DRAFT: This is not an offer under contract law.
EXCLUSIVE LICENSE AGREEMENT
Between
[LEGAL NAME OF LICENSEE]
and
The Texas A&M University System
This exclusive license agreement (“Agreement”) is made between [LEGAL NAME OF
LICENSEE], a [INSERT TYPE OF ENTITY] with principal offices in [INSERT LOCATION]
(“Licensee”) and The Texas A&M University System, an agency of the State of Texas, with principal
offices in College Station, Texas, (“System”), collectively referred to as “Parties” and individually as
“Party.”
WITNESSETH:
A. System is an owner of certain intellectual property related to medical imaging technologies as
described in this Agreement;
B. System desires that such intellectual property be commercialized for the public benefit and
welfare;
C. Licensee has represented that it has certain marketing, technical and financial capabilities, and
that it will undertake a thorough and diligent program of development and commercialization
of System’s intellectual property for public benefit; and
D. System is willing to grant to Licensee, and Licensee is willing to accept, a license to System’s
intellectual property, upon the terms and conditions below.
Now, therefore, in consideration of the mutual covenants and premises contained in this
Agreement, the receipt and sufficiency of which is acknowledged, the Parties agree as follows:
The general provisions set forth in Exhibit A (the “General Provisions”) are incorporated into these
Specific Terms and Conditions by reference in their entirety. If there is a conflict between these Specific
Terms and Conditions and the General Provisions, these Specific Terms and Conditions shall govern.
Unless defined in these Specific Terms and Conditions, capitalized terms used in the General Provisions
shall have the meanings ascribed to them and apply to these Specific Terms and Conditions.
The sections used in the left hand column in the tables below correspond to the section numbers in
the General Provisions.
Rev No.
Date
L-000XXX
Page 1
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DRAFT: This is not an offer under contract law.
Specific Terms and Conditions
1. Definitions
1.01 Patent Rights
If the box corresponding to the item below is marked, then such item is included in the Patent
Rights; otherwise, the item is excluded from the Patent Rights and is not subject to this Agreement.
☐
☐
☐
Title
Automated Determination of Arterial
Input Function for CT Perfusion Using
Classification Technique
Parametric Imaging for the Evaluation
of Biological Condition
Tomographic Emission Fluoroscopy for
Guidance of Sampling and Therapeutic
Delivery
Identifying Number
14/090,352
14/088,530
8,885,907 B2
The date of last signature
1.04 Effective Date
3. Consideration
3.01 License Fee
Licensee shall pay System the fee specified in the table below in accordance with paragraph 3.01 (License
Fee) of the General Provisions:
☐
☐
☐
Title
Automated Determination
of Arterial Input Function
for CT Perfusion Using
Classification Technique
Parametric Imaging for the
Evaluation of Biological
Condition
Tomographic Emission
Fluoroscopy for Guidance
of Sampling and
Therapeutic Delivery
Total Initial Payment
Amount
Identifying Number
14/090,352
Initial Payment Amount
$10,000
14/088,530
$10,000
8,885,907 B2
$11,000
$_________
3.02 Royalty Rate
As additional consideration, Licensee shall pay System a royalty rate of two and a half percent (2.5%) of
Net Sales as specified in paragraph 3.02 (Royalty Rate) of the General Provisions.
Rev No.
Date
L-000XXX
Page 2
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3.03 Minimum Annual Consideration
As additional consideration, Licensee shall pay System a minimum annual payment as specified in the
table below and in accordance with paragraph 3.03 (Minimum Annual Consideration) of the General
Provisions:
Calendar Year
2022
2023
2024
2025
2026 and all subsequent years
Amount
$5,000
$10,000
$15,000
$20,000
$25,000
4.02 Sublicensee Consideration
Licensee shall pay System half of other considerations not in the form of royalty that Licensee receives
from each sublicensee for a grant of rights in Patent Rights as prescribed in paragraph 4.02 (Sublicensee
Consideration) of the General Provisions.
5.01 Milestones
Licensee must have achieved the following milestones by the dates set forth herein:


Rev No.
Licensee Sells Licensed Products or services requiring or involving the use of Licensed Products
by calendar year 2022; and
Licensee maintains an infrastructure to support the Sale of Licensed Products or services
requiring the use of Licensed Products throughout the term of this Agreement.
