Fill and Sign the Sharing Agreement Form

Revenue Sharing Agreement This Revenue Sharing Agreement (this Agreement ) is effective as of _______________ (date) (the Effective Date ) by and among the _______________ (Name) Foundation, a _______________ (Name of State) not-for-profit corporation with its principal place of business at ____________________________________ ______________________ (street address, city, state, zip code) , hereinafter called the Foundation , and _______________ (Name of Inventor) , of ___________________ ______________________________________ (street address, city, state, zip code) , hereinafter called the Inventor . Whereas, the Foundation has provided and is providing financial support to the to Inventor in the form of a Grant to support the research of the Inventor, subject to the Foundation’s Invention Policy (the Policy ), attached hereto as Appendix A ; and Whereas, in the course of his research at the laboratory facilities of Foundation, the Inventor was an inventor of the Invention (as hereinafter defined) which may be of commercial value; and Whereas, pursuant to the policies of the Foundation, ownership of such Invention has vested in, or shall be or has been assigned by the Inventor to the Foundation; and; Whereas, the research leading to the Invention has been supported wholly or in part by the resources of the Foundation; and Whereas, as a condition to the Foundation’s granting of the Grant to Inventor for the support of the research of the Inventor, the parties agreed that Net Income (as hereinafter defined) must be shared with the Foundation in the manner set forth herein; and Whereas, the Foundation intends to use amounts received in respect of such Net Income to further its charitable purposes in accordance with the Foundation’s charitable mission; 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. Definitions: A. Direct Costs are expenses related solely to the research out of which the Invention was derived, including salary or other compensation or stipend support, supplies, but specifically excluding indirect or overhead or administrative costs or expenses and the cost of any capital equipment other than capital equipment purchased specifically in connection with the Inventor’s research. B. Invention shall mean _______________________________________ ______________________________________________________________ (give brief description of Invention) as more fully described in Appendix B , whether patentable or not, together with any improvements thereto that are conceived during any period of financial support from the Foundation and of which the Inventor is or is deemed to be an inventor which is deemed to be a work for hire within the meaning of the U.S. Copyright Act. C. Income shall include all amounts or items of value or worth of any nature paid or payable to the Inventor in consideration of an assignment or license of rights in the Invention, including without limitation, assignment or upfront licensing fees or royalties, milestone payments, advanced royalties, royalties on sales of products incorporating or utilizing the Invention, other running royalties, sublicensing fees, equity and options to equity. In the event that the Inventor commercializes the Invention, or in any way exploits the Invention, or derives revenues otherwise than through an assignment or license, Income shall also include compensation based on sales made by the Inventor. D. Net Income shall mean all Income less (i) any out-of-pocket expenses of the Inventor or Foundation related to securing intellectual property protection, (ii) administrative and marketing expenses, and (iii) amounts paid or payable regarding the Research for the Invention. 2. Ownership of Inventions and Software Inventor represents, warrants and covenants that he is the owner of the Invention and further represents, warrants and covenants that he is under no obligation, and will not hereafter enter into any obligation, to any third party that would interfere with or impair said ownership or the performance by the Inventor of any of his obligations under this Agreement or the Policy and that he will not do any act that might interfere with or impair the ability to procure patent and/or copyright protection, as applicable, for said Invention. If he has not done so already, the Inventor represents, warrants and covenants that he shall assign any and all his ownership rights in any Invention to the Foundation and further represents, warrants and covenants that he is under no obligation, and will not hereafter enter into any obligation, to any third party that would interfere with or impair said ownership or his ability to assign said ownership rights or the performance of any other of his obligations under this Agreement and will not do any act that might impair the ability to procure patent and/or copyright protection, as applicable, for said Invention. 3. Revenue Sharing A. The Parties agree that a total of $________ in Direct Costs has been expended on the research project out of which the Invention arose, _____% of which was contributed by the Foundation (the Foundation’s Percentage ). Inventor shall pay to the Foundation the Foundation’s Percentage of Net Income on a _______________ (e.g., quarterly) basis; provided that such payment obligation shall not commence until the Inventor has received an aggregate of $___________ in Net Income. B. The Foundation may waive any rights to any Net Income otherwise due hereunder. Any waiver hereunder shall be in writing and shall not be construed as a waiver of future rights to Net Income. 4. Commercialization of Inventions and Software Foundation and Inventor will each pay 50% of all costs and expenses related to securing and maintaining intellectual property protection (either directly or by contract with a third party). Inventor will diligently pursue the development and commercialization of the Invention made in whole or in part with support from the Foundation and, as necessary and appropriate, secure relevant intellectual property protection therefore in a timely fashion so as to maximize the commercial value of the underlying technology. 5. Confidentiality The Foundation agrees to retain on a confidential basis any patent applications, commercialization plans, licensing agreements and like documentation or information provided hereunder which is, in the case of written disclosures, marked Confidential and, in the case of oral disclosures, followed up promptly with written confirmation of the confidential nature thereof. The Foundation shall not be required to maintain as confidential any information or documentation which has been made public by the Inventor or by a third party under the authority of the Foundation, as is required by law or as compelled by judicial or regulatory authority. There will be no confidentiality restrictions regarding information which is in the public domain through no breach of this Agreement by the Foundation. 6. Termination This Agreement shall remain in full force and effect from the Effective Date until no more Income is being received or receivable for the Invention or any derivative thereof. 7. No Agency Nothing in this Agreement shall be deemed or construed by the Parties to this Agreement or any third person to create an employment, agency, partnership, fiduciary relationship or joint venture among the Parties. 8. 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. 9. 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. 10. Governing Law This Agreement shall be governed by, construed, and enforced in accordance with the laws of the State of _____________. 11. 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. 12. 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. 13. 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. 14. 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. 15. 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. 16. Assignment of Rights The rights of each party under this Agreement are personal to that party and may not be assigned or transferred to any other person, firm, corporation, or other entity without the prior, express, and written consent of the other party. 17. 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. 18. 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. 19. 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. ________________________ (Name of Foundation) By ________________________ By ________________________ (P rinted Name of Inventor) _________________________ (P rinted Name & Office in Foundation) ________________________ ________________________ (Signature of Inventor) (Signature of Officer)