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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 interested in applying for a license obtain a license application form from the Office of Technology Partnerships (OTP). The applicant returns the completed form to OTP. The responsible 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.  
         
  Examples of Use  
    Example 1: NEWCO wishes to license NIST intramural polishing technology exclusively for use on silicon wafers and magnetic media in the U.S.  
    Example 2: While collaborating with colleagues from the State University, NIST coinvented a bacteriarhodopsin analog with a lifetime of at least five years. SU has a very active licensing program and has licensed a number of its patents to the optical media industry. Both parties agree that the most effective commercialization route would be for NIST to license its ownership in the technology, in return for a pro-rata share of the royalties, to the University which will, in turn, license the technology to industry. The university will handle the filing and prosecution of the patent.  
         
  FAQs  
    Q. Can NIST grant my company an exclusive license?  
    Q. How is the amount of the royalty determined? Is it used to pay NIST back for the cost of the NIST research?  
    Q. What is there to prevent a company from licensing a NIST invention and then just sitting on it?  
    Q. I work for a large multinational company with manufacturing facilities throughout the world that is interested in licensing a NIST invention. However, we would not be interested if we could only use the licensed technology in the U.S. Can the technology granted in a license be used to manufacture outside the U.S.?  
         
  Sample Forms  
    The following forms are in PDF format and require *Adobe Acrobat Reader to view and print. This software may be downloaded without charge. If Adobe Acrobat Reader is not accessible, you may request a paper copy from the Webmaster. Forms may be downloaded and distributed.  
    License Application  
    NIST Nonexclusive License Agreement  
    NIST Exclusive License  
         
  See Also  
    Licensing NIST Inventions  
    Search NIST patents, licenseable technologies, inventions  
         
  Point of Contact  
    Office of Technology Partnerships  
 

* Adobe Acrobat Reader is identified in order to assist users of this information service. In no case does such identification imply recommendation or endorsement by the National Institute of Standards and Technology.

 

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For technical questions concerning the Office of Technology Partnerships, contact us:

Office of Technology Partnerships, NIST, 100 Bureau Drive, Stop 2200, Gaithersburg, MD 20899-2200
Phone: (301) 975-3084, Fax: (301) 869-2751, Email: otp@nist.gov

Website Comments: otpweb@nist.gov

Created: February 2002
Last Modified: April 20, 2004

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