Working with the NCL
Input of Nanomaterials - Evaluation Criteria - Intellectual Property - Education & Training
Application Process - Assay Cascade - NCL Nanoparticles - Material Transfer Agreement
It is expected that originating parties will have taken initial steps to secure intellectual property protection before their involvement with the NCL. To share and safeguard Research Material and proprietary information, the NCL's interaction with extramural researchers and vendors will normally be conducted under a Material Transfer Agreement (MTA). The MTA permits the collaborative exchange of materials and associated information between NCL and the originating party(s) without the promise of resulting intellectual property. However, if NCI does file a patent application for technology developed at the NCL, the originating party will be given the opportunity to negotiate for a nonexclusive license under procedures set forth in 37 CFR Part 404.
By exception, the collaboration can be conducted under a Cooperative Research and Development Agreement (CRADA). Under the CRADA, the originating party is provided an exclusive or co-exclusive option to negotiate an exclusive or co-exclusive license to inventions conceived or first actually reduced to practice under the CRADA. CRADAs associated with the NCL are handled by NCI Technology Transfer Branch. Contact information for NCI's Technology Transfer Branch can be found on the Web at http://ttb.nci.nih.gov/.
However, given the anticipated 'multifunctional' aspect of resulting nanoplatforms, originating parties must appreciate that their intellectual property may be one of many components in a composite system. The product eventually used in the clinic, for example, may comprise a targeting molecule, a diagnostic tool, and a drug delivery component - each originating from a different inventor. This may require the originating party to accept a co-exclusive license and/or pursue cross-licensing with a third party(s).
The National Cancer Institute (NCI) Nanotechnology Characterization Laboratory (NCL) has been designed to investigate the use of nanoparticulate material for the advancement of cancer research. This Material Transfer Agreement (MTA) permits the exchange of materials and associated information between NCI and the party providing these materials.
Kathy Higinbotham in NCI's Technology Transfer branch can answer any questions you have about the intellectual property documents.
Kathleen Higinbotham, MS, MBA
A Service of the National Cancer Institute