Date
L-000XXX
Page 3
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10.01
Notice
System
Associate Vice Chancellor for
Commercialization
Texas A&M System Technology
Commercialization
3369 TAMU
College Station, Texas 77843-3369
Licensee
For Legal Matters:
___________________
____________________
____________________
____________________
For Financial Matters
____________________
____________________
____________________
____________________
11.02
Licensee’s Enforcement Rights
Consistent with paragraph 11.02 (Licensee’s Enforcement Rights) of the General Provisions,
Licensee shall remit fifty percent (50%) of any Net Recoveries to System within thirty (30) days
of Licensee’s receipt of any such Net Recoveries.
The Parties have caused this Agreement to become effective as of the date last executed below.
LICENSEE
THE TEXAS A&M UNIVERSITY SYSTEM
DRAFT
DRAFT
________________________________
By:
Title:
Date: ____________________________
________________________________________
Brett Cornwell
Associate Vice Chancellor for Commercialization
Date: ___________________________________
Rev No.
Date
L-000XXX
Page 4
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Exhibit A
General Provisions
ARTICLE I – DEFINITIONS
1.01
“Patent Rights” means any of System’s rights in each:
(a)
United States patent application identified in paragraph 1.01 (Patent Rights) of the
Specific Terms and Conditions and by which Licensee has included a mark
indicating that such United States patent application is included in this Agreement;
(b)
divisional, continuation, or continuation-in-part application of the patent
applications described in (a) above to the extent the claims are directed to subject
matter specifically described in such patent applications;
(c)
equivalent patent application in each country other than the United States which
claims priority under the applications described in (a) or (b) above;
(d)
patent issuing from the applications described above and each extension or reissue
of such patents; and
(e)
if marked by Licensee, the United States Patent identified in paragraph 1.01
(Patent Rights) of the Specific Terms and Conditions.
1.02
“Licensed Products” means any product, process, software, or composition of matter that is within
the scope of any Valid Claim of Patent Rights.
1.03
“Valid Claim” means and includes a claim of a patent application or an unexpired patent or a patent
whose expiration date has been extended by law, so long as the claim has not been held invalid or
unenforceable in an unappealable decision of a court or other authority of competent jurisdiction.
1.04
“Effective Date” has the meaning ascribed to it in paragraph 1.04 of the Specific Terms and
Conditions.
1.05
“Net Sales” means Licensee’s and sublicensee’s receipts for Sales of Licensed Products or services
requiring or involving the use of Licensed Products less the sum of the following:
(a)
sales taxes, tariffs, duties and/or use taxes directly imposed with reference to
particular sales;
(b)
outbound transportation prepaid or allowed; and
(c)
amounts allowed or credited on returns.
Commissions paid to individuals, whether independent sales agents or regularly employed by
Licensee, and the cost of collections may not be deducted from Net Sales.
1.06
“Members” means member institutions and agencies of System whether existing as of the Effective
Date or later established.
1.07
“Net Recoveries” mean all recoveries less all expenses, costs, and fees incurred, including attorney
fees, to enforce any of the Patent Rights.
1.08
“Affiliates” shall mean any entity that directly or indirectly or through one or more intermediaries
controls, is controlled by, or is under common control with Licensee. Any entity is deemed to be in
control of another entity if (a) it owns or directly or indirectly controls more than 50% of the voting
stock of the other entity, or (b) in the absence of ownership more than 50% of the voting stock of
an entity or in the case of a non-corporate entity, if it possesses directly or indirectly the power to
direct or cause the direction of the management or policies of such entity.
Rev No.
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L-000XXX
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1.09
“Sale, “Sell,” or “Sold” means selling, leasing, sublicensing, provisioning software as a service
(SaaS), or otherwise transferring, providing, or furnishing for any consideration.
ARTICLE II - LICENSE GRANT
2.01
Grant. System hereby grants Licensee and Licensee now accepts an exclusive license and right
under Patent Rights to make, have made, use, import, offer for Sale, and Sell the Licensed
Products, and to grant sublicenses of the same scope, to the end of the term of this Agreement as
prescribed in Article VIII.
2.02
Reservation. System reserves on behalf of itself and its Members an irrevocable, nonexclusive,
royalty-free right to practice the grant made in paragraph 2.01 (Grant) for research and educational
purposes only. System reserves all rights not expressly granted in this Agreement and disclaims the
grant of any implied rights to Licensee.
