Fill and Sign the Agreement between Individual Form

Exclusive License Agreement between Individual Inventor and Corporation License Agreement made on the ________________________ (date), between ________________________ (Name of Licensor) , of _____________________________________________ (street address, city, county, state, zip code) , and referred to herein as Licensor , and ________________________ (Name of Licensee) , a corporation organized and existing under the laws of the state of ________________________ (name), with its principal office located at _____________________________________________ (street address, city, county, state, zip code) , referred to herein as Licensee . Whereas, Licensor owns certain intellectual property; and Whereas, Licensee is desirous of obtaining a license under the intellectual property and wishes to acquire a license in order to use or otherwise commercialize the intellectual property; Now, therefore, for and in consideration of the mutual covenants contained in this agreement, and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties agree as follows: I. Definitions. A. Patent Rights shall mean U.S. patent ________________________ (number) , entitled ________________________ (title of patent) , and the invention disclosed and claimed in such patent, and all continuations, divisions, and reissues based on such patent, and any corresponding foreign patent applications (including Japan and EU countries), and any patents, patents of addition, or other equivalent foreign patent rights issuing, granted or registered on the same. B. Licensed Product(s) shall mean products or services using a method covered by a valid claim, on a country-by-country basis, that if made, used, sold, imported, or offered for sale would constitute, but for the license granted to Licensee pursuant to this Agreement, an infringement of a valid claim (infringement shall include but is not limited to direct or contributory infringement, or inducement to infringe). C. Net Sales shall mean gross sales revenues received by Licensee, Affiliated Company and Licensee's sublicensees from the sale of Licensed Product(s) less trade discounts allowed, refunds, returns and recalls, and sales taxes. If Licensee, Affiliated Company or Licensee's sublicensee sells a Licensed Product(s) in combination with other ingredients or substances or as part of a kit, the net sales for purposes of royalty payments shall be based on calculated as follows: 1. If all Licensed Products and other items contained in the combination are available separately, the net sales for purposes of royalty payments will be calculated by multiplying the net sales of the combination by the fraction A/A+B, where A is the separately available price of all Licensed Products in the combination, and B is the separately available price for all other items in the combination. 2. If the combination includes other items which are not sold separately (but all Licensed Products contained in the combination are available separately), the net sales for purposes of royalty payments will be calculated by multiplying the net sales of the combination by A/C, where A is as defined above and C is the invoiced price of the combination. 3. If the Licensed Products contained in the combination are not sold separately, the net sales for such combination shall be net sales of such combination as defined in the first sentence of this Paragraph C. However, the parties agree to negotiate a reduction in the royalty rate to reflect the fair value that the Licensed Product attributed to the overall product sold, but in no event shall the royalty rates be reduced by greater than 50%. The term “other items” does not include solvents, diluents, carriers, excipients, buffers or the like used in formulating a product. D. Valid Claim shall mean a claim of an issued patent in the Patent Rights which has not lapsed or become abandoned or been declared invalid or unenforceable by a court of competent jurisdiction or an administrative agency from which no appeal can be or is taken. E. Licensed Field shall mean all fields. F. Affiliated Company or Affiliated Companies shall mean any corporation, company, partnership, joint venture or other entity which controls, is controlled by or is under common control with Licensee. For purposes of this Paragraph F, control shall mean the direct or indirect ownership of at least 50%. G. Exclusive License shall mean a grant by Licensor to Licensee of its entire right and interest in the Patent Rights. H. Effective Date of this License Agreement shall mean the date the last party to this Agreement has executed this Agreement. II. Grants. A. Subject to the terms and conditions of this Agreement, Licensor does now grant to Licensee an exclusive license to make, have made, use, sell and have sold the Licensed Product(s) in the United States and worldwide under the Patent Rights in the Licensed Field. B. Licensee may sublicense others under this Agreement and any sublicense shall be consistent with the terms of this Agreement. C. If for any reason other than being sold to another company Licensee ceases to exist, then the Patent Rights shall return to Licensor. If Licensee is sold to another company, the rights and responsibilities assigned to Licensee in this Agreement will be transferred to that company. III. Patent Infringement. A. Each party will notify the other promptly in writing when any infringement by another is uncovered or suspected. B. Licensee shall have the right to enforce any patent within the Patent Rights in the Licensed