees worked at
the USGS while assigned to this project.

11.2.4 The Collaborator\'s employees are prohibited from acting as
government employees, including making decisions on behalf of the
Government or performing inherently governmental functions while working
at the USGS.

**11.3 [No Warranty]{.underline}**. Except as provided in Title 28,
United States Code, section 1498, the United States shall not be liable
for the use or manufacture of any invention made under this agreement
nor for the infringement of any patent or copyright during the
performance of this agreement. The USGS makes no express or implied
warranty as to any matter whatsoever, including the conditions of the
research or any invention or product, whether tangible or intangible,
made or developed under this CRADA, or the ownership, merchantability,
or fitness for a particular purpose of the research or any invention or
product. These provisions shall survive termination of the CRADA.

11.4 **[Indemnification]{.underline}**

11.4.1 **[Collaborator\'s Employees]{.underline}**. The Collaborator
agrees to indemnify and hold harmless the U.S. Government for any loss,
claim, damage, or liability of any kind involving an employee of the
Collaborator arising in connection with this CRADA, except to the extent
that such loss, claim, damage or liability arises from the negligence of
USGS or its employees. USGS shall be solely responsible for the payment
of ane U.S. Government harmless and indemnifies the Government for all
liabilities, demands, damages, expenses, and losses arising out of the
use by the Collaborator, or any party acting on its behalf or under its
authorization, of USGS\'s research and technical developments or out of
any use, sale, or other disposition by the Collaborator, or others
acting on its behalf or with its authorization, of products made by the
use of USGS\'s technical developments. In respect to this Article, the
Government shall not be considered an assignee or licensee of the
Collaborator. This provision shall survive termination of this CRADA.

11.4.2 **[Technical Developments and Products]{.underline}**. The
Collaborator holds the U.S. Government harmless and indemnifies the
Government for all liabilities, demands, damages, expenses, and losses
arising out of the use by the Collaborator, or any party acting on its
behalf or under its authorization, of USGS's research and technical
development or out of any use, sale, or other disposition by the
Collaborator or others acting on its behalf or with its authorization,
of products made by the uses of USGS's technical developments. In
respect to this Article, the Government shall not be considered as an
assignee or licensee of the Collaborator. This provision shall survive
termination of the CRADA.

11.5 **[Force Majeure]{.underline}**. Neither party shall be liable for
any unforeseeable event beyond its reasonable control not caused by the
fault or negligence of such party, which causes such party to be unable
to perform its obligations under this CRADA (and which it has been
unable to overcome by the exercise of due diligence), including, but not
limited to, flood, drought, earthquake, storm, fire, pestilence,
lightning, and other natural catastrophes, epidemic, war, riot, civil
disturbance or disobedience, strikes, labor dispute, or failure, threat
of failure or sabotage of the USGS facilities, or any order or
injunction made by a court or public agency. In the event of the
occurrence of such a force majeure event, the party unable to perform
shall promptly notify the other party. It shall further use its best
efforts to resume performance as quickly as possible and shall suspend
performance only for such period of time as is necessary as a result of
the force majeure event.

Article 12. **[Miscellaneous]{.underline}**

12.1 **[No Benefits]{.underline}**. No member of, or delegate to the
United States Congress, or resident commissioner, shall be admitted to
any share or part of this CRADA, nor to any benefit that may arise
extend to this CRADA if made with a corporation for its general benefit.

12.2 **[Governing Law.]{.underline}** Applicable Federal laws shall
govern the construction validity, performance and effect of this CRADA
for all purposes.

12.3 **[Entire Agreement.]{.underline}** This CRADA constitutes the
entire agreement between the parties concerning the subject matter
hereto and supersedes any prior understanding or written or oral
agreement relative to said matter.

12.4 **[Headings.]{.underline}** Titles and headings of the Sections and
Subsections of this CRADA are for the convenience of references only and
do not form a part of this CRADA and shall in no way affect the
interpretation thereof..

12.5 **[Amendments]{.underline}**. If either party desires a
modification in this CRADA, the parties shall, upon reasonable notice of
the proposed modification by the party desiring the change, confer in
good faith to determine the desirability of such modification. Such
modification shall not be effective until a written amendment is signed
by all parties hereto by their representatives duly authorized to
execute such amendment.

12.6 **[Assignment]{.underline}**. Neither this CRADA nor any rights or
obligations of any party hereunder shall be assigned or otherwise
transferred by either party without the prior written consent of the
other party except that the Collaborator may assign this CRADA to the
successors or assignees of a substantial portion of the Collaborator\'s
business interests to which this CRADA directly pertains.

12.7 **[Notices]{.underline}**. All notices pertaining to or required by
this CRADA shall be in writing and shall be directed to the
signatory(s).

12.8 **[Independent Contractors]{.underline}**. The relationship of the
parties to this CRADA is that of independent contractors and not as
agents of each other or as joint venturers or partners. USGS shall
maintain sole and exclusive control over its personnel and operations.

12.9 **[Use of Name or Endorsements]{.underline}**.

12.9.1 The Collaborator shall not use the name of USGS or the Department
of the Interior on any product or service which is directly or
indirectly related to either this CRADA or any patent license or
assignment agreement which implements this CRADA without the prior
approval of USGS. The Collaborator shall not publicize, or otherwise
circulate, promotional material (such as advertisements, sales
brochures, press releases, speeches, still and motion pictures,
articles, manuscripts or other publications), which states or implies
governmental, departmental, Bureau, or government employee endorsement
of a product, service or position which the Collaborator represents. No
release of information relating to this CRADA may state or imply that
the Government approves of the Collaborator\'s work product, or
considers the Collaborator\'s work product to be superior to other
products or services.

12.9.2 The Collaborator must obtain prior government approval from USGS
for any public information releases which refer to the Department of the
Interior, any Bureau or employee (by name or title), or this agreement.
The specific text, layout, photographs, etc., of the proposed release
must be submitted with the request for approval.

12.9.3 By entering into this CRADA, USGS does not directly or indirectly
endorse any product or service provided, or to be provided, by the
Collaborator, its successors, assignees, or licensees.

Article 13. **[Duration of Agreement and Effective Date]{.underline}**

13.1 **[Duration of Agreement]{.underline}**. It is mutually recognized
that the development program cannot be rigidly defined in advance, and
that the contemplated time periods for completion of each phase are good
faith guidelines subject to adjustment by mutual agreement, to fit
circumstances as the development program proceeds. In no case will this
CRADA extend beyond the ending date specified in Article 3.1 , unless it
is revised in accordance with Article 12.5 of this agreement. Certain
provisions survive the termination of this CRADA, as specified in
Article 9.4.

13.2 **[Effective Date]{.underline}**. This CRADA shall enter into force
as of the date of the last signature of the parties as shown on the
title page.

For the Collaborator \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ Date

USGS Review: \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ Date

For the U.S. Geological Survey
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Date

**Form 9-2041**

**(Dec. 1992)**

**EXTENSION OF COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENT**

**BETWEEN**

**THE U.S. GEOLOGICAL SURVEY**

**AND**

**\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**(Collaborating Party)**

**Agreement Number:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**Amendment Number:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**The Cooperative Research and Development Agreement (CRADA) between the
U.S. Geological Survey and
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_,
dated \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_, for the purpose
of**

**(Collaborating Party)
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
(Title or Project)
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**is hereby extended for a period ending
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_,
upon the same terms and conditions as the original CRADA, except for the
following:**

**\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**FOR THE U.S. GEOLOGICAL SURVEY**

**By
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**Associate Director**

**FOR THE COLLABORATING PARTY**

**By
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_**

**Collaborator Representative**

[INSTRUCTIONS FOR PREPARATION OF, AND CHANGES TO,]{.underline}

[A COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENT (CRADA)]{.underline}

1\. [Preparation of a CRADA]{.underline}. The CRADA document consists of
three parts: the cover sheet (USGS Form 9‑2040), the Statement of Work
(including special provisions, if any), and the General Provisions.

> A. Complete the CRADA cover sheet as follows. The items are numbered
> to correspond to the numbered spaces on the form.
>
> \(1\) Proposal Number ‑ The proposals are logged in and serially
> numbered by the receiving office.
>
> \(2\) Effective Date ‑ Enter the date the agreement goes into effect.

\(3\) Agreement Number - The CRADA\'s are serially numbered and
identified as to fiscal year. This number will be used to record the
agreement in the Federal Financial System (FFS).

> \(4\) Remit Contribution To ‑ USGS office receiving the contribution,
> e.g., Office of Financial Management, 271 National Center, Reston, VA
> 220192.
>
> \(5\) USGS Project Officer ‑ Enter name of the principal contact at
> the USGS.
>
> \(6\) Self‑explanatory.
>
> \(7\) Self‑explanatory.
>
> \(8\) Administrative Office ‑ Enter name and address of USGS office
> administering the agreement.
>
> \(9\) Self‑explanatory.
>
> \(10\) Accounting and Appropriation Data ‑ Indicate the FFS agreement
> number, customer number, and account number.
>
> \(11\) Payment Will Be Made By ‑ The address of the collaborating
> party\'s finance office.
>
> \(12\) Authority ‑ Cite the Technology Transfer Act of 1986 (Pub. Law
> 99-502).

\(13\) Self‑explanatory.

(14) Self‑explanatory.

(15) Payment Schedule ‑ List amounts to be transmitted and dates. See
     instructions for Article 3.1 of the General Provisions for more
     information © (4))**.**

> \(16\) Principal Investigator ‑ The collaborating party\'s
> representative who will be the USGS contact for the project.
>
> \(17\) Self‑explanatory.
>
> \(18\) Self‑explanatory.
>
> \(19\) Self‑explanatory.
>
> \(20\) Self‑explanatory.
>
> B. The Statement of Work (SOW) should be typed on
> sequentially-numbered pages. The purpose of the SOW is to define the
> project and its tasks as well as the contributions of each of the
> parties. It does not need to include a great amount of technical
> information or data but must include clear precise statements of
> objectives, tasks, responsibilities, deliverables, and costs.
>
> The aim of the SOW is to advise the reviewer or legal department of
> what each party is providing in terms of dollars and effort. The SOW
> must include:
>
> \(1\) A Purpose/Background section that provides a few Articles about
> the project with an overview of why each party is interested in
> participation, how the project relates to the USGS mission and
> programs, and an exact description of the goals and objectives of the
> project in terms of the results, services, and/or products to be
> provided.
>
> \(2\) A Phases/Task/Deliverables section that identifies what each
> party is doing on the project. This can be textual or a table of the
> interrelated research activities as long as it describes the tasks to
> be performed to meet the objectives of the project and the role and
> responsibilities of each participant on each task.
>
> \(3\) An estimated economic value of each party\'s contribution as
> related to each specified task or deliverable. There should be an
> itemization of resources by task. This itemization must designate
> resources provided by the collaborator(s) separately from resources
> provided by the USGS. All resources must be included as can best be
> approximated including direct contributions, labor costs, facility
> costs, etc.
>
> \(4\) An identification of the Principal Investigators for each party
> to the CRADA, including their affiliation, address, and phone No.
>
> C. Any special provisions applicable to the CRADA should also be
> included in the SOW. Examples of special provisions are:
>
> \(1\) Reporting ‑ a description of the reports to be prepared
> documenting the project\'s progress or outcome.
>
> \(2\) Deliverables ‑ a description of products resulting from the
> project, such as data files, illustrations, rock samples, etc.
>
> \(3\) Delivery Schedule ‑ due dates for submission of deliverables.
>
> \(4\) Options ‑ provision for extension of the CRADA beyond the end of
> the current fiscal year.
>
> \(5\) Inspection and Acceptance ‑ a description of the criteria to be
> applied in evaluating deliverables produced by either party.
>
> D. The General Provisions are the body of the CRADA and are to be
> completed and attached in their entirety to the Form 9-2040 Cover Page
> and Statement of Work. No CRADA is complete without them. No changes
> may be made to the General Provisions without specific approval of the
> Technology Transfer Office.
>
> \(1\) Title - Fill in the name of the collaborator (same as blocks 7
> and 18 on Form 9-2040) and the Discipline of the USGS participating in
> the agreement.
>
> \(2\) Article 2. Statement of Work. Fill in the total number of pages
> comprising the Statement of Work for this CRADA.
>
> \(3\) Article 3.1. Fill in first line to correspond with blocks 13 and
> 14 of the cover sheet. Fill in the amount of the total direct funding
> to USGS from the collaborator (if any) on line three. Fill in the
> total anticipated in-kind contributions of the collaborator on line
> four. The sum of the values on lines three and four is the total value
> recorded on line two. If the project is for more than one year, a
> detailed schedule of payments for the successive years should be
> attached to Form 9-2040 as an amendment to the CRADA as referenced in
> this article. Also, the schedule of payments needs to be summarized in
> block 15 on the cover sheet.
>
> \(4\) Article 3.2. Fill in the estimated total contribution of the
> USGS to the project in labor, overhead, equipment, etc. costs, as
> stated.
>
> \(5\) Article 7.3.2. Fill in a time duration for non-disclosure of
> Protected CRADA Information. This duration must be agreed to by the
> collaborator and cannot exceed five years.

