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A GENERAL ACCOUNTING OFFICE (GAO) report notes that the National Institutes of Health (NIH) is by far the most successful licenser of technology developed in government laboratories. From the period 1996 through 1998, NIH received more than $102 million in royalties on its inventions. This is about 95% of total royalties collected by federal agencies over that period of time. GAO found about 1,400 active licenses of government inventions in 1998, and about 1,000 of these were from NIH. About 75% of the technology licenses are nonexclusive. About 60% of the federal licenses were given to individuals or small businesses. Almost all the licenses went to domestic entities. Only 11% of all federal patent licenses went to foreign companies, and just about all of those were from NIH.

The other government agencies in addition to NIH that would be expected to have the largest potential for licensing inventions developed in their laboratories include the Department of Energy, the National Aeronautics & Space Administration, the Army, the Navy, and the Air Force. These six agencies received more than 77%, or $54 billion, of the $70 billion in federal R&D funding for 1998. The number of new technology licenses granted each year by these agencies is fairly constant, about 300 in each of the past thee years. This GAO analysis is available in Report RCED 99-173, http://www.gao.gov/re-ports.htm.

THE HOUSE JUDICIARY COMMITEE unan-imously approved the Inventors Protection Act of 1999. The bill HR1907 is the latest in a three year effort to amend the U.S. patent statute and restructure the United States Patent and Trademark Office. One of the provisions of the bill would severely penalize unscrupulous invention promotion companies with intent to put them out of business. Another provision would stop the practice of diverting millions of dollars in office fees to general governmental purposes and would allow the PTO to retain and spend all of the fees that it collects. The multilateral support behind the bill makes it likely that upcoming Senate version would embody most of the elements in HR1907.

THE SENATE COMMITTEE ON COMMER-CE, SCIENCE & TRANSPORTATION approved bill S 296 which ensures steady increases for federal R&D funds. Under the bill aggregate appropriations for the 15 federal agencies that support basic scientific, biomedical and precompetitive engineering research would increase about 5.5% per year from $39.79 billion in fiscal 2000 to $67.97 billion in 2010.

PRESIDENT CLINTON has nominated Q. Todd Dickinson to be Assistant Secretary of Commerce and Commissioner of Patents and Trademarks. He became Acting Assistant Secretary of Commerce and Acting Commissioner of Patents and Trademarks on January 1, 1999. Dickinson has sponsored three important initiatives during his tenure as head of the agency. In March, 20 million pages of images were added to the searchable text of two million patents dating back to 1976. This electronic library is available on PTO’s Web page, as well as all pending and registered trademarks. Dickinson aims to make all six million plus patents and one million plus trademarks available free on the Internet by 2001. During Dickinson’s term the Quality Council was launched – a cross functional group of PTO employees that will seek to provide guidance in aligning PTO with established quality criteria. Also, Dickinson set up the Office of Independent Inventor Programs, designed to meet the needs of inventors working for themselves or for small business.

FORBES MEDI-TECH (Vancouver, BC) will start manufacturing Phytrol, a plant sterol-based, cholesterol-lowering food ingredient made from tall oil soap, at Amqui, PQ. Forbes spent $5-$10 million to purchase and retool the plant, a former Bayer flavors unit. Forbes has also finalized a five-year licensing agreement giving Novartis exclusive use of Phytrol in functional foods, dietary supplements, and OTC products. Under the agreement, Forbes will receive upfront payment, royalties, and milestone payments from Novartis.

BTG INTERNATIONAL INC. (Gulph Mills, PA), a subsidiary of BTG P.L.C., a technology-transfer company, has acquired for licensing a novel gene-therapy approach to treat disorders associated with excess production of specific cytokines. The disorders include asthma, allergic symptoms, septic shock syndrome and rheumatoid arthritis. BTG is looking for companies to develop and commercialize therapeutic products based on the technology.

