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THE
GREEN BOOK -Federal
Technology Transfer Legislation
and Policy
THE
GREEN BOOK
Federal Technology Transfer
Legislation and Policy
INTRODUCTION TO TECHNOLOGY
TRANSFER LEGISLATION AND POLICY
Over the past several decades,
presidents and Congress have
worked together to establish a
policy framework that enables
the federal government to
transfer its technology to the
nonfederal sector, which
includes industry, state and
local governments, and academic
institutions. Through this
technology transfer process,
federal laboratories share the
benefits of the national
investment in research and
development (R&D) with all
segments of society.
The Federal Laboratory
Consortium for Technology
Transfer (FLC) has published the
Federal Technology Transfer
Legislation and Policy (“The
Green Book”), which provides the
principal statutory and
presidential executive order
policies that constitute the
framework of the federal
technology transfer program. It
is intended to assist policy
makers and technology transfer
practitioners in the government
by serving as a legal reference
resource. At the same time, it
is intended to help those
outside government acquire a
fundamental understanding of the
legal framework within which
technology transfer works.
The FLC published its first
consolidated guide to technology
transfer legislation in 1991. A
second edition was issued in
1994, focusing on the
legislation codified in U.S.
Code (USC) Title 15, Chapter 63,
“Technology Innovation.” The
referenced third edition below
updated and significantly
expanded the scope of the guide.
The Green Book now includes
comprehensive technology
transfer legislation as amended
to date, including the
Technology Commercialization Act
of 2000. The guide also included
the most recent legislation
regarding patents, copyrights,
and other forms of intellectual
property; legislation applicable
to specific agencies; and
Executive Order 12591
(“Facilitating Access to Science
and Technology”) at the time of
printing.
In addition, “Technology
Innovation Legislation
Highlights,” which summarizes
technology transfer legislation
and executive orders since the
Stevenson-Wydler Technology
Innovation Act of 1980, has been
updated to reflect the latest
legislative and executive
initiatives. The table of “Major
Legislative Themes in Federal
Technology Transfer” has also
been updated.
To make The Green Book even
easier to use as a reference
tool, a detailed table of
contents has been added, as well
as an index keyed to page
numbers, and an appendix that
provides links to some useful
web sites related to technology
transfer. The FLC issued
previous editions of this guide
in the hope that they would ease
the job of those working the
technology transfer process and
serve as useful tools for
understanding the opportunities
available for technology
transfer. We hope that this
newest edition of The Green Book
also meets those hopes and is
equally well received.
Although federal technology
transfer policy is established
by the legislation and executive
orders in this guide, each
federal department and agency
develops the specific, detailed
policies and procedures that
guide how technology transfer
works within its organization.
The purpose of the FLC is to
help federal departments,
agencies, and individual
laboratories move technologies
and capabilities developed in
the laboratories into the
private and public sectors.
To facilitate this mission, the
FLC has a Management Support
Office and a Legal Issues
Committee that may be able to
offer additional assistance in
response to your questions about
technology transfer. For more
information about the FLC visit
Web site:
www.federallabs.org
TECHNOLOGY INNOVATION
LEGISLATION HIGHLIGHTS
FROM THE GREEN BOOK
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 technologies,
but personnel, facilities,
methods, expertise, and
technical information in
general. Highlights of major
technology transfer legislation
are discussed on the following
pages. An overview of the major
legislative themes is also
provided.
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 the Patent and
Trademark Clarification Act of
1984 (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 title to inventions
developed with federal funds.
Government owned and government
operated (GOGO) laboratories
were permitted to grant
exclusive patent licenses to
commercial organizations.
Small
Business Innovation Development
Act of 1982 (P.L. 97-219)
The Small Business Innovation
Development Act of 1982
established the Small Business
Innovation Research (SBIR)
program, requiring agencies to
provide special funds for small
business R&D connected to the
agencies’ missions.
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
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
inventor’s 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 Competitiveness
Technology Transfer Act of 1989
(P.L. 101-189)
The National Competitiveness
Technology Transfer Act of 1989
provided additional guidelines
and coverage for the use of
CRADAs, extending to government
owned and contractor operated (GOCO)
laboratories essentially the
same ability to enter into
CRADAs that previously had been
granted to GOGO laboratories by
the Federal Technology Transfer
Act of 1986. To protect the
commercial nature of the
agreements, the Act allowed
information and innovations that
were created through a CRADA, or
brought into a CRADA, to be
protected from disclosure to
third parties. The Act also
provided a technology transfer
mission for the Department of
Energy’s (DOE) nuclear weapons
laboratories.
