Small businesses can obtain information about available NIST-owned inventions through multiple sources. NIST provides information on our website at www.nist.gov/tpo and at www.nist.gov/Licensing. Applicants can also obtain information from the U.S. Patent and Trademark Office site (www.uspto.gov) and private search engines.
Applicants will need to confirm that the NIST-owned invention is available for licensing by searching the invention using the link provided on the websites provided above. Alternatively, the applicant can confirm the status of availability by submitting a question to the NIST SBIR website as directed in Section 1.04. Some NIST-owned inventions are described as only available for licensing on a non-exclusive basis, which typically means that at least one non-exclusive commercialization license has been granted by NIST. Any such NIST-owned inventions are still available for licensing on a non-exclusive basis. Any NIST-owned invention that has been exclusively licensed to another party is not available for licensing. If the NIST-owned invention has become unavailable for licensing prior to the close of this NOFO in the field of use relevant to the subtopic, NIST has the sole discretion to deem such application ineligible under the subtopic, as stated in Section 4.02 (Phase I Screening Criteria).
A SBIR awardee for this subtopic for a research license, it will need to contact NIST’s Technology Partnership Office for a license to use the NIST-owned invention. Such awardees will be granted a non-exclusive research license and will be given the opportunity to negotiate a non-exclusive or an exclusive commercialization license to the NIST-owned invention, in accordance with the Federal patent licensing regulations, set forth in 37 C.F.R. Part 404, and to the extent that such NIST-owned invention is available for licensing and has not otherwise been exclusively licensed to another party. Any research license granted for the purpose of this subtopic will be royalty-free during the award period. More information about licensing NIST inventions is available at www.nist.gov/Licensing.
The technical portion of an application should cite the NIST patent or patent application, and include a description of the research that will be undertaken. Included in this technical portion of the application, the applicant should provide a brief description of the proposed plan to develop the commercial product or to develop a commercial service using the NIST invention. The absence of this development plan will result in the application being less competitive.
Phase I expected results: Develop a feasibility study that examines expectations of the research to produce a commercial product or service.
Phase II expected results: Provide further R&D that leads to demonstrated practical application and advancement toward a commercial product or service.
NIST staff may be available for consultation and collaboration to the extent that resources are available.