Granting of Patent Licenses
To encourage widespread utilization of inventions covered by DOE owned patents.
General information about this opportunity
Last Known Status
Deleted 04/02/2020 (Archived.)
Agency: Department of Energy
Type(s) of Assistance Offered
DISSEMINATION OF TECHNICAL INFORMATION
Fiscal Year 2014: No updates. Fiscal Year 2015: We estimate 2 patent licenses in FY 2015. Fiscal Year 2016: No Current Data Available
Atomic Energy Act of 1954, Sections 156 and 161(g), as amended, Public Law 83- 703, 68 Stat. 919, 42 U.S.C. 2186 and 2201; Department of Energy Organization Act of 1977, as amended, Public Law 95-91, 42 U.S.C. 7101 ; Public Law 96-517, 35 U.S.C. 207, 208, 209.
Who is eligible to apply/benefit from this assistance?
Individuals, firms, or corporations with satisfactory plans and intentions to commercialize the invention may apply.
Individuals, firms, and corporations will benefit.
Satisfactory plans for development and/or marketing of the invention. In the case of corporations, the State of incorporation. This program is excluded from coverage under 2 CFR 200, Subpart E - Cost Principles.
What is the process for applying and being award this assistance?
Preapplication coordination is required. Environmental impact information is not required for this program. This program is excluded from coverage under E.O. 12372.
This program is excluded from coverage under 2 CFR 200, Uniform Administrative Requirements, Cost Principles, and Audit Requirements for Federal Awards. By letter to the Assistant General Counsel for Technology Transfer and Intellectual Property, DOE, Washington, DC 20585, identifying the patent by its number, together with information as to: (1) The nature and type of the applicant's business; (2) the purpose for which the license is desired together with documentation as to the applicant's plan for development and/or marketing of the invention to achieve that purpose; (3) the geographical areas in which the applicant will practice the invention; (4) the applicant's willingness to render periodic reports on the use of the licensed subject matter; (5) the applicant's status as a small business firm, minority business, or other; and (6) remittance of a $25 processing fee for each license requested.
Patent licenses are issued by the Office of the Assistant General Counsel for Technology Transfer and Intellectual Property, DOE.
Approval/Disapproval Decision Time
Normally three months for nonexclusive licenses; somewhat longer for exclusive licenses.
Applicants denied a license and revoked licensees have the right to appeal in accordance with 10 CFR 781 by filing notice of appeal within 30 days. Appeals board is designated upon filing of notice of appeal.
Licenses may be renewed upon reapplication, contingent on satisfactory performance.
How are proposals selected?
Nonexclusive licenses - satisfactory plan for development and/or marketing of the invention. Exclusive licenses in addition, a determination in accordance with 35 U.S.C. 209(c) that exclusivity is reasonable and necessary for commercialization.
How may assistance be used?
Nonexclusive, revocable licenses are granted by Department of Energy (DOE) to responsible applicants with plans for development and/or marketing on approximately 1,500 DOE owned United State patents. Exclusive and partially exclusive licenses may also be granted. Similar licenses on approximately 200 DOE owned foreign patents may be accorded to United State citizens and corporations, and to others under terms and conditions which depend upon particular facts. Licenses for use or sale in the United States may normally be granted only to licensees that agree to substantial manufacture in the United States. Copies of U.S. patents may be obtained from the United States Patent and Trademark Office, Department of Commerce, Washington, DC 20231, for a modest fee.
What are the requirements after being awarded this opportunity?
No program reports are required. If license is royalty bearing, DOE has the right to inspect the books of account as necessary to determine accuracy of statement. Annual reports are required to be submitted as to the extent of utilization and royalties due, if applicable. No expenditure reports are required. No performance monitoring is required.
This program is excluded from coverage under 2 CFR 200, Subpart F - Audit Requirements. If license is royalty bearing, DOE has the right to inspect the books of account as necessary to determine accuracy of statement.
None except where the specific license provides for payment of royalty.
Other Assistance Considerations
Formula and Matching Requirements
This program has no statutory formula.
This program has no matching requirements.
This program does not have MOE requirements.
Length and Time Phasing of Assistance
There are no funds obligated under this program. See the following for information on how assistance is awarded/released: There are no funds obligated under this program.
Who do I contact about this opportunity?
Regional or Local Office
John T. Lucas, Office of the Assistant General Counsel for Technology Transfer, 1000 Independence Ave, SW, Washington, District of Columbia 20585 Phone: (202) 586-2802
(Dissemination of Technical Information) FY 14 Not Separately Identifiable; FY 15 Not Separately Identifiable; and FY 16 Not Separately Identifiable - There are no dollars obligated under this program.
Range and Average of Financial Assistance
No dollars are obligated under this program.
Regulations, Guidelines and Literature
Licensing of government owned inventions (37 CFR 404). 10 CFR 781, DOE Patent Licensing Regulations; "DOE Invention Licensing Program" describes the program and is available at http://www.osti.gov/gencoun/.
Examples of Funded Projects