ARTICLE III – CONSIDERATION
3.01
License Fee. In consideration for the license granted in this Agreement, Licensee must tender to
System the total initial payment amount specified in paragraph 3.01 (License Fee) of the Specific
Terms and Conditions. This total initial payment amount is due no later than thirty (30) days after
the Effective Date. Failure to make this total initial payment amount within the specified period
will cause this Agreement to immediately terminate.
3.02
Royalty Rate. As additional consideration for the license granted in this Agreement, Licensee must
remit to System a running royalty of Net Sales as specified in paragraph 3.01 (Royalty Rate) of the
Specific Terms and Conditions. Licensee may not accept anything of value in lieu of money
payment without System’s express written permission. When calculating Net Sales, System may
assign fair market value based upon comparable sales to receipts from transactions that are not
made at fair market value.
3.03
Minimum Annual Consideration. To maintain the exclusive license to Patent Rights, Licensee
must pay System the minimum annual payments specified in paragraph 3.03 (Minimum Annual
Consideration) of the Specific Terms and Conditions by the last day of the calendar year for which
such payment is due. If Licensee’s payment of royalties for the calendar year due under paragraph
3.02 (Royalty Rate) do not meet or exceed the required minimum annual consideration, Licensee’s
royalty payment for the last quarter of the calendar year must include payment of the balance
needed to achieve the required minimum. If this Agreement expires or is terminated before the end
of a calendar year, the corresponding minimum annual consideration will be prorated for that
calendar year.
ARTICLE IV –SUBLICENSES
4.01
Sublicenses. Licensee may grant sublicenses under Patent Rights subject to this Article IV.
4.02
Sublicensee Consideration. Each sublicensee’s sales of Licensed Products are subject to the royalty
due to System prescribed in paragraph 3.01 (Royalty Rate) of the Specific Terms and Conditions.
Further, Licensee must pay System a portion, as prescribed in paragraph 4.02 (Sublicensee
Consideration) of the Specific Terms and Conditions, of other considerations not in the form of
royalty that Licensee receives from each sublicensee for a grant of rights in Patent Rights except
that Licensee is not required to remit to System any portion of funds it receives from any
sublicensee(s) when the funds are documented in writing as payments for the following purposes:
research, development, or testing of Licensed Products on Licensee’s behalf.
Rev No.
Date
L-000XXX
Page 6
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4.03
Copies and Reporting of Sublicenses. Licensee must deliver to System a true, complete, and
correct copy of each sublicense and any modification or termination thereof within thirty (30) days
following the applicable execution, modification, or termination of such sublicense. If the
sublicense is not in English, Licensee must provide System with an accurate English translation
and a copy of the original agreement. Licensee must provide System with copies of each
sublicensee’s report as is pertinent to calculation of amounts due System under this Agreement.
4.04
Non-Cash Transactions. Licensee may not accept anything of value in lieu of money payment
under a sublicense without System’s express written permission.
4.05
Restrictions. A sublicense shall not exceed the scope and rights granted to Licensee under this
Agreement. If this Agreement terminates, paragraph 8.05 (Effect of Termination) shall govern
continued sublicense rights.
4.06
Licensee Primarily Liable. Licensee is and will remain primarily liable to System for all of the
Licensee’s duties and obligations in this Agreement including without limitation the payment of
running royalties due under paragraph 3.02 (Royalty Rate). Any act or omission of a sublicensee
that would be a breach of this Agreement if performed by Licensee will be deemed to be a breach
by Licensee of this Agreement unless Licensee complies with the remaining provisions of this
paragraph 4.06. Licensee shall include in each sublicense a right of termination exercisable by
Licensee if the sublicensee breaches the payment or reporting obligations affecting System or any
other terms and conditions of the sublicense that would constitute a breach of this Agreement if
Licensee had performed such acts or omissions. In the event of a sublicensee breach and if after
reasonable opportunity to cure as provided in any such sublicense not to exceed thirty (30) days for
a payment breach and sixty (60) days for a non-payment breach, such sublicensee fails to cure such
sublicensee breach, then the Licensee must terminate the sublicense within thirty (30) days
thereafter, with a copy of such written notice of termination to System.
ARTICLE V - LICENSEE RESPONSIBILITIES
5.01
Milestones. Licensee must achieve any milestones specified in paragraph 5.01 (Milestones) of the
Specific Terms and Conditions by the dates specified therein. Licensee must provide written
notification to System within thirty (30) days of achieving each milestone.
