WASHINGTON, March 31, 2023 (GLOBE NEWSWIRE) -- The U.S. Naval Research Laboratory was recognized with the Innovation in Technology Transfer Award at the 2023 Federal Laboratory Consortium (FLC) National Meeting March 29.
NRL established a leading-edge program using trade secret law to protect and license government intellectual property, demonstrating the capacity for significant benefits, including cost avoidance, speed of obtaining protection, increased security, and greater control.
“Federal agencies have always relied on the patent system to protect their inventions, but this can become expensive, slow and requires public discloser of the invention,” said Sean Walsh, assistant counsel for intellectual property. “Using trade secret law to protect intellectual property is cheap, quick and by definition requires the invention be kept secret.”
After an extensive legal review, NRL concluded that 35 USC 207, traditionally used by federal laboratories to obtain patents for their inventions, also authorized federal laboratories to obtain trade secret protection for government inventions.
The Office of Naval Research adopted NRL’s legal analysis in March 2021. With this new application, NRL discovered a powerful new tool to support commercial licensing and meet the intent of federal technology transfer. NRL then created a trade secret licensing program from the ground up, and instituted mechanisms to ensure sustainability of the program.
NRL also reworked the standard Navy license agreement template to specifically address trade secret considerations. NRL’s first trade secret license was executed in December 2021 with the State University of New York Research Foundation (SUNY RF). This represented the Navy’s first designation of a trade secret under 35 USC 207 and subsequent licensing.
“Formal recognition of trade secret protection and licensing is an exciting new development in the federal technology transfer industry,” said Kerry Leonard, head of NRL’s Technology Transfer Office. “It will not replace traditional patent licensing activities, but it will enhance our ability to capture all aspects of the inventions that NRL develops. Trade secret licenses are another tool we can leverage to improve the transfer of these technologies to the benefit of our lab, our partners, and ultimately, the American taxpayer.”
NRL’s trade secret program is a model for other federal technology transfer offices and provides a blueprint for pursuing intellectual property protection and commercial licensing of government inventions. The Department of Defense released DoD Instruction 5535.08 Domestic Technology Transfer Program September 2022 to allow for the use of trade secret protection.
“Several federal agency laboratories have already reached out to NRL to learn about its trade secret program,” said Walsh. “The innovation offers a new avenue for Navy to protect its intellectual property. Now we just need to be able to shine light on this new approach, in a way that signifies the magnitude of potential returns for this new type of agreement.”
The FLC Technology Transfer Innovation Award recognizes federal laboratories that successfully implemented innovative or unconventional technology transfer approaches that resulted in a significant increase in technology transfer activities.
About the U.S. Naval Research Laboratory
NRL is a scientific and engineering command dedicated to research that drives innovative advances for the U.S. Navy and Marine Corps from the seafloor to space and in the information domain. NRL is located in Washington, D.C. with major field sites in Stennis Space Center, Mississippi; Key West, Florida; Monterey, California, and employs approximately 3,000 civilian scientists, engineers and support personnel.
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