Provision Language
Definitions
“Market Countries” means:
(a) All current and future Organization for Economic Cooperation and Development (OECD) countries, presently consisting of Australia, Austria, Belgium, Canada, Czech Republic, Denmark, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Republic of Korea, Japan, Luxembourg, Mexico, the Netherlands, New Zealand, Norway, Poland, Portugal, Spain, Sweden, Switzerland, Turkey, the UK, and the United States; and
(b) All current and future members of the European Union not otherwise members of the OECD; and
(c) People’s Republic of China, India, Malaysia, Russian Federation, Singapore, South Korea and Taiwan].
“Non–Suit Countries” means all countries other than Market Countries.
“National Phase Entry” means, entry into the National Phase under the Patent Cooperation Treaty as defined by the World Intellectual Property Organization (WIPO).
“Public Sector” will include:
(a) the sovereign government of a country;
(b) agencies of the United Nations and the World Health Organization;
(c) organizations which are members of the International Committee of the Red Cross and Red Crescent;
(d) international charitable agencies (also known as Non–Governmental Agencies) including but not limited to Oxfam, Medecins Sans Frontieres, and so forth;
(e) organizations substantially supported by philanthropic organizations including but not limited to the Bill and Melinda Gates Foundation, the Rockefeller Foundation and so forth, specifically including global product development and distribution public–private partnerships.
“Substantial Patent Prosecution Event” means an opposition, interference, reexamination, reissue or other patent prosecution event where it is anticipated that costs in excess of $20,000 are likely to be incurred by University.
2. License
2.07 [If for a healthcare technology Non–suit. University and Licensee on behalf of themselves and any successors–in–interest to the Licensed Products and Licensed Processes covenant that they will not, before or after the Effective Date of this Agreement, assert any claim of patent infringement (including direct infringement, contributory infringement, and induced infringement) under any of the patents in the Patent List, any Licensed Processes or any Orange Book Patent Right for manufacture, use, sale, offer for sale or importation of Licensed Products against any third party engaged in the manufacture, use, sale offer for sale, or importation of Licensed Products in or for Non–Suit Countries for sale to Public Sector entities. The above notwithstanding, this non–suit provision will only apply to products which when offered for sale to End Users are in a Trade Dress that is different from Licensee’s Trade Dress in every respect.
6. Regulatory Matters and Patent Costs
6.04 Patent Filings. The University will, using patent attorneys selected by it, use commercially reasonable efforts to apply for, seek issuance of and maintain the Patent Rights during the Term in the United States and such other countries as are agreed to by the Parties in writing or as Licensee may request in writing; provided that: (a) Licensee will cooperate with the University in such filing, prosecution and maintenance; and (b) Licensee will be given at least thirty (30) days to advise and comment upon such filings and actions as are undertaken by the University and further provided that in all cases University retains the absolute right to make all decisions with respect to preparation, filing, prosecution and maintenance. The University shall direct its patent counsel to: a) provide Licensee with a copy of the application or other filing as filed, together with notice of its filing date and serial number when available; and b) provide to Licensee copies of all communications between patent counsel and any foreign associates responsible for the filing, prosecution and/or maintenance of any foreign Patent Rights. The University may, in its discretion, decline to apply for, prosecute or maintain any Patent Rights in any country, but will give timely notice to Licensee of any such determination, whereupon Licensee may undertake such action, in the name and on behalf of the University, at Licensee’s own expense. The University agrees to cooperate with Licensee as reasonably necessary to permit Licensee to be able to file, prosecute or maintain any Patent Rights in those countries that the University declines to undertake action. Licensee further acknowledges and agrees that University may file for and obtain patent protection in countries that are not of interest to Licensee (the “Unfunded Countries”) but for which another of University’s Licensees in a field of use that differs from the Field of Use has interest. In such case, if Licensee has elected to not reimburse University for Patent Costs associated with the Unfunded Countries as set forth in Section 6.05, below, said Unfunded Countries are immediately removed from the Territory under this Agreement for the remainder of the Term.