5.02
Failure to Accomplish Milestones. If Licensee fails to achieve any milestone specified in
paragraph 5.01 (Milestones) of the Specific Terms and Conditions, or if Licensee fails to report Net
Sales for two (2) consecutive calendar years once Sales begin, System, at its sole option, may
reduce the license granted to a nonexclusive license or terminate this Agreement under paragraph
8.03 (Termination by System).
5.03
Legal Compliance. Licensee must comply with all applicable federal, state and local laws and
regulations in its exercise of all rights granted by System under this Agreement.
ARTICLE VI – PATENTS
6.01
Authorization. As to prosecution, registration, and/or protection of Patent Rights, System hereby
authorizes Licensee to:
(a)
direct the preparation and filing of patent applications;
(b)
direct the prosecution of broad patent claims for the mutual benefit of Licensee and
System;
Rev No.
Date
L-000XXX
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(c)
(d)
maintain U.S. and non-U.S. issued and granted patents; and
be invoiced directly by Licensee’s outside patent counsel (as approved by System
under paragraph 6.02 below) and/or annuity service providers for patent
prosecution and associated maintenance fees and costs.
System may revoke this authorization at any time by giving ten (10) days written notice to
Licensee.
6.02
Selection of Counsel. Licensee may select an outside patent counsel law firm (Counsel) staffed by
experienced, reputable, and licensed intellectual property attorneys for the prosecution, registration,
protection, and maintenance of Patent Rights. Licensee will notify System of its selection of
Counsel and System will have final approval on such selection, and such approval shall not be
unreasonably withheld.
6.03
Contract with Counsel. Licensee shall execute a written agreement with Counsel establishing that:
(a)
the attorney/client relationship relative to the prosecution, registration, or protection of
Patent Rights will be with System and Licensee jointly;
(b)
Counsel will not take any actions adverse to the interests of System in relation to Patent
Rights including, for example and without limitation, any future invalidity or adverse
litigation actions;
(c)
costs for prosecution, registration, or protection of Patent Rights will be invoiced directly
to Licensee with a courtesy copy of the invoice to System; and
(d)
System will not be responsible for payment of invoices relating to prosecution, registration,
or protection of Patent Rights conducted under this Agreement, including, without
limitation, attorneys’ fees, costs, official filing fees, and foreign associates’ fees and costs.
Licensee shall provide a copy of such written agreement to System before any work related to the
Patent Rights is performed by Counsel. Additionally, Licensee shall ensure that Counsel promptly
signs the standard Outside Counsel Agreement, which Counsel can obtain from System’s Office of
General Counsel.
6.04
U.S. Patent and Trademark Office. Licensee shall have Counsel obtain a customer number from
the U.S. Patent and Trademark Office (USPTO) adding System attorneys’ and patent agents’
registration numbers listed in Appendix B in addition to Counsel’s attorneys’ registration numbers,
and add System’s email address listed in Appendix C in addition to Counsel’s email address to
USPTO’s customer number request. Licensee shall have Counsel join the USPTO’s electronic
Office Action Notification program to ensure that Counsel and System will receive emails from
USPTO when Office Actions are issued by USPTO. Licensee, if it desires, may add its own
attorney registration numbers and email address to USPTO’s customer number request. Licensee
will send a copy of the obtained USPTO customer number to System. In addition, Licensee will
ensure that Counsel will add the obtained USPTO customer number to all correspondence and
filings with USPTO. If Counsel has submitted correspondence or filed applications without the
obtained USPTO customer number, then Licensee will ensure that Counsel make the appropriate
filings with USPTO to add the obtained USTPO customer number to such correspondence and/or
filings. Licensee and Licensee’s Counsel are still responsible for complying with all obligations
regarding communication as set forth in paragraph 6.10 of this Article VI. A failure to obtain a
USPTO customer number with System attorneys’ registration and System email address or failure
to add the obtained USPTO customer number to correspondence and filings, if not corrected within
ninety (90) days, will be considered a breach of this Agreement.
6.05
Approvals. Licensee shall notify System before any substantive actions are taken in prosecuting,
continuing, or abandoning any patents or patent applications or otherwise affecting Patent Rights,
and Licensee will instruct Counsel to so notify System. In addition to other substantive actions,
Rev No.
