License Agreement

Draft

 

 

License Agreement

 

by and between

 

The University of Dayton

 

and

 

______________________________

 

 

 

Table of Contents

 

Preamble


Sections

1. Definitions
2. Grant of Licenses
3. Representations
4. Disclosure and Services
5. License Issue Fee
6. Royalty Payments
7. Annual Minimum Royalty Payments
8. Records and Reports
9. Grant Back
10. Diligence
11. Confidentiality
12. Term
13. Infringement
14. Validity of Licensed Patents
15. Termination
16. Assignment
17. Indemnification
18. Notices
19. Export License
20. Publicity and Patent Marking
21. Governing Law and Severability
22. Entire Agreement
23. Arbitration
24. Patent Prosecution

 

Attachments

Schedule A - Licensed Patents

 

DRAFT

LICENSE AGREEMENT

THIS LICENSE AGREEMENT, effective as of the date of execution by both parties, by and between Miami University, a nonprofit corporation organized under the laws of the State of Ohio with its principal place of business at 501 East High Street, Oxford, Ohio, 45056, USA, (hereinafter "Licensor") and __________________________________________________, a corporation organized under the laws of the State of _____________________, with its principal place of business at (hereinafter "Licensee").

WHEREAS, the Licensor owns all rights, title, and interest in and to the Licensed Technology and Licensed Patents, each as hereinafter defined, subject to the right of the United States Government to a nonexclusive, worldwide, royalty-free license under the Licensed Patents to manufacture, have manufactured, or use for the purpose of the United States Government; and

WHEREAS, the Licensor wishes to grant and the Licensee wishes to receive certain license rights under the Licensor's Licensed Technology and Licensed Patents;

NOW, THEREFORE, in consideration of the premises and of the mutual covenants herein contained, it is agreed as follows:

1. Definitions

Terms used in this License Agreement shall have the following meaning:

1.1 "Affiliate," with respect to any party, shall mean any corporation, organization, or other entity which, either directly or indirectly, controls, is controlled by, or is under common control with such party, control being the ownership of at least fifty percent (50%) of the voting securities, equity participation, or beneficial interest of such party. The term "control" shall mean possession, direct or indirect, or the powers to direct or cause the direction of the management or policies of a person, organization, or entity, whether through ownership or equity participation, voting securities, or beneficial interest, by contract, agreement, or otherwise.

1.2 "Effective Date" shall mean the date of execution by both parties of this License Agreement.

1.3 "Licensed Patents" shall mean the patent applications and patents listed in Schedule A attached hereto and made a part hereof, any patents issuing on any such patent applications, any foreign patent applications or patents corresponding to any of the foregoing patent applications or patents, and any extensions or reissues of any such patents.

1.4 "Licensed Technology" shall mean and include all technical information in tangible form, including all technical data, know-how, trade information, and trade secrets, relating to the Licensed Patents and owned or controlled by the Licensor on the Effective Date, subject to the rights of the United States Government referred to in the first WHEREAS clause of this License Agreement.

1.5 "Licensee Information" shall mean information of the Licensee in tangible form directly relating to the design, manufacture, selling or marketing of a Licensed Product, as hereinafter defined.

1.6 "Licensed Products" shall mean _________________________________.

1.7 "Licensed Field" shall mean the developing, manufacturing, using, leasing, or selling of Licensed Products, utilizing the Licensed Technology or the Licensed Patents.

1.8 "Licensed Territory" shall mean ________________________________________.

1.9 "Future Licensee Patents" shall mean all patent applications filed or acquired in any country of the world covering inventions made after the Effective Date by the Licensee which relate to the Licensed Products, any patents issuing therefrom and any reissues or extension of such patents, where the practice of such inventions would infringe any of the patents included within the Licensed Patents.
1.10 "Net Sales Value" shall mean the Licensee’s or Sublicensee’s, as hereinafter defined, billing price for a Licensed Product less amounts allowed or credited on returns, trade discounts, prepaid freight, and taxes or other governmental charges added directly to the invoice for such Licensed Product. Licensed Products shall be considered sold when billed out or invoiced.

