PATENT LICENSE AGREEMENT UTA NO. [UTA NUMBER]
This Patent License Agreement is between the Board of Regents (“Board”) of The University of Texas System (“System”), an agency of the State of Texas, whose address is 201 West 7th Street, Austin, Texas 78701, and the Licensee identified below. No binding agreement between the Parties will exist until this Patent License Agreement has been signed by both Parties. Unsigned drafts of this Patent License Agreement shall not be considered offers. Background Board owns rights to the Licensed Patents that were developed at The University of Texas at Austin (“University”), a component institution of System. Licensee desires to secure the right and license to use, develop, manufacture, market, and commercialize the Licensed Patents. Board has determined that such use, development, and commercialization of the Licensed Patents is in the public’s best interest and is consistent with Board’s educational and research missions and goals. Board desires to have the Licensed Patents developed and used for the benefit of Licensee, the inventors, Board, and the public. NOW, THEREFORE, in consideration of the mutual covenants and premises herein contained, the parties hereby agree as follows: The Terms and Conditions of Patent License attached hereto as Exhibit A are incorporated herein by reference in their entirety (the “Terms and Conditions”). In the event of a conflict between provisions of this Patent License Agreement and the Terms and Conditions, the provisions in this Patent License Agreement shall govern. Capitalized terms used in this Patent License Agreement without definition shall have the meanings given to them in the Terms and Conditions. The section numbers used in the left hand column in the table below correspond to the section numbers in the Terms and Conditions.
1 Definitions Effective Date Licensee Contract Year and Contract Quarters
Licensed Territory Licensed Field
[Company name], a [jurisdiction] [corporation/LLC/etc], with its principal place of business at [full address] (Check one box to correspond with Licensee fiscal year and quarters) Contract Year is 12-month period ending December 31 and Contract Quarters are 3-month periods ending March 31, June 30, Sept. 30, Dec. 31 OR Other: Contract Year is 12-month period ending (specify): [month and day]; Contract Quarters are 3-month periods ending (specify): [month and day, Q1], [month and day, Q2], [month and day, Q3], [month and day, Q4] [Territory] All fields Exclusive OR Non-Exclusive OR Limited fields Field: [Describe field of use] Exclusive OR Non-Exclusive Field: [Describe field of use] Exclusive OR Non-Exclusive Field: [Describe field of use] Exclusive OR Non-Exclusive If “Limited fields” is checked, Excluded Fields include: Excluded Field: [Describe excluded field of use] Excluded Field: [Describe excluded field of use] Excluded Field: [Describe excluded field of use]
Licensed Patents App. No./ Date Title of Filing
Inventor(s)
3.1
3.2
3.3 3.4
[App number] [Title of patent] [Inventor name(s)] [Law firm] [Filing date] [App number] [Title of patent] [Inventor name(s)] [Law firm] [Filing date] [App number] [Title of patent] [Inventor name(s)] [Law firm] [Filing date] [App number] [Title of patent] [Inventor name(s)] [Law firm] [Filing date] USPTO Entity Status Check one box: Small Large Patent expenses due Amount based on invoices received as of: upon Effective Date $ Licensee Milestone events Deadline Milestone Fees commercialization milestones and fees 1. First Sale of Licensed Product [Deadline] $ 2. Milestone [Deadline] $ 3. Milestone [Deadline] $ 4. Milestone [Deadline] $ Scheduled license fee $ due on Effective Date $ due on $ due on payments Running royalty rate % (applies to Net Sales by Licensee, Affiliates and Sublicensees) Minimum royalty Annual maintenance fee Sublicense Fees (not applicable to royalty-bearing Net Sales) License documentation fee (due upon Effective Date) Assignment fee Licensee’s contact information $ for Contract Year ending $ for Contract Year ending $ per Contract Year thereafter $ payable commencing on first Quarterly Payment Deadline in the Contract Year ending . % if Sublicensee lead generated by Licensee % if Sublicensee lead generated by University
Jointly Owned? (Y/N; if Y, with whom?) Yes, w/[whom] No Yes, w/[whom] No Yes, w/[whom] No Yes, w/[whom] No
Prosecution Counsel
3.5 3.6 3.7
3.8
[$10,000] [waived if Licensee does not request agreement changes that require outside counsel review] $ Contact for Agreement notice: Attn: [Name] [Address] Fax: [Fax number] Phone: [Phone number] E-mail: [E-mail] Contact for accounting: Attn: [Name] [Address] Fax: [Fax number] Phone: [Phone number] E-mail: [E-mail] Contact for patent prosecution matters: Attn: [Name] [Address] Fax: [Fax number] Phone: [Phone number] E-mail: [E-mail]
3.9 18
20. Special Provision. The parties hereby agree to the following special provisions set forth in this Section 20 with respect to this Patent License Agreement. In the event of a conflict between the terms set forth in this Section 20 and those set forth in the Terms and Conditions attached as Exhibit A, the terms and conditions set forth in this Section 20 shall govern.
[INSERT ANY SPECIAL TERMS AND CONDITIONS HERE.] 21. No Other Promises and Agreements; Representation by Counsel. Licensee expressly warrants and represents and does hereby state and represent that no promise or agreement which is not herein expressed has been made to Licensee in executing this Patent License Agreement except those explicitly set forth herein and in the Terms and Conditions, and that Licensee is not relying upon any statement or representation of Board, University or their representatives. Licensee is relying on Licensee’s own judgment and has been represented by legal counsel. Said legal counsel has read and explained to Licensee the entire contents of this Patent License Agreement and the Terms and Conditions incorporated by reference herein. Licensee hereby warrants and represents that Licensee understands and agrees to all terms and conditions set forth in this Patent License Agreement and said Terms and Conditions. 22. Deadline for Execution by Licensee. If this Agreement is executed first by the Board and is not executed by the Licensee and received by the Board at the address and in the manner set forth in Section 18 of the Terms and Conditions within thirty (30) days of the date of signature set forth under the Board’s signature below, then this Agreement shall be null and void and of no further effect. IN WITNESS WHEREOF, the parties hereto have caused their duly authorized representatives to execute this Patent License Agreement. ON BE HA LF OF TH E BO AR D OF RE GE NT S OF TH E UN IVE RSI TY OF TE XA S SYS TE M By Jua
n M. San che z, Ph. D. Vic e Pre side nt for Res ear ch The Uni ver sity of Tex as at Aus tin Dat e LICENSEE: [Company name]
By
[Name] [Title] Date