|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.
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
- 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
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.
- 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.
- 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
- Ongoing CRADAs, Clinical Trials Agreement (CTA), Confidentiality
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.
- 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
- 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.