UC Berkeley, Therapeutics & Diagnostics, Exclusive License Agreement Template

Business model | Governance

Structural Questions

Do the parties govern the project through a joint steering committee (“JSC”)? If so, what are the parties expressly designated roles and responsibilities with respect to the JSC?
Are there other committees, important governance bodies, or designated individual positions? What are the parties’ roles and responsibilities with respect to them?
Are the parties required to meet in accordance with a defined schedule for decision-making and progress reporting activities?
What are the resolution mechanisms for disputes related to the agreement?
Are there any requirements for policies or procedures to manage potential conflicts of interest?

Annotations

This is a template for an exclusive license agreement from University of California Berkeley (“UC Berkeley”). The template specifies that the license agreement will not be limited to the template provisions, and may include other provisions as appropriate on a case by case basis. Under this template, UC Berkeley will require Licensees to develop an Affordable Access Plan (“AAP”) within 3 months of receiving FDA approval for the Licensed Product. The AAP will set out strategies and timelines to support affordable access to the Licensed Product both in Low- and Middle-Income Countries (“LMICs”) and for underserved populations in the United States. Strategies for access in LMICs may include licensing and/or partnerships with non-profit organizations. The plan should also include a list of LMICs in which the Licensee does not intend to commercialize the Licensed Product. To the extent the AAP includes proprietary information, the Licensee must also provide a non-confidential version of the AAP that can be made available to third parties. The AAP provision was developed by UC Berkeley in partnership with Universities Allied for Essential Medicines and the Medicines Patent Pool.

UC Berkeley reserves rights for itself and any other educational or non-profit organizations to use the licensed invention and patent rights for educational and research purposes, including publication of research results. UC Berkeley also reserves the right to grant licenses to third parties for the express purpose of developing the Licensed Product for use in protection from, treatment of, or diagnosis of Neglected Diseases, and for sale of the Licensed Product at or below the cost of manufacturing and distribution (“Humanitarian Purposes”). Prior to issuing a license for Humanitarian Purposes, UC Berkeley will offer the Licensee the opportunity to meet the anticipated market need itself or through a sublicense. The license may also be converted to a non-exclusive license if the Licensee fails to fulfill its diligence obligations under the agreement.

Provision Language

6. ROYALTIES, LICENSE MAINTENANCE FEES, MINIMUM ANNUAL ROYALTIES

[…]

6.5 Validity Challenge. Earned Royalty if LICENSEE or the SUBLICENSEE challenges any REGENTS’ PATENT RIGHTS: Notwithstanding the above, should LICENSEE or the SUBLICENSEE bring an action seeking to invalidate any REGENTS’ PATENT RIGHTS, […]

(c) any dispute regarding the validity of any REGENTS’ PATENT RIGHTS will be litigated in the courts located in California, and the parties agree not to challenge personal jurisdiction in that forum.

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Master Alliance Provisions Guide (MAPGuide)

UC Berkeley, Therapeutics & Diagnostics, Exclusive License Agreement Template

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Master Alliance Provisions Guide (MAPGuide)

UC Berkeley, Therapeutics & Diagnostics, Exclusive License Agreement Template

Provision Language

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Contact Us

Get In Touch

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