Principles of ARS Technology Transfer Rob Griesbach Office of Technology Transfer

ARS Mission To conduct research to develop & transfer solutions to agricultural problems of high national priority and provide information access and dissemination

Why Do Technology Transfer? Facilitates research impact Enhances economic development ARS mission Required by Federal law

ARS Technology Transfer Program GWCC, Beltsville, MD: Office of Technology Transfer Develops TT Policy & Procedures Agreement, ARP Network, Patenting, & Licensing Area Offices: Scientific Technology Transfer Coordinator (STTC), Technology Transfer Coordinator (TTC) & Technology Transfer Assistant (TTA) First POC for Area Scientists & Companies Implements TT Policy & Procedures

PWA David Nicholson, STTC Kristin Kimball, TTA PA Bryan Kaphammer, STTC Tara Marostica, TTA MWA Renee Wagner, STTC Babette Davis, TTA SEA Thomas Valco, STTC Joseph Lipovsky, TTC Annetta Ebelhar, TTA Jason Bray, TTA NEA James Poulos, STTC Kim Garner, TTA Dee Shilkitus, TTA OTT Mojdeh Bahar, Licensing Gail Poulos, Patenting Rob Griesbach, Partnerships

Area Tech Transfer Office General TT advice Coordinate TT training Negotiate & implement research agreements (CRADA, MTA, CA) Reviews reports & documents for IP management implications

Patenting Section Manages Patent Review Committees Prepares, files, & prosecutes U.S. patent Obtain research results to maximize patentability

Licensing Section Reviews license applications; drafts & negotiates license agreements; reviews & approves sublicense agreements Prepares & submits Federal Register Notices for publication Collects & distributes royalties; inventors collectively share the first $ % of additional income Facilitates & directs foreign filings with contractor Obtain research results to maximize commercial partner success

Partnership Section Approves agreements that address IP concerns Coordinates ARP Network Teams with ONP & Line Management to determine TT strategies Supports agreement development with the Area TTCs, EAD & OIRP

Technology Transfer Goals The primary objective is transfer of technology, not income generation Facilitate research partnerships & adoption of research outcomes for broad US public benefit-impact Protect (patent/pvpc) intellectual property primarily if it enhances technology transfer Enhance U.S. economic development, global competition, and sustainable economic security

Technology Transfer Mechanisms for Achieving Impact Scientific papers, conferences, etc. Trade journal articles, field days, etc. Informational products, e.g., Ag Research Magazine, news releases, exhibits, web page, videos. Collaborative research partnerships Patenting & Licensing

Adoption of research outcomes Impact

Technology Transfer Strategies Adoption Research Outcomes IP (protected) IP (not protected)

Technology Transfer Mechanisms for Achieving Impact Scientific papers, conferences, etc. Trade journal articles, field days, etc. Informational products, e.g., Ag Research Magazine, news releases, exhibits, web page, videos. Research partnerships Patenting & Licensing

Why form research partnerships? Share-leverage personnel, knowledge, equipment-facilities, and funding to accomplish research goals Increase the chances that research results are adopted - Impact

Agreements that address IP concerns CA, MTA, CRADA, CRADA-MTA, Agreements that do not address IP concerns TFCA, SCA, MTRA, MTSCA Agricultural Research Partnerships Network ARP Network Research Partnerships

Confidential transfer of information Protects proprietary / patent rights Restricts the use of that information Cooperator CA or changes to the ARS CA requires TTC review and approval Does not authorize cooperative research Requires signature by SY Send copy of executed CA to TTA Confidentiality Agreements (CAs)

Confidential transfer of material & related information Protects proprietary / patent rights Restricts the use of material / information Cooperator MTA or changes to the ARS MTA requires TTC review and approval Does not authorize cooperative research Requires signature of RL and TTC Send copy of executed MTA to TTA Material Transfer Agreements (MTAs)

Collaborative Research Agreements

CRADA Model ARS-Partner InventionPatent Results Exclusive License Publish Allow Research

Cooperator May Provide Expertise Materials Equipment Employees Money Facilities ARS may provide any of the above except money, unless an SCA is developed

