The following information specifies the general technology transfer considerations for the PREVENT applicants related to the intellectual property (IP) and licensing mechanisms applicable to the studies in the PREVENT Program.
PREVENT Collaboration Agreement
Applicants whose concept proposals are approved for the PREVENT Program studies are expected to establish a PREVENT Collaboration Agreement between the NCI and the applicant’s institution (PREVENT Collaborator). This Collaboration Agreement ( , ) outlines the various rights and obligations of the NCI and the PREVENT Collaborator(s) for the PREVENT studies.
The NCI DCP PREVENT Program will work with the NCI Technology Transfer Center to establish the above Collaboration Agreement and determine the applicable terms and conditions for each study approved by the PREVENT Program.
PREVENT Applicants (PREVENT Collaborator)
NCI strictly adheres to U.S. federal laws of inventorship and ownership of inventions. According to these inventorship laws, an inventor is defined as one who makes an intellectual contribution to at least one claim of the patent application. In other words, if any of the PREVENT Collaborators’ intellectual contributions, from the initial PREVENT concept to their continued intellectual involvement in the study, become a part of the final invention generated under the conduct of the respective PREVENT study, they will qualify as an inventor of the final invention in accordance with U.S. patent laws. If the PREVENT Collaborators already have IP protection on any concepts that they provide for the PREVENT studies, they will continue to maintain that IP protection. Additionally, the PREVENT Collaborators will retain rights, title, and interest in any materials and/or data they contribute towards the PREVENT studies. According to the U.S. federal laws of ownership of inventions, the party that generates the invention owns the invention. There may be some cases in which the PREVENT Collaborator conducts the respective PREVENT study under a PREVENT contract/sub-contract. If any invention is generated by the PREVENT Collaborator conducting the respective PREVENT study under a PREVENT contract/subcontract, the PREVENT Collaborator as the party that generates the invention will have the right to file and own IP on these inventions.
For further information about the ownership and licensing of inventions generated by NCI, PREVENT Collaborators, and PREVENT contractors please see below.
Specific Intellectual Property (IP) and Licensing Considerations for Inventions developed under the PREVENT Program Studies
The NCI adheres to U.S. 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:
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Invention(s) developed by NCI
The 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, the NCI will decide whether or not to file a patent application on any such invention. If the 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.
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Invention(s) developed by the Collaborator
In exchange for the NCI’s contribution under the PREVENT Program, the NCI shall 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.
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Inventions developed by NCI’s Contractor(s)
In conducting a portion of the PREVENT project, NCI may utilize the services of one or more of NCI’s contractors under a funding agreement as defined by 35 U.S.C. § 201(b). Inventions made by NCI’s contractors are subject to the provisions of the Bayh-Dole Act. The NCI and NCI’s contractors will promptly notify the PREVENT Collaborator of any invention(s) developed by NCI’s contractors during the conduct of the PREVENT study that are related to the composition and use of Collaborator’s proprietary materials and/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.
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Inventorship of Invention(s)
Inventorship will be determined by U.S. 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 U.S. patent laws.
Materials and Data
The NCI will provide the PREVENT Collaborators with any materials and data including research results generated by NCI or its contractors that are developed during the conduct of the PREVENT project. 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 regarding 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.