NONEXCLUSIVE LICENSE AGREEMENT
This License Agreement, effective as of ____________ (“EFFECTIVE DATE”), is made by and between KANSAS STATE UNIVERSITY RESEARCH FOUNDATION, a Kansas not-for-profit corporation having its principal place of business at 2005 Research Park Circle, Suite 105, Manhattan, KS, 665025020 (“KSURF”), and (COMPANY NAME), having its principal place of business at (Company Address) (“LICENSEE”).
RECITALS WHEREAS, Kansas State University (KSU) and the inventors have assigned their full interest, rights and title in PATENT RIGHTS (as hereinafter defined) to KSURF, said rights related to KSURF’s disclosure number _______, entitled “(Disclosure Title).” WHEREAS, KSURF has rights to grant a license under PATENT RIGHTS and desires to have said rights developed and commercialized to benefit the public and is willing to grant a license hereunder; WHEREAS, LICENSEE has represented to KSURF, to induce KSURF to enter into this Agreement, that LICENSEE is experienced in the development, production, manufacture, marketing, and sale of products similar to the LICENSED PRODUCTS (as hereinafter defined) and that it shall commit itself to a thorough, vigorous, and diligent program of exploiting the PATENT RIGHTS so that public utilization shall result therefrom; and WHEREAS, LICENSEE desires to obtain a license under PATENT RIGHTS, and KSURF wishes to grant LICENSEE such a license upon the terms and conditions hereinafter set forth; NOW, THEREFORE, in consideration of the premises and the mutual promises and covenants contained herein, the parties hereby agree as follows:
ARTICLE I. DEFINITIONS As used in this Agreement, the following terms, whether used in singular or in plural, shall have the respective meanings set forth below: 1.1. “AFFILIATE” shall mean any entity in which a party to this Agreement directly or indirectly owns or controls, or is owned or controlled by, at least fifty percent (50%) of the equity or other interests of the entity. For the limited scope of this Agreement, KSU and the National Institute for Strategic Technology Acquisition and Commercialization (“NISTAC”) are defined as affiliates of KSURF. “FIELD OF USE” shall mean _________________________________________________. “LICENSED PRODUCTS” shall mean any and all products that employ or are produced by the practice of inventions claimed in at least one VALID PATENT CLAIM (as hereinafter defined). “NET SALES” shall mean billings by LICENSEE, its AFFILIATES and Sublicensees on all sales of LICENSED PRODUCTS to an unaffiliated third party, exclusive of inter-company
1.2. 1.3.
1.4.
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transfers or sales, less the reasonable and customary deductions from such gross amounts including: (a) (b) normal and customary trade, cash and quantity discounts, allowances and credits; credits or allowances actually granted for damaged goods, returns or rejections of LICENSED PRODUCTS and retroactive price reductions; sales or similar taxes, including tariffs or other governmental charges levied on, absorbed or otherwise imposed on the sale of LICENSED PRODUCTS, including, without limitation, value-added taxes or other governmental charges otherwise measured by the billing amount, when included in billing; freight, postage, shipping, customs, duties and insurance charges; and charge back payments and rebates (or equivalents thereof) granted to federal, state, and local governments, their agencies, purchasers and reimbursers or to trade customers, including but not limited to, wholesalers and chain buying groups and rebates (or equivalents thereof) charged by national or local government authorities.