6.05 Patent Costs
(A) Licensee will bear the cost of all reasonable, documented patent expenses incurred by University in connection with the Patent Rights accrued prior to the Effective Date and continuing for the Term of this Agreement. Patent expenses include all out of pocket costs associated with the preparation, filing, prosecuting, issuance and/or maintenance of all patent applications and patents included within the Patent Rights. For patent expenses accrued by University (the “Deferred Patent Costs”) for the period prior to the Effective Date until the earlier of a Funding Event or the first anniversary of the Effective Date if no Funding Event occurs before the first anniversary of the Effective Date (the “Deferred Patent Costs Period”), University will send Licensee a single invoice (the “Deferred Patent Costs Invoice”) for all such accrued patent expenses shortly after said Funding Event or said first anniversary of the Effective Date (as appropriate) and Licensee will pay said Deferred Patent Costs Invoice within thirty (30) days of University’s transmittal of such invoice to Licensee in accordance with Section 11.07. For on– going patent expenses accrued on or after the Deferred Patent Costs Period, Licensee will pay to University, within thirty (30) days of University’s transmittal of an invoice to Licensee in accordance with Section 11.07 (the “Patent Costs Invoice”), all such accrued patent expenses recorded on said Patent Costs Invoice sent to Licensee. Notwithstanding the foregoing, if University grants any third party (other than Government Rights or Reserved Rights) a license to commercially exploit any patent or patent application included within the Patent Rights and said license includes an obligation on said third party to pay patent costs, Licensee’s obligation to bear ongoing patent costs (i.e. patent expenses accrued by University after the effective date of said third party license) with respect to any said patent or patent application will be reduced by a pro rata amount, based on the number of University licensees having rights with respect to such patent or patent application (e.g. if University has granted rights to two parties (one of which is Licensee) with respect to a particular patent or patent application, then Licensee will thereafter only be obligated to reimburse University with respect to fifty percent (50%) of the relevant patent costs associated with said patent or application) for so long as that/those license(s) to the specific patents and/or patent applications remain in effect.
(B) Overdue amounts will accrue interest pursuant to Section 4.03. Licensee may decline payment of Patent Costs by giving thirty (30) days written notice in advance of the University incurring such costs, whereupon Licensee’s right to benefit from the applications or patents (of the Patent Rights) affected by such Patent Costs will terminate, including but not limited to, the deletion of such patent from the Patent List and the termination of the license granted with respect to such patent or patent application. If Licensee’s decision to decline payment of Patent Costs would result in the abandonment of all of patent(s) and/or patent application(s) (of the Patent Rights) in any one or more country(ies) and/or region(s) (regardless of whether or not University actually abandons said patent(s) and/or patent application(s)), then the grant under Section 2.01 with respect to said country(ies) and/or region(s) of the Territory will also terminate. (C) Notwithstanding the foregoing, if during the Deferred Patent Costs Period the due date for National Phase Entry of one or more of the patent applications of the Patent Rights is scheduled to occur or if any other Substantial Patent Prosecution Event occurs, University will take the following actions:
(i) With Respect to a National Phase Entry, University will ask Licensee into which countries Licensee wishes the patent application to be nationalized and obtain estimates for entry into the national phase in those countries. Upon receipt of instructions from Licensee, University will (to the extent there is, in University’s opinion or in University counsel’s opinion, sufficient time to take such action and further provided that University is in receipt of the Estimated National Phase Entry Payment (as defined below)), with respect to said patent application, instruct its counsel to enter the national phase in those countries (other than the United States) so designated by Licensee provided that Licensee pays to University fifty percent (50%) of the estimated costs of said national phase filings (the “Estimated National Phase Entry Payment”) at the time of such instructions from the Licensee.
(ii) With respect to a Substantial Patent Prosecution Event, University will obtain an estimate from counsel for services associated with said Substantial Patent Prosecution Event and then confer with Licensee to determine whether or not Licensee will support the action by paying fifty percent (50%) of the estimated costs to University. If Licensee pays University said fifty percent (50%) of the estimated costs, University will proceed to address the Substantial Patent Prosecution Event. If Licensee elects to not pay University said fifty percent (50%) of the estimated costs when due, University may, at its option, elect to proceed to address the Substantial Patent Prosecution Event or may decline to take any other action it deems proper.
For the avoidance of doubt, any payments made under this Section 6.05(C) are fully creditable against the fulfillment of Licensee’s obligations under 6.05(A) as they come due but are not intended to release Licensee of any of its payment obligations under 6.05(A).
8. Infringement
8.01 Notice. Each Party will notify the other party promptly in writing of any alleged infringement of the Patent Rights and/or Copyright in the Software [DELETE IF NO COPYRIGHT] by a third party of which it becomes aware and will provide any available evidence thereof.
8.02 Prosecution by Licensee.
(A) Procedure. For so long as the grant in ARTICLE II of this Agreement remains exclusive to Licensee and Licensee is not in breach of this Agreement, Licensee will have the right, at its sole discretion, to prosecute, at its own expense, any alleged infringement of the Patent Rights and/or Copyright [DELETE IF NO COPYRIGHT] within the Territory and Field of Use. The University agrees to allow the Licensee to include the University, at the Licensee’s expense, as a party plaintiff in any suit brought with respect to any such infringement. The University will have the right to participate in any action, at Licensee’s expense, and prior to commencing any such action, Licensee shall consult with University and shall consider the views of University regarding the advisability of the proposed action. In addition, Licensee agrees to consult with counsel for the University on any significant matters related to the litigation. Notwithstanding anything in the foregoing to the contrary, no settlement, consent judgment or other voluntarily final disposition of any such suit may be entered into without the prior written consent of the University, which consent will not be unreasonably withheld. Licensee will indemnify, defend and hold harmless the University against any order for any costs that may be made against the University in such proceedings brought by Licensee in accordance with this Section 8.02(A). For the avoidance of any doubt, if the grant under ARTICLE II of this Agreement becomes non–exclusive for any reason, Licensee will not have any right to prosecute infringers under this Section 8.02(A).
