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Prospective Grant of Exclusive License, Inter-Institutional Agreement-Institution Lead: Conductive Polymer Coated Electrodes for Dielectrophoretic Cell Positioning and Electroporation
Only written comments and/or applications for a license which are received by the Technology Transfer and Intellectual Property Office, National Institute of Allergy and Infectious Diseases on or before May 2, 2025 will be considered.
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Published Document: 2025-06576 (90 FR 16137)
This document has been published in the Federal Register. Use the PDF linked in the document sidebar for the official electronic format.
AGENCY:
National Institutes of Health, National Institute of Allergy and Infectious Diseases.
ACTION:
Notice.
SUMMARY:
The National Institute of Allergy and Infectious Diseases, an institute of the National Institutes of Health, Department of Health and Human Services, is contemplating the grant of an exclusive, sublicensable patent license to Cambridge Enterprise Limited, University of Cambridge, located in Cambridge, United Kingdom, to practice the inventions embodied in the patent applications listed in the
Supplementary Information
section of this notice.
DATES:
Only written comments and/or applications for a license which are received by the Technology Transfer and Intellectual Property Office, National Institute of Allergy and Infectious Diseases on or before May 2, 2025 will be considered.
ADDRESSES:
Requests for copies of the patent applications, inquiries, and comments relating to the contemplated exclusive patent license should be directed to: Wade Green, Ph.D., Acting Branch Chief, Technology Transfer and Intellectual Property Office, National Institute of Allergy and Infectious Diseases, 5601 Fishers Lane, Suite 2G, MSC9804, Rockville, MD 20852-9804, phone number 301-761-7505, or
wade.green@nih.gov.
SUPPLEMENTARY INFORMATION:
The following represents the intellectual property to be licensed under the prospective agreement: European Patent Application Patent Application No. EP23386021.2, filed March 10, 2023, titled “Conductive Polymer Coated Electrodes for Dielectrophoretic Cell Positioning and Electroporation” (HHS Reference No. E-266-2023-0-EP-01) and International Patent Application No. PCT/EP2024/056247, filed on March 8, 2024, titled “Conductive Polymer Coated Electrodes for Dielectrophoretic Cell Positioning and Electroporation” (HHS Reference No. E-266-2023-0-PC-01). All rights in these inventions have been assigned to Cambridge Enterprise Limited and the Government of the United States of America.
The prospective patent license will be for the purpose of consolidating patent rights with Cambridge Enterprise Limited, the co-owner of said rights, for commercial development and marketing. Consolidation of these co-owned rights is intended to expedite development of the invention, consistent with the goals of the Bayh-Dole Act codified as 35 U.S.C. 200-212.
The prospective patent license will be exclusive, and may be limited to those fields of use commensurate in scope with the patent rights. It will be sublicensable, and any sublicenses granted by Cambridge Enterprise Limited in the United Kingdom will be subject to the provisions of 37 CFR part 404.
The subject patent rights pertain to devices and methods for single-cell electroporation of human cells for clinical uses. Specifically, this subject invention describes certain conductive polymer electrodes that have properties that may allow for their use in the development of microfluidic-based electroporation devices for clinical uses.
( printed page 16138)
This notice is made in accordance with 35 U.S.C. 209 and 37 CFR part 404. The prospective exclusive license will be royalty-bearing, and may be granted unless within fifteen (15) days from the date of this published notice, the National Insitute of Allergy and Infectious Diseases 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.
In response to this Notice, the public may file comments or objections. Comments and objections, other than those in the form of a license application, will not be treated confidentially, and may be made publicly available.
License applications submitted in response to this Notice will be presumed to contain business confidential information and any release of information in these license applications will be made only as required and upon a request under
the Freedom of Information Act,5 U.S.C. 552.
Dated: April 14, 2025
Surekha Vathyam,
Director, Technology Transfer and Intellectual Property Office, National Institute of Allergy and Infectious Diseases.