(c)
(d) (e)
No deductions shall be made for commissions paid to individuals whether they be with independent sales agencies or regularly employed by LICENSEE and on its payroll, or for cost of collections. LICENSED PRODUCTS shall be considered “sold” when billed or invoiced. 1.5 “PATENT RIGHTS” means any subject matter claimed in or disclosed by U.S. Patent Application Serial No. ___________, filed __________, entitled “(Application Title)”. This application is part of KSURF Ref. No. __________ entitled “(Disclosure Title)” but only U.S. Patent Application No. ___________ and any of its divisionals, reexaminations, continuations, continuations-in-part, reissues and foreign counterparts and any subsequently filed PCT international patent application (s) and related PCT National Stage counterpart (s) and their divisionals, reexaminations, continuations, continuations-in-part, reissues and foreign counterparts claiming subject matter. “PROPRIETARY INFORMATION” shall mean all scientific, regulatory, marketing, financial, and commercial information or data, whether communicated in writing or orally, which is provided by one Party to the other Party in connection with this Agreement, providing that Proprietary Information that is orally communicated is summarized in writing within thirty (30) days of first disclosure, and providing that all Proprietary Information that is communicated in writing is marked “Proprietary,” “Confidential,” or with a substantially similar marking; and shall also mean any and all confidential information disclosed under CDA. “TERRITORY” shall mean _______________________________________________. “VALID PATENT CLAIM” shall mean a claim of an issued, maintained, and unexpired patent included within PATENT RIGHTS, which has not been revoked or held unenforceable or invalid by a final decision of a court or other governmental agency of competent jurisdiction having authority over said patent and that final decision is not appealed or is unappealable, and which has not been admitted to be invalid or unenforceable through reissue, disclaimer or other similar means.
1.6.
1.7. 1.8.
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ARTICLE II. LICENSE GRANT 2.1. LICENSE. KSURF grants to LICENSEE and its AFFILIATES under the PATENT RIGHTS a nonexclusive license in the FIELD OF USE to make, use, sell, offer for sale and import LICENSED PRODUCTS in the TERRITORY. RESERVED RIGHTS. KSURF and its AFFILIATES have a reserved right to make and use under the PATENT RIGHTS for research and educational purposes only to further their respective not-for-profit missions. KSURF reserves the right to grant licenses under the PATENT RIGHTS to qualified research institutions and organizations with the right to make and use for noncommercial research purposes only, adhering to the confidentiality provisions of Article V. SUBLICENSING. LICENSEE shall have the right to enter into sublicensing agreements for the rights, privileges and licenses granted hereunder provided that LICENSEE shall give KSURF sixty (60) days prior written notice thereof. Such agreements are subject to approval by KSURF, but such approval shall not be unreasonably withheld. No such sublicenses shall relieve LICENSEE of its obligations hereunder and each Sublicense Agreement shall incorporate terms to the foregoing effect. A copy of any Sublicense Agreement, and any amendments thereto, will be furnished to KSURF promptly upon execution and delivery. Upon termination of this Agreement, all Sublicensee’s rights shall also terminate, subject to Article 7 hereof, unless otherwise agreed in writing between KSURF and any Sublicensee. SUBLICENSEE OBLIGATIONS. LICENSEE agrees that any Sublicenses it grants shall incorporate all of the restrictions, provisions and obligations in this Agreement. Such restrictions, provisions and obligations shall be binding upon the Sublicensee as if it were a party to this Agreement. PAYMENTS BY SUBLICENSEE. LICENSEE shall not receive from Sublicensee(s) anything of value in lieu of cash payments in consideration for any sublicenses under this Agreement, without the express prior written permission of KSURF.
2.2.
2.3.
2.4.
2.5.
ARTICLE III. FEES AND ROYALTIES 3.1 LICENSE SIGNING. LICENSEE shall pay _________________ U.S. Dollars (US $________) to KSURF upon signing of this Agreement. ANNUAL MINIMUM ROYALTY PAYMENTS. In accordance with the terms set forth in Article VI, LICENSEE shall pay a non-refundable payment creditable against the Running Royalty payment due under Section 3.3 according to the following schedule: Due Date ________________ ________________ and thereafter 3.3 Amount ($___________ ) U.S. Dollars ($___________ ) U.S. Dollars ($___________ ) U.S. Dollars Period January – December 2008 January – December 2009 January – December 2010 and annually thereafter
3.2
RUNNING ROYALTY PAYMENTS. LICENSEE shall pay to KSURF a running royalty payment of ______________ Percent ( _____ %) of LICENSED PRODUCT sold.
