Agreement to Commercialize Technology (ACT) Reduces Barriers for Intellectual Property Rights, Lab-Business Partnerships

Washington, D.C. – Energy Secretary Steven Chu today announced that Idaho National Laboratory will participate in a pilot initiative to make it easier for private companies to utilize the laboratories’ research capabilities. The program will harness America’s unique advantages in innovation to create jobs and accelerate the development of new clean energy technologies.

“The Agreements for Commercializing Technology will cut red tape for businesses and startups interested in working with our nation’s crown jewels of innovation, the national laboratories,” said Energy Secretary Steven Chu. “This initiative will also strengthen new domestic industries by helping to bring innovative, job-creating technologies to the market faster.”

Previously, companies wishing to partner with the laboratories for commercial research had two options: signing a Cooperative Research and Development Agreement (CRADA) or a Work For Others (WFO) Agreement. The eight laboratories participating in this pilot program intend to offer a third, more flexible option: an Agreement to Commercializing Technology (ACT).

ACT was created to address concerns that have been raised by industry and to remove barriers that sometimes got in the way of commercializing technology under a CRADA or WFO agreement. Specifically, under an ACT:

• There will be more flexibility in negotiating over the intellectual property (IP) rights for technologies created at the laboratory. While the labs generally have had limited flexibility on IP terms under CRADAs and WFO arrangements, an ACT will allow both parties to develop a specialized arrangement that will facilitate moving the technology into the marketplace as quickly as possible.
 
• More flexible terms are also available on other issues ranging from payment arrangements to project structures to indemnification. The goal is to develop terms that are better aligned with industry practice.
 
• WFO arrangements and CRADAs tend to be tailored for two-party agreements between one company and a lab, an ACT will make it easier to develop a multi-party research and development partnership. Groups of companies, universities and/or other entities may come together with a laboratory to address complex technological challenges that are of mutual interest.

The participating labs are:

• Ames Laboratory
• Brookhaven National Laboratory
• Idaho National Laboratory
• Lawrence Livermore National Laboratory
• National Renewable Energy Laboratory
• Oak Ridge National Laboratory
• Pacific Northwest National Laboratory
• Savannah River National Laboratory

DOE’s laboratories have a long tradition of working with businesses and academia on scientific research and technology development efforts that have generated many advances, spawned new businesses and supported the creation of new industries and jobs.

ACT complements the goals of the Administration’s “Startup America” initiative and is part of DOE’s broader efforts to support startups and small businesses, including the “America's Next Top Energy Innovator” Challenge, which gives startup companies access to the Energy Department's thousands of unlicensed patents at a greatly reduced cost and paperwork.

To view the FAQ on Agreements for Commercializing Technology (ACT), visit http://technologytransfer.energy.gov/ACTpilotFAQ.html.