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This agreement is made and
entered into between ____________________ , a ____________________ established
under _____________________ law
(hereinafter called Licensor)
having its principle office at
_________________________________________________________________________,
and
____________________________ a for-profit corporation organized under the laws
of___________________ (hereinafter called Licensee), having its principle
office at _____________________________________________ .
Witnesseth that:
1. whereas,
Licensor has the right to grant licenses under the licensed patent
rights (as hereinafter defined ),and wishes to have the inventions covered by
the licensed
patent rights in the public interest; and
2. whereas
Licensee wishes to obtain a license under the licensed patent rights upon
the terms & conditions hereinafter set forth:
Now, therefore, in consideration
of the premises and the faithful performance of the covenants herein contained
it is agreed as follows.
Article I
- Definitions
For the purpose of this
agreement, the following definitions shall apply:
1. Licensed
Patent Rights:
Shall mean:
a.
Patent Application Serial No._____________ filed ________________________by
________________.
or
New Plant Variety registered and protected through
________________________________ .
b.
Any and all improvements developed by Licensor, whether patentable or
not, relating to the Licensed Patent Rights, which Licensor may
now or may hereafter develop, own or control.
c.
Any or all patents, which may issue on patent rights and improvements thereof,
developed by Licensor and any and all divisions, continuations,
continuations-in-part, reissues and extensions of such patents.
2.
Product(s):
Shall mean any materials including plants and/or seeds, compositions,
techniques, devices, methods or inventions relating to or based on the
Licensed Patent Rights, developed on the date of this agreement or in the
future.
3.
Gross Sales:
Shall mean total __________________ (Currency Unit) value(s) of Product(s) FOB
manufactured based on the Licensed Patent Rights.
4. Confidential
Proprietary Information:
Shall mean with respect to any Party all scientific, business or financial
information relating to such Party, its subsidiaries or affiliates or their
respective businesses, except when such information:
a. Becomes
known to the other Party prior to receipt from such first Party;
b. Becomes
publicly known through sources other than such first Party;
c. Is
lawfully received by such other Party from a party other than the first Party;
or
d. Is
approved for release by written authorization from such first Party.
5. Exclusive
License:
Shall mean a license, including the right to sublicense, whereby Licensee’s
rights are sole and entire and operate to exclude all others, including
Licensor and its affiliates except as otherwise expressly provided herein.
6. Know-how:
Shall mean any and all technical data, information, materials, trade secrets,
technology, formulas, processes, and ideas, including any improvements thereto,
in any form in which the foregoing may exist, now owned or co-owned by or
exclusively, semi-exclusively or non-exclusively licensed to any party prior to
the date of this Agreement or hereafter acquired by any party during the term of
this agreement.
7. Intellectual
Property Rights:
Shall mean any and all inventions, materials, Know-how, trade secrets,
technology, formulas, processes, ideas or other discoveries conceived or reduced
to practices, whether patentable or not.
8.
Royalty (ies):
Shall mean revenues received in the form of cash and/or equity from holdings
from Licensees as a result of licensing and using, selling, making,
having made, sublicensing or leasing of Licensed
Patent Rights.
ARTICLE
II- Grant of exclusive license
1. Licensor
hereby grants to Licensee the exclusive (worldwide, option) license with
the right to sublicense others, to make, have made, use, sell and lease the
Products described in the Licensed Patent Rights.
2. Licensor
retains the right to continue to use Licensed Patent Rights in any way
for non-commercial purposes.
3.
It is understood by the Licensee that the Licensed
Patent Rights were developed under ______ Grant No. ________. The _________
Government has a non-exclusive royalty free license for governmental purposes.
ARTICLE
III- LICENSE PAYMENTS
1. Initial
payment and royalty rate.
For the licensed herein granted:
a. Licensee
agrees to pay a sign-up fee of __________ ( ).
b. Licensee
shall pay on earned royalty of _____percent ( %) of Licensee’s
Gross Sales of Products and fifty percent (50%) of the sublicensing
receipts.
c. Licensee
shall pay an annual royalty of _________ ( ) for each leased Product.
2. Sublicenses.
The granting and terms of all sublicenses is entirely at Licensee’s
discretion provided that all sublicenses shall be subjected to the terms and
conditions of this agreement.
3. Minimum
royalty: Licensee
will pay Licensor, when submitting their royalty report a minimum royalty
of ___________ (________) annually.
4. When
a sale is made:
A sale of Licensed Patent Rights shall be regarded as being made upon
payment for Products made using Licensed Patent Rights.
5. Payments:
All sums
payable by Licensee hereunder shall be paid to Licensor in
___________ (name of country) and in the currency of the ____________ or in U.S.
dollars.