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3.4
REIMBURSEMENT for THIRD PARTY PATENT COSTS. 3.4.1 LICENSEE shall reimburse KSURF all reasonable past and future third party patent costs of PATENT RIGHTS. Reimbursement payments are due within thirty (30) days of the invoice date. KSURF shall have full and complete ownership and control over the filing and prosecution of PATENT RIGHTS. However, LICENSEE shall have reasonable opportunities to advise KSURF, and shall cooperate with KSURF in such prosecution, filing and maintenance. If LICENSEE notifies KSURF that LICENSEE does not wish to reimburse any costs under Section 3.4.1 above, KSURF, in its sole discretion, may terminate LICENSEE’s rights falling within the particular portion of PATENT RIGHTS for which reimbursement was withheld.
3.4.2
3.5
NON-ROYALTY SUBLICENSEE PAYMENTS. Forty percent (40%) of any non-royalty payments received by LICENSEE from Sublicensees, including fees received in consideration for sublicensing the LICENSED PRODUCTS, shall be paid to KSURF. LATE PAYMENT. Any amounts not paid by LICENSEE when due under this Agreement will be subject to interest from and including the date payment is due through and including the date upon which LICENSEE makes payment at a rate of eighteen percent (18%) and calculated daily on the basis of a 365-day year.
3.6
ARTICLE IV. PATENT INFRINGEMENT BY THIRD PARTIES 4.1 DUTY TO INFORM. LICENSEE shall promptly report in writing to KSURF any known or suspected infringement of any of the PATENT RIGHTS, and shall provide KSURF with all available evidence supporting such infringement. KSURF RIGHT TO ENFORCE. KSURF shall have the right, but not the obligation, to initiate suit. KSURF shall have the sole and exclusive right to select counsel for any such suit and shall pay all expenses of the suit, including attorneys’ fees and court costs. RIGHT TO RETAIN COUNSEL. In any infringement or other appropriate action initiated by KSURF pursuant to Section 4.2, LICENSEE shall have the right to retain its own counsel, with the fees and expenses to be paid by LICENSEE, if representation of LICENSEE by the counsel selected by KSURF will be inappropriate due to actual or potential differing interests between KSURF and LICENSEE. NON-INITIATING PARTY OBLIGATIONS. In any infringement suit which KSURF may institute to enforce the PATENT RIGHTS, LICENSEE shall at the request of KSURF cooperate in all respects including being named as a party if necessary or desirable, and to have its and its AFFILIATES’ employees testify when requested and make available relevant records, information, samples, and the like at KSURF’s expense.
4.2
4.3
4.4
ARTICLE V. CONFIDENTIALITY AND PUBLICATIONS 5.1 NONDISCLOSURE OF PROPRIETARY INFORMATION. KSURF and LICENSEE shall use Proprietary Information received from the other party only in accordance with this Agreement
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and shall not disclose same to any third party without the prior written consent of the other party. The foregoing obligations shall survive the expiration or termination of this Agreement for a period of five (5) years. These obligations shall not apply to any information which: (a) (b) is generally available to the public at the time of this disclosure; is at the time of disclosure or thereafter becomes published or otherwise part of the public domain without breach of this Agreement by the receiving party; is disclosed to the undersigned by third parties as a matter of right; is known by the receiving party at the time of its receipt, and not through a prior confidential disclosure by the disclosing party, as documented by business records; and is necessary to be disclosed to agents, consultants, AFFILIATES and/or other third parties for the research and development, manufacturing and/or marketing of LICENSED PRODUCTS (or for such parties to determine their interest in performing such activities) in accordance with this Agreement on the condition that such third parties agree to be bound by the confidentiality obligations contained in this Agreement, except that the term of confidentiality for such third parties shall be no less than five (5) years from the time of disclosure; or Should the receiving party be faced with legal action to disclose PROPRIETARY INFORMATION received hereunder, the receiving party shall promptly notify the disclosing party and, upon the request of the latter, shall cooperate with the disclosing party in contesting such a disclosure.
