Licensing NIST Technologies

Licensing NIST Inventions

The Technology Partnerships Office (TPO) negotiates the licensing of NIST patented inventions, pursuant to the policy and objectives set forth in the 1980 Amendments to the Patent and Trademark Laws (Bayh-Dole) Act and the Federal Technology Transfer Act of 1986, as amended. Parties interested in licensing an issued patent or patent application to conduct further research on and/or commercialize NIST technology can obtain a license application on-line or from TPO.

License fees and royalties for commercialization licenses are negotiated on a case by case basis and depend upon several factors including the scope of the rights granted, the size of the potential market, and the time and financial investment required by the licensee to bring a product to market. Information provided by the license applicant concerning the product concept, market size, profitability, and additional research and development required prior to product introduction is used to determine fair fees and royalties for each invention.

Commercial licenses can be granted both exclusively and non-exclusively or by specific field of use. Research licenses are only granted on a non-exclusive basis.

How to Apply for a License

Purpose

NIST License Agreements are the vehicles by which NIST's intellectual property rights in patents or patent applications are made available to industry. Inventions may arise from Cooperative Research and Development Agreements (CRADAs), intramural, or 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.

 Procedure for Licensing NIST Intramural Inventions

1. Parties may apply for a license by completing and submitting a license application form to the Technology Partnerships Office (TPO). The responsible TPO Licensing Officer reviews it for completeness and the type of license requested (exclusive, nonexclusive, field of use, etc.) and provides the applicant with a copy of the standard NIST exclusive or nonexclusive license agreement, as appropriate.
   
   
2. The Licensing Officer enters into negotiations with the applicant. If the licensee has requested an exclusive license, the required public announcement of NIST's intent to grant the applicant an exclusive license is prepared and issued. The public notice includes the name of the applicant, the technology to be licensed, field of use, licensed territory, and other pertinent information. It provides the public an opportunity to object to the grant of an exclusive license. The license cannot be granted for 60 days from the date of the announcement.
   
   
3. Once the negotiations have been completed, the License Agreement is routed internally for approval and signature.
   
   
4. Following internal approval, the Agreement is then sent to the licensee for signature.