Licensing Process and Policies

Identify an invention of interest

Inventions available for licensing can be found listed in TPO’s online database of ‘Available Technologies’ or through discussions with a TPO Marketing Specialist, a TPO Partnerships Officer, or a NIST researcher. Preliminary discussions may then lead to detailed discussions with the inventor and a TPO Partnerships Officer; if necessary, proprietary information of the applicant can be covered by a Non-disclosure Agreement (NDA) executed by the TPO Partnerships Officer. An NDA also may be obtained through the TPO Partnerships Officer if a copy of an unpublished patent application that covers the invention of interest is desired.

Submit a License Application

To license a NIST invention, an ‘Application for License’ must be completed and submitted to the TPO at licensing [at] nist.gov (licensing[at]nist[dot]gov). This application serves as the primary basis for licensing decisions. It provides the TPO with information about the applicant, the type of license desired, some of the terms desired and the applicant’s capabilities and plans for development and commercialization of the invention. Also, if the applicant desires a license with some form of exclusivity, the applicant must include in the application a justification for an exclusive license. [Note: Confidential commercial or financial information provided in a license application is exempt from disclosure under the Freedom of Information Act (FOIA) (5 USC 552(b).]

Review of the License Application

Upon receipt the license application will be reviewed. The TPO will determine if the applicant's proposal is consistent with the licensing strategy developed for the invention and whether the grant of the license would benefit the public and be consistent with the interests of the Federal government. If a non-exclusive license has been requested and a favorable determination has been made upon the application by the TPO, then negotiations will begin as appropriate. If an exclusive or partially exclusive license has been requested, by law, an additional public notification step is required.

TPO will publish a public notice for a period of at least 15 days to receive comments on the proposed grant of an exclusive or partially exclusive license, and then TPO will re-evaluate the application and all public comments to make a final determination regarding the license. The criteria to be considered in evaluating exclusive license applications (37 CFR §404.7) include whether:

• Exclusive licensing serves the best interests of the public;
• Practical application of the invention is not likely to be achieved under a non-exclusive license;
• An exclusive or partially exclusive license is a reasonable and necessary incentive to promote the investment of risk capital to bring the invention to practical application;
• Exclusive or partially exclusive license terms and conditions are not broader than necessary;
• Exclusive licensing will not lessen competition;
• Preference for "equally as likely" small business.