(c) (d)
(e)
(f)
5.2
PROPRIETARY NATURE OF THIS AGREEMENT. The parties agree to treat as Proprietary Information the terms of this Agreement, in accordance with the terms and conditions of Section 7.1 above. The general terms of Article II shall be exempt from this requirement as necessary for either party to further its mission and business practices without undue restriction or hardship.
ARTICLE VI. REPORTS, PAYMENTS, AND RECORDS 6.1 REPORTS. LICENSEE will submit annual reports and payments on each anniversary date of the EFFECTIVE DATE until the first calendar quarter containing its first NET SALES revenue, at which point LICENSEE will submit quarterly reports and payments until termination of the Agreement, regardless of the amount of NET SALES in subsequent quarters. Such quarterly reports shall follow the format of Attachment A and be submitted within forty five (45) days according to the following schedule of dates: March 31, June 30, September 30 and December 31, of each year. LICENSEE shall deliver to KSURF true and accurate reports, giving such particulars of the business conducted by LICENSEE and its sublicensee(s) during the preceding three month period under this Agreement as shall be pertinent to a royalty accounting thereunder. These shall include at least the following: (a) amount of LICENSED PRODUCTS manufactured and sold by LICENSEE and all sublicensees; total billings for LICENSED PRODUCTS sold by LICENSEE and all sublicensees;
(b)
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(c) (d) (e) (f) (g) (h) 6.2
methods used to calculate the Royalty; the exchange rate used; deductions applicable as provided in Paragraph 1.4; royalties due on additional payments from sublicensee(s) under Paragraph 3.5; total royalties due; and names and addresses of all sublicensees of LICENSEE.
PAYMENTS. Payments to be made by LICENSEE to KSURF under this Agreement shall be paid by check made to the order of “KANSAS STATE UNIVERSITY RESEARCH FOUNDATION” or by bank wire transfer in immediately available funds to such bank account in the United States designated in writing by KSURF from time to time. Royalties shall be deemed payable by the entity making the NET SALES from the country in which earned in local currency and subject to foreign exchange regulations then prevailing. Royalty payments shall be made in United States Dollars to the extent that free conversion to United States Dollars is permitted. The rate of exchange to be used in any such conversion from the currency in the country where such NET SALES are made shall be determined on the basis of the New York selling rate of exchange as reported in the “Wall Street Journal” on the last day of the calendar quarter during which such NET SALES are earned. INSPECTION. LICENSEE shall keep full, true and accurate books of account containing all particulars that may be necessary for the purpose of showing the amounts payable to KSURF thereunder. Said books of account shall be kept at LICENSEE's principal place of business or the principal place of business of the appropriate division of LICENSEE to which this Agreement relates. Said books and the supporting data shall be open at all reasonable times for five (5) years following the end of the calendar year to which they pertain, to the inspection of KSURF or its agents for the sole purpose of verifying LICENSEE's royalty statements or compliance in other respects with this Agreement. Should such inspection lead to the discovery of a discrepancy of greater than five percent (5%) in payments owed for the period audited, to KSURF's detriment, then LICENSEE agrees to pay the full cost of such inspection.
