License Agreement
Draft
License Agreement
by and between
Miami University
and
______________________________
Table of Contents
Preamble
Sections
Attachments
Schedule A - Licensed Patents
DRAFT
LICENSE AGREEMENT
THIS LICENSE AGREEMENT, effective as of the date of execution by both parties, by and between Miami University, a public institution of higher education organized under the laws of the State of Ohio with its principal place of business at 501 East High Street, Oxford, Ohio, 45056, USA, (hereinafter "Licensor") and __________________________________________________, a corporation organized under the laws of the State of _____________________, with its principal place of business at (hereinafter "Licensee").
WHEREAS, the Licensor owns all rights, title, and interest in and to the Licensed Technology and Licensed Patents, each as hereinafter defined, subject to the right of the United States Government to a nonexclusive, worldwide, royalty-free license under the Licensed Patents to manufacture, have manufactured, or use for the purpose of the United States Government; and
WHEREAS, the Licensor wishes to grant and the Licensee wishes to receive certain license rights under the Licensor's Licensed Technology and Licensed Patents;
NOW, THEREFORE, in consideration of the premises and of the mutual covenants herein contained, it is agreed as follows:
1. Definitions
Terms used in this License Agreement shall have the following meaning:
1.1 "Affiliate," with respect to any party, shall mean any corporation, organization, or other entity which, either directly or indirectly, controls, is controlled by, or is under common control with such party, control being the ownership of at least fifty percent (50%) of the voting securities, equity participation, or beneficial interest of such party. The term "control" shall mean possession, direct or indirect, or the powers to direct or cause the direction of the management or policies of a person, organization, or entity, whether through ownership or equity participation, voting securities, or beneficial interest, by contract, agreement, or otherwise.
1.2 "Effective Date" shall mean the date of execution by both parties of this License Agreement.
1.3 "Licensed Patents" shall mean the patent applications and patents listed in Schedule A attached hereto and made a part hereof, any patents issuing on any such patent applications, any foreign patent applications or patents corresponding to any of the foregoing patent applications or patents, and any extensions or reissues of any such patents.
1.4 "Licensed Technology" shall mean and include all technical information in tangible form, including all technical data, know-how, trade information, and trade secrets, relating to the Licensed Patents and owned or controlled by the Licensor on the Effective Date, subject to the rights of the United States Government referred to in the first WHEREAS clause of this License Agreement.
1.5 "Licensee Information" shall mean information of the Licensee in tangible form directly relating to the design, manufacture, selling or marketing of a Licensed Product, as hereinafter defined.
1.6 "Licensed Products" shall mean _________________________________.
1.7 "Licensed Field" shall mean the developing, manufacturing, using, leasing, or selling of Licensed Products, utilizing the Licensed Technology or the Licensed Patents.
1.8 "Licensed Territory" shall mean ________________________________________.
2. Grant of Licenses
2.4 The Licensee shall notify the Licensor of the issuance of any sublicenses to any Sublicensees and shall promptly provide the Licensor with a copy thereof in the English language. The Licensee shall be responsible for the performance of its Sublicensees under any such sublicenses, including the payment of any royalties or other payments due under any such sublicenses or as a consequence of any such sublicenses. The Licensee shall not receive from Sublicensees anything of value in lieu of cash payments in consideration for any sublicense under this License Agreement, without the express prior written permission of the Licensor.
3. Representations
5. License Issue Fee
Upon the execution of this License Agreement the Licensee shall pay to the Licensor a License Issue Fee of . The License Issue Fee shall be neither refundable nor creditable against any other payments due under this License Agreement.
Miami University
501 E High St
Oxford, OH 45065
Attn: Vice President for Research and Innovation
or to such other place as the Licensor may designate from time to time in writing.
9. Grant Back
During the term of this License Agreement, if the Licensee files a patent application which at the time of such filing or subsequently constitutes a Future Licensee Patent, and a third party licensee of the Licensor under any of the Licensed Patents would need a license under any patent issuing on said patent application in order to utilize its license under the Licensed Patents, then, the Licensee agrees to grant to the Licensor a nonexclusive, royalty-free license under such patent application and any patent issuing thereon with the right to sublicense such third party licensee of the Licensor thereunder.
10. Diligence
10.1 Promptly upon execution of this License Agreement the Licensee shall establish a program, or continue a program already in effect, reasonably designed and funded to develop and market Licensed Products in the Licensed Field and the Licensed Territory. In the conduct of such program the Licensee shall develop at least one product comprised within the category of Licensed Products described in Section 1.8 hereof, introduce such product into the United States for test marketing within months after the Effective Date, market such product on a regular basis in the United States within months after the initiation of such test marketing, and market such product in the Licensed Territory outside of the United States within months after the initiation of such marketing on a regular basis in the United States.
