Notice of Intent To Grant Exclusive License

AGENCY:

Office of the General Counsel, Department of Energy.

ACTION:

Notice of intent to grant exclusive patent license.

SUMMARY:

The Department of Energy (DOE) hereby gives notice that DOE intends to grant an exclusive license to practice the invention described and claimed in U.S. Patent Application Number 16/895,188 titled “Colorimetric Detection of Actinides” and the resulting patent(s) to Innovyz USA LLC, a company having its principal place of business at Chicago, IL. The patent application is owned by United States of America, as represented by DOE.

DATES:

Written comments, objections, or nonexclusive license applications must be received at the address listed by May 19, 2021.

ADDRESSES:

Comments, applications for nonexclusive licenses, or objections relating to the prospective exclusive license should be submitted to Office of the Assistant General Counsel for Technology Transfer and Intellectual Property, U.S. Department of Energy, Room 6F-067, 1000 Independence Ave. SW, Washington, DC 20585. or emailed to: marianne.lynch@hq.doe.gov.

FOR FURTHER INFORMATION CONTACT:

Marianne Lynch, Office of the Assistant General Counsel for Technology Transfer and Intellectual Property, U.S. Department of Energy, Room 6F-067, 1000 Independence Ave. SW, Washington, DC 20585; Email: marianne.lynch@hq.doe.gov; and Phone: (202) 586-3815.

SUPPLEMENTARY INFORMATION:

This notice, issued in accordance with 35 U.S.C. 209(c)(1), 37 CFR 407(a)(1)(i) and 35 U.S.C. 209(c), gives DOE the authority to grant exclusive or partially exclusive licenses in federally-owned inventions where a determination is made, among other things, that the desired practical application of the invention has not been achieved, or is not likely to be achieved expeditiously, under a nonexclusive license. The statute and implementing regulations (37 CFR 404) require that the necessary determinations be made after public notice and opportunity for filing written comments and objections. The prospective exclusive license complies with the requirements of 35 U.S.C. 209 and 37 CFR 404.7.

Innovyz USA LLC has applied for an exclusive license to practice the inventions embodied in the patent application and has plans for commercialization of the inventions.

Within 15 days of publication of this notice, any person may submit in writing to DOE's General Counsel for Intellectual Property and Technology Transfer Office (contact information listed in the ADDRESSES section), either of the following, together with supporting documents: (i) A statement setting forth reasons why it would not be in the best interest of the United States to grant the proposed license; or (ii) An application for a nonexclusive license to the invention, in which applicant states that it already has brought the invention to practical application or is likely to bring the invention to practical application expeditiously.

The proposed license would be exclusive, subject to a license and other rights retained by the United States, and subject to a negotiated royalty. DOE will review all timely written responses to this notice, and will grant the licenses if, after expiration of the 15-day notice period, and after consideration of any written responses to this notice, a determination is made in accordance with 35 U.S.C. 209(c) that the licenses are in the public interest.

Signing Authority

This document of the Department of Energy was signed on April 26, 2021, by Brian Lally, Assistant General Counsel for Technology Transfer and Intellectual Property, pursuant to delegated authority from the Secretary of Energy. That document with the original signature and date is maintained by DOE. For administrative purposes only, and in compliance with requirements of the Office of the Federal Register, the undersigned DOE Federal Register Liaison Officer has been authorized to sign and submit the document in electronic format for publication, as an official document of the Department of Energy. This administrative process in no way alters the legal effect of this document upon publication in the Federal Register.