6.3
ARTICLE VII. TERMINATION 7.1 TERMINATION AND EXPIRATION. This Agreement shall be effective as of the EFFECTIVE DATE, even though necessary ratifying signatures may be at a later date, and shall remain in full force and effective until expiration of the last VALID PATENT CLAIM or termination as provided below. TERMINATION BY LICENSEE. LICENSEE shall have the right to terminate this Agreement unilaterally at any time by sending written notice of termination to KSURF six (6) months prior to the Termination Date. TERMINATION FOR CAUSE. Each Party shall have the right to terminate this Agreement upon giving written notice to the other Party for any breach of this agreement; in the case of a
7.2
7.3
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breach capable of remedy, the receiving party shall have (30) days from the receipt of such notice to remedy such breach. 7.4 EFFECT OF INSOLVENCY. Unless otherwise agreed in writing in advance, this Agreement terminates forthwith if LICENSEE becomes insolvent or has a receiver appointed over the whole or any part of its assets or enters into any compound with its creditors or has an order or resolution passed for it to be wound up otherwise than in furtherance of a scheme for amalgamation or reconstruction and in such manner that the company resulting therefrom effectively agrees to be bound by or assume the obligations of this Agreement. EFFECT OF CHANGE OF CONTROL. In the event of a “Change of Control” of LICENSEE or its AFFILIATES, continuation of this Agreement is subject to written approval by KSURF, such approval not being unreasonably withheld. For purposes of this provision, “Change of Control” is defined as one shareholder or member directly or indirectly securing control over fifty percent (50%) or more of the outstanding shares or interests of LICENSEE’S or its AFFILIATES’ common stock or interests. TERMINATION OBLIGATIONS. LICENSEE agrees in the event of termination of this Agreement for any reason to transmit copies to KSURF of all information related to the development, marketing, economic and any other reports or information concerning the production, sale, and use of said PATENT RIGHTS. LICENSEE agrees in the event of termination of this Agreement for any reason to destroy or dispose of all LICENSED PRODUCTS, and to promptly provide KSURF with written documentation thereof. Subject to KSURF approval, LICENSEE may choose to pay KSURF the equivalent royalty value on any LICENSED PRODUCTS in inventory as of the Termination date and thereby retain the right to sell and offer for sale such LICENSED PRODUCTS instead of destroying or disposing of them as otherwise required above. NET SALES data for previous quarters shall be used for the purpose of establishing a royalty value on any LICENSED PRODUCTS in inventory as of the Termination date. OBLIGATIONS REMAIN. LICENSEE shall pay to KSURF all royalties accrued and other payments that may have become due before the expiration or Termination Date of this Agreement, and are to be paid within thirty (30) days of such date. SURVIVING OBLIGATIONS. Article V (Confidentiality and Publications), Section 6.3 (Inspection) of Article VI (Reports, Payments, and Records), Article IX (Indemnification and Liability), and Article X (Miscellaneous Provisions) shall survive the expiration or early termination of this Agreement. In the event this Agreement terminates under Section 7.3 due to breach by KSURF, LICENSEE shall retain its rights and license to PATENT RIGHTS granted in Article II without further remuneration due to KSURF. Further, in the event this Agreement terminates under Section 7.3 due to breach by LICENSEE, LICENSEE shall thereafter have no license or rights to the PATENT RIGHTS granted in Article II.
7.5
7.6
7.7
7.8
ARTICLE VIII. REPRESENTATIONS AND WARRANTIES 8.1. LICENSEE acknowledges it has or can establish the skill, knowledge, and capability to develop, produce, manufacture, market, and sell LICENSED PRODUCTS. KSURF represents and warrants that:
8.2.
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(a) (b)
KSURF owns or controls the Patent Rights, KSURF has the right to enter into this Agreement and to grant the rights and licenses herein granted, there are no outstanding assignments, grants, licenses, encumbrances, obligations or agreements, either written or implied, inconsistent with the rights and licenses granted to LICENSEE under this Agreement, and to the best of KSURF's knowledge, the Patent Rights do not infringe the rights of third parties.
(c)
(d)
8.3.
Nothing in this Agreement shall be construed as: (1) a warranty or representation that any or all Patent Rights would be found valid by a court of competent jurisdiction; (2) a warranty or representation that anything made, used, sold or otherwise disposed of by LICENSEE under the rights and licenses or sublicenses granted in this Agreement is or will be free from infringement of patents of third parties; or (3) conferring by implication or otherwise any license or rights under any patents of KSURF other than the PATENT RIGHTS, provided, however, that KSURF shall not invoke any dominant patent or patent application owned or controlled by, or licensed to, the KSURF to in any way restrict the rights and/or licenses granted to LICENSEE under this Agreement. MERCHANTABILITY AND DISCLAIMER OF WARRANTIES. KSURF AND ITS AFFILIATES MAKES NO REPRESENTATION OR WARRANTY OF ANY KIND WITH RESPECT TO THE LICENSED PRODUCTS, VALIDITY OF PATENT RIGHTS, CLAIMS, ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE AND EXPRESSLY DISCLAIMS ANY WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE AND ANY OTHER IMPLIED WARRANTIES WITH RESPECT TO THE CAPABILITIES, SAFETY, UTILITY OR COMMERCIAL APPLICATION OF LICENSED PRODUCTS.
