2018-22212. Notice of Intent To Grant Exclusive License

AGENCY:

Office of the General Counsel, Department of Energy.

ACTION:

Notice of intent To grant exclusive patent license.

SUMMARY:

The Department of Energy (DOE) hereby gives notice that DOE intends to grant an exclusive license to practice the invention described and claimed in U.S. Patent Number 7,746,979 titled “Methods for Assisting Recovery of Damaged Brain and Spinal Cord and Treating Various Diseases Using Arrays of X-Ray Microplanar Beams” to The Research Foundation for The State University of New York, a nonprofit, educational corporation existing under the laws of the State of New York, having its principal place of business at Stony Brook, New York. The patent is owned by United States of America, as represented by DOE.

DATES:

Written comments, objections, or nonexclusive license applications must be received at the address listed no later than October 26, 2018.

ADDRESSES:

Comments, applications for nonexclusive licenses, or objections relating to the prospective exclusive license should be submitted to Office of the Assistant General Counsel for Technology Transfer and Intellectual Property, U.S. Department of Energy, Room 6F-067, 1000 Independence Ave. SW, Washington, DC 20585.

FOR FURTHER INFORMATION CONTACT:

Marianne Lynch, Office of the Assistant General Counsel for Technology Transfer and Intellectual Property, U.S. Department of Energy, Room 6F-067, 1000 Independence Ave. SW, Washington, DC 20585; Email: [e-mail]; and Phone: [phone].

SUPPLEMENTARY INFORMATION:

This notice is issued in accordance with 35 U.S.C. 209(c)(1) and 37 CFR 404.7(a)(1)(i). 35 U.S.C. 209(c) gives DOE the authority to grant exclusive or partially exclusive licenses in federally-owned inventions where a determination is made, among other things, that the desired practical application of the invention has not been achieved, or is not likely to be achieved expeditiously, under a nonexclusive license. The statute and implementing regulations (37 CFR 404) require that the necessary determinations be made after public notice and opportunity for filing written comments and objections.

The Research Foundation for The State University of New York has applied for an exclusive license to practice the inventions embodied in the patent and has plans for commercialization of the inventions.

Within 15 days of publication of this notice, any person may submit in writing to DOE's General Counsel for Intellectual Property and Technology Transfer Office (see contact information), either of the following, together with supporting documents:

(i) A statement setting forth reasons why it would not be in the best interest of the United States to grant the proposed license; or (ii) An application for a nonexclusive license to the invention, in which applicant states that it already has brought the invention to practical application or is likely to bring the invention to practical application expeditiously.

The prospective exclusive license complies with the requirements of 35 U.S.C. 209 and 37 CFR 404.7. The proposed license would be exclusive, subject to a license and other rights retained by the United States, and subject to a negotiated royalty. DOE will review all timely written responses to this notice, and will grant the licenses if, after expiration of the 15-day notice period, and after consideration of any written responses to this notice, a determination is made in accordance with 35 U.S.C. 209(c) that the licenses are in the public interest.

Brian Lally,

Assistant General Counsel for Technology Transfer and Intellectual Property.