(B) Damages. In the event that Licensee undertakes litigation pursuant to Section 8.02(A) for the enforcement of Patent Rights and/or Copyright [DELETE IF NO COPYRIGHT], any recovery of monetary damages by Licensee for each suit will be applied as follows: (a) first, on a pro rata basis, to Licensee and University to reimburse Licensee and University for their respective expenses of the litigation or suit, including reasonable attorneys’ fees; (b) then, an amount to University equal to the Sublicense Lump Sum Percentage (expressed as a decimal) multiplied by the balance of any recovery; and (c) then, the balance to Licensee.
8.03 Prosecution By University
(A) Procedure. If the Licensee; (i) within six (6) months after having been notified of any alleged infringement, has been unsuccessful in negotiating with the alleged infringer to cease and desist such infringement and has not brought an infringement action (or has not defended against any material counterclaim), and/or Licensee continues to be unsuccessful in persuading the alleged infringer to desist and continues not to initiate an infringement action within sixty (60) days after written notice from University that University intends to exercise its rights under this paragraph, or (ii) if the Licensee notifies the University at any time prior to the end of such six (6) month period of its intention not to bring suit against any alleged infringer in the Territory for the Field of Use, then, and in those events only, the University will have the right, but not be obligated, to prosecute at its own expense any such infringement of the Patent Rights and/or Copyright [DELETE IF NO COPYRIGHT] in the Territory for the Field of Use. In such circumstances, and provided that the license granted pursuant to ARTICLE II remains in force, the University will have the right to name the Licensee as a party plaintiff if necessary for the prosecution of the infringement suit. Notwithstanding anything in the foregoing to the contrary and further provided that the Exclusive Period of the license granted pursuant to ARTICLE II remains in force, no settlement, consent judgment or other voluntarily final disposition of any such suit may be entered into without the consent of the Licensee, which consent will not be unreasonably withheld.
(B) Damages. In the event that University undertakes litigation pursuant to Section 8.03(A) for the enforcement of Patent Rights and/or Copyright [DELETE IF NO COPYRIGHT], any recovery of monetary damages by University for each suit will be applied as follows: (a) first, on a pro rata basis, to University and Licensee to reimburse Licensee and University for the expenses of the litigation or suit, including reasonable attorneys’ fees; and (b) then, the balance to University.
8.04 Actions Against Licensee or University. In the event that an action alleging invalidity or noninfringement of any of the Patent Rights and/or Copyright [DELETE IF NO COPYRIGHT] is brought against the University or against Licensee (whether as an independent action or as a counterclaim of a suit filed by Licensee), relating to the Field of Use, the University, at its sole option, will have the right, within thirty (30) days after the commencement of such action, to take or regain control of the action at its own expense. If the University determines not to exercise this right and the grant under ARTICLE II remains exclusive to Licensee, Licensee may take over or remain as lead counsel for the action at Licensee’s sole expense, with any settlement or recovery subject to the approval provisions of Section 8.02(A) and allocation provisions of Section 8.02(B); provided that the University will have the right to refuse, in its sole discretion, to accept any settlement offer that would, in its sole judgment, result in the lessening or weakening of any Patent Rights and/or Copyright [DELETE IF NO COPYRIGHT].
8.05 Cooperation. In any infringement suit, either party shall provide cooperation and assistance to the other party, at the requesting party’s expense, as may be reasonably necessary for the suit. Each party agrees to make available relevant records, papers, information, samples and specimens, as well as to have its employees testify upon request, except as restricted by law.
8.06 Sublicense Settlements. In the event that Licensee elects to grant a Permitted Sublicense to any alleged infringer in the Territory for the Field of Use for future use of the Patent Rights and/or Copyright [DELETE IF NO COPYRIGHT] as permitted by Section 2.03(C), any amounts paid by the alleged infringer as a part of the Sublicense or settlement of allegations regarding infringement of the Patent Rights or the Copyright in Software [DELETE IF NO COPYRIGHT] will be shared by Licensee and the University in the same ratio as amounts received as Sublicense Lump Sums payments under Section 4.01(E). Sublicense Revenues received from such Permitted Sublicensees will otherwise be shared by Licensee and University in accordance with Section 4.01(D) or 4.01(E), as applicable.