FLC Mid-Atlantic Region

 

 

TECHNOLOGY LICENSING
 

Each federal agency has developed its own patent licensing policies and procedures to match their individual missions.  They also have developed their own “boilerplate” licensing agreements, and most make them available on their web sites.  For example, NIST provides a variety of its nondisclosure and licensing boilerplates.  Similarly, NIH  provides a number of its agreement models and application forms.

But the “boilerplate” 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 of obtaining a license can take twists and turns, the primary elements are:

 
  • Company identifies a potential technology in a government lab.
  • The lab supplies limited, non-confidential information.
  • The company becomes more certain of its interests and expresses its desire for more information.
  • The lab supplies its boilerplate draft of a nondisclosure agreement.
  • After negotiation of terms/conditions, both parties sign the nondisclosure agreement.
  • The lab then provides proprietary information about the licenseable technology for evaluation.
  • The company then affirms its interest in licensing the technology.
  • 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.
  • 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.
  • The lab drafts the license agreement.
  • The company and lab continue to negotiate the terms and conditions of the license agreement until they are mutually satisfied.
  • The lab and the company sign the licensing agreement.
  • The company commercializes the technology under the terms and conditions of the agreement.
  • The lab monitors performance of the agreement.
     

Labs/agencies generally provide on their websites detailed instructions for obtaining rights to license their technologies.  For example, NIH provides the following flowchart with many links to detailed information:

 

STEP 1: Select the area of technology that interests you.
 You can choose from:
 

Cancer Central Nervous System
   
Dental Technology Devices/Instrumentation
   
Gene-Based Therapies

Infectious Diseases

 

 

Internal Medicine Miscellaneous

 

 

Ophthalmology Research Materials

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 Nonexclusive License
Complete negotiations for a Nonexclusive 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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