Index

Technology and Intellectual Property Management

Introduction/Background

Date of last assessment: October 1999

Departmental Overview

Laboratory Mission

The Stanford Linear Accelerator Center (SLAC) is dedicated to experimental and theoretical research in elementary particle physics and in those fields that make use of its synchrotron radiation facilities, including biology, chemistry, geology, material science and electrical engineering. This includes the development of new techniques in particle acceleration and detection, and of synchrotron radiation sources and associated instrumentation. The Center is operated as a national user facility for the Department of Energy by Stanford University.

Organizational Mission

As one of its goals, SLAC strives to disseminate knowledge and transfer its 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 which 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 the R&D of technology.

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 medical therapy simulation, semiconductor manufacturing, and rf power), 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 to stimulate it.

In FY 00, SLAC saw three inventions disclosed.  A patent application was filed with the U.S. Patent and Trademark Office on one (a document security method utilizing printed microdrops), and provisional applications were filed on the other two (one a mathematical algorithm for determining the structural alignment of proteins, and the other on fluorescent  x-ray imaging and encoding).  Decisions on whether to proceed with patent applications on these two will be made over the next 6 months.  SLAC Patent Award payouts for FY 00 invention activities were $200 to 2 inventors for actions on 2 inventions.

One license was granted to a company for the SLAC EGS4 Code System to eventually be used in a commercial radiotherapy product.  Two other companies expressed interest, but declined to take licenses.  Also, a SLAC database authentication program, GSP, was licensed to a software company.  Licenses to other computer programs were in negotiation in FY 00 and are expected to be signed in FY 01.

Revisions of notices to be attached to software have been completed to better clarify the intended use and to better comply with the Stanford-DOE contract.

OTT also assisted one of its licensees in becoming a vendor to SLAC of compact, high-power X-band rf loads.

The publication of SLAC research results in journals has always been a primary method of transferring technical knowledge to industry and the public.  Approximately 300 papers were published in FY 00, 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, the lab’s own Technology Transfer Support Program, and partners funded by DOE's SBIR Program, the Civilian R&D Foundation, and DOD’s DARPA.

During FY 00, SLAC started 8 new collaborative projects.  Of the new starts, 6 are with small businesses.  Total value of the new projects is 2.2 M$, with 0.6 M$ booked as funds into SLAC. 

OTT received or supported the preparation of 12 proposals (11 from small businesses) for projects valued at 5.1 M$ of which 0.6 M$ was marked as funds to SLAC.  These proposals resulted in 9 awards worth 3.3 M$, with 0.6 M$ identified as coming to SLAC.  SLAC is directly participating in 8 of these projects as a collaborative partner, and 7 are with small businesses.  Collaborative agreements for these projects are presently under negotiations and will be counted as booked projects in FY 01 when they are signed.  The 8 agreements under negotiation in FY 00 are worth 3.1 M$, of which 0.6 M$ will come to SLAC.

SLAC expects normal levels of awards from the SBIR Program in FY 00, and will pursue other funders of tech transfer projects, particularly those with larger awards.

A SLAC Standard CRADA was completed in draft and used a few times in FY 00.  It is awaiting reconciliation with the soon-to-be-DOE-issued revision of the Modular CRADA, after which it will be submitted to OAK for approval in routine use. 

OTT also supported SLAC Tech Pubs in a winning proposal to IBM for the further development of its TECHEXPLORER for use in the SLAC SPIRES-HEP database.

OTT also organized efforts to solicit sponsorship from major Bay Area corporations and private foundations for the SLAC-managed ICALEPCS 2001 Conference on controls.

OTT provided the SLAC position (in extended detail) that no counter-intelligence procedures should be implemented at open labs such as SLAC, whether for tech collaborations with companies or in any other area at the lab.

Discussion of Overall Performance

SLAC's Office of Technology Transfer (OTT) operated well in FY 00.  The staff is competent and committed to their work.

The technology transfer program at SLAC remains broad and well balanced.  Operations are functioning well, with annual activity holding steady in most areas.  Several new properties are identified each year, and those having some commercial potential enter an exhaustive process of evaluation, protection, packaging, and licensing.  SLAC is now seeing approximately a dozen new cooperative projects initiated each year.  Given this level of activity, a stable tech transfer program continues to be projected into the intermediate future.

Project budget tracking has been moved into the SLAC Budgets Office, where it properly belongs and where project spending profiles can be more easily monitored.

In FY 00, SLAC management provided a temporary, half-time, law student to support OTT in needed legal research on intellectual property and various other aspects of tech transfer.

Both policy and procedure are adequate for the functions of the office, although some are being revised and a few need to be moved from draft to final version in the coming year.

OTT’s tracking databases are functioning adequately, but care must be taken to keep them up to date.

Problem Analysis

Root-Cause Analysis

There are no fundamental insufficiencies in SLAC’s tech transfer operations at this time.  Hence, no root cause analysis of such is necessary.  There are various operational improvements desired.

Barrier(s) to Improvement

A factor seen by OTT as a potential barrier to optimal operations is a lack of one to two additional professional staff needed to match the requirements of a substantial caseload.  More professional training for the associates in the areas of policy, law, regulation, marketing, and perhaps investment financing must be provided (although it conflicts time-wise with the burden of casework).

Improvement Action Plan and Goals for 2000

Recognized areas of improvement

In the coming year the SLAC Office of Technology Transfer’s first priority will continue to be software management.  Software licensing is expected to be the most rewarding licensing effort in the foreseeable future.

OTT would like to devote more resources to marketing and licensing newly patented inventions. 

OTT still needs to more closely administer the working collaborations to track progress and identify early the generated intellectual property.

The influx of work is fairly high and presents a strain on the professional staff.  Eventually additional staff will be necessary or a cap on incoming work will have to be imposed.

Goals for FY 2001

The major goals for FY 01 are to:

1. Replace OTT’s irreplaceable Office Manager who moved out of the area,

2. Package, protect, and license specific, maturing computer programs,

3. Devote more resources to marketing and licensing patented inventions,

4. Target other, larger funders of tech transfer collaborations,

5. Induce Project Managers into better compliance with project management and reporting requirements, and

6. Provide professional training to the staff.