SCHERING AG and Idec Pharmaceuticals have entered a $47.5 million licensing agreement granting Schering exclusive marketing and distribution rights to Idec’s investigational drug, Zevalin (ibritumomab tiuxetan), formerly Idec-Y2B8, a monoclonal antibody linked to the radioisotope yttrium-90. Idec will retain U.S. rights to Zevalin, which is currently completing two Phase III clinical trials as a potential treatment for low-grade, follicular non-Hodgkin’s B-cell lymphoma. Schering will pay Idec $13 million in an up-front licensing fee and $15 million in committed funding for the drug’s development. The remaining amount, $19.5 million, will be paid as milestone payments. Schering will also pay Idec a royalty on product sales outside the U.S.

ELAN CORPORATION PLC has restructured its research and licensing agreement with Warner Chilcott PLC for their extended release nifedipine product, a generic alternative to Bayer’s Adalat CC. Elan is reacquiring all rights to the product, including the pending abbreviated new drug application, for an initial fee and future milestone payments. Also, Warner Chilcott will receive a royalty from Elan on product sales.

GENENTECH INC. and Immunex Corporation signed a license agreement that grants Genentech’s immunoadhesin patent portfolio to Immunex for its anti-arthritis product, Enbrel. The companies also agreed to jointly develop an anti-cancer approach, TNF-related apoptosis-inducing ligand.

ABGENIX INC. signed a research collaboration, option and license agreement with Amgen Inc. under which Abgenix will generate for Amgen fully human monoclonal antibodies to an undisclosed antigen using its XenoMouse technology.

AUTOGEN PTY LTD, a biotechnology company and subsidiary of Australia Wide Industries LTD, signed research and commercialization licensing agreements with Lipha SA, a subsidiary of Merck KGaA, for the development of new obesity and diabetes drugs.

OSI PHARMACEUTICALS has licensed certain compounds from Pfizer for the treatment of mild-to-moderate psoriasis. OSI will seek to develop a clinical candidate through Phase II trials. OSI would receive up-front fees and royalties on product sales should Pfizer decide to exercise its option for full product development.

ALTAREX CORPORATION (Waltham, MA), a biotechnology company, signed an agreement with privately held pharmaceutical company, Purdue Pharma LP (Norwalk, CT), granting Purdue a 180-day option to license AltaRex’s monoclonal antibodies (Mabs), OvaRex and BrevaRex, for development and commercialization.

PROTEIN DESIGN LABS INC. (PDL), (Fremont, CA) granted BioNet Pharma GmbH (Germany) rights to develop and market PDL’s SMART (humanized) anti-L-selectin antibody in Europe, the Middle East and Africa. BioNet paid PDL a $3 million non-refundable, non-creditable signing and licensing fee. PDL will receive royalties on any sales and will make milestone payments to BioNet.

ELI LILY & CO. has entered a three-year agreement with Sibia Neurosciences Inc. (La Jolla, CA), to research and develop compounds for the treatment of central nervous system disorders. The companies will work together to identify and optimize compounds selective for subtypes of nicotinic acetylcholine receptors. Lilly will pay Sibia a minimum of $20 million, including a payment of $8 million in 1999, for research funding and an equity investment. Sibia could also receive milestone and royalty payments. Lilly will receive exclusive global rights to products that result from the collaboration.

BIONX IMPLANTS INC. (Blue Bell, PA) said Innovasive Devices Inc. has agreed to settle a patent-infringement claim made by Bionx Implants regarding Innovasive’s Clearfix Meniscal Dart. As agreed, Innovasive Devices will license a Bionx Implants U.S. patent for sports medicine and both companies will dismiss all related legal action.

DUPONT PHARMACEUTICAL will collaborate with Structural Bioinformatics (San Diego) to identify and optimize small-molecule drugs targeted at receptors for several signaling proteins. The alliance could be worth more than $100 million in guaranteed funding and milestone payments, assuming successful product development. DuPont will pay for access to technology and to support research. DuPont will have responsibility for product development as well as worldwide commercial rights for any resulting products. In addition to R&D funding, Structural Bioinformatics will receive royalties on any products.

