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License Agreements

You can license research discoveries derived from NIH's Intramural and Extramural laboratories so that the technologies can commercialized and reach the public. In addition to discoveries from NCI laboratories, we execute licensing the following NIH Institutes in licensing their technologies:

You can find our licensing agreements on the Forms & Model Agreements page of the NIH Office of Technology Transfer site, with the exception of the Startup Exclusive License.

  • License Agreements are legally binding and are subject to Federal, state, and local regulatory authorities;
  • NIH licensees have the right to exclude others from making, using, importing, or selling the licensed invention within the field(s) of use identified within the license;
  • The licensee can choose to license a technology using either an Exclusive License Agreement or a Non-exclusive License Agreement;
    • The Exclusive License limits the use of the invention to a single group or entity in a particular field of use;
    • A Non-exclusive License allows the invention’s use by multiple entities within the same field of use.
  • A license may cover one or more patented, or patent pending, inventions as well as unpatented biological materials or software code;
  • The licensee will be required to pay licensing fees and make royalty payments, the frequency and amount of which are determined as part of the Licensing Application’s negotiation process
    • Payments and royalties are based in part on the type of license selected and other factors associated with the value of the licensed invention to the market place once commercialized.

The NCI TTC has developed several model License Agreements that serve as the baseline starting point for all license negotiations.

  • A business development plan must be submitted as part of the license application process, and serves as the basis for establishing performance benchmarks that are included in the license agreement;
  • Once a license is awarded, the NIH Office of Technology Transfer (OTT) and the NCI TTC work closely with licensees to monitor performance and to adjust benchmarks, when appropriate, to ensure successful commercial development of the invention;
  • Licensees are also required to provide annual confidential reports on their “use of” or “commercialization efforts for” a licensed technology;
  • These reports are kept confidential, to the extent permitted by law;
  • The license is revocable under specific circumstances, such as (but not limited to): non-use of the patent, material breach of the terms, failure to comply with governing regulations or failure to satisfy public health needs.

The licensing process for NIH is described here.

TYPE

SUBTYPE

FEATURES

INTELLECTUAL PROPERTY

NON-EXCLUSIVE

Commercial Evaluation License Agreement

  • Internal Use and evaluation;
  • Short term (6-12 months);
  • No right to sell or distribute materials or services.

NIH-patented invention

Non-exclusive Patent License Agreement

  • Commercial Use
  • For commercial manufacture and sale of materials and/or services.

NIH-patented invention

  • Internal Use and evaluation;
  • No right to sell or distribute materials or services.

Biological Material License Agreement

  • Commercial Use;
  • For commercial manufacture and sale of materials and/or services.

Non-patented biological materials

(“Research Tools”)

  • Internal Use and evaluation;
  • Evaluation only, no right to sell or distribute materials or services.

Non-profit License Agreement

For non-profit

Patented inventions and non-patented biological materials

Non-Profit License Agreements

Research Tools

EXCLUSIVE

  • Exclusive Patent License Agreement
  • Co-exclusive Patent License Agreement
  • Commercial USe
  • For commercial manufacture and sale of materials and/or services.

NIH-patented invention

Non-profit License Agreement

For non-profits

NIH-patented inventions and non-patented biological materials

Non-Profit License Agreements

Research Tools

Start-up Exclusive Evaluation Option License Agreement

  • For Start-up companies;
  • Short-term and evaluation only.

NCI-patented invention

Start-up Exclusive Patent License Agreement

  • For Start-up companies;
  • For evaluation and/or commercialization.

NIH-patented invention

OTHER

License Agreement Amendment

Amendment to executed license agreement

 

Updated
Wednesday, September 12, 2018