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Licensee agrees that System will have final approval on the filing of any action or application that
seeks to, or effects, changes in inventorship related to Patent Rights, and will so instruct Counsel.
Licensee agrees that System will have final approval on how to proceed with any substantive
actions relating to and/or affecting Patent Rights. Notwithstanding the above in this paragraph
6.05, System shall take into consideration any comments of Licensee in good faith to the extent
that incorporation of such comments does not negatively affect System’s rights in the Patent
Rights.
6.06
Patent Maintenance. During the term of this Agreement, Licensee shall be directly responsible for
annual or periodic annuity payments to maintain the pendency of non-U.S. patent applications in
countries that require such annual or periodic annuities. Furthermore, during the term of this
Agreement, Licensee agrees to continue any required annual and periodic payments for
maintenance of U.S. and non-U.S. issued and granted patents.
6.07
Patent Maintenance Contract. Licensee shall engage Counsel or a reputable annuity service to be
responsible for docketing and payment of annual or periodic annuities and maintenance fees for
both U.S. and non-U.S. pending applications, and U.S. and non-U.S. issued and granted patents
during the term of this Agreement.
6.08
Advance Payment of Maintenance Fees. Should Licensee request in writing that System continue
System’s direct payment of annuities and/or maintenance fees relating to Patent Rights, Licensee
agrees to provide payment of estimates for such annuities/fees ninety (90) days in advance of the
due date. Licensee agrees that failure to make such timely advance payments to System shall be
reasonably construed to be a decision to abandon such patent application or patent and that System
has full rights to determine whether or not to pay the annuity or maintenance fees with no further
obligation to Licensee. Furthermore, should System decide to continue maintenance of the patent
application or patent at its own expense, Licensee hereby agrees that any such application or patent
will be excluded from Patent Rights.
6.09
Confidential Communications. System and Licensee have a community of interest with regard to
work conducted in relation to Patent Rights due to their common interest in the generation of
enforceable Intellectual Property rights relating to Licensed Products and/or services requiring the
use of Licensed Products. Any communications between Licensee and Counsel concerning the
Patent Rights shall not be confidential vis-à-vis System, but shall be otherwise confidential and
protected by attorney client privilege.
6.10
Correspondence. Licensee shall contemporaneously copy System on all correspondence to and
from any patent office, U.S. or non-U.S., including all periodic annuities and maintenance fees
correspondence, and Licensee agrees to so instruct Counsel to provide copies of such
correspondence to System. Licensee further agrees that Licensee’s failure to timely provide such
correspondence will be considered a breach of this Agreement in accordance with Paragraph 8.03
below.
6.11
Information. To aid Licensee in the prosecution, registration, protection, and maintenance of
Patent Rights, System will provide information, execute and deliver documents, and perform other
acts as Licensee reasonably requests from time to time. Licensee will reimburse System for
System’s reasonable costs incurred in complying with such requests.
6.12
Abandonment. Should Licensee decide to abandon any U.S. or non-U.S. patent application or
issued or granted patent for commercial reasons or by declining to make an annuity or maintenance
payment, Licensee shall immediately notify System in writing, and System shall have the right to
continue patent prosecution or maintenance at its own expense and any such patent application and
granted or issued patent there from will be excluded from Patent Rights in this Agreement.
Rev No.
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L-000XXX
Page 9
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6.13
Assignee. All patent applications and patents related to this Agreement shall have named as the
assignee “The Texas A&M University System.”
6.14
Previous Obligations. All previously approved, authorized, and accrued obligations and
instructions under this Agreement, including Licensee’s reimbursement of patent expenses to
System, shall remain enforceable upon termination of this Agreement. All other matters survive
per Paragraph 8.05 below.
6.15
Obligation to File or Maintain. Should Licensee decide not to file or maintain patent protection,
System may, at its own expense, without reimbursement from Licensee, file, prosecute, or maintain
the patent protection and Licensee hereby agrees that any such patent will be excluded from the
rights granted herein.
ARTICLE VII - PAYMENTS AND REPORTS
7.01
When Payments are Due. Unless otherwise specified, Licensee must make payments to The Texas
A&M University System, in College Station, Texas, not later than sixty (60) days after the last day
of the calendar quarter in which they accrue.
7.02
Royalty Reports. Licensee must provide a Sales report to System each quarter, providing
information sufficient to allow System to calculate amounts due System for the reporting period.
