Performance Based Management
Self-Assessment Report
October 2004

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Technology and Intellectual Property Management

Introduction/Background

Point of Contact:  Jim Simpson
Telephone No.:  (650) 926-2213
E-mail:  jsimpson@slac.stanford.edu

Date of last assessment: October 2003

Department Overview

Laboratory Mission

The Stanford Linear Accelerator Center is the lead Department of Energy (DOE) laboratory for electron-based high energy physics. It is dedicated to research in elementary particle physics, accelerator physics and in allied fields that can make use of its synchrotron radiation facilities—including biology, chemistry, geology, materials science and environmental engineering. Operated on behalf of the DOE by Stanford University, SLAC is a national user facility serving universities, industry and other research institutions throughout the world. Its mission can be summarized as follows:

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Perform world-class research in high energy physics, particle astrophysics and cosmology, and in the use of synchrotron radiation

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Provide accelerators, detectors, instrumentation and support for national and international research programs in elementary particle physics and allied fields that use synchrotron radiation

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Advance the art of accelerators and related devices through development of sources of high energy particles and synchrotron radiation, plus new techniques for their scientific utilization

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Advance the critical technologies necessary to maintain its leadership and excellence in particle physics, accelerator physics, particle astrophysics and cosmology, and synchrotron radiation

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Transfer practical knowledge and innovative technology to the private sector

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Contribute to the education of the next generation of scientists and engineers, and to the scientific awareness of the public

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Achieve and maintain excellence in matters of environmental concern and provide for the safety and health of its staff and the general public.

Organization Mission

As one of its goals, SLAC strives to disseminate new knowledge and transfer its novel technology to other organizations, which can develop new and better goods and services for all. SLAC supports this goal by: 1) identifying technologies developed within the laboratory that have potential uses outside of SLAC, then promoting their transfer to other laboratories, universities, and particularly industry; and 2) engaging partners in cooperative projects focused on technology R&D.

Self-Assessment Report Staff

Names, titles, affiliations of participants

Jim Simpson, Administrator, Technology Transfer, Business Services Division

Discussion of Individual Performance Objectives

Performance Objective:       

The mission of the Technology and Intellectual Property Management Program at SLAC is to manage the utilization, protection, and transfer of laboratory technology and intellectual property to benefit DOE, SLAC, the scientific community, and private industry.

Performance Criterion 1:    

Technology and intellectual property are effectively managed for the benefit of DOE, SLAC, the scientific community, and the private sector.

Performance Measure 1:                 

Key technologies and inventions are identified, assessed, disclosed, and given intellectual property protection as necessary; technology that is transferred and intellectual property that is licensed provide value to DOE, SLAC, and the recipient.

Findings

SLAC manages its intellectual property by a process of disclosing, assessing, protecting, and licensing the property.  For technologies that have particular commercial potential, a market assessment is made, protection is arranged, and licensees are sought.  In this endeavor, SLAC can call upon the additional resources of Stanford University.  Income from licensed SLAC technology is administered under University policy and procedures on intellectual property, which provides 2/3 of net royalties to the Lab, and the other 1/3 to the inventing or authoring Lab personnel.  SLAC has targeted industrial sectors (such as accelerator simulation, rf power, medical therapy simulation, semiconductor manufacturing, protein modeling, and drug development) in which large value to the licensees could potentially result from SLAC technology.  These sectors continue to be studied and worked.  All reports of technology developed at SLAC are reviewed for important inventions and software, and when warranted, intellectual property protection is sought.  Innovators who have not yet published are sought out and encouraged to consult with SLAC's Office of Technology Transfer (OTT) to determine the status of their potential intellectual property. There is also an inventions awards program, which is meant not only to recognize innovation, but also to stimulate it.

FY 04 saw 3 new inventions evaluated by OTT and disclosed to Stanford and DOE.  Provisional applications were filed with the U.S. Patent and Trademark Office for two of these, one an inertial confinement fusion x-ray igniter and the second a nested off-center bushing used in alignment of mechanical features.  Provisional applications were also submitted for two inventions disclosed in the prior year, related to broadband signal processing and neural network controls.  One patent was issued for an invention related to document authentication utilizing color microdrop combinatorics.  SLAC Patent Award payouts for FY 04 invention activities were $300 to 3 inventors for actions on 3 inventions.

A SLAC spin-off company exercised its option and executed a long term license on the SLAC compact Compton x-ray source.  The company began marketing efforts for its miniature synchrotron light source in FY 04.  Substantial royalties are expected to flow over the next decade from several fields of use, including structural biology and semiconductor manufacturing. 

OTT began marketing efforts for EGS5, an upgrade to EGS4, the widely used radiation shielding code, expected to be completed in FY05.  OTT evaluated several other software cases, but determined no action was warranted due to various factors.  Open source software procedures were drafted and are being vetted prior to implementation.  Various formal notices regarding copyright, sponsorship, disclaimers, etc. were issued for use with SLAC software.

A number of analyses and determinations were made regarding the management of intellectual property.  Issues worked included SLAC open source software policy, IP waivers in use agreements, ownership of copyright to SLAC papers, the new contract mods’ impact on tech transfer procedures, and export control.

