LICENSING NIST INVENTIONS
Sections
5.10.05 Conditions for Licensing
5.10.06 Audits Requested by NIST
5.10.07 Approvals and Responsibilities
5.10.01
PURPOSE
This subchapter states the policies and procedures to be followed in
licensing NIST inventions. NIST License Agreements are the vehicles
by which NIST's intellectual property rights in patented (or patentable)
technology are made available to industry. Inventions may arise from
intramural, CRADA, or other collaborative research, and may be wholly or
partially owned by NIST. The licenses may provide exclusive, coexclusive
or nonexclusive rights, and may be defined by duration, field of use, and
geography.
5.10.02
SCOPE
This subchapter applies to all NIST employees.
5.10.03
POLICY
a. Intramural Inventions - Applying for, obtaining a patent
on, and licensing NIST intramural inventions is one of many routes by which
NIST helps achieve industry's use of NIST technology. When the OU
Director has agreed that patent licensing is the appropriate route in a
given situation, it is NIST policy to strike a balance:
(1) Between the need to provide fair and equal access to the technology, and getting the technology rapidly to industry;
(2) Between negotiating licensing terms that provide industry with an incentive to commercialize the technology, and preserving the value of the technology through royalties; and
(3) Between the need to get ongoing NIST research done, while also providing the continuing support to industry that may be necessary for the successful commercialization of the invention.
The availability of NIST intramural inventions must be publicly announced in the statutorily required manner. Statute also requires and provides the procedure for making a public announcement of NIST's intention to grant an exclusive license to NIST's ownership of an intramural invention. Objections received from the public to the proposed exclusive license must be taken into account by NIST.
b. CRADA Inventions - The standard NIST CRADA provides CRADA partners with an option to negotiate an exclusive field of use license to NIST's ownership in CRADA inventions. No public announcements are required for licensing CRADA inventions. In a CRADA with an ATP recipient on the subject of the ATP award, NIST provides title to all inventions, including those made by NIST, to the ATP CRADA partner in accordance with 15 U.S.C. 278n(d)(11)(A).
c. Royalties - Statute requires that the inventor(s) receives
at least 15 percent (NIST policy is 30 percent) of any license royalties
or other payments received up to $150,000 annually, after the first $2,000
of such payments go to the inventor(s).
5.10.04
LEGAL AUTHORITIES
35 U.S.C. 207
37 C.F.R. 404
15 U.S.C. 3710, as amended
15 U.S.C. 278n(d)(11)(A)
5.10.05
CONDITIONS FOR LICENSING
For licensing NIST inventions, an invention must be compatible with
the NIST mission; present no conflict of interest for NIST or its research
project staff; and be acceptable to NIST approval authorities.
5.10.06
AUDITS REQUESTED BY NIST
NIST reserves the right, at its discretion, to conduct an independent
audit verifying reports and payments as stated in the license.
5.10.07
APPROVALS AND RESPONSIBILITIES
a. The OU Director, NIST Counsel, and Chief,
OTP are all responsible for signing the license.
b. The Office of Technology Partnerships (OTP) is responsible for:
• Providing copies of the license agreement to the Finance Division.
• Preparing and sending letters to licensees and assignees requesting
payments due under the license, with the licensee/assignee directed to
send payments to the Finance Division.
• Monitoring receipt of required payments and royalty reports, following
up with licensees/assignees when payments are not forthcoming and, in consultation
with the Office of NIST Counsel, taking or recommending appropriate action,
which may include license termination on delinquent accounts.
• Monitoring licensee performance in bringing the licensed technology
to the point of ‘practical application’ per the license commercialization
plan and other specific milestones included in the license.
• Providing licensees with a self-audit checklist when sending the
executed copy of a license and at such other times as may be appropriate.
• Recommending to the appropriate OU Director when a license should
be terminated and, in consultation with the Office of NIST Counsel, terminating
licenses when the licensee has not, in NIST’s judgment, exercised diligence
in commercializing the licensed technology.
• Forwarding information regarding potential license infringement for
the licensee, inventors, or others to the NIST Counsel.
• Maintaining a current relational database of all licenses and related
information.
• Preparing the recommendations memorandum for the Director, Technology
Services, for formal audit of licenses as appropriate.
• Requesting the Acquisitions and Logistics Division to issue a contract
for approved audits and the Grants and Agreements Management Division to
serve as the Audit Resolution Officer on such contracts. OTP will
serve as the COTR for the contract.
• Preparing and sending letters to audited licensees requesting payment
of any amounts determined by the audit to be due to NIST.
c. The Director, Technology Services is responsible for:
• Reviewing and, if appropriate, approving audit recommendations submitted by OTP. Requesting that funds to pay for the audit be provided from the overall license income received by NIST. If sufficient funds are unavailable for the audit from the overall license income received by NIST, but the Director, Technology Services, believes that a compelling justification for an audit exists, he/she may request, via justification memorandum through the Budget Division to the NIST Deputy Director, funds from another source.
d. The Budget Division is responsible for:
• Determining that there are sufficient funds, after royalty payments and other obligations taken from the licensing income, to pay for the audit are available from the license income received by NIST and, in that case, approving or disapproving the request of the Director, Technology Services.
e. The Finance Division is responsible for:
• Receiving payments due from licensees and assignees.
• Providing the following to OTP in a timely manner: copies of all
reports received from licensees/assignees; details of income received from
all licensees/assignees, broken down into types of payments; details of
the disbursement of license income, including royalties and other payments.
• Disbursing payments from licensees/assignees per NIST policy and
statutory requirements.
• Maintaining a current database of all licenses/assignments, which
incorporates details on payments and disbursements, and providing on-line,
viewable access to the database to OTP.
• Collecting payments due NIST as determined by any audit.
f. The NIST Counsel is responsible for:
• Providing legal advice and guidance in the patent licensing and audit
processes, including addressing and resolving pre- and post-licensing and
auditing legal issues.
• Serving as the NIST lead in addressing legal disputes between NIST
and its licensees, including patent infringements.
• Providing legal advice and consultation to OTP and other NIST offices
prior to the initiation of an audit, license termination, or other action
that may adversely affect a licensee’s rights.