10.2 The Licensee shall keep the Licensor apprised of its progress with respect to the requirements of Section 10.1 hereof by submitting progress reports to the Licensor at six (6) month intervals, the first such report to be submitted six (6) months after the Effective Date and further such reports to continue to be submitted until all of the requirements of Section 10.1 hereof have been fully satisfied.
10.3 Nonperformance of this Section 10, or any part thereof, as to the United States or as to the Licensed Territory outside of the United States shall be a breach of or a default under this License Agreement, and in the event of such breach or default, the Licensor shall have the right to terminate this License Agreement.
11. Confidentiality
11.1 The Licensor and the Licensee anticipate that in connection with this License Agreement it may be necessary for either to disclose to the other information of a confidential and proprietary nature, including, but not limited to, technical data, know-how, trade secrets, computer programs, and business practices ("Information"). The Information will be disclosed in writing and marked proprietary. Information disclosed verbally will be confirmed in writing, marked proprietary, and forwarded to the receiving party within thirty (30) days after such disclosure.
11.2 Each party agrees that it will not disclose the Information to third parties and will maintain the Information in confidence, exercising at least the same degree of care used to protect its own confidential and proprietary information. The parties agree to use such Information only for the purposes contemplated under this License Agreement. Disclosure of such Information shall be restricted to those employees and agents of a party who are directly participating in work involving the other party hereto. Both parties agree to obtain the agreement of those employees to protect the confidentiality of such Information. Both parties shall designate an individual or individuals to receive the Information.
11.3 The limitations on disclosure or use of the Information by the receiving party shall not apply to, and neither party shall be liable for disclosure or use of Information which:
(a) is available to the public at the time of such disclosure or use through no fault of the receiving party;
(b) is available to the receiving party at the time of receipt of such Information by the receiving party, as can be shown by prior written records;
(c) prior to such disclosure or use has been disclosed to the receiving party by a third party entitled to disclose it; or
(d) is developed by or for the receiving party independently of the disclosure hereunder.
11.4 The obligations of confidentiality and nonuse set forth above in Section 11.2 shall terminate five (5) years from the date Information is disclosed to the receiving party.
11.5 The parties agree that Information furnished hereunder shall not be disclosed contrary to the laws and regulations of the United States of America, including, but not limited to, the Export Administration Regulations of the U.S. Department of Commerce and the International Traffic in Arms Regulations of the U.S. Department of State.
11.6 Each of the parties hereto hereby agrees to maintain this License Agreement in confidence and not to disclose the details thereof to any third party without first obtaining the written consent of the other party. This obligation of confidentiality, however, shall not apply to the mere existence of this License Agreement or to the names of the parties to this License Agreement.
12. Term
This License Agreement will commence as of the Effective Date and will continue in effect until terminated by either party under Section 15 hereof.
13. Infringement
13.1 The Licensee shall inform the Licensor promptly in writing of any alleged infringement of the Licensed Patents by a third party and of any available evidence thereof.
13.2 During the term of this License Agreement, the Licensor shall have the right, but shall not be obligated, to prosecute at its own expense all infringements of the Licensed Patents and, in furtherance of such right, the Licensee hereby agrees that the Licensor may include the Licensee as a party plaintiff in any such suit, without expense to the Licensee. The total cost of any such infringement action commenced or defended solely by the Licensor shall be borne by the Licensor and the Licensor shall keep any recovery or damages for past infringement derived therefrom.
13.3 If within six (6) months after having been notified of any alleged infringement, the Licensor shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if the Licensor shall notify the Licensee at any time prior thereto of its intention not to bring suit against any alleged infringer in the Licensed Territory and the Licensed Field, then, and in those events only, the Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Licensed Patents in the Licensed Territory and the Licensed Field, and the Licensee may, for such purposes, use the name of the Licensor as party plaintiff; provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment, or other voluntary final disposition of the suit may be entered into without the consent of the Licensor, which consent shall not unreasonably be withheld. The Licensee shall indemnify the Licensor against any order for costs that may be made against the Licensor in such proceedings.
13.4 In the event that the Licensee shall undertake the enforcement and/or defense of the Licensed Patents by litigation, the Licensee may withhold up to fifty percent (50%) of the payments otherwise thereafter due the Licensor under Section 6 hereof and apply the same toward reimbursement of up to half of the Licensee’s expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery of damages by the Licensee for each such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of the Licensee relating to such suit, and next toward reimbursement of the Licensor for any payments under Section 6 hereof past due or withheld and applied pursuant to this Section 13. The balance remaining from any such recovery shall be divided equally between the Licensee and the Licensor.
13.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of the Licensed Patents shall be brought against the Licensee, the Licensor, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action at its own expense.
13.6 In any infringement suit as either party may institute to enforce the Licensed Patents pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
13.7 The Licensee, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to sublicense any alleged infringer in the Licensed Territory and the Licensed Field for future use of the Licensed Patents. Any fees or royalties received by the Licensee as part of such a sublicense shall be treated in accordance with Sections 2.5 and 6 hereof.