PFIZER INC. has entered a $50 million, five-year services, systems and technology access agreement for drug discovery with Aurora Biosciences Corporation (San Diego, CA) that grants Pfizer automated screening equipment and assay technology.

ROCHE DIAGNOSTICS has taken a license on the Boom technology for extracting nucleic acid from biological samples from Akzo Nobel’s Organon Teknika unit. The technology employs silica and a chaotropic agent to obtain purified nucleic acid preparations; it can be used for a variety of samples, ranging from whole blood to sputum, urine, and feces.

DOW AGROSCIENCES LLC has licensed Pangea Systems Inc.’s bioinformatics software for use by multiple sites across the U.S. in the company’s research and development efforts.

IFP has begun licensing a two-phase, homogenous catalyst-based process for dimerizing C₄ refining streams to octenes. Previously, IFP announced a similar process that uses a homogenous catalyst to produce linear alpha-olefins from ethylene.

EASTMAN CHEMICAL COMPANY plans to license its proprietary Energx PE technology to Chevron Chemical Company LLC. The technology can be used in gas-phase LLDPE facilities to produce high-performance LLDPE and HDPE.

MONTELL and Elenac plan a 50-50 joint venture to develop and license low-pressure, gas-phase polyethylene (PE) technologies, and processes for related products. The venture will also market and sell catalysts. It will have access to Montell’s Spherilene linear low-/high-density PE process and Elenac’s Lupotech G PE technology. Montell and Elenac will also contribute Ziegler-Natta, chromium, and metallocene catalysts. The companies’ existing gas-phase PE licenses will be taken over by the venture.

ATOCHEM and BP Amoco have formed a global polypropylene research and technology alliance that will develop PP technology from Appryl’s and BP Amoco’s processes for captive use and worldwide licensing.

POLIPROPILENO DEL CARIBE (Propilco; Bogota) has licensed Targor’s Novolen gas-phase polypropylene process for a plant at Cartegena, Columbia.

SAUDI AL ZAMIL group has named its maleic acid (MA) and butanediol (BDO) production venture Saudi International Petrochemical Co. (Riyadh). The venture plans to produce 850,000 m.t./year of methanol and 200,000 m.t./year of acetic acid. Negotiations are under way to secure process technology for the plants. Under an earlier agreement, SIPC will license Huntsman’s MA technology and Kvaerner’s BDO process for a complex at Al Jubail.

CYCLICS (Schenectady, NY) has bought 48 U.S. and foreign patents from GE Plastics covering cyclic compositions of polycarbonate, polyarylate, and poly-butylene terephthalate.

TORAY INDUSTRIES and Yizheng Chemical Fiber Group (China) will form a polyester film production joint venture in Yizheng, Jiangsu Province. The first phase involves the transfer of Toray’s technology to Yizheng’s 6,000-m.t./year plant.

VINNOLIT (Munich) has created a subsidiary, Vinnolit Technologie, to license its PVC and vinyl monomers processes in partnership with engineering firm Krupp Uhde.

PHILLIPS PETROLEUM has licensed its antifoulant technology to Mobil Chemical Company for use at Mobil’s Houston cracker. Phillips says the technology, which reduces coke formation and carbon monoxide levels in ethylene cracking, increases charge rates, boosting ethylene production. The Mobil deal is its first U.S. license.

OLTCHIM (Romania) will build a 15,000-m.t./year phthalic anhydride plant at Valcia. Balcke-Durr (Ratingen, Germany) will supply the plant, which will use technology licensed from Nippon Steel Chemicals. NSC is supplying know-how and catalyst for the unit, which will use naphthalene and ortho-xylene raw materials.

