2013-16950. Prospective Grant of Exclusive License: Ophthalmic Diagnostic Devices

AGENCY:

National Institutes of Health, HHS.

ACTION:

Notice.

SUMMARY:

This is notice, in accordance with 35 U.S.C. 209 and 37 CFR part 404, that the National Institutes of Health (NIH), Department of Health and Human Services (HHS), is contemplating the grant of a worldwide exclusive start-up patent license, to practice the inventions embodied in U.S. Patent 8,132,911 (HHS Ref. No. E-279-2006/0) to OptoBiometrics Designs, Inc., a company incorporated under the laws of the State of California having its headquarters in Pleasant Hill, California. The United States of America is the assignee of the rights of the above inventions. The contemplated exclusive license may be granted in a field of use limited to ocular fundus examination devices and systems.

DATES:

Only written comments and/or applications for a license received by the NIH Office of Technology Transfer on or before July 31, 2013 will be considered.

ADDRESSES:

Requests for a copy of the patent application, inquiries, comments and other materials relating to the contemplated license should be directed to: Michael A. Shmilovich, Esq., CLP, Office of Technology Transfer, National Institutes of Health, 6011 Executive Boulevard, Suite 325, Rockville, MD 20852-3804; Telephone: [phone]; Facsimile: [phone]; Email: [e-mail]. A signed confidentiality nondisclosure agreement will be required to receive copies of any patent applications that have not been published by the United States Patent and Trademark Office or the World Intellectual Property Organization.

SUPPLEMENTARY INFORMATION:

The issued patent covers an optical system that permits targeted photo-stimulation of the retina by positioning a stimulus location under visual guidance through a fundus camera. The instant system is designed to elicit, under direct infrared (IR) visual control of stimulus size and position in the retina, electroretinograms (ERGs) in response to photo-stimulation from selected regions of the retina, as well as to present small light stimuli to a selected area to explore visual sensitivity properties. For example, the detected ERGs can be the basis for diagnosing or characterizing patient retina with early stage retinal disease versus healthy retina from the opposite eye. The system can be mounted on commercially available fundus cameras that have IR capabilities (or would accept IR bandpass filtering of their retinal illumination output) and will accept a near IR CCD camera connected to a TV mounted on the photographic-camera port.

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 part 404. The prospective exclusive license may be granted unless, within fifteen (15) days from the date of this published notice, NIH receives 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 part 404.

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: July 9, 2013.

Richard U. Rodriguez,

Director, Division of Technology Development and Transfer, Office of Technology Transfer, National Institutes of Health.