Field against any infringement or alleged infringement of the patent, and shall keep Licensor informed as to the status of such enforcement. Licensee may, in its sole judgment and at its own expense, institute suit against any such infringer or alleged infringer and control, settle, and defend such suit in a manner consistent with the terms and provisions of this Agreement and recover, for its account, any damages, awards or settlements resulting from such suits. C. If Licensee elects not to enforce any patent within the Patent Rights, then it shall so notify Licensor in writing within ________________________ (number) months of receiving notice that an infringement exists, and Licensor may, in _______ (his/her) sole judgment and at its own expense, take steps to enforce any patent and control, settle, and defend such suit in a manner consistent with the terms and provisions of this Agreement, and recover, for _______ (his/her) own account, any damages, awards or settlements resulting from such suits. IV. Payments, Royalty, and Equity. A. Licensee will reimburse Licensor for certain past out-of-pocket costs associated with the Patent Rights including but not limited to maintenance fees and patent transfer fees up to $ ________________________ . Licensee shall reimburse Licensor within ________________________ (number) days of receipt of invoice from Licensor. Such invoice shall provide copies of documentation from patent attorneys and patent offices or other acceptable documentation detailing the out-of-pocket patent costs incurred by Licensor. Licensee shall also reimburse future incurred expenses as detailed in Section V, Paragraph A. B. In partial consideration for the License granted in this Agreement, Licensee grants Licensor warrants to purchase ________________________ (number) shares of Licensee’s common stock pursuant to the common stock warrant attached as Exhibit A. C. Licensee shall pay to Licensor, as a running royalty, for each Licensed Product sold by Licensee or Affiliated Companies, _______ % of net sales for the term of this Agreement. Should Licensee be required to pay running royalties on any patent rights not licensed under this Agreement (Other Royalties) in order to make, use or sell a particular Licensed Product, Licensee shall be entitled to credit 50% of such other royalties against the running royalty due, provided that the running royalties shall not be reduced below 50% of those that would otherwise be due Licensor for that Licensed Product. Such payments shall be made annually as provided in Paragraph E below. D. If Licensee grants a sublicense of rights to a third party under this Agreement, Licensee shall pay Licensor _______ % of any milestone payments or running royalties received by Licensee, for sublicensing the Patent Rights. Research support to fund development of a Licensed Product, patent costs or other out-of-pocket reimbursements or equity investments made at fair market value are excluded; however, Licensor shall receive _______ % of the excess above fair market value of any equity investments. If any Other Rights (Other Rights) are rights other than the Patent Rights that are owned or controlled by Licensee) are conveyed under a sublicense, the percentage owed to Licensor shall be based upon the value of the contribution of the Patent Rights to the overall value of all rights being sublicensed to the third party. The determination of value of right shall be made by an independent agent of national stature who is mutually agreeable to both parties and the costs of such valuation shall be borne equally between Licensee and Licensor. E. Licensee shall provide to Licensor within ________________________ (number) days of the end of each ________________________ (name of month) after the first commercial sale of a Licensed Product, a written report of the amount of Licensed Products sold, the total net sales of each Licensed Products, and the running royalties due to Licensor as a result of net sales by Licensee, Affiliated Companies and sublicensees of the same. Payment of any such royalties due shall accompany such report. F. Licensee shall make and retain, for a period of _____________________ (number) years following the period of each report required by Paragraph E above, true and accurate records, files and books of account containing all the data reasonably required for the full computation and verification of sales and other information required in Paragraph E. Such books and records shall be in accordance with generally accepted accounting principles consistently applied. Licensee shall permit the inspection and copying of such records, files and books of account by an independent accountant of nationally recognized stature selected by Licensor and acceptable to Licensee. Such inspection shall be during regular business hours and upon ______________________ (number) business days' written notice to Licensee. Such inspection shall not be made more than once each calendar year. All costs of such inspection and copying shall be paid by Licensor, provided that if any such inspection shall reveal that an error has been made in the amount equal to _______ % or more of such payment, such costs shall be borne by Licensee. Licensee shall include in any agreement with its Affiliated Companies or its sublicensees which permits such party to make, use or sell the Licensed Product(s) a provision requiring such party to retain records of sales of Licensed Product(s) and other information as required in Paragraph E and permit Licensor's agents to inspect such records