Appeal No. 1997-2374
Application No. 08/064,352
· Term 4 discusses compliance with laws, handling requirements and liability for
damages.
· Term 5 requests acknowledgment of NIAID as a source in publications.
In accordance with the terms of the agreements, the accepting organizations are
prohibited from giving control of the research materials to someone else, can not use
them for a commercial purpose and can not redistribute the materials to others for any
purpose. Even if a commercial purpose would happen to result from the research, the
accepting organization cannot carry out development of a commercial product without
agreement with NIAID. All proprietary and license rights remain with NIAID. These
agreements limit the accepting organizations from doing anything but noncommercial
research on the furnished materials.
A plain reading of the Research Agreements, especially the terms under which
the research materials will be furnished, indicate to us that the accepting organizations
would be limited to using the materials experimentally and that the NIAID would still
retain significant control of the research materials even after the materials are
furnished. Even if there was evidence that the research materials were used by
Townsend, Hoffman and/or Hays more that one year prior to the filing date of the
application, their use of the materials, consistent with the terms of the agreements,
would not have been a public use but rather an experimental one.
Examiner does not dispute that activities consistent with the agreements would
be experimental rather than public in nature. Rather the examiner resorts to
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007