Blockbuster USDA Inventions

Blockbuster USDA Inventions
•
1940s
– Developed submerged fermentation process for penicillin
production
– Discovered epoxidation – enabling production of flexible vinyl
•
1950s
– Invented DEET insect repellant
– Established standards still used for preserving taste, color and
texture in frozen foods
•
1960s
– Developed permanent press cotton, shrink-proof wool, and
permanent creases in wool clothing
•
1970s
– Invented first superabsorbents (now over 1 billion tons/yr
industry); cornstarch-based) Super-Slurper still used in baby
powder, wound dressings and fuel filters
– Invented soy-based inks
USDA Technology Transfer Goals
1. Broad U.S. public benefit (e.g., economic impact ‐ economic development, security, and global competitiveness) is the primary
objective, not income
2. Facilitate (1) adoption of technologies enabled by federal research, and (2) research partnerships supporting ARS’ mission
3. Patent intellectual property only when needed to maximize public benefit
Commercialization Partners Critical
to ARS Mission
Market Intelligence Economic Impacts Commercialization
Partners
Technical
Targets Commercial Deployment ARS
Research ARS Project Planning
• Identify actual or potential commercialization partner(s) needed to…
– optimally deploy resulting technologies
– estimate potential economic impact of the research
– specify technical targets
• Solicit input from potential commercialization partners to help guide research and facilitate eventual technology transfer
• Annually update potential impact, commercialization partners, and progress towards technical targets
• Non‐CRADA invention requires partner feedback on commercial utility before patent application
Agreements for Commercial Partners
with IP protection:  Cooperative Research and Development



Agreement (CRADA)
Confidentiality Agreement
Material Transfer Agreement
Material Transfer Research Agreement
without IP protection:
 Trust Fund Cooperative Agreement
 Memorandum of Understanding
CRADA
• One project ‐ one agreement (but can negotiate framework for multiple CRADAs)
• Confidentiality provisions
• IP protection
• CRADA partner has first right to exclusively license patentable technology from CRADA
• ARS automatically patents ARS invention arising from CRADA
Confidentiality Agreement
• Only used when contemplating partnership
• Protects patent rights
• Can be one‐way or two‐way
• Will not disclose or receive confidential information without CA
Material Transfer Research Agreement
• Transferring materials which may be or will be or are patented
• Protects material ownership
• Flexible Agreement
 allows cooperative research
 allows transfer of funds