Sample Licensing Agreement

Technology License Agreement with a Research Organization as Licensor

Agreement made on the , between

, a nonprofit corporation organized and existing under the laws of the state of , with its principal office located at

, referred to herein as Licensor, and

, a corporation organized and existing under the laws of the state of , with its principal office located at

, referred to herein as Licensee.

Whereas, Licensor owns certain technology rights related to the Licensed Subject Matter described in detail in Exhibit A attached hereto and made a part hereof; and

Whereas, Licensor desires to have the Licensed Subject Matter developed and used for the benefit of Licensee, Inventor, Licensor, and the public as outlined in Licensor’s Intellectual Property Policy attached hereto as Exhibit B and made a part hereof; and

Whereas, Licensee wishes to obtain a license from Licensor to benefit from Licensed Subject Matter.

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:

1. Effective Date

This Agreement is effective , hereinafter called the Effective Date.

2. Definitions

As used in this Agreement, the following terms have the meanings indicated:

A. Affiliate means any business entity more than owned by Licensee, any business entity which owns more than of Licensee, or any business entity that is more than owned by a business entity that owns more than of Licensee.

B. Licensed Field means (describe)

C. Licensed Product means any product sold by Licensee comprising Licensed Subject Matter pursuant to this Agreement.

D. Licensed Subject Matter means inventions and discoveries considered to be proprietary know-how or Technology Rights which are within Licensed Field.

E. Licensed Territory means the (describe)

F. Net Sales means the gross revenues received by Licensee from the Sale of Licensed Products less sales and/or use taxes actually paid, import and/or export duties actually paid, outbound transportation prepaid or allowed, and amounts allowed or credited due to returns (not to exceed the original billing or invoice amount).

G. Sale, Sell or Sold means the transfer or disposition of a Licensed Product for value to a party other than Licensee.

H. Technology Rights means Licensor’s rights in technical information, know-how, processes, procedures, compositions, devices, methods, formulas, protocols, techniques, software, designs, drawings or data created by Licensor before the Effective Date relating to (describe)

3. Warranty and Superior Rights

A. Licensor represents and warrants its belief that:

1. It is the owner of the entire right, title, and interest in and to Licensed Subject Matter,

2. It has the sole right to grant licenses thereunder, and

3. It has not knowingly granted licenses thereunder to any other entity that would restrict rights granted to Licensee except as stated herein.

B. Licensee understands and acknowledges that Licensor, by this Agreement, makes no representation as to the operability or fitness for any use, safety, efficacy, ability to obtain regulatory approval, and/or breadth of the Licensed Subject Matter.

C. Licensee, by execution hereof, acknowledges, covenants and agrees that it has not been induced in any way by Licensor or its directors, officers or employees to enter into this Agreement, and further warrants and represents that (i) it has conducted sufficient due diligence with respect to all items and issues pertaining to this Paragraph 3 and all other matters pertaining to this Agreement; and (ii) Licensee has adequate knowledge and expertise, or has utilized knowledgeable and expert consultants, to adequately conduct the due diligence, and agrees to accept all risks inherent herein.

4. License

A. Licensor hereby grants to Licensee a royalty-bearing, exclusive license under Licensed Subject Matter to manufacture, have manufactured, and/or sell Licensed Products within the Licensed Territory for use within Licensed Field. This grant is subject to the payment by Licensee to Licensor of all consideration as provided herein, and is further subject to rights retained by Licensor to:

1. Publish the general scientific findings from research related to Licensed Subject Matter subject to the terms of Paragraph 10, Confidential Information; and

2. Use Licensed Subject Matter for research, teaching and other educationally-related purposes.

B. Licensee may extend the license granted herein to any Affiliate if the Affiliate consents to be bound by this Agreement to the same extent as Licensee.

C. Licensee may grant sublicenses consistent with this Agreement if Licensee is responsible for the operations of its sublicensees relevant to this Agreement as if the operations were carried out by Licensee, including the payment of royalties whether or not paid to Licensee by a sublicensee. Licensee must deliver to Licensor a true and correct copy of each sublicense granted by Licensee, and any modification or termination thereof, within days after execution, modification, or termination. When this Agreement is terminated, all existing sublicenses granted by Licensee must be assigned to Licensor.

5. Payments and Reports

A. In consideration of rights granted by Licensor to Licensee under this Agreement, Licensee will pay Licensor the following:

1. A nonrefundable license documentation fee in the amount of $, due and payable when this Agreement is executed by Licensee;

2. An annual license reissue fee in the amount of $, due and payable on each anniversary of the Effective Date beginning on the first anniversary;

3. A running royalty equal to of Net Sales for Licensed Products; and

4. The first Sale or a minimum yearly royalty of $ beginning one year after approval of offer for Sale of a Licensed Product by the or a comparable foreign regulatory authority.

