The Bundling Boon

June / July 2007 By: Eric Billingsley Volume 5 Number 3

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Entrepreneurs and scientists will be happy to know that it just became easier to license intellectual property from Sandia, Los Alamos and Lawrence Livermore national laboratories and the Nevada Test Site. The facilities have signed an intellectual property bundling agreement, which establishes the legal process for IP bundles to be licensed to an entrepreneur or established company. A patent bundle refers to numerous pieces of IP that compliment one another.

Entrepreneurs now only have to negotiate bundles with one licensing facility, regardless of whether IP comes from different labs. The program has also developed a database of the combined IP. Companies can pose a technical problem to one facility, and get the benefit of having access to IP from all of the facilities, which are National Nuclear Security Administration sites.

"It makes it very simple for licensees to only have to negotiate with one laboratory," says Charles Whitehurst, director of the Innovative Bundling Initiative, or IBI, at Technology Ventures Corporation in Albuquerque, which spearheaded the project for NNSA. "And the program is very flexible. Licensees can either subtract or add to the bundles."

The IBI was started in April 2006 as a new initiative under a cooperative agreement between TVC and NNSA. Bundling is not a new concept, but historically, each of the four labs licensed IP through its own technology transfer office. This is the first formal collaboration among the institutions.

"We look at this as a pilot program for NNSA," says Whitehurst. "If it's successful, it could expand to other NNSA institutions."

The IBI encourages leveraging of Department of Energy research and development funds dedicated to complimentary projects within the labs and the leveraging of the IP developed by the projects. It also facilitates licensing negotiations.
Non-exclusive bundle licensing is cost-effective; it improves the likelihood that technologies in the labs will be successfully deployed.

The bundles are primarily being marketed to established companies that want to expand their IP portfolios. There are more than 2,000 pieces of IP in the program's database covering a wide range of technology areas including nanotechnology, alternative fuels, material science and software. Much of the technology is not mature and will require additional development by licensees, says Whitehurst.

"This is one of the most extensive efforts to get the labs to collaborate," says Leah Rogers, business development executive for Lawrence Livermore National Laboratory. "It's more of a global effort to look for the sweet spots in technology overlap between the labs."

One bundle has been developed for wastewater treatment technologies. It includes Sandia, Lawrence Livermore and Los Alamos patents.

The collaboration saves companies the overhead and burden of negotiating separate agreements and tracking down technologies at the different complexes.
And, depending on what type of problem they are trying to solve, the bundles may give them the best of all worlds by helping to solve multiple problems. "Sometimes a synergistic match is best," says Rogers.

Investors are optimistic about the lab's bundling program. "To us, the value of bundles is that there's a lot of interesting stuff in the labs that cost too much money ten or twenty years ago to complete," says Drew Lanza, general partner at Morgenthaler Ventures in Menlo Park, Calif. Teams of scientists would find something that could be of use some day, but it would have required thirty or forty people to explore the technology further. So they just patented it, says Lanza.

The internet has made it easier and less expensive for entrepreneurs and scientists to collaborate with small teams to finish off certain technologies. "What took twenty guys to do twenty years ago can now be done by two people, says Lanza."What would be most helpful is to know what the most interesting things scientists in the lab found but could never track down."

Rogers says the collaboration makes it easier to mobilize technical personnel in the labs to solve a problem that an entrepreneur or established company brings forward. "Many of the technologies are far enough along that a company can, within reach, figure out how to use it for a specific problem they're having now," she says.

Whitehurst acknowledges that the IP bundling agreement is new and will take some tweaking over time. He hopes it will be a model other national and university laboratories can look to. And he plans to eventually market bundles to startups.

"The labs have agreed to work together and that's the strong thing," says Whitehurst. "It can't do anything but enhance the process of technology commercialization."

Eric Billingsley is a freelance writer based in Albuquerque.