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TECHNOLOGY LICENSING
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 Each
Federal agency has developed its own patent
licensing policies and procedures to match
their individual missions. They also have
developed their own “boiler plate” licensing
agreements and most make them available on
their web sites. For example,
NIST provides a variety of its
non-disclosure and licensing boiler plates.
Similarly,
NIH provides a number of its
agreement models and application forms. |
But the “boiler plate” models are
only a starting point, as each consummated agreement
is a tailored document negotiated to fit the
individual needs and circumstances of both the
commercial enterprise and the government agency.
While the process for obtaining a license can take
twists and turns, the primary elements are:
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Company identifies a
potential technology in a government
lab.
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The lab supplies
limited, non-confidential information.
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The company becomes
more certain of its interests and
expresses its desire for more
information.
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The lab supplies
their boiler plate draft of a
non-disclosure agreement.
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After negotiation of
terms/conditions, both parties sign the
non-disclosure agreement.
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The lab then provides
proprietary information about the
licenseable technology for evaluation.
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The company then
affirms its interest in licensing the
technology.
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The company submits
an application for a license, including
information about itself, a business
plan for commercialization of the
technology, potential marketing
information and expected financial
values of the technology.
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Assuming the lab
accepts the application, the lab and the
company discuss terms and conditions of
the license. On a case-by-case basis,
the terms and conditions will vary,
depending on multiple factors such as
the scope of the rights granted, the
size of the potential market and the
time and financial investment required
by the licensee to bring the product to
market.
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The lab drafts the
license agreement.
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The company and lab
continue to negotiate the terms and
conditions of the license agreement
until they are mutually satisfied.
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The lab and the
company sign the licensing agreement.
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The company
commercializes the technology under the
terms and conditions of the agreement.
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The lab monitors
performance of the agreement.
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Labs/agencies
generally provide on their web sites
detailed instructions for obtaining rights
to license their technologies. For example,
NIH provides the following flowchart with
many links to detailed information:
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STEP 1:
Select the area of technology that interests you.
You can choose from:
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Cancer |
Central
Nervous System |
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Dental
Technology |
Devices/Instrumentation |
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Gene Based
Therapies |
Infectious
Diseases
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Internal
Medicine |
Miscellaneous |
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Ophthalmology |
Research
Materials |
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STEP 2:
Find the specific technology you would like to
license.
To do so: Review the complete listing of abstracts online.
STEP 3:
Select the type of license you require
For more information, read about the various
types of licenses available
STEP 4:
Contact a Licensing Specialist
Names and contact information are indicated on
each abstract online. Click to view a sample
abstract See the latest list of abstracts online
STEP 5: Fill out a Formal Application for a
License
Click to download the Application for License
A Confidential Disclosure Agreement is required for
unpublished Patent Applications
STEP 6: Submit Your Application
Please follow the instructions on the License
Application
STEP 7: Negotiate Licensing Terms
Speak with the appropriate Licensing Specialist
listed on the abstract. Names and contact
information are indicated on each abstract online.
STEP 7.1:
If You Want a Non-Exclusive License
Complete negotiations for a Non-Exclusive Patent
License Agreement
STEP 7.2:
If You Want an Exclusive License
Complete negotiations for an Exclusive Patent
License Agreement
OTT will publish a notice of your application in the
Federal Register.
Other organizations have 60 days to submit comments
or apply themselves
STEP 7.2.A: OTT will notify you of its decision
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