FOSTER WHEELER (Clinton, NJ) has an exclusive license to commercialize a process for fuel-grade methanol developed and patented by privately held technology firm Starchem (Houston). Foster Wheeler has targeted the process as an alternative fuel for power plants using liquefied natural gas and says the plants can switch to methanol with minimal modification.

EXXON CORPORATION and Dow Chemical Company have settled the metallocene patent disputes among them and their affiliates. Dow and Exxon say the agreement includes the licensing of certain patent rights and provisions for resolving patent disputes without litigation. As a result of the deal, Dow’s suit against Dex Plastomers in Holland, Exxon’s U.S. suit against DuPont Dow Elastomers and Dow, and a Dow suit against DSM regarding Dex products sold in Germany, have been resolved.

KEMIRA and Arab Potash Company (Amman) have set up a joint venture to build a $94 million potassium nitrate and dicalcium phosphate plant in Aqaba, Jordan. The venture will use ion exchange technology developed by Kemira.

APS/TECHFILM (Peabody, MA) has signed an exclusive licensing agreement with Justin Bolger to manufacture and sell Bolger’s ABC (Area Bonding Conductive) epoxy adhesives. These include the adhesives and devices described in Bolger’s patents, U.S. 5,667,884 and U.S. 5,840,417. These epoxy adhesives are a new type of z axis conductive adhesive, used to replace solder and solder balls for surface mounting plastic chip carriers, for attaching flexible circuit films and for direct attach of flipped chips to low cost plastic substrates.

AWARE INC. (Bedford, MA) said NEC Corp. will license the company’s G.992.2 standards-based G.Lite technology and software for use in its new uPD98541 ADSL chipset.

MOTOROLA INC.’s SEMICONDUCTOR PRO-DUCTS SECTOR has licensed flash technology from Silicon Storage Technology Inc. (Sunnyvale, CA) for a wide range of embedded memory applications. Motorola said it will use 0.50-micron and 0.25-micron generations of SST’s SuperFlash technology to produce products for the networking, computing, consumer, transportation and wireless markets. The company’s semiconductor group in Austin, Texas intends to use the SuperFlash technology in 8-, 16- and 32-bit microcontrollers, as well as in other integrated circuit designs across a wide spectrum of chip divisions.

TOSHIBA AMERICA ELECTRONIC COM-PONENTS INC. (TAEC) will license synthesizable cores for communications applications from EnThink Inc. (Santa Clara, CA). The semiconductor intellectual property (SIP) cores are aimed at enabling the rapid development of high-speed serial communication functions for ASICs in Internet Appliances.

MAXWELL TECHNOLOGIES INC. and Dura-cell have a business collaboration agreement to jointly identify opportunities with key OEMs to combine Maxwell’s Power-Cache ultracapacitor technology with Duracell Ultra alkaline batteries. This combination of technologies will extend battery life and deliver peak power performance in many devices, particularly those with high pulse discharge requirements such as flash and digital cameras, telecommunications products and personal digital assistants with communications features.

UNITED MICROELECTRONICS CORP. -(UMC), of Taiwan, will give S3 Inc. 252 million shares of UMC stock – worth approximately $500 million – as a result of UMC consolidating its foundries. Recently, S3 received $42 million from UMC as part of a patent licensing agreement covering multimedia and IC manufacturing technology. S3 said it would license 29 patents to UMC related to both of these issues to be used in UMC’s products.

ADVANCED RISC MACHINES LTD. announced two new licensees for its ARM9E processor core. They are LSI Logic Corp. (Milpitas, CA) and Lucent Technologies Microelectronics Group (Allentown, PA).

APPLIED MATERIALS INC. (Santa Clara, CA) invested nearly $2.2 million in Triant Technologies Inc. (Nanaimo, B.C.) taking a 12.5 percent equity stake in the software firm. Applied also signed a license agreement with Triant, becoming the exclusive semiconductor industry value-added reseller (VAR) for Triant’s Model-Ware/RT equipment health monitoring and fault detection software.