14. Validity of Licensed Patents
If any claim or claims of any of the Licensed Patents should be held to be invalid or of limited scope by the judgment of any court which is final in its effect, the rights and obligations of the parties hereunder shall be construed and interpreted in accordance with the judgment from the effective date thereof.
15. Termination
15.1 The Licensee may terminate this License Agreement at any time on three (3) months written notice to the Licensor.
15.2 Either party shall have the right to terminate this License Agreement by written notice to the other party if:
15.2.1 The other party is in breach or default of any part of this License Agreement and the breach or default is not cured after thirty (30) days notice given to the party in breach or default; or
15.2.2 the other party shall:
(i) apply for or consent to the appointment of a receiver, trustee or liquidator of it or any of its party;
(ii) admit in writing its inability to pay its debts as they mature;
(iii) make a general assignment or trust mortgage for the benefit of creditors;
(iv) file a voluntary petition in bankruptcy, or a petition or an answer seeking reorganization or an arrangement with creditors or to take advantage of any bankruptcy, reorganization, insolvency, readjustment of debt, dissolution or liquidation law or statute, or an answer admitting the material allegations of a petition file against it in any proceeding under any such law; or
(v) take corporate action for the purpose of effecting any of the foregoing; provided that, in the case of the Licensor, such event shall not cause a right to terminate if the Licensee is able to make the royalty payments or other payments due under this License Agreement, or give adequate assurance of its ability to do so; or
15.2.3 an order, judgment or decree shall be entered against the other party by any court of competent jurisdiction, approving a receiver, trustee or liquidator of such other party or of all or a substantial portion of its assets, and such order, judgment or decree shall not be released, vacated, or appealed within sixty (60) days after its issue or entry; or
15.2.4 any judgment, writ, warrant of attachment or execution or similar process shall be issued or levied against a substantial part of the property of the other party, and such judgment, writ, or similar process shall not be released, vacated, or fully bonded within sixty (60) days after its issue or levy.
15.3 The Licensee's obligations to pay any amount payable under this License Agreement and to report to the Licensor and to pay royalties to the Licensor as to any Licensed Product made, leased, or sold under any license or sublicense granted pursuant to this License Agreement prior to the termination of this License Agreement shall survive such termination.
15.4 Upon termination of this License Agreement the Licensee shall have no further right to utilize the Licensed Technology or the Licensed Patents.
15.5 Any sublicense in effect at the termination of this License Agreement shall remain in effect, but for the benefit of the Licensor, provided the Sublicensee shall continue to make all reports and payments required under its sublicense and is not otherwise in breach or default thereunder, such reports and payments then to be made to the Licensor. Upon such termination the Licensee shall promptly assign each such sublicense to the Licensor without further consideration.
15.6 The provisions of Sections 8, 9, 11, 15.3, 15.4, 15.5, 17, 19 and 20 hereof shall survive the termination of this License Agreement.
16. Assignment
Except as otherwise permitted under this License Agreement, neither party shall assign, nor in any manner transfer, its interest or any part thereof in this License Agreement without the prior written consent of the other party. This Section 16 shall not apply to the assignment to any successor corporation in the event of a merger, consolidation, spin-off or transfer of substantially all of the business of the Licensee.
17. Indemnification
17.1 The Licensee shall at all times during the term of this Agreement and thereafter, indemnify, defend and hold the Licensor harmless against all claims, proceedings, demands, and liabilities of any kind whatsoever, including legal expenses and reasonable attorneys' fees, arising out of the death of or injury to any person or persons or out of any damage to property, or resulting from the production, manufacture, sale, use, lease, consumption or advertisement of the Licensed Products arising from any obligation of the Licensee hereunder.
17.2 The Licensee shall obtain and carry in full force and effect commercial general liability insurance which shall protect the Licensee and the Licensor with respect to events covered by Section 17.1 herein. Such insurance shall be written by a reputable insurance company domiciled within the United States and having an A. M. Best rating of AX or better, shall list the Licensor as an additional insured thereunder, shall be endorsed to include product liability coverage and shall require thirty (30) days written notice to be given to the Licensor prior to any cancellation or material change thereof. The limits of such insurance shall not be less than Two Million Dollars ($2,000,000) per occurrence with an aggregate of Two Million Dollars ($2,000,000) combined for bodily injury, including death, and for property damage. An umbrella or excess liability policy may be used in conjunction with commercial general liability insurance to satisfy required limits. The Licensee shall provide the Licensor with Certificates of Insurance evidencing the same.
17.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, THE LICENSOR MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY THE LICENSOR THAT THE PRACTICE BY THE LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL THE LICENSOR BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER THE LICENSOR SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY.
