Unleashing American Innovation 

Next Steps

NIST VCAT

June 4, 2019
NIST and Tech Transfer

• Policy coordination, technology transfer regulation

• Lead for Interagency Workgroup for Technology 

Transfer (11 agencies) 

• Interagency Workgroup for Bayh-Dole

• Annual reports for the President, the Congress, and 

OMB on technology transfer across federal agencies

• Lead in Lab-to-Market NSTC Subcommittee 

• Host Agency for the Federal Laboratory Consortium 

for Technology Transfer (FLC) 

NIST has a unique role in promoting and reporting on the overall 

strength of federal technology transfer efforts

Unleashing American Innovation Symposium, April 19, 2018

Credit: Peter Cutts

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President’s Management Agenda

Walter Copan

Under Secretary of Commerce for Standards and Technology 

Director, National Institute of Standards and Technology

Michael Kratsios

Deputy Assistant to the President for Technology Policy

White House Office of Science and Technology Policy

Interagency Partnering & Coordination

Participating Agencies

Interagency I-Corps 

Community of Practice

Interagency Working Group for

Technology Transfer

Interagency Working Group for 

Bayh-Dole

Federal Laboratory Consortium for

Technology Transfer

Small Business Innovation Research (SBIR) 

Program Managers Working Group

National Science and Technology Council Lab-toMarket Subcommittee

CAP Goal Leads

Lab-to-Market Cross Agency Priority Goal: 

Improve Transfer of Federally-Funded Technologies from Lab-to-Market

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Lab-to-Market CAP Goal Strategies

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Return on Investment (ROI) Initiative

Open, inclusive, and collaborative outreach to Federal R&D, 

IP, and technology transfer stakeholders

• Extensive inputs from 100s of experts and organizations 

representing 1000s of companies, universities, and institutions

• Four main Public Forums totaled 341 registered attendees 

• 104 written comments in response to Request for Information; 

plus feedback on Draft Green Paper released December 2018

• Other information sources: 

 Unleashing American Innovation Symposium (D.C. – ROI Launch April 19, 2018) 

 Multiple stakeholder engagement sessions nationwide

 Extensive review of prior reports and studies 5

To advance the President’s Management Agenda, the U.S. seeks to enable 

even greater return on the Federal government’s $150 B/year R&D investment
ROI Final Green Paper

• Green Paper published April 24, 2019 as NIST Special Publication 1234

• Based on extensive stakeholder inputs via open, inclusive process—

and closely coordinated with interagency working groups 

• 15 key findings to inform actions that will help remove unwarranted 

impediments to innovation at the public private sector interface, and 

streamline and accelerate transfer of technology from Lab-to-Market

Next Steps:

1. Develop and submit draft Legislative and Regulatory Reform 

Packages for interagency review and clearance.

2. Share stakeholder inputs outside NIST purview with relevant 

agencies for action. 

3. Develop interagency Lab-to-Market action and deployment plan.

4. Conduct further analysis on issues where more input is necessary.

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ROI Findings Address CAP Goal Strategies

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• Scope of Government Use License and circumstances under which March-In Rights may be appropriately 

exercised are not well defined

• The Preference for U.S. Manufacturing process for requesting waivers is confusing to stakeholders

• “Government works” exception to Copyright Protection for Software Products of Federal R&D at GOGO

laboratories constrains commercialization

Regulatory & 

Administrative 

Barriers

• Improved clarity and use of best practices would streamline Partnership Agreements with Federal Labs 

• Private sector collaborations and investment for translational R&D/technology maturation could be 

increased via Expanded Partnership Agreements (i.e., ACT, OTA, Foundations, Outleasing)

• Recipients of Federal funding could benefit from a Limited Use of R&D Awards to enable IP protection

Private Sector 

Engagement

• Expanding Technology Entrepreneurship Programs at Federal R&D agencies government-wide will help 

build a more entrepreneurial R&D workforce (e.g., leverage best practices)

• Current requirements for Managing Conflicts of Interest pose challenges to build a more entrepreneurial 

R&D workforce (note: finding applies to both extramural and intramural R&D programs)

Entrepreneurial 

R&D Workforce

• A secure, modern platform is not available for Reporting Data on IP resulting from Federal R&D

