Legislation of the USA

Return on Investment Initiative for Unleashing American Innovation. Draft Green Paper. December 2018

Technology Transfer Desk Reference (Developed by Federal Laboratory Consortium for Technology Transfer, USA). Sixth edition. – 2013.

Federal Technology Transfer Legislation and Policy (a.k.a. “the Green Book”). Fifth Edition. - 2013.

Federal Technology Transfer Legislation and Policy (a.k.a. “the Green Book”). Fourth Edition. - 2009.

Technology Transfer Desk Reference (Developed by Federal Laboratory Consortium for Technology Transfer, USA). - 2006.

Federal Technology Transfer Legislation and Policy (a.k.a. “the Green Book”). - 2005.

The  compendium of relevant technology transfer legislation of the USA, listed in chronological order.
Information from Technology Transfer of Federally Funded R&D: Perspectives from a Forum, The RAND Corp. 2003, Appendix B.

The Morrill Land-Grant Act of 1862

• Promoted education and innovation in science and technology by forming a system of publicly supported research universities.

National Aeronautics and Space Act of 1958 (PL 85-568)

• Granted NASA broad discretion in the performance of its functions.

• Authorized the NASA Administrator to enter into and perform such contracts, leases, cooperative agreements, or other transactions as may be necessary in the conduct of its work and on such terms as it may deem appropriate, with any agency or instrumentality of the United States, or with any State, Territory, or possession, or with any political subdivision thereof, or with any person, firm, association, corporation, or educational institution.

• Permitted the Administrator to engage in international cooperative programs pursuant to

NASA’s mission.

The Freedom of Information Act (1966) (PL 104-231) [5 USC 552]

• Provided a vehicle to inform the public about federal government activities.

• Gave citizens the right to request agency records and have them available promptly.

Stevenson-Wydler Technology Innovation Act of 1980 (PL 96-480) [15 USC 3701–3714]

• Focused on dissemination of information.

• Required Federal Laboratories to take an active role in technical cooperation.

• Established Offices of Research and Technology Application at major federal laboratories.

• Established the Center for the Utilization of Federal Technology (in the National Technical Information Service).

Bayh-Dole Act of 1980 (PL 96-517)

• Permitted universities, not-for-profits, and small businesses to obtain title to inventions developed with governmental support.

• Provided early on intellectual property rights protection of invention descriptions from public dissemination and Freedom of Information Act (FOIA).

• Allowed government-owned, government-operated (GOGO) laboratories to grant exclusive licenses to patents.

Small Business Innovation Development Act of 1982 (PL 97-219)

• Required agencies to provide special funds for small-business R&D connected to the agencies’ missions.

• Established the Small Business Innovation Research Program (SBIR).

Cooperative Research Act of 1984 (PL 98-462)

• Eliminated the treble-damage aspect of antitrust concerns of companies wishing to pool research resources and engage in joint precompetitive R&D.

• Resulted in consortia, e.g., the Semiconductor Research Corporation (SRC) and Microelectronics and Computer Technology Corporation (MCC), among others.

Trademark Clarification Act of 1984 (PL 98-620)

• Permitted decisions to be made at the laboratory level in government-owned, contractoroperated (GOCO) laboratories as to awarding licenses for patents.

• Permitted contractors to receive patent royalties for use in R&D or awards, or for education.

• Permitted private companies, regardless of size, to obtain exclusive licenses.

• Permitted laboratories run by universities and nonprofit institutions to retain title to inventions, within limitations.

Japanese Technical Literature Act of 1986 (PL 99-382)

• Improved the availability of Japanese science and engineering literature in the United States.

Federal Technology Transfer Act of 1986 (PL 99-502)

• Made technology transfer a responsibility of all federal laboratory scientists and engineers.

• Mandated that technology transfer responsibility be considered in employee performance evaluations.

• Established a principle of royalty sharing for federal inventors (15 percent minimum) and set up a reward system for other innovators.

• Legislated a charter for the Federal Laboratory Consortium for Technology Transfer and provided a funding mechanism for that organization to carry out its work.

• Provided specific requirements, incentives and authorities for the Federal Laboratories.

• Empowered each agency to give the director of GOCO laboratories authority to enter into cooperative R&D agreements and negotiate licensing agreements with streamlined headquarters review.

• Allowed laboratories to make advance agreements with large and small companies on title and license to inventions resulting from Cooperative R&D Agreements (CRADAs) with government laboratories.

• Allowed directors of GOGO laboratories to negotiate licensing agreements for inventions made at their laboratories.

• Provided for exchanging GOGO laboratory personnel, services, and equipment with their research partners.

• Made it possible to grant and waive rights to GOGO laboratory inventions and intellectual property.

• Allowed current and former federal employees to participate in commercial development, to the extent that there is no conflict of interest.

Malcolm Baldrige National Quality Improvement Act of 1987 (PL 100-107)

• Established categories and criteria for the Malcolm Baldrige National Industry Award.

Executive Orders 12591 and 12618 (1987): Facilitating Access to Science and Technology

• Promoted the commercialization of science and technology.

Omnibus Trade and Competitiveness Act of 1988 (PL 100-148)

• Placed emphasis on the need for public/private cooperation in assuring full use of results and resources.

• Established centers for transferring manufacturing technology.