\(6\) Signatures - Make sure the CRADA is signed on the last page of the
General Provisions as well as the cover sheet.

2\. [Changes]{.underline}. Amendments are needed for changes to the
CRADA (Article 12.5) as well as for the schedule of payments for out
years (Article 3.1). There are two types of changes:

> A. Extension ‑ Extensions are discussed under Article 13.1. If
> circumstances warrant extension of a CRADA, the one‑page extension
> form (USGS Form 9‑2041) may be used if changes to the CRADA are minor.
> The changes are listed on the sheet in the space provided. Additional
> minor changes may be typed on a CRADA Continuation Sheet and attached
> to Form 9-2041 as part of the same amendment. The amendment number is
> placed in the space provided.
>
> B. Modification ‑ Substantial changes in a CRADA may be effected at
> any time. The modification is prepared using Form 9-2040 with
> continuation sheets except that in block No. 3 of the cover sheet the
> words \"Amendment No. \" are typed below the Agreement number.

All amendments, whether simple extensions, modifications, or payment
schedules, are numbered consecutively. For example, if a CRADA has been
extended once (Amendment

No. 01), and is subsequently modified, Amendment No. 02 would be typed
on the revised cover sheet.

**Form 4: Discipline Proposal**

**CRADA PROPOSAL OUTLINE**

CRADA PROPOSAL OUTLINE

To: (Discipline Contact)

Fr: (Principal Investigator)

1\. Project Title:

2\. Name & Address of the Industrial Participant:

3\. Provide a brief biography of the industrial participant. (Note
whether they are a small business, minority owned, University or
Consortia, also indicate where the research activities of the industrial
participant will take place).

4\. Date of Federal Register CRADA Announcement: (Attach copy)

5\. Conflict of Interest Information: (Attach Certificate)

6\. Project Description

a\. Purpose:

b\. Benefits:

c\. Funding/Resources:

> \(1\) Provide an estimated breakdown for each year of the project.
> \_\_\_\_\_\_\_\_\_\_\_\_\_ (collaborator) will provide the following
> to the project:

FY 1 FY 2

Direct Contributions to USGS

Personnel In-kind

Facilities

Capital

Equipment

Other (Supplies, Funds spent In‑house)

Totals

\(2\) Provide an estimated USGS breakdown for each year of the project
using the same categories of information.

FY 1 FY 2

Personnel Costs

Facilities

Equipment

Other (Supplies, USGS Funds spent on Project)

Totals

Note: If second or out year commitments by the industrial partner or the
USGS are subject to first year results. Identify the full scope of the
projects dollars for both the industrial participant and the USGS
footnoting that second year money will be dependent on results etc. At
this stage the information is a detailed proposal. nothing is yet
binding on the industrial participant. However, research in order to
evaluate whether it or another opportunity that may be presented to the
Discipline is the most beneficial to the USGS mission.

7\. Technical Statement:

a\. Tasks Schedules of Completion

The final CRADA package will include a detailed Statement of Work which
identifies the tasks of each party and the sources of funds for the
proposed task. If the Statement of Work is in draft form it can be
attached to the Proposal.

b\. Describe the major deliverable(s) expected from the collaborative
research:

8\. Identify the reports that are expected and who has the preparation
obligation.

9\. Does the Discipline have existing CRADAs in this technology area, or
are others under negotiation? Explain any yes answers by differentiating
this research from those other CRADAs projects. provide any pertinent
information about the development of the technology at USGS to date that
would be of value in approving this project.

10\. List any existing background intellectual property, technology,
data base or know_how that USGS expects to use in the CRADA:

11\. List the existing background Intellectual property of the
Industrial participant that they will be utilizing in the CRADA.
Identify any commercialization information from the industrial partner
that may be of importance to the reviewer.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ \_\_\_\_\_\_\_\_\_\_\_

Principal Investigator Date

Discipline Approval:

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Title

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Date

**Form 5: Conflict of Interest Statement**

CONFLICT OF INTEREST STATEMENT

CRADA #\_\_\_\_

Department of Interior, United States Geological Survey

and

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

I \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_hereby certify that to the
best of my knowledge neither I, nor my spouse, child, parent, sibling,
or partner, or an organization in which I/we serve as officer, director,
trustee partner, or employee:

> 1\. holds financial interest in the above Corporation or any entity
> which has a substantial interest in the preparation, negotiation, or
> approval of this CRADA;
>
> 2\. has received a gift or gratuity from the above Corporation or any
> entity that has a substantial interest in the preparation, negotiation
> or approval of this CRADA; and
>
> 3\. and that I am not negotiating nor do I have an arrangement
> concerning current or prospective employment with the Corporation or
> entity that has a substantial interest in the preparation, negotiation
> or approval of this CRADA.

Except as follows:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

(Insert none, or information about the conflict. The fact that you are
an inventor on an existing patent or future patent

which may be developed under a CRADA and that you might receive royalty
payments does not need not be reported. Any other type of positive
disclosure should be included and reviewed to determine whether a waiver
or disqualification is appropriate. )

Furthermore, I understand that during the term of the CRADA if the above
information changes, that I have an obligation to advise my Discipline
Chief in writing.

By\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
Approved by Discipline:

(Signature PI)

Date
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
Reviewer\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ Date\_\_\_\_\_\_\_\_\_\_

**Forms 6a and 6b: CRADA Decision-Tree and CRADA Criteria Checklist**

CRADA DECISION-TREE

1\) Does the potential partner support scientific research,
technological development, or data systems pertaining thereto?

> YES: Go to question 2.
>
> NO: Survey Manual Chapter SM 500.20 prohibits forming a CRADA with
> this potential partner.

2\) Will this CRADA be in compliance with laws and regulations that
affect the USGS?

> YES: Go to question 3.
>
> NO: Do not even consider forming a CRADA unless this question can be
> answered in the affirmative.

3\) Is this CRADA compatible with the USGS mission?

> YES: Go to question 4.
>
> NO: Do not go any further in planning this project until this question
> can be answered in the affirmative.

4\) Is this CRADA adequately supported with financial and other
resources by both the partner and the USGS?

> YES: Go on to question 5.
>
> NO: Do not go any further in planning this project until this question
> can be answered in the affirmative.

5\) Will the CRADA affect the scientific integrity of the USGS in a
positive way?

> YES: Go on to question 6.
>
> NO: Do not proceed with this potential partner or project until this
> question can be answered in the affirmative. If there is any doubt,
> consult your Discipline Chief, the Business Enterprise Council, or the
> Business Development Branch.

6\) Will the CRADA maintain or enhance the public image of the USGS?

> YES: Complete the [Criteria for Acceptance of a CRADA]{.underline}
> checklist (Form 6B) in the CRADA Handbook.
>
> NO: Do not proceed with this potential partner or project until this
> question can be answered in the affirmative. If there is any doubt,
> consult your Discipline Chief, the Business Enterprise Council, or the
> Business Development Branch.

CRITERIA FOR ACCEPTANCE OF A CRADA

Yes No

  ------------------------------------------------------------ ---- -----
  1\. Is it in the public interest?                                 

  Is technology being transferred?                                  

  Is there a benefit to the Collaborator?                           

  Is there a benefit to the USGS?                                   

  2\. There will be no significant disadvantage to any public       
  group?                                                            

  3\. Is a CRADA the more appropriate vehicle over a direct         
  contribution? (Defined in SM 500.19)                              

  4\. Was the CRADA, as specified in SM 500.20, developed           
  fairly?                                                           

  Was a public announcement placed in the Federal Register          
  about the pending CRADA?                                          

  Was there equal access to all interested parties?                 

  Is the procedure for collaborator selection documented?           

  Is the basis for collaborator selection fair?                     

  5\. Is the CRADA within our normal and legal authority?           

  6\. Do we have a unique or special competence or facility         
  not available elsewhere?                                          

  7\. Can the work on this CRADA best be done by the USGS and       
  is not presently being done in a satisfactory manner by a         
  private company or another agency?                                

  8\. Can the CRADA activity be performed without deferring,        
  delaying, duplicating, or precluding activities or programs       
  authorized under appropriations to the USGS by Congress?          

  9\. Are the description and statement of work clear and           
  concise?                                                          

  Is the relationship of the project to the USGS mission and        
  programs well defined?                                            

  Are the goals and objectives clearly defined?                     

  Are the collaborating party\'s role and contributions well        
  defined?                                                          

  Are the Survey\'s role and contributions well defined?            

  Are the tasks to be performed and responsibilities of each        
  partner on each task well defined?                                

  10.Are there any special provisions in this CRADA?                

  Are they clearly defined in the project description?              
  ------------------------------------------------------------ ---- -----

**Form 7: Discipline Recommendation Memorandum**

To: Business Enterprise Council

From: (Discipline)

Subject: Cooperative Research and Development Agreement (CRADA) Titled

Attached is the completed package for the above CRADA. Pursuant to U.S.
Geological Survey policy it contains the Cover Page, Statement of Work,
General Provisions, Conflict of Interest Statement, a copy of the
Federal Register Announcement, the completed Decision‑Tree, and the
CRADA Criteria Checklist.

The Discipline has reviewed the Proposal, the CRADA\'s Statement of
Work, and the General Provisions. The Discipline is satisfied that based
on current budgets and projections it has sufficient resources to
accomplish the project and that the goals of the CRADA can be met with
the projected and committed resources.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_ is recommending this project for
Associate Director\'s Office approval.

**Form 8: Transmittal Letter**

Dear:

We are pleased to forward for your approval and signature, two original
copies of the Cooperative Research and Development Agreement (CRADA)
which proposes that the

U.S. Geological Survey (USGS) and participate in a cooperative . This
project will serve the public by providing for more efficient
expenditures of Government funds, and for the development of
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_. In addition, this project has
great potential for the development of new small businesses for the
State.

Please sign, or have your designee sign both original CRADA\'s in two
places (page 1 and at the end of the General Provisions). Keep one copy
for \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_, and return one signed copy
to:

U.S. Geological Survey

Business Development Branch

500 National Center

12201 Sunrise Valley Drive

Reston, Virginia 20192

We look forward to the opportunity to work with your organization on
this important project and are confident of a mutually beneficial
outcome.

Sincerely yours,

Associate Director

Enclosures

**Form 9: Report of Invention Form DI-1215**

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**Form 10: CRADA Report**

CRADA ANNUAL/FINAL REPORT

CRADA No:

CRADA Title:

CRADA Participants:

Principal Investigator:

Period covered by the Report:

1\. Identify the deliverables from the Statement of Work that were to be
completed in this timeframe. Were they completed? If not, briefly
explain the discrepancy.

2\. What was the funding profile for the time period covered for each
party? (In the alternative the PI might use a graph for funds.)

> a\. Did the USGS expend its estimated resources and explain any
> significant deviations?
>
> b\. Did the industrial participant complete its deliverables, what
> were their estimated costs/expenses? How does this compare against the
> initial estimates?
>
> c\. Based on the results, is the USGS satisfied that the work
> performed by the industrial partner was of value and contributed to
> the research project.

3\. During this time period did the industrial partner or the USGS
identify any Protected CRADA Information? Yes/No

If yes, has it been properly marked for control for the period specified
in the contract?

4\. Have all the reports required for this period or the project been
completed? Yes/No

If No, please identify who has the action item for the report and when
it will be completed.

5\. Was any copyright material produced during this period/or the
project?

If yes, briefly outline whether any steps have been taken to license the
copyrights.

6\. Were there any patent disclosures, or patent applications filed
during this period as a result of the research? No/Yes

If yes, please provide a listing of such disclosures and inventions.

7\. If this is a final report, has any loaned equipment between the
parties been returned to its owner?

8\. Are there any items in dispute resolution between the parties?

