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Subcommittee on Technology Transfer

NIST Visiting Committee on Advanced Technology (VCAT)

The Return on Investment (ROI) Initiative for Unleashing American Innovation is a bold move by NIST 

and the Department of Commerce to begin a national conversation about how to maximize the benefits 

of Federal investments in science and technology. NIST’s goal is to remove barriers, reduce friction, and 

create incentives to innovation. Innovation expands the U.S. entrepreneurial ecosystem and attracts

private sector investment in new products, businesses, and industries. These benefits create value for 

Americans and improve the human condition for people all over the world. 

The VCAT Subcommittee on Technology Transfer commends NIST on a very well organized, clear draft

Green Paper based on the feedback from the U.S. stakeholder community. It identifies both short-term 

and long-term goals, and implementation strategies that would enable these goals to be met. The 

Green Paper is an important contribution to NIST’s efforts to develop a roadmap for increasing the 

outcomes from the Federal government’s investment in research and development.

General Comments:

The Subcommittee believes that the overriding–and perhaps most difficult–goal of the ROI initiative is to 

align incentives so that all stakeholders have a strong interest in maximizing the transfer of Federally 

funded science and technology to the private sector. 

• Companies see the potential value of accessing the significant intellectual and physical assets 

that Federal laboratories and universities possess in order to be able to develop new and 

improved products. Regrettably, companies–from small to large–often find it challenging to

engage Federal laboratories and universities in technology transfer. The proposed changes 

detailed in the Green Paper should make it easier for the companies to obtain the benefits of 

Federally funded research. 

• Universities believe that formal technology transfer is part of their mission to transfer the 

results of their research to the public for society’s benefit. Universities recognize that effectively 

licensing inventions and building an entrepreneurial ecosystem can help regional economic 

development and provide jobs for graduates. Royalty revenues are returned to the inventors,

and to universities to fund further research and education. Clarification of Bayh-Dole provisions 

will make it easier for universities to engage with companies. 

• The National Competitiveness Technology Transfer Act (NCTTA) of 1989 explicitly establishes 

technology transfer as a mission of Federal laboratories. Execution of that mission needs to be 

an important part of the laboratories’ performance evaluation in order to maximize the transfer 

of Federal laboratory science and technology to companies. The desired essential culture 

change is to create a more entrepreneurial, flexible environment that supports and encourages 

effective technology transfer. New flexible partnering models are critical for increased private

sector engagement with the Federal laboratories. These models should be crafted after there is 

clear articulation and consensus on what the intended outcomes from these new approaches 

should be and should be consistently adopted across the Federal laboratory system. 
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Equally important, Federal laboratories need to create a more entrepreneurial environment. In 

recent years, universities have recognized that to do technology transfer well, they must 

embrace and encourage entrepreneurial activity at all levels of the organization. In tandem, 

they have learned how to manage both individual and institutional conflicts of interest. Federal 

laboratories should do the same: develop Federal employee educational entrepreneurship 

programs, encourage entrepreneurial activity and manage conflicts of interest. Most Federally 

funded technologies are very early stage and inventor participation in transferring the 

technology to the private sector is critical to successful technology development. If the Federal

Laboratories can develop a flexible mechanism to enable inventors to be actively involved in 

technology transfer, there would be a much higher return on investment of our Federal research 

dollars. 

Priorities:

The Subcommittee felt that the following proposed actions should be the highest priority to address:

1. Strategy 1. Identify regulatory impediments and administrative improvements in Federal 

technology transfer policies 

Intended Action 6 – Strengthen Technology Transfer at Federal Laboratories.

a. The Secretary of Commerce must have authority to issue regulations and implement 

policies government-wide, under Stevenson-Wydler. 

b. The Secretary of Commerce needs to confirm the mission requirement for all Federal 

entities engaged in research and development to contribute to US innovation. 