7.03
Currency. Licensee must tender all payments due to System in U.S. dollars. Royalty payments
requiring conversion must use the exchange rate as reported in The Wall Street Journal on the last
business day of the royalty reporting period.
7.04
Inspection of Books and Records. At its own expense, System may annually inspect Licensee’s
books and records as needed to determine royalties payable. Licensee must maintain those books
and records for at least three (3) years following the dates of the underlying transactions. Any
inspections will be in confidence and conducted during ordinary business hours, and System will
provide Licensee advance notice two (2) weeks before making an inspection. System may employ
a Certified Public Accountant for this purpose. If System’s audit identifies a shortage of five
percent (5%) or more of amounts due to System, then Licensee must pay the costs of System’s
audit. Licensee must pay all amounts due as a consequence of an audit to System promptly with
interest.
7.05
Interest Charges. System may, in its sole discretion, charge daily interest on overdue payments
commencing on the 31st day after the payment is due, compounded monthly, at the lower of either
1.5% per month or the highest legal interest rate. The payment of interest will not foreclose System
from exercising any other rights it may have due to the lateness of any payment.
ARTICLE VIII – TERM AND TERMINATION
8.01
Expiration. This Agreement, unless sooner terminated as provided below, will remain in effect
until (a) failure to obtain at least one issued patent for protection of the Patent Rights after
prosecuting the Patent Rights to a final rejection, (b) expiration of the last to expire patent under
Patent Rights, or (c) final and unappealable determination by a court of competent jurisdiction that
all Patent Rights are invalid.
8.02
Termination by Licensee. Licensee may terminate this Agreement by providing written notice to
System at least ninety (90) days before the termination is to take effect.
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8.03
8.04
8.05
Rev No.
Termination by System. System, at its option, may immediately terminate the Agreement, any part
of Patent Rights, or the exclusive nature of the license grant, upon delivery of written notice to
Licensee of System’s decision to terminate, if any of the following occur:
(a)
Licensee becomes in arrears in any payments due under the Agreement, and Licensee fails
to make the required payment within thirty (30) days after delivery of written notice from
System or the date on which such payment is due;
(b)
Licensee is in breach of any non-payment provision of the Agreement, and does not cure
such breach within sixty (60) days after delivery of written notice from System;
(c)
System delivers notice to Licensee of three or more actual breaches of the Agreement in
any twelve (12)-month period, even in the event that Licensee cures such breaches in the
allowed period; or
(d)
Licensee or Licensee’s sublicensee initiates any proceeding or action to challenge the
validity, enforceability, or scope of one or more of the Patent Rights, or assist a third party
in pursuing such a proceeding or action.
Other Conditions of Termination. The Agreement will terminate:
(a)
Immediately without the necessity of any action being taken by System or Licensee, (i) if
Licensee becomes bankrupt or insolvent; (ii) Licensee’s governing board elects to liquidate
its assets or dissolve its business; (iii) Licensee ceases its business operations; (iv)
Licensee makes an assignment for the benefit of creditors; or (v) if the business or assets of
Licensee are otherwise placed in the hands of a receiver, assignee or trustee, whether by
voluntary act of Licensee or otherwise; or
(b)
At any time by mutual written agreement between System and Licensee.
Effect of Termination. If the Agreement is terminated for any reason:
(a)
All rights and licenses of sublicensees shall terminate upon termination of the Agreement;
provided however, if the sublicense is for all of the Patent Rights, and the sublicensee is in
good standing and agrees in writing to assume all of the obligations of Licensee and
provides System with written notice thereof within thirty (30) days after termination of the
Agreement, then such sublicense shall survive;
(b)
Licensee shall cease making, having made, using, selling, offering to sell, leasing, loaning
and importing any Licensed Products and performing services using a Licensed Product by
the effective date of termination;
(c)
Licensee shall tender payment of all accrued royalties and other payments due to System as
of the effective date of termination;
(a)
Nothing in the Agreement will be construed to release either Party from any obligation that
matured prior to the effective date of termination;
(e)
The following shall survive any termination or expiration of this Agreement: Article I
(Definitions), Article IX (Indemnification and Representation), and Article XII
(Miscellaneous Provisions). In addition, the provisions of Article III (Consideration) and
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Article VII (Payments and Reports) shall survive with respect to all activities and payment
obligations accruing prior to the termination or expiration of the Agreement.
