NAO 201-103

This NOAA Administrative Order sets forth NOAA policy for implementation of sections 2 and 7 of the Federal Technology Transfer Act of 1986 (Public Law 99-502), hereinafter referred to as the Act, and Executive Order 12591, dated April 10, 1987, on Fac ilitating Access to Science and Technology. This NOAA Order prescribes procedures to be used in NOAA for entering into cooperative research and development and licensing agreements as authorized by section 2 of the Act, and for the distribution of royalt ies received by NOAA from licenses on NOAA inventions as required by section 7 of the Act.

SECTION 2. POLICY.

The policy and goals of the United States Government (1) to promote technology transfer and in particular commercial development of Federally developed technology and (2) to improve access to science and technology are set forth in the Act and Executiv e Order 12591. Therefore, it is NOAA policy that laboratory directors and research managers at all levels seek opportunities for collaborative research when such collaboration could lead to commercial exploitation of research results and contribute to NO AA's research mission. It is also NOAA policy that laboratory directors encourage their employees to promote commercial development of their inventions.

SECTION 3. AUTHORITY.

Section 2 of the Act provides authority for the Secretary of Commerce to permit the director of any Department of Commerce operated laboratory to enter into cooperative research and development and licensing agreements wherein the laboratory may (1) ac cept, retain and use funds, personnel, services and property from collaborating parties, and in exchange may provide personnel, services and property, but not funds, to the collaborative effort; (2) grant, in advance, licenses or assignments to collaborat ing parties for any invention made by a Federal employee under such agreements; and (3), also in advance, waive Federal Government ownership to any inventions made by employees of the collaborating organizations under such agreements. However, a nonexclu sive, nontransferable, irrevocable paid-up license must be retained by the Government when a Government employee is an inventor; and a nonexclusive, irrevocable, paid-up license when the Government waives its right of ownership to the invention of a collaborati ng party or its employee. In such cases where it is determined to grant any of the above rights in advance, they shall be granted directly to the collaborating parties.

SECTION 4. DELEGATION OF AUTHORITY.

The authorities contained in Section 2 of the Act have been delegated by the Secretary of Commerce to the Under Secretary for Economic Affairs and redelegated through the Under Secretary for Oceans and Atmosphere to the: NOAA Chief Scientist, the Assi stant Administrators of each NOAA Line Organization, and the Director of NOAA Corps Operations. The authority delegated to the Assistant Administrator for Oceanic and Atmospheric Research has been further redelegated to the Director of the Environmental Research Laboratories. The authority delegated to the Assistant Administrator for Fisheries has been further redelegated to the Science and Research Directors in each of the five Regional Offices.

SECTION 5. DEFINITIONS.

.01 Approval Authority - The approval authority for cooperative research and development agreements shall be the Assistant Administrator to whom the laboratory director executing the agreement reports or, in the case of an agreement ex ecuted by an Assistant Administrator, the NOAA Chief Scientist.

.02 Laboratory - For the purposes of sections 2 and 7 of the Act, the following organizations shall be considered "laboratories" and hereinafter are referred to as "NOAA laboratories".

Office of Oceanic and Atmospheric Research, and the Environmental Research Laboratories
National Marine Fisheries Service and the
- Northeast Fisheries Science Center
- Southeast Fisheries Science Center
- Northwest Fisheries Science Center
- Southwest Fisheries Science Center
- Alaska Fisheries Science Center
National Weather Service
National Ocean Service
National Environmental Satellite, Data, and Information Service
Office of NOAA Corps Operations

.03 Cooperative Research and Development Agreement - A written agreement between a NOAA laboratory and one or more non-Federal parties under which the NOAA laboratory provides personnel, services, facilities, equipment, or other resou rces with or without reimbursement (but not funds) and the non-Federal parties provide funds, personnel, services, facilities, equipment or other resources toward the conduct of specified research and development efforts consistent with the NOAA mission. (Appendix A provides a suggested model agreement.)

The following are not cooperative research and development agreements under this Administrative Order:

a. Memoranda of Understanding or other forms of agreements between NOAA laboratories and other Federal agencies;

b. Memoranda of Understanding or other forms of agreements between NOAA laboratories and non-Federal parties in which NOAA funds are provided to such parties;

c. Procurement contracts, grants, and cooperative agreements as those terms are used in sections 6303, 6304, and 6305 of Title 31 U.S.C.

d. Visiting scientist (guest worker) agreements;

e. Agreements for use of approved NOAA facilities under contractual arrangements or the NOAA Proprietary Research Program.

.04 Invention - Any novel art, manufacture, design, or composition of matter, or any new and useful improvement thereof which is or may be patentable under Title 35 of the United States Code or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 7321 et. seq.).

.05 Invention Disclosure - A written description of an invention and what it will do which is sufficiently full and clear to teach a person of ordinary skill in the field of the invention to practice the invention. (Appendix B provides information on, and procedures for submitting an Invention Disclosure.)

.06 Made - The term "made" in relation to any invention means the conception or first actual reduction to practice of such invention.

SECTION 6. RESPONSIBILITIES.