The Subcommittee unanimously believes this Intended Action is the most important priority. The 

Federal R&D agencies must truly believe that effective technology transfer is a priority for the country 

and make strategic cultural changes to show their commitment. The ability of these entities to make 

this cultural change will be the driver of success. Prior, good faith efforts to fundamentally change how 

Federal laboratories engage with outside groups have failed due to the lack of support and flawed 

approaches to garner such needed support. Failure to achieve cultural change and buy-in will 

undermine or, at the very least, dilute the potential impact of the other Intended Actions.

2. Strategy 3. Build a more entrepreneurial R&D workforce. 

a. Intended Action 11 – Technology Entrepreneurship Programs. 

i. Establish government-wide technology entrepreneurship programs at all 

Federal R&D agencies. 

The Subcommittee believes that enthusiastic and genuine support by Federal laboratory 

leadership is critical to the success of changing the culture of the Federal laboratories to be 

more entrepreneurial. We recognize that a program like iCorps, for example, requires a 

significant time commitment of researchers, and therefore recommend that a system-wide

iCorps-lite program be developed and implemented. We encourage synergistic partnerships 

between the Federal laboratories and academia in leveraging the entrepreneurial programs 

already mature at some universities.
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b. Intended Action 12 - Managing Conflicts of Interest.

i. Authorize scientists and engineers at Federal Laboratories to engage in 

entrepreneurial activities that support technology transfer and 

commercialization. Implement harmonized and consistent requirements for 

managing conflicts of interest. 

The Subcommittee believes the country will see a much better return on their Federal research 

dollars if Federal laboratory researchers can help transfer their technology to industry. They 

should be able to receive a financial benefit for their inventive contributions. The 

Subcommittee also recognizes that while it may seem easier to prohibit rather than manage

conflicts of interest (as is currently the case), prohibition merely dissuades entrepreneurial 

initiative and leads to inefficient or ineffective technology transfer. The Federal government 

should therefore develop balanced conflict of interest requirements and systems to manage 

conflicts in a transparent way, and all agencies must agree to the same requirements and 

systems. Many Universities have developed robust conflict of interest management systems 

that can be used as models to develop Federal laboratory conflict of interest

requirements/systems. Actions 11 and 12 go hand-in-hand and must be addressed at the same 

time. 

3. Strategy 2. Increase Engagement with Private Sector Technology Development Experts and 

Investors. 

a. Intended Action 8 -- Streamline Partnership Mechanisms. 

i. Implement streamlined, transparent, and balanced partnership agreements. 

ii. Develop cross-agency consistent and balanced indemnification terms. 

The Subcommittee believes that the best way to increase engagement with the private sector is 

for the Federal laboratories to be able to move quickly with minimal transaction delays. While 

large firms have a bevy of lawyers, small firms do not, and they typically cannot afford to spend 

the time or money to negotiate with the Federal laboratories. The private sector is very clear 

that transactional delays hinder potential partnerships. The Federal laboratories need to have 

greater creativity and flexibility at the local level to tailor specific licensing terms to a particular 

situation. The Subcommittee recognizes that each Agency engages with the private sector 

differently; this makes it very difficult for private sector partners because there is no 

government-wide consistency. Harmonized, pre-determined indemnification terms, clear and 

consistent terms for company trade secret protection, etc. for all Federal laboratories will help 

decrease transaction time. 

b. Intended Action 9 -- New/Expanded Partnership Mechanisms. 

As mentioned above, industry partners will greatly appreciate any/all mechanisms that will 

speed up and simplify the establishment of partnership agreements. We encourage all 

interested parties to meet and discuss desired outcomes for any new partnering agreements,

and then seek to develop agreements that are consistent with these motivations. Too often, 

one party creates agreements without the other side’s input and this unnecessarily delays 

collaboration opportunities.
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c. Intended Action 10 -- Technology Maturation Funding. 

The biggest challenge for university and Federal laboratory technology transfer is that many 

technologies are considered to be “too early stage” for companies to take on. The ability of 

Federal laboratories to locally deploy flexible government funding to accelerate technology 

maturation will increase technology transfer–and the return on investment--to the private 

sector. Many universities are establishing such funds and the Federal laboratories should follow 

suit. 

