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The primary goal of the technology transfer process at NASA Goddard Space Flight Center is to encourage broader utilization of Goddard-developed technologies in the American industrial and academic communities as well as to facilitate Goddard’s use of technologies and expertise outside of NASA. This information is designed to expedite the process for successfully doing business with Goddard’s Innovative Partnerships Program (IPP) Office.
License vs. Partnership Agreements There are two types of working relationships with Goddard and/or its technology: licenses and partnerships. License Agreements A license agreement grants exclusive, partially exclusive, or nonexclusive rights to use a Goddard technology. Additional support to facilitate the transfer of technology can also be provided by Goddard--this support would be granted through a partnership agreement. Partnership Agreements In some cases, Goddard will participate actively in the technology transfer process. For example:
Partnerships might be formalized as a Space Act Agreement (SAA), a Cooperative Research and Development Agreement (CRADA), or a Cooperative Agreement. Regardless of the agreement vehicle, the partnering process is the same. License Agreement Steps and Forms NASA owns over a thousand patents and patent applications that protect inventions in hundreds of subject matter categories (search for technologies). NASA has the authority to grant licenses on its domestic and foreign patents and patent applications pursuant to 35 USC §§207-209. NASA follows the regulations set forth in 37 CFR §404. All NASA licenses are individually negotiated with the prospective licensee, and each license contains terms concerning technology transfer (practical application), license duration, royalties, and periodic reporting. NASA patent licenses may be exclusive, partially exclusive, or nonexclusive.
How to Apply for a Patent License The license application process takes place in two stages to minimize the forms required and expedite the negotiation process. Note that the forms and processes are the same for both patent and copyright license interest. The IPP will incorporate all final agreement information into a formal license for signature by both parties. The IPP uses the information listed below to assist in the license negotiation process. All information should be submitted to: Innovative Partnerships Program Office 1. Provide all information requested in License Application, including:
2. Once the Term Sheet is reviewed and considered to match NASA interests, a Development/Marketing Plan must be submitted. This document provides a detailed description of the applicant’s plan for the invention:
Partnership Agreement Process and Forms As indicated above, SAAs, CRADAs, and Cooperative Agreements are vehicles used to partner with Goddard researchers to work cooperatively to develop a product based on Goddard technology and/or to solve NASA technological needs. Partnerships also are formed in making Goddard facilities available to outside users. Partnerships can be either nonreimbursable or partially/fully reimbursable. How to Apply for a Partnership Agreement The partnership application process takes place in two stages to minimize the forms required and expedite the negotiation process. The IPP will incorporate all final agreement information into a formal partnership agreement for signature by both parties. All information should be submitted to: Innovative Partnerships Program Office 1. Provide all information requested in the Partnership Application, including:
2. Once the Partnership Application is reviewed and considered to match NASA interests, IPP will determine the appropriate agreement vehicle (SAA, CRADA, or Cooperative Agreement). Additional information may be requested, such as a Development/Marketing Plan, documentation of cost-sharing valuation, or a more detailed work plan.
Frequently Asked Questions about Working with Goddard This section answers some of the basic questions about technology transfer, patent licensing, and privacy issues. Feel free to contact the Innovative Partnerships Program Office for more information.
The Innovative Partnerships Program Why is it important for Goddard to transfer its technology? The U.S. Congress and the NASA Administrator are putting great emphasis on transferring NASA-developed technology and expertise to U.S. industry to increase U.S. industrial competitiveness, create jobs, and improve the balance of trade. In addition, there is an emphasis on bringing technologies and expertise into NASA that can facilitate achievement of space program goals. Will Goddard assist an organization in solving its technical problems or improving its products? If Goddard has technology available that would be useful, the IPP would be pleased to discuss its possible applications. As one option, a joint-development effort could be conducted if NASA has interest in the research and if it has unique facilities and capabilities to contribute.
How do I find out what technologies and facilities Goddard has available? In addition to the various print publications available from IPP, this Web site has an entire section devoted to Goddard’s technologies. Whom do I contact to receive further information on a particular Goddard technology? Specific contact information is provided for each technology. Or you can e-mail the Innovative Partnerships Program Office.
