NIH Approval Letter for Assignment of Invention Rights from F. Nicholas Franano to Proteon Therapeutics, Inc.
This letter from the National Institutes of Health (NIH) approves the transfer of certain invention rights from F. Nicholas Franano to Proteon Therapeutics, Inc. The approval is subject to federal regulations and the original grant terms, which continue to apply to the new assignee. Both parties must sign and return the letter within 90 days, and Proteon Therapeutics, Inc. must register with the iEdison system for ongoing reporting. The agreement ensures that government rights and reporting obligations are maintained after the assignment.
Exhibit 10.13
[Department of Health & Human Services Letterhead]
National Institutes of Health
Bethesda, Maryland 20892
October 1st, 2010
BY CERTIFIED MAIL
F. Nicholas Franano, M.D.
1010 W. 69th Terrace
Kansas City, MO 64113
Invention Title: Local, transcatheter delivery of proteases to reopen obstructed biological conduits
Inventor(s): F. Nicholas Franano
NIH Grant #: HL007712
NIH EIR #: 9999207-99-0001
Patents: 7,361,335; 7,632,494; 7,063,838; 7,153,505.
Patent publications: 12/229,372; 11/454,554, 12/229,428.
Reference: Third Party Waiver Request — F. Nicholas Franano to Proteon Therapeutics, Inc.
Dear Dr. Franano,
In reference to your request for approval to make an assignment of rights from F. Nicholas Franano to Proteon Therapeutics, Inc., the NIH has approved your request. Please note however, that the provisions of 37 CFR 401 continue to apply to any assignee(s) herein and its/their successor(s) once you have executed the transfer. In addition, terms applicable to the original funding agreement, including, but not limited to, rights in data and sharing of unique research resources, also flow down to the assignee(s), if applicable to the original recipient. In this case, the Invention ownership has already been assigned from Johns Hopkins University to you personally, and this letter gives approval for the title of the intellectual property to go now to Proteon Therapeutics, Inc. These terms need to be incorporated, at least by reference, in the assignment document.
It is your responsibility to notify the assignee(s)/recipient(s) of this transfer of the decision of our office for this Third Party Waiver to permit assignment to Proteon Therapeutics, Inc. Also, both parties involved are required to sign and send a copy of this letter back to our office at the address or fax number listed below.
Annual Utilization Reports detailing utilization-related activities related to the Subject Invention continue to be required. In addition the filing and maintenance of any Patents and/or Patent Applications claiming the Subject Invention is required, unless waived with proper notice and lead time so that the Government may Elect Title if it chooses to do so. These terms also need to be incorporated, at least by reference, in the assignment document.
Finally, the authorized representative of the Assignee, in this case Proteon Therapeutics, Inc., should go to the iEdison Invention and Patent Reporting web site, located at http://iEdison.gov, and register within 90 days from the date of this notification. This iEdison web site permits the Assignee to make the required reports on the assigned inventions. Once the Assignee registers at the iEdison web site, our office needs to be contacted at ###-###-#### to transfer the technology appropriately to the new iEdison account of the Assignee.
[3rd Party Waiver Request for F. Nicholas Franano to Proteon Therapeutics, Inc. Page 2 of 2]
This determination is effective upon the signature & return from the Authorized Personal Representative of F. Nicholas Franano and the Authorized Organizational Representative of Proteon Therapeutics, Inc., within 90 days from the correspondence date of this letter.
If you have any additional questions, please contact the Waiver Coordinator at ###-###-####.
| Sincerely, |
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| /s/John Salzman |
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| John Salzman |
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| Assistant Extramural Invention Policy Officer |
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| Division of Extramural Inventions and Technology Resource (DEITR) | |
| Office of Policy for Extramural Research Administration (OPERA), OER, OD | |
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[3rd Party Waiver Request for F. Nicholas Franano to Proteon Therapeutics, Inc. Page 3 of 2]
Please direct all correspondence to:
| Waiver Coordinator |
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| 6705 Rockledge Drive |
| Phone: (301) 435-1986 |
| Suite 310, MSC 7980 |
| Fax: (301) 480-0272 |
| Bethesda, MD 20892-1910 |
| Email: ***@*** |
| Accepted: | /s/ F. Nicholas Franano M.D. |
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| F. Nicholas Franano M.D. |
| Date: | 11/26/2010 |
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| Authorized Official’s Signature for Proteon Therapeutics, Inc. | |||
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Invention Title: Local, transcatheter delivery of proteases to reopen obstructed biological conduits
NIH Grant #: HL007712
EIR #: 9999207-99-0001
Patents: 7,361,335; 7,632,494; 7,063,838; 7,153,505.
Patent publications: 12/229,372; 11/454,554, 12/229,428.
Individual’s name requesting waiver: F. Nicholas Franano
Institution to which the technology is to be transferred: Proteon Therapeutics, Inc.
Current Date: October 1st, 2010
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