Disclaimer: The licensing terms outlined below shall have no binding effect on William Marsh Rice University or any third
party unless and until such terms are incorporated into a written agreement between the parties.
This non-binding term sheet is valid for 90 days and will expire on <DATE>.
Example of Non-Binding Term Sheet
Rice University and <COMPANY>
License Grant
Rice Patents
Rice Copyrights
Field of Use
Rights to Sublicense
Term of License
Upfront Licensing Fee
Royalty
Non-Sale Based Sublicense
Income
Annual Minimum Royalties
Exclusive/Nonexclusive, Territory license of Rice Patents within the Field of
Use
Those United States patent applications and patents listed in Exhibit A hereto and
any corresponding foreign patent applications and patents, and any divisionals,
continuations, reissues and reexaminations to the extent that the claims are
directed to subject matter within the Field of Use.
Those copyrights listed in Exhibit A hereto
< Define > e.g. Distribution of software, diagnostic of osteoporosis, etc.
[Only an option for Exclusive Licenses.]
Begins on the Effective Date and continue until the date of expiration of the last
to expire of Rice’s rights in Rice Intellectual Property.
[software ONLY can be for X years, 5-7 years]
COMPANY shall pay Rice $X US Dollars upon execution of this Agreement in
partial consideration of the license.
A running royalty shall be paid on Adjusted Gross Sales attributable to
COMPANY, their Affiliates, and their sublicensees. Such royalty rate shall be X
% of Adjusted Gross Sales.
COMPANY shall pay Rice a total of x percent (x %) of all Non-Sale Based
Sublicense Income received by COMPANY.
COMPANY shall pay annual minimum royalties according to the following
schedule:
Date 201__
Date 201__
Date 201__ and each year thereafter
$_________;
$_________;
$_________.
These Annual Minimum Royalties shall be creditable towards royalties due in
the following year only.
[NOTE: These annual minimum royalties typically correspond to 50% of
marketing projections in business plan.]
Milestones
EXAMPLES OF TYPICAL MILESTONES:
COMPANY shall submit a Business Plan prior to the Effective Date of the
agreement.
COMPANY shall develop a working model on or before __________, 201___
(if appropriate). [If software, a Beta Version]
COMPANY shall fund no less than ____________ Dollars ($_________) of
research toward the development of Rice Licensed Products in each calendar
year (pro-rated for partial years) beginning in 201____ and ending with the first
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commercial sale of a Rice Licensed Product.
COMPANY shall make a first commercial sale of a Licensed Product on or
before ________, 201___. (These may be field specific, so there may be more
than one in this area)
Within sixty (60) days after the end of each calendar year, COMPANY shall
furnish RICE with a written report on the progress of its efforts during the
immediately preceding calendar year to develop and commercialize Rice
Licensed Products. The report shall also contain a discussion of intended efforts
and sales projections for the year in which the report is submitted.
COMPANY shall develop a working model on or before __________, 201___,
and permit an in-plant inspection by Rice on or before __________, 201___, and
thereafter permit in-plant inspections by Rice at regular intervals with at least
______ ( ) months between each such inspection.
COMPANY shall make Adjusted Gross Sales according to the following
schedule:
201__
$_________;
201__
$_________;
201__ and each year thereafter $_________.
COMPANY shall sell the following numbers of Rice Licensed Products
according to the following schedule:
201___
_________ units;
201___
_________ units;
201___ and each year thereafter _________ units.
Additional negotiated milestones may include such things as:
Pre-clinical results demonstrating …... by 201_
Commence clinical trials
by 201_
FDA approval
by 201_
Patent Expense
Reimbursement
Standard Rice Terms and
Conditions
With Government Funding
In the event that Rice determines that Licensee (or an AFFILIATE or
SUBLICENSEE) has failed to fulfill any of its obligations under this Section 3.1,
then Rice may treat such failure as a material breach in accordance with Section
12.3(b).
Rice and COMPANY shall work closely to develop a suitable strategy for the
prosecution and maintenance of Rice Patents; provided that Rice shall maintain
final authority in all decisions regarding the prosecution and maintenance of
Rice Patent expenses. COMPANY will reimburse Rice for all patent expenses.
Indemnification, No Representations and Warranty, Insurance requirements,
Retained Rights. Rice retains the right to practice under the Licensed Patents for
research, teaching, and educational purposes. COMPANY will acknowledges
that the U.S. federal government retains a royalty-free, non-exclusive, nontransferable license to practice any government-funded invention claimed in any
patent rights as set forth in 35 U.S.C. §§ 201-211, and the regulations
promulgated thereunder, as amended, or any successor statutes or regulations.
Substantial manufacture in the US
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Exhibit A: Rice Intellectual Property
Rice Patents
1. The technology described in Rice Tech ID ##### titled “Title” by <INVENTORS>, as disclosed to Rice
on <DATE>, and the corresponding patent applications:
a.
b.
c.
d.
e.
US Provisional 60/XXX,XXX filed <DATE>
PCT/US03/XXXXX filed <DATE>
US utility filing 10/xxx,xxx filed <DATE>
Japanese filing 2003-xxxxxx filed <DATE>
Canadian issued patent x,xxx,xxx from filing PCT/US2003/xxxxxx filed <DATE>
2. The technology described in Rice Tech ID ##### titled “Title 2” by <INVENTORS>, as disclosed to
Rice on <DATE>, and the corresponding patent applications:
a. US Provisional 60/xxx,xxx filed <DATE>
b. PCT/US05/xxxxx filed <DATE> (PCT Designating the US)
All on an “as is” basis as of the Effective Date.
Rice Copyrights
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