as required by this Paragraph F. G. All payments under this Agreement shall be made in U.S. Dollars. V. Patent Rights and Confidential Information. A. Licensor shall notify Licensee of any patent related costs due at least ______________________ (number) days prior to any payment being due. Licensee shall promptly notify Licensor in writing of its desire to maintain such patent (Authorized Expense) and shall reimburse Licensor upon receipt of an invoice for such approved expense. Title to all such patents shall reside in Licensor. In any country where Licensee elects not to pay expenses associated with maintaining a patent, Licensor may maintain such patent at _______ (his/her) own expense and for _______ (his/her) own exclusive benefit and Licensee subsequently shall not be licensed under, or owe monies for, such patent right. B. Licensee agrees that all packaging containing individual Licensed Product(s) sold by Licensee, Affiliated Companies and sublicensees of Licensee will be marked with the number of the applicable patent(s) licensed under this Agreement in accordance with each country's patent laws. C. If necessary, the parties will exchange information which they consider to be confidential. The recipient of such information agrees to accept the disclosure of the information which is marked as confidential at the time it is sent to the recipient, and to employ all reasonable efforts to maintain the information secret and confidential, such efforts to be no less than the degree of care employed by the recipient to preserve and safeguard its own confidential information. The information shall not be disclosed or revealed to anyone except employees of the recipient who have a need to know the information and who have entered into a secrecy agreement with the recipient under which such employees are required to maintain confidential the proprietary information of the recipient and such employees shall be advised by the recipient of the confidential nature of the information and that the information shall be treated accordingly. The recipient's obligations under this Paragraph C shall not extend to any part of the information: 1. That can be demonstrated to have been in the public domain or publicly known and readily available to the trade or the public prior to the date of the disclosure; 2. That can be demonstrated from written records to have been in the recipient's possession or readily available to the recipient from another source not under obligation of secrecy to the disclosing party prior to the disclosure; 3. That becomes part of the public domain or publicly known by publication or otherwise, not due to any unauthorized act by the recipient; 4. That is demonstrated from written records to have been developed by or for the receiving party without reference to confidential information disclosed by the disclosing party; or 5. That is required to be disclosed by law, government regulation or court order. The obligations of this Paragraph C shall also apply to Affiliated Companies and sublicensees provided such information by Licensee. Licensor's, Licensee's, Affiliated Companies' and sublicensees' obligations under this Paragraph C shall extend until ________________ (number) years after the termination of this Agreement. VI. Term and Termination. A. This Agreement shall expire in each country on the date of expiration of the last to expire patent included within the Patent Rights in that country. B. Upon breach or default of any of the terms and conditions of this Agreement, the defaulting party shall be given written notice of such default in writing and a period of ______________________ (number) days after receipt of such notice to correct the default or breach. If the default or breach is not corrected within the ______________________ (number) -day period, the party not in default shall have the right to terminate this Agreement. C. Licensee may terminate this Agreement and the license granted in this Agreement, for any reason, upon giving Licensor ______________________ (number) days' written notice. D. Termination shall not affect Licensor's right to recover unpaid royalties or fees or reimbursement for Authorized Expense incurred pursuant to Section V, Paragraph A , prior to termination. Upon termination all rights in and to the licensed technology shall revert to Licensor at no cost to Licensee. VII. Miscellaneous. A. All written royalty and other payments, and any other related correspondence shall be in writing and sent to: ______________________ (Name of Licensor) , _____________________________________________ (street address, city, county, state, zip code) , or such other address which Licensor may designate in writing from time-to-time. Checks are to be made payable to ______________________ (Name of Licensor) . B. This Agreement is binding upon and shall inure to the benefit of Licensor, _______ (his/her) successors and assignees and shall not be assignable to another party without the written consent of Licensor, which consent shall not be unreasonably withheld, except that Licensee shall have the right to assign this Agreement to another party without the consent of Licensor in the case of the sale or transfer by Licensee of all, or substantially all, of its assets relating to the Licensed Product to that party. C. LICENSOR WARRANTS THAT _______ (HE/SHE) HAS GOOD AND MARKETABLE TITLE TO THE INVENTIONS CLAIMED UNDER THE PATENT RIGHTS. LICENSOR DOES NOT WARRANT THE VALIDITY OF ANY PATENTS OR THAT PRACTICE UNDER SUCH PATENTS SHALL BE FREE OF INFRINGEMENT. EXCEPT AS EXPRESSLY