6. Interest:
In the event any royalties are not paid as specified herein, then a compound
interest of eighteen percent (18%) shall be due in addition to the royalties
accrued for the period of default.
ARTICLE
IV - Reports, Books and Records
1. Reports.
Within thirty (30) days after the end of the calendar quarter annual period
during which this agreement shall be executed and delivered within thirty (30)
days after the end of each following quarter annual period, Licensee
shall make a written report to Licensor setting forth the Gross Sales
of Licensed Patent Rights sold, leased or used by Licensee and
total sublicensing receipts during the quarter annual period. If there are no
Gross Sales or sublicensing receipts, a statement to that effect be made by
Licensee to Licensor. At the time each report is made, Licensee
shall pay to Licensor the royalties or other payments shown by such
report to the payable hereunder.
2. Books
and records.
Licensee shall keep books and records in such reasonable detail as
will permit the reports provided for in Paragraph 1. hereof to be determined.
Licensee further agrees to permit such books and reports to be inspected
and audited by a representative or representatives of Licensor to the
extent necessary to verify the reports provided for in paragraph 1. hereof;
provided, however, that such representative or representatives shall indicate to
Licensor only whether the reports and royalty paid are correct, if not,
the reasons why not.
ARTICLE V
- Marking
Licensee
agrees to mark or have marked all Products made, used or leased by it or
its sublicensees under the Licensed Patent Rights, if and to the extent
such markings shall be practical, with such patent markings as shall be
desirable or required by applicable patent laws.
ARTICLE
VI - Diligence
1. Licensee
shall use its best efforts to bring Licensed Patent Rights to market
through a thorough, vigorous and diligent program and to continue active,
diligent marketing efforts throughout the life of this agreement.
2. Licensee
shall deliver to Licensor on or before _______, a business plan for
development of Licensed Patent Rights, which includes number and kind of
personnel involved, time budgeted and planned for each phase of development and
other items as appropriate for the development of the Licensed Patent Rights.
Quarterly reports describing progress toward meeting the objectives of the
business plan shall be provided.
3. Licensee
shall permit an in-house inspection of Licensee facilities by
Licensor on an annual basis beginning at ________________ .
4. Licensee
failure to perform in accordance with either paragraph 1, 2 or 3.of this
ARTICLE VI shall be grounds for Licensor to terminate this agreement.
ARTICLE
VII - Irrevocable Judgment with Respect
to Validity of Patents
If a judgment or decree shall be entered in any proceeding in which the validity
or infringement of any claim of any patent under which the License is granted
hereunder shall be in issue, which judgment or decree shall become not further
reviewable though the exhaustion of all permissible applications for rehearing
or review by a superior tribunal, or through the expiration of the time
permitted for such application, (such a judgment or decree being hereinafter
referred to as an irrevocable judgment) the construction placed on any such
claim by such irrevocable judgment shall thereafter be followed not only as to
such claim, but also as to all claims to which such instruction applies, with
respect to acts occurring thereafter and if an irrevocable judgment shall hold
any claim invalid, Licensee shall be relived thereafter from including in
its reports hereunder that portion of the royalties due under ARTICLE III
payable only because of such claim or any broader claim to which such
irrevocable judgment shall be applicable, and from the performance of any other
acts required by this agreement only because of any such claims.
ARTICLE VIII -
Termination or
Conversion to Non-Exclusive License
1. Termination
by Licensee.
Option of Licensee: Licensee
may terminate the license granted by this agreement, provided Licensee
shall not be in default hereunder, by giving Licensor ninety (90) days
notice to its intention to do so. If such notice shall be given, then upon the
expiration of such ninety (90) days the termination shall become effective; but
such termination shall not operate to relieve Licensee from its
obligation to pay royalties or to satisfy any other obligations, accrued
hereunder prior to the date of such termination.
2. Termination by
Licensor.
Option of Licensor: Licensor
may, at its option, terminate this agreement by written notice to Licensee
in case of:
a. Default
in the payment of any royalties required to be paid by Licensee to
Licensor hereunder
b. Default
in the making of any reports required hereunder and such default shall continue
for a period of thirty (30) days after Licensor shall have given to
Licensee a written notice of such default.
c. Default
in the performance of any other material obligation contained in this agreement
on the part of Licensee to be performed and such default shall continue
for a period of thirty (30) days after Licensor shall have given to
Licensee written notice of such default.
d. Adjudication
that Licensee is bankrupt or insolvent.
e. The
filling by Licensee of a petition of bankruptcy, or a petition or answer
seeking reorganization, readjustment or rearrangement of its business or affairs
under any law or governmental regulation relating to bankruptcy or insolvency.
f. The
appointment of a receiver of the business or for all or substantially all of the
property of Licensee; or the making by Licensee of assignment or
an attempted assignment for the benefit of its creditors; or the institution by
Licensee of any proceedings for the liquidation or winding up of its
business or affairs.
