September 10, 2019

1. Michael Dobbs • John LaBarge Emily Schneider September 10, 2019 Providing responsive and impactful legal counsel to our customers and ensuring effective management and protection of DOE funded Intellectual Property.

2. Consortia Overview -- Common Types • Virtual (or legal) association of organizations pooling their resources to achieve a common goal. • Membership • Close (e.g. only originating team) • Open • Intellectual Property (IP) • Preferential access to IP amongst members • Cross Licensing amongst members • Foreground • Background • Lead Institution • Laboratory as a member • Laboratory as Lead • Term • Self Sustaining • Limited Term

3. SC Primary Concerns • Special Access to Laboratory Resources • All parties have equal access to laboratory (e.g., tiered structures) • All parties need to use standard mechanisms • Preferential Access to Laboratory Intellectual Property (IP) • No guaranteed licenses to laboratory IP (e.g., Fairness of opportunity) • IP governed by standard terms and conditions (M&O contract, CRADA) • Proper DOE Oversight • Site office approval of work performed by the laboratory • Foreign Engagement Review (DOE O 485.1) as needed

4. Office of Science Approval • New requirement in all EERE FOAs for Consortia/Institutes • Also required for other consortia • Process for Approval • Ad hoc to date • Key areas need to addressed • Laboratory as the lead or a team member • Access to laboratory resources/intellectual property • Other key aspects (e.g., membership fees) • Earlier engagement the better

5. Current SC Guidance Overview • All lab work performed under an independent CRADA • Standard, negotiable agreement available to others outside of the consortium. • Special Access to Laboratory Resources • Preferential Access to Laboratory Intellectual Property (IP) • Proper DOE Oversight • Membership agreements are acceptable as long as it does not apply to lab work or lab IP. • Allows labs to participate in conferences, meetings, and other consortia functions as a member.

6. Current SC Guidance (2018) DOE Funding *Foreign Entities *Large Businesses *Small Businesses *Non-Profit Entities Consortium Legal Entity or Lead of Virtual Entity CRADA DOE Direct Funding DOE Laboratories All DOE SC Laboratory Work for the Consortium Performed under CRADA(s) – CRADA terms already provide the Participant the statutory option to choose an exclusive license, for reasonable compensation, for a pre-negotiated field of use in laboratory inventions. Participant may invoke their exclusive option as a CRADA Participant and sublicense as they choose thereby granting their members any rights requested under the Intellectual Property Management Plan. - Participant may also negotiate other desired rights in laboratory inventions (e.g. non-commercial license). - Each task order to be approved by DOE if a Task Order CRADA is used *Membership Agreement: Members of the consortium (including laboratories) are bound by a membership agreement. However, the membership agreement specifically states all work performed by a laboratory as part of this consortium will be performed under a separate and independent CRADA which provides the terms and conditions governing all laboratory work and resulting intellectual property.

7. Membership Agreement Language -- Current SC Guidance (2018) • All work performed by a DOE Office of Science (SC) Laboratory as part of this consortium will be funded directly to the Laboratory by the Government and subject to the Laboratory's contract with the Government. • All work performed by a DOE SC Laboratory as part of this consortium will be performed under a separate CRADA containing the entire agreement between the Parties with respect to the work performed by the Laboratory. Nothing in this membership agreement shall affect work performed by a DOE SC Laboratory, including rights in intellectual property generated in the work performed by the Laboratory.

8. CRADA Language -- Current SC Guidance (2018) • ARTICLE XIII: ENTIRE CRADA, MODIFICATIONS, ADMINISTRATION AND TERMINATION (Additions underlined) • This CRADA with its annexes contains the entire agreement between the Parties with respect to the subject matter hereof, and all prior representations or agreementsrelating hereto, including any membership agreements, IP management plans or any other documents related to any consortia,have been merged into this document and are thus superseded in totality by this CRADA. • In the event of any inconsistency between the terms of this CRADA and any other agreement, including any membership agreements, IP management plans, or any other documents related to any consortia, the terms of this CRADA will control.

9. Post Guidance Common Issues • Bayh-Dole rights of federally funded members. • Must allow subcontractor to keep all rights in their inventions • IP Management plan not clearly excluding DOE Lab generated intellectual property from licensing. • Lab inventions may not be affected by IPMP • Lab must follow FOO when releasing invention information. • No early access to lab inventions except for CRADA participant(s)

10. Bayh-Dole Rights of Federally Funded Members • Issue: “The subcontractor will retain all rights provided for the contractor in this clause, and the contractor will not, as part of the consideration for awarding the subcontract, obtain rights in the subcontractor's subject inventions.”  See award terms and 35 USC 202 • The consortium should not require licenses (e.g. background, foreground, cross licenses and options) be granted in subcontractor inventions to receive the federally funded subcontract. • Solution: Provide an opt-out to all consortium licenses. • May be time limited (e.g. pre-award, before close of project). • May reduce membership benefits, but cannot be a condition of the award. • Example (Slawniak Language): If at any time a Member desires to not provide or revoke the above grant of license, it may do so by providing all other Members thirty (30) days’ written notice.  However, by delivering such notice, all reciprocal grants of licenses as set forth in this provision shall automatically terminate, effective immediately.  Any license shall reflect these reserved non-exclusive license rights to other Members. 

11. Intellectual Property Management Plan (IPMP) • Issue: IP Management plan not clearly excluding DOE Lab generated intellectual property. • Solution: Provide clarification that IP rights in any research performed by the lab shall be dictated solely by the CRADA. • Exempting lab from IPMP • Separate sections for labs and non-lab reciprocal licenses in the IPMP • Exempting specific sections (e.g. licenses) • The INTELLECTUAL PROPERTY rights of DOE Office of Science (SC) Laboratory will be solely dictated by a Cooperative Research and Development Agreement (CRADA) and not subject to this section X. • General Language • All work performed by a DOE Office of Science (SC) Laboratory as part of this consortium will be funded directly to the Laboratory by the Government and subject to the Laboratory's contract with the Government. • All work performed by a DOE SC Laboratory as part of this consortium will be performed under a separate CRADA containing the entire agreement between the Parties with respect to the work performed by the Laboratory.  Nothing in this membership agreement shall affect work performed by a DOE SC Laboratory, including rights in intellectual property generated in the work performed by the Laboratory.

12. SC Lab Licenses to Consortium Members • Must be in compliance with prime contract • FOO • Although CRADA participant may get invention disclosure early, non-participants (but consortium members) • Invention availability release must at least coincide with public • Background Licenses may be granted per normal procedures or included in membership agreement • Foreground licenses in Lab IP • Should not be directed by IPMP • May be granted to CRADA participant in CRADA terms • Should consider participants • Members who are not included in the CRADA will need to negotiate any rights in foreground IP through the participant (e.g. consortium lead) or through lab’s standard licensing practice in compliance with FOO

13. Additional Consortia Considerations (SC v. Non-SC lead)

14. Future Plans • Non-Lab Lead Consortium • SC and Patent Counsel will continue to work with labs and may provide additional guidance as needed to help streamline SC-32 reviews • Foreign participation in CRADA will require 485.1 review • Lab Lead Consortium • Additional review and discussion needed. • Foreign participation in consortium will require 485.1 review

15. Questions? ?