SET FORTH IN THIS PARAGRAPH F, LICENSEE, AFFILIATED COMPANIES AND SUBLICENSEES AGREE THAT THE PATENT RIGHTS ARE PROVIDED AS IS, AND THAT LICENSOR MAKES NO REPRESENTATION OR WARRANTY WITH RESPECT TO THE PERFORMANCE OF LICENSED PRODUCT(S) INCLUDING THEIR SAFETY, EFFECTIVENESS, OR COMMERCIAL VIABILITY. LICENSOR DISCLAIMS ALL WARRANTIES WITH REGARD TO PRODUCT(S) UNDER THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESS OR IMPLIED, OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE. NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT, LICENSOR ADDITIONALLY DISCLAIMS ALL OBLIGATIONS AND LIABILITIES ON THE PART OF LICENSOR, FOR DAMAGES, INCLUDING, BUT NOT LIMITED TO, DIRECT, INDIRECT, SPECIAL, AND CONSEQUENTIAL DAMAGES, ATTORNEY'S AND EXPERT'S FEES, AND COURT COSTS (EVEN IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES OR COSTS), ARISING OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE, OR SALE OF THE PRODUCT(S) UNDER THIS AGREEMENT. LICENSEE, AFFILIATED COMPANIES AND SUBLICENSEES ASSUME ALL RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE CAUSED BY A LICENSED PRODUCT AS DEFINED IN THIS AGREEMENT MANUFACTURED, USED, OR SOLD BY LICENSEE, ITS SUBLICENSEES OR AFFILIATED COMPANIES. D. Licensor will not, under the provisions of this Agreement or otherwise, have control over the manner in which Licensee or its Affiliated Companies or its sublicensees or those operating for its account or third parties who purchase Licensed Product(s) from any of the foregoing entities, practice the inventions of Licensed Product(s). Practice of the inventions covered by Licensed Product(s), by an Affiliated Company or an agent or a sublicensee or a third party on behalf of or for the account of Licensee or by a third party who purchases Licensed Product(s) from the Licensee, shall be considered the company's practice of the inventions for purposes of this Paragraph D. E. Prior to initial human testing or first commercial sale of any Licensed Product in any particular country, Licensee shall establish and maintain, in each country in which Licensee, an Affiliated Company or sublicensee shall test or sell Licensed Product(s), product liability or other appropriate insurance coverage appropriate to the risks involved in marketing Licensed Product(s) and will upon request present evidence to Licensor that such coverage is being maintained. F. Upon termination of this Agreement for any reason, Section V, Paragraph C, Section VI, Paragraph D, and Section VII, Paragraphs C, and D, shall survive termination of this Agreement. G. Severability. The invalidity of any portion of this Agreement will not and shall not be deemed to affect the validity of any other provision. If any provision of this Agreement is held to be invalid, the parties agree that the remaining provisions shall be deemed to be in full force and effect as if they had been executed by both parties subsequent to the expungement of the invalid provision. H. No Waiver. The failure of either party to this Agreement to insist upon the performance of any of the terms and conditions of this Agreement, or the waiver of any breach of any of the terms and conditions of this Agreement, shall not be construed as subsequently waiving any such terms and conditions, but the same shall continue and remain in full force and effect as if no such forbearance or waiver had occurred. I. Governing Law. This Agreement shall be governed by, construed, and enforced in accordance with the laws of the State of __________________ (name of state). J. Notices. Unless provided herein to the contrary, any notice provided for or concerning this Agreement shall be in writing and shall be deemed sufficiently given when sent by certified or registered mail if sent to the respective address of each party as set forth at the beginning of this Agreement. K. Mandatory Arbitration . Any dispute under this Agreement shall be required to be resolved by binding arbitration of the parties hereto. If the parties cannot agree on an arbitrator, each party shall select one arbitrator and both arbitrators shall then select a third. The third arbitrator so selected shall arbitrate said dispute. The arbitration shall be governed by the rules of the American Arbitration Association then in force and effect. L. Entire Agreement . This Agreement shall constitute the entire agreement between the parties and any prior understanding or representation of any kind preceding the date of this Agreement shall not be binding upon either party except to the extent incorporated in this Agreement. M. Modification of Agreement. Any modification of this Agreement or additional obligation assumed by either party in connection with this Agreement shall be binding only if placed in writing and signed by each party or an authorized representative of each party. N. Counterparts. This Agreement may be executed in any number of counterparts, each of which shall be deemed to be an original, but all of which together shall constitute but one and the same instrument. O. Compliance with Laws. In performing under this Agreement, all applicable governmental laws, regulations, orders, and other rules of duly- constituted authority will be followed and complied with in all respects by both parties. WITNESS our signatures as of the day and date first above stated. ________________________ (Name of Licensee) By:________________________ By:_________________________ (Signature of Licensee) (Signature of Officer) ________________________ ________________________ (P rinted Name ) (P rinted Name & Office in Corporation)