Technology Transfer Considerations

PREVENT Collaborator

Applicants whose concept proposals are approved for PREVENT studies are expected to establish a PREVENT Collaboration Agreement between NCI and the applicant’s institution (PREVENT Collaborator). This Collaboration Agreement (Word version [30 KB], PDF version [64 KB]) outlines the various rights and obligations of NCI and the PREVENT Collaborator(s) for the PREVENT studies.

The PREVENT program will work with the NCI Technology Transfer Center to establish the Collaboration Agreement and determine applicable terms and conditions for each study approved by the PREVENT program.

Intellectual Property (IP) and Licensing Considerations for Inventions Developed Under the PREVENT Program

NCI adheres to federal laws of inventorship and ownership of inventions. The PREVENT Collaborator(s) will retain any rights including IP rights, title, and interest in any proprietary materials and data they contribute for the PREVENT studies. The following applies to any inventions that are conceived and/or reduced to practice during the conduct of the respective PREVENT study:

  • Invention(s) developed by NCI

    NCI will inform the PREVENT Collaborator of any inventions made by its employees during the conduct of the PREVENT study that are directed to the PREVENT Collaborator’s proprietary materials and/or data, and after consultation with the PREVENT Collaborator, NCI will decide whether or not to file a patent application on any such invention. If NCI does file a patent application, the PREVENT Collaborator will be given an opportunity to negotiate for a license in accordance with the procedures set forth in 37 CFR Part 404. Additionally, the PREVENT Collaborator may use any patentable inventions resulting from the collaboration for non-profit research and teaching purposes at no cost to the PREVENT Collaborator.

  • Invention(s) developed by the PREVENT Collaborator

    In exchange for NCI’s contribution under the PREVENT program, NCI will have a non-exclusive royalty-free license for research purposes to any inventions developed by the PREVENT Collaborator during the conduct of the PREVENT project. The PREVENT Collaborator is free to license these inventions, given that any license agreement with a third-party provides for the rights granted to the Government section.

  • Inventions developed by NCI contractor(s)

    In conducting a portion of the PREVENT project, NCI may utilize the services of one or more of NCI contractors under a funding agreement as defined by 35 USC § 201(b). Inventions made by NCI contractors are subject to the provisions of the Bayh-Dole Act. NCI and NCI contractors will promptly notify the PREVENT Collaborator of any invention(s) developed by NCI contractors during the conduct of the PREVENT study that are related to the composition and use of the Collaborator’s proprietary materials or data. These contractors, as a term and condition of their contract, have agreed to provide the PREVENT Collaborator with the first option to negotiate an exclusive license, in addition to a non-exclusive royalty-free license for research purposes to these inventions.

  • Inventorship of Invention(s)

    Inventorship will be determined by US patent laws. According to these laws, an inventor is defined as one who contributed conception to at least one claim of the patent application. In other words, if any of the PREVENT applicants’ intellectual contributions, from the initial PREVENT concept to their continued intellectual involvement in the study, becomes a part of the final invention, they may qualify as inventor(s) of the respective invention even if the patent is filed by NCI or its contractors, subject to US patent laws.

Materials and Data

NCI will provide PREVENT Collaborators with any materials and data that are developed during the conduct of the PREVENT project, including research results generated by NCI or its contractors. The PREVENT collaborator may use these materials and data for their own purposes, including commercial development, subject to the obligations in the Collaboration Agreement. 

*For further information about IP, licensing, and the transfer of materials and data for the PREVENT studies, please refer to the above Collaboration Agreement or contact the NCI DCP technology transfer representative at (240) 276-5530, ahsans@mail.nih.gov.