01-1464. Prospective Grant of Exclusive License: Orally Active Derivatives of 1,3,5(10)-Estratriene

AGENCY:

National Institutes of Health, Public Health Service, DHHS.

ACTION:

Notice.

SUMMARY:

This is notice, in accordance with 35 U.S.C. 209(c)(1) and 37 CFR 404.7(a)(1)(i), that the National Institutes of Health (NIH), Department of Health and Human Services, is contemplating the grant of an exclusive license worldwide to practice the invention embodied in: U.S. Patent Application Series No. 08/122,853, filed September 17, 1993, issuing as U.S. Patent 5,554,603 on September 10, 1996 entitled, “Orally Active Derivatives of 1,3,5(10)-Estratriene” to the R.W. Johnson Pharmaceutical Research Institute, a corporation of Delaware, having a place of business in Raritan, New Jersey. The patent rights in this invention have been assigned to the United States of America, as represented by the Department of Health and Human Services.

DATES:

Only written comments and/or application for a license which are received by the NIH Office of Technology Transfer on or before March 19, 2001 will be considered.

ADDRESSES:

Requests for a copy of the patent applications, inquiries, comments and other materials relating to the contemplated license should be directed to: Dennis H. Penn, Pharm.D., Technology Licensing Specialist, Office of Technology Transfer, National Institutes of Health, 6011 Executive Boulevard, Suite 325, Rockville, MD 20852-3804; Telephone: [phone], ext. 211; Facsimile: [phone].

SUPPLEMENTARY INFORMATION:

In an effort to develop an efficacious treatment for human reproductive disorders this invention describes orally active derivatives of 1,3,5(10)-estratriene. This compound may have utility as a contraceptive and as an estrogen replacement for the treatment and prevention of postmenopausal conditions.

The prospective exclusive license will be royalty-bearing and will comply with the terms and conditions of 35 U.S.C. 209 and 37 CFR 404.7. The prospective exclusive license may be granted unless, within 60 days from the date of this published Notice, NIH received written evidence and argument that establishes that the grant of the license would not be consistent with the requirements of 35 U.S.C. 209 and 37 CFR 404.7.

The field of use may be limited to the use of the invention for the development of pharmaceutical compounds for use as a contraceptive and for treatment and prevention of postmenopausal conditions.

Properly filed competing applications for a license filed in response to this notice will be treated as objections to the contemplated license. Comments and objections submitted in response to this notice will not be made available for public inspection, and, to the extent permitted by law, will not be released under the Freedom of Information Act, 5 U.S.C. 552.

Dated: January 8, 2001.

Jack Spiegel,

Director, Division of Technology Development and Transfer, Office of Technology Transfer.