B. In consideration of rights granted by Licensor to Licensee under this Agreement, Licensee further agrees to pay Licensor the following after the execution of a sublicense hereunder:

1. Within 30 days after the execution of the sublicense, a sublicense fee of of any up-front cash payment made to Licensee in consideration of the sublicense, excluding funds paid to Licensee for research and development purposes, or $, whichever is more;

2. Within 30 days after the execution of the sublicense, a sublicense fee constituting a cash payment equal to of any non-cash consideration received by Licensee from a sublicensee, such consideration to include, without limitation, equity in other companies or equity investments in Licensee. The value of an equity investment will be calculated as the average market value of the class of stock involved for consecutive days preceding the execution of the sublicense agreement. In cases where the sublicense agreement calls for payment to Licensee of a premium over the market value, Licensor will also share of the premium paid to Licensee; and

3. One half of the gross revenue royalty payments received on Net Sales of Licensed Products received by Licensee from any sublicensee.

C. During the Term of this Agreement and for year thereafter, Licensee agrees to keep complete and accurate records of its and its sublicensees’ Sales and Net Sales of Licensed Products under the License granted in this Agreement in sufficient detail to enable the royalties payable hereunder to be determined. Licensee agrees to permit Licensor or its representatives, at Licensor’s expense, to periodically examine its books, ledgers, and records during regular business hours for the purpose of and to the extent necessary to verify any report required under this Agreement. If the amounts due to Licensor are determined to have been underpaid, Licensee will pay the cost of the examination and accrued interest at the highest allowable rate.

D. Within days after , , , and , beginning immediately after the Effective Date, Licensee must deliver to Licensor a true and accurate written report, even if no payments are due Licensor, giving the particulars of the business conducted by Licensee and its sublicensee(s), if any exist, during the preceding calendar months under this Agreement as are pertinent to calculating payments hereunder.

This report will include at least:

1. The quantities of Licensed Subject Matter that it has produced;

2. The total Sales;

3. The calculation of royalties thereon; and

4. The total royalties computed and due Licensor.

Simultaneously with the delivery of each report, Licensee must pay to Licensor the amount, if any, due for the period of each report.

E. On or before each anniversary of the Effective Date, irrespective of having a first Sale or offer for Sale, Licensee must deliver to Licensor a written progress report as to Licensee’s (and any sublicensee’s) efforts and accomplishments during the preceding year in diligently commercializing Licensed Subject Matter in the Licensed Territory and Licensee’s (and, if applicable, sublicensee’s) commercialization plans for the upcoming year.

F. All amounts payable here by Licensee must be paid in United States funds without deductions for taxes, assessments, fees, or charges of any kind. Checks must be payable to at the address set forth above.

6. Term and Termination

A. The term of this Agreement is from the Effective Date for a period of years.

B. Any time after years from the Effective Date, Licensor shall have the right to terminate the exclusivity of this license in any national political jurisdiction in the Licensed Territory if Licensee, within days after receiving written notice from Licensor of intended termination of exclusivity, fails to provide written evidence satisfactory to Licensor that Licensee or its sublicensees has commercialized or is actively attempting to commercialize a licensed invention in such jurisdiction(s).

C. Any time after years from the Effective Date, Licensor have the right to terminate this license in any national political jurisdiction in the Licensed Territory if Licensee, within days after receiving written notice from Licensor of intended termination, fails to provide written evidence satisfactory to Licensor that Licensee or its sublicensees has commercialized or is actively attempting to commercialize a licensed invention in such jurisdiction(s).

D. The following definitions apply to this Paragraph 6:

1. Commercialize means having Sales of Licensed Products in such jurisdiction; and

2. Active attempts to commercialize means having Sales of Licensed Products or an effective, ongoing and active research, development, manufacturing, marketing or sales program as appropriate, directed toward obtaining regulatory approval, production or Sales of Licensed Products in any jurisdiction, and plans acceptable to Licensor, in its sole discretion, to commercialize licensed inventions in the jurisdiction(s) that Licensor intends to terminate.

E. This Agreement will earlier terminate:

1. Automatically if Licensee becomes bankrupt or insolvent and/or if the business of Licensee is placed in the hands of a receiver, assignee, or trustee, whether by voluntary act of Licensee or otherwise; or

2. Upon days written notice from Licensor if Licensee breaches or defaults on its obligation to make payments (if any are due) or reports, in accordance with the terms of Paragraph 5, unless, before the end of the day period, Licensee has cured the default or breach and so notifies Licensor, stating the manner of the cure; or upon days written notice if Licensee breaches or defaults on any other obligation under this Agreement, unless, before the end of the day period, Licensee has cured the default or breach and so notifies Licensor, stating the manner of the cure; or at any time by mutual written agreement between Licensee and Licensor, upon days written notice to all parties and subject to any terms herein which survive termination; or under the provisions of Paragraphs 6.B and 6.C if invoked.