3 Effect
of termination.
Termination
of this agreement shall not
in any way operate to impair or destroy any of Licensee’s or Licensor’s
right or remedies, either at law or in equity, or to relieve Licensee
of any of its obligations to pay royalties or to comply with any other of the
obligations hereunder, accrued prior to the effective date of termination.
4.
Effect of delay, etc.
Failure
or delay by Licensor to exercise its rights of termination hereunder by
reason of any default by Licensee in carrying out any obligation imposed
upon it by this agreement shall not operate to prejudice Licensor’s right
of termination for any other subsequent default by Licensee.
5. Option
of Licensee to convert to non-exclusive license.
Licensee
shall have the right to convert this License at the same royalty rate as for the
exclusive Licensee, without right to sublicense and minimum royalties under
ARTICLE III, Paragraph 3. shall not be due thereafter.
6. Return
of Licensed Patent Rights.
Upon termination of this
agreement, all of the Licensed Patent Rights shall be returned to
Licensor. In the event of termination of the agreement by Licensee or
said conversion of the agreement by Licensee, Licensee shall grant
to Licensor a non-exclusive, royalty- free License, with right to
sublicense, to manufacture, use and sell improvements including all known-how to
Licensed Patent Rights made by Licensee during the period of this
agreement prior to the termination or conversion, to the extent that such
improvements are dominated by or derived from the Licensed Patent Rights.
ARTICLE IX –
Term
Unless previously terminated as
hereinbefore provided, the term of this Agreement shall be from and after the
date hereof until the expiration of the last to expire of the licensed issued
patents or patents to issue under the Licensed Patent Rights under
ARTICLE I. Licensee shall not be required to pay royalties due only by
reason of its use, sale, licensing, lease or sublicensing under issued patents
licensed by this Agreement that have expired or been held to be invalid by an
Irrevocable Judgment, where there are no other of such issued patents valid and
unexpired covering the Licensee’s use, sale, licensing, lease or
sublicensing; provided, however, that such non-payment of royalties shall not
extend to royalty payments already made to Licensor more than six (6)
months prior to Licensee’s discovery of expiration or an Irrevocable
Judgment.
ARTICLE X -
Patent Litigation
1.
Initiation. In
the event that Licensor advises Licensee in writing of a
substantial infringement of the patents/copyrights included in the Licensed
Patent Rights, Licensee may, but is not obligated to, bring suit or
suits through attorneys of Licensee’s selection with respect to such
infringement. In the event Licensee fails to defend any declaratory
judgment action brought against any patent or patents of the Licensed
Patent Rights, Licensor on written notice to Licensee may
terminate the License as to the particular patent or patents involved in such
declaratory judgment action.
2.
Expenses
and proceeds of litigation.
Where a suit or suits have been brought by Licensee, Licensee shall
maintain the litigation at its own expense and shall keep any judgments and
awards arising from these suits expecting that portion of the judgments
attributable to royalties from the infringer shall be divided equally between
Licensor and Licensee after deducting any and all expenses of such
suits; provided, however, Licensor shall not be entitled to receive more
under this provision than if the infringer had been licensed by Licensee.
3. Licensor’s
right to sue.
If Licensee shall fail to commence suit on an infringement hereunder
within one (1) year after the receipt of Licensor’s written request to do
so. Licensor in protection of its reversionary rights shall have the
right to bring and prosecute such suits at its cost and expense through
attorneys of its selection, in its own name, and all sums received or recovered
by Licensor in or by reason of such suits shall be retained by
Licensor; provided, however, no more than one lawsuit at a time shall
commence in any such country.
ARTICLE
XI - Patent Filings and Prosecuting
1.
Licensee shall pay future costs of the
prosecution of the patent applications pending as set forth in ARTICLE I,
Paragraph 2. Which are reasonably necessary to obtain a patent. Furthermore,
Licensee will pay for the costs of filling, prosecuting and maintaining
foreign counterpart applications to such pending patent applications, such
foreign applications to be filed within ten (10) months prior to the filling
date of the corresponding _____________ (Country) patent application.
2.
Licensor
shall own improvements by the inventors. Licensee shall pay future costs
of preparation, filling, prosecuting and maintenance of patents and applications
on patentable improvements made by inventors, however, in the event that
Licensee refuses to file patent applications on such patentable improvements
in ___________ (Country) and selected foreign countries when requested by
Licensor, the rights to such patentable improvements for said countries
shall be returned to Licensor.
3.
