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License Agreements

The National Cancer Institute's Technology Transfer Center (NCI TTC) recognizes the importance of translating basic science discoveries into public health benefits. Since the government cannot engage in the development, manufacture, and sale of products, the TTC makes the discoveries of the NCI and nine other NIH Institutes and Centers available to organizations that can assist in the further development and commercialization of these basic science discoveries, to convert them into public health benefits. In addition to NCI scientists, the NCI TTC also assists scientists from the following NIH Institutes:

by guiding them and their respective Institutes in matching their discoveries with partners and facilitating collaborations with universities, non-profit organizations and corporations.

The NCI TTC makes these technologies available to companies through licensing, and agreements used to take advantage of these opportunities can be obtained from the Forms & Model Agreements page of the NIH Office of Technology Transfer site.

The NIH licenses its research discoveries derived from both its Intramural and Extramural laboratories. An NIH license allows companies to commercialize NIH technologies, in order to promote the public health through government-funded basic and pre-clinical research.

Our 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, while 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 ae 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

FEATURE

INTELLECTUAL PROPERTY

NON-EXCLUSIVE

Commercial Evaluation License Agreement

Short term (6-12 months);

evaluation only

NIH patented invention

“Available Technologies”

Non-exclusive Patent License Agreement

Commercial

NIH patented invention

“Available Technologies”

Non-commercial

(internal research use)

Biological Material License Agreement

Commercial

Non-patented biological materials

(“Research Tools”)

Internal use

Non-profit License Agreement

For non-profit

Patented inventions and non-patented biological materials

“Available Technologies”,

Non-Profit License Agreements

Research Tools

EXCLUSIVE

Exclusive Patent License Agreement

Commercial

NIH patented invention

“Available Technologies”

Non-profit License Agreement

For non-profit

NIH patented inventions and non-patented biological materials

“Available Technologies”

Non-Profit License Agreements

Research Tools

Start-up Exclusive Evaluation Option License Agreement

For Start-up companies: short-term and evaluation only

NIH patented invention

“Available Technologies”

Start-up Exclusive Patent License Agreement

For Start-up companies

NIH patented invention

“Available Technologies”

OTHER

License Agreement Amendment

Amendment to executed license agreement

 

Updated
Tuesday, October 11, 2016