Inorganic Membrane Technology Laboratory FAQ

IMTL is a small dedicated laboratory with some 40,000 square feet of laboratory and prototying space. Since 1996, technology initiatives at IMTL include 15 CRADAs totaling $10 million in co-operative research and 6 licensing agreements with 2 separate U.S. companies. Furthermore, IMTL has completed an additional $10 million of R&D for government programs and other government labs over the same period.
(back to top)

I am interested in pursuing an inorganic membrane technology transfer project. What do I do?

Please fill out our online Company Contact Form. We will respond to your request in a timely fashion.
(back to top)

How is doing business with IMTL different from doing business with the private sector?

First, any IMTL agreement with industry must be approved by DOE. Samples of approved CRADA and license agreements are available. These agreements carefully follow the government’s imposed terms and conditions. Even if you are totally funding the project, you must use similar government agreements. Second, DOE requires you to supply a portion of your agreed upon funding before IMTL can begin work.
(back to top)

Are there any constraints on the kinds of projects?

Yes, there are two primary constraints. IMTL can work only on projects that are related to DOE core missions or that show benefit to DOE. Secondly, IMTL can work only with U.S. companies that have a DOE-approved Foreign Ownership, Control, or Influence (FOCI).
(back to top)

What does "benefit to DOE" mean?

As a contractor to DOE, IMTL performs scientific and engineering research and technology development in support of three of DOE’s core missions: energy, environmental restoration (including pollution prevention), and science and technology.
(back to top)

How much will it cost?

The costs vary from project to project. IMTL has no pre-set fee schedule. The cost of each project is determined individually based on the statement of work (SOW). The work done is strictly on a cost recovery basis.
(back to top)

Does IMTL have funding sources for my project?

IMTL cannot financially assist any company.
(back to top)

How long before work can begin?

If after reviewing this material you are interested, we encourage you to have face-to-face discussions with us. Any company wanting to enter into a CRADA must apply for and receive a favorable FOCI determination. Once your company receives its FOCI determination then the CRADA negotiations, related paperwork, and approvals become more standardized. Some agreements can be executed as quickly as 30 days, but others take longer, sometimes up to a few months. In any case, IMTL cannot begin work until the your funding arrives. Once the funding is in place, work can begin.
(back to top)

Why is the preparation time so long on some of the agreements?

The preparation time includes the time to write up a request for approval, including a SOW; the time to negotiate terms and conditions; the time to write the agreement; and the time to obtain reviews and approvals. All of these activities have their own timetables. Essentially, the more complex the agreement, the longer the preparation time. When the partners are in agreement, the preparation time can be reduced. Also, as previously said, the CRADA negotiations, related paperwork, and approvals have become more standardized for the inorganic membrane technology for which we are able to provide under our waiver grants from DOE.
(back to top)

How can I find out what inventions IMTL has available for technology transfer?

IMTL has developed or has title to more than 50 membrane inventions that are available for technology transfer. Listing these inventions will not provide you any detail. Details of the incentives are available for license negotiations after your company receives FOCI approval. Most of the 50 are presently licensed in one form or another, exclusively or non-exclusively, for certain fields of use. New CRADA activity potentially generates new intellectual property, and/or a new field of use, which may then be licensed to you upon successful negotiation. All membrane products developed under your CRADA with IMTL, whether new intellectual property is generated or not, are potentially licensable because of links to existing intellectual property.
(back to top)

How do I apply for a license?

Generally a license to this technology results from activities under your CRADA. In order for serious discussions about IMTL CRADAs and licensing to take place, you must first fill out the Company Contact Form. The form asks questions about your market analysis, business plan, and financial plan for commercializing the technology. We intend to enter into serious discussions for at least one new CRADA with a qualified U.S. company within the near term. Please contact us if you are interested.

IMTL’s normal commercial license is a royalty-bearing, exclusive or non-exclusive license. The royalties usually involve an up-front, non-refundable licensing fee, and a running royalty based on products sold with a negotiated minimum annual amount. Royalty terms are negotiable. The amounts depend on the specific technology and the commercialization plan that is provided by your company. Any licensed product based on grants for intellectual property developed at IMTL must be manufactured in the U.S. in a DOE-approved secure facility. The government reserves the right to terminate the license if the licensee is not taking meaningful steps to commercialize the technology. IMTL’s contract with DOE requires full indemnification for UT-Battelle, LLC, and the DOE with respect to product liability.
(back to top)

How do I protect my proprietary information when I work with IMTL?