What’s the difference between an SAA, a CRADA, and a Cooperative Agreement? SAAs and CRADAs are essentially the same. Authorized by the National Aeronautics and Space Act of 1958 (as amended), SAAs are flexible arrangements that allow NASA to work cooperatively with industry and academia. The Technology Innovation Act of 1980 authorizes other government research organizations, which did not have similar provisions in their charters, to use CRADAs. Cooperative Agreements with profit-making firms allow Goddard to enter into a cost/resource-sharing arrangement for research and technology development Do I need to know what kind of partnership agreement I want? No. It is not necessary to specify the type of partnership desired. In fact, Goddard will determine which agreement vehicle is best based upon the specifics of the request. Can collaborations begin before the partnership agreement is officially signed? Certain activities (e.g., nondisclosing technical discussions) can occur prior to signing the agreement. What can Goddard contribute and what can my organization contribute (i.e., money, man-hours, materials, facilities, and services) under a partnership agreement? Goddard can contribute nearly all of these items; however, it cannot transfer appropriated funds to the partner. The partner can contribute all of these items. The contributions of each party are negotiated by Goddard and the partner. Who receives patent rights to technologies developed under a partnership agreement? Industry or academia may retain the rights if the technology is invented solely by its employees. Goddard may retain the rights if the technology is invented solely by Goddard employees. A jointly owned patent will result if employees of each party invent the item. In any event, patent rights will be spelled out in the agreement or negotiated in accordance with applicable law. Can industry, academia, or individuals use Goddard facilities? Is there a charge for the usage? Goddard facilities can be used on a space-available basis. Should the research to be conducted be of interest to NASA, Goddard may cover some of the expenses; however, the results could eventually be publicly released by NASA. (See Privacy Issues.)
Will Goddard grant exclusivity for a particular technology? An organization may apply for an exclusive, an exclusive field-of-use, or a nonexclusive license. Exclusive rights to a technology can be licensed depending on how many parties are interested in the technology and depending on the license application. Other factors taken into account are the technology transfer plan and the organization’s demonstrated wherewithal to carry it out. (For more information, see License Agreement Steps and Forms.) What happens if another organization is interested in the same technology that I want to license? As stated earlier, there are a number of possible license agreements: nonexclusive, exclusive, co-exclusive, exclusive in a particular field of use or in a geographic region, and various combinations of these. Goddard requires interested parties to submit a technology transfer plan for the particular technology. Goddard uses this plan to determine which licensing arrangement will be best for everyone involved. How long does the patent licensing process take? How much will it cost me in upfront money? The process generally takes about 3 to 4 months after receipt of the Patent License Request and Development/Marketing Plan for a nonexclusive license. Exclusive licenses take longer and are highly dependent on the complexity of the application. The time frame for exclusive licenses includes a mandatory waiting period of 60 days, during which time a member of the public can file a written objection. Upfront fees generally are set according to the value of the technology and are negotiable. What percentage in royalties does Goddard require under a license agreement? The percentage in royalties to be paid to Goddard under a license agreement is negotiable depending on a number of factors, including the type of license issued (i.e., exclusive or nonexclusive). It is likely to be between 2% and 8% of sales.
Are discussions with Goddard personnel kept confidential? What about the Freedom of Information Act (FOIA)? Goddard personnel are obligated by law to keep all proprietary information confidential if identified as such. Company trade secret information revealed to Goddard in the process of developing, negotiating, and signing a partnership agreement is exempt from FOIA. Must the data resulting from a partnership with Goddard be made public? Partnership agreements can contain their own nondisclosure and IP ownership clauses based on what is appropriate for each arrangement. Must the data resulting from the work in a Goddard facility be made public? If the user pays the total cost associated with use of the facility, the data will not be made public unless otherwise agreed to. However, if the research to be conducted is of interest to NASA and Goddard covers some of the expenses, then the results could eventually be publicly released by NASA.
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