 

2. Grant of Licenses

2.1 The Licensor hereby grants to the Licensee and the Licensee hereby accepts from the Licensor, upon the terms and conditions herein specified, a license under the Licensed Technology to develop, make, lease, sell, have developed, have made, use and otherwise dispose of Licensed Products.  This license under the Licensed Technology shall commence as of the Effective Date and shall continue in effect until the License Agreement is terminated for any of the reasons set forth in Section 15 hereof.  This license shall be limited to the Licensed Field and the Licensed Territory.
2.2 The Licensor hereby grants to the Licensee and the Licensee hereby accepts from the Licensor, upon the terms and conditions herein specified, a license under the Licensed Patents (subject to the nonexclusive worldwide license rights of the U.S. Government) to develop, make, lease, sell, have developed, have made, use and otherwise dispose of Licensed Products.  This license under the Licensed Patents shall be limited to the Licensed Field and the Licensed Territory, shall commence as of the Effective Date, and shall continue in effect until the expiration of the last patent application to be abandoned or the last patent to expire within the Licensed Patents, whichever is later, unless terminated earlier for any of the reasons set forth in Section 15 hereof.
2.3 The license under the Licensed Technology granted herein under Section 2.1 and the license under the Licensed Patents granted herein under Section 2.2 shall have the following scope:
2.3.1 In                      the licenses to the Licensee under the Licensed Technology and the Licensed Patents shall be exclusive and the Licensee shall have the right to issue to third parties, hereinafter "Sublicensees," nonexclusive, royalty-bearing sublicenses under any of the Licensed Technology or the Licensed Patents on terms not inconsistent with the terms of this License Agreement, such right to issue sublicenses to remain in effect only while the licenses to the Licensee under the Licensed Technology and the Licensed Patents are exclusive, such sublicenses to be only within the Licensed Territory and the Licensed Field.
2.3.2    In the Licensed Territory, with the exception of                              , the licenses to the Licensee under the Licensed Technology and the Licensed Patents shall be nonexclusive and the Licensee shall have no right to issue sublicenses.

2.4 The Licensee shall notify the Licensor of the issuance of any sublicenses to any Sublicensees and shall promptly provide the Licensor with a copy thereof in the English language.  The Licensee shall be responsible for the performance of its Sublicensees under any such sublicenses, including the payment of any royalties or other payments due under any such sublicenses or as a consequence of any such sublicenses.  The Licensee shall not receive from Sublicensees anything of value in lieu of cash payments in consideration for any sublicense under this License Agreement, without the express prior written permission of the Licensor.

2.5 The Licensee shall pay to the Licensor one-half (1/2) of any sublicense issue fee or other consideration paid by any Sublicensee for any sublicense issued to a third party by the Licensee under this License Agreement.
2.6 The Licensor reserves the right to practice under the Licensed Patents and to use and distribute to third parties the Licensed Technology for its own noncommercial research purposes.
2.7 Upon written notice from the Licensee to the Licensor, the Licensee may extend to an Affiliate of the Licensee any of the licenses granted to the Licensee under this License Agreement, provided, however, that any such Affiliate shall have no right to issue sublicenses under such extended license.  The Licensee shall be responsible for the performance under this License Agreement of any Affiliate to which any license is extended pursuant to this Section 2.7.  Any Affiliate to whom a license is extended pursuant to this Section 2.7 shall be included within the definition of "Licensee" for the purposes of this License Agreement.
2.8 Because this License Agreement grants the exclusive right to use or sell the Licensed Products in the United States, the Licensee acknowledges that any Licensed Products embodying or produced through the use of those Licensed Patents under which the United States Government has license rights, will be manufactured substantially in the United States.

 

3. Representations

3.1 The Licensor hereby represents that it owns all rights, title and interest in and to  the Licensed Technology and the Licensed Patents except for the rights of the United States Government referred to in the first WHEREAS clause of this License Agreement.
3.2  The Licensee hereby represents that it has the capability and the necessary resources to successfully develop, produce, manufacture, market, and sell the Licensed Products and that it is committed to a thorough, vigorous, and diligent program for commercializing the Licensed Technology and the Licensed Patents in the Licensed Field.
4. Disclosure and Services
4.1 During the term of this License Agreement, the Licensor hereby agrees to transmit and/or disclose to the Licensee specifications of all patent applications included within the Licensed Patents.  In addition, upon request of the Licensee during the term of this License Agreement, the Licensor hereby agrees to transmit and/or disclose to the Licensee technical data, files, notebooks, disclosures, and other written information relating to the Licensed Technology and the Licensed Patents.  The Licensor and the Licensee agree to establish procedures in order to provide for the transmission of this information to the Licensee in a timely manner.
4.2 The Licensee hereby agrees to transmit and/or disclose to the Licensor all information which falls within the scope of the Licensee Information as well as the specifications of all patent applications filed by the Licensee subject to the provisions of Sections 1.9 and 9 hereof relating to Future Licensee Patents.
4.3 Upon written request of the Licensee, and at the Licensee's expense, the Licensor agrees to provide professional and technical consulting services to the Licensee related to the application of the Licensed Technology and the Licensed Patents in the designing or manufacturing of Licensed Products in the Licensed Field, and in improving the quality of Licensed Products during the commercialization of the Licensed Products by the Licensee in the Licensed Field.  The arrangement of and payment for such services shall be made under a separate agreement.  THE PARTIES UNDERSTAND AND AGREE THAT THE LICENSOR HAS NO OBLIGATION WHATSOEVER UNDER THIS LICENSE AGREEMENT TO PROVIDE SUCH SUPPORT TO THE LICENSEE EXCEPT UNDER SAID SEPARATE AGREEMENT AND AT THE LICENSEE’S EXPENSE.

