iEdison: Manage Third Party Assignment

Manage Third Party Assignment

The NIH has authority to approve third party assignment by contractors under 35 U.S.C 204. However, such assignments are generally prohibited by the Act, and approved only in narrow circumstances on a case-by-case basis. In requesting approval of a third party assignment, contractors should be prepared to explain why such an assignment is necessary and in the public interest. Do not seek reassignment to avoid possible U.S. Patent and Trademark Office rejections of future inventions for obviousness (i.e. creating a common obligation of assignment in order to permit the possibility of invoking 35 USC 103(c) in the future). It is generally considered to be an inadequate basis for approval of assignment to a third party.

The approval process requires that grantee organizations and contractors provide information and justification for the request as outlined below. You may add any other information that you believe will why the assignment is necessary and in the public interest. After filling out the form, choose "Submit" to e-mail the request to the NIH.

The NIH review that can lead to the approval of an assignment of rights to a third party will not begin until the NIH receives answers to the questions and all other pertinent information.

If you have questions, or if you prefer to submit information on paper, please contact:

     Division of Extramural Inventions & Technology Resources (DEITR), OPERA, OER
     National Institutes of Health (NIH)
     Attn: Third Party Assignment Request
     6705 Rockledge Drive, Suite 310, MSC 7980
     Bethesda, MD 20892-7980
     (301) 435-1986
     Edison@nih.gov

Information may be faxed to NIH at (301) 480-0272.

To initiate a request for third party assignment, fill out the fields below, then choose "Submit" to send your request to the NIH. All fields marked with an asterisk (*) are required.

Third Party Assignment Request

Prefix (e.g. Dr., Ms., Rev.)

* First Name

Middle Name

* Last Name

Suffix (e.g. Jr., Nobel)

* E-mail Address

* Invention Report Number (###9999999-99-9999)

* Grantee/Contractor Organization

* Grant/Contract Number

* Invention Title

* Invention Docket Number

Description of the technology and explanation of why the assignment is necessary for commercialization of the technology.

Explanation of why the technology cannot be commercialized through means other than assignment to a third party, such as through exclusive or co-exclusive licensing.

Description of entity to which contractor proposes assignment (i.e., non-profit, for-profit, etc.).

How the public interest will be protected after assignment including, for example, 1) agreement by the assignee that it and its successors will be subject to the terms and provisions of 37 CFR 401 in commercializing the technology, 2) remedies for failure to comply with conditions placed on the assignment by the grantee for the public interest and 3) disposition of the technology in the event the assignee enters bankruptcy, dissolution, or is otherwise unable or unwilling to commercialize the technology.