.01 NOAA Chief Scientist - Through the Research and Technology Applications Office (ORTA), is responsible for providing overall coordination and monitoring of NOAA's implementation of the Act. The ORTA shall maintain a central file of existing NOAA cooperative research and development agreements and provide information, data and reports as requested by NOAA laboratories, the Chief Scientist and/or the Department of Commerce. The ORTA will assist NOAA laboratories in negotiating cooperative R&D agreements and, when requested, by serving as an intermediary with industry, state, and local economic development organizations, and other external groups. The ORTA will also provide assistance in identifying opportunities and potential collaborators for cooperative research, in assessing the commercial applicability of NOAA research projects, and serve as a point of contact in linking external technology needs to specific NOAA resources.

.02 Assistant Administrators/NOAA Laboratory Directors - Are responsible for ensuring awareness throughout their organizations of the goals of the Act, responsibilities assigned by Executive Order 12591, dated April 10, 1987, and the opportunities and incentives they provide. They are responsible for ensuring that (1) procedures exist for the routine assessment of the potential for non-Federal applications of research and development projects, (2) their subordinate laboratory directors promote commercial use of research results, and (3) proposed cooperative research is appropriate to their mission. In addition, they shall ensure that efforts to transfer technology are considered positively in laboratory job descriptions, employee promotion policies, and evaluation of job performance of scientists and engineers in NOAA laboratories.

.03 NOAA General Counsel - is responsible for providing legal counsel to NOAA laboratory directors and the ORTA on all matters under the Act.

a. Legal support to any NOAA laboratory developing or nego-tiating a Cooperative Research and Development Agreement shall be provided by the office within NOAA General Counsel that is responsible for programmatic legal support to that laboratory including the appropriate Regional Attorney in the case of a Fisheries Science Center. Legal support to any NOAA laboratory choosing to negotiate a licensing agreement under section 9.02 shall be provided by the same office.

b. The programmatic attorney providing legal support to any NOAA laboratory negotiating an agreement under the Act shall be responsible for coordinating with the DOC Assistant General Counsel for Administration on questions concerning conflicts of interests, with the DOC Chief Counsel for Technology on questions concerning inventor's rights and patent applications, and with the NOAA General Counsel office assigned to providing counsel to ORTA.

c. The Senior Counsellor for Satellites is responsible for providing legal counsel to ORTA.

SECTION 7. PROCEDURES.

In developing a cooperative R&D Agreement, NOAA Laboratory Directors (or their designees) shall:

.01 Notify the appropriate office of NOAA General Counsel (see Section 6.03) of potential agreements as early in the negotiating process as possible.

.02 Ensure that the proposed agreement is consistent with the purposes of the Act and develop a draft agreement in coordination with the NOAA General Counsel's office, ORTA, and other NOAA offices as appropriate.

.03 Obtain approval of the Approval Authority (see Section 5.01) either:

a. prior to execution of the final agreement in which case a proposed final draft of the agreement shall be submitted to the Approval Authority at least 30 days prior to execution unless the Approval Authority, with the concurrence of the General Counsel's office and ORTA, agrees in writing to reduce the review period (but not to less than 5 working days); or

b. following execution of the final agreement in which case the agreement shall include the following clause:

This Agreement shall enter into force 30 days from the date of the last signature of the parties unless disapproved or modified in writing by the appropriate authority.

c. proposed agreements from Fisheries Science Centers shall be forwarded to the Assistant Administrator for Fisheries through the Director of the appropriate NMFS Regional Office.

.04 Obtain the necessary signatures on the final agreement which shall be executed in duplicate.

.05 Distribute agreements and copies thereof as follows:

a. Original - to master file of the NOAA laboratory.

b. Original Signed Copy - to the Collaborator(s) for their organizational records.

c. Reproduced Copies - to the appropriate Assistant Administrator, to the ORTA, to the NOAA General Counsel and as appropriate to the concerned subordinate laboratories and collaborator(s).

.06 Negotiate with the collaborator(s) for agreement modifications, extensions, or terminations, and prepare for the cooperators countersignature or letters confirming such actions and agreements.

.07 Cooperate with the NOAA ORTA in coordinating required reports relative to agreements.

SECTION 8. SPECIAL CONSIDERATIONS.

.01 In negotiating agreements, NOAA laboratories shall give special consideration to small business firms and consortia involving small business firms; and shall give preference to business units located in the United States which agree that products embodying inventions made under the agreement or produced through the use of such inventions will be manufactured substantially in the United States. While not required by the Act, NOAA laboratories are encouraged to announce the availability of opportunities for cooperative research and development in appropriate medium, such as the Commerce Business Daily and professional journals. When requested, the ORTA shall assist NOAA laboratories in disseminating announcements.

.02 Agreements with industrial organizations or other persons subject to the control of a foreign country or government shall take into consideration whether or not such foreign government permits United States agencies, organizations, or other persons to enter into cooperative research and development agreements and licensing agreements. The ORTA will assist NOAA laboratories in obtaining information for these considerations.

SECTION 9. INVENTION MANAGEMENT AND LICENSING.