 

5. License Issue Fee

Upon the execution of this License Agreement the Licensee shall pay to the Licensor a License Issue Fee of                                            .  The License Issue Fee shall be neither refundable nor creditable against any other payments due under this License Agreement.

 

6. Royalty Payments
6.1 In partial consideration of the licenses granted by the Licensor to the Licensee under Sections 2.1 and 2.2 hereof, the Licensee shall pay to the Licensor, in the manner hereinafter provided, so long as this License Agreement shall remain in effect, an earned royalty of ____________ percent of the Net Sales Value of all Licensed Products made, used, leased, or sold by the Licensee or by any Sublicensee under this License Agreement.
6.2 No royalties shall be collected or paid hereunder to the Licensor on Licensed Products sold to the account of the United States Government. The Licensee and its Sublicensees shall reduce the amount charged for Licensed Products distributed to the United States Government by an amount equal to the royalty for such Licensed Products otherwise due the Licensor as provided herein.
7. Annual Minimum Royalty Payments
7.1 The Licensee shall pay to the Licensor Annual Minimum Royalty Payments in accordance with the following schedule__________________________________________________________________.
7.2 All Annual Minimum Royalty Payments will be paid with the Licensee's report to the Licensor for the last calendar quarter of the calendar year to which they apply.
7.3 Earned royalties paid by the Licensee to the Licensor for any territory for any calendar year shall be creditable against the Annual Minimum Royalty Payment due for that territory for that calendar year. In the event that the Annual Minimum Royalty Payment for any territory for any calendar year exceeds the earned royalties paid by the Licensee for that territory and calendar year, the Licensee shall have the option of paying the Licensor the difference between the Annual Minimum Royalty Payment and the earned royalties paid, such difference to be paid with the Licensee's report to the Licensor for the last calendar quarter of that year. If the Licensee does not pay such difference to the Licensor with respect to any territory, the Licensor may at its option terminate the licenses granted herein as to that territory by written notice to the Licensee.
7.4 No Annual Minimum Royalty Payment paid for any given calendar year shall be carried over as a credit against the earned royalties or Annual Minimum Royalty Payment for any subsequent calendar year and no amount of earned royalties paid for any calendar year shall be creditable against any Annual Minimum Royalty Payment due for any other calendar year.
8. Records and Reports
8.1 The Licensee shall keep and shall require each Sublicensee to keep true and accurate records showing its or such Sublicensee's operations under this License Agreement in sufficient detail to enable the royalties and other payments due hereunder to be readily determined. Such records shall be kept at the Licensee's or the Sublicensee's, as the case may be, principal place of business and shall be maintained for five (5) years following the end of the calendar year to which they pertain. The Licensor shall have the right to have said records as the same pertain to this License Agreement examined by a certified public accountant, provided that such examination shall take place at the Licensee's or the Sublicensee's, as the case may be, offices during normal business hours, not more than once in each calendar year, and at the Licensor's expense, provided, however, that if any such examination shall disclose an underpayment of royalties of greater than ten percent (10%) for the period in question the reasonable cost of such examination shall then be paid by the Licensee.
8.2 The Licensee shall make accurate reports to the Licensor within thirty (30) days after the end of each calendar quarter showing the particulars of the business conducted by the Licensee and its Sublicensees during the preceding three (3) months under this License Agreement as are pertinent to an accounting for royalties and other payments under this License Agreement. These shall include at least the following:
8.2.1 The quantities of each of the Licensed Products manufactured, sold, or leased and subject to the payment of earned royalties under this License Agreement and billed by the Licensee and each Sublicensee during those three (3) months, separately shown as to the countries in the Licensed Territory;
8.2.2 The billings thereon, and the net after allowable deductions therefrom pursuant to Section 1.10 hereof;
8.2.3 The calculation of royalties thereon. Simultaneously with the delivery of each such report, the Licensee shall pay to the Licensor the royalties and any other payments due under this License Agreement for the period covered by such report. If no royalties are due it shall be so reported.
8.2.4 The quantities of each of the Licensed Products sold or leased and billed by the Licensee and each Sublicensee subject to the royalty-free license to the United States Government during those three (3) months and the billings thereon.
8.3 All payments due to the Licensor under this License Agreement shall be made in United States Dollars and shall be remitted to:

