IP costs cut under new US scheme

05 April 2011

The US Department of Energy (DOE) has launched a new programme to increase uptake of intellectual property (IP) generated at its 17 national laboratories.

About 10 per cent of US federal patents are licensed for commercialisation, a statistic the agency is keen to improve.

The initiative - dubbed 'America's Next Top Energy Innovator' and announced on 29 March - enables start-up companies to licence some of the 15,000 unlicensed patents and patent applications held by DOE national labs at a steeply discounted price.

Specifically, from 2 May to 15 December, DOE will reduce the total cost of licensing these patents in a certain technology to a $1000 (£620) upfront fee for portfolios of up to three patents. This price reduction represents a savings of $10,000 to $50,000, the department says. The range of IP on offer includes: a system for converting solar energy into chemical energy, and subsequently thermal energy, and a diesel catalyst that removes nitrogen oxide emissions from fuel during combustion by converting it to nitrogen.

"The more you can bring down the cost of these licences, the more licences people are going to take: it's a good thing"
- Gene Quinn, patent attorney at IPWatchdog
Virginia patent attorney Gene Quinn from IPWatchdog says cost is a bottleneck when it comes to the foundational and speculative research conducted at DOE national labs.

'The more you can bring down the cost of these licences, the more licences people are going to take: it's a good thing,' he tells Chemistry World. 'The government is spending all of this money to come up with basic science and engineering science breakthroughs, and the results are just sitting there doing nobody any good.'

Quinn expects that most of these unlicenced patents will be attractive to companies. But Harry Shubin, a former US patent examiner who is now a partner at the Millen, White, Zelano & Branigan law firm in Arlington, Virginia, is more apprehensive. Shubin says that large, well-financed companies working in partnership with the government will often own the IP emerging from the collaboration, subject to a royalty-free licence to the government. 'That suggests that the remaining 90 per cent of unlicensed patents are likely to be ones where there was no high commercial interest,' he explains. 'Reducing one aspect of cost eliminates one bottleneck - but there are other significant factors which will, in my opinion, still keep many of the technologies of these patents from being developed,' he adds.

Rebecca Trager, US correspondent for Research Europe

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