Materials Science and Technology

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Winfred Walters
6 years ago
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1 Materials Science and Technology IP Symposium, New Orleans September 28, 2004 Technology Commercialization and IP Management Corporate Business Development & Partnerships Kevin A. McMahon, Manager Licensing and Intellectual Property Management Sandia is a multiprogram laboratory operated by Sandia Corporation, a Lockheed Martin Company, for the United States Department of Energy s National Nuclear Security Administration under contract DE-AC04-94AL85000.

2 Sandia employs approximately 8,200 employees (plus 2100 on-site contractors) $ 2.2B Operating Budget FY04 Other Engineering 14% Mechanical Engineering 15% Other Fields 11% Physics 8% Electrical Engineering 25% Chemistry 7% Math 3% Computing 11% Other Science 6% ~8,200 full-time employees (~ 900 in California) 1,431 PhDs and 2,235 Masters

3 What/who is Sandia? Is a for profit corporation (Sandia Corporation) incorporated in Delaware Is a subsidiary of Lockheed Martin Corporation Operates Sandia National Laboratories for the US DOE Facilities and equipment are funded by US DOE Programs are funded by DOE, other federal agencies & industrial partners Employees are Sandia Corporation employees Revenues of ~ $2.2 B / year Federally Funded Research and Development Center

weapons components Provides challenging work

4 Partnerships are Essential to Sandia s Success Imports best practices into Labs Commercialization matures technologies (reduces cost, improves reliability) Supports US industry Synergistic with mission Creates a critical supplier base for weapons components Provides challenging work for the staff Builds federal and local constituency Generates revenues

5 IP management: IP is the fuel for high-technology industries IP management and licensing is threaded through all of our partnership agreements with industry Sandia s clear ownership of IP enables a robust licensing program, providing state-of-the-art components to Sandia programs and new products to industry partners Some business cases merit Sandia acquiring an equity position in spin-out companies Because we will never compete with our partners in the commercial marketplace, there is inherent market complementarity in our technology partnerships

6 What is Intellectual Sandia? Patents Copyrights Trademarks Information Trade secrets not allowed Agreement generated information Agreement protected generated information

Sandia s many mechanisms for technology partnering

Entrepreneurial Separation Memoranda of Agreement/

for Other Government Agencies IWTA / Personnel

7 Sandia s many mechanisms for technology partnering Small Business Technical Assistance Licenses Entrepreneurial Separation Memoranda of Agreement/ Understanding Consortia Partnering Mechanisms Work for Other Government Agencies IWTA / Personnel Exchanges CRADAs Non-federal Entity Agreements (NFE) User Facilities

8 Invention IP Subject or Background? Subject Inventions IP (SIP) is IP created during a partnering agreement: Sponsor SIP (Sponsor sole inventor) Sandia SIP (Sandia sole inventor) Sponsor & Sandia SIP (joint inventor-ship) Background Inventions IP (BIP) is IP that is owned by Sponsor or Sandia prior to the execution of a partnering agreement

9 Sandia SIP determinations associated with CRADA* Subject Invention IP (SIP) is IP created (i.e. invented or first actually reduced to practice) during the course of the CRADA, and can be: Sandia SIP SIP created by Sandia during the CRADA, owned by Sandia Partner SIP SIP created by Partner during the CRADA, owned by Partner Joint SIP SIP created jointly by Sandia & Partner during the CRADA, undivided ownership by both Sandia & Partner Partner has statutory rights to Sandia SIP, up to and including exclusive rights in a field of use, and for reasonable compensation *CRADA = Cooperative R&D Agreement

10 Sandia SIP determinations associated with CRADAs (cont d) Partner may wish to negotiate an Agreement to License (ATL) for Sandia SIP to be executed with the CRADA, delineating business terms such as: Level(s) of exclusivity Field(s) of use License issue fees* Running royalties* Minimum annual royalties* *Sandia takes funds-in into consideration

11 Sandia SIP determinations associated with WFO-NFE ( work for hire ) Title to IP generated under a WFO/NFE is typically waived to the Sponsor; however, in some circumstances Sandia may negotiate to retain title. When Sandia retains title, Sponsor may wish to negotiate for make, use and sell rights via an Agreement to License, delineating business terms such as: Exclusivity Field(s) of use Issue fees, running royalties, and minimum annual royalties* *Sandia takes funds-in into consideration. Sandia s standard initial offer is of non-exclusive rights to BIP (to the extent the partner needs to practice SIP).

12 Our top 10 Industrial Partners FY2003 CUSTOMER Lockheed Martin EUVLLC General Atomic Corporation Goodyear Tire & Rubber Company Waters Corporation Daniel Anderson Northrup Grumman 3M Silicon Valley Specialty Metals Proc Consort

13 Win-Win Partnerships Model Task A GOV $ + Task C IND $ Task B Task B Collaboration to do B faster, better, cheaper for each partner DOE Mission Application Industry Application models for polymer performance processes to deposit metals metal casting models & processes advanced lithography microelectronic mfg. equipment reliability models for IC s * * *

search engine Patent # 5,980,084 Research

14 Lockheed Martin Case Study Part Constraints Assembly Constraints Geometry search engine Patent # 5,980,084 Research Process Planning R&D 100 Application Archimedes SNL LDRD Investment ($1 M) Intellectual Property HMP LM/SNL SV Project Archimedes 1-4 Defense Programs Ergonomic Analysis ACIS/STL Input Design Interface Platforms GUI Cost Analysis NASA W. Patt SNL AFRL Applications DOE Hughes Rockwell Lockheed Martin

neutron generator cure schedule by a factor of two Neutron generator Goodyear using

15 Goodyear Case Study Collaboration produced reliable simulation tool to replace build-and-test design method Sandia used improved simulation tool to reduce portions of a neutron generator cure schedule by a factor of two Neutron generator Goodyear using simulation tool to replace costly, time consuming buildand-test method of tire design Simulation of tire performance

COOPERATIVE RESEARCH and DEVELOPMENT AGREEMENT (CRADA)

COOPERATIVE RESEARCH and DEVELOPMENT AGREEMENT (CRADA) National Small Business Conference National Defense Industrial Association (NDIA) Los Angeles Airport Marriott June 1-2, 1 2005 Agenda CRADA Definition