Specific Cooperative Agreement (SCA) The ONLY mechanism to transfer funds under a CRADA It must be for conducting research work that cannot be done under the CRADA Negotiated by the Extramural Agreements Division (EAD) TTC must REVIEW the SOW IP developed under the CRADA must be protected

CRADA-MTA Combination of CRADA authority & MTA authority Used when cooperator is providing material & cooperator wants an option to negotiate an exclusive license on IP ARS may develop while doing research on the material

TFCA Model ARS-Partner Published Results

TFCA One project with multiple agreements IP concerns not addressed No right to negotiate exclusive license CRADA One project with one agreement IP concerns addressed Right to negotiate exclusive license

Possible complications Overlapping statements of work in several research agreements with different research partners Informal collaborations that result in inventions Premature disclosure of inventions where protection is needed for commercialization Multiple patent owners

MTRAs & MTSCA Combination of the MTA authority & Trust authority Allows for cooperative research work with potential funds to ARS (MTRA) or collaborator (MTSCA) Protects ownership rights of material

Technology Transfer Mechanisms for Achieving Impact Scientific papers, conferences, etc. Trade journal articles, field days, etc. Informational products, e.g., Ag Research Magazine, news releases, exhibits, web page, videos. Research partnerships Patenting & Licensing

Why seek a patent? Facilitates technology transfer Provides an incentive for investments by the private sector Supports small business enterprises and entrepreneurs Supports investments by U.S. businesses in international markets

National Patent Committees Life Sciences Chemical Mechanical & Measurement National Plant Protection Committee

1)Is there current commercial interest in the invention or a high probability of commercialization in the future? 2)Is the magnitude of the market relative to the costs of commercialization large enough to warrant a patent? 3)Would the patent likely play a significant role in transferring the technology to the user beyond what could be achieved through publication? 4)Would a patent on this invention be enforceable; i.e., is the invention drawn to, or does it employ, a unique and readily identifiable material or device which could be bought or sold? 5)Is the invention of sufficient scope to justify patenting? Patenting considerations based on Tech Transfer requirements

Patenting considerations (con’t) 6)Do you know of any ARS pending patent, invention disclosure or research that could impact the technology described in this invention disclosure? 7)Do you know of any non-ARS pending patent, invention disclosure or research that could impact the technology described in this invention disclosure? 8)Provide the names of any companies (and contact information) that you think may be interested in this technology for licensing. 9)Provide the names of any companies (and contact information) that you think may be interested in collaborating to further develop/commercialize this technology through a SBIR proposal and/or CRADA. 10)Is the invention ready to write as a patent application right now if approved by the committee?

Considerations for Protecting Plant Cultivars 1)How is the cultivar different from and/or better than the closest currently available cultivar? 2)Is there current commercial interest in the cultivar or a high probability of commercialization in the future? 3)Is the potential market for the cultivar of sufficient size to warrant protection? 4)Would protection likely play a significant role in making the cultivar available to growers and consumers beyond what could be achieved through public release? 5)Have key stakeholders, such as commodity groups, growers, university partners, seed companies, and nurseries, been consulted about protection of the cultivar?

Agricultural Research Partnership ARP Network Agricultural Technology Innovation Partnership ATIP Foundation

ARP Network Partners Any agriculture-based economic development organizations: rural agribusiness urban, community and/or economic development groups organizations that support farmers capital programs for business acceleration

Match industry needs with UDSA-ARS research capacity and technologies Provide access to research expertise, facilities and equipment Coordinate events to facilitate ado[ption of research outcomes Provide mentoring to USDA-ARS and its commercial partners Business plan development Manufacturing problem solving Marketing assessments ARP Network Focus

Non-profit investor based consortium of agribusinesses, universities, economic development entities, & venture funds for the development, implementation, & commercialization of USDA technology discoveries, in order to develop, & expand the agriculture industry

Receive requests from USDA to develop public-private partnerships around specific initiatives of high national priority ATIP Foundation Focus

Current ATIP Foundation projects: Resilient Economic Agricultural Practices (REAP) Branded Foods Nutrient Composition Database Co-PI on NIFA arsbiofuel grant

OTT, TTCs & TTAs are here to help Tech Transfer is a Team Effort