Daily Rules, Proposed Rules, and Notices of the Federal Government


National Institutes of Health

Prospective Grant of Exclusive License: Terahertz Scanning Systems for Cancer Pathology

AGENCY: National Institutes of Health, Public Health Service, HHS.
ACTION: Notice.
SUMMARY: This is notice, in accordance with 35 U.S.C. 209(c)(1) and 37 CFR 404.7(a)(1)(i), that the National Institutes of Health (NIH), Department of Health and Human Services (HHS), is contemplating the grant of a worldwide exclusive evaluation option license, to practice the inventions embodied in:
to Transformatix Technologies, Inc., a company incorporated under the laws of the State of California having its headquarters in Davis, California. The United States of America is the assignee of the rights of the above inventions. The contemplated exclusive license may be granted in a field of use limited to terahertz scanning systems for cancer pathology. Upon the expiration or termination of the exclusive evaluation option license, Transformatix will have the right to execute an exclusive patent commercialization license which will supersede and replace the exclusive evaluation option license with no greater field of use and territory than granted in the evaluation license.
DATES: Only written comments and/or applications for a license received by the NIH Office of Technology Transfer on or before October 16, 2012 will be considered.
ADDRESSES: Requests for a copy of the patent application, inquiries, comments and other materials relating to the contemplated license should be directed to: Michael A. Shmilovich, Esq., CLP, Office of Technology Transfer, National Institutes of Health, 6011 Executive Boulevard, Suite 325, Rockville, MD 20852-3804; Telephone: (301) 435-5019; Facsimile: (301) 402-0220; signed confidentiality nondisclosure agreement will be required to receive copies of any patent applications that have not been published by the United States Patent and Trademark Office or the World Intellectual Property Organization.

The patent applications (including any patents issuing therefrom or claiming priority thereto) intended for licensure describe and claim a terahertz (THz) imaging system that may overcome the limitations of existing systems by using the near-field effect at THz frequencies to provide micron-scale spatial resolution. Additionally, the THz imaging system describes a sensor head geometry that eliminates the requirement to mechanically scan samples, and also allows automatic adjustment of image resolution and transmitted power. The claimed system has no moving components and is therefore potentially suitable for medical applications such as cancer diagnosis of living subjects in hospital settings. In one application, such as “one-cut” surgery, the compact sensor head of the system may have the capability of distinguishing healthy cells from cancerous cells with micron-scale spatial resolution by identifying a skin cancer margin without the need for laboratory work or the possibility of additional surgery.

The prospective exclusive license will be royalty bearing and will comply with the terms and conditions of 35 U.S.C. 209 and 37 CFR 404.7. The prospective exclusive license may be granted unless, within fifteen (15) days from the date of this published notice, NIH receives written evidence and argument thatestablishes that the grant of the license would not be consistent with the requirements of 35 U.S.C. 209 and 37 CFR 404.7.

Properly filed competing applications for a license filed in response to this notice will be treated as objections to the contemplated license. Comments and objections submitted in response to this notice will not be made available for public inspection, and, to the extent permitted by law, will not be released under the Freedom of Information Act, 5 U.S.C. 552.

Dated: September 25, 2012. Richard Rodriguez, Director, Division of Technology Development and Transfer, Office of Technology Transfer, National Institutes of Health.