• Established Industrial Extension Services within states and an information clearinghouse on successful state and local technology programs.

• Changed the name of the National Bureau of Standards to the National Institute of Standards and Technology and broadened its technology transfer role.

• Extended royalty payment requirements to nongovernment employees of federal laboratories.

• Authorized Training Technology Transfer centers administered by the Department of Education.

National Institute of Standards and Technology Authorization Act for FY

1989 (PL 100-519)

• Established a Technology Administration within the Department of Commerce.

• Permitted contractual consideration for rights to intellectual property, other than patents, in cooperative research and development agreements.

• Included software development contributors eligible for awards.

• Clarified the rights of guest worker inventors regarding royalties.

Water Resources Development Act of 1988 (PL 100-676)

• Authorized Army Corps of Engineers laboratories and research centers to enter into cooperative research and development agreements.

• Allowed the Corps to fund up to 50 percent of the cost of the cooperative project.

National Competitiveness Technology Transfer Act of 1989 (PL 101-189)

• Granted GOCO federal laboratories the opportunity to enter into CRADAs and other activities with universities and private industry, under essentially the same terms as stated under the Federal Technology Transfer Act of 1986.

• Allowed information and innovations, brought into and created through cooperative agreements, to be protected from disclosure.

• Provided a technology transfer mission for the nuclear weapons laboratories.

Defense Authorization Act for FY 1991 (PL 101-510)

• Established model programs for national defense laboratories to demonstrate successful relationships among federal government, state and local governments, and small businesses.

• Provided for a federal laboratory to enter into a contract or memorandum of understanding with a partnership intermediary to perform services related to cooperative or joint activities with small businesses.

• Provided for the development and implementation of a National Defense Manufacturing Technology Plan.

Intermodal Surface Transportation Efficiency Act of 1991 (PL 102-240)

• Authorized the Department of Transportation to provide not more than 50 percent of the cost of CRADAs for highway research and development.

• Encouraged innovative solutions to highway problems and stimulated the marketing of new technologies on a cost-shared basis of more than 50 percent if there is substantial public interest or benefit.

American Technology Preeminence Act of 1991 (PL 102-245)

• Extended Federal Laboratory Consortium (FLC) mandate, removed FLC responsibility for conducting a grant program, and required the inclusion of the results of an independent annual audit in the FLC Annual Report to Congress and the President.

• Included intellectual property as potential contributions under CRADAs.

• Required the Secretary of Commerce to report on the advisability of authoring a new form of CRADA that permits federal contributions of funds.

• Allowed laboratory directors to give excess equipment to educational institutions and nonprofit organizations as a gift.

Small Business Technology Transfer (STTR) Act of 1992 (PL 102-564)

• Established a three-year pilot program—Small Business Technology Transfer (STTR)—at the Department of Defense (DoD), Department of Energy (DOE), Department of Health and Human Services (HHS), the National Aeronautics and Space Administration (NASA), and the National Science Foundation (NSF).

• Directed the Small Business Administration (SBA) to oversee and coordinate the implementation of the STTR Program.

• Designed the STTR to be similar to the Small Business Innovation Research (SBIR) program.

• Required each of the five agencies listed above to fund cooperative R&D projects involving a small company and a researcher at a university, federally funded research and development center, or nonprofit research center.

National Department of Defense Authorization Act for 1993 (PL 102-25)

• Facilitated and encouraged technology transfer to small businesses.

National Defense Authorization Act for Fiscal Year 1993 (PL 102-484)

• Established the DoD Office of Technology Transition.

• Extended the streamlining of small-business technology transfer procedures for nonfederal laboratory contractors.

• Directed the DOE to issue guidelines to facilitate technology transfer to small businesses.

• Extended the potential for CRADAs to some DoD-funded Federally Funded Research and Development Centers (FFRDCs) not owned by the government.

National Defense Authorization Act for Fiscal Year 1994 (PL 103-160)

• Broadened the definition of a laboratory to include the weapons production facilities of the DOE.

National Technology Transfer and Advancement Act of 1995 (PL 104-113)

• Gave CRADA partners sufficient intellectual property rights to justify prompt commercialization of inventions resulting from a CRADA.

• Authorized CRADA partners the right to an exclusive or nonexclusive license resulting from a CRADA.

Technology Transfer Commercialization Act of 2000 (PL 106-404)

• Improved the ability of federal agencies to license federally owned inventions by reforming technology training authorities under the Bayh-Dole Act.

• Permitted laboratories to bring already existing government inventions into a CRADA.

Energy Policy Act of 2005 (P.L. 109-58)

• Established, within the Department of Energy, a technology transfer coordinator as the principal advisor to the secretary on all matters related to technology transfer and commercialization.

• Established a technology transfer working group to coordinate technology transfer activities at the DOE labs (with oversight by the technology transfer coordinator).

• Established an energy technology commercialization fund to provide matching funds with private partners to promote energy technologies for commercial purposes.

America COMPETES Act (P.L. 110-69)

• Authorized programs in multiple agencies focused on the overarching themes of increasing funding for basic research.

• Strengthening teache  capabilities and encouraging student opportunities in science, technology, engineering and mathematics (STEM) educational programs.

• Enhancing support for higher risk, higher reward research; and supporting early career research programs for young investigators.