December 24, 2008 Dr. Kurt Kaczmarek University of Wisconsin-Madison 3605 Medical Science 1300 University Avenue Madison, WI 53706 Invention Title: A Non-invasive Neuro-modulation System Inventors: Kurt Kaczmarek, Yuri Danilov and Mitchell Tyler NIH...
December 24, 2008
Xx. Xxxx Xxxxxxxxx
University of Wisconsin-Madison
3605
Medical Science
0000 Xxxxxxxxxx Xxxxxx
Xxxxxxx, XX 00000
Invention Title: A Non-invasive Neuro-modulation System
Inventors: Xxxx Xxxxxxxxx, Xxxx Xxxxxxx and Xxxxxxxx Xxxxx
NIH Funding
Agreement No.: NS014837
NIHEIR#: 0578503-07-0197
Re: Inventor Waiver Request Decision
Dear Drs. Xxxxxxxxx, Xxxxxxx and Xxxxx:
This is in response to your request for the National Institutes of Health to permit title to the above-referenced Invention made under a funding agreement to a Nonprofit Institution to be assigned to the Inventors. Your request has been approved as detailed below with respect to the rights applicable to the Institution.
We have evaluated the request under 35 U.S.C. 202(d), using the regulations as promulgated under 37 CFR 401.9, and determined the following:
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the Government has insufficient interest in the invention to retain title and/or rights at this time;
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the inventors are free to retain and administer the rights applicable to the invention in accordance with the requirements of 37 CFR 401.9; and
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the inventors are bound by the terms in the inventor's request for retention of rights in this subject invention (e.g., the Inventor Certification). Although not all inclusive, the . inventors agree to:
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- grant a nonexclusive, irrevocable, royalty-free license to practice the invention for or on behalf of the United States throughout the world; |
- continue to adhere to conditions that would apply to the original award recipient under 37 CFR 401;
- seek patent protection for the subject invention within one year of the date of this approval; and '
- provide the NIH with documentation of any patent application numbers, confirmatory licenses, filing and/or application dates and inclusion of the Federal Support Clause within the text of the issued patent and any patent applications or their equivalents in the prosecution of any plant variety protection applications.
Once the inventors are assigned this intellectual property derived with Government funds, the · inventors should ensure that any research material derived from the invention remains available to the scientific community for research purposes, consistent with applicable NIH policies. Fulfillment of this request is consistent with the policy and objectives of the Xxxx-Xxxx Act and 37 CFR 401 in that it serves to promote commercialization without encumbering future research and discovery.
Finally, the Inventors should coordinate and agree to appoint one inventor as the representative to go to the iEdison Invention and Patent Reporting web site, located at xxxx://xXxxxxx.xxx, and register. The iEdison web site permits the inventor to, on behalf of any inventors that have been waived rights hereunder, make the required reports on assigned inventions. Once the inventor registers at the iEdison web site, the inventor needs to contact our office at (000) 000-0000 to transfer the technology appropriately to the new iEdison account established on behalf of the inventors.
This waiver permits the assignment of rights to the inventors. By signing below, the current owner of the Invention affirms the transfer to the inventors of the iEdison records relating to the IP.
This determination is effective upon the signature &return of this letter from the inventors and a signatory from the institution within 90 days from the date of this notification, and the inventor must register in iEdison for the continued reporting on this technology.
Sincerely,
/s/ Xxxx Xxxxxxx
Xxxx Xxxxxxx
Assistant Extramural Inventions Policy Officer
Division of
Extramural Inventions and Technology Resources (DEITR),
Office of Policy for
Extramural Research Administration (OPERA), OER, OD
cc: |
Xxxxxxx Xxxx (Director) |
Please direct all correspondence to:
Waiver Coordinator | ||
0000 Xxxxxxxxx Xxxxx | Phone: (000) 000-0000 | |
Suite 310, MSC 7980 | Fax: (000) 000-0000 | |
Bethesda, MD 20892-7980 | E-mail: xxxxxx@xxx.xxx |
Accepted:_/s/ Xxxxxxxx X. Xxxxx | 1/06/2009 |
Inventor Signature | Date |
Xxxxxxxx X. Xxxxx | Researcher |
Print Name | Title |
Accepted: /s/ Xxxxxxx Xxxx | 1-22-09 |
Authorized Official | Date |
Current Invention Owner | |
Xxxxxxx Xxxx | 1-22-09 |
Print Name | Title |
Invention Title: A Non-invasive Neuro-modulation System
Inventor’s Name: Xxxx Xxxxxxxxx, Xxxx Xxxxxxx and Xxxxxxxx Xxxxx
NIH
Funding Agreement Number: NS014837
NIH EIR#: 05748503-07-0197
Current
Date: December 24, 2008
Please direct all correspondence to:
Waiver Coordinator | ||
0000 Xxxxxxxxx Xxxxx | Phone: (000) 000-0000 | |
Suite 310, MSC 7980 | Fax: (000) 000-0000 | |
Bethesda, MD 20892-7980 | E-mail: xxxxxx@xxx.xxx |
Accepted: Xxxx Xxxxxxxxx | 1/5/2009 |
Inventor Signature | Date |
Xxxx Xxxxxxxxx | Senior Scientist |
Print Name | Title |
Accepted: /s/ Xxxxxxx Xxxx | 1-22-09 |
Authorized Official | Date |
Current Invention Owner | |
Xxxxxxx Xxxx | 1-22-09 |
Print Name | Title |
Invention Title: A Non-invasive Neuro-modulation System
Inventor’s Name: Xxxx Xxxxxxxxx, Xxxx Xxxxxxx and Xxxxxxxx Xxxxx
NIH
Funding Agreement Number: NS014837
NIH EIR#: 05748503-07-0197
Current
Date: December 24, 2008
Please direct all correspondence to:
Waiver Coordinator | ||
0000 Xxxxxxxxx Xxxxx | Phone: (000) 000-0000 | |
Suite 310, MSC 7980 | Fax: (000) 000-0000 | |
Bethesda, MD 20892-7980 | E-mail: xxxxxx@xxx.xxx |
Accepted: /s/ Xxxx Xxxxxxx | January 7, 2009 |
Inventor Signature | Date |
Xxxx Xxxxxxx | Senior Scientist |
Print Name | Title |
Accepted: /s/ Xxxxxxx Xxxx | 1-22-09 |
Authorized Official | Date |
Current Invention Owner | |
Xxxxxxx Xxxx | 1-22-09 |
Print Name | Title |
Invention Title: A Non-invasive Neuro-modulation System
Inventor’s Name: Xxxx Xxxxxxxxx, Xxxx Xxxxxxx and Xxxxxxxx Xxxxx
NIH
Funding Agreement Number: NS014837
NIH EIR#: 05748503-07-0197
Current
Date: December 24, 2008