17.4 THE LICENSOR MAKES NO REPRESENTATION OR WARRANTY OF ANY KIND WHATSOEVER, EITHER EXPRESS OR IMPLIED, TO THE LICENSEE, OR ANY SUBLICENSEE, OR ANY CUSTOMER OF THE LICENSEE OR ANY SUBLICENSEE, AS TO THE ABILITY OF THE LICENSEE OR SUBLICENSEE OR CUSTOMER TO UNDERSTAND OR UTILIZE THE LICENSED TECHNOLOGY OR THE LICENSED PATENTS, OR THAT THE PRACTICE OF THE LICENSED TECHNOLOGY OR THE LICENSED PATENTS WILL ACHIEVE ANY PARTICULAR RESULTS.
18. Notices
All notices, communications, and remittances shall be sent to the Licensor at:
Miami University
501 E High St
Oxford, OH 45065
USA
Attention: Vice President for Research and Innovation
and to the Licensee at:
by first-class mail, postage prepaid, or by facsimile transmission, confirmed within three (3) days by first-class mail, postage prepaid, addressed as set forth above, provided that either party may from time to time notify the other party of a different address to which all notices, communications or remittances shall thereafter be addressed. Notice shall be deemed to have been given as of the date of its deposit with the United States Postal Service.
19. Export License
This License Agreement is subject to United States laws and regulations controlling the export of technical data, computer software, laboratory prototypes, and all other export controlled commodities. These laws include, but are not limited to, the Arms Export Control Act and the Export Administration Act as they may be amended. All rights granted by this License Agreement are contingent upon compliance with these laws and regulations. The Licensee shall not, directly or indirectly, export any export controlled commodities, which are subject to this License Agreement, unless the required authorization and/or license is obtained from the proper government agency(ies) prior to export. By granting rights in this License Agreement, the Licensor does not represent that export authorization or an export license will not be necessary or, if necessary, that such authorization or export license will be granted.
20. Publicity and Patent Marking
Neither party shall utilize the name of the other party, or the name of any employee of the other party, in its literature or advertisements, except upon express written consent of the other party, provided, however, that the Licensee shall place an appropriate patent notice on the Licensed Products. The Licensee shall not use the name, mark, or trade name of the Licensor or any name or likeness of any employee of the Licensor or the name of any inventor of the Licensed Patents, except upon written consent of the Licensor for each instance.
21. Governing Law and Severability
This License Agreement shall be governed as to the formation, interpretation, and validity thereof by the laws of the State of Ohio. If any provision of this License Agreement is determined to be invalid or unenforceable for any reason whatsoever, the remainder of this License Agreement shall be enforced to the extent possible, and the offending provision shall be treated as though not a part of this License Agreement.
22. Entire Agreement
This License Agreement sets forth the entire agreement and understanding between the parties hereto with respect to the subject matter hereof, and supersedes all previous agreements, negotiations, commitments, and writings, if any, between the parties hereto relating thereto. This License Agreement may not be changed except by an amendment in writing subsequent to the date hereof and signed by a duly authorized officer or representative of the parties hereto to be bound thereby.
23. Patent Prosecution
24.1 The Licensor shall apply for, seek prompt issuance of, and/or maintain during the term of this License Agreement the Licensed Patents in the United States and in the foreign countries listed in Schedule A attached hereto. Schedule A may be amended by verbal agreement of both parties, such agreement to be confirmed in writing within ten (10) days. The prosecution, filing, and maintenance of all Licensed Patents and applications shall be the primary responsibility of the Licensor; provided, however, the Licensee shall have reasonable opportunities to advise the Licensor and shall cooperate with the Licensor in such prosecution, filing and maintenance.
24.2 Payment of all fees and costs relating to the filing, prosecution, and maintenance of the Licensed Patents incurred by the Licensor after the Effective Date shall be the responsibility of the Licensee. If the Licensee elects not to bear the cost of preparing and filing any patent application in the United States or in any foreign country, or decides to discontinue the financial support of the prosecution or maintenance of any patent application or patent, the Licensee shall give the Licensor timely written notice thereof, and the Licensor shall then be free to file or to continue the prosecution or maintenance of any such application, and to maintain any patent issuing thereon in the U.S. and in any foreign country, at no further expense to the Licensee, and the Licensor shall have the right to dispose of such patent applications and patents as it chooses and without further obligation to the Licensee with respect to such patent applications or patents, and such patent applications or patents shall be deleted from the scope of this License Agreement.
IN WITNESS WHEREOF, the parties hereto have executed this License Agreement on the date(s) indicated below, to be effective as of the latest such date.
Miami University
Licensor
By __________________________________ (signature)
Name ________________________________
Title _________________________________
Date _________________________________
____________________________________
Licensee
By __________________________________ (signature)
Name ________________________________
Title _________________________________
Date _________________________________