9\. Has there been a termination meeting or telephone conversation with
the Industrial Participant? No/Yes

If yes, date and final action.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
\_\_\_\_\_\_\_\_\_\_\_\_\_\_

PI Signature Date

**5. Inventions and Patents**

**A. Background**

Patenting and licensing of intellectual property are key components of
virtually any successful marketing program whether it is conducted by
the Federal Government or by private industry. The rights to
intellectual property can be bought and sold, leased or rented, or
otherwise transferred between parties in much the same way that real
property or other personal property can be transferred.

Intellectual property is often a substantial component of the technology
transfer process. It must be protected in the transfer of technology to
ensure the commercial viability of the technology. Intellectual property
is most often transferred through contracts or licenses. Some of the
ways to protect intellectual property rights in the United States are
through patents, copyrights, trade secrets, trade marks and trade names.
Definitions for these terms are provided in Appendix A of this handbook.

Both the Department of the Interior and the USGS encourage innovative
activity by their employees and promote the commercialization of
employee inventions through patents and licensing. Both promote
technology transfer of inventions through Cooperative Research and
Development Agreements (CRADAs). Policy and procedures for reporting
inventions and seeking patents are covered in the DOI Manual Chapter 453
DM 1 and the USGS Manual Chapter 453.1 (Appendix B).

**B. Rights in Inventions**

The Government's position regarding employee-developed inventions is
fully set forth in Department of the Interior (DOI) Manual Chapter 453
DM 1, but is here summarized:

o The Government is entitled to the right, title and interest of
government inventions which bear a direct relation to or are made in
connection with an employee's official duty. The exception to this will
be in CRADAs where the title and interest can be modified by contract.

o When the invention does not pertain to the employee's direct duties,
but is conceived during working hours, or built or tested using
government property, the Government is entitled to a non-exclusive,
irrevocable, royalty free license in the invention with the power to
grant sublicenses, and the inventor may also retain title to and
interest in the patent.

o If the patent was developed independent of government time and money
and is not related to the Agency's objectives, the employee may retain
the entire right and title to the invention. When the Government is not
entitled to the invention, the employee can request that USGS file the
patent application on the invention in return for a license to the
Government. The USGS may agree to do so when it appears to be in the
Government's interest to do so (e.g., government procures large
quantities of a device or product or material made by practicing the
invention.)

o If an invention is assignable to the Government, it may be protected
by patenting in the United States and in selected foreign countries; by
patenting in the United States only; or by publishing a description of
the invention. The degree of protection sought is dependent upon the
interest of the Government and the public in the invention.

o Patents held in the name of any DOI employee-inventor belong to the
Department but are managed by the Bureau of the employee-inventor. This
is why the patent-seeking process involves both the USGS and the DOI
Office of the Solicitor.

o DOI's policy is to seek patents protecting inventions made by
employees when it is found to be necessary to preserve government
interests in inventions resulting from the Department's programs and
activities, and to provide for maximum benefits to the public for such
inventions.

**C. Types of Patents**

There are three types of patents under U.S. law: utility patents, design
patents, and plant patents. Utility patents cover inventions; design
patents protect certain designs for manufacture; and plant patents are
for new varieties of asexually reproducing plants.

Persons inventing or discovering any new and useful process, machine,
manufacture or composition of matter, or any new and useful improvement
thereof, may apply for patent. There are two caveats to this: 1) the
inventor must be able to characterize the invention as a process,
machine, manufacture, or composition of matter and 2) the invention must
be new or novel and useful. There are a few exceptions to patentability.
Items that cannot be patented include:

laws of nature

natural forces

basic principles

mere chemical formulas

business methods

systems of bookkeeping

methods of calculation

mental steps

ideas

**D. Basic Responsibility**

If you are an employee who has invented something related to your work,
which you and your supervisor consider patentable, you are expected to
make a report of invention.

Even if an invention was conceived and developed on the employee's own
time, the employee must report it if it relates to the employee's work.
Generally, when an invention is conceived and developed on the
employee's time, the employee is eligible to claim and receive the
patent rights.

**E. Patent Application Process**

The following process is in place for patent preparation (see SM Chapter
453.1):

o Employees are responsible for keeping appropriate records on their
inventions and for preparing a timely invention report on Form DI-1215.
A copy is included as Form 9 in the previous section of this handbook.

o Supervisors are responsible for:

> a\. Instructing their employees to record their inventions and report
> them promptly;
>
> b\. Making sure each invention report (DI-1215) is complete and all
> inventors are represented; and
>
> c\. Initiating a Discipline review of the invention and preparing a
> report of that review. Included within that report is a discussion of
> the potential commercial value of the invention as well as its utility
> to the Federal Government and a Discipline recommendation to either
> seek or not seek a patent for the invention.
>
> d\. Understanding that if the Discipline requests the pursuit of a
> patent, the Discipline is responsible for paying the DOI mandated
> awards to each inventor named on the DI-1215 that is within that
> Discipline.

o Discipline chiefs are responsible for:

> a\. Establishing a prompt and effective procedure for reviewing the
> inventor's completed DI-1215 and preparing a report of that review;
>
> b\. Sending each DI-1215 and the accompanying report of review to the
> Business Development Branch.
>
> c\. Ensuring that each site has and follows a system that reviews any
> articles, papers or electronic releases for information about devices,
> processes or materials that might contain new and non-obvious features
> for potential patents.
>
> d\. Ensuring that a system is in place within the Discipline to
> rapidly compensate Discipline inventors for the DOI mandated awards
> when notification reaches the Discipline that such awards are due.

o Contracting Officers' Technical Representatives are responsible for
reporting to the Discipline Chief all inventions made under contracts
funded by that USGS Discipline.

o The Business Development Branch is responsible for reviewing the
commercial viability of an invention and recommending to the USGS
Business Enterprise Council (BEC) whether a patent should be pursued.

o The BEC decides if a patent should be pursued for DOI or if the rights
to the invention should be assigned to the inventors. If a decision is
made to pursue a patent, the DI-1215 is forwarded to the Patent
Counsel/Solicitor's Office.

o The Solicitor's Office registers the DI-1215 for the Department and
instructs the Business Development Branch to hire an approved law firm
to prepare a patent application. Once the application has been prepared,
the Solicitor's Office will review the document and file it with the
Patent Office.

o The Business Development Branch is responsible for coordinating with
the Solicitor's Office, overseeing the application preparation, and
maintaining a final copy of the patent when issued. Subsequently, the
Business Development Branch will seek licenses on each patent.

o If the BEC decides not to pursue a patent, the patent rights are
usually returned to the inventor(s) with the DOI retaining a
Government-use license if the invention is patented. The inventor(s) may
then pursue a patent using their own time and resources if the
inventor(s) so desire. Federal employees awarded patent rights may not
seek a patent on that invention during their federally paid work hours
or utilize any other Federal resources for their private gain.

**F. Awards and Royalties**

The Department of the Interior\'s patent policy includes rewarding
inventors. Inventors are awarded \$500 each by their agency when their
patent application is filed. If the invention is patented, inventors are
awarded \$800 by their agency. Within the USGS, these awards are to be
paid by each Discipline from their own funds to inventors within that
Discipline.

If an inventor\'s patent or intellectual property is licensed by the
Department for use, manufacture or sale, a licensing agreement will be
developed between the owner of the patent (the Government) and the
licensee (usually a private company). The licensing agreement will
outline royalty payments to be made by the licensee to the Department.
Inventors are entitled to the first \$2,000 and a minimum of 15% of the
royalties collected per year by the agency to a maximum of \$150,000.
These royalties will flow to the inventors through the Business
Development Branch.

**G. Invention Disclosure**

***Patent law requires inventors to apply for a patent within one year
from the time an invention is first disclosed, put into public use, or
offered for sale. If this is not done within the specified time frame,
the inventor waives his/her right to a patent. It should be noted that
an inventor cannot file for foreign patent rights once a disclosure has
been made.*** Although the United States assigns patent rights on a
"first-to-invent" basis, many foreign countries use a "fast-to-file"
process, granting rights to whoever files for an invention first.

If at all possible, there should be no disclosure until after a patent
application has been filed. "Disclosure" means that enough information
about the invention has been publicly released by the inventor (orally,
in writing, and electronically by email or the Internet, through text,
drawings and/or sketches) that someone technically skilled in the
invention field could duplicate the invention based on the information
released. Appendix A includes a memorandum from the DOI Office of the
Solicitor that provides guidance on the definition of oral disclosure.

**H. Protecting Federal Inventions From Disclosure**

When ideas are prematurely disclosed, options related to protecting
intellectual property and technology transfer are reduced. With
disclosure of an invention, a statutory time clock requires a decision
to be made relative to patenting. In some cases, the idea or concept may
not be developed enough to allow an adequate patent application to be
prepared. Or all the preliminary work that might support a strong patent
application may not have been completed. Premature disclosure in these
cases often requires the preparation of an application in less than
ideal circumstances that might not ensure solid claims. ***Premature
disclosure, therefore, should be avoided, and disclosure in general
should be planned in advance***.

If any one of the following occurs more than one year before the filing
of a patent application with the U.S. Patent and Trademarks Office, a
disclosure will be made that results in the loss of patent rights for
the invention in the United States. Foreign rights are generally lost
with ***any*** published article.

o Publication, without the requirement of secrecy, of a detailed
description of the invention or how it works. Publications include
newspaper, magazine, and trade journal articles, publicly available
government reports, and Discipline summaries of experimental research
projects. A publication can also be electronic, oral or visual including
a presentation of view-graphs.

o Public use of the invention in the United States. Experimental uses of
an invention are generally an exception, but the definition of
experimental is often difficult to ascertain. Public use can include a
demonstration at a scientific meeting of a working prototype or
demonstrations to private companies for any purpose such as developing a
license, a CRADA, or a procurement.

The whole concept of premature disclosure of inventions will intensify
in the future as the United States moves toward the adoption of world
patent harmonization. In harmonization, the first person who \"files\" a
patent application becomes that invention\'s owner. This means that we
must be much more aware of the responsibilities related to invention
protection. Under harmonization, the United States' first-to-invent
policy will no longer be applicable. "First-to-invent" means that the
first person who "invented" the subject of a patent application becomes
that invention's owner. A decision to retain the \"first-to-invent\"
policy in the United States for the time being was made by the Secretary
of Commerce in 1994. However, the matter remains under consideration.

When for reasons, research or otherwise, it becomes necessary for a
Federal Government party to disclose confidential, sensitive, or
proprietary information to another party, it becomes necessary and in
the best interest of the Government to require the other party to sign
what is called a non-disclosure agreement. Under this agreement, the
party receiving confidential information agrees to protect this
information as proprietary. Inventors should complete and execute this
document before meetings or discussions with individual companies where
information pertaining to a new invention is disclosed. An example of
two forms for such an agreement can be found as Form 11a and b at the
end of this section.

In summary, to prevent possible disclosure and loss of a potential
patent, **DO NOT:**

> 1\) publish anything about your new idea, invention or process on
> paper or over your computer,
>
> 2\) give a presentation about the invention, idea or process,

3\) tell anyone outside your immediate workgroup about the idea,
invention or process,

until a patent application is filed.

***It is also important to note that once disclosure occurs, an inventor
has one year in which to file a patent application. This means that the
patent application must be filed at the U.S. Patent and Trademark Office
within one year.***

To avoid the loss of a patent because the one-year limitation has been
exceeded, DOI regulations require that inventions be reported promptly.
The USGS has interpreted this instruction to state that reports of
invention (DI-1215) should be submitted by the inventors to their
appropriate supervisor within 60 days of invention.

**I. Record Keeping**

From a Record keeping standpoint, invention and development records that
have been kept in a permanently bound notebook have the strongest
evidentiary value if challenges to authorship are presented. In such a
system the significant worksheets or pages should be witnessed, dated,
and signed. In order for a co-worker to serve as witness to an invention
he/she must have a general understanding of the invention. The inventor
may incorporate certain items by reference and certain routine matters
need not be explained in detail.

Notebooks should be dated and kept indefinitely in case reference
questions should arise at a later date.

The conception of an invention should be recorded by describing the
invention as completely as possible in the bound notebooks. The record
should be followed by chronological entries in the notebook describing
the steps taken to reduce the invention to practice. These should be
signed, dated and witnessed as described above.

If the invention is reduced to practice, the test setup, procedures and
data should be described as completely as possible in the bound
notebook. Separate chart recordings, photographs, etc., should be
labeled, dated and pasted or otherwise referenced in the notebook. Two
disinterested witnesses (not co-inventors) should observe or preferably
participate in, the testing and or recording of the data. These
witnesses to the record of reduction should be able to state that they
witnessed and understood the testing.

