Licensing Agreements

The Office of Technology Transfer and Development (OTTAD) recognizes the importance of converting basic science discoveries into public health benefits, by licensing research discoveries derived from the intramural and extramural laboratories of NHLBI and OTTAD’s client Institutes. Because NHLBI and OTTAD’s client Institutes do not engage in the manufacture and sale of products, OTTAD makes the discoveries of NHLBI and OTTAD’s client Institutes available to organizations that can develop, manufacture, and distribute them to the public through licensing of these technologies.

If an entity is licensing either an unpatented material or a patented or patent-pending technology for commercial purposes, a Commercial Evaluation License, a Biological Materials License, or an Exclusive/Nonexclusive License is required. OTTAD recommends using TechFinder, a live search engine that allows users to locate, by keyword or taxonomy classification, technologies that have been developed in laboratories at the NHLBI and OTTAD’s client Institutes.

Licensing Agreements are 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 types of licenses available from OTTAD are listed below:

Non-Exclusive

Commercial Evaluation License Agreement

  • Short-term (six to 12 months)
  • Evaluation only
  • Patented inventions are NHLBI and OTTAD’s client Institutes intellectual property.

Non-Exclusive Patent License Agreement

  • Commercial
  • Non-commercial
  • Internal research use
  • Patented inventions are NHLBI and OTTAD’s client Institutes intellectual property.

Biological Material License Agreement

  • Commercial
  • Internal use
  • Non-patented biological materials are NHLBI and OTTAD’s client Institutes intellectual property.

Non-Profit License Agreement

  • For non-profit
  • Patented inventions and non-patented biological materials are NHLBI and OTTAD’s client Institutes intellectual property.

Exclusive

Exclusive Patent License Agreement

  • Commercial
  • Patented inventions and non-patented biological materials are NHLBI and OTTAD’s Client Institutes intellectual property.

Non-profit License Agreement

  • For non-profit
  • Patented inventions and non-patented biological materials are NHLBI and OTTAD’s client Institutes intellectual property.

Other

License Agreement Amendment

  • Amendment to executed license agreement


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 codes. The licensee will be required to pay licensing fees and make royalty payments. The frequency and amount are determined during the License Application’s negotiation process. Payments and royalties vary, based on the type of license selected and other factors associated with the value of the licensed invention and its impact on the market place once commercialized.

NIH has developed several model License Agreements that serve as the baseline for all license negotiations. A Commercial development or marketing plan must be submitted during 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, OTTAD and the NIH Office of Technology Transfer (OTT) work closely with licensees to monitor performance and adjust benchmarks 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 achieve performance benchmarks, failure to comply with governing regulations, and failure to satisfy public health needs.