RESEARCH TO PRACTICE (r2p)

How to License a NIOSH Technology

Use or commercialization of these NIOSH technologies may require a license. A license is a legal agreement which defines the terms and conditions under which a third party may make, use or sell the invention. The licensing of NIOSH technologies is handled by our sister agency, the National Institutes of Health’s Office of Technology Transfer (NIH OTT).

The first step for licensing a NIOSH technology is to complete and submit to NIH OTT an Application for License to Public Health Service Inventions.

This application forms the basis for licensing decisions and provides information about the potential licensee, the type of license desired, some of the terms desired and the potential licensee's plans for development and/or commercialization of the invention. If a form of exclusivity is desired, the completed application provides us with the applicant’s justification for this request.

After reviewing the license application, the NIH OTT in consultation with NIOSH determines if the applicant's proposal is consistent with the licensing strategy developed for the invention, whether the granting of the license would benefit the public, and be consistent with the interests of the federal government. If the applicant has requested a nonexclusive license and a favorable determination has been made, then negotiations will begin as appropriate.

If the applicant has requested an exclusive or partially exclusive license, NIH OTT will publish a notice in the Federal Register, as required by law. After a 30 day period for public comment, a final determination regarding the license will be made. NIH OTT has provided a helpful flowchart of the licensing process to explain the steps to securing a license through NIH OTT for a NIOSH technology.

Types of Licenses Available

Commercial Evaluation Licenses grant the nonexclusive right to make and use the technology for the purpose of evaluating its commercial potential. The license is for a limited number of months and does not grant the right to sell or otherwise distribute the invention. Licensees are required to obtain a commercial patent license for further use and/or development of the invention.

Internal Commercial Use Licenses grant the nonexclusive right to make and use the invention for the purpose of internal use by the licensee. These licenses do not grant the right to sell or otherwise distribute the invention, but allow the licensee to use the invention as a tool in their commercial development activities.

Nonexclusive and Exclusive Patent Licenses allow a company to commercialize the invention, under appropriate circumstances pursuant to applicable statutes and regulations. An exclusive license limits the use of the invention to a single group or entity while a nonexclusive license allows for use by multiple entities.

For additional information or questions regarding licensing a NIOSH technology solution, please contact Kathleen Goedel.