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February 27, 2012 | Tom Ballard

ORNL one of eight labs offering streamlined tech transfer agreement

The U. S. Department of Energy (DOE) issued four news releases last week, one with the heading “Eight National Labs Offer Streamlined Partnership Agreements to Help Industry Bring New Technologies to Market.”

For many individuals, this could seem like an inside baseball announcement. Because I had an almost front row seat to observe a more than year-long process to bring this agreement to reality, I can assure readers that it is anything but a routine announcement. It is, in fact, something akin to a game changer.

Prior to retiring last December from UT-Battelle LLC, managing contractor for Oak Ridge National Laboratory (ORNL), I had the privilege of serving as Director of Partnerships where one of my areas of responsibility was the Technology Transfer Office (TT) led by Mike Paulus. This is the organization that licenses ORNL’s inventions, such as last week’s announcement that Agile Technologies of Knoxville was commercializing ORNL’s remote sensing technology. TT is also the organization that is responsible for executing sponsored research agreements when commercial entities need to access ORNL’s researchers and their expertise.

Energy Secretary Steven Chu, who was a national lab director before taking the DOE position, has been a strong advocate pushing for policies and programs that would allow the nation to take better advantage of the investments already made in the federal laboratory system. He brought an experienced technology transfer professional into his office to coordinate and enhance DOE activities related to tech transfer. He conceived “America’s Next Top Energy Innovator” Challenge, which gives start-up companies access to DOE’s thousands of unlicensed patents at a greatly reduced cost and paperwork, and has been an integral player in the Administration’s “Start-up America” initiative.

Last week’s announcement of the pilot “Agreements for Commercializing Technology” (ACT) program is the latest reflection of the Secretary’s commitment. The new mechanism was developed by a small team of representatives from several labs, including ORNL, and DOE staff who worked intensely for about a year. As ORNL’s member of the team, Paulus brought a unique perspective to the discussions. He is a former ORNL researcher who left the lab to found a start-up company with a colleague and later worked for an international corporation before returning to ORNL in his current position. The fact that he could look at the agreement negotiation and execution process through a diverse set of lenses had to be invaluable to the team.

From this region’s perspective, ACT is another tool that will be available to ORNL to engage with companies on more commercially friendly terms. More important, however, is the fact that it further underscores DOE’s commitment to “harness America’s unique advantages in innovation to create jobs and accelerate the development of new clean energy technologies.”

In the official DOE announcement, Secretary Chu said that ACT “will cut red tape for businesses and start-ups interested in working with our nation’s crown jewels of innovation, the national laboratories. This initiative will also strengthen new domestic industries by helping to bring innovative, job-creating technologies to the market faster.”

The DOE news release said that ACT is designed “to remove barriers that sometimes got in the way of commercializing technology under a CRADA (Cooperative Research and Development Agreement) or WFO (Work For Others) agreement.” ACT will be a third option that DOE said has several unique features that should address industry concerns . The following bullets are pulled directly from the DOE news release:

  • There will be more flexibility in negotiating over the intellectual property rights for technologies created at the laboratory. While the labs generally have had limited flexibility on IP terms under CRADAs and WFO arrangements, an ACT will allow both parties to develop a specialized arrangement that will facilitate moving the technology into the marketplace as quickly as possible.
  • More flexible terms are also available on other issues ranging from payment arrangements to project structures to indemnification. The goal is to develop terms that are better aligned with industry practice.
  • Whereas WFO arrangements and CRADAs tend to be tailored for two-party agreements between one company and a lab, an ACT will make it easier to develop a multi-party research and development partnership. Groups of companies, universities and/or other entities may come together with a laboratory to address complex technological challenges that are of mutual interest.

In addition to ORNL, labs participating in the pilot are Ames, Brookhaven, Idaho, Lawrence Livermore, National Renewable Energy, Pacific Northwest and Savannah River.

An FAQ on ACT is available at The DOE news release is available at


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