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Technology Transfer Issues When Research Staff Leaves NINDS
 
For Investigators
 
Technology Transfer Issues When Research Staff Leaves NINDS
 

As A Research Staff member prepares for departing from NINDS employment, there are several key points dealing with various technology transfer obligations that must be clarified with the NIND TTO.

  1. Inventions:
    You must assure you have reported any invention of discovery while at NINDS prior to your departure. A copy of the Form PHS-6364, PHS Employee Invention Report, can be found at the following website: http://ott.od.nih.gov/forms_model_agreements
    /forms_model_agreements.html

  2. Patents/patent applications and Royalties:
    If you have been named on as an inventor on any patent application or patent during your tenure at the NINDS you will be expected to provide ongoing assistance related to filed patents (signing assignments, assistance with responses to PTO, etc).

    Keep NIH updated on any change of address in the future. Instructions for inventors in providing banking and contact information are addressed in an OFM narrative on the NIH Royalty Program. http://ofm.od.nih.gov/gov_acc.asp

    You are also expected to provide the NIH with any change of address for royalty distribution purposes. If you move, or change financial institutions, you must notify Johanna Grodzicki of these changes. This is your responsibility. Royalty checks and direct deposits sent to old addresses and invalid account numbers are returned to the U.S. Treasury. This will cause a delay in receiving your royalty payment.

    If you have new banking information, complete the SF-3881 ACH Vendor form at http://ofm.od.nih.gov/forms.html and return to Johanna Grodzicki at the address below:

    OFM Royalty Coordinator
    National Institutes of Health
    Government Accounting Branch
    Building 31, Room B1B05
    31 Center Drive, MSC 2050
    Bethesda, Maryland 20892-2050

    In addition, type or hand-write the word INVENTOR next to the heading in the PAYEE/COMPANY INFORMATION section.

  1. Lab Notebooks
    Original lab notebooks should not be removed from NIH premises. With explicit permission from your supervisor and in consultation with your IC Records Management Officer, you may be allowed to take along a copy of the lab notebook. Original Lab notebooks are retained by the NIH as stated in the NIH Manual for Record Retention. Should you require the original notebook, please contact your Administrative Officer for guidance.

  2. Transfer of Materials
    If you intend to take any materials from your NINDS lab (tissues, animals, or data), you will need to arrange to get a Material Transfer Agreement (MTA) signed with your new institution. To initiate this process, contact NINDS TTO. Be ready to provide the contact information of the tech transfer person at your new institute, and a listing of any materials which you plan to take, (not including any materials which are generally available for purchase). BE SURE TO INCLUDE A SHORT DESCRIPTION OF YOUR INTENDED RESEARCH WITH THE MATERIALS

    When separating scientific transfer material from the NIH lab, some of the same material must be left on NIH premises. This is done to assure that the scientist and his new institution do not become the only source for the NIH developed material, unless such an agreement is within the terms of a fully executed agreement between NINDS and the scientist’s new institute.

    Since this is deemed a transfer of government materials, it is very important that any transfer of materials be handled appropriately to avoid potential legal liabilities. Since you are receiving these materials under a MTA/SLA, you cannot transfer the NIH materials to a third party unless you receive permission from the NINDS lab from which they were originally attained. If you plan to transfer NINDS developed material and or data to a third party while at your new institution, you must first contact the NINDS TTO for permission. The terms of transfer of NIH materials to third parties must be no more restrictive than the NIH Simple Letter Agreement (SLA).

  3. Ongoing CRADAs, Clinical Trials Agreement (CTA), Confidentiality Agreements (CDA)
    If you are currently listed as a Principal investigator on an NINDS CRADA and/or CTA, you will need to identify a new Principal Investigator or terminate the agreement as appropriate. If you do identify a replacement PI, please seek approval of your Lab/Branch Chief. It will be your responsibility to contact the NINDS TTO for assistance in modifying or terminating the CRADA or CTA.

    If you are formally listed as a primary researcher on either a CRADA or CTA, you should notify the Principle Investigator and the NINDS TTO of your leaving.

    If you are listed on a CDA, it is your responsibility to notify the NINDS TTO so that office can notify the company. The NINDS TTO will inform you of remaining legal obligations upon you due to the terms of the CDA. You may be required to either leave materials at NINDS or return materials attained under the CDA.

  4. Data and Software
    All patient data or information must remain at the NINDS. All data generated from any research project at the NINDS is property of the NINDS. You will need to seek the approval of your Lab or Branch Chief to remove any data and/or software from the premises. Please contact the NINDS TTO for guidance.

    To take any IC computer programs/software to your new institution, you are responsible to notify your Lab Chief, obtain clearance from your IC Information Technology offices if so required by NINDS policy.

  5. Use of Confidential Information
    Remember that confidential information or data attained while at NINDS is considered proprietary to NINDS and unless appropriate agreements are in place, such material or information, or data should remain at NINDS.

 

 
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