Cooperative Research and Development Agreement (CRADA)
Q: Who can enter into a CRADA with NIST?
A: Virtually any organization may enter into a CRADA with NIST. According to statute (15 USC 3710a), "units of State or local government; industrial organizations (including, but not limited to corporations, partnerships, consortia, limited partnerships, and industrial development organizations); or persons" may enter into CRADAs with NIST.
Q: Are there specific clauses in the CRADA regarding U.S. manufacture?
A: Yes, any products embodying CRADA inventions, for sale or use in the U.S., must be manufactured substantially in the U.S. Also, the CRADA partner must agree to conduct its share of CRADA joint research substantially in the U.S. during the term of the CRADA.
Q: Does a CRADA protect an organization's proprietary information?
A: NIST must protect proprietary information it accepts in a CRADA.
Q: How does NIST treat the research results of a CRADA?
A: NIST believes that US industry needs open access to NIST's technical information and emphasizes publication of its research results. Yet, NIST also recognizes that its research partner may desire and need time to gain competitive advantage from its investment in joint R&D efforts with NIST. Thus, NIST provides some flexibility in its arrangements with its research partners. NIST may provide up to one year protection of CRADA research results if NIST's principal investigator feels that it would be appropriate to do so. In extraordinary cases, with the Laboratory Director's approval, NIST may withhold publication of its CRADA research for up to five years if NIST determines that to do so would be in the public interest.
Q: Can a CRADA partner's researcher work at the NIST site?
A: Yes, and likewise, a NIST researcher that is designated to work on the CRADA may, with the CRADA partner's acceptance, work at the partner's site.
Q: When should the Domestic Associate Agreement (DGRA) be used?
A: The Domestic Associate Agreement is used when the Guest Researcher will work at NIST on an extended basis collaboratively with NIST research staff on projects of mutual interest.
Q: What are the criteria for a Domestic Guest Researcher?
A: A Domestic Guest Researcher is: (1) a technically qualified U.S. citizen; (2) working with NIST staff on a project of mutual interest; (3) sponsored by an organization or self-employed (such as a student or an employee of another federal agency, state or local government, profit or nonprofit organization); and (4) is working at NIST under the auspices of a Domestic Guest Researcher Agreement. Domestic guest access is also provided for U.S. citizens working under NIST funding agreements (contract, grant/fellowship, cooperative agreement or simplified acquisition) that have not been specifically identified in the funding agreement.
Q: Who owns intellectual property rights if an invention occurs during the collaboration?
A: If the Domestic Guest Researcher is a non-federal employee, sole Guest Researcher inventions are owned by the Guest Researcher or the employing organization, subject to a government use license. Sole NIST inventions are owned by NIST. Joint inventions shall be jointly owned by NIST and the Guest Researcher or his/her employing organization.
Q: Can NIST grant my company an exclusive license?
A: Yes, under certain conditions: (1) NIST determines that it has ownership rights in the invention; (2) NIST publicly announces the availability of the technology for licensing; (3) NIST makes a further announcement of its intent to grant your company an exclusive license and gives the public an opportunity to comment and/or object; and (4) NIST makes the statutorily required "Determination" that the grant of the exclusive license is in the public interest.
Q: How is the amount of the royalty determined? Is it used to pay NIST back for the cost of the NIST research?
A: NIST does not base the royalty on what it would take to recoup research costs. Royalties are based on many factors including, but not limited to: the type of license granted (exclusive, nonexclusive, field of use, etc.), the stage of the invention (i.e., how long it will take and how much it will cost for the licensee to commercialize the technology), whether or not it is a joint or sole NIST invention, the "going rate" of royalties typical for the particular industry, the size of the company, foreign competition, etc.
Q: What is there to prevent a company from licensing a NIST invention and then just sitting on it?
A: Potential licensees must submit a plan for actively developing and commercializing the technology. NIST uses it to establish certain technical and commercial milestones in the license agreement which the licensee must meet in order to retain the license. (Although it is common for unexpected problems to occur during development and/or commercialization, the license would not be taken away if the licensee was showing good faith in solving such problems.)
Q: I work for a large multinational company with manufacturing facilities throughout the world that is interested in licensing a NIST invention. However, we would not be interested if we could only use the licensed technology in the U.S. Can the technology granted in a license be used to manufacture outside the U.S.?
A: Statute and NIST policy permit products for sale or use outside the U.S. using technology licensed from NIST to be manufactured outside the U.S. However, products for sale or use in the U.S. made using technology licensed from NIST must be manufactured substantially in the U.S.
Q: Scientific information is traditionally traded freely among researchers. Why is NIST concerned about proprietary information?
A: When NIST accepts proprietary information, NIST assumes the legal duty not to use that information in its intramural research and publications or take any other action that would divulge the information without the express consent of the owner of the information. This duty falls directly on the NIST recipient if he/she has accepted the information. Divulging or improperly using the information without permission of the owner is a criminal violation of the Trade Secrets Act.
Q: Do NIST personnel share my proprietary information with NIST colleagues engaged in similar research?
A: No, revealing such information to anyone who has not signed the Nondisclosure Agreement would be a violation of the Agreement. Further, the ability of all recipients to continue research in the field could be jeopardized.
Q: A NIST scientist's research is paid for by the public and is important to industry. Why would any of NIST's information be proprietary?
A: An important part of NIST's mission is to strengthen the competitiveness of U.S. industry. To this end, NIST encourages the use of its research results. In some cases, obtaining patent protection provides a needed incentive to encourage implementation of NIST's research results by U.S. industry. The Nondisclosure Agreement preserves NIST's ability to file for a patent. Disclosure of the technology before the patent is filed eliminates the possibility of filing for foreign patent protection. Public disclosure also initiates the one year time limit on filing the U. S. patent application. Further, it is NIST policy for reasons of fairness that, if a technology is made known to one company, its availability has to be made known to the industry at large through established procedures.
Q: Can I share proprietary information with NIST colleagues in another division engaged in similar research?
A: No, revealing such information to anyone who has not signed the Nondisclosure Agreement would be a violation of the Agreement. Further, the ability of you or your colleagues to continue research in this area could be jeopardized.
Q: Is a separate Nondisclosure Agreement needed to receive proprietary information under a CRADA?
A: No. The CRADA already provides for the receipt and protection of proprietary information.