Helius Medical Technologies, Inc. - Exhibit 10.9 - Filed by newsfilecorp.com








December 24, 2008 

 

Dr. Kurt Kaczmarek 
University of Wisconsin-Madison 
3605
Medical Science 
1300 University Avenue 
Madison, WI 53706 


 

Invention Title: A Non-invasive Neuro-modulation System

Inventors: Kurt Kaczmarek, Yuri Danilov and Mitchell Tyler 
NIH Funding
Agreement No.: NS014837 
NIHEIR#: 0578503-07-0197 


 

Re: Inventor Waiver Request Decision 

 

Dear Drs. Kaczmarek, Danilov and Tyler: 

This is in response to your request for the National Institutes
of Health to permit title to the above-referenced Invention made under a funding
agreement to a Nonprofit Institution to be assigned to the Inventors. Your
request has been approved as detailed below with respect to the rights
applicable to the Institution. 

We have evaluated the request under 35 U.S.C. 202(d), using the
regulations as promulgated under 37 CFR 401.9, and determined the following:


	
  the Government has insufficient interest in the invention to retain title
  and/or rights at this time; 

  
	
  the inventors are free to retain and administer the rights applicable to
  the invention in accordance with the requirements of 37 CFR 401.9; and 

  
	
  the inventors are bound by the terms in the inventor's request for
  retention of rights in this subject invention (e.g., the Inventor
  Certification). Although not all inclusive, the . inventors agree to:




		
       
	
      - grant a nonexclusive, irrevocable, royalty-free license
      to practice the invention for or on behalf of the United States throughout
  the world; 








- continue to adhere to conditions
that would apply to the original award recipient under 37 CFR 401; 

- seek patent protection for the
subject invention within one year of the date of this approval; and ' 

- provide the NIH with documentation
of any patent application numbers, confirmatory licenses, filing and/or
application dates and inclusion of the Federal Support Clause within the text of
the issued patent and any patent applications or their equivalents in the
prosecution of any plant variety protection applications. 

Once the inventors are assigned this intellectual property
derived with Government funds, the · inventors should ensure that any research
material derived from the invention remains available to the scientific
community for research purposes, consistent with applicable NIH policies.
Fulfillment of this request is consistent with the policy and objectives of the
Bayh-Dole Act and 37 CFR 401 in that it serves to promote commercialization
without encumbering future research and discovery. 

Finally, the Inventors should coordinate and agree to appoint
one inventor as the representative to go to the iEdison Invention and Patent
Reporting web site, located at http://iEdison.gov, and register. The
iEdison web site permits the inventor to, on behalf of any inventors that have
been waived rights hereunder, make the required reports on assigned inventions.
Once the inventor registers at the iEdison web site, the inventor needs to
contact our office at (301) 435-1986 to transfer the technology appropriately to
the new iEdison account established on behalf of the inventors. 

This waiver permits the assignment of rights to the inventors.
By signing below, the current owner of the Invention affirms the transfer to the
inventors of the iEdison records relating to the IP. 

This determination is effective upon the signature &return
of this letter from the inventors and a signatory from the institution within 90
days from the date of this notification, and the inventor must register in
iEdison for the continued reporting on this technology. 

Sincerely, 
/s/ John Salzman 


John Salzman 

Assistant Extramural Inventions Policy Officer 
Division of
Extramural Inventions and Technology Resources (DEITR), 
Office of Policy for
Extramural Research Administration (OPERA), OER, OD 


	cc: 	
      Michael Falk (Director) 
Mitchell Tyler 
Yuri
      Danilov







Please direct all correspondence to: 

 

	Waiver Coordinator 	  	 
	6705 Rockledge Drive 	Phone: (301) 435-1986 	 
	Suite 310, MSC 7980 	Fax: (301) 480-0272 	 
	Bethesda, MD 20892-7980 	E-mail: waiver@nih.gov	 


 

 

	Accepted:_/s/ Mitchell E.
      Tyler                                    	   1/06/2009                                           
      
	                                Inventor
      Signature 	Date 
	  	  
	  	  
	                            Mitchell
      E.
      Tyler                                  	   Researcher                                      
	               
                         
         Print Name 	Title 
	  	  
	  	  
	Accepted:    
           /s/ Michael
      Falk                                   	   1-22-09                                               
	               
                         
         Authorized Official 	Date 
	                                 
      Current Invention Owner 	  
	  	  
	  	  
	                            Michael
      Falk                                         	   1-22-09                                               
	               
                         
         Print Name 	Title 


 

 

Invention Title: A Non-invasive Neuro-modulation System

Inventor’s Name: Kurt Kaczmarek, Yuri Danilov and Mitchell Tyler 
NIH
Funding Agreement Number: NS014837 
NIH EIR#: 05748503-07-0197 
Current
Date: December 24, 2008 





Please direct all correspondence to: 

	Waiver Coordinator 	  	 
	6705 Rockledge Drive 	Phone: (301) 435-1986 	 
	Suite 310, MSC 7980 	Fax: (301) 480-0272 	 
	Bethesda, MD 20892-7980 	E-mail: waiver@nih.gov	 


 

 

	Accepted:  Kurt
      Kaczmarek                                         	   1/5/2009                                           
      
	                                Inventor
      Signature 	Date 
	  	  
	  	  
	                            Kurt
      Kaczmarek                                    	   Senior
      Scientist                                
	               
                         
         Print Name 	Title 
	  	  
	  	  
	Accepted:    
           /s/ Michael
      Falk                                   	   1-22-09                                               
	               
                         
         Authorized Official 	Date 
	                                 
      Current Invention Owner 	  
	  	  
	  	  
	                            Michael
      Falk                                         	   1-22-09                                               
	               
                         
         Print Name 	Title 


 


Invention Title: A Non-invasive Neuro-modulation System

Inventor’s Name: Kurt Kaczmarek, Yuri Danilov and Mitchell Tyler 
NIH
Funding Agreement Number: NS014837 
NIH EIR#: 05748503-07-0197 
Current
Date: December 24, 2008 





Please direct all correspondence to: 

 

	Waiver Coordinator 	  	 
	6705 Rockledge Drive 	Phone: (301) 435-1986 	 
	Suite 310, MSC 7980 	Fax: (301) 480-0272 	 
	Bethesda, MD 20892-7980 	E-mail: waiver@nih.gov
      	 


 


 

	Accepted:  /s/ Yuri
      Danilov                                           	   January 7,
      2009                                 
      
	                                Inventor
      Signature 	Date 
	  	  
	  	  
	                            Yuri
      Danilov                                         	   Senior
      Scientist                                
	               
                         
         Print Name 	Title 
	  	  
	  	  
	Accepted:    
           /s/ Michael
      Falk                                   	   1-22-09                                               
	               
                         
         Authorized Official 	Date 
	                                 
      Current Invention Owner 	  
	  	  
	  	  
	                            Michael
      Falk                                         	   1-22-09                                               
	               
                         
         Print Name 	Title 


 

Invention Title: A Non-invasive Neuro-modulation System

Inventor’s Name: Kurt Kaczmarek, Yuri Danilov and Mitchell Tyler 
NIH
Funding Agreement Number: NS014837 
NIH EIR#: 05748503-07-0197 
Current
Date: December 24, 2008