02-1348. Intent To Assign an Invention

AGENCY:

Environmental Protection Agency (EPA).

ACTION:

Notice of intent to assign an invention.

SUMMARY:

Pursuant to 35 U.S.C. 202(e)(1) and 207 and 37 CFR part 404, EPA hereby gives notice of its intent to assign ownership of the invention described and claimed in the patent application listed below, all U.S. patents issuing therefrom, all corresponding patents granted and issued throughout the world, and all reexamined and reissued patents granted in connection with such patent application to the University of Southern California, Los Angeles, California. The patent application is:

U.S. Patent Application No. 09/992,544, entitled “A Technology for Continuous Measurement of Coarse Particle Mass Concentration,” filed November 13, 2001.

Title 35 U.S.C. 202(e)(1) requires that assignment of rights to an invention be made in accordance with the provisions of chapter 18 of 35 U.S.C. Accordingly, EPA is required to follow the procedures set out in 37 CFR part 404, Licensing of Government Owned Inventions, which implement chapter 18, in order to issue the assignment. Normally, 37 CFR 404.7(a)(1) requires an agency to issue both a notice of availability of an invention for exclusive licensing or assignment, as well as a notice of intent to grant the exclusive license or issue the assignment. However, EPA has authority under 37 CFR 404.7(a)(1) to proceed without a notice of availability when expeditious transfer of rights will best serve the interest of the Federal government and the public. Under that authority, EPA has decided not to issue a notice of availability of this invention for licensing or assignment. The University of Southern California is co-owner by assignment from its employee inventor of an undivided interest in the invention. It is unlikely that any other party would be willing to take a license or assignment from EPA on a patent application or patent encumbered by co-ownership. Furthermore, the University of Southern California has identified a potential licensee of the University who is requesting an exclusive license of the University. The University cannot grant an exclusive license until it has obtained the exclusive license or assignment of EPA's co-ownership. Accordingly, EPA is relying on its authority under 37 CFR 404.7(a)(1) to proceed without such notice of availability.

The proposed assignment will contain appropriate terms, limitations and conditions in accordance with the limitations and conditions of 35 U.S.C. 202(c)(4), 203 and 204, and where applicable to assignments, the limitations and conditions of 37 CFR 404.5 and 404.7 of the U.S. Government patent licensing regulations.

EPA will negotiate the final terms and conditions and execute the assignment, unless within 30 days from the date of this Notice, EPA receives, at the address below, written objections to the grant, together with supporting documentation. The documentation from objecting parties having an interest in practicing the above patent application should include an application for assignment or for an exclusive or nonexclusive license with the information set forth in 37 CFR 404.8. EPA's Grants Administration Division, the Director of the National Risk Management Research Laboratory, and other EPA officials will review all written responses and then make a recommendation to the EPA Patent Counsel who has been delegated the authority to transfer and assign patent rights on behalf of EPA.

DATES:

Comments to this notice must be received by EPA at the address listed below by February 19, 2002.

FOR FURTHER INFORMATION CONTACT:

Laura Scalise, Patent Attorney, Office of General Counsel (Mail Code 2377A), U.S. Environmental Protection Agency, Washington, DC 20460, telephone [phone].

Dated: January 11, 2002.

Robert A. Friedrich,

Acting Associate General Counsel.