Licensing Fermilab Technologies
Fermi Research Alliance (FRA), the management and operating contractor at Fermilab, makes available for licensing contractor-owned inventions for commercialization by U.S. and foreign companies and organizations. Fermilab usually licenses its intellectual property terms similar to universities, other research organizations and industrial firms.
Fairness Of Opportunity
FRA Management will ensure widespread notice of the availability of technologies suited for transfer and opportunities for exclusive licensing through the Fermilab website and will invite comments submitted by interested parties. In addition, notice of exclusive licenses may be provided by other media such as: publication, participation in conferences, exhibitions, or competitive solicitations.
FRA may grant exclusive or partially exclusive licenses in any invention only if the invention has been published for licensing for a period of at least thirty (30) days. After the thirty (30) day notice period, FRA Management will determine in accordance with FRA’s Licensing Criteria whether:
- The interests of the general public, FRA/Fermilab and the United States Department of Energy will be best served by the proposed license; and,
- It does not appear that the desired practical or commercial application has been or will be achieved on a nonexclusive basis; and that,
- Exclusive or partially exclusive licensing is a reasonable and necessary incentive to call forth the risk capital and expenses necessary to bring the invention to the point of practical or commercial application.
If Fermilab’s Management determines that there has not been a sufficient period of notice given to establish fairness, or that based upon the evidence and argument submitted in writing by a third party that it would not be in the best interest of the general public, FRA/Fermilab and the United States Department of Energy to grant the exclusive or partially exclusive licenses, a written notice of such decision shall be documented and provided to the third party.
FRA Management reserves the right to extend the notice period if it determines the circumstances warrant additional opportunities for notice and comment are necessary to meet its obligation of fairness of opportunity under its DOE Contract.
Grant of Rights
Various licensing terms may be negotiated, including both exclusive and nonexclusive license grants. Exclusive licenses may be in certain fields of use, geographic areas, or according to other terms. Co-exclusive and partially exclusive licenses, where exclusive rights to commercialize a technology may be shared by several organizations or restricted by area of use, territory or other terms, also may be granted. For example, one company may obtain exclusive rights to use an invention in the energy industry, while another exclusively licenses the same invention for application in the food industry.
Royalties and Payments
Fermilab licensing royalties are comparable to those charged by universities, other research organizations and the private sector. Licenses usually require an upfront, nonrefundable payment, royalty payments based on sales, and a minimum annual royalty. The fees will vary depending on the number of patents/copyrights licensed, the demand for the technology and the exclusivity of the license. Licensees obtaining foreign rights may be asked to pay the cost of preparing, filing and prosecuting foreign patent applications, and the maintenance of all resulting foreign patents.
U.S. Government Retained License
As with all technology developed with federal funds, the U.S. government retains a worldwide, nonexclusive, nontransferable, irrevocable, paid-up license to practice any licensed intellectual property for or on behalf of the U.S. government.
Fermilab is required to preferentially license inventions to U.S.-based firms, particularly those that will develop and manufacture licensed products in the U.S. However, in appropriate circumstances, non-U.S. firms may receive licenses, including broad exclusive licenses for the countries in which they operate, or even receive exclusive worldwide licenses.
The licensee is solely responsible for the commercialization of the licensed inventions. Under specific circumstances, Fermilab may agree to provide technical assistance to the licensee on a full cost recovery basis, if the work is beneficial to Fermilab’s mission objectives.
Limited Warranty and Indemnification
Any license for Fermilab technology will contain a disclaimer of warranties and require indemnification of FRA and the U.S. government.
The license may extend to subsidiaries of the licensee or other parties, if provided for in the license. Further, the license will be nonassignable unless approved by Fermilab, except to the successor of that part of the licensee’s business to which the invention pertains.
A Fermilab license may include the right to grant sublicenses under the license, subject to the approval of Fermilab. Each sublicense shall make reference to the license, including the rights retained by the U.S. government, and a copy of such sublicense must usually be furnished to Fermilab.
DOE March-In Rights
Although rarely exercised, the Department of Energy (DOE) has certain “March-in Rights” to intellectual property developed with federal funding.
The license will contain a provision recognizing that the export of goods and/or technical data from the U.S. may require an export license from the U.S. government. Failure to obtain an export license may result in criminal liability under U.S. law.
Fermilab’s technology portfolios are managed by Licensing Executives with experience in these industries. These technologies are listed on Fermilab’s website and each portfolio changes as new technologies become available or licensing occurs.
For More Information
Aaron G. Sauers, CLP