.01 General

a. Invention Ownership - The DOC Chief Counsel for Technology shall determine the Government's and inventor's rights in inventions made by NOAA employees based upon information provided by the inventor (see Appendix B). If it is determined that the Government owns the invention, and the Department of Commerce does not intend to file a patent application or otherwise promote commercialization of the invention the Department shall allow the inventor to retain title to the invention. If it is determined that the Government owns the invention and an application for a patent is filed, a licensable property is created when the U.S. Patent and Trademark Office issues a serial number for the patent application.

b. Income and Costs - All royalty or other income received by NOAA from a license on a Government-owned invention shall be paid to NOAA inventors and laboratories in accordance with Section .03 below. However, all costs associated with the production of such income (patent application process and fees for invention management services) shall be the responsibility of NOAA Laboratories.

.02 Invention Licensing

a. NOAA Laboratory Licensing Authority - The NOAA laboratory where an invention was made shall have the authority to negotiate licensing agreements on the invention. It may choose to assign responsibility for invention management to the National Technical Information Service (NTIS) in accordance with Paragraph 2 (below) or exercise the authority itself. If the laboratory chooses to exercise this authority through an agreement for invention management and licensing services with any person or organization other than the NTIS, the agreement with such parties shall be sent, through the appropriate Assistant Administrator, to the ORTA for transmittal to the Office of the Under Secretary for Technology for review and approval prior to execution and implementation.

b. National Technical Information Service (NTIS) Licensing - If a NOAA Laboratory chooses not to exercise its authority to negotiate a licensing agreement on an invention, NOAA will transfer the authority to license the invention to NTIS. NTIS shall manage the invention in accordance with a Memorandum of Understanding (MOU) between NOAA and NTIS. Under the MOU, all royalties and other income received by NTIS from a license on a NOAA invention minus an invention management fee will be credited to a NOAA account. Within 60 days of the end of each fiscal year, NOAA shall provide NTIS with instructions for the distribution of funds in the NOAA account.

c. NOAA employee inventor(s) - NOAA employee inventor(s) shall not participate in license negotiations on their own inventions. However, they may provide technical advice and make recommendations to the person or organizations representing the NOAA laboratory in such negotiations.

.03 Distribution of Invention Income

NOAA shall pay at least 30 percent of the royalties or other income received on account of any invention to the inventor (or co-inventors) if the inventor (or each such co-inventor) was a NOAA employee at the time the invention was made (NOAA Laboratories may supplement this Administrative Order to increase the inventor's percentage). The distribution of such income will be as follows:

a. Income from inventions licensed and managed by NTIS - Within 60 days of the end of any fiscal year, NOAA shall instruct NTIS to pay the inventor(s) 30 percent (or a percentage which is in accordance with NOAA Laboratory supplements to this Administrative Order) of all income received from licenses on their invention and credited to the NOAA account at NTIS during the preceding fiscal year. NOAA shall also instruct NTIS to transfer all of the remaining balance, after the inventor's share and NTIS management fees have been paid, to the NOAA Laboratory responsible for the invention. The NOAA Laboratory receiving such remaining balance shall transfer a majority share to the subordinate laboratory where the invention was actually made. However, the NOAA laboratory may deduct and retain costs associated with a patent application from the subordinate laboratory's majority share.

b. Income from inventions licensed by NOAA Laboratories or on behalf of NOAA Laboratories by an approved invention management service other than NTIS - NOAA Laboratories shall transfer a majority share of the remaining balance of royalties or other income received from licenses on employee inventions, after the inventor's share, patent application and any invention management fees have been paid to the subordinate laboratory where the invention was actually made.

.04 Procedures

a. NOAA Inventors - NOAA Inventors shall prepare and forward invention disclosure statements and Inventions Rights Questionnaires (Forms CD-240) to the appropriate NOAA Laboratory Director (or his/her designee) in accordance with Appendix B and any NOAA Line Office supplements to this Administrative Order.

b. NOAA Laboratory Directors (or their designees) - Shall forward the original invention disclosure statement and Form CD-240 to the DOC Patent Advisor designated by the Chief Counsel for Technology. In addition, NOAA Laboratory Directors shall prepare: (a) a recommendation on whether the Department should or should not pursue a Government-owned patent, and (b) a statement that indicates whether the laboratory will or will not exercise its right to negotiate a license on the invention if an application for a Government owned patent is filed by the DOC Patent Counsel. The laboratory directors' recommendation should include their estimate of the potential for commercial development of the invention. The recommendation and statement shall be forwarded to the NOAA ORTA along with the copies of the invention disclosure statement and CD-240. If the laboratory director is also the inventor or a co-inventor, the appropriate Assistant Administrator must approve the use of laboratory funds for the patent application process.

c. NOAA ORTA - Shall maintain a record of NOAA employee inventions and forward appropriate data and information, including the recommendations of NOAA laboratory directors to the DOC Patent Counsel. If the Department files an application for a Government owned patent and the NOAA laboratory does not wish to exercise its right to negotiate a license on the invention, NOAA will transfer this right to the NTIS.

SIGNED,
Under Secretary for Oceans and Atmosphere

Office of Primary Interest
Office of Chief Scientist
Research and Technology Applications Office (CSRT)


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