DOE direct research and development transactions include contracts, grants, and cooperative agreements, and technology investment agreements (TIA’s), other transaction agreements (OTAs), and partnership intermediary agreements. For transactions other than TIA’s and OTAs, the US Government will have certain rights, set forth by statute, in any invention conceived or first actually reduced to practice under the agreement. 42 U.S.C. 5908 provides that title to such inventions vests in the United States, except where 35 U.S.C. 202 provides otherwise for nonprofit organizations or small businesses. However, the Department may waive all or any part of the U.S. Government’s invention rights, subject to certain conditions.
A TIA is a special type of assistance instrument authorized by 42 U.S.C. 7256(g) that offers more flexibility to vary intellectual property provisions from those set forth in 42 U.S.C. 5908 and 35 U.S.C. 202. It is used to increase involvement of commercial firms in the Department of Energy's (DOE) research, development and demonstration (RD&D) programs.
OTAs are defined by that which they are not (i.e. contracts, leases, grants, cooperative agreements). They are outside the scope of the Bayh-Dole Act as they do not meet the definition of “funding agreement” in 35 U.S.C. 201. They are not governed by Federal Acquisition Regulations or financial assistance and thus potentially speed up (though they can slow down) the award process while reducing barriers to entry for non-traditional industry partners. Accordingly, OTAs provides considerable flexibilities beyond those that are typically available through other funding instruments like acquisition agreements, cooperative agreements and grants.
Partnership Intermediary Agreements (PIAs) are agreements between the Federal government and non-Federal partners (partnership intermediaries or PIs) designed to increase outreach to and engagement with small business firms, institutes of higher education, and non-traditional partners. PIAs are not intended to replace financial assistance or acquisition vehicles. PIAs are best utilized when traditional mechanisms do not provide adequate outreach or engagement with non-traditional contractors, or when providing additional flexibility and reducing barriers to entry to such entities is imperative.
For technical data, normally, the Government has unlimited rights in technical data first produced under a DOE agreement. Delivery of, or third party licensing of, data or proprietary software developed solely at private expense will not normally be required, except as may be specifically negotiated in a particular agreement to satisfy DOE’s needs, or to ensure commercialization of technology developed under a DOE agreement. Under a TIA, or certain other DOE programs, there may be authority to protect certain first produced data from disclosure outside the Government for a limited period of time.
Standard Intellectual Property Provisions for DOE Assistance Instruments