8.4.
ARTICLE IX. INDEMNIFICATION AND LIABILITY 9.1 INDEMNIFICATION. LICENSEE hereby (a) assumes all risk, responsibility and liability for any and all claims, expenses and judgments (including attorney’s fees) arising out of or in the course of its or its AFFILITATES’ practice of PATENT RIGHTS, and (b) will release, indemnify, defend, and hold KSURF and its AFFILIATES, and their respective directors, officers, employees, and agents harmless from any and all claims, costs or damages, including special, indirect or consequential damages, under any theory of liability, to the extent resulting from, arising out of, or in the course of such practice and use. NOTICE OF CLAIMS. The indemnified party shall give the indemnifying party reasonably prompt notice of any claims of third parties as to which it proposes to demand indemnification hereunder. The indemnifying party shall have the right to assume the good faith defense, compromise, or settlement of any such claim (without prejudice to the right of the indemnified party to participate in such defense) at its own expense through attorneys reasonably acceptable to the indemnified party. If the indemnifying party does not elect to defend such claim or suit within ten (10) days after having received notice thereof, or fails to prosecute its defense diligently, the indemnified party may in its sole discretion defend against such claim or suit at the
9.2
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indemnifying party’s expense. The indemnified party may thereafter elect to settle such claim or suit or otherwise enter into a compromise with the claimant. If damages and/or costs are awarded against the indemnified party in any such claim or suit, the indemnifying party shall indemnify and hold harmless the indemnified party for all such damages and/or costs. All other costs and/or fees which result from the assertion of any such claim or suit, including but not limited to attorneys’ fees, incurred by the indemnified party in defense of any such claim or suit, shall be promptly reimbursed to the indemnified party by the indemnifying party. 9.3 RIGHT TO RETAIN COUNSEL. In any action, the indemnified party shall have the right to retain its own counsel, with the fees and expenses to be paid by the indemnified party, if representation of the indemnified party by the counsel selected by the indemnifying party will be inappropriate due to actual or potential differing interests between the two parties. INDEMNIFIED PARTY OBLIGATIONS. The indemnified party shall, at the request of the indemnifying party, cooperate in all respects including being named as a party if necessary or desirable, and to have its and its AFFILIATES’ employees testify when requested and make available relevant records, information, samples, and the like at the requesting party’s expense. REQUIRED CONSENT. Neither Party may enter into any settlement, consent judgment or other voluntary final disposition of a claim or action related to any liability without the prior written consent of the other Party, if such disposition would (a) impose any monetary obligation on or adversely affect the business or operations of the other Party, (b) require the other Party to submit to any injunctive relief or restrictions affecting the other Party, or (c) otherwise limit the other Party’s rights under this Agreement. Any payment made by a Party to settle any such claim or action shall be at its own cost and expense.
9.4
9.5
ARTICLE X. MISCELLANEOUS PROVISIONS 10.1 APPLICABLE LAW. This Agreement shall be construed and the rights of the parties determined in accordance with the laws of the State of Kansas, USA. USE OF NAME. Use by one party of the name of the other party to this Agreement or any of the other party’s respective employees or AFFILIATES is not permitted in any form of promotion or in connection with the sale of products, processes, devices, or designs without prior written approval from KSURF. Both parties agree that they will provide copies of any intended press releases or publications that mention the name of the other party sufficiently before their intended release to the public. DESCRIPTIVE HEADINGS. The descriptive headings in this Agreement are for convenience only and shall not be interpreted so as to limit or affect in any way the meaning of the language in the pertaining Article, Section, Paragraph or Subparagraph. NOTICES AND REPORTS. Notices and reports under this Agreement shall be in writing and shall be deemed to have been sufficiently given for all purposes thereof when mailed by certified mail or by special courier to the party to be notified as addressed below and providing the party to be notified is also promptly advised by telephone or facsimile of the sending and content of the written notice.
