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Patent Information: Technology Transfer Mechanisms

Technology Transfer Mechanisms at a Glance

Adapted from materials created by the Federal Lab Consortium (FLC), "The Hunt for Technology"

Mechanism	Description	Primary Characteristics
Collegial Interchanges... Publications... Conferences... Bank deposits...	Informal information exchanges freely made between and among colleagues	Common examples include: Reciprocal dialogue and mail exchanges, including electronic mail ("email"); Journal articles and abstracts prepared for publication in professional magazines, newspaper articles, and even interviews in the NIH Record; Oral and poster presentations at professional and technical conferences; and Unrestricted submissions to GenBank Certain deposits of biological materials and reagents in cell, gene, and reagent banks. Be sure to avoid premature disclosure of proprietary data or information that may be the subject of a patent application by consulting first with the NIMH Technology Transfer Office.
Confidential Disclosure Agreements (CDAs)	A CDA is an agreement between two or more parties to protect from disclosure information identified as "confidential."	"Confidential" information is information clearly identified as such that is neither public nor received through other legitimate means. The agreement is binding on the party receiving the information, usually for a term of 3 to 5 years.
Cooperative Research and Development Agreements (CRADAs)	A CRADA is an agreement between one or more Federal laboratories and non-Federal parties under which the Government, through its laboratories, provides personnel, facilities, or other resources (but *never funds* to the non-Federal organization(s). In turn, the non-Federal parties provide funds, personnel, services, facilities, equipment, or other resources to conduct specific research or development efforts that are consistent with the laboratory's mission.	Features include: Invention rights and other intellectual property matters are negotiated as part of the agreement. Certain sensitive or proprietary information received or developed while working under a CRADA may be protected for up to five (5) years. No funds may leave the Federal laboratory. A CRADA is not subject to the terms delineated in 31 USC §§6303-6305 terms for procurement contracts, grants, or cooperative agreements.
Patents....	A patent is a contract between the Government and an inventor whereby, in exchange for the inventor's complete disclosure of the invention, the Government gives the inventor the right to exclude others from making, using, or selling the invention. In order to patent their work, inventors need to be aware of " prior art" and "barring events." Specifically, anything that has been used in public, offered for sale or sold, or published by anyone anywhere in the world before the inventor made the invention, or more than one year before a US patent application is filed, is "prior art" for that application. It may also constitute a "barring event" because, if a year passes between one of these events and the date when a patent application is filed on the invention, the inventor is barred from patenting the invention. While the inventor's own publications made within a year prior to a US patent application do not prevent obtaining a US patent, they do prevent foreign patents from being obtained.	Principal characteristics are below: The subject matter of a patent must be an invention that is either a machine, a composition of matter, a process or manufacture (that is, an artificial, man-made thing as distinct from an unprocessed or "raw" natural object or material), or certain agricultural plant forms. Bacterial cultures, cloned cDNA, and similar material may be either compositions of matter or manufactures. The patent term is 20 years. An improved version of previous technology may be patentable, as also a new use for an existing technology. In order to be patented, an invention must be "useful" or good for some specified purpose. It must also be "novel," that is, the exact same thing must not have existed before. Lastly, even if novel, the invention must also be different enough from past technology that it is "non-obvious," that is, it must be such that an average scientific worker in the field (meaning one in most instances with a PhD degree), would not have originated the new invention working from what is already known.
Licensing from the Government to the Private Sector	Licensing is the transfer of less-than-ownership rights in intellectual property to third parties to allow them to use intellectual property.	Characteristics include: A major portion of the royalties earned on invention licensing, independent of whether the invention has or has not been patented, is returned to the laboratory. A licensing agreement may be: (1) exclusive or nonexclusive; (2) for a specific field of use; (3) for a specific geographical area; and/or (4) for US and/or foreign usage. In any case, licenses are subject to conflict-of interest considerations. Moreover, A potential licensee must present plans to commercialize the invention; and The Government obtains a nonexclusive, royalty-free worldwide license to the invention.
Licensing from the Private Sector to the Government	Licensing is the transfer of less-than-ownership rights in intellectual property to a third party, thus permitting it to use same.	Features include: Subject to payment of just compensation, the Government may utilize private inventions for Government purposes. Existing rules and instructions on Federal procurement apply.