Miami University
501 E High St
Oxford, OH 45065
Attn: Vice President for Research and Innovation

or to such other place as the Licensor may designate from time to time in writing.
8.4 In the event any Licensed Products shall be leased or sold by the Licensee or a Sublicensee under this License Agreement for currency other than United States currency, the earned royalty payable as to such Licensed Products shall first be determined in the currency for which such Licensed Products were leased or sold and then converted into its equivalent in United States currency at the conversion rate as published in the Wall Street Journal on the last business day of the calendar quarter for which such earned royalties are reported.
8.5 The Licensee shall pay to the Licensor a one-time late fee of five percent (5%) of any payment required under this License Agreement, if the
payment is made more than fifteen (15) days late. Such late fee shall be
paid within thirty (30) days after the date on which the required payment
was due. In addition, the Licensee shall pay to the Licensor interest on
any amounts not paid when due. Such interest will accrue from the
fifteenth (15th) day after the payment was due at a rate of eighteen percent (18%) per annum, and the interest payment will be due and payable on the first day of each month after interest begins to accrue until full payment of all amounts due the Licensor is made. The Licensor's rights to receive late fees, and interest or late payments shall be in addition to any other rights
and remedies available to the Licensor. If the interest rate required in this Section 8.5 exceeds the legal rate in a jurisdiction where a claim for such interest is being asserted, the required interest rate shall be reduced, for
such claim only, to the maximum interest rate allowable in the jurisdiction.
8.6 On or before the ninetieth (90th) day following the close of the Licensee's fiscal year, the Licensee shall provide the Licensor with the Licensee's certified financial statements for the preceding fiscal year including, at a minimum, a balance sheet and an operating statement.

 

9. Grant Back

During the term of this License Agreement, if the Licensee files a patent application which at the time of such filing or subsequently constitutes a Future Licensee Patent, and a third party licensee of the Licensor under any of the Licensed Patents would need a license under any patent issuing on said patent application in order to utilize its license under the Licensed Patents, then, the Licensee agrees to grant to the Licensor a nonexclusive, royalty-free license under such patent application and any patent issuing thereon with the right to sublicense such third party licensee of the Licensor thereunder.

 

10. Diligence

10.1 Promptly upon execution of this License Agreement the Licensee shall establish a program, or continue a program already in effect, reasonably designed and funded to develop and market Licensed Products in the Licensed Field and the Licensed Territory. In the conduct of such program the Licensee shall develop at least one product comprised within the category of Licensed Products described in Section 1.8 hereof, introduce such product into the United States for test marketing within months after the Effective Date, market such product on a regular basis in the United States within months after the initiation of such test marketing, and market such product in the Licensed Territory outside of the United States within months after the initiation of such marketing on a regular basis in the United States.

10.2 The Licensee shall keep the Licensor apprised of its progress with respect to the requirements of Section 10.1 hereof by submitting progress reports to the Licensor at six (6) month intervals, the first such report to be submitted six (6) months after the Effective Date and further such reports to continue to be submitted until all of the requirements of Section 10.1 hereof have been fully satisfied.

10.3 Nonperformance of this Section 10, or any part thereof, as to the United States or as to the Licensed Territory outside of the United States shall be a breach of or a default under this License Agreement, and in the event of such breach or default, the Licensor shall have the right to terminate this License Agreement.

