Technology Tran

Technology Tran

Agreements Agreements

James M. Kasischk

James M. Kasischk

Supervisory Paten

Supervisory Paten

Naval Undersea W

Naval Undersea W

Division Newport Division Newport401

-832

-4230

James.Kasischke@

James.Kasischke@
History History

 Realization that Government ag

Realization that Government ag

require explicit permission of C

require explicit permission of C

transfer something of value. transfer something of value.

•All contracting authority must be 

All contracting authority must be 

•Previously relied on regulatory au

Previously relied on regulatory au

 Policy decision that general con

Policy decision that general con

should be responsible for all wo

should be responsible for all wo

•Direct funded work became harde

Direct funded work became harde

•Government owned Federal labor

Government owned Federal labor

encouraged to operate like busine

encouraged to operate like busine
Federal Fiscal Law Pri

Federal Fiscal Law Pr

 Funding must follow the approp

Funding must follow the approp

• 

• No deficiency (31 U.S.C. No deficiency (31 U.S.C. § 

§ 1341) 

spend money we don spend money we don’t have. t have.

•No augmentation (31 U.S.C. No augmentation (31 U.S.C. § 

§ 13

spend more than given by Congre

spend more than given by Congre

•Miscellaneous receipts act (31 US

Miscellaneous receipts act (31 US

All miscellaneous receipts must b

All miscellaneous receipts must b

into the Treasury within three day

into the Treasury within three day

• 

• There are serious penalties for vio

There are serious penalties for vio

laws.
 Unlike private entities, we 

Unlike private entities, we 

statutory authority (Congre

statutory authority (Congre

permission) to receive or tr

permission) to receive or tr

funds

 We need to know the speci

We need to know the speci

authority because each one 

authority because each one 

different powers and respo

different powers and respo

 We need statutory authorit

We need statutory authorit

license or transfer intellectu

license or transfer intellectu

property property

Consequences Consequences
Proper Approac

Proper Approac

 Almost all agreements need a s

Almost all agreements need a s

of work. of work.

 What are the main goals of the What are the main goals of the 

agreement? agreement?

 How is money flowing between 

How is money flowing between 

parties? parties?

 Will the parties be developing i

Will the parties be developing i

property? property?

 Should all of the intellectual pr

Should all of the intellectual pr

under the agreement? under the agreement?
Types of Agreeme

Types of Agreeme

 Funding Agreements Funding Agreements –These a

These a

contracts where the Gov contracts where the Gov’t pays 

t pays 

service or research service or research

 Work for Others Agreements Work for Others Agreements – 

– 

contracts where a non contracts where a non

-Gov’t pa

t pa

the Gov the Gov’t as a contractor. t as a contractor.

 Cooperative Research and Dev

Cooperative Research and Dev

Agreements (CRADAs) Agreements (CRADAs) –These 

These 

contracts for cooperative resea

contracts for cooperative resea

Gov’t laboratory. t laboratory.
Traditional Funding Agr

Traditional Funding Agr

 Contracts Contracts

•Competition in Contracting Act (CICA) a

Competition in Contracting Act (CICA) a

•Procurement regulations and Bayh Procurement regulations and Bayh

-Dole 

Dole 

• 

• Federal lab can Federal lab can’t receive money t receive money 

 Grants and Cooperative Agreements Grants and Cooperative Agreements

•A Cooperative Agreement isn A Cooperative Agreement isn’t a CRADA t a CRADA•Grant regulations apply Grant regulations apply• 

• Can’t be for direct Federal Government 

t be for direct Federal Government 

•Can receive funding under a Cooperativ

Can receive funding under a Cooperativ

These are the most common Gov These are the most common Gov’t agreem

t agreem

aren’t a focus of this presentation. t a focus of this presentation.
Intellectual Property is o

Intellectual Property is o

Deciding Factor Deciding Factor

 The Bayh The Bayh

-Dole Act (35 U.S

Dole Act (35 U.S

209) provides the rules for 

209) provides the rules for 

agreements. agreements.

 The Work for Others statut

The Work for Others statut

offer full coverage for inven

offer full coverage for inven

proprietary data. proprietary data.

