2018: Comments on NIH license to Bull Run Capital, Inc. for safer non-lethal antagonist

Jaime M. Greene
Senior Licensing and Patenting Manager
NCI Technology Transfer Center
Email: greenejaime@mail.nih.gov

December 16, 2018

Re: Comments on “Prospective Grant of an Exclusive Patent License: Agonist/Antagonist Compositions and Methods of Use for certain inventions” (83 FR 61659)

Dear Jaime Greene,

We are writing to provide comments on the Prospective Grant of an Exclusive Patent License: Agonist/Antagonist Compositions and Methods of Use for certain inventions to Bull Run Capital, Inc. located in Vancouver, BC, Canada, as noticed in the Federal Register, 83 FR 61659.

According to the notice, the “prospective exclusive license territory may be worldwide and the field of use may be limited to: “Use of the TRVP1 antagonists BCTC, AMG9810, JYL-827, Capsazepine or IodoRTX combined with a TRVP1 agonist in a composition for the temporary incapacitation of a subject,” ” for “novel compositions comprising a transient receptor potential cation channel subfamily V member 1 (TRPV1) receptor agonist and an antagonist in certain ratios which allow for the onset of agonist action followed by alleviation by antagonist action, and methods of use in personal defense and law enforcement.”

The relevant patents and patent applications include:

  1. U.S. Provisional Patent Application No. 61/340,063, filed March 12, 2018, now abandoned, titled “Agonist/Antagonist Compositions and Methods of Use”, HHS Ref. No.: E-048-2010-0-US-01;
  2. PCT Patent Application Serial No. PCT/US2011/028132, filed March 11, 2011, now abandoned, HHS Reference Number E-048-2010-0-PCT-02 titled “Agonist/antagonist compositions and methods of use”;
  3. U.S. Patent 9,277,748 (Application No. 13/634,447) filed March 11, 2011, issued March 8, 2016, titled “Agonist/antagonist compositions and methods of use”, HHS Ref. No.: E-048-2010-0-US-04;
  4. Canada Patent Application Serial No. 2,792,878, filed March 11, 2011, HHS Reference Number E-048-2010-0-CA-03 titled “Agonist/antagonist compositions and methods of use”; and
  5. U.S. Patent Application Serial No 15/010,830, filed January 29, 2016, HHS Reference Number E-048-2010-0-US-05, titled “Agonist/antagonist compositions and methods of use”.

KEI’s comments are as follows:

  1. Improvements in the efficacy and safety of non-lethal weapons for defense are important.
  2. The field of use restriction is appropriate. The NIH should explicitly excludetherapeutic products and uses from the field of use, as some capsaicin agents have therapeutic potential.
  3. The price of any products based upon the licensed inventions should be available to U.S. law enforcement agencies and U.S. residents at prices no greater than in Canada and other similar countries with per capita incomes at least 50 percent of the U.S.


James Love
Knowledge Ecology International
1621 Connecticut Avenue, Suite 500
Washington, DC 20009