**6. Patent Licenses**

**A. Policy for Awarding Licenses**

The Federal Technology Transfer Act of 1986 (FTTA) made technology
transfer a responsibility of all Federal laboratory scientists and
engineers. It empowered each agency to give the Director of
Government-owned Government-operated (GOGO) laboratories the authority
to enter into Cooperative Research and Development Agreements (CRADAs)
with industry, universities, State and other Federal agencies and
negotiate licensing agreements.

Additionally, it allowed Federal laboratories to make advance agreements
with large and small companies on the title to and the licensing of
inventions resulting from the CRADAs with those laboratories. Also, the
law permits Directors of GOGO laboratories to negotiate licensing
agreements for inventions, or waive and grant rights to others for
inventions and intellectual property made at their laboratories.

In 1993, the USGS formalized its CRADA process with policy and Survey
Manual provisions relating to the form and content of a CRADA (see SM
Chapter 500.20). These guidelines are prepared to supplement the CRADA
policy and provide consistency in the formulation of standards involving
licenses, waivers to and the granting of intellectual property, and
rights produced under a collaborative agreement. These licensing
considerations are also appropriate to independently produced USGS
intellectual property.

Among the components considered by USGS in licensing, granting, or
waiving rights are:

> 1\) the nature of the prior government investment,
>
> 2\) the relative position, capability and commitment of the industrial
> partner,
>
> 3\) the scope of the commercial license needed to effectively transfer
> technology, and
>
> 4\) considerations of what is in the public interest.

These guidelines can be augmented by direct legal assistance from the
Department\'s Solicitor\'s Office or help from the Business Development
Branch.

**B. Background**

In the typical CRADA each party to the agreement brings existing
technology and know-how to the collaboration as well as a commitment for
future effort. This pre-existing expertise is called Background
Intellectual Property. On the industrial side this expertise may be
evidenced by proprietary know-how, trade secrets, patents, patent
applications, or copyrights and on the Government side this expertise
may be non-copyrighted data, technology know-how, show-how, patents, and
patent applications.

The intellectual property developed during a CRADA and detailed in the
Statement of Work can be solely developed (by one party) or it may be
jointly developed (two or more of the parties). Solely developed
technology belongs to the creating party unless the parties in the CRADA
have negotiated different terms and conditions.

If the technology developed under a CRADA is jointly created, each party
shares ownership in the developed technology. A joint owner is generally
free to license or commercialize all the jointly created intellectual
property without accounting to the other joint owner(s). In order to
modify the rights connected with joint ownership the parties must enter
into a specific agreement that changes these terms.

**C. Licenses**

A license is an agreement that allows one party to use another\'s
intellectual property, trademark, copyright, etc. Typically a license
gives the licensee the right to make, use and sell or have made for its
own purposes a particular product or process. A license could also give
the licensee the right to sublicense others to make, use, sell and
utilize the product. Usually, licenses involve royalty payments, annual
maintenance fees, and sometimes the costs of patents or copyright.

Licenses can be negotiated in patented inventions, invention
applications, show-how, know-how, trademarks, and in copyrights.
Although the Government cannot apply for copyright directly it can
license copyrights assigned to it by others. Also, it may negotiate for
royalty payments as part of a CRADA with a collaborator by allowing the
collaborator to take title to copyrights in exchange for copyright
royalties.

Under USGS guidelines each prospective licensee is expected to complete
a business plan, outlining its commercialization plan for the identified
USGS technology. Following is a list of the different types of licenses
that can be offered and factors to be considered when deciding which
type to use. However, the USGS reserves the right to modify these
factors on a case-by-case basis as the public interest or equities
warrant.

The following types of license are listed in order of most popular use:

> [Non-Exclusive Licenses]{.underline} may be appropriate for
> CRADA-generated or other USGS technology when:
>
> • USGS has contributed the majority of the technology or science used
> in the collaboration;
>
> • the technology has already been licensed to others on a
> non-exclusive basis;
>
> • the identified USGS technology is only a small percentage of the
> industrial participant\'s total product or application;
>
> • the technology is considered to be pre-competitive and it is
> determined by USGS that allowing many companies to have access better
> serves public\'s interest;
>
> • where a non-exclusive license is all that is necessary to accomplish
> an industrial partner\'s objective, and the grant of a non-exclusive
> license does not jeopardize the commercial potential of a total
> technical area.
>
> [Limited Exclusive Licenses]{.underline} in defined fields of use or
> applications may be granted by the USGS when:
>
> • The industrial participant has provided a substantial collaborative
> effort for the research (greater than 40%).
>
> • The existing technology will require a major investment beyond the
> research stage for final commercialization.
>
> • The nature of the technology or market is such that without the
> protection from competition afforded by exclusivity, there is
> insufficient incentive for a company to commercialize the technology.
>
> • The industrial participant has such a marketing or distribution
> presence in the primary markets that this is seen as the key to
> reaching the broadest consumer base and thus presents the broadest
> technology transfer opportunity.
>
> • The industrial participant has unique capabilities not available to
> other industry applicants.
>
> • The industrial participant has a track record of either developing
> new products or is a recognized expert in the identified application.
>
> • The industrial participant is willing to subsidize some portion of
> the costs of the patents.
>
> • When the industrial participant is willing to execute a commercial
> license agreement which is in the public interest and includes product
> liability, due diligence, and march-in provisions.
>
> [Co-Exclusive Licenses]{.underline} are licenses granted to several
> different companies for the same similar applications. The USGS may
> choose to negotiate this type of license when:
>
> • There is a sizable cost-share, or in-kind commitment by the
> industrial entities for the project.
>
> • The development costs for the technology are beyond the scope of a
> single company or the CRADA participant.
>
> • The CRADA participant does not need total exclusivity or because of
> its size and resources could not commercialize throughout the U.S. for
> the foreseeable future.
>
> • The market for the technology is not yet developed and the fact that
> a number of suppliers will be able to support the technology may make
> it more attractive for potential customers.
>
> • The nature of the technology or market are such that without the
> protection from competition afforded by some measure of exclusivity,
> there is not sufficient incentive for a company to commercialize the
> technology, yet without multiple participants, market penetration
> cannot reach optimal levels.
>
> • Multiple companies, as well as the USGS, have developed background
> technology which is complimentary to the CRADA technology.
>
> • USGS had a greater background technology position than any single
> licensee in the technology and this position was developed at
> considerable tax payer expense.
>
> • Each company will agree to execute an appropriate license containing
> royalty rates, march-in rights and product liability.
>
> [An Exclusive License]{.underline} in all fields of use is the
> broadcast type of license. The USGS generally will not negotiate this
> type of license unless the public interest is clearly advanced by such
> an agreement. However, for an industrial participant to be considered
> for such a license it would have to satisfy the considerations set
> forth in the above Limited Exclusive Licenses section, as well as
> accept a license with the following terms and conditions:
>
> • The exclusive licensee would be required to pledge a best efforts
> (not just reasonable efforts) to commercialize the invention as well
> as provide a development and commercialization plan that measure these
> efforts.
>
> • The USGS would have the right, after giving notice to the licensee
> to take remedial action and allowing time for those actions, to
> terminate or render nonexclusive any license granted if:
>
> 1\) the licensee was not engaged in reasonable research, development
> trials, manufacturing, marketing, sublicensing, or other activities
> necessary to expedite the commercial dissemination of the licensed
> invention;
>
> 2\) the licensee could not satisfy health and safety requirements for
> the manufacture of any product;
>
> 3\) the licensee was in bankruptcy; or
>
> 4\) there was an assignment of substantially all the assets which
> negated other legal requirements of the license (e.g. export control).
>
> • The USGS for certain enumeration situations would reserve the right
> to require the licensee to grant sublicenses to responsible applicants
> in other fields of use.
>
> • The proposed exclusive licensee must agree not to unreasonably deny
> future CRADA collaborator requests for sublicenses and cross license
> rights, when the derivative rights are necessary to further additional
> proposed CRADAs with the USGS.

**D. Rights to Sublicense**

The right to sublicense is another incidence of ownership that can be
included at the CRADA stage or in any final license agreement. This is a
valuable right for the licensee. If sublicensing rights are negotiated
with a CRADA partner then the USGS should insure that it obtains a
royalty on sublicense sales and that any product liability protection
required for the Government in the original license are passed through
to the second tier of licensees.

**E. License Applications**

A potential licensee may apply for a license to government-owned
intellectual property. A sample license application may be found as Form
12 of this section. The Government generally follows careful selection
procedures, outlined in 37 CFR 404, as supplemented by 10 CFR 781
(invention only), when choosing a licensee. Some selection guidelines
include the following:

> o The potential licensee must present plans and intentions to
> commercialize the invention.
>
> o Often, non-exclusive licenses are preferred over exclusive licenses,
> but there are also provisions for limited exclusive licenses and
> co-exclusive licenses.
>
> o For exclusive licenses, a notice of availability and an opportunity
> for the public to comment are required. This may take the form of an
> advertisement placed in the [Federal Register]{.underline}.
>
> o Licensing may apply to patented inventions, copyrights, and
> trademarks.
>
> o The Government can license copyrights assigned to it by others and
> negotiate royalty payments as part of a CRADA, but can not apply
> directly for copyrights.

Once a licensee has been selected and terms are negotiated and agreed
upon, a formal written licensing agreement is executed. A sample
application and agreement may be found as Form 12 in this chapter.

**F. Private Sector Invention Licensing to the Government**

Patent rights clauses contained in R&D contracts and CRADAs permit the
Government to obtain a paid-up, non-exclusive, royalty‑free, worldwide
license (Government-Use License) in all subject inventions developed
under a FAR-controlled contract or CRADA action. Also, large businesses
will usually be required to license background patents to the Government
for practicing a subject of the contract. Research and development
contracts for permanent installation of equipment at a laboratory
require a background license to the facility.

**G. Copyrights**

A copyright is an exclusive right granted by the U.S. Government to the
authors, composers, artists, or their assignees for the life of the
individual plus 50 years, to copy, exhibit, distribute, or perform their
works. As with patent rights, these rights go to the individual creating
the work, unless provisions are made to the contrary. Copyrights can
cover written works, art, musical compositions, and computer software.

A copyright exists when the work is created. The law no longer requires
the work to be marked with a copyright notice, but it is still a good
idea to do so. Registration of copyrights with the Federal Government is
optional and can be done at any time during the life of the copyright.
Registration also permits using the Federal court system to prosecute
those who infringe on the copyright and provides certain mandatory
Federal damages against those convicted of infringement. Registration
may be recommended if software is the subject of a license agreement.

By law, the Federal Government cannot obtain copyright protection for
works of Federal employees created during their jobs. However, the
Government is not precluded from receiving and holding copyrights
transferred to it by assignment, bequest, or otherwise. The copyrighted
works of GOCO employees are generally regarded as works for hire and the
copyrights are, therefore, owned by the GOCO employer.

Computer software developed by Federal inventors may be protected by a
patent. But these cases are rare, and the software must fall into patent
eligibility criteria (see section 5A of this chapter).

**H. Trademarks/Service marks**

A trademark is a work, name, symbol, device, letter, numeral, or
picture, or any combination of them, in any form or arrangement that is
used by a party to identify the origin of goods. A Service mark
identifies the origin of services. Trademarks and Service marks must be
individually identifiable and distinguishable from those of others
offering similar goods or services, and are appropriate only if their
use is not prohibited by legislative enactment or by another public
policy.

Trademarks and Service marks assure the buyer of the authenticity of a
product or service and imply that the seller has exercised some
standards of quality associated with the mark. A person may establish a
trademark simply by using it in interstate commerce, i.e., the good must
be marked and must be sold across state lines. Like copyrights,
trademarks and Service marks may also be registered.

The Federal Government and its laboratories may apply for trademarks and
Service marks. At the DOI, this is simply a matter of filing for the
mark through the Office of the Solicitor, paying a fee, and registering
the mark with the U.S. Patent and Trademarks Office.

**Invention/Licensing Forms**

**Form 11: Non-Disclosure Agreements**

**Illustration A - Long Form**

NONDISCLOSURE AGREEMENT

WITH THE

U.S. Geological Survey

This NONDISCLOSURE AGREEMENT is entered into as of this \_\_\_ day of
\_\_\_\_\_\_\_\_\_, 199\_\_ by the U.S. Geological Survey, which is the
party disclosing confidential information (\"Discloser\", and
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_,
which is the party receiving confidential information (\"Recipient\"),
in order to protect the confidential information that is disclosed to
Recipient by Discloser.

