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Intellectual Property

US national labs offer royalty-free patent licenses

The nonexclusive licenses, available on more than 1,000 technologies, will expire at the end of 2020

by Craig Bettenhausen
April 30, 2020 | APPEARED IN VOLUME 98, ISSUE 17

09817-polcon5-patent.jpg
Credit: US Patent 10,348,241
This combined solar thermal and photovoltaic energy collector is from one of more than a thousand patents that US national labs are licensing for free until the end of 2020.

Sandia National Laboratories and Idaho National Laboratory (INL) have opened their patent libraries as a form of economic stimulus in response to the COVID-19 pandemic. Any US legal resident or business can get free, although temporary and nonexclusive, licenses for any of more than 1,000 patents held by Sandia and more than 140 patents held by INL.

Both labs are part of the US Department of Energy’s nuclear program, and research at the sites includes a wide range of energy, materials, and chemistry topics. Sandia is run by a Honeywell subsidiary and the INL is run by Battelle.

Sandia’s offerings include methods for making biofuels from algae and distiller’s grain, a wear-resistant gold-platinum alloy, and various battery chemistries, as just a few examples. The INL’s library includes patents on gas separation, syngas production and conversion, nuclear fuel, and more.

The royalty-free licenses will expire on Dec. 31, 2020, so anyone taking the labs up on the offer will need to move fast and be ready to negotiate a longer-term deal with the labs. “It’s a short runway within which to choose a patent to license, to obtain the license, and to develop product/process with the benefit of the license,” says Kendrew Colton, a partner in the patent practice at Fitch, Even, Tabin & Flannery and a member of C&EN’s advisory board.

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Both labs tell C&EN that at the end of the year, they’ll develop a standard license with anyone who would like to keep using the intellectual property they access under the program. “In our experience, every potential licensee has different needs,” INL director of technology deployment Jason Stolworthy says. “So I would encourage the business or entrepreneur to simply ask for what they need to be successful.”

Technology transfer deals usually take months to sort out, a process Sandia and the INL hope to cut down to days with this program. “The overarching goal is to promote creativity and resilience in our economy, and that will hopefully be increased by ease of access to our suite of technologies,” says Joel Sikora, who leads intellectual property licensing at Sandia

The licenses are not limited to obvious and direct COVID-19 response measures. “We also don’t presume to understand all the different needs businesses might have, which may extend well beyond the pandemic itself. Because of that, there are no qualifying or disqualifying intended uses,” Sikora says.

Other labs may come out with similar programs soon, but no official word was available as of C&EN’s deadline. The DOE says its central technology transfer office is tracking COVID-19 response efforts at all 17 national labs and looking into how it can apply its internal capabilities to pandemic response and recovery, such as connecting the public with staff experts.

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