Office of Technology Transfer - Licensing Information - Licensing at a Glance
LICENSING INFORMATION AT A GLANCE
A PHS License Application must be submitted to the NIH Office of Technology Transfer to obtain any license. Model agreements for the various types of license are also available from this web site.
Exclusive & Nonexclusive Patent Licenses
A patent license agreement:
- Allows a company to commercialize an NIMH invention under appropriate circumstances, pursuant to applicable statutes and regulations;
- limits the use of the invention to a single group or entity where the license is an exclusive one; and
- requires negotiation of a Biological Materials License if the invention desired by the company for commercial purposes is not claimed in a patent or patent application owned by the US Government.
The criteria to be considered in evaluating exclusive license applications include whether:
- exclusive licensing serves the best interests of the public;
- practical application of the invention is not likely to be achieved under a nonexclusive 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; and
- exclusive licensing will not lessen competition.
This type of license is typically nonexclusive and facilitates the commercial development of biological materials developed in PHS laboratories without requiring that patent protection be obtained for every material. It also
- allows a company to make, use and/or sell commercially useful biological materials which are not in the public domain, for which patent protection cannot or will not be obtained.
Internal Commercial Use Licenses
This license is a limited version of the patent license (for patented materials) or the BML (for unpatented materials) described elsewhere in this page; it also
- grants the nonexclusive right to make and use the invention for the purpose of internal use by the licensee; and,
- while the licensee is allowed to use the invention as a tool in its commercial development activities, no right to sell or otherwise distribute the invention is granted.
A commercial evaluation license:
- Grants the nonexclusive right to make and use the technology for the purpose only of evaluating its commercial potential;
- for a limited number of months;
- but without granting any other rights to sell or otherwise distribute the invention without first obtaining a commercial patent license for further use and/or development.