[Federal Register Volume 78, Number 93 (Tuesday, May 14, 2013)]
[Notices]
[Page 28229]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-11357]


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DEPARTMENT OF HEALTH AND HUMAN SERVICES

National Institutes of Health


Prospective Grant of Exclusive License: Device and System for 
Expression Microdissection (xMD)

AGENCY: National Institutes of Health, HHS.

ACTION: Notice.

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SUMMARY: This is notice, in accordance with 35 U.S.C. 209(c)(1) and 37 
CFR Part 404.7(a)(1)(i), that the National Institutes of Health, 
Department of Health and Human Services, is contemplating the grant of 
a start-up exclusive commercial license agreement to practice the 
inventions embodied in International PCT Application S/N PCT/US03/23317 
(HHS Ref. No. E-113-2003/0-PCT-02) filed July 23, 2003, which published 
as WO 2004/068104 on August 12, 2004, now expired; U.S. Patent No. 
7,709,047 (HHS Ref. No. E-113-2003/0-US-03) issued May 4, 2010; U.S. 
Patent Application S/N 12/753,566 (HHS Ref. No. E-113-2003/0-US-07) 
filed April 2, 2010; U.S. Patent No. 7,695,752 (HHS Ref. No. E-113-
2003/1-US-01) issued April 13, 2010; U.S. Patent Application S/N 12/
713,105 (HHS Ref. No. E-113-2003/1-US-02) filed February 25, 2010; 
Australian Patent No. 2003256803 (HHS Ref. No. E-113-2003/0-AU-04) 
issued January 21, 2010; Australian Patent Application S/N 2009250964 
(HHS Ref. No. E-113-2003/0-AU-06) filed July 23, 2009; and Canadian 
Patent Application S/N 2513646 (HHS Ref. No. E-113-2003/0-CA-05) filed 
July 23, 2003, all entitled; ``Target Activated Microtransfer;'' and 
all continuing applications and foreign counterparts to xMD 
Diagnostics, LLC, a company having a place of business in Maryland. The 
patent rights in these inventions have been assigned to the Government 
of the United States of America.
    The prospective exclusive license territory may be ``worldwide'', 
and the field of use may be limited to the following below.
    ``Devices, systems, kits and related consumables, and methods using 
devices, systems, kits and related consumables, for micro-dissection of 
biological specimens, as covered by the Licensed Patents Rights (the 
``Exclusive Field''). xMD Diagnostics, LLC (xMD) shall be the only 
entity granted rights in the Exclusive Field for commercial or other 
``for-profit purposes. Methods, kits, and related consumables that are 
used independent of the devices or systems by individual researchers 
employed at non-profit and academic institutions, if such kits were 
built by the researchers themselves from component parts and used for 
their own individual research purposes, shall not infringe xMD's 
rights. Diagnostic services performed using devices, systems, kits and 
related consumables purchased from xMD (or xMD's authorized 
distributor(s)) by those persons employed at non-profit and academic 
institutions that purchased the devices, systems, kits and related 
consumables used in the diagnostic services, shall not infringe xMD's 
rights.''

DATES: Only written comments and/or applications for a license which 
are received by the NIH Office of Technology Transfer on or before May 
29, 2013 will be considered.

ADDRESSES: Requests for copies of the patent application, inquiries, 
comments, and other materials relating to the contemplated exclusive 
license should be directed to: Kevin W. Chang, Ph.D., Senior Licensing 
and Patenting Manager, Office of Technology Transfer, National 
Institutes of Health, 6011 Executive Boulevard, Suite 325, Rockville, 
MD 20852-3804; Telephone: (301) 435-5018; Facsimile: (301) 402-0220; 
Email: [email protected].

SUPPLEMENTARY INFORMATION: The subject technologies are methods, 
devices, and kits for target activated transfer of a target from a 
biological sample such as a tissue section, comprising: contacting the 
biological sample with a reagent that selectively acts on the target 
within the biological sample; placing a transfer surface adjacent the 
biological sample, wherein the reagent produces a change in the 
transfer surface by heating the target; heating the target to produce a 
change in the transfer surface and selectively adhere the target to the 
transfer surface, or to selectively increase permeability of the 
transfer surface to the target; and selectively removing the target 
from the biological sample by removing the transfer surface and the 
adhered target from the biological sample, or by moving the target 
through the transfer surface.
    The prospective start-up exclusive commercial license will be 
royalty bearing and will comply with the terms and conditions of 35 
U.S.C. 209 and 37 CFR Part 404.7. The prospective start-up exclusive 
commercial license may be granted unless within fifteen (15) days from 
the date of this published notice, the NIH 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 
404.7.
    Applications for a license in the field of use filed in response to 
this notice will be treated as objections to the grant of the 
contemplated exclusive license. Comments and objections submitted 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: May 8, 2013.
Richard U. Rodriguez,
Director, Division of Technology Development and Transfer, Office of 
Technology Transfer, National Institutes of Health.
[FR Doc. 2013-11357 Filed 5-13-13; 8:45 am]
BILLING CODE 4140-01-P