Types of License Agreements
Once a Laboratory technology has been determined licensable, several types of agreements are available. The type of license selected depends upon a number of factors, including the following:
- The technology
- The type of organization seeking a license
- The intended use or application.
LANL requires the execution of commercial license agreements under two different licensing scenarios. The first is where a company or organization seeks to offer products and/or services that incorporate Laboratory-developed intellectual property. The second is where a company (incorporated in the US or another country) or a foreign government-sponsored entity seeks access to LANL technology in the form of software tools that may be used for internal research and development efforts. Commercial license agreements in both of these examples define the scope of rights granted to the licensee and the fair market value compensation to the Laboratory as consideration for granting such rights. The Laboratory offers a diverse portfolio of unique technologies that are available through either a negotiable or non-negotiable (Express) licensing arrangement.
LANL’s significant portfolio of intellectual property (patents, copyrights, and trademarks) primarily results from federally-sponsored research and development in support of the Laboratory’s national security mission. Also, we collaborate with industry to develop innovative, application-specific technology to further our partner’s ultimate commercialization objectives. In each case, we develop valuable technology that provides benefit to both the public and private sectors, the majority of which is available for commercial licensing. To ensure that our partners have the necessary intellectual property advantage to successfully deploy LANL technology, we offer a variety of negotiable commercial license agreements that can be tailored to suit specific market and industrial needs.
Types of Commercial Licenses
- Exclusive: The Laboratory grants a licensee the exclusive right to commercialize the intellectual property, typically for a specific field of use.
- Non-Exclusive: The Laboratory grants multiple licensees the right to use the intellectual property.
- Option: The Laboratory agrees not to license the intellectual property to any other licensee for a specified period of time and the Option holder is granted a first right of refusal to exercise the option rights and obtain a license agreement, typically for a specific field of use.
Standard Licensing Terms
- The term of the License usually extends for the length of the patent or copyright. Terms for Test and Evaluation licenses and License Options are limited in time.
- Financial consideration may include an up-front license issue fee, annual license fees, milestone fees, earned royalties on sales, patent fees, or company equity, as appropriate. We seek an equitable, Fair-Market-Value return to the Laboratory without impeding the licensee's ability to successfully commercialize the technology.
- Performance requirements (Milestones) may be established to insure the licensee is diligent in their commercialization plan. These typically include specific target dates and deliverables for completion of critical licensing milestones. Performance Milestones are required for all patent licenses and may be required for some software licenses.
- License Agreements may be limited by field-of-use, region, or period of restraint. Non-exclusive licenses are preferred, but we consider exclusive licenses when the business case is justified. Exclusive licensing requires a competitive assessment of potential licensees to select the one having the highest probability of success. Performance requirements are also more stringent.
- Commercial licensees must substantially manufacture their products in the U.S., given the Department of Energy's intent to provide benefit to the U.S. economy.
- The U.S. government retains a right to use the technology for government purposes.
The Express Licensing Program provides an accelerated, streamlined process in which commercial and non-commercial entities may request a non-exclusive license to pre-selected LANL technologies (both patents and software) for favorable licensing terms offered through an abbreviated license agreement. Please visit our Express Licensing Program for additional details and a list of technologies available for license through this Program.
For information about Commercial Licensing or the Express Licensing Program, contact LANL Commercialization and Licensing Manager, Laura Barber, at (505) 667-9266, email@example.com or Licensing@lanl.gov.
A non-commercial license provides a way for educational institutions and not-for-profit research organizations to use software and technologies developed at the Laboratory. Non-commercial licenses are particularly useful during the beta testing stages of software development to allow users to evaluate, further develop, and/or expand applications of the software in collaboration with the Laboratory.
Most non-commercial software licenses are requested and downloaded by users via the Internet or sent to users by a Licensing Specialist. Academic or research institutions may view software capabilities on the author's Web site and follow the steps indicated. Other software packages are offered through the Laboratory's Express Licensing Program. The processing period for U.S. licenses is typically two to three days. Foreign licenses are subject to the U.S. Export Control policy and require approximately one week for processing.
A one-time non-commercial license issue fee is typically charged and varies depending upon the software package being distributed.
The Government, and others acting on its behalf, have a paid-up, non-exclusive, irrevocable, worldwide license to practice or have practiced throughout the world, for or on behalf of the U.S. Government, inventions covered by the Laboratory’s Patent Rights.
The Government, and others acting on its behalf, have a paid-up, non-exclusive, irrevocable, worldwide license to use copyrighted data and software to reproduce, prepare derivative works, and perform and display publicly by or on behalf of the Government.
Government Use Acknowledgement
U.S. Government Contractors
Contractors acting on behalf of the U.S. Government must execute an Acknowledgment Form to:
- Certify the U.S. Government contract under which they are operating (and for which they need rights to the LANL technology as part of the reserved U.S. Government right; and
- Acknowledge the rights and obligations under which they may use the LANL technology (e.g. export control, permission for use of the technology for U.S. Government purposes only, etc.).
The Government Use Acknowledgment Form must be executed before software is released by the Laboratory and also before U.S. Government Contractors can practice the relevant technology. This document can be obtained by contacting the Commercialization and Licensing Team at Licensing@lanl.gov.
U.S. Government Agencies
U.S. Government agencies may be asked to acknowledge restrictions associated with LANL technology (e.g. export control, distribution of the intellectual property, and other use provisions in accordance with the U.S. Government reserved right. The determination as to whether or not an agency or sponsor needs to provide such an acknowledgment is on a case-by-case basis and should be discussed between your sponsor and your Feynman Center point of contact.
For U.S. Patents offered through LANL’s Express Licensing Program, please contact Laura Barber at Licensing@lanl.gov.
For Software offered through LANL’s Express Licensing Program, please contact Kathleen McDonald at Software@lanl.gov.
Thank you for your interest in Los Alamos National Laboratory’s Commercialization & Licensing Program.