F. If this Agreement is terminated for any cause:

1. Nothing herein will be construed to release either party of any obligation matured prior to the effective date of the termination;

2. After the effective date of the termination, Licensee may sell all Licensed Products and parts therefore it has on hand at the date of termination, if it pays earned royalties thereon according to the terms of Paragraph 5; and

3. Licensee will be bound by the provisions of Paragraphs 8 (Indemnification), 9 (Use of Licensor and Component’s Name), and 10 (Confidential Information) of this Agreement.

7. Assignment

Except in connection with the sale of substantially all of Licensee’s assets to a third party, this Agreement may not be assigned by Licensee without the prior written consent of Licensor, which will not be unreasonably withheld.

8. Indemnification and Insurance

A. Licensee agrees to hold harmless and indemnify Licensor, its officers, employees and agents from and against any claims, demands, or causes of action whatsoever, including without limitation those arising on account of any injury or death of persons or damage to property caused by, or arising out of, or resulting from, the exercise or practice of the license granted hereunder by Licensee, its Affiliates or their officers, employees, agents or representatives.

B. In no event shall Licensor be liable for any indirect, special, consequential or punitive damages (including, without imitation, damages for loss of profits or expected savings or other economic losses, or for injury to persons or property) arising out of or in connection with this Agreement or its subject matter, regardless of whether Licensor knows or should know of the possibility of such damages.

C. Insurance

1. Beginning at the time when any Licensed Subject Matter is being distributed or sold (including for the purpose of obtaining regulatory approvals) by Licensee or by a sublicensee, Licensee shall, at its sole cost and expense, procure and maintain commercial general liability insurance in amounts not less than $ per incident and $ annual aggregate, and Licensee shall use reasonable efforts to have the Licensor, its officers, employees and agents named as additional insureds. Such commercial general liability insurance shall provide (i) product liability coverage; (ii) broad form contractual liability coverage for Licensee’s indemnification under this Agreement; and (iii) coverage for litigation costs. The minimum amounts of insurance coverage required shall not be construed to create a limit of Licensee’s liability with respect to its indemnification under this Agreement.

2. Licensee shall provide Licensor with written evidence of such insurance upon Licensor's request. Licensee shall provide Licensor with written notice of at least days prior to the cancellation, non-renewal or material change in such insurance.

3. Licensee shall maintain such commercial general liability insurance beyond the expiration or termination of this Agreement during (i) the period that any Licensed Subject Matter developed pursuant to this Agreement is being commercial distributed or sold by Licensee or by a sublicensee or agent of Licensee; and (ii) the year period immediately after such period.

9. Use of Licensor’s Name and Component’s Name

Licensee may not use the name of Licensor without express written consent.

10. Confidential Information and Publication

A. Licensor and Licensee each agree that all information contained in documents marked confidential and forwarded to one by the other (i) be received in strict confidence, (ii) be used only for the purposes of this Agreement, and (iii) not be disclosed by the recipient party, its agents or employees without the prior written consent of the other party, except to the extent that the recipient party can establish competent written proof that such information:

1. Was in the public domain at the time of disclosure;

2. Later became part of the public domain through no act or omission of the recipient party, it’s employees, agents, successors or assigns;

3. Was lawfully disclosed to the recipient party by a third party having the right to disclose it;

4. Was already known by the recipient party at the time of disclosure;

5. Was independently developed by the recipient; or is required by law or regulation to be disclosed.

B. Each party’s obligation of confidence hereunder shall be fulfilled by using at least the same degree of care with the other party’s confidential information as it uses to protect its own confidential information. This obligation shall exist while this Agreement is in force and for a period of years thereafter.

C. Licensor will submit its manuscript for any proposed publication of research related to Licensed Subject Matter to Licensee at least days before publication, and Licensee shall have the right to review and comment upon the publication in order to protect Licensee’s confidential information. Upon Licensee’s request, publication will be delayed up to additional days to enable Licensee to secure adequate intellectual property protection of Licensee’s property that would be affected by the publication.

11. Licensee must comply with all applicable federal, state and local laws and regulations in connection with its activities pursuant to this Agreement.

12. 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.

13. 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.

14. Governing Law

This Agreement shall be governed by, construed, and enforced in accordance with the laws of the State of .

15. Notices

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.

16. Attorney’s Fees

In the event that any lawsuit is filed in relation to this Agreement, the unsuccessful party in the action shall pay to the successful party, in addition to all the sums that either party may be called on to pay, a reasonable sum for the successful party's attorney fees.

17. 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.

18. 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.

19. 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.

20. 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.

21. In this Agreement, any reference to a party includes that party's heirs, executors, administrators, successors and assigns, singular includes plural and masculine includes feminine.

WITNESS our signatures as of the day and date first above stated.