OTT made particular in-reach efforts with SSRL physicists to stimulate considerations of possible commercial applications of their work in molecular imaging and the need for intellectual property protection.  These efforts will continue in the coming year.

A few SLAC drawings and material processing procedures were distributed freely to sister labs, universities, and companies, both foreign and domestic.

Regarding staff training in intellectual property:

  1. one staff member began auditing a course at the Stanford Law school on intellectual property in cyberspace;
  2. another attended the Santa Clara County Bar Association’s continuing professional education course on licensing open source software.

The publication of SLAC research results in journals is a primary method of transferring technical knowledge to industry and the public.  Approximately 414 SLAC papers were published in FY 04, all reviewed for technology that might be commercializable.

Performance Criterion 2:    

The structuring and administration of collaborative R&D projects with non-Federal partners for the development of innovative technology.

Performance Measure 2:                 

Collaborative R&D projects provide benefit to DOE, SLAC, the scientific community, and the private sector.

Findings:

A large part of OTT’s work is the structuring and administration of collaborative R&D projects.  The range of technologies across these projects is as broad as the laboratory’s charter.  SLAC's efforts on these projects are supported in part by DOE Programs at the Lab; partners funded by DOE's SBIR Program, and other governmental agencies; and the partners’ private funds.

In FY 04 SLAC executed 3 new CRADAs for collaborative projects involving both hardware and software technologies.  Total value of the new projects is 2.0 M$, with 172 k$ booked as funds into SLAC.  Three other CRADAs are under negotiations.  These projects are valued at 1.6 M$, of which 430 k$ will be funds into SLAC.  Three projects were completed which had total value of 1.1 M$ of which 304 k$ came to SLAC.  One collaborative project was ongoing throughout the whole year.  Several potential collaborative projects are currently under study by OTT.

Of the 10 companies referred to above, 9 are with small businesses, relying almost exclusively on third party funding, in this case the DOE SBIR Program.  In an effort to identify other third party financing, SLAC OTT has looked into DARPA and DHS opportunities.  These and others sources will continue to be pursued, along with partners large enough to fund themselves.

Outreach efforts included networking at various meetings on micro-arrays used for drug discovery, nanofabrication, radiation shielding software (EGS), and entrepreneurial groups.  OTT hosted visits from the Hong Kong Innovation and Technology Commission regarding tech transfer policy and management, Chinese University of Hong Kong MBA students, the Korea Advanced Institute of Science and Technology, and hosted 17 SLAC facility tours.

OTT also typically analyzes various pieces of legislation and proposed regulations, as well as new laws, and implements laws and regulations that affect collaborative tech transfer.

Regarding use of SPEAR3, there were 741 on-site users, of which 49 are industrial (all domestic), and another 775 off-site individuals affiliated with those working on site, resulting in an estimated 1,516 users.

There were also 1554 high-energy physics users of SLAC facilities (other than SPEAR3).  All these users were academic, none industrial.

Discussion of Overall Performance

The technology transfer program at SLAC remains broad and well balanced.  Operations are functioning well enough.  As usual, several new technologies are identified each year, and those having some commercial potential enter an exhaustive process of evaluation, protection, packaging, and licensing.  And, SLAC sees several new cooperative projects initiated each year, although more are sought.  A stable tech transfer program continues to be projected into the intermediate future.

Problem Analysis

Root-Cause Analysis

There are no structural problems affecting SLAC’s tech transfer operations at this time (other than the routine need for additional staff to match the work load).  Hence, no root cause analysis is required.

 Barriers to Improvement

OTT has the organizational and procedural structures in place to operate, but is hampered by the lack of additional hands and associated resources to administer the office in a more productive manner.  Because tech transfer cases have lifetimes that range from several years to sometimes decades, there has been an accumulation of cases which need periodic administration and analysis for reporting, in addition to active promotion of their technologies.  Thus, the need to manage the accumulation tends to divert resources from seeking out new, high-potential SLAC technology and self-funded partners.  To better perform both critical functions, managing and initiating, OTT needs to begin a program of incrementally increasing administrative and professional staff over time.

Improvement Action Plan and Goals for 2005

Recognized areas of improvement

  1. More effort must be made to find self-funded collaborators.  Improvement here would eliminate the long lead times and excessive administration associated with third party financing.
  2. SLAC is too depended on small businesses for developing and marketing SLAC technologies.  Large companies with the needed resources should be targeted instead.
  3. OTT needs thorough and continuous analysis of operations to improve the flow of cases and to assist in setting priorities and OTT initiatives.
  4. OTT processes need to be reviewed for compliance with changing contractual and regulatory requirements.

 Goals for FY 2005

The major goals for FY 05 are to:

  1. Collaborate with more large businesses that are self-funded.
  2. Establish an operations analysis function within OTT
  3. Ensure that major OTT procedures comply with recent changes in contractual and regulatory requirements.
  4. Along with SLAC technical staff, define projects that would develop SLAC technology to a more commercial stage, thus attracting partners and licensees.

 

 

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