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Licensing & Royalties
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Royalties Administration

The following sections provide information about the NIH Royalty Program. We believe the information will be useful to the NIH technology transfer community, as well as NIH and non-NIH inventors.

NIH Royalty Program

History

Prior to 1990, the NIH contracted with the National Technology Information Service (NTIS) to collect and classify NIH royalty payments from licensees. On a semiannual basis, NTIS would remit the royalty income to NIH, once they had taken a percentage of the dollars to cover their administrative costs. A decision was made in the early 1990s to discontinue the contractual relationship with NTIS, in part as a cost savings measure. Thus, in the early 1990s, the NIH took over the responsibility of collecting and classifying all royalty payments from licensees. This decision, along with the significant growth and complexities inherent in the Royalty Program, had a dramatic impact on the roles and responsibilities within the NIH.

NIH Royalty Policy

The Technology Transfer Manual, Chapter 311, sets forth policies and procedures for the receipt and distribution of royalties.

Roles and Responsibilities

The Office of Technology Transfer (OTT) Royalties Administration Unit (RAU) and the Office of Financial Management (OFM) work closely to manage the NIH Royalties Program. Roles and Responsibilities include:

OTT RAU Responsibilities
  1. Notifying NIH Institute Technology Development Coordinators and Licensees of executed licenses
  2. Identifying licensee contacts and forwarding payment instructions
  3. Identifying and pursuing the payments from licensees, including Execution Fees, Minimum Annual Royalties, Benchmark Payments, Patent Prosecution Reimbursement, etc
  4. Processing and posting payments in an electronic tracking system
  5. Notifying inventors to release materials upon receipt of royalties as stipulated in the license agreement
  6. Reconciling monthly receipts with OFM
  7. Calculating and authorizing all Royalty distributions to Inter-Institutional Agreement Licensees
  8. Forwarding delinquent licensees to OFM Debt Collection Office, the Department of Justice, or terminating licenses
OFM Responsibilities
  1. Receiving notification of collections received via lockbox at Mellon Bank and wire transfers from the Federal Reserve Bank in New York
  2. Processing and posting payments in an electronic tracking system
  3. Notifying inventors and Inter-Institutional Technology Partners of previous and/or upcoming payouts
  4. Issuing 1099s and 1042s at year-end
  5. Completing monthly and semi-annual reconciliation of royalty receipts

Royalty Distributions to Inventors FAQs

Royalty Payments & Sales and Progress Reports FAQs


IMPORTANT MESSAGE TO ALL INVENTORS

If you move, or change financial institutions, you must notify Johanna Grodzicki or Sandra Waddy of these changes. This is your responsibility. Checks mailed to old addresses are returned to the U. S. Treasury. Direct deposits to an old account number at your previous financial institution are also returned to the U. S. Treasury. This will cause a delay in receiving your royalty payment. If you have new banking information, complete the ACH VENDOR/MISCELLANEOUS PAYMENT ENROLLMENT FORM at http://ofm.od.nih.gov/forms.html and return to Johanna Grodzicki or Sandra Waddy at the address below. In addition, type or hand-write the word INVENTOR next to the heading in the PAYEE/COMPANY INFORMATION section.

     Ofice of Financial Management (OFM) Royalty
     National Institutes of Health
     Government Accounting Branch
     2115 East Jefferson St. MSC 8500
     Bethesda, Maryland 20892-8500


Missing Inventors

The following inventors may be entitled to royalty payments. If your name is included in the list, or if you know someone in the list, please contact the OFM Royalty Coordinator or Staff.

  •   Friz Friedl
  •   Yohei Ito
  •   Ixuo Kimmura
  •   Estate of Thomas L. O´Donohue
  •   Toyoro Osato
  •   Carole Smith

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