MSTD Technology Transfer Information

Tom Rosseel, MSTD Division Technology Transfer Coordinator (574-5380)
Betty Waddell, MSTD Proprietary Information and Protected CRADA Information Coordinator (574-6151)

General IP rules

Under a CRADA, if the CRADA partner invents something, they own it.  If ORNL invents something, ORNL owns it.  If it is jointly invented then it is jointly owned.  The CRADA partner generally receives an option to negotiate an exclusive license in a field of use for ORNL's portion of the rights for any IP that ORNL creates under the CRADA.

• CRADA Subcontracts Update 022712

Proprietary Information

Be aware of and follow ORNL requirements for receiving, handling, and disposing of proprietary information and the use of Non Disclosure Agreements. This information can be found at the SBMS page on Proprietary Information and Protected CRADA Information.

Non Disclosure Agreements between ORNL (UT-Battelle) and any other organization must use the DOE-approved ORNL NDA. To initiate an NDA, please down load the NDA questionnaire, complete the information, and submit it to: Technology Transfer Division, UT-Battelle, LLC; Oak Ridge National Laboratory, Post Office Box 2008, Oak Ridge, Tennessee 37831-6196. Telephone: (865) 241-7387; Facsimile: (865) 574-9241; email: ndas@ornl.gov

The SBMS discusses the requirements for properly identifying, receiving, using, handling, disclosing, and protecting scientific, technical, and engineering information that can be legally protected from further disclosure. This includes proprietary information either received from third parties or generated under Work for Others (WFO) Agreements (Third Party Proprietary Information), information generated under Cooperative Research and Development Agreements (CRADAs) (Protected CRADA Information), Proprietary Information under a Non-Disclosure Agreement (NDA), User Agreements, and other agreements.

CRADA Final Reports

Please review the requirements for CRADA final reports with special attention given for completing the report before the expiration of the CRADA.

MST Division Invention Disclosure information

Please log onto the IDEAS (Invention Disclosure Electronic Applications System) web page and complete all required information. Although there is no longer a formal division review of the invention disclosures, the division is notified and will review the documents as appropriate. Please make sure that your supervisor and division management are cognizant of your submittal.

UT-Battelle Technology Maturation Funding

Corporate royalty funds are available through an annual lab-wide call for proposals. The purpose of Maturation Funding is to provide resources that significantly increase the likelihood of commercialization of ORNL intellectual property. Proposals should be submitted to Vinod Sikka, Manager, Research and Technology Development, who will coordinate the MST Division Review.

Eligibility:

Any ORNL staff member who has had interactions with TTED via the invention disclosure and patenting or copyright process is eligible to submit a proposal for the maturation of their already-disclosed intellectual property. Postdoctoral research associates may participate as co-investigators but are not eligible to lead a project as principal investigator.

Proposals will be evaluated on the following specific criteria:

1. Demonstrated Path to Commercialization:
   The request for funding should be sufficient to achieve a measurable milestone in the commercialization process. The types of activities which will be selected for Maturation Funding will be those that will advance the intellectual property or technology to a state where it will be able to be licensed to a commercial entity. In most cases, this funding should be the last resource expended that will result in a license to an outside entity that could not have otherwise been achieved. These activities might include: prototype development, field testing, generation of data that would be suitable to show prospective licensees, and generation of samples. In addition to a final report, which will be required of all awardees, tangible deliverables will also be required to be submitted as the outcome for tasks mentioned above, such as data reports, prototypes which have been developed, etc. Proposals for the purpose of equipment purchase will be ranked lower than proposals that outline other tasks as listed above.
2. Relationship to Existing Intellectual Property:
   Proposed projects should involve Intellectual Property that has already resulted in a patent(s), patent application(s), or copyright, and these items should be referenced as part of your proposal. Preference will be given to proposals that involve IP (technologies or improvements) which are less than 5 years old.
3. Technical Merit of the Project:
   Please explain the technical merit of your project in a way that your colleagues (who may be from different disciplines) can appreciate your technical approach and the distinctive competitive advantage achieved through this approach. Please note that the focus of this proposal should be market and commercialization outcomes, not technical detail.

Related Links:

• MSTD Work for Others
• ORNL Work for Others
• ORNL Technology Transfer