Since 1980, Congress has enacted a series of laws to promote technology transfer and to provide technology transfer mechanisms and incentives. The intent of these laws and related Executive Orders is to encourage the pooling of resources when developing commercial technologies. The bidirectional sharing between federal laboratories and private industry includes not only technologies, but personnel, facilities, methods, expertise, and technical information in general.
Highlights of major technology transfer legislation include:
Stevenson-Wydler Technology Innovation Act of 1980 (P.L. 96-480)
The Stevenson-Wydler Act of 1980 is the first of a continuing series of laws to define and promote technology transfer. It made it easier for federal laboratories to transfer technology to nonfederal parties and provided outside organizations with a means to access federal laboratory developments.
The primary focus of the Stevenson-Wydler Act concerned the dissemination of information from the federal government and getting federal laboratories more involved in the technology transfer process. The law requires laboratories to take an active role in technical cooperation and to set apart a percentage of the laboratory budget specifically for technology transfer activities. The law also established an Office of Research and Technology Applications (ORTA) in each laboratory to coordinate and promote technology transfer.
Bayh-Dole Act of 1980 (P.L. 96-517)
The Bayh-Dole Act of 1980, together with P.L. 98-620, established more boundaries regarding patents and licenses for federally funded research and development. Small businesses, universities, and not-for-profit organizations were allowed to obtain titles to inventions developed with federal funds. Government owned and government operated (GOGO) laboratories were permitted to grant exclusive patent licenses to commercial organizations.
Federal Technology Transfer Act of 1986 (P.L. 99-502)
The Federal Technology Transfer Act of 1986 was the second major piece of legislation to focus directly on technology transfer. All federal laboratory scientists and engineers are required to consider technology transfer an individual responsibility, and technology transfer activities are to be considered in employee performance evaluations.
This 1986 law also established a charter and funding mechanism for the previously existing Federal Laboratory Consortium for Technology Transfer (FLC). In addition, the law enabled government owned, government operated (GOGO) laboratories to enter into Cooperative Research and Development Agreements (CRADAs) and to negotiate licensing arrangements for patented inventions made at the laboratories. It also required that government-employed inventors share in royalties from patent licenses. Further, the law provided for the exchange of personnel, services, and equipment among the laboratories and nonfederal partners.
Other specific requirements, incentives and authorities were added, including the ability of GOGO laboratories to grant or waive rights to laboratory inventions and intellectual property, and permission for current and former federal employees to participate in commercial development, to the extent that there is no conflict of interest.
Executive Order 12591 (1987)
Executive Order 12591, Facilitating Access to Science and Technology (1987), was written to ensure that federal laboratories and agencies assist universities and the private sector by transferring technical knowledge. The order required agency and laboratory heads to identify and encourage individuals who would act as conduits of information among federal laboratories, universities, and the private sector. It also underscored the government’s commitment to technology transfer and urged GOGOs to enter into cooperative agreements to the limits permitted by law.
The order also promoted commercialization of federally funded inventions by requiring that, to the extent permitted by law, laboratories grant to contractors the title to patents developed in whole or in part with federal funds, as long as the government is given a royalty-free license for use.
Omnibus Trade and Competitiveness Act of 1988 (P.L. 100-418)
The Omnibus Trade and Competitiveness Act of 1988 emphasized the need for public/private cooperation in realizing the benefits of R&D, established centers for transferring manufacturing technology, established Industrial Extension Services and an information clearinghouse on state and local technology programs, and extended royalty payment requirements to non-government employees of federal laboratories. It also changed the name of the National Bureau of Standards to the National Institute of Standards and Technology (NIST) and broadened its technology transfer role, including making NIST the FLC’s host agency.
National Technology Transfer and Advancement Act of 1995
(P.L. 104-113)
This law amended the Stevenson-Wydler Act to make CRADAs more attractive to both federal laboratories and scientists and to private industry. The law provides assurances to U.S. companies that they will be granted sufficient intellectual property rights to justify prompt commercialization of inventions arising from a CRADA with a federal laboratory, and gives the collaborating party in a CRADA the right to choose an exclusive or nonexclusive license for a pre-negotiated field of use for an invention resulting from joint research under a CRADA. The CRADA partner may also retain title to an invention made solely by its employees in exchange for granting the government a worldwide license to use the invention. Financial rewards for federal scientists who develop marketable technology were revised—increasing the annual limit of payment of royalties to laboratories from $100,000 per person to $150,000.
In addition, the Act permanently provided the FLC with funding from the agencies.
Technology Transfer Commercialization Act of 2000 (P.L. 106-404)
This Act recognizes the success of CRADAs for federal technology transfer and broadens the CRADA licensing authority to include preexisting government inventions to make CRADAs more attractive to private industry and increase the transfer of federal technology. The Act permits federal laboratories to grant a license for a federally owned invention that was created prior to the signing of a CRADA. In addition, the Act requires an agency to provide a 15-day public notice before granting an exclusive or partially exclusive license, and requires licensees to provide a plan for development and/or marketing of the invention and to make a commitment to achieve a practical application of the invention within a reasonable period of time; however, the Act exempts from these requirements the licensing of any inventions made under a CRADA.
America Invents Act (P.L. 112-29)
This law made major changes to the United States patent system. The most prominent change was changing the patent system from a first to invent system to a hybrid first inventor to file system. The inventor with the earliest filed patent application is entitled to the patent, not the earliest inventor. This harmonized the U.S. patent system with much of the rest of the world with the goal of making it more efficient, predictable, and easier for entrepreneurs to simultaneously market products worldwide. The law also allowed filing of patent applications by the owners of interests in the invention rather than exclusively by the inventor. This simplified processing of inventions when inventors are obligated to assign their inventions to their employer. The law also established administrative procedures for challenging patents in order to improve patent quality.
Excerpted from the FLC Green Book, 6th Edition