Battelle Energy Alliance (BEA), the management and operating contractor at Idaho National Laboratory (INL), makes available for licensing contractor-owned inventions for commercialization by U.S. and foreign companies and organizations. INL usually licenses its intellectual property terms similar to universities, other research organizations and industrial firms.
Grant of Rights
Various licensing terms may be negotiated, including both exclusive and nonexclusive license grants. Exclusive licenses may be in certain fields of use, geographic areas, or according to other terms. Co-exclusive and partially exclusive licenses, where exclusive rights to commercialize a technology may be shared by several organizations or restricted by area of use, territory or other terms, also may be granted. For example, one company may obtain exclusive rights to use an invention in the energy industry, while another exclusively licenses the same invention for application in the food industry.
Royalties and Payments
INL licensing royalties are comparable to those charged by universities, other research organizations and the private sector. Licenses usually require an upfront, nonrefundable payment, royalty payments based on sales, and a minimum annual royalty. The fees will vary depending on the number of patents licensed, the demand for the technology and the exclusivity of the license. Licensees obtaining foreign rights may be asked to pay cost of preparing, filing and prosecuting foreign patent applications, and the maintenance of all resulting foreign patents.
U.S. Government Retained License
As with all technology developed with federal funds, the U.S. government retains a worldwide, nonexclusive, nontransferable, irrevocable, paid-up license to practice any licensed intellectual property for or on behalf of the U.S. government.
INL is required to preferentially license inventions to U.S.-based firms, particularly those that will develop and manufacture licensed products in the U.S. However, in appropriate circumstances, non-U.S. firms may receive licenses, including broad exclusive licenses for the countries in which they operate, or even receive exclusive worldwide licenses.
The licensee is solely responsible for the commercialization of the licensed inventions. Under specific circumstances, INL may agree to provide technical assistance to the licensee on a full cost recovery basis, if the work is beneficial to INL’s mission objectives.
Limited Warranty and Indemnification
Any license for INL technology will contain a disclaimer of warranties and require indemnification of BEA and the U.S. government.
The license may extend to subsidiaries of the licensee or other parties, if provided for in the license. Further, the license will be nonassignable unless approved by INL, except to the successor of that part of the licensee’s business to which the invention pertains.
An INL license may include the right to grant sublicenses under the license, subject to the approval of INL. Each sublicense shall make reference to the license, including the rights retained by the U.S. government, and a copy of such sublicense must be furnished to INL.
DOE March-In Rights
Although rarely exercised, the Department of Energy (DOE) has certain “March-in Rights” to intellectual property developed with federal funding.
The license will contain a provision recognizing that the export of goods and/or technical data from the U.S. may require an export license from the U.S. government. Failure to obtain an export license may result in criminal liability under U.S. law.
INL’s technology portfolios are organized by Primary Industry Classifications and are managed by commercialization managers with experience in these industries. These technologies are listed on INL’s Technology Deployment website and each portfolio changes as new technologies become available or licensing occurs.