Fermilab/URA Reach First License Accord
Marking an official entry into transferring technology to industry for commercial purposes, Universities Research Association, Inc. (URA) and Vern Kiebler Associates, Inc., recently signed a product license agreement. The license permits Kiebler Associates of Wheaton, Illinois, to commercially manufacture and market a high-voltage power supply developed at Fermilab by Tom Droege. In exchange for the technology received, Kiebler Associates will pay URA a percentage of the sales price as royalty.
Since this was the first license negotiated by URA and Fermilab, it involved a great deal of work on the part of many people. URA personnel including Ezra Heitowit, Vice President/Secretary of URA, and Maurice Glicksman, Provost at Brown University and Chairman, Administrative Committee of the Board of Trustees, along with Bruce Chrisman, Fermilab Associate Director for Administration, and Chuck Brown, Chairman of Fermilab's Sub-Committee for Electrical Safety, suggested innovative techniques to allow the power supply to be used in a less sophisticated environment than Fermilab. Bob Fieseler of the Neuman, Williams, Anderson, & Olson patent law firm retained by URA/Fermilab, p~ocessed the patent documents and drew up the license agreement. He worked closely with Bill Schmidt, Fermilab general counsel, and John Albrecht, patent counsel for the Department of Energy's (DOE) Chicago Operations Office. The general licensing activity was handled by John Paulk, Fermilab license officer, and Dick Carrigan, Head of the Fermilab Office of Research and Technology Applications in the Director's Office.
The power supply is used to provide a selectable, precise current and voltage to drift chambers. Drift chambers are used for detecting and tracking particles during collider or fixed-target interactions. Several hundred power supplies are needed for the drift chambers in the collider-detectors at BO and DO. Because drift chambers are usually located in inaccessible areas, a great improvement over an earlier design allows the power supplies to be remotely monitored and controlled by a computer.
Each power supply is very compact, about the size of a 35 mm camera so they can be closely mounted, eight across, onto a common-sized printed circuit board. The board with eight units attached is packaged as a module that plugs into a standard electronic crate of the type extensively used at Fermilab and other facilities.
Kiebler Associates is a small-business electronics firm. They have done business with Fermilab for many years and are a frequent manufacturer of electronic components needed for the research program.
Tom Droege, a senior engineer working with the Collider Detector at Fermilab (CDF), invented the HV supply in response to the CDF design group's specifications. He filed a Record of Invention late last year and, subsequently, assisted by patent attorney Bob Fieseler, filed for patent. Tom is currently testing and putting final touches on an operational prototype so that it will be ready for production later this year. An earlier power supply developed by Droege was commercially manufactured by Kiebler and sold in hundreds to places all over the world.
Under provisions of federal legislation and the prime contract with DOE, URA may claim patent rights for technology developed at Fermilab. This is a relatively new government program. With a valid patent, URA is permitted to seek a royalty-bearing license agreement with firms in the private sector who may be interested in manufacturing and marketing the product. Royalties from the product sales are used to reimburse the costs of patenting and commercializing the product. Depending on the amount of royalties received, up to 50% are also shared with the inventor(s).
The Laboratory is currently soliciting licenses with industry for several inventions to which URA holds patent rights. Other inventions are being evaluated for patentability and market potential. As part of this ongoing program, it is important for all employees to report to the Office of Research and Technology Applications (ext. 3200) any new inventions developed in connection with their work at Fermilab.