NOW THEREFORE, in consideration of the mutual covenants contained
herein, the parties hereto agree as follows:

1\. The Recipient\'s representatives for receiving confidential
information
are:\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_;
Recipient(s) shall not disclose the confidential information to any of
its employees other than those who have a need to review it and which
employees are legally obligated to honor the confidentiality provisions
herein.

2\. The confidential information disclosed under this Agreement is
described as:
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

3\. The Recipient shall keep the information confidential and shall use
the confidential information only for private experimental purposes or
evaluation of the confidential information. The Recipient shall not make
any copies of the confidential information except as necessary for its
employees who are entitled to review it under Section 1 above. Any
copies that are made shall be identified as belonging to the Discloser
and marked \"confidential\", \"proprietary\", or with a similar legend.

4\. To the extent permitted by law, the Recipient shall protect the
disclosed confidential information by using the same degree of care, but
no less than a reasonable degree of care, to prevent the unauthorized
use, dissemination or publication of the confidential information as the
Recipient uses to protect its own confidential information of a like
nature.

5\. The Recipient shall have a duty to protect all confidential
information which is disclosed to it, whether disclosed in writing,
orally or in any other manner and which is identified as confidential at
the time of disclosure. If the disclosure is in writing, it shall be
marked \"confidential\". If the disclosure is not in writing, Discloser
shall provide Recipient with a written memorandum summarizing and
designating such information as confidential within thirty (30) days of
the disclosure.

6\. This Agreement imposes no obligation upon the Recipient with respect
to confidential information which (a) was in the Recipient\'s possession
before receipt from the Discloser; (b) is or becomes a matter of public
knowledge through no fault of the Recipient; (c) is rightfully received
by the Recipient from a third party without a duty of confidentiality;
(d) is disclosed by Discloser to a third party without a duty of
confidentiality on the third party; (e) is independently disclosed by
the Recipient with Discloser\'s prior written approval.

7\. The Discloser warrants that it has the right to make the disclosures
under the Agreement.

8\. The Recipient acquires no intellectual property rights under this
Agreement.

9\. Neither party has an obligation under this Agreement to purchase,
sell or license any service or item from the other party.

10\. The Recipient shall adhere to the U.S. Export Administration Laws
and Regulations and shall not export or re-export technical data or
products from the Discloser or the direct product of such technical data
to any proscribed country listed in the U.S. Export Administration
Regulations, unless properly authorized by the U.S. Government.

11\. The parties do not intend that any agency or partnership
relationship be created between them by this Agreement.

12\. All additions or modifications to this Agreement must be in writing
and signed by both parties.

13\. This Agreement is made under and shall be governed by the laws of
the United States.

> \_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Company Name

By\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Print Name\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Title\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Address\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

**Illustration B - Short Form**

***Non-Disclosure Agreement***

*RE:*

*, a corporation having an office in in view of the disclosure of the
above mentioned information that has been filed in a U.S. patent
application, agrees to the following:*

*1. will not disclose the information supplied by the **U.S. Geological
Survey** with regard to the claim from the date set forth below to any
third party without written permission from the **U.S. Geological
Survey** and will treat the information supplied by the **U.S.
Geological Survey** in respect of the claims as it treats its own
proprietary information and will only disclose the claims to those of
its employees who are under an obligation to , not to disclose
proprietary information described in titled .\"*

*2. The following information supplied by the **U.S. Geological Survey**
in respect of the claims shall be excluded from the obligations imposed
under paragraph 1:*

> *(a) Information which was known to , prior to receipt hereunder,*
>
> *(b) Information which at the time of disclosure to **,** was
> generally available to the public or which after disclosure hereunder
> becomes generally available to the public through no fault
> attributable to , or*
>
> *(c) Information which is hereafter made available to ., from any
> third party who is not under a nondisclosure obligation to the **U.S.
> Geological Survey** and who places no nondisclosure obligation on .,
> in respect of such information.*

*3. Nothing contained in this Agreement shall be construed as preventing
**,** from contesting in the U.S. Patent and Trademark Office and the
Courts the subject information as well as any U.S. Patent application
and/or patent which result from said application; nor does this
agreement grant any license under any patents.*

*AGREED TO AND ACCEPTED BY:*

*\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_*

*(A Duly Authorized Company Representative)*

*\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_*

*Title Date*

**Example of a Completed Short Form***: Underlined text should be
changed to suit the individual agreement.*

***NON-DISCLOSURE AGREEMENT***

> *RE: [\"Recovery of Metal Values from Waste Waters Using Immobilized
> Extractants\"]{.underline}*

***[Boulder Innovative Technologies,Inc]{.underline}**, a corporation
having an office in [Boulder,Colorado, 80301,]{.underline} in view of
the disclosure of the above mentioned information that has been filed in
a U.S. patent application, agrees to the following:*

*1. **[Boulder Innovative Technologies, Inc.]{.underline}** will not
disclose the information supplied by the **[U.S. Geological
Survey]{.underline}** with regard to the claim from the date set forth
below to any third party without written permission from the **[U.S.
Geological Survey]{.underline}** and will treat the information supplied
by the **[U.S. Geological Survey]{.underline}** in respect of the claims
as it treats its own proprietary information and will only disclose the
claims to those of its employees who are under an obligation to
**[Boulder Innovative Technologies, Inc.]{.underline}**, not to disclose
proprietary information described in [U.S. Patent Application \#
429,236,]{.underline} titled [\"Recovery of Metal Values from Waste
Waters Using Immobilized Extractants]{.underline}.\"*

*2. The following information supplied by the **[U.S. Geological
Survey]{.underline}** in respect of the claims shall be excluded from
the obligations imposed under paragraph 1:*

> *(a) Information which was known to **[Boulder Innovative
> Technologies, Inc.]{.underline}**, prior to receipt hereunder,*
>
> *(b) Information which at the time of disclosure to **[Boulder
> Innovative Technologies, Inc.]{.underline},** was generally available
> to the public or which after disclosure hereunder becomes generally
> available to the public through no fault attributable to **[Boulder
> Innovative Technologies, Inc.]{.underline}**, or*
>
> *(c) Information which is hereafter made available to **[Boulder
> Innovative Technologies, Inc]{.underline}**., from any third party who
> is not under a nondisclosure obligation to the **[U.S. Geological
> Survey]{.underline}** and who places no nondisclosure obligation on
> **[Boulder Innovative Technologies, Inc]{.underline}**., in respect of
> such information.*

3.  *Nothing contained in this Agreement shall be construed as
    preventing **[Boulder Innovative Technologies, Inc.]{.underline},**
    from contesting in the U.S. Patent and Trademark Office and the
    Courts the subject information as well as any U.S. Patent
    application and/or patent which result from said application; nor
    does this agreement grant any license under any patents.*

*AGREED TO AND ACCEPTED
BY:\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_*

**Form 12: Patent License Application and**

**Sample License Agreement**

***Application for a License***

*is hereby made to practice the Government-Owned invention identified
below in accordance with the applicable Patent Licensing Regulations.
The following information is submitted in support of this application.*

***Identification of Invention for Which License is Desired***

*1. Title of Invention*

*2. United States Patent Application Serial Number(s)*

*3. United States Patent Number(s) (if issued)*

*4. Source of Information Concerning Availability of a License*

***Applicant\'s Qualifications, Plans and Intentions for Practicing
Invention***

*5. Name & Address of Applicant*

*6. Name, Title, Address, and Telephone No. of Applicant\'s
Representative*

*7. State of Incorporation (if corporation) or Citizenship (if an
individual)*

*8. Approximate number of persons employed by applicant*

*9. Is applicant a small business firm? yes no*

***Applicant\'s Qualifications, Plans and Intentions for Practicing
Invention***

*Please respond to each of these issues (in sequence) in attachments to
this sheet in as much detail as possible. (Complete responses will
expedite the licensing process.) The commercial and financial
information in responses will be treated as privileged and confidential
as provided in 15 United States Code 209(a).*

*10. Explain the purpose for which this license is desired.*

*11. Explain the nature and type of applicant\'s business and its
relationship to commercial application of this invention. List related
products and services which the applicant has successfully
commercialized.*

*12. Describe how applicant plans to use, develop and market this
invention. Please give quantitative values for time, money and personnel
that will be committed to the plan, and any plans for financing to bring
this invention to commercialization. Give projected dates for commercial
applications and any intermediate milestones. Include any work or money
already invested.*

*13. Identify the fields of use in which applicant intends to
commercialize this invention.*

*14. Is applicant willing to accept a license for less than all fields
of use of the invention? (If \"Yes,\" please explain in detail.)*

*15. Countries in which applicant intends to practice the invention,
including locations where any licensed products will be manufactured.*

*16. Identify the type of license and any special terms or conditions
requested by applicant. Give reasons for the request(s).*

*17. Identify any licenses under federally-owned inventions previously
granted to applicant.*

*18. Is the applicant aware of any use of the invention by industry or
government? If so, please give details known to applicant.*

*19. Please add any additional information applicant considers pertinent
to this application for license.*

***Title & Signature of Applicant or Authorized Representative Date***

**LICENSE FOR DEVELOPMENT AND USE**

This License Agreement is made and entered by and between the Director
of the United States Geological Survey (USGS), Department of the
Interior as a representative of the United States of America
(hereinafter Licensor), acting under authority of 15 U.S.C. S 3710a (a)
(2), and a Corporation, having a place of business at (hereinafter
called Licensee).

Whereas, the Department of the Interior through the USGS has sponsored
research on various , and as a result the Government has received a
valuable federally owned U.S. Patent No. titled ; and

Whereas, the Licensor desires the products and methods claimed in the
U.S. Patent above to be made available to the public in the shortest
possible time, thereby serving the public interest by providing improved
products and processes for ; and

Whereas, Licensee has reviewed the Patent and the USGS prototype and is
interested in licensing the technology to develop with its existing
product line, and

Whereas, USGS has advertised the interest of the Licensee in acquiring
an exclusive patent in the field of use of pursuant to the requirements
of 37 CFR 404.7; and

Whereas, Licensee wishes to acquire, and USGS is willing to grant an
exclusive license in the identified field of use; and

Whereas, Licensee has provided a satisfactory development plan which
meets the requirements of 37 CFR 404.5;

Now, therefore in consideration of the promises, as well as the
obligations herein made and undertaken, the parties hereto intending to
be legally bound, agree as follows:

**ARTICLE I**

**DEFINITIONS**

1.01 Terms in this LICENSE AGREEMENT (other than names of parties and
Article headings) which are set forth in upper case letters have the
meanings established for such terms in the succeeding ARTICLES of the
ARTICLE I.

1.02 LICENSE AGREEMENT means this License for Development and Use,
including any exhibits attached hereto.

1.03 LICENSE means the license granted pursuant to paragraph 2.01 of
this LICENSE AGREEMENT.

1.04 LICENSED PATENT APPLICATION(S) MEANS U.S. Patent Application Serial
No(s). , any continuations, continuation-in-part, Disciplines or
reissues thereof, any patent or patents granted thereon, and any foreign
patents or patent applications corresponding thereto.

1.05 LICENSED TECHNICAL INFORMATION means technical information
including, but not limited to, data, know-how, trade secrets,
calculations, writing, and drawings, whether or not patented, relating
to the licensed patent applications and developed under the governing
CRADA.

1.06 LICENSED TECHNOLOGY means LICENSED TECHNICAL INFORMATION and any
products, methods, processes, or uses which are disclosed and claimed in
the LICENSED PATENT APPLICATION(S).

1.07 LICENSED AREA means

1.08 THE POINT OF PRACTICAL APPLICATION means the condition such that
the LICENSED TECHNOLOGY is being utilized and the benefits of the
LICENSED TECHNOLOGY are, to the extent permitted by law, being made
available to the public on reasonable terms on or before , in accordance
with the plan for development and marketing the LICENSED TECHNOLOGY
attached as Exhibit A.

1.09 LICENSOR\'S REPRESENTATIVE means the Director of the U.S.
Geological Survey, Reston, Virginia.

1.10 ROYALTY-BASE CONTRACT means any contract or group of related
contracts under which products, methods, processes, or uses described
and claimed in the LICENSED PATENT APPLICATION(S) play a role in the
performance of at least one of the contracts.

1.11 NET SALES means the total amount invoiced by LICENSEE AND its sub
licensees on sales of products or services pursuant to any ROYALTY-BASE
CONTRACT, less:

> a\) Customary trade, quantity, or cash discounts including allowances
> or credits on account of retroactive price reductions and
> nonaffiliated brokers\' or agents\' commissions actually allowed and
> taken;
>
> b\) Amounts unpaid, repaid, or credited by reason of rejections or
> returns; and
>
> c\) Any freight or other transportation costs, insurance charges,
> duties, tariffs, and all sales and excise taxes based directly on
> sales of products or services pursuant to the ROYALTY-BASE CONTRACT.