• A federated data portal is not available to easily access, use, and analyze information on Federally Funded 

Technologies, Knowledge, and Capabilities that are available to the public

Innovative Tools 

& Services

• Current metrics to capture, assess, and improve broad Technology Transfer Outcomes & Impacts of federally 

funded R&D and underpinning operational processes are inadequate

Benchmarking & 

Metrics
March-In Rights

©Robert Rathe

• Congress noted that the goal of the Bayh-Dole Act was to use IP to help make 

research results ultimately available to consumers in the marketplace – the socalled “practical application” of inventions

• Authors of the Bayh-Dole Act, Senators Bayh and Dole made have stated that 

government march-in rights are not to be used as a price control mechanism

• Some parties would like to change this situation so that march in rights will be 

more broadly interpreted, for example, to set the market price of drugs

• The Administration’s blueprint to lower drug prices does not envision use of 

march in rights as a price control mechanism 

• Bayh-Dole Act implementing regulations include a rigorous process for agencies 

to exercise march-in rights in accordance with conditions specified in statute

• Transitioning research discoveries to actual products requires significant private 

investment, particularly in new drug development; investors need certainty in IP 

rights and confidence in the opportunity to create value from their investment

• The Federal Government has never exercised march-in rights since 1980, 

spanning now seven Administrations; Clarification of the statutory terms and 

conditions for exercising march-in rights is within the scope of the Bayh-Dole Act 

implementing regulations

According to stakeholders, 

the circumstances under 

which the government may 

exercise march-in rights are 

not well-defined. 

Market uncertainty is created 

by the lack of a clear 

definition of the use of 

march-in rights that is 

consistent with statute, rather 

than as a regulatory 

mechanism for the Federal 

Government to control the 

market price of goods and 

services. 

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Copyright of Government Software

©Robert Rathe

• The digital economy accounted for 6.9 percent of the U.S. GDP or $1.35 trillion in 

2019 and showed a 9.9 percent annual growth rate from 1998 to 2017, compared 

to 2.3 percent growth in the overall economy.

• The digital economy is significantly larger since this estimate does not include 

contributions from the digital portion of goods and services with both digital and 

non-digital components, e.g., advanced manufacturing and IoT

• IP protection for software components of goods and services derived from 

Federal R&D via copyright is critical to U.S. economic competitiveness and 

national security due to intense global competition in software-based industries 

such as AI/ML, next-gen communications (5G), and advanced manufacturing

• Universities and GOCO Laboratories are already able to assert copyright for any 

works, including computer programs derived from Federal R&D

• Copyright protection is not available to GOGO Laboratories for computer 

programs derived from R&D; Not all computer programs that represent products 

of R&D at GOGO Laboratories would be appropriate for copyright

• A narrowly tailored change allowing GOGOs to secure copyright for computer 

programs derived from R&D could help ensure U.S. companies and taxpayers 

reap the economic benefits from the Federal R&D investment

According to stakeholders, 

the “Government Works” 

exception to copyright 

protection for software 

products of R&D at 

Government-Owned, 

Government-Operated 

Laboratories constrains 

commercialization.

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Charge to Tech Transfer Subcommittee

Review NIST’s current technology transfer policies and practices, 

and provide their individual technical assessments on the principles 

that should drive these policies and practices for effectively 

engaging the business community and communicating with 

stakeholders;

Assess NIST’s performance in the development and dissemination 

of work products and knowledge, and recommend 

improvements. Specific areas that the visiting technical experts 

should address include the development and use of intellectual 

property and collaborative research.
Additional Inputs

The members of the Subcommittee and its contributing experts are requested to provide 

guidance to NIST’s proposed approach by comparing and contrasting the strategies your 

organization would utilize or recommend for NIST consideration in the development, 

protection, and commercialization of intellectual properties. Specifically, we are 

interested in: 

• Intellectual Property (IP) Strategy 

• Marketing of IP for License and Further Commercial Development

• Portfolio Management

Furthermore, NIST looks forward to your critical assessment and recommendations 

about NIST’s technology transfer approaches and organization, with the goal that NIST 

must be positioned to repeatably achieve positive, measurable impacts for U.S. 

innovation. 
Thank you!

www.NIST.gov @usnistgov