 Only CRADAs give full prote

Only CRADAs give full prote

inventions and data. inventions and data.
Tech Data Tech Data

 All data developed by Government e

All data developed by Government e

subject to the Freedom of Informati

subject to the Freedom of Informati

unless there is an explicit exception

unless there is an explicit exception

•There are no Government trade secrets 

There are no Government trade secrets 

Exemption 4 does not apply to data crea

Exemption 4 does not apply to data crea

Government employees. 35 U.S.C. 205 

Government employees. 35 U.S.C. 205 

exemption concerning inventions.) exemption concerning inventions.)

•There are security constraints (FOIA, Ex

There are security constraints (FOIA, Ex

•Work for Others agreements have only l

Work for Others agreements have only l

from release under the Freedom of Infor

from release under the Freedom of Infor

•Cooperative Research and Development 

Cooperative Research and Development 

(CRADAs) have an explicit 5 year FOIA e

(CRADAs) have an explicit 5 year FOIA e
Inventions Inventions

 Transfer of inventions requires 

Transfer of inventions requires 

•Authority given by 35 USC 202 an

Authority given by 35 USC 202 an

Order for contracts. Order for contracts.

•Authority given by 35 USC 209 fo

Authority given by 35 USC 209 fo

licenses. licenses.

 Work for Others laws do not al

Work for Others laws do not al

transfer of inventions transfer of inventions

 No authority to negotiate licens

No authority to negotiate licens

inventions before they are inventions before they are “ma

in CRADA statute. in CRADA statute.
Basic Questions Basic Questions

 Goods or services? Goods or services? Cooperative interest? Cooperative interest? Related to procurement? Related to procurement? Is the Gov Is the Gov’t lab going to be com

t lab going to be com

with a private party? Are its se

with a private party? Are its se

unique? unique?

 How is the Gov How is the Gov’t lab being fund

t lab being fund

 Will there be any intellectual pr

Will there be any intellectual pr

created under the agreement? created under the agreement?
Different Authoriti

Different Authoriti

 Authority depends on parties, f

Authority depends on parties, f

work being performed, intellect

work being performed, intellec

property and delegation. property and delegation.

 Some authorities are used mor

Some authorities are used mor

others. Common authorities ar

others. Common authorities a

faster than unusual authorities

faster than unusual authorities

 Not every Not every Gov’t 

t agency has ev

agency has ev

authority. authority.
Cooperative Research 

Cooperative Research 

Development Agreem

Development Agreem

(CRADAs

)

 Only applies to laboratories, bu

Only applies to laboratories, bu

everyone is a laboratory under 

everyone is a laboratory under 

statute. statute. 

 Significant local authority Significant local authority

•Intent was to insure delegation Intent was to insure delegation• 

• Agency has a veto power over lab

Agency has a veto power over lab

agreements agreements

•Veto power is not commonly exer

Veto power is not commonly exer

 Effort must be part of mission Effort must be part of mission
Requirements Requirements

 Effort should be related to the 

Effort should be related to the 

mission mission

 Effort should be research and Effort should be research and 

development but no specific re

development but no specific re

 Both parties should be interest

Both parties should be interest

outcome. outcome.

 No specific non No specific non

-competition req

competition req

 Absence of these requirements 

Absence of these requirements 

ethical, fiscal or procurement p

ethical, fiscal or procurement p
Allowed Actions under a 

Allowed Actions under a 

 Can receive funds, goods, and 

Can receive funds, goods, and 

collaborator. collaborator.

 Can provide labor and allow us

Can provide labor and allow us

and facilities. and facilities.

 Cannot provide funding or tran

Cannot provide funding or tran

ownership in property. ownership in property.

 Can negotiate invention rights 

Can negotiate invention rights 

making of invention. making of invention.

 Solid data handling language in 

Solid data handling language in 

CRADA – 

– includes FOIA exemp

includes FOIA exemp
Work for Private Parties Work for Private Parties -

 Used for selling surplus re Used for selling surplus resources as 

sources as 

 Authority is 10 USC Authority is 10 USC § 

§ 2563.

 Defense working capital funded activ

Defense working capital funded acti

 Can sell articles and services that ar

Can sell articles and services that ar

commercially available. commercially available.

