NIH Office of Technology Transfer (OTT)

Royalty payments may be submitted by check, wire transfers or electronic funds transfer.
It is extremely important to reference the appropriate OTT license agreement number (L-000-0000) on the payment. This will ensure prompt and accurate credit of your royalty payment to your license agreement.
Include information with your payment stating how the payment should be applied. For example: 2005 Minimum Annual Royalty, Execution Fee, Earned Royalties for (MM/DD/YYYY to MM/DD/YYYY).

Where do I send royalty payments?

Checks drawn on a U.S. bank account should be sent directly to the following address:

National Institutes of Health (NIH)
P.O. Box 979071
St. Louis, MO 63197-9000

Overnight or courier deliveries should be sent to the following address:

US Bank
Government Lockbox SL-MO-C2GL
1005 Convention Plaza
St. Louis, MO 63101
Phone: 314-418-4087.

Checks drawn on a foreign bank account should be sent directly to the following address:

National Institutes of Health (NIH)
Office of Technology Transfer
Royalties Administration Unit
6011 Executive Boulevard
Suite 325, MSC 7660
Rockville, Maryland 20852
Phone: 301-496-7057

All checks should be made payable to "NIH Patent Licensing".
Wire transfers/electronic funds transfers should be sent to:

Federal Reserve Bank
ABA# 021030004
TREAS NYC
BNF=/AC-75080031
OBI=License Name and OTT Reference Number Dollar Amount Wired = $$

Are there any special requirements if we are sending our payment from a foreign bank?

Checks must be submitted in US currency.
Wire transfers/electronic funds transfers must be sent to the Federal Reserve Bank, New York City, NY via any U.S. bank. Only U.S. banks can wire directly to the Federal Reserve Bank. Foreign banks cannot wire funds directly to the Federal Reserve Bank, but must go through an intermediary, U.S. bank. Foreign banks may send the wire transfer to the U.S. bank of their choice, who, in turn, forwards the wire transfer to the Federal Reserve Bank.

Who collects royalty payments?

Royalty payments are made to a bank and are then reported to the Office of Financial Management. OTT reconciles the royalty payments processed by the bank with the terms of the agreement and sends notices to licensees whose payments have not been accounted for.

Where do I send sales and earned royalty reports?

E-mail such reports to Hans Feindt or send them to:

Chief, Monitoring & Enforcement Branch
Office of Technology Transfer, NIH
6011 Executive Blvd, Suite 325
Rockville, MD 20852 U.S.A.

A sample report is available at the following link: Sample Report

Where do I send annual commercial development or periodic R&D progress reports?

E-mail such reports to Hans Feindt or send them to:

Chief, Monitoring & Enforcement Branch
Office of Technology Transfer, NIH
6011 Executive Blvd, Suite 325
Rockville, MD 20852 U.S.A.

If I am a non-US licensee, how do I avoid withholding income taxes on royalty payments made to NIH when local tax regulations may require it?

Licensees based in countries outside the U.S. may be required to withhold income taxes on royalties paid out by them. However, exemption from this requirement or a significant reduction in the amount of tax withheld may be possible if the licensee resides in a country that is party to the Double Taxation Convention with the U.S. If this is the case, the licensee should complete and send the appropriate forms required by their local tax authorities to OTT for signature. OTT will sign the documents and return them with U.S. Internal Revenue Service Form 6166, Certification of U.S. Residency. The licensee should then file them with their local tax authorities for the exemption.

Any forms or inquiries about this should be sent to the following address:

Royalties Administrator
Office of Technology Transfer, NIH
6011 Executive Blvd, Suite 325
Rockville, MD 20852 U.S.A.

Inquiries may be e-mailed to us.

Where can I obtain a "Request for Taxpayer Identification Number and Certification" form W-9 for the National Institutes of Health?

Completed W-9s are available on the OTT Web Site or can be requested by e-mail.

Our bank charges a fee to wire a payment. Who pays this fee?

The Licensee must pay all wire transmittal fees.

What happens if a royalty obligation is not paid by the due date?

The National Institutes of Health (NIH), Office of Technology Transfer (OTT), may assess additional royalties.

In February 2005, the Office of General Counsel, Department of Health and Human Services (HHS), determined that technology licenses (patent licenses, biological materials licenses, and commercial evaluation licenses) are executory contracts. It was further determined that while the Office of Technology Transfer is not authorized to impose or collect interest and penalties, it is, under 35 USC 207(a), authorized to impose additional royalties on terms that are validly delinquent.

What happens if this debt becomes 90 days past due?