**ARTICLE II**

**LICENSE GRANT**

2.01 Upon the terms and conditions set forth herein and subject to the
payment of royalties as set forth herein, LICENSOR grants to LICENSEE an
exclusive license to make, have made, use and sell the LICENSED
TECHNOLOGY throughout the LICENSED AREA/or FIELD OF USE for the term set
forth in paragraph 9.02 of this LICENSE AGREEMENT.

**ARTICLE III**

**ROYALTIES AND PAYMENTS**

3.01 LICENSEE shall pay LICENSOR royalties at the rate of percent ( %)
on its and its sub licensees\' NET SALES under all ROYALTY-BASE
CONTRACTS.

3.02 Within 30 days after the effective date of this agreement, LICENSEE
shall pay to LICENSOR Dollars (\$ ).

3.03 In case the royalties paid do not aggregate a minimum of Dollars
(\$ ) for the year ending December 31, 199\_\_ , and for each succeeding
calendar year during the life of this LICENSEE AGREEMENT, the LICENSEE
will within ninety (90) days of the end of such year make up the
deficiency of the royalties actually paid to such minimum sum, provided
however, that the LICENSEE must make up the deficiency for such year
before it may surrender this exclusive LICENSE.

3.04 The royalties provided for in paragraph 3.01 shall be paid by
LICENSEE on the total amount invoiced under any ROYALTY-BASE CONTRACT
utilizing the LICENSED TECHNOLOGY; provided, however, that if Letters of
Patent do not issue within 3 years from the date of this LICENSE
AGREEMENT with a claim or claims covering an invention utilized in
LICENSEE\'s products or services, and none of the LICENSED PATENT
APPLICATIONS pending at the end of the three years contains an allowed
claim having such coverage, LICENSEE may thereafter, at its option,
terminate this LICENSE AGREEMENT by giving sixty (60) days notice to
that effect to LICENSOR REPRESENTATIVE.

3.05 Royalties shall be payable in United States dollars, paid by check
made payable to U.S. Geological Survey and mailed to:

U.S. Geological Survey

12201 Sunrise Valley Drive

Reston, Virginia 20192

The check shall be accompanied by copies of the first page and signature
page of this Agreement.

3.06 LICENSEE shall pay royalties accrued for amounts paid under any
ROYALTY-BASE CONTRACT not later than ninety (90) days after each
calendar half year ending June 30th and December 31st. LICENSEE shall
submit with its payment the written report required in paragraph 4.01 of
this LICENSEE AGREEMENT. If no royalties are due, the report shall so
state. Sales shall be considered to be made, for purposes of this
ARTICLE, sixty (60) days after invoiced, except that upon any
termination of this LICENSE AGREEMENT, all products shipped or services
performed prior to the day of such termination though not invoiced prior
thereto shall nevertheless be considered as sold and therefore subject
to royalty. If sales of products or services pursuant to a ROYALTY-BASE

CONTRACT are within (90) days after being invoiced, unpaid, repaid, or
credited to the customer, royalties, paid on such sales shall be
returned to LICENSEE.

3.07 LICENSEE shall pay within sixty (60) days from any termination of
this Agreement royalties accrued for payment at time of any such
termination.

3.08 Royalty payments not received by LICENSOR by the due date shall be
subject to interest charges computed at ten percent (10%) per annum.

3.09 No royalty shall be payable under this LICENSE AGREEMENT for direct
sales of products or services pursuant to a ROYALTY-BASE CONTRACT by
LICENSEE or its sub licensees with the United States Government or any
of its agencies for governmental purposes.

**ARTICLE IV**

**REPORTS AND RECORDS**

4.01 LICENSEE shall provide LICENSOR\'S REPRESENTATIVE with written
annual progress reports within ninety (90) days of the end of each
calendar year describing its efforts, and the efforts of any sub
licensee, to bring the products and methods licensed under this LICENSE
AGREEMENT to THE POINT OF PRACTICAL APPLICATION. No further annual
progress reports will be required after notification of the first
commercial sale of products or services pursuant to a ROYALTY-BASE
CONTRACT unless otherwise requested by LICENSOR.

4.02 Concurrently with each payment of royalties as required in ARTICLE
III of this AGREEMENT, or at the time such payments are due although no
royalties have accrued, LICENSEE shall submit a written report to
LICENSOR\'S REPRESENTATIVE setting forth for the preceding six (6) month
period the amount of products or services delivered pursuant to any
ROYALTY-BASE CONTRACT made, used, sold or otherwise disposed or
distributed by LICENSEE and its sub licensees in the LICENSED AREA, the
NET SALES thereof, and the amount of royalties due thereon. If no
royalties are due LICENSOR for any report period, the report shall so
state.

4.03 The reports required under this ARTICLE IV shall also be made
within sixty (60) days of the termination of the Agreement.

4.04 LICENSEE agrees to keep records showing all sales or other
disposition of products or services pursuant to any ROYALTY-BASE
CONTRACT or otherwise disposed of or distributed under the LICENSE
granted in this LICENSE AGREEMENT. These records shall be retained for
three years beyond the date of disposal or distribution or sale and
shall be in sufficient detail to enable the royalties payable hereunder
by LICENSEE to be determined. These records may be examined from time to
time to the extent necessary to verify the reports provided for in this
ARTICLE IV, such examination to be made at the expense of the LICENSOR
by any auditor appointed by LICENSOR who shall be acceptable to
LICENSEE, or, at the option and expense of LICENSEE, by a certified
public accountant appointed by LICENSOR.

**ARTICLE V**

**SUBLICENSING**

5.01 LICENSEE shall have the right to grant sublicenses to others under
this exclusive LICENSE so long as royalties are paid by LICENSEE to
LICENSOR on sales of products or services made pursuant to any
ROYALTY-BASE CONTRACT by such sub licensees at the rates set forth in
paragraph 3.01 of this LICENSE AGREEMENT and so long as the sublicenses
are subject to the provisions of this LICENSE AGREEMENT. Any sublicense
shall make reference to this LICENSE AGREEMENT including those rights
retained by LICENSOR. A copy of any sublicense shall be furnished to a
LICENSOR\'S REPRESENTATIVE within fifteen (15) days after its execution.

5.02 In the event of termination of this LICENSE AGREEMENT or the
conversion of the exclusive LICENSE granted hereunder to a nonexclusive
license under any of the provisions of paragraphs 7.03 or 9.03 of this
LICENSE AGREEMENT: (1) LICENSEE may convert the sub licensees to
sublicenses under its nonexclusive license which it will retain
following any such termination or conversion, or (2) sub licensees may
exercise their option to convert their sublicenses to licenses directly
form LICENSOR. Any sublicense granted by LICENSEE shall contain
provisions corresponding to those of this ARTICLE respecting termination
or conversion and the conditions of continuance of sublicenses.

5.03 LICENSOR reserves the right to require LICENSEE to grant
sublicenses to responsible applicants on reasonable terms to the extent
that the LICENSED TECHNOLOGY is required for public health, welfare, or
safety needs. Any decision by LICENSOR to require such a sublicense may
be appealed by LICENSEE under the procedures set forth in paragraph
11.07.

**ARTICLE VI**

**LICENSEE PERFORMANCE**

6.01 LICENSEE shall expend reasonable efforts and resources to carry out
the development and marketing of the LICENSED TECHNOLOGY and to bring
the LICENSED TECHNOLOGY to THE POINT OF PRACTICAL APPLICATION.

6.02 After bringing the LICENSED TECHNOLOGY to THE POINT OF PRACTICAL
APPLICATION in the LICENSE AREA, LICENSEE agrees to make the LICENSED
TECHNOLOGY available to the public on reasonable terms during the term
of this LICENSE AGREEMENT. LICENSEE shall promptly report discontinuance
of its making the benefits of the products and methods reasonably
accessible to the public.

6.03 Failure to comply with the terms of this ARTICLE shall be cause for
modification or termination of this LICENSE AGREEMENT in accordance with
the provisions of ARTICLE IX below. No other rights or remedies accrue
to LICENSOR or any third parties by reason of such failure.

**ARTICLE VII**

**PATENT ENFORCEMENT**

7.01 LICENSOR and LICENSEE shall notify each other promptly in writing
of any infringement of patents granted from the LICENSED PATENT
APPLICATION(S) which becomes known to either of them. LICENSEE shall
notify LICENSOR promptly of any action permitted by this ARTICLE VII
that it takes to eliminate such infringement.

7.02 While and as long as its LICENSE under this LICENSE AGREEMENT
remains exclusive, LICENSEE is authorized pursuant to the provisions of
Chapter 29 of Title 35, United States Code, or other statues:

> a\. To bring suit in its own name or, if required by law, jointly with
> LICENSOR, at its own expense and on its own behalf, for infringement
> of any patents granted from the LICENSED PATENT APPLICATION(S);
>
> b\. In any such suit, to enjoin infringement and to collect damages,
> profits, and awards of whatever nature recoverable for such
> infringement; and
>
> c\. To settle any claim or suit for infringement of any patents
> granted from the LICENSED PATENT APPLICATION(S) by granting the
> infringing party a sublicense under the provisions of ARTICLE V of
> this LICENSE AGREEMENT. LICENSEE shall pay royalties to LICENSOR based
> on sales by such sub licensee in accordance with paragraph 5.01.

7.03 In the event LICENSOR shall bring to the attention of LICENSEE any
unlicensed infringement of patents granted from the LICENSED PATENT
APPLICATION(S), and LICENSEE shall not, within six months:

> a\. Secure cessation of the infringement, or

b\. Enter suit against the infringer, or

c\. Provide LICENSOR with evidence of the pendency of a bonafide
negotiation for the acceptance by the infringer of a sublicense under
patents granted from the LICENSED PATENT APPLICATIONS, the LICENSE
herein granted to LICENSEE may, at LICENSOR\'S option, become
nonexclusive, and LICENSOR shall thereafter have the right to sue for
the infringement at LICENSOR\'s own expense, and to collect for its own
use all damages, profits, and awards of whatever nature recoverable for
such infringement.

7.04 LICENSOR and LICENSEE mutually agree to furnish technical and other
necessary assistance to each other in conducting any litigation
necessary to enforce patents granted from the LICENSED PATENT
APPLICATION(S) against others. Expenses for such assistance will be paid
by the party requesting such assistance.

**ARTICLE VIII**

**RESERVATION OF RIGHTS**

8.01 The LICENSE granted in ARTICLE II of this LICENSE AGREEMENT shall
be subject to the irrevocable, royalty-free right of the Government of
the United States to practice and have practiced on behalf of any
foreign government or international organization pursuant to any
existing or future treaty or agreement with the United States, the
LICENSED TECHNOLOGY, including the products and methods described and
claimed in the LICENSED PATENTS APPLICATIONS and in any patents granted
therefrom.

**ARTICLE IX**

**TERM AND TERMINATION**

9.01 The Effective Date of the LICENSE AGREEMENT is the date of the last
signature to this LICENSE AGREEMENT.

9.02 The term of this LICENSE AGREEMENT begins on its Effective Date as
set forth in paragraph 9.01. Unless sooner terminated or otherwise
modified as provided for in this ARTICLE IX, this LICENSE AGREEMENT
shall remain in full force and effect for an initial term of ( ) years
from the Effective Date. LICENSEE shall have the right to renew this
LICENSE AGREEMENT for successive periods up to five (5) years upon
written notice mailed to LICENSOR\'S REPRESENTATIVE at least sixty (60)
days prior to the expiration of the initial term and each subsequent
renewal term, provided, however, that LICENSEE shall have no right to
renew this LICENSE AGREEMENT in the event that either party hereto has
exercised a right of termination under this ARTICLE IX or in the event
that LICENSEE in not making good faith efforts to bring the LICENSED
TECHNOLOGY to THE POINT OF PRACTICAL APPLICATION.

