NIH Offers Licensing Agreements to Commercialize Technologies - NIH makes available a full range of licenses for commercial evaluation and for the sale of commercial products and services. - BioPharm

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NIH Offers Licensing Agreements to Commercialize Technologies
NIH makes available a full range of licenses for commercial evaluation and for the sale of commercial products and services.


BioPharm International
Volume 20, Issue 3

With respect to the license option, the company is given the opportunity to elect an exclusive or nonexclusive license. Some companies have misunderstood this option to mean that the NIH decides what type of license is offered. The company elects the type of license, and in the event the company and NIH cannot agree on the terms of the license, which has been quite rare, licensing is governed by the general statutory provisions. Namely, any intended grant of an exclusive license to another, non-CRADA party would require public notice (typically 90 days) whereby the CRADA partner could comment. The NIH cannot secretly license the technology on an exclusive basis to someone else.

Any company interested in acquiring early stage biomedical technologies should review the extensive portfolio arising from the NIH intramural program. These technologies are available for internal research purposes or commercialization of products and services. The opportunity to collaborate with NIH scientists adds further value to such technologies or can be an opportunity to leverage resources to develop new intellectual property. Even when inventions are not made under CRADAs, valuable information is often generated to add value to technologies.

The extensive track record of collaboration and licensing at NIH has resulted in a number of products that have improved public health and research tools used in both academic and commercial R&D. While there are rights reserved by the government that some companies might prefer to live without, there are far many advantages than potential disadvantages in collaborating with the NIH such that the opportunity should not be overlooked.

Mark L. Rohrbaugh, PhD, JD, is the director of the Office of Technology Transfer at the National Institutes of Health, Rockville, MD, 20852, 301.435.4485,

REFERENCES

1. FDA Approved Products Developed with Technologies from the NIH Intramural Research Program. Washington, DC: National Institutes of Health. Available from http://www.ott.nih.gov/about_nih/fda_approved_products.html

2. For more information about the Clinical Center, see http://clinicalcenter.nih.gov/

3. 35 USC 202(c)(4) and 209(d)(1)

4. 35 USC 204 and 209(b)

5. See flowchart and directions at http://www.ott.nih.gov/licensing_royalties/flowchart_licproc.html

6. The Federal Register can be searched at http://www.archives.gov/federal-register/

7. General inquiries can be made by submitting an email request to
.

8. NIH Licensing Policy. Washington, DC: National Institutes of Health. Available from: http://www.ott.nih.gov/policy/phslic_policy.html

9. 35 USC 209(a)(2)

10. NIH Guidelines for Sharing of Biomedical Resources.Washington, DC: National Institutes of Health. Available from: http://www.ott.nih.gov/policy/research_tool.html

11. Best Practices for the Licensing of Genomic Inventions: Final Notice. Washington, DC: NIH. Available from: http://www.ott.nih.gov/policy/lic_gen.html

12. 35 USC 202(c)(4) and 209(d)(1)

13. 28 USC 1498


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