Additional royalties may be assessed by PHS on any payment that is more than ninety (90) days overdue at the rate of one percent (1%) per month. The one percent (1%) per month rate may be applied retroactively from the original due date until the overdue payment and additional royalties are remitted by Licensee to PHS. The payment of any additional royalties shall not prevent PHS from exercising any other rights it may have as a consequence of the lateness of any payment.

What happens if this debt becomes 150 days past due?

At 150 days past due, the additional royalty for late payment will be 5% of the principle due. A notice that the license will be terminated in 90 days unless the overdue debt is paid within 30 days, will also be sent

What happens if this debt becomes 180 days past due?

The license will be terminated unilaterally for breach of contract.
The licensee may be referred to the Department of Justice or the NIH Debt Collection Office for further action.
Additional royalties may be converted to interest and penalties, at which time they cannot be waived by NIH and will be imposed by the U.S. Treasury (or its designee) as stipulated in the Debt Collection Act of 1996 and 45 CFR 30.
The licensee and any person or parties with financial responsibility for the licensee will be excluded from future business with the OTT. Authority for this arises from 35 USC 207(a), the statute that mandates this office to protect the Federal Government's intellectual property rights.
The licensee may be reported to credit bureaus as a delinquent debtor.
When the debt is referred to the NIH Debt Collection Officer, the OTT will recommend that the licensee be placed on GSA's Excluded Parties Listing. Any company or individual listed is excluded from doing future business with the Federal Government.

Can a licensee request that an accommodation or arrangement be made to delay or suspend payment, to develop a repayment plan, or to waive the debt or additional royalties?

Yes, such requests should be submitted to the OTT Royalties Administrator, Karen Rogers, by e-mail or by letter to the following address:

National Institutes of Health
Office of Technology Transfer
Royalties Administrator
6011 Executive Boulevard, Suite 325
Rockville, MD 20852

What information needs to be included in this request?

The request should identify the license number, explain why payment has not been made, propose a way to resolve the debt, and explain why OTT should consider the request.

Will additional royalties continue to accrue while the request is reviewed and considered?

Yes.

What will happen if a delinquent debt is waived or compromised by OTT?

Any debt over $25 that is waived or compromised by OTT will be reported to the Internal Revenue Service (IRS) on a 1099-C as income and must be reported by the licensee to the IRS as such.

Who should I contact when...

There is a new contact person for sending license royalty payment notices to?
Our address, telephone, e-mail has changed?
We are having problems making a payment?
We need more materials?

Please contact Karen Rogers, Royalties Administrator, by phone at 301-435-4359 or by e-mail.

Who should I contact when...

Our company has changed names, been acquired by another company, or is going out of business?
We want to assign the license to another company?
We are sublicensing the technology in our NIH license to another company?
We want to request an amendment to our license agreement?
We want to terminate the license agreement?

Please contact Hans Feindt, Chief, Monitoring & Enforcement Branch, by phone at 301-435-5467, or by e-mail.

Who makes any payments of royalty income due to the inventors and the institutes?

The disbursement of royalty income to PHS agencies and PHS investigators is handled by the NIH Office of Financial Management as required by the Federal Technology Transfer Act (FTTA).

Sample Report: Sales Reports

Licensees who develop and/or sell commercial products based on technology licensed from the Public Health Service are obligated to submit periodic reports of sales and earned royalties to NIH. The information that should be provided NIH in these reports is identified in the following example.

Sales and Earned Royalty Report

Licensee:	Your Company Name
License No.	L-XXX-YYYY

Sales & Earned Royal Report for Reporting Perios (mm/dd/yy) to (mm/dd/yy)

Country of Sale	Licensed Product Name	Cat. No.	Units Sold	Gross Sales (USD)
US	A	001-001	623	$94,696.00
	B	001-002	35	$8,225.00
UK	A	001-001	45	$7,200.00
	C	001-003	650	$229,450.00
Japan	A	001-001	403	$66,495.00
	B	001-002	21	$5,145.00

	Total Gross Sale=			$411,211.00

	Less Allowable Deductions:

	Freight=			-$5,321.00
	Returns=			-$4,322.00

	Total Net Sales=			$401,568.00

	Earned Royalty Rate=			8%

	Earned Royalty Due=			$32,125.44

	Less Creditable Payments:

	Minimum Annual Royalty=			-$2,000.00
	Other Creditable Payments=			$0.00

	Net Earned Royalty Due=			$30,125.44

Sales and Earned Royalty reports should be sent to:

Chief, Monitoring & Enforcement Branch
Office of Technology Transfer, NIH
6011 Executive Blvd, Suite 325
Rockville, MD 20852