[Federal Register Volume 67, Number 13 (Friday, January 18, 2002)]
[Notices]
[Pages 2656-2657]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 02-1348]


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ENVIRONMENTAL PROTECTION AGENCY

[FRL-7130-1]


Intent To Assign an Invention

AGENCY: Environmental Protection Agency (EPA).

ACTION: Notice of intent to assign an invention.

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SUMMARY: Pursuant to 35 U.S.C. 202(e)(1) and 207 and 37 CFR part 404, 
EPA hereby gives notice of its intent to assign ownership of the 
invention described and claimed in the patent application listed below, 
all U.S. patents issuing therefrom, all corresponding patents granted 
and issued throughout the world, and all reexamined and reissued 
patents granted in connection with such patent application to the 
University of Southern California, Los Angeles, California. The patent 
application is:
    U.S. Patent Application No. 09/992,544, entitled ``A Technology for 
Continuous Measurement of Coarse Particle Mass Concentration,'' filed 
November 13, 2001.
    Title 35 U.S.C. 202(e)(1) requires that assignment of rights to an 
invention be made in accordance with the provisions of chapter 18 of 35 
U.S.C. Accordingly, EPA is required to follow the procedures set out in 
37 CFR part 404, Licensing of Government Owned Inventions, which 
implement chapter 18, in order to issue the assignment. Normally, 37 
CFR 404.7(a)(1) requires an agency to issue both a notice of 
availability of an invention for exclusive licensing or assignment, as 
well as a notice of intent to grant the exclusive license or issue the 
assignment. However, EPA has authority under 37 CFR 404.7(a)(1) to 
proceed without a notice of availability when expeditious transfer of 
rights will best serve the interest of the Federal government and the 
public. Under that authority, EPA has decided not to issue a notice of 
availability of this invention for licensing or assignment. The 
University of Southern California is co-owner by assignment from its 
employee inventor of an undivided interest in the invention. It is 
unlikely that any other party would be willing to take a license or 
assignment from EPA on a patent application or patent encumbered by co-
ownership. Furthermore, the University of Southern California has 
identified a potential licensee of the University who is requesting an 
exclusive license of the University. The University cannot grant an 
exclusive license until it has obtained the exclusive license or 
assignment of EPA's co-ownership.

[[Page 2657]]

Accordingly, EPA is relying on its authority under 37 CFR 404.7(a)(1) 
to proceed without such notice of availability.
    The proposed assignment will contain appropriate terms, limitations 
and conditions in accordance with the limitations and conditions of 35 
U.S.C. 202(c)(4), 203 and 204, and where applicable to assignments, the 
limitations and conditions of 37 CFR 404.5 and 404.7 of the U.S. 
Government patent licensing regulations.
    EPA will negotiate the final terms and conditions and execute the 
assignment, unless within 30 days from the date of this Notice, EPA 
receives, at the address below, written objections to the grant, 
together with supporting documentation. The documentation from 
objecting parties having an interest in practicing the above patent 
application should include an application for assignment or for an 
exclusive or nonexclusive license with the information set forth in 37 
CFR 404.8. EPA's Grants Administration Division, the Director of the 
National Risk Management Research Laboratory, and other EPA officials 
will review all written responses and then make a recommendation to the 
EPA Patent Counsel who has been delegated the authority to transfer and 
assign patent rights on behalf of EPA.

DATES: Comments to this notice must be received by EPA at the address 
listed below by February 19, 2002.

FOR FURTHER INFORMATION CONTACT: Laura Scalise, Patent Attorney, Office 
of General Counsel (Mail Code 2377A), U.S. Environmental Protection 
Agency, Washington, DC 20460, telephone (202) 564-8303.

    Dated: January 11, 2002.
Robert A. Friedrich,
Acting Associate General Counsel.
[FR Doc. 02-1348 Filed 1-17-02; 8:45 am]
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