Preparation
and maintenance of patent applications and patents undertaken at Licensee’s
cost shall be performed by patent attorneys selected by Licensor; and due
diligence and care shall be used in preparing, filling, prosecuting, and
maintaining such applications on patentable subject matter. Both parties shall
review and approve any and all patent related documents.
4.
Licensee
shall have the right to, on thirty (30) days written notice to Licensor,
discontinue payment of its share of the prosecution and/or maintenance costs of
any of said patents and/or patent applications. Upon receipt of such written
notice, Licensor shall have the right to continue such prosecution and/or
maintenance on its own name at its own expense in which event the License shall
be automatically terminated as to the subject matter claimed in said patents
and/or applications.
5.
Notwithstanding
the aforegoing paragraph of this ARTICLE XI, Licensee’s obligations
under such paragraphs shall continue only so long as Licensee continues
to have an Exclusive License under the Licensed Patent Rights and,
in the event of conversion of the License to non-exclusive in accordance with
ARTICLE VIII, paragraph 1. (b), after the date of such conversion:
a. The
costs of such thereafter preparation, filing, prosecuting and maintaining of
said Licensed patents and patent applications shall be the responsibility of
Licensor, provided such payments are at the sole discretion of the
Licensor ; and
b. Licensee
shall have a non-exclusive License without right to sublicense under those of
such patents and applications under which Licensee had an Exclusive
License prior to the conversion.
ARTICLE
XII - Notices, Assignees
1.
Notices.
Notices and payments required hereunder shall be deemed properly given if duly
sent by first class mail and addressed to the parties at the addresses set forth
above. The parties hereto will keep each other advised of address changes.
2.
Assignees, etc. This Agreement shall be binding upon
and shall inure to the benefit of the assigns of Licensor and upon and to
the benefit of the successors of the entire business of Licensor, but
neither this agreement nor any of the benefits thereof nor any rights thereunder
shall, directly or indirectly, without the prior written consent of Licensor,
be assigned, divided, or shared by the Licensor to or with any other
party or parties (except a successor of the entire business of the Licensor).
ARTICLE XIII - Miscellaneous
1. This
agreement is
executed and delivered in ______________ (Country) and shall be constructed in
accordance with the laws of the Government of _____________________.
2. No
other understanding.
This agreement sets forth the entire agreement and understanding between the
parties as to the subject matter thereof and merges all prior discussions
between them.
3. No
representations
or warranties regarding patents of third parties. No representations or warranty
is made by Licensor that the Licensed Patent Rights manufactured,
used, sold or leased under the Exclusive License granted herein is or
will be free of claims of infringement of patent rights of any other person or
persons. The Licensor warrants that it has title to the Licensed
Patent Rights from the inventors.
4. Indemnity.
Licensee shall indemnify, hold harmless, and defend Licensor and
its trustees, officers, employees and agents against any and all allegations and
actions for death, illness, personal injury, property damage, and improper
business practices arising out of the use of the Licensed Patent Rights.
5. Insurance.
During the term of this agreement, Licensee shall, maintain the following
insurance coverage:
a. Commercial
general liability with a limit of no less than one million dollars
($1,000,000.00, option) each occurrence. Such insurance shall be written on a
standard ISO occurrence form or substitute form providing equivalent coverage.
b. Professional
liability of no less than one million dollars ($1,000,000.00, option) each
occurrence.
c. Workers’
compensation consistent with statutory requirements. Certificates of insurance
shall be provided to Licensor upon request and shall include the
provision for 30-day notification to the certificate holder of any cancellation
or material alteration in the coverage.
6. Advertising.
Licensee agrees that Licensee may not use in any way the name of
Licensor or any logotypes or symbols associated with Licensor or
the names of any researchers without the express written permission of
Licensor.
7. Confidentiality.
The parties agree to maintain discussions and proprietary information revealed
pursuant to this agreement in confidence, to disclose them only to persons
within their respective organizations having a need to know, and to furnish
assurances to the other party that such persons understand this duty on
confidentiality.
8. Disclaimer
of Warranty.
Licensed Patent Rights is experimental in nature and it is provided
WITHOUT WARRANTY OR REPRESENTATIONS OF ANY SORT, EXPRESS OR IMPLIED, INCLUDING
WITHOUT LIMITATION WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE OF NON-INFRINGEMENT. Licensor makes no representations and
provides no warranty that the use of the Licensed Patent Rights will not
infringe any patent or proprietary rights of third parties.
In witness whereof, the parties
hereto have caused this agreement to be executed by their duly authorized
representatives.
The effective date of this
agreement is ______________, 20___.
Licensor
____________________________
Name:
______________________________
Title:
_______________________________
Licensee
___________________________
Name:______________________________
Title:
_______________________________
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