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United States Department of Agriculture

Agricultural Research Service

Agreements Slide Show - Text Version
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Office of Technology Transfer, Beltsville Area

Harry Danforth or Sandra Matteson
Bldg. 003, Rm. 208, BARC-W
504-6421
504-6001 FAX
Danforthh@ba.ars.usda.gov
mattesos@ba.ars.usda.gov,
OTT Internet Web Site
"ARS is Increasingly Being Asked..."
 
ARS is Increasingly Being Asked to Demonstrate the Positive Impact of our Programs
 
Federal Technology Transfer Acts of 1986 and 1996
 
To help translate research results into practical products
 
To give taxpayers a return on their investment in research
 
To promote economic competitiveness and job creation
 
Philosophy of Technology Transfer
 
U.S. Company Interests
ARS Mission
Area Ripe for Technology Transfer
 
Not all Successful Technology Transfer Uses Formal Mechanisms
 
How is Technology Transferred?
 
Types of Formal Agreements
 
Confidentiality Agreement
Material Transfer Agreement (MTA)
Cooperative Research and Development Agreement (CRADA)
Trust Fund Cooperative Agreements
Memorandum of Understanding (MOU)
Patents – License Agreement
 
Confidentiality Agreement
 
Used only when contemplating entering into a CRADA, MOU or License Agreement. Otherwise, do not disclose or receive confidential information.
Can be one way or two way
Protects patent rights
Do not sign non-standard confidentiality agreements without first checking with the Technology Transfer Coordinator (TTC).
Can be signed by any permanent ARS scientist.
Provide copy of executed agreement to TTC.
 
Material Transfer Agreement
 
Used when transferring materials which may be or will be or are patented.
Do not sign non-standard MTAs without first checking with TTC.
Signed by scientist, RL and then sent to TTC for signature and transmittal to cooperator.
TTC will let you know when it is OK to send/receive materials.
Example (Transfer of cell lines to a U.S. company for production of viral pesticides.)
 
Develop a CRADA When:
 
A joint research effort with a non-Federal, U.S. partner has the possibility of contributing to a commercial product.
A partner requires limited confidentiality and or exclusivity.
Negotiations are between TTC and cooperator, not scientist and cooperator. Watch out for sensitive issues.
 
Examples of Sensitive Issues
 
Creation of transgenic food or feed organisms by genetic engineering (human-directed splicing, altering, deletion, antisense reassembly, or other asexual recombining of DNA or RNA, including subsequent activities to regenerate whole transgenic organisms from cells or tissues, or to transfer genetically-engineered DNA from one organism to another to enhance its potential utility).
 
Cloning of animals by somatic cell nuclear transfer.
 
Herbicide-resistant crop plant research.
 
Antibiotic/Antimicrobial Resistance.
 
Cooperative Research and
Development Agreement (CRADA)
 
Benefits to Firms:
    First right to Exclusive License
    Access to ARS
    Confidentiality
 
Benefits to ARS:
    Results-Oriented Research
    Identification of Licensee
    Resources (For the Project)
 
CRADA Negotiations
 
Firms May Provide
Expertise
Materials
Equipment
Employees
Money
Facilities
ARS May Provide Any of the Above
    Except Money
 
Trust Fund Cooperative Agreements
 
Multiple agreements can be used with multiple partners for same project.
 
Involves funding to ARS from Cooperator.
 
No confidentiality provisions (with exceptions).
 
No right to negotiate an exclusive license.
 
Memorandum of Understanding
 
Used for collaborative research or evaluation
 
No money changes hands
 
No confidentiality (with exceptions)
 
No rights to exclusive license
 
Confidentiality
 
Always Remember Proprietary Information or Intellectual Property (IP)
 
PATENTING GUIDELINES
 
ARS Can Patent Cooperator Can Patent
 
Can be individually or jointly owned
 
INVENTOR GUIDELINES
 
CALL THE PATENT ADVISOR FIRST!!
Janelle Graeter 504-5676
 
INVENTOR GUIDELINES
  1. Use Permanently bound Research Notebooks.
  2. Critical Dates in Patent Law to Avoid Loss of Patent Rights:
    1. Protection Intellectual Property - invention reporting, confidential agreements, CRADA’s.
    2. Invention Report’s (IR) to Patent Advisor (PA) ASAP.
    3. Report publication of invention to PA ASAP.
    4. Foreign patents must be filed before publication.
    5. Avoid disclosing inventive concepts in abstracts, CRIS reports and interpretative summaries.
INVENTOR GUIDELINES
  1. Conduct Thorough Search Before Writing IR.
  2. Provide Advice to PA-talk to the PA.
  3. Assist the PA in Prosecution of the Patent:
  4. Review and comment on patent office actions.
  5. Plant Variety Protection Certificates Considerations - Associate Deputy Administrator from Plant Sciences
  6. General Information on PVPC Obtained from:
    Commissioner
    Plant Variety Protection Office
    AMS, NAL Building
    Beltsville, MD 20705
    Tel. No. 504-5518
    or visit their website at www.ams.usda.gov/science/pvp.htm
ARS Patent Committee Evaluation Criteria
 
  • The Patent Committee meets every 3 to 4 months and recommends whether invention disclosures on the docket should be accepted for patent application preparation, deferred, or suspended.
  • If there is a patent….
  •  
    License Agreements
     
  • Negotiated by Licensing Coordinator or TTC only
  •  
  • Exclusive agreements require publication in Federal Register, except for CRADA inventions.
  •  
  • Scientist receives incentive award:
  •  
  • First $2,000 plus 25% thereafter of all license revenue exclusive of reimbursed fees.
  •  
    For All Formal Agreements
     
  • Negotiations of language and scope of the agreement are almost always necessary to protect ARS’ rights and policies.
  •  
  • Flexibility, compromise and communication within the guidelines and policies of OTT is necessary to develop successful agreements.
  •  
  • "Compromise, if not the spice of life, is its solidity."
  •  
    Questions ?
     
  • http://www.ars.usda.gov/Business/docs.htm?docid=9251

  • Last Modified: 9/15/2005
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