[Federal Register Volume 79, Number 57 (Tuesday, March 25, 2014)]
[Notices]
[Page 16347]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-06413]


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DEPARTMENT OF HEALTH AND HUMAN SERVICES

National Institutes of Health


Prospective Grant of Co-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 and 37 CFR 
Part 404, that the National Institutes of Health, Department of Health 
and Human Services, is contemplating the grant of a co-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 No. 8,460,744 (HHS Ref. No. E-113-2003/1-US-02) 
issued June 11, 2013; Australian Patent No. 2003256803 (HHS Ref. No. E-
113-2003/0-AU-04) issued January 21, 2010; Australian Patent No. 
2009250964 (HHS Ref. No. E-113-2003/0-AU-06) issued March 25, 2013; and 
Canadian Patent No. 2513646 (HHS Ref. No. E-113-2003/0-CA-05) issued 
September 17, 2013, all entitled; ``Target Activated Microtransfer''; 
and all continuing applications and foreign counterparts to Ventana 
Medical Systems, Inc. a company having a place of business in Arizona. 
The patent rights in these inventions have been assigned to the 
Government of the United States of America.
    The prospective co-exclusive license territory may be 
``worldwide,'' and the field of use may be limited to the following:

    Devices, systems, kits and related consumables, and methods 
using device, systems, kits and related consumables, for micro-
dissection of biological specimens, as covered by the Licensed 
Patent Right. Excluded from the exclusive field of use are (1) 
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, and (2) diagnostic services performed 
using devices, systems, kits and related consumables purchased from 
Ventana or Ventana'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 Ventana'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 
April 9, 2014 will be considered.

ADDRESSES: Requests for copies of the patent application, inquiries, 
comments, and other materials relating to the contemplated co-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 co-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. The prospective co-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.
    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 co-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: March 19, 2014.
Richard U. Rodriguez,
Director, Division of Technology Development and Transfer, Office of 
Technology Transfer, National Institutes of Health.
[FR Doc. 2014-06413 Filed 3-24-14; 8:45 am]
BILLING CODE 4140-01-P