Sandia LabNews

Ready-to-sign licenses put Sandia IP on fast track


SIGN HERE — Some of the Sandia/New Mexico team members who worked on the ready-to-sign licensing program are, from left, John Pavlakos (7932), David Wick (7932), Michael Beckett (11500), Jean Leger (7932), Chief Intellectual Property Counsel Kerry Kampschmidt (11500), Christina Vallejos (7932), Dept. 7932 Manager Mary Monson, and Brooke Garcia (7932). They came up with the idea of creating a standard intellectual property license with simplified language and pared-down terms, conditions, and reporting requirements.

See also "What’s a hedgehog" below

Sandia is building a portfolio of intellectual property (IP) that can be licensed by businesses in as little as an hour.

“This is the simplest process possible,” says business development specialist Bob Westervelt (7932), who helped put together the ready-to-sign licensing program, which can be accessed by businesses on the Sandia website. “The language is clear and easy to understand. We can say, ‘Here’s the license, here are the terms. Once you and Sandia have signed it, you can start using the intellectual property.’”

The goal is to get more Sandia IP into the hands of small businesses and entrepreneurs. Sandia has about 1,300 patents available for licensing. Bob says the Licensing group, which works with companies of all sizes, noticed that smaller ones often find the number of patents to search through and the complexity of licensing daunting.

About a year ago the group came up with the idea of creating a standard license for certain IP they identify as being desirable. “We look through the IP for technologies we’re surprised aren’t being used, that need more visibility, and that still have a lot of time left on the patent,” Bob says.

Small businesses might not have the time or manpower to sift through 1,300 patents to see if Sandia has something that might help them be more successful. “If we give them a shorter list and simplify the process good opportunities are more likely to be noticed,” Bob says.

 The ready-to-sign license is uncomplicated, with simplified language and pared-down terms, conditions, and reporting requirements. And it’s lower cost. “We are offering relatively small up-front fees, in the $3,000 range, and low-percentage royalties,” Bob says. “We don’t want to impose a financial burden on a small business that needs cash flow.”

More ready-to-sign licenses in the pipeline

So far eight patents fall under the program, from a drive system for industrial applications that require high torque and low rpm to a compact spectrometer that can detect trace amounts of gases such as carbon monoxide and methane to a vehicle barrier that holds up to a powerful impact. More ready-to-sign licenses are in the pipeline and Bob says the group hopes to assemble a portfolio of about 50.

 “We want a manageable number that can have the most impact,” he says. “These are all technologies that no one has licensed in areas where small businesses might be able to get a foothold. A small company could take any of these licenses and run with it.”

The licenses are non-exclusive, so any number of companies can make use of a technology. “It’s not first-come first-served for the IP,” Bob says. “If five companies are interested in a technology, all five can license it.”

One has been signed so far. Advance Plumbing of Albuquerque licensed the Labs’ Hedgehog water-purification technology (see below). Company President Vincent Sanchez says he signed on because of the simplicity of the licensing process.

“This was really easy to get into,” he says. “I would not have looked at it if finding the technology and doing the agreement was a big process requiring certification and lots of financials and other reporting. I’m not in a position to do all that. If it’s easy, I can say, ‘Why not? Let’s take a look.’”

Pete Atherton, senior manager of Industry Partnerships Dept. 7930, says Sandia is always looking for better ways to transfer technology for the public good. “The ready-to-sign program is a new component of our initiative to make licensing Sandia’s technology easier and faster,” he says.

Ready-to-sign licenses are listed on the Intellectual Property website at https://ip.sandia.gov/readyToSignLicenses.xhtml. A business owner can click on a technology to get information and download a PDF file with the paperwork. “You click on one link and it downloads everything you need,” Bob says.  

He says the Licensing group is looking for IP that would fit the ready-to-sign program. “We would like Sandians to suggest ideas,” he says. “You might know of a patented technology that would have broader uses. There is so much good IP out there.”

What’s a Hedgehog

The Hedgehog water purification system was developed at Sandia after the US Environmental Protection Agency in 2006 lowered the allowable amount of arsenic in drinking water from 50 parts per billion to 10. New Mexico has about 100 communities with arsenic contamination in ground water.

“It wasn’t a problem until the standard was revised, then all of a sudden a bunch of communities by law did have a problem,” says Pat Brady (6910), lead researcher on the Hedgehog, the first Sandia technology to be licensed under the new ready-to-sign licensing program. “A lot of them were at around 15 parts per billion, just within sight of being in the clear.”

Pat says a city the size of Albuquerque can afford the infrastructure and manpower to remove arsenic from water, which can cost into the hundreds of thousands of dollars. So Sandia focused on how small communities that get their water from the ground can affordably reduce arsenic. “We did an analysis that found the big costs are the infrastructure — building filter galleries — and operators,” he says. “The Hedgehog is an attempt to solve the arsenic problem with no infrastructure and no people.”

Hedgehog is a submersible recirculation pump with an attached filter bed that sits in the bottom of a water tower. It runs continuously, grabbing arsenic and other organic and inorganic contaminants as water runs through the filter. The Sandia-designed filter is replaced every few months.

“It’s a simple idea,” Pat says. “What made it cool for small communities is that most of them pump water from a well into a tower and add chlorine. The water flows by gravity into pipes, so the only infrastructure to work with is a well or water tower. By putting Hedgehog into the tower there’s no need to build big filter galleries that have to be watched all the time. It works with what they have.”

Pat says the Hedgehog, licensed by Advance Plumbing of Albuquerque, was designed specifically for small communities with arsenic-contaminated water. “This is the least expensive way to fix it,” he says. “It gets the count down to 10 parts per billion and gets the towns out of trouble.”