 

11. Confidentiality


11.1 The Licensor and the Licensee anticipate that in connection with this License Agreement it may be necessary for either to disclose to the other information of a confidential and proprietary nature, including, but not limited to, technical data, know-how, trade secrets, computer programs, and business practices ("Information"). The Information will be disclosed in writing and marked proprietary. Information disclosed verbally will be confirmed in writing, marked proprietary, and forwarded to the receiving party within thirty (30) days after such disclosure.

11.2 Each party agrees that it will not disclose the Information to third parties and will maintain the Information in confidence, exercising at least the same degree of care used to protect its own confidential and proprietary information. The parties agree to use such Information only for the purposes contemplated under this License Agreement. Disclosure of such Information shall be restricted to those employees and agents of a party who are directly participating in work involving the other party hereto. Both parties agree to obtain the agreement of those employees to protect the confidentiality of such Information. Both parties shall designate an individual or individuals to receive the Information.

11.3 The limitations on disclosure or use of the Information by the receiving party shall not apply to, and neither party shall be liable for disclosure or use of Information which:

(a) is available to the public at the time of such disclosure or use through no fault of the receiving party;

(b) is available to the receiving party at the time of receipt of such Information by the receiving party, as can be shown by prior written records;

(c) prior to such disclosure or use has been disclosed to the receiving party by a third party entitled to disclose it; or

(d) is developed by or for the receiving party independently of the disclosure hereunder.

11.4 The obligations of confidentiality and nonuse set forth above in Section 11.2 shall terminate five (5) years from the date Information is disclosed to the receiving party.

11.5 The parties agree that Information furnished hereunder shall not be disclosed contrary to the laws and regulations of the United States of America, including, but not limited to, the Export Administration Regulations of the U.S. Department of Commerce and the International Traffic in Arms Regulations of the U.S. Department of State.

11.6 Each of the parties hereto hereby agrees to maintain this License Agreement in confidence and not to disclose the details thereof to any third party without first obtaining the written consent of the other party. This obligation of confidentiality, however, shall not apply to the mere existence of this License Agreement or to the names of the parties to this License Agreement.

 

12. Term

This License Agreement will commence as of the Effective Date and will continue in effect until terminated by either party under Section 15 hereof.

 

13. Infringement

13.1 The Licensee shall inform the Licensor promptly in writing of any alleged infringement of the Licensed Patents by a third party and of any available evidence thereof.

13.2 During the term of this License Agreement, the Licensor shall have the right, but shall not be obligated, to prosecute at its own expense all infringements of the Licensed Patents and, in furtherance of such right, the Licensee hereby agrees that the Licensor may include the Licensee as a party plaintiff in any such suit, without expense to the Licensee. The total cost of any such infringement action commenced or defended solely by the Licensor shall be borne by the Licensor and the Licensor shall keep any recovery or damages for past infringement derived therefrom.

13.3 If within six (6) months after having been notified of any alleged infringement, the Licensor shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if the Licensor shall notify the Licensee at any time prior thereto of its intention not to bring suit against any alleged infringer in the Licensed Territory and the Licensed Field, then, and in those events only, the Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Licensed Patents in the Licensed Territory and the Licensed Field, and the Licensee may, for such purposes, use the name of the Licensor as party plaintiff; provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment, or other voluntary final disposition of the suit may be entered into without the consent of the Licensor, which consent shall not unreasonably be withheld. The Licensee shall indemnify the Licensor against any order for costs that may be made against the Licensor in such proceedings.

13.4 In the event that the Licensee shall undertake the enforcement and/or defense of the Licensed Patents by litigation, the Licensee may withhold up to fifty percent (50%) of the payments otherwise thereafter due the Licensor under Section 6 hereof and apply the same toward reimbursement of up to half of the Licensee’s expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery of damages by the Licensee for each such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of the Licensee relating to such suit, and next toward reimbursement of the Licensor for any payments under Section 6 hereof past due or withheld and applied pursuant to this Section 13. The balance remaining from any such recovery shall be divided equally between the Licensee and the Licensor.

13.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of the Licensed Patents shall be brought against the Licensee, the Licensor, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action at its own expense.

13.6 In any infringement suit as either party may institute to enforce the Licensed Patents pursuant to this License Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.

13.7 The Licensee, during the exclusive period of this License Agreement, shall have the sole right in accordance with the terms and conditions herein to sublicense any alleged infringer in the Licensed Territory and the Licensed Field for future use of the Licensed Patents. Any fees or royalties received by the Licensee as part of such a sublicense shall be treated in accordance with Sections 2.5 and 6 hereof. 