ARTICLE IX - INDEMNIFICATION AND REPRESENTATION
9.01
Indemnification. LICENSEE MUST AT ALL TIMES DURING AND AFTER THE TERM
OF THIS AGREEMENT INDEMNIFY, DEFEND, AND HOLD HARMLESS SYSTEM, ITS
MEMBERS, REGENTS, OFFICERS, AND EMPLOYEES AGAINST ANY CLAIM,
PROCEEDING, DEMAND, LIABILITY OR EXPENSE (INCLUDING LEGAL EXPENSE
AND REASONABLE ATTORNEYS’ FEES) WHICH RELATES TO INJURY TO
PERSONS OR PROPERTY, ANY ACTION BROUGHT BY A THIRD PARTY ALLEGING
INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS, OR AGAINST ANY
OTHER CLAIM, PROCEEDING, DEMAND, EXPENSE, OR LIABILITY OF ANY KIND
RESULTING FROM THE PRODUCTION, MANUFACTURE, SALE, COMMERCIAL
USE, LEASE, CONSUMPTION, OR ADVERTISEMENT OF LICENSED PRODUCTS OR
ARISING FROM ANY OBLIGATION OF LICENSEE OR SUBLICENSEE(S) UNDER
THIS AGREEMENT.
9.02
Representation. System represents that it owns and has title to Patent Rights and has the full right
and power to grant the license in paragraph 2.01, and that there are no outstanding agreements,
assignments, or encumbrances inconsistent with the provisions of this Agreement. SYSTEM
MAKES NO OTHER REPRESENTATIONS AND EXTENDS NO OTHER WARRANTIES
OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE, NOR DOES SYSTEM ASSUME ANY OBLIGATIONS REGARDING
INFRINGEMENT OF PATENT RIGHTS OR OTHER RIGHTS OF THIRD PARTIES
DUE TO LICENSEE’S ACTIVITIES UNDER THIS AGREEMENT.
ARTICLE X – NOTICES
10.01
Notices. Any notice or other communication of the Parties required or permitted to be given or
made under the Agreement will be in writing and will be deemed effective when sent in a manner
that provides confirmation or acknowledgement of delivery and received at the address set forth in
paragraph 10.01 (Notice) of the Specific Terms and Conditions. Notices required under the
Agreement may be delivered via e-mail provided such notice is confirmed in writing as indicated in
the foregoing sentence. Each Party shall update the other Party in writing with any changes in such
contact information.
ARTICLE XI – INFRINGEMENT
11.01
Notification. If either System or Licensee becomes aware of any infringement or potential
infringement of Patent Rights, each Party shall promptly notify the other of such in writing. Within
thirty (30) days after receipt of such notice, SYSTEM and LICENSEE will formulate a strategy for
resolving the alleged infringement.
11.02
Licensee’s Enforcement Rights. Licensee has the right, but not the obligation, to enforce the Patent
Rights against any infringement by a third party. System’s involvement, participation, and
representation in any enforcement action or litigation is contingent upon System receiving the
consent of the Attorney General of the State of Texas. Licensee shall be responsible for payment of
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all fees and expenses associated with such enforcement incurred by Licensee and all fees and
expenses incurred by System in providing any cooperation. System shall have the right to obtain its
own outside counsel and Licnsee shall pay all of that outside counsel fees and expenses. Licensee
shall pay System a percentage equivalent to the rate delineated in paragraph 11.02 (Licensee’s
Enforcement Rights) of the Specific Terms and Conditions on any Net Recoveries within thirty
(30) days of the date of Licensee’s receipt of any such Net Recoveries.
11.03
System’s Enforcement Rights. Should Licensee choose not to pursue any legal action to redress the
alleged infringement within six months after a written request by System to initiate such
enforcement action or litigation against an identified third party, or if Licensee fails to notify
System of any infringement or potential infringement by an identified third party within six (6)
months after Licensee learns of such infringement or potential infringement, then System may do
so at its own expense. In such case, any Net Recoveries resulting from System’s pursuit of any
legal action solely by System will be considered System’s recovery with no obligation to Licensee.
System will keep Licensee reasonably apprised of the status of such enforcement action. If System
pursues such legal action to redress alleged infringement, System may, as part of the resolution of
such efforts, grant non-exclusive license rights to the alleged infringer notwithstanding Licensee’s
exclusive license rights; however, to the extent legally able to do so and subject to the consent of
the Attorney General of the State of Texas, System will endeavor to provide Licensee with prior
written notice if System resolves such an action by, in part, granting a non-exclusive license to an
alleged infringer.