 Purchaser must indemnify but could 

Purchaser must indemnify but could 

damages for the Government damages for the Government’s failu

s failu

 Military mission has precedence. Military mission has precedence. Laboratory Laboratory’s delegation governs app

s delegation governs app
Work for Private Parties Work for Private Parties - 

- 

 Used primarily for selling Used primarily for selling surplus tes

surplus tes

on unique equipment on unique equipment

 Authority is 10 USC Authority is 10 USC § 

§ 2539b. 

 Defense working capital funded activ

Defense working capital funded acti

 Can sell testing services based on u

Can sell testing services based on u

 New section allows sale or loan of u

New section allows sale or loan of u

equipment and provision of services

equipment and provision of services

 Under governing regulation, purchas

Under governing regulation, purchas

absolutely indemnify absolutely indemnify labortory labortory

 Military mission has precedence. Military mission has precedence. Test results are protected from relea

Test results are protected from relea

FOIA not specifically mentioned. FOIA not specifically mentioned.

 Unique testing services have local le

Unique testing services have local le
Patent License Agree

Patent License Agree

 The Gov’tcan issue exclusi

can issue exclusi

non

-exclusive licenses. exclusive licenses.

 License must be for practic

License must be for practic

invention. invention.

 Labs are very willing to lice

Labs are very willing to lice

technologies. technologies.

 License agreements can be License agreements can be 

supported by supported by CRADAs
Other Transactions 10 US

Other Transactions 10 US

 Once was unrestricted, but constrain

Once was unrestricted, but constrain

it after abuse. it after abuse.

 Research can Research can’t duplicate existing res

t duplicate existing res

 Can receive funding and the statute 

Can receive funding and the statute 

accounts. (Activity does not need to 

accounts. (Activity does not need to 

Defense Working Capital funded act

Defense Working Capital funded act

 Must have cost matching or finding 

Must have cost matching or finding 

feasible or appropriate feasible or appropriate

”

 Has a five year FOIA exemption like 

Has a five year FOIA exemption like 

 Can’t grant invention rights. t grant invention rights. We haven We haven’t used extensively becaus

t used extensively becaus

restrictions. Easier/quicker to use a 

restrictions. Easier/quicker to use a 
Education Partnership Ag

Education Partnership Ag

 Agreement between Laboratory and Agreement between Laboratory and 

University or local school district. University or local school district.

 Authority is 10 USC Authority is 10 USC § 

§ 2194

 No statement of work. No statement of work. Can accept and give services in sup

Can accept and give services in sup

science and engineering education. science and engineering education.

 EPAswith local schools are useful fo

with local schools are useful fo

interest in science and engineering. 

interest in science and engineering. 

 EPAswith Universities for recruiting 

with Universities for recruiting 

obtaining free research. (short term

obtaining free research. (short term

 Once had good provisions for equipm

Once had good provisions for equipm

donation, but now can use 15 USC donation, but now can use 15 USC §

which allows. which allows.
Other Authoritie

Other Authoritie

 Range Use Agreements Range Use Agreements Specific Statute Specific Statute Permissions of the facility Permissions of the facility 

commander commander

•License to use base resource 

License to use base resource 

pier or campsite pier or campsite

• 

• Agreements apportion poten

Agreements apportion poten

to licensee to licensee

•Non

-statutory, non statutory, non

-funded
No Formal Agreement 

No Formal Agreement 

 Two governmental parties when fun

Two governmental parties when fun

being transferred. (Economy act or

being transferred. (Economy act or

used to transfer funds.) used to transfer funds.)

 Private party is working under contr

Private party is working under contr

same party that the laboratory is wo

same party that the laboratory is wo

(Resources are being used for the sa

(Resources are being used for the sa

purpose.) purpose.)

 Nothing of legal consequence being 

Nothing of legal consequence being 

•Both parties are following normal course 

Both parties are following normal course 

•Both understand there is no legally bind

Both understand there is no legally bind

•Better and safer to use a CRADA Better and safer to use a CRADA
Questions? Questions?

James M. James M. Ka

Ka

Supervisory 

Supervisory 

Naval Under

Naval Under

Center, Divi

Center, Divi

401

-832

-42

James.Kasis

James.Kasis