American Technology Preeminence
Act of 1991 (P.L. 102-245)
The American Technology
Preeminence Act of 1991
contained several provisions
covering the FLC and the use of
CRADAs. The mandate for the FLC
was extended to 1996, the
requirement that the FLC conduct
a grant program was removed, and
a requirement for an independent
annual audit was added. With
respect to CRADAs, the Act
included intellectual property
as potential contributions under
CRADAs. The exchanging of
intellectual property among the
parties to an agreement was
allowed, and the Secretary of
Commerce was asked to report on
the advisability of creating a
new type of CRADA that would
allow federal laboratories to
contribute funds to the effort
covered by the agreement (which
is not permitted at present). It
also allowed laboratory
directors to give excess
equipment to educational
institutions and nonprofit
organizations as a gift.
Small
Business Research and
Development Enhancement Act of
1992 (P.L. 102-564)
This Act extended the SBIR
program to the year 2000,
increased the percentage of an
agency’s budget to be devoted to
SBIR and similar programs, and
increased the amounts of the
awards. The Act also established
the Small Business Technology
Transfer (STTR) program. (The
STTR program is similar to the
SBIR program.)
National Department of Defense
Authorization Act for 1994 (P.L.
103-160)
This Act broadened the
definition of a laboratory to
include weapons production
facilities at the DOE.
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 prenegotiated
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. The law also revised
the financial rewards for
federal scientists who develop
marketable technology under a
CRADA—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. |
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Other
Legislation
Other laws that are part of the
technology transfer effort,
although perhaps not quite as
directly as the previously
discussed legislation, include:
• The Cooperative Research Act
of 1984 (P.L. 98-462)
established several R&D
consortia (e.g., Semiconductor
Research Corporation and
Microelectronics and Computer
Technology Corporation) and
eliminated some of the antitrust
concerns of companies wishing to
pool R&D resources.
• The Trademark Clarification
Act of 1984 (P.L. 98-620)
permitted patent license
decisions to be made at the
laboratory level in GOCO
laboratories, and permitted
contractors to receive patent
royalties to support the R&D
effort. Private companies were
also permitted to obtain
exclusive licenses.
• The Japanese Technical
Literature Act of 1986 (P.L.
99-382) improved the
availability of Japanese science
and engineering literature in
the U.S.
• The National Institute of
Standards and Technology
Authorization Act for FY 1989 (P.L.
100-519) permitted contractual
consideration for intellectual
property rights other than
patents in CRADAs, and included
software developers as eligible
for technology transfer awards.
• The Defense Authorization Act
for FY 1991 (P.L. 101-510)
established model programs for
national defense laboratories to
demonstrate successful
relationships between the
federal government, state and
local governments, and small
businesses and permitted those
laboratories to enter into a
contract or a Memorandum of
Understanding with an
intermediary to perform services
related to cooperative or joint
activities with small businesses.
• The National Defense
Authorization Act for FY 1993 (P.L.
102-484) extended the potential
for CRADAs to some Department of
Defense-funded Federally Funded
Research and Development Centers
(FFRDCs) not owned by the
government.
United
States Code
All of the legislation included
in “The Green Book” is embodied
in the United States Code (USC),
which provides a single source
uniting the provisions of each
law. The primary section of the
USC covering technology transfer
is Title 15 (Commerce and Trade),
Chapter 63 (Technology
Innovation). Relevant portions
of other titles of the USC that
deal with major technology
transfer issues and are provided
in this book include Title 35 (Patents)
and Title 42 (The Public Health
and Welfare) Section 7261 (Acquisition
of Copyrights, Patents, Etc.).
The Green Book also includes
special legislative provisions
applicable to one or several
federal agencies and technology
innovation legislation with
special provisions that are
possibly unique to one federal
agency. In addition, the book
contains Executive Order 12591,
Facilitating Access to Science
and Technology, an appendix with
links to some web sites related
to technology transfer, and a
comprehensive user-friendly
index.
The text of the USC contained in
this book is available from the
web site of the U.S. House of
Representatives Office of the
Law Revision Counsel, which
prepares and publishes the USC.
The latest official version of
the USC is available at http://uscode.house.gov |