ARTICLE XII - MISCELLANEOUS PROVISIONS
12.01
Marking. Subject to the requirements of each country’s marking laws or regulations, Licensee
shall legibly mark all Licensed Products that it sells with the number of any applicable patent(s)
licensed hereunder as part of the Patent Rights. Licensee shall contractually obligate any of its
sublicensees to conform to this paragraph 12.01.
12.02
Export Controls. System is subject to United States laws and regulations controlling the export of
technical data, computer software, laboratory prototypes and other commodities, and its obligations
under this Agreement are contingent on compliance with applicable laws and regulations. The
transfer of certain technical data and commodities may require a license from the cognizant agency
of the United States Government or written assurances by Licensee that Licensee will not export
data or commodities to certain countries without advance approval of such agency. System neither
represents that a license will not be required nor that, if required, it will be issued.
12.03
Confidential Information. Licensee’s sales reports submitted by pursuant to Article VII will be
considered confidential information under this Agreement, and System shall not disclose such sales
reports to any third party except as may be required by law. If the Parties contemplate exchanging
other information of a confidential nature, they should enter into a separate confidentiality
agreement.
12.04
Non-Use of Names. Licensee may not use the names or any adaptation of the names of The Texas
A&M University System, nor of any of its employees or Members, in any advertising, promotional,
or sales literature without the advance written consent of System in each case, except that Licensee
may state that it is licensed by System under Patent Rights.
12.05
Trademarks. Licensee may select, own and use its own trademark on Licensed Products.
However, System does not grant Licensee any license or other right under any trade name,
trademark, or service mark owned or licensed by System. Conversely, System has no rights to
trade names, trademarks, or service marks owned by Licensee.
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12.06
Assignment of this Agreement. This Agreement, with the rights and privileges it creates, is
assignable only with the written consent of both Parties, with such consent not to unreasonably
withheld and except that without such consent Licensee may assign this Agreement to any Affiliate
or to any successor in the event of any transfer (including, without limitation, by conveyance,
merger, consolidation, liquidation, or dissolution) of all or substantially all of Licensee's assets
relating to the subject matter of this Agreement.
12.07
Force Majeure. Other than an obligation for the payment of money, System, upon receipt of
documentation from Licensee which it deems appropriate, must excuse any breach of this
Agreement which is proximately caused by war, strike, act of God, or other similar circumstance
normally deemed outside the control of well-managed businesses.
12.08
Entire Agreement. This Agreement contains the entire understanding of the Parties regarding
Patent Rights, and supersedes all other prior or contemporaneous written or oral agreements
between the Parties regarding Patent Rights. It may be modified only by a written amendment
signed by the Parties.
12.09
Governing Law. The substantive laws of the State of Texas (and not its conflict of law principles),
USA, and of the United States of America govern all matters arising out of or relating to this
Agreement and all of the transactions it contemplates.
12.10
Construction. Headings are solely for convenience of reference and are not part of, and may not be
used to construe, this Agreement. Terms in the singular shall include terms in the plural and viceversa. The term “or” is used in the inclusive sense and means “and/or” unless otherwise specified.
12.11
No Waiver; Severability. Neither Party will be deemed to have waived any of its rights under the
Agreement unless the waiver is in writing and signed by such Party. No delay or omission of a
Party in exercising or enforcing a right or remedy under the Agreement shall operate as a waiver
thereof. If any provision of this Agreement is invalid or unenforceable, the remaining provisions
will continue in full force and effect. The Parties shall promptly replace any invalid or
unenforceable provision with a valid and enforceable provision that has substantially the same legal
and economic effect as the invalid or unenforceable provision.
12.12
Privileges and Immunities. System is an agency of the State of Texas and nothing in this
Agreement waives or relinquishes the right of System to claim any exemptions, privileges, or
immunities as may be provided by be provided by the constitution and/or the laws of the State of
Texas.
12.13
Counterparts. The Agreement may be executed in multiple counterparts, each of which shall be
deemed an original, but all of which taken together shall constitute one and the same instrument. A
Party may evidence its execution and delivery of the Agreement by transmission of a signed copy
of the Agreement via facsimile or email.
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