APPLIED MATERIALS INC. (Santa Clara, CA) is working with Silicon Genesis Corp. (SiGen) (Campbell, CA) to further develop and commercialize plasma doping technologies for ion implantation and other process applications. SiGen has developed plasma doping technology for creating silicon-on-insulator (SOI) wafers, and has licensed the technology to a number of silicon wafer manufacturers.

HYUNDAI ELECTRONICS INDUSTRIES CO. LTD. (Seoul) will pay $1 billion over a 10-year period to cross-license DRAM patents from Texas Instruments Inc., ending multinational litigation between the chipmakers. TI had lawsuits pending against Hyundai in the United States, Japan, the Netherlands, France, Germany and the United Kingdom, and Hyundai had filed countersuits in Texas and Delaware. All remaining litigation is settled by the licensing agreement.

INFINEON TECHNOLOGIES (Munich) has consolidated its licensing programs for its C166 16-bit microcontroller, Carmel Digital Signal Processor (DSP), and TriCore 32-bit microprocessor technologies. The Infineon (formerly Siemens Semiconductor Group) licensing program grants rights to use the company’s semiconductor intellectual property (SIP) to IC manufacturers, design services companies, SIP resellers and distributors, fabless IC companies and other companies.

TRANSLOGIC TECHNOLOGY INC. (TTI) announced a five-year agreement with Intel Corp. (Santa Clara, CA) for the use of TTI’s software and related technology. TTI holds eight patents for integrated circuit (IC) technology that it licenses to customers for improving performance of microprocessors and other chips. TTI said its software and cell library enable customers easily to use its patented technology in the design and development of integrated circuits.

October 15 & 16, 1999

Waterbury Armory, Waterbury, CT

The Yankee Invention Exposition is a two day show at which inventors can showcase their products to manufacturers, investors, venture capitalists, distributors, licensing firms, wholesalers/retailers and marketers. Also exhibiting will be suppliers of services to inventors including prototypes, marketing experts, telemarketing companies, patent attorneys, fulfillment companies and industrial designers. Entrepreneur workshops covering basic skills will be available. The workshops are free for the exhibitors.

Contact: Yankee Invention Exposition, 21 Church Street, Waterbury, CT; Telephone: (203) 575-8322

"Licensing: the Profession of the New Millenium"

October 24-27, 1999

San Antonio Marriott River Center

San Antonio, Texas

This last annual meeting of the 90’s will include several mini-plenary programs as well as a full spectrum of workshops and seminars. This meeting will feature the new LES Professional Development Program. The meeting schedule and social events have been designed to provide extensive opportunities for networking.

Contact: Licensing Executives Society (U.S.A and Canada) Dept. 721, Alexandria, VA 22334-6721; Telephone: (703) 836-3106, Fax: (703) 836-3107

November 18-19, 1999

Munich, Germany

This two day seminar has been designed to highlight the latest developments in the world of international licensing. The program offers up-to-the-minute coverage on developments including anti-trust law, software and biotechnology licensing, pooling of patents, harmonization of IP protection, licensing of university and research-based inventions together with financial aspects and valuation.

Contact: Hawksmere plc, 12-18 Grosvenor Gardens, London SW1W ODH, England Telephone +44 (0) 207-881-1858, Fax: + 44 (0) 207-730-4293

International Licensing –

L 350 (or Euro equivalent) US$585.00

Published by BNA Books, Inc.

This monthly loose-leaf service examines the nature and types of licenses available, including patent rights, copyrights and trademarks.

Contact: BSA Inter-national, Heron House, 10 Dean Farren Street, London, SWIH ODX England

Drafting License Agreements

Published by Aspen Law & Business $165.00

Edited by Michael Epstein and Frank Politano

This 3^rd Edition is in binder format and includes 35 model forms on 3.5 disks. An automatic supplement program is included. Coverage includes areas such as software licenses, music licensing, and commercia-lization of university inventions.