9.03 The LICENSOR may modify or terminate this exclusive license, in
whole or in part, if:

> a\. LICENSEE fails to meet the obligations set forth in ARTICLE VI
> above;
>
> b\. The LICENSOR determines that such action is necessary to meet
> requirements for public use specified by Federal regulations issued
> after the date of this LICENSE AGREEMENT and such requirements are not
> reasonably satisfied by the LICENSEE;
>
> c\. The LICENSEE has willfully made a false statement or willfully
> omitted a material fact in its license application or in any report
> required by this LICENSE AGREEMENT;
>
> d\. The LICENSEE commits a substantial breach of a covenant or
> agreement contained in this LICENSE AGREEMENT;
>
> e\. The LICENSEE defaults in making any payment or report required by
> this LICENSE AGREEMENT;
>
> f\. The LICENSEE is adjudged as bankrupt or has its assets placed in
> the hands of a receiver or makes any assignment or other accommodation
> for the benefit of creditors; or
>
> g\. The LICENSEE or any of its sub licensees misuses the LICENSED
> PATENTS.

9.04 Prior to any modification or termination of this LICENSE AGREEMENT
by LICENSOR, LICENSOR shall furnish LICENSEE and any sub licensee of
record a written notice of LICENSOR's intention to modify or terminate,
and the LICENSEE and any notified sub licensee shall be allowed sixty
(60) days after the date of such notice to remedy any breach or default
of any covenant or agreement of this LICENSE AGREEMENT or to show cause
why this LICENSE AGREEMENT should not be modified or terminated.

9.05 LICENSEE may terminate this LICENSE AGREEMENT at any time by giving
LICENSOR\'S REPRESENTATIVE prior written notice not less than sixty (60)
days before the date of such termination.

9.06 The word \"termination\" and cognate words, such as \"term\" and
\"terminate,\" used in this ARTICLE IX and elsewhere in this LICENSE
AGREEMENT are to read, except where the contrary is specifically
indicated, as omitting from their effect the following rights and
obligations, all of which survive any termination to the degree
necessary to permit their complete fulfillment or discharge:

> a\. LICENSEE\'s obligation to supply a terminal report as specified in
> ARTICLE IV of this LICENSE AGREEMENT;
>
> b\. LICENSEE\'s right to complete and sell LICENSED TECHNOLOGY on
> which LICENSEE has an outstanding order;
>
> c\. LICENSOR\'S right to receive or recover and LICENSEE\'s obligation
> to pay royalties (including prorated minimum royalties) accrued for
> payment at the time of any termination, including royalties for sales
> pursuant to

9.06 (b);

> d\. LICENSEE\'s obligation to maintain records and LICENSOR\'S right
> to conduct a final audit as provided in ARTICLE IV of this LICENSE
> AGREEMENT;
>
> e\. Licenses, releases, and agreements of non-assertion running in
> favor of customers or transferees of LICENSE in respect to products or
> services provided pursuant to any ROYALTY-BASE CONTRACT prior to any
> termination and on which royalties shall have been paid as provided in
> ARTICLE III of this LICENSE AGREEMENT;
>
> f\. Any cause of action or claim of LICENSOR accrued or to accrue,
> because of any breach or default by LICENSEE.

9.07 In the event of termination of this LICENSE AGREEMENT or conversion
of the license granted hereunder, any effected sublicense of record
granted pursuant to this LICENSE AGREEMENT may be converted to a license
with the LICENSOR in accordance with the provisions of ARTICLE V herein.

9.08 LICENSOR and LICENSEE shall pay their own termination costs out of
their own funds. In no event shall LICENSOR or LICENSEE be liable for
the direct termination costs of the other party or the other party\'s
expenses caused by or related to the termination.

**ARTICLE X**

**REPRESENTATION AND WARRANTIES**

10.01 LICENSOR represents and warrants as follows:

> a\. The U.S. Geological Survey is a Federal laboratory of the
> Department of the Interior wholly owned by the U.S. Government, whose
> substantial purpose is the performance of research, development, or
> engineering by employees of said government;
>
> b\. The performance of the activities specified by this LICENSE
> AGREEMENT are consistent with the mission of the U.S. Geological
> Survey;
>
> c\. All prior reviews and approvals required by regulations or law
> have been obtained by the LICENSOR prior to the execution of this
> LICENSE AGREEMENT. The Laboratory official executing of this LICENSE
> AGREEMENT on behalf of LICENSOR has the requisite authority to do so;
>
> d\. LICENSOR is the lawful owner of the LICENSED PATENT APPLICATION(S)
> and the LICENSED TECHNOLOGY. LICENSOR has the right to license the
> LICENSED TECHNOLOGY including the LICENSED PATENT APPLICATION(S) and
> LICENSOR has not executed and is not aware of any assignment, license,
> or other agreement conflicting with any of the grants, assignments,
> and transfers contained in this LICENSE AGREEMENT;
>
> e\. No claim, whether or not embodied in an action past or present, of
> infringement by the LICENSED TECHNOLOGY has been made or is pending
> against LICENSOR.

10.2 LICENSEE represents and warrants as follows:

> a\. LICENSEE is a corporation duly organized, validly existing and in
> a good standing under the laws of the State of (**STATE OF
> INCORPORATION)**;
>
> b\. LICENSEE has the requisite power and authority to enter into this
> LICENSE AGREEMENT and to perform according to the terms thereof;
>
> c\. The Board of Directors and shareholders of LICENSEE have taken all
> actions, if any, required to be taken by law, LICENSEE\'s Articles of
> Incorporation, its bylaws or otherwise, to authorize the execution and
> delivery of this LICENSE AGREEMENT;
>
> d\. The execution and delivery of this LICENSE AGREEMENT does not
> contravene any material provision of, or constitute a material default
> under, any material agreement binding on LICENSEE or any valid order
> of any court, or any regulatory agency or other body having authority
> to which LICENSEE is subject, nor, to the best of its knowledge, is
> LICENSEE the subject of any adversarial proceeding by any regulatory
> governmental agency.

**ARTICLE XI**

**GENERAL**

11.01 This LICENSE AGREEMENT shall extend to any reissued patent which
may derived from any patent granted from the LICENSED PATENT
APPLICATION(S), provided that LICENSOR has custody of the right thereto
and is able to grant a license without incurring liability to third
parties.

11.02 This LICENSE AGREEMENT shall not be transferred or assigned by
Licensee to any party other than to successor or assignee of the
business interest of LICENSEE relating to the LICENSED TECHNOLOGY
without the approval of LICENSOR\'S REPRESENTATIVE.

11.03 This LICENSE AGREEMENT does not confer any immunity from or
defenses under the antitrust laws, the export laws, the laws and
regulations of the United States pertaining to or administered by the
U.S. Geological Survey or the Department of the Interior, not does it
confer immunity from a charge of patent misuse. Furthermore, LICENSEE\'S
or sub licensee's acquisition and exercise of rights hereunder are not
immunized from the operation of any state of Federal law by reason of
the source of the grant. This LICENSE AGREEMENT does not constitute an
endorsement by LICENSOR of the LICENSED TECHNOLOGY and LICENSEE shall
not state or imply in any medium that such endorsement exists as the
result of this LICENSE AGREEMENT.

11.04 LICENSEE agrees to maintain any LICENSED PATENTS or any patents
granted from the LICENSED PATENT APPLICATION(s) in force during the term
of this LICENSE AGREEMENT by paying, when due, the fees required by 35
U.S.C. 41(b).

11.05 LICENSOR makes no warranty, express or implied, regarding the
patentability of the inventions disclosed in the LICENSED PATENT
APPLICATION(S) or the validity of any patents granted from the LICENSED
PATENT APPLICATION(S) and makes no representations whatsoever with
regard to the scope of such patents or that such patents may be
exploited without infringing other patents.

11.06 LICENSOR assumes no liability resulting from LICENSEE\'s exercise
of its rights under this LICENSE AGREEMENT or from LICENSOR\'s exercise
of its BASE CONTRACTS in the LICENSED AREA, LICENSEE agrees to apply its
best efforts to use, sell, or otherwise distribute products manufactured
substantially in the United States.

11.08 The decision of LICENSOR\'S REPRESENTATIVE on any requirement,
dispute, interpretation, modification, or termination of this LICENSE
AGREEMENT shall be reduced to writing and a copy mailed or otherwise
furnished to LICENSEE. Such decision shall be final, provided that
LICENSEE may, within thirty (30) days of receiving notice of such
decision, submit a written appeal through LICENSOR\'S REPRESENTATIVE to
the Senior Attorney, Branch of Procurement and Patents, Solicitor\'s
Office, U.S. Department of the Interior, which appeal shall set forth in
detail the decision being appealed and the basis of the appeal and may
include appropriate supporting materials. Implementation of such
decision shall be stayed pending a final resolution of such appeal.
Pending such final resolution, LICENSEE shall proceed diligently with
the performance of its obligations under this LICENSE AGREEMENT.

11.09 The parties shall notify each other of any changes in name,
address, or business status, and any notice, payment or report required
to be given under the provisions of this LICENSE AGREEMENT shall be
considered duly given if mailed by first class mail, postage prepaid,
and addressed as follows:

> a\. If to LICENSOR: Director, U.S. Geological Survey, 114 National
> Center, Reston, Virginia 20192.
>
> b\. If to LICENSEE: **(TITLE). (COOPERATOR NAME AND ADDRESS)**

11.10 The interpretation and application of the provisions of this
LICENSE AGREEMENT shall be governed by the laws of the United States as
interpreted and applied by the Federal courts in the District of
Columbia, United States of America.

11.11 This LICENSE AGREEMENT constitutes the entire understanding
between the parties and neither party shall be obligated by any
condition or representation other than those expressly stated herein or
as may be subsequently agreed to by the parties hereto in writing.

11.12 Titles and headings of the Articles and paragraphs of this LICENSE
AGREEMENT are for the convenience of reference only and do not form a
part of this LICENSE AGREEMENT and shall in no way affect the
interpretation thereof.

11.13 None of the provisions of this LICENSE AGREEMENT shall be
considered waived by any party hereto unless such waiver is given in
writing to all other parties. The failure of any party to insist upon
strict performance of any of the terms and conditions hereof, or failure
or delay to exercise any rights provided herein or by law, shall not be
deemed a waiver of any rights of any party hereto.

11.14 The illegality or invalidity of any provisions of this LICENSE
AGREEMENT shall not impair, affect, or invalidate the other provisions
of this LICENSE AGREEMENT.

11.15 If LICENSOR or LICENSEE desires a modification in this LICENSE
AGREEMENT, the parties shall, upon reasonable notice of the proposed
modification by the party desiring the change, confer in good faith to
determine the desirability of such modification. Such modification shall
not be effective until a written amendment is signed by the
representatives of LICENSOR and LICENSEE duly authorized to execute such
amendment.

11.6 The relationship of the LICENSOR and LICENSEE is that of
independent parties and not as agents of each other or as joint ventures
or partners. LICENSOR shall maintain sole exclusive control over its
personnel and operations. LICENSEE shall maintain sole and exclusive
control over its personnel operations.

IN WITNESS WHEREOF, each of the parties hereto has caused this LICENSE
AGREEMENT to be executed in duplicate originals by its duly authorized
officers or representatives.

FOR LICENSOR: FOR LICENSEE:

Name: Name:

Director Title:

U.S. Geological Survey (COOPERATIVE NAME AND ADDRESS)

Date: Date:

**IV. POSSIBLE PITFALLS**

This section offers issues and potential barriers often associated with
transferring federally developed research products and technologies.
Technology transfer legislation has helped government agencies overcome
many of the barriers discussed. Through increased awareness and
sensitivity to the issues of concern listed in section 1 and some of the
barriers of section 2, agencies can overcome some of these challenges.

**1. Issues of Concern in Technology Transfer**

Several issues should be considered in order to effectively transfer
federally developed technology and products. These issues include:

**U.S. Competitiveness** ‑ The most important issue surrounding
technology transfer is its role in contributing to an improved U.S.
presence and competitive position in the world marketplace. New
products, additions to existing products, and the development of a
collaborative culture between Government and U.S. industry are all goals
that will be served when we actively pursue the transfer of federally
funded R&D to the private sector.

**Fairness of Opportunity** ‑ Technology transfer activities are aimed
at commercializing Federal research products. A key step in
commercialization is to find marketers or commercializers to the
technology to be transferred. Certain technology transfer activities,
such as Cooperative Research and Development Agreements (CRADAs) and
patent licenses, provide incentives for companies to adopt, market, and
sell federally developed products. It is prudent to make sure that
information about collaborative and patent-licensing opportunities is
made readily and widely available to anyone interested in taking
advantage of these. This can be done by advertising the opportunity in
journals such as the Federal Register, discussing the activity at
conferences, distributing fact sheets, and providing information about
the technology on the Internet.

