Why does DOE retain a government use license and march-in rights?
Retention of these rights in agreements involving federally-funded research is required by law. The Government license is viewed as recognition of the Government (taxpayer) investment that created the facility and the research from which the technology arises. March-in rights are retained by the Government to assure that technology arising from laboratories is made available to the public. Should a laboratory licensee or CRADA partner abandon use of dissemination of the technology yet retain a license to the technology, the government has the right to require the partner to license to a third party who is interested in commercializing the technology at a reasonable royalty rate.
How can companies protect their confidential and proprietary information while working with the DOE national laboratories?
CRADA, SPP, and TSA arrangements can be contracted to contain provisions addressing protection of a partner's proprietary data. In addition, Nondisclosure Agreements (NDAs) can easily be put into place to protect a partner's proprietary information prior to the initiation of any work or even at the discussion stage, if necessary. Data generated in the performance of a CRADA can be protected from public release by the laboratory or the Government for five years. It is important that companies mark all of the information that they provide to the laboratories' staff in accordance with the agreements between the parties for protection of data. Data generated under a SPP can be kept proprietary by the Sponsor indefinitely in most cases.
How can the intellectual property interests of multiple collaborators be accommodated?
There are examples of successful multi-party collaborations that accommodated the interests of various organizations, including multiple DOE laboratories. Clear communications and up-front negotiations of intellectual property rights can help save time. For example, in the alternative feedstocks for chemicals program, five laboratories set up agreements for sharing intellectual property among themselves and with a company. The intellectual property developed by on laboratory was used by other laboratories, and the company benefited from inventions at several laboratories.