IMTL would prefer not to receive proprietary information; however, if that knowledge is necessary for IMTL to perform the work, we will enter into a Nondisclosure Agreement.
(back to top)

If I partner with IMTL and together we invent something, how will I be able to use this invention? Will I be charged to use the invention?

Let us begin by stating that every membrane product developed under a CRADA with us will require your obtaining a royalty-bearing license to access existing/background inventions in order for you to commercialize such a product.
(back to top)

How can I get on the list of companies eligible for technology transfer?

IMTL maintains no list of companies who are eligible for technology transfer activities. Instead, the process is driven by you, the interested company. You can contact us for more information.
(back to top)

Who can assist me if the success of my partnership with IMTL is affected by unresolved misunderstanding, disagreement or a dispute of any kind?

An ombudsman is available through the Oak Ridge National Laboratory's Ombuds Office to provide a way for anyone in a business relationship with IMTL to voice concerns and resolve issues. The Ombuds Office is neutral, confidential, informal, and organizationally independent. With these unique attributes, they are one resource to facilitate the IMTL commitment to maintain effective, hospitable, and mutually beneficial business partnerships with members of the supplier, contractor, and technical partnership communities. Issues ranging from intellectual property disputes to dealing with the differences between IMTL and the private sector can be addressed through the Ombuds Office. They can also guide business partners to the appropriate formal and official resources for problem reporting and resolution.
(back to top)

IMTL License FAQs

How can I find out about technologies available for licensing?

For the fastest access, please fill out our online Company Contact Form and someone from the Office of Technology Transfer will get back to you promptly.
(back to top)

How does IMTL decide who should get a license?

IMTL broadly disseminates information about licensing opportunities throught the Internet and other broad-reaching announcements. Interested companies should contact Technology Transfer's, Commercialization Manager. IMTL then selects a company, considering such criteria as FOCI-status, quality R&D staff, sufficient financial resources, and management commitment.
(back to top)

How long does it take IMTL to negotiate a license?

Every license is negotiated individually. The time depends upon the complexity of transaction. It generally takes a few months.
(back to top)

How much will a license cost?

The cost of a license is negotiated based on the market value of that technology, the common licensing practice of the relevant industrial sector, and additional development costs involved in bringing the technology to market. There's a trade-off between up-front license issue fees and royalty rates. The financial terms include:

an issue fee, which is nonrefundable and due upon execution of the agreement,
a running royalty fee based on a % of product sales, and
a minimum annual royalty fee.

(back to top)

What other important requirements are in IMTL’s licenses?

We are committed to ensuring that our licensed technologies are commercialized so that the public ultimately benefits. We are also committed to the rules and procedures that DOE has put in place for this technology. Furthermore, IMTL licenses contain performance requirements for the licensee that reflect diligent progress in commercialization.
(back to top)

Can I get an exclusive license from IMTL?

Licenses may be exclusive for a particular field of use, or non-exclusive.

In all IMTL agreements, the U.S. government is granted a fully paid-up, non-transferable, non-exclusive license to use the invention for government purposes only, as is the case with all federally-funded inventions. Because of the nature of IMTL’s technology, the government reserves sole rights to all inventions for use in the field on uranium enrichment.
(back to top)

Do I have to manufacture in the U.S.?

Under the terms of the license, not only must the manufacturing be done in the U.S., the products from this technology must be manufactured in a DOE-approved facility.
(back to top)

Are IMTL technologies ready for immediate licensing?

In general, nothing is available for immediate distribution due to the FOCI requirements that are imposed on all companies that we work with. A few licensable products currently exist, nevertheless. If you already hold a FOCI determination and are interested in these products, then an immediate license is possible. If you do not hold a FOCI detemination, we will discuss the development and licensing processes in detail with you to assure your interest prior to your FOCI application. Usually, licensable products and technologies are developed under your CRADA which specifies the product you wish to have developed. Development of a new commercial product under a CRADA, normally takes at least a year, and often longer, depending on the technical demands of your performance specification.
(back to top)

Are licenses available to non-U.S. companies?

No. Companies must be U.S. companies able to receive a favorable FOCI determination.
(back to top)

ORNL

Index

Disclaimers

Information Owner: Brian L. Bischoff - Oak Ridge National Laboratory
Phone: 865-241-3172 - Email: zbx@ornl.gov
------- ------- ------- ------- ------- ------- -------
Last modified 10.09.02 (carlson)