10.2
10.3
10.4
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If to KSURF: Attention: President KSU Research Foundation 2005 Research Park Circle, Suite 105 Manhattan, Kansas 66502-5020 Phone: (785) 532-5720 Facsimile: (785) 532-3920 10.5
If to LICENSEE: Attention: ________________ Company Name Address City, State, Zip Code Phone: ________________ Facsimile: ________________
ASSIGNMENT. This Agreement shall not be assignable to any party hereto without the express written consent of the other party. ENTIRE AGREEMENT. Both parties acknowledge that this Agreement sets forth the entire Agreement and understanding of both parties as to the subject matter hereof, and shall not be subject to any change or modification except by the execution of a written instrument subscribed to by both parties. SEVERABILITY. If any provision of this Agreement is declared invalid or unenforceable by a court having competent jurisdiction, it is mutually agreed that this Agreement shall endure except for the part declared invalid or unenforceable by order of such court. The parties shall consult and use reasonable efforts to agree upon a valid and enforceable provision, which shall be a reasonable substitute for such invalid or unenforceable provision in light of the intent of this Agreement. WAIVER. Any delay or failure in enforcing a Party’s rights under this Agreement or any waiver as to a particular default or other matter shall not constitute a waiver of such Party’s rights to the future enforcement of its rights under this Agreement, nor operate to bar the exercise or enforcement thereof at any time or times, thereafter, excepting only as to an express written and signed waiver as to a particular matter for a particular period of time. ARBITRATION. Any controversy or claim arising out of or relating to this contract, or the breach thereof, shall be settled by arbitration administered by the American Arbitration Association under its Commercial Arbitration Rules, and judgment on the award rendered by the arbitrator(s) may be entered in any court having jurisdiction thereof. Any such arbitration proceedings shall be held in Kansas City, Missouri.
10.6
10.7
10.8
10.9
IN WITNESS WHEREOF, the parties hereto have caused this instrument to be signed in duplicate by their duly authorized officers. LICENSEE KANSAS STATE UNIVERSITY RESEARCH FOUNDATION Agreed by: ____________________________ Printed Name: _________________________ Title: ________________________________ Date: ________________________________
Agreed by: ___________________________ Printed Name: ________________________ Title: _______________________________ Date: _______________________________
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ATTACHMENT A - ROYALTY REPORT FORM
Please also complete a separate form for each AFFILIATE and sublicensee for each product sold.
Submitted by: Submit to:
Kansas State University Research Foundation 2005 Research Park Circle, Suite 105 Manhattan, KS 66502-5020 Beginning date: __________________
(Company Name)
Report Period:
Ending date: __________________
Product Number and Description
LICENSEE submits the following royalty report for the period indicated above. A. Annual minimum royalty amount due this license year B. Less royalties previously paid this license year (1) January – March (2) April – June (3) July – September (4) October - December (5) Total payments to date C. REPORT PERIOD (1) Units of product sold (2) Sales price per unit (3) Gross sales of product (1 x 2) (4) Less allowable deductions (5) Net sales of product sold (3 – 4) (6) Running royalty rate (7) Royalty payment due this period (5 x 6) $ $( $ ) $ $ $( $ ) $ $ $ $ $( ) $
(Enclose remittance made payable to Kansas State University Research Foundation)
D. Remaining annual minimum royalty amount due: (A – B(5) –C(7))
For Office Use Only Authorized Signature
Printed Name
Account no. – Disc. no. Check number Check date
Title
Date
Ver. 2.0.1