**Conflict of Interest** - All employees, contractors, and organizations
under the jurisdiction of DOI are subject to conflict‑of‑interest
provisions. These provisions prohibit individuals, organizations, or
institutions working for or with the Federal Government from using their
position, or knowledge gained by virtue of that position, for undue
gain, financial or otherwise. DOI policy, for example, discourages close
involvement of inventors in negotiating patent license royalties. The
primary purpose of technology transfer activities is to stimulate
commercial development, adoption, and use of USGS-developed products not
to encourage personal gain.

**2. Barriers to Technology Transfer**

There are many barriers to effective technology transfer. Awareness of
these potential barriers can help increase the likelihood of success.
Some of these are:

**Resistance to Change.** Many good, new ideas are not accepted
initially because of the basic human tendency to resist change and to
resist moving outside of our own paradigms. The original photocopying
process, for example, was not taken seriously in 1940 when its inventor
presented it to potential marketers. The marketers failed to see the
potential of this new process and it was not until 1958 that the
technology was commercialized by Xerox. In another case, the Swiss
developed the quartz watch, but it was considered too radically
different. It had no springs, no gears. The Swiss saw no reason to
abandon traditional watch-making technology. As a result, the Swiss lost
a considerable market because two foreign competitors did take the risk.

**Lag Time.** In the United States, there is an average lag time of 5-10
years from product conception in a laboratory to commercialization and
use. Often, it takes this long to develop a market for a new product.
The television set, although delayed by World War II, had been around
for at least 15 years before it was first used commercially. Many people
thought it would never replace the beloved radio, but today many
households own three or four television sets.

**Insufficient Marketing.** The Federal Government has traditionally
been conservative and has done too little to sell itself. Those who may
benefit from using government technology need to know more about what
Federal laboratories have developed. The only way this can be
accomplished is to talk about these developments, make them visible, and
focus on the benefits, not just the features, of new technology. In
addition, the Government must share its "know-how" and help customers
learn how to use the new technology it offers.

**Lack of Marketing Incentive.** Many government-developed research
products are available to anyone interested. Many companies see this as
a disincentive. They can pick up and market a government technology
freely, but so can their competitors. Many technologies, as a result, go
un-adopted or unused. Prior to passage of Federal technology transfer
legislation in the 1980\'s, there had been little incentive for
companies to pick up federally developed technology and apply this to
what can often be small, competitive and conservative market segments.

**Lack of Involvement by Inventors.** Most laboratory researchers are
more comfortable at the research bench than talking with potential users
about their inventions or results. But the inventors are crucial to the
successful transfer of technology. The inventors offer \"know-how\" and
technical expertise that cannot be replicated by anyone else, and they
need to be involved in the marketing and demonstration process.
Inventors make the best champions for research developments.

**Lack of Trust in Working with Federal Laboratories.** Prior to
technology transfer legislation in the 1980\'s, there were few avenues
open to the private sector to work with Federal laboratories in a
protected environment. Information about collaborative activities was
available, for the most part, to anyone requesting it, and there were
few ways to protect proprietary information brought to the activity by
the company such as trade secrets or company data. In addition, the
private sector did not trust the Federal laboratories to deliver on
promises made during collaborative activities. Technology transfer laws
have helped eliminate these problems.

**V. RESOURCES FOR ASSISTANCE**

**1. The Business Development Branch**

The USGS Business Development Branch has the responsibility for
encouraging and leading the technology transfer activities within the
Survey. Its staff is available to answer questions, help prepare
documents, negotiate CRADAs and licenses, as well as ease and speed the
process in any way possible. The Office also helps to promote your
opportunities for partnerships, patents, and licenses on those patents.
Whatever your question or problem in any of the subject areas covered in
this manual, please feel free to contact the Branch for answers and
help.

The Business Development Branch is located within the Geography
Discipline.

Beth Duff Phone: 703-648-4621

Steve Strader Phone: 703-648-4652

**2. Other Sources for Assistance**

The Federal Government offers several other sources of technology
transfer information and training. Some of these are listed below with
addresses and telephone numbers:

[National Technology Transfer Center (NTTC):]{.underline} Located in
Wheeling, WV, the NTTC offers training in Cooperative Research and
Development Agreement (CRADA) negotiation, Intellectual Property and
Licensing negotiation, Marketing Techniques, and Technology Assessment,
as well as other germane areas. NTTC, Wheeling Jesuit College, 316
Washington Avenue, Wheeling, WV 26003. Tel: (304) 243-4400. FAX: (304)
243-4389. URL: http://www.nttc.edu

[Federal Laboratory Consortium for Technology
Transfer(FLC):]{.underline} The FLC links Federal laboratories and their
representatives together to share ideas and information valuable to
Federal Technology Transfer efforts. FLC was chartered by the
Stevenson-Wydler Technology Innovation Act of 1980. FLC provides
training in various areas related to technology transfer and hosts
Spring and Fall conferences through which Federal agency technology
transfer representatives can network and interact with non-Federal
representatives interested in Federal technology. FLC also publishes a
newsletter call [NewsLink]{.underline}. Tel: 856-667-7727. On-line
subscription: <flcnews@utrsmail.com> URL: http://www.federallabs.org/

**APPENDIX A: GLOSSARY OF TERMS USED**

**WITH TECHNOLOGY TRANSFER**

When working in the field of technology transfer, it is helpful to
understand the language. Here are some terms often used in conjunction
with technology transfer activities and their meanings:

**Background Patent** ‑ A patent that was in existence prior to a
Cooperative Research and Development Agreement or CRADA, i.e. the
invention described and claimed in the patent must have been conceived
outside of the CRADA and not first actually reduced to practice under
the CRADA.

**CRADA** ‑ A Cooperative Research and Development Agreement as
described in Title 15 of the United States Code (USC). This agreement is
a collaborative partnership between one or more Federal laboratories and
one or more non-Federal parties. Under such an agreement, the
Government, through its laboratories, provides personnel, facilities,
equipment, intellectual property or other resources with or without
reimbursement. The Federal Government partner cannot provide funds to
its collaborator(s). The collaborators may provide funds, personnel,
services, facilities, equipment, or other resources to conduct specific
research or development efforts that are consistent with the Federal
laboratory\'s mission.

**Contractor** ‑ Any person, small business firm, or nonprofit
organization that is a party to a funding agreement.

**Copyright** ‑ The right granted by law to an author, playwright,
publisher, composer, software developer, artist, or distributor to
exclusive publication, production, sale or distribution of literary,
musical, dramatic, artistic, or computer software works as described in
Title 17 of the United States Code. Examples of some works that may be
copyrightable: writings, drawings, movies, graphs, sculptures, and
computer software.

**Federal agency** ‑ Any executive agency as defined in section 105 of
Title 5, United States Code, and the military departments as defined by
section 102 of Title 5, United States Code.

**Field-of-use** - A specific area of use for which an exclusive license
to a patent may be granted, for example, a specific market area such as
biomedical or graphic arts.

**Funding agreement** ‑ A contract, grant, or cooperative agreement
entered into between any Federal agency, other than the Tennessee Valley
Authority, and any contractor for the performance of experimental,
developmental, or research work funded in whole or in part by the
Federal Government. This term includes any assignment, substitution of
parties, or subcontract of any type entered into for the performance of
experimental, developmental, or research work under a funding agreement
as herein defined.

Government Use License - A government use license stipulates that if a
patent is obtained on a subject invention, the inventor (s) agrees to
grant to the U.S. Government a world-wide, nonexclusive, royalty-free
license to use the invention for government purposes.

**Intellectual Property** ‑ Intangible property, including ideas,
processes, and discoveries that is protected by a patent, trademark,
copyright, trade secret, or other means. The rights to this property can
be bought and sold, leased or rented, or otherwise transferred between
parties in much the same way that rights to real property or other
personal property can be transferred.

**Invention** ‑ A discovery, new device or process developed from study,
research and/or experimentation that is or may be patentable under Title
17 of the United States Code (U.S.C.).

**License** ‑ Generally, a legal right, less than a title, which
entitles the possessor to use, make or sell the particular subject
matter under consideration. For technology transfer purposes, a license
usually covers a patented invention, a trademarked/service marked
product or service, a copyrighted work, protected data, or a trade
secret. Licenses can be negotiated on a geographical or field‑of‑use
(specific use area) basis.

**Made** - In relation to any invention or copyright, it means the
conception or first actual reduction to practice.

**Mask Work** ‑ A series of related fixed or encoded images, such as in
semiconductor chips, having or representing the predetermined,
three-dimensional pattern of metallic insulating or semiconductor
material; and in which the relation of the images to one another is such
that each image has the pattern of the surface of one form of the
semiconductor chip product. Source: 17 U.S. Code 901 (a) (2)

**Nonprofit organization** ‑ Universities and other institutions of
higher education or an organization of the type described in section
501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)) and
exempt from taxation under section 501(a) of the Internal Revenue Code
(26 U.S.C. 501(a)) or any nonprofit scientific or education organization
qualified under a State nonprofit organization statue.

**Oral Disclosure** - See the following memorandum.

**ORTA** ‑ The Office of Research and Technology Applications. The
Stevenson-Wydler Technology Innovation Act provided for the creation of
this office within major Federal laboratories. It is basically a
technology transfer office.

**Partners** ‑ The party(s) working with a Federal laboratory in a
partnership or Cooperative Research and Development Agreement (CRADA).
Also referred to as "collaborators."

**Patent** ‑ A grant from the Federal Government to an inventor wherein,
in exchange for the inventor providing an enabling disclosure of the
invention and complying with other legal requirements, the Government
awards the inventor with the right to exclude others from making, using,
or selling the claimed invention, in the United States, for 20 years
from the date of patent application. In foreign countries, the term of
the patent may vary somewhat.

**Practical application** ‑ To manufacture (in the case of a composition
or product), to practice (in the case of a process or method), or to
operate (in the case of a machine or system); and in each case, under
such conditions as to establish that the invention is being utilized and
that its benefits are available to the public on reasonable terms to the
extent permitted by law or government regulations.

**Proprietary Information** ‑ Within a CRADA, information owned by the
partner prior to the formation of the CRADA and so designated.
Proprietary information embodies trade secrets developed at private
expense and commercial or financial information that is privileged or
confidential under the Freedom of Information Act. For such information
to be afforded legal protection, it should be recorded and marked as
proprietary when it is first introduced for use in a CRADA activity.

**Protected Data** ‑ For technology transfer purposes, protected data
are commercially-valuable data that are withheld from dissemination to
the public. These are data generated and developed under a CRADA.

**Rights** ‑ The legal authority that can be given by the DOI to its
partners or inventors to use, make, sell, or have made specific
intellectual property. Rights may take the form of patent licenses or
assignments, or options, in any invention made by a Federal employee.
However, the DOI always retains a nonexclusive, nontransferable,
irrevocable, paid‑up license to practice the invention throughout the
world, by, or on behalf of, the Government, and such other rights as the
DOI deems appropriate.

**Royalties** ‑ Income generated from the licensing of Federal
intellectual property. Royalty income from inventions will be payable to
the inventor(s), if they were employed by the agency at the time of the
invention. The payments will continue for as long as the DOI continues
to receive such income, regardless of the eventual employment status of
the employee. If an invention is licensed for commercial use, and
royalty or other income results, the inventor receives the first \$2,000
in royalties plus a total of 15 percent of the income. Payments from
royalties to an employee cannot exceed \$150,000 per year without
Presidential approval.

**Statement of Work (SOW)** ‑ The detailed description of the work to be
accomplished under a contractual agreement. Within a CRADA, a Statement
of Work describes in detail what each partner will do to reach the
stated objective.

**Service mark** - A legally recognized, unique expression that
identifies the source of services for commercial purposes. Service mark
registration can be obtained from the U.S. Patent and Trademark Office.

**Title** ‑ A legal right of ownership to tangible or intangible
property.

**Trade Secret** ‑ Legally withheld commercial formula, device, pattern,
process, or information that affords a business an advantage over others
who do not have the secret.

**Trademark** ‑ A legally-recognized, unique expression that identifies
the source of goods for commercial purposes. Trademark registration can
be obtained from the U.S. Patent and Trademark Office.

**Waiver** ‑ The relinquishment of a legal right to do or own something.
Often in technology transfer agreements, the Federal Government will
relinquish its rights to obtain title to inventions developed under that
agreement through a waiver to the collaborating party.

**APPENDIX B: MANUAL CHAPTERS AND OTHER DOCUMENTS**

Pointers to these supporting documents can be found at the Business
Development Intranet site at:

[http://mapnet.er.usgs.gov/partnerships.html]{.underline}

The Survey Manual chapters also can be located directly on the USGS
Intranet at:

[http://www.usgs.gov/usgs-manual/]{.underline}