License Back Agreement

LICENSE BACK AGREEMENT

This License Back Agreement (the "Agreement") is made and entered into as of by and between Licensor: , whose principal place of business is , and Licensee: , whose principal place of business is .

RECITALS

WHEREAS, Licensor is the owner of certain intellectual property, including but not limited to patents, patent applications, know-how, trade secrets and related technology described as (the "Licensed IP");

WHEREAS, Licensee has been granted a license to exploit the Licensed IP pursuant to separate agreements and, in the course of its exploitation, may create improvements, enhancements, modifications, or derivative works (collectively, "Improvements"); and

WHEREAS, the parties desire to set forth the license-back rights and related terms under which Licensee will grant to Licensor certain rights in Improvements created by Licensee.

NOW, THEREFORE, in consideration of the mutual covenants, promises and agreements contained herein, the parties agree as follows:

1. DEFINITIONS

1.1 "Background IP" means intellectual property owned or controlled by a party prior to the Effective Date or developed outside the scope of this Agreement.

1.2 "Improvements" means inventions, discoveries, enhancements, modifications, derivative works, designs, technical data, specifications, know-how, software code and related intellectual property that are conceived, reduced to practice, or otherwise developed by Licensee, solely or jointly, in the course of Licensee's activities relating to the Licensed IP and that specifically relate to or arise from the Licensed IP.

1.3 "Territory" means .

2. GRANT BACK LICENSE

2.1 Subject to the terms and conditions of this Agreement, Licensee hereby grants and agrees to grant to Licensor a non-exclusive, transferable (subject to Section 11), sublicensable, irrevocable license under Licensee's rights in Improvements to make, have made, use, offer for sale, sell, import and otherwise exploit the Improvements in the Territory for the Field of Use.

2.2 The Field of Use for the license granted under Section 2.1 is: .

2.3 Royalty: Licensee shall grant the license back on the following financial basis: Royalty-free Royalty payable If royalty payable, rate: % of Net Sales

3. OWNERSHIP; RESERVATION OF RIGHTS

3.1 Ownership. Except as expressly granted in this Agreement, each party retains all right, title and interest in and to its Background IP. Improvements shall be owned by Licensee unless otherwise agreed in writing. The license granted under Section 2 is a license, not an assignment, and does not transfer ownership in Improvements to Licensor.

3.2 Reservation of Rights. Licensor expressly reserves all rights in the Licensed IP not expressly granted to Licensee under any existing agreements. Licensee reserves all rights in Improvements except for the license granted herein.

4. CONSIDERATION AND PAYMENTS

4.1 Consideration. In consideration for the license granted by Licensee under Section 2, Licensor shall pay Licensee the amounts set forth below (if any). If no monetary consideration applies, indicate below.

5. CONFIDENTIALITY

5.1 Each party agrees that Confidential Information disclosed under or in connection with this Agreement shall be held in confidence and used solely for the purposes contemplated by this Agreement. Confidential Information shall not include information that is (a) publicly available other than through breach of this Agreement, (b) rightfully received from a third party without restriction, or (c) independently developed without use of the other party's Confidential Information.

5.2 Term of confidentiality obligations shall continue for years from the date of disclosure, except for trade secrets which shall be protected for so long as they remain trade secrets under applicable law.

6. REPRESENTATIONS AND WARRANTIES

6.1 Mutual Representations. Each party represents and warrants that it has the full corporate power and authority to enter into and perform its obligations under this Agreement and that the execution and delivery of this Agreement have been duly authorized.

6.2 Licensee Warranty. Licensee represents and warrants that, to the best of its knowledge, it has the right to grant the license in Improvements set forth in Section 2 and that the Improvements do not knowingly infringe any third party intellectual property rights. Licensee shall promptly notify Licensor of any claim or proceeding alleging infringement related to Improvements.

7. INDEMNIFICATION

7.1 Licensee Indemnity. Licensee shall indemnify, defend and hold harmless Licensor and its officers, directors, employees and agents from and against any and all losses, liabilities, damages, costs and expenses (including reasonable attorneys' fees) arising out of or relating to third party claims that the Improvements infringe or misappropriate a third party's intellectual property rights, except to the extent such claim arises from Licensor's misuse of the Improvements.

7.2 Procedure. The indemnified party shall promptly notify the indemnifying party in writing of any claim for which indemnity is sought, and the indemnifying party shall have the right to control the defense and settlement of such claim, provided that the indemnified party may participate in such defense at its own expense.

8. LIMITATION OF LIABILITY

EXCEPT FOR LIABILITY ARISING FROM A PARTY'S WILLFUL MISCONDUCT OR GROSS NEGLIGENCE, OR FOR INDEMNIFICATION OBLIGATIONS UNDER SECTION 7, NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR CONSEQUENTIAL, INDIRECT, EXEMPLARY OR PUNITIVE DAMAGES, AND EACH PARTY'S AGGREGATE LIABILITY ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT SHALL BE LIMITED TO THE AMOUNTS PAID OR PAYABLE BY LICENSOR UNDER THIS AGREEMENT DURING THE TWELVE (12) MONTHS PRECEDING THE EVENT GIVING RISE TO LIABILITY.

9. TERM AND TERMINATION

9.1 Term. This Agreement shall commence on the Effective Date and, unless earlier terminated in accordance with this Agreement, shall continue for .

9.2 Termination for Cause. Either party may terminate this Agreement upon thirty (30) days' prior written notice if the other party materially breaches this Agreement and fails to cure such breach within the notice period. Termination shall be without prejudice to any rights or obligations accrued prior to termination.

9.3 Survival. Sections 3, 4, 5, 6, 7, 8, 9.3, 10, and 12 and any other provision that by its nature should survive termination shall survive expiration or termination of this Agreement.

10. NOTICES

All notices required or permitted under this Agreement shall be in writing and delivered by hand, nationally recognized overnight courier, certified mail (return receipt requested) or electronic transmission confirmed by the receiving party. Notices shall be sent to the addresses set forth below or to such other address as a party may specify by notice to the other party.

11. ASSIGNMENT; SUCCESSORS

Neither party may assign this Agreement or any of its rights or obligations hereunder without the prior written consent of the other party, except that either party may assign this Agreement in connection with a merger, sale of substantially all assets, or change of control, provided that the assignee assumes all obligations hereunder. This Agreement shall bind and inure to the benefit of the parties and their respective successors and permitted assigns.

12. MISCELLANEOUS

12.1 Entire Agreement. This Agreement constitutes the entire agreement between the parties with respect to its subject matter and supersedes all prior and contemporaneous agreements, understandings, negotiations and discussions, whether oral or written, of the parties relating to that subject matter.

12.2 Amendment and Waiver. No amendment or modification of this Agreement shall be binding unless in writing and signed by authorized representatives of both parties. No waiver shall be effective unless in writing and signed by the party granting the waiver.

12.3 Severability. If any provision of this Agreement is held invalid or unenforceable by a court of competent jurisdiction, such provision shall be enforced to the maximum extent permissible and the remainder of this Agreement shall remain in full force and effect.

12.4 Governing Law. This Agreement shall be governed by and construed in accordance with the laws of the State of without regard to its conflicts of law principles.

12.5 Counterparts and Electronic Signature. This Agreement may be executed in counterparts, each of which shall be deemed an original and all of which together shall constitute one and the same instrument. Signatures delivered by electronic means (including scanned signature pages transmitted by electronic mail) shall be binding.

ADDITIONAL PROVISIONS

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