Lawrence Livermore National Security, LLC manages and operates LLNL under a contract with the U.S. Department of Energy (DOE). Because LLNL is a government-owned laboratory, and because most of the intellectual property developed at the Laboratory arises from federally-funded programs, some of LLNL's business practices and licensing terms are different from those typically found in the private sector.
It is DOE policy that potentially interested companies have equal opportunities to seek commercial licenses for intellectual property developed with DOE funds. To ensure fairness of opportunity in our technology transfer activities, we regularly publish notices of licensing and cooperative partnership opportunities. Also, we prefer to grant nonexclusive licenses where more limited rights do not substantially hinder a licensee's prospects for success in the marketplace. At the same time, we recognize that successful commercialization of early-stage technologies often requires some level of exclusivity, and grant limited exclusive rights when needed to incentivize licensees and investors.
As a national laboratory commercializing the results of government-funded research, we actively seek to attract small business partners. In our licensing and cooperative research activities LLNL gives special consideration to small business firms, and consortia involving small business firms.
Federal statute (35 USC 203) provides that the U.S. Government may in limited circumstances require the grant of a license to a patent claiming an invention made with federal funding, even if the patent has been exclusively licensed to another party. Our patent licenses provide notice of this non-negotiable statutory provision, and while it is often a source of concern to prospective licensees, in practice the government has never elected to exercise this right.
All licenses to intellectual property developed with must reserve to the U.S. Government the nonexclusive right to use intellectual property developed at LLNL, and to authorize others to use it for U.S. Government purposes. As a result LLNL cannot assess royalties on licensed products sold to the U.S. Government, and cannot prevent third parties from manufacturing products that use or incorporate the licensed intellectual property where for sale exclusively to the U.S. Government.
Under the management and operating contract between DOE and LLNS LLC, licensing and partnering decisions made by LLNL must take into consideration benefit to the U.S. economy. The intent is to ensure that our country benefits in some way from the U.S. taxpayer's investment in R&D at the national laboratories. Generally such benefit is established by a commitment from the licensee or industrial partner to substantial US manufacture of licensed products and practice of licensed methods. In some cases, the substantial manufacture requirement may be waived where the prospective licensee or industrial partner can establish alternate benefit to the US economy.
LLNL licensees must agree to adhere to export controls designed to protect items and information important to the United States. Export Controls refer to government rules and regulations that govern the transfer of commodities (equipment, hardware, or material), technologies (technical data, information, or assistance), and software/codes (commercial or custom) to non-U.S. entities or individuals--wherever the transfer may take place.
In LLNL's industrial partnering and technology transfer practice, we must conduct due diligence on prospective industrial partners to satisfy NNSA/DOE requirements concerning security, counterintelligence, and economic espionage; and to address in advance any foreign ownership or control interests in the prospective licensee or industrial partner.