V. Rules of the game

The challenge of carrying out successful Technology Transfer (TT) from a government laboratory is actually a balancing act of attempting to follow the rules of good business practice while being mindful of the restrictions of government regulations. One must, insofar as possible, be sure to follow the former as closely as possible without running afoul of the latter. Good basic rules are:

1. Be prompt.

2. Be dependable (e.g., don't violate a confidence, don't promise what you cant deliver, do what you say you will, and within the promised time, etc.).

3. Do your homework (e.g., know what you can about the person or company you are dealing with, about the technology to be discussed, and about what you would like to accomplish).

4. Do not negotiate with two parties for the same item at the same time.

5. Be even-handed.

6. Avoid obvious conflicts of interest.

7. Do everything you can to avoid red tape and time delays that are avoidable (e.g., if you can use the phone rather than the mail, do it. If you can hand-carry documents rather than mail them to someones in box, do it.) Remember, industry cannot afford to follow the usual government time schedule. But be careful not to appear pushy.

8. Remember that a successful negotiation is one that gets both parties most of what they want. There should be no winner and no loser, since a good agreement is usually the beginning of a good working relationship in seeking a common goal.

9. It has been said that doing TT from a government laboratory is by definition a conflict of interest. However, the TT Act of 1986 states that for TT this question is not clear-cut and may have to be decided on a case-by-case basis. If in doubt, always remember it is easier to apologize than to get permission. (TT is hard enough without establishing new road-blocks.) But in no case should you pursue a course that is expressly forbidden by regulations or the law. (See Section VI.)

It is important to note that item 5 above has a rather special meaning within the government. In particular, it includes giving fairness of opportunity to companies to participate in the TT of government inventions. This means that, no matter how simple or unpatentable an item may be, one cannot simply pick up the phone, call a company, and offer them the opportunity to manufacture it, unless the contact is initiated by the company as part of their proposed new product plan. We are in fact required to assure that a significant number of companies have been made aware of the opportunity. This can be done by publication in the Commerce Business Daily (a government publication), or by publication in a professional or trade journal, by showing at an exhibit, or by posting an announcement on the Internet. After that, it seems quite permissible to talk to anyone about it. As an alternative for rehabilitation technology, one can simply search AbleData or a similar database (see Appendix C) for the most likely manufacturers of a particular product, then write identical letters announcing availability of the product, and choose among those who show an interest in commercialization. Be sure to document this process.

In the case of an invention which is already owned by the government (e.g., by virtue of an issued or pending patent), any licensing of such invention must follow the explicit rules laid down in 35 USC 207 and 209 [Samuels, 1993]. These particular laws include very specific requirements and procedures, especially for granting exclusive rights to any government-owned invention. It is worth noting, however, that the VA has in the past usually granted to the inventors all rights to inventions made within the VA. I believe this practice will gradually change because of the new climate created by the TT Act of 1986, which is discussed below.