Noteworthy Intended Actions:

The Subcommittee supports:

• Intended Action 1 -- Government Use license

• Intended Action 2 -- March-In Rights

• Intended Action 13-15 – Reporting Systems. With respect to Intended Action 15, we encourage 

NIST to work with AUTM to coordinate and expand upon AUTM’s ongoing efforts to establish 

metrics and benchmarks. 

Concerns:

Intended Action 3 – Preference for U.S. Manufacturing. Expansion of the preference for U.S. 

manufacturing to nonexclusive licenses is of concern to the Subcommittee. In general, we are skeptical 

that this will increase U.S. competitiveness. We understand, and are supportive of, encouraging

manufacturing in the U.S. However, the additional requirement of substantial U.S. manufacture to 

nonexclusive licenses will discourage nonexclusive licensing of widely used, ubiquitous technologies by 

multinational or non-U.S. companies. We want to encourage such companies to recognize university 

and Federally owned patents and to take nonexclusive licenses--and pay royalties to the U.S. entity--to 

patents as appropriate. In many cases, broad, worldwide dissemination of technology will be in the 

best interest of America and will provide economic growth and robust competitiveness. Some 

universities are already finding companies choosing to license competing, non-government funded 

technologies to avoid the U.S. manufacture requirements. If these requirements are extended to 

nonexclusive licenses, university technology transfer may be detrimentally impacted. 

The Subcommittee feels that Intended Action 4 – Software Copyright needs to be clarified as to 

whether or not this is intended for the Federal laboratories only or also includes universities. Most 

universities have copyright policies that allow for copyright protection, notwithstanding Bayh-Dole. This 

Action may be more useful to the Federal laboratories to enable them to license copyrighted software. 

Additionally, today, Government Owned Contractor Operated (GOCO) laboratories are able to assert 

copyright and license software with the approval of the Federal funding agency. To achieve maximum 

impact from Federally funded software, we recommended that the GOCO laboratories be authorized to 

assert copyright and license software without case-by-case agency approval under a process similar to 

that for electing title to patentable inventions. 

The Subcommittee believes that Intended Action 8 – Streamline Partnership Mechanisms should be 

applied to the Federal laboratories only; we do not see a need to modify Bayh-Dole. The Subcommittee 
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further believes that the Federal laboratories should retain local control of negotiating financial terms 

for license agreements to maximize flexibility and responsiveness to partner needs. 

Additional comments:

Several of the private sector Subcommittee members feel that it is difficult to easily identify the 

capabilities and assets available at the Federal laboratories. While the Federal Laboratory Consortium

(FLC) provides a mechanism for publicizing Federal laboratory technologies, the private sector often 

does not have the time to search technologies on the website. One suggestion was to have a 

“concierge,” or explore other ways to expand and make it easier for companies to understand what the 

laboratories have to offer. 

We note Federal laboratories are very different from universities and to compare technology transfer 

metrics (especially royalties) between the two sectors may not be reasonable. 

We encourage universities and Federal laboratories to continue to develop exclusive and nonexclusive 

licensing programs in the public interest, always with the goal of increasing the probability of 

commercialization by the private sector. 

The Subcommittee appreciates the opportunity to comment on the draft Green Paper. We suggest 

communicating real results from the proposed actions to industry, universities, and the Federal 

laboratories through workshops and progress reports so that the public knows that the final Intended 

Actions are being taken, and not just sitting dormant as a report. We look forward to hearing about 

NIST’s success in bringing about a greater Return on Investment of our Federal research dollars. 

Respectfully submitted,

The Subcommittee on Technology Transfer

NIST Visiting Committee on Advanced Technology
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VCAT Subcommittee Members:

Katharine Ku, Chair

David Vasko

Waguih Ishak

Gail Wasserman

Vinton Cerf

Subject Matter Experts:

Leslie Millar-Nicholson

Nancy Kamei

Mike Paulus

Tony Boccanfuso

Terri Fiez

Laurie Locascio

Sethuraman “Panch” Panchanathan