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flexible aerogel
Flexible aerogel composite provides thermal insulation to 1200 ºC. (NASA photo)

 

New Agreement Streamlines Licensing Process for High-Temperature Aerogel

Licensees for jointly owned technology can negotiate with one partner, not two

NASA's Glenn Research Center and the Ohio Aerospace Institute (OAI)(link opens new browser window) have signed a new agreement that streamlines licensing negotiations for a high-temperature aerogel they jointly developed. Signed in December 2013, the joint-ownership agreement allows potential licensees to negotiate solely with NASA Glenn, which is authorized to represent OAI. By eliminating the need for companies to engage with both owners of the technology, the agreement is expected to dramatically reduce the time to signature for licensing deals. The agreement also makes it easier to grant exclusive rights to the technology, enhancing a licensee's competitive advantage in the marketplace. The innovative material is ideal for use in aviation and aerospace, oil and gas, thermoelectrics, and other high-temperature applications.

› See also, Aerogel-Reinforced Composites technology page

Fuentek's Role

NASA's Glenn Research Center asked for Fuentek's help in developing a broad strategy for transferring a portfolio of aerogels technologies into the marketplace. As part of this effort, we conducted market research to assess the commercial conditions and opportunities in the aerogel market. We examined market drivers, gaps in the market and the technical challenges creating those gaps, leading commercial players, current global market, and growth forecasts.

In providing this support, Fuentek recognized that OAI being a co-owner of the intellectual property could be perceived by potential partners/licensees as a possible obstacle to securing a deal. Therefore, we recommended that NASA and OAI enter into an agreement about IP ownership and commercialization strategies. Specifically, we proposed the use of a joint-ownership agreement that would set the parameters by which Glenn and OAI would proceed. We also provided support to NASA Glenn in establishing the JOA.

Benefits of the Agreement

  • Streamlines licensing: This agreement enables potential licensees to negotiate with one entity—NASA's Glenn Research Center—rather than two.
  • Facilitates exclusivity: The streamlining enabled by this agreement is particularly beneficial when working toward an exclusive license.
  • Enhances ongoing R&D: By clarifying intellectual property ownership for NASA and OAI, this agreement allows additional developments on the aerogel to progress in a more creative and collaborative context.
  • Lays groundwork for other innovations: NASA Glenn and OAI are now poised for additional joint-ownership agreements, which can accelerate future technology transfer efforts.
  • Establishes template for new collaborations: NASA Glenn can replicate this arrangement with other R&D partners to streamline licensing negotiations, with flexibility in the assignment of commercialization responsibilities.

On the Record

"Our collaboration with OAI makes NASA a stronger entity, and this joint-ownership agreement enhances our ability to leverage jointly developed technologies. The easier it is to put cutting-edge innovations into the marketplace, the greater the benefit for the American people. We look forward to forming more of these agreements in the years to come."

– Kimberly Dalgleish-Miller, Chief, Technology Transfer Office, NASA's Glenn Research Center

"This agreement is a proactive, rather than reactive, approach to commercialization. Not only does it empower NASA to negotiate on OAI's behalf, which is more resource efficient, but we've worked out in advance all of the issues that typically come up during licensing. This head-start will be a significant benefit for companies interested in our joint innovation, and it's an approach we want to build on for the future."

– Ann Heyward, Vice President, Research and Educational Programs, Ohio Aerospace Institute

About the Ohio Aerospace Institute

Founded in 1989, OAI is a not-for-profit joint initiative of NASA Glenn, the Air Force Research Laboratory at Wright-Patterson Air Force Base, a number of leading universities, and numerous aerospace companies. OAI's mission is to enhance its partners' aerospace competitiveness through research and technology development, workforce preparedness, and engagement with global networks for innovation and advocacy. OAI's areas of expertise include advanced materials and structures, computational modeling, vehicle safety and health monitoring, energy conversion and storage, nanotechnology, and much more.

Technology Details

Researchers at NASA Glenn and OAI jointly developed an innovative process for making a low-density aerogel composite that can withstand temperatures up to 1,200 ºC. Tests have proven that it has superior high-temperature stability. With the proper fiber reinforcement, it offers excellent thermal conductivity and flexibility without splintering or shedding particles. These properties make it an ideal insulation material for industries with extremely high temperature environments. These industries include aviation and aerospace, oil and gas, thermoelectrics, and more.

The Joint-Ownership Agreement

Because the aerogel was jointly developed by NASA Glenn and OAI researchers, the intellectual property is owned by both organizations. To simplify the process for licensing candidates, longtime collaborators NASA and OAI entered into a joint-ownership agreement.

Signed December 11, 2013, the agreement allows potential licensees to negotiate solely with NASA Glenn, which is authorized to represent OAI. This simplification of the negotiations process streamlines the interactions for companies, accelerating the progress toward a signed licensing agreement.

The agreement also specifies the roles and responsibilities for patent prosecution and technology marketing, avoiding duplication of efforts and increasing the return on investment for U.S. taxpayers.

Gearing Up for Commercialization

Several companies have already expressed interest in the NASA Glenn–OAI aerogel material. Additional development currently is underway to fully develop this innovative aerogel to enhance NASA's use as well as commercialization. For example, researchers plan to fabricate and test seals using this unique material.

For More Information

To learn more about this technology transfer success, contact:

Fuentek, LLC
info@fuentek.com
(919) 249-0327


11.12.2014

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