 

14. Validity of Licensed Patents

If any claim or claims of any of the Licensed Patents should be held to be invalid or of limited scope by the judgment of any court which is final in its effect, the rights and obligations of the parties hereunder shall be construed and interpreted in accordance with the judgment from the effective date thereof.

 

15. Termination

15.1 The Licensee may terminate this License Agreement at any time on three (3) months written notice to the Licensor.

15.2 Either party shall have the right to terminate this License Agreement by written notice to the other party if:

15.2.1 The other party is in breach or default of any part of this License Agreement and the breach or default is not cured after thirty (30) days notice given to the party in breach or default; or

15.2.2 the other party shall:

(i) apply for or consent to the appointment of a receiver, trustee or liquidator of it or any of its party;

(ii) admit in writing its inability to pay its debts as they mature;

(iii) make a general assignment or trust mortgage for the benefit of creditors;

(iv) file a voluntary petition in bankruptcy, or a petition or an answer seeking reorganization or an arrangement with creditors or to take advantage of any bankruptcy, reorganization, insolvency, readjustment of debt, dissolution or liquidation law or statute, or an answer admitting the material allegations of a petition file against it in any proceeding under any such law; or

(v) take corporate action for the purpose of effecting any of the foregoing; provided that, in the case of the Licensor, such event shall not cause a right to terminate if the Licensee is able to make the royalty payments or other payments due under this License Agreement, or give adequate assurance of its ability to do so; or

15.2.3 an order, judgment or decree shall be entered against the other party by any court of competent jurisdiction, approving a receiver, trustee or liquidator of such other party or of all or a substantial portion of its assets, and such order, judgment or decree shall not be released, vacated, or appealed within sixty (60) days after its issue or entry; or

15.2.4 any judgment, writ, warrant of attachment or execution or similar process shall be issued or levied against a substantial part of the property of the other party, and such judgment, writ, or similar process shall not be released, vacated, or fully bonded within sixty (60) days after its issue or levy.

15.3 The Licensee's obligations to pay any amount payable under this License Agreement and to report to the Licensor and to pay royalties to the Licensor as to any Licensed Product made, leased, or sold under any license or sublicense granted pursuant to this License Agreement prior to the termination of this License Agreement shall survive such termination.

15.4 Upon termination of this License Agreement the Licensee shall have no further right to utilize the Licensed Technology or the Licensed Patents.

15.5 Any sublicense in effect at the termination of this License Agreement shall remain in effect, but for the benefit of the Licensor, provided the Sublicensee shall continue to make all reports and payments required under its sublicense and is not otherwise in breach or default thereunder, such reports and payments then to be made to the Licensor. Upon such termination the Licensee shall promptly assign each such sublicense to the Licensor without further consideration.

15.6 The provisions of Sections 8, 9, 11, 15.3, 15.4, 15.5, 17, 19 and 20 hereof shall survive the termination of this License Agreement.

 

16. Assignment

Except as otherwise permitted under this License Agreement, neither party shall assign, nor in any manner transfer, its interest or any part thereof in this License Agreement without the prior written consent of the other party. This Section 16 shall not apply to the assignment to any successor corporation in the event of a merger, consolidation, spin-off or transfer of substantially all of the business of the Licensee.

 

17. Indemnification

17.1 The Licensee shall at all times during the term of this Agreement and thereafter, indemnify, defend and hold the Licensor harmless against all claims, proceedings, demands, and liabilities of any kind whatsoever, including legal expenses and reasonable attorneys' fees, arising out of the death of or injury to any person or persons or out of any damage to property, or resulting from the production, manufacture, sale, use, lease, consumption or advertisement of the Licensed Products arising from any obligation of the Licensee hereunder.

17.2 The Licensee shall obtain and carry in full force and effect commercial general liability insurance which shall protect the Licensee and the Licensor with respect to events covered by Section 17.1 herein. Such insurance shall be written by a reputable insurance company domiciled within the United States and having an A. M. Best rating of AX or better, shall list the Licensor as an additional insured thereunder, shall be endorsed to include product liability coverage and shall require thirty (30) days written notice to be given to the Licensor prior to any cancellation or material change thereof. The limits of such insurance shall not be less than Two Million Dollars ($2,000,000) per occurrence with an aggregate of Two Million Dollars ($2,000,000) combined for bodily injury, including death, and for property damage. An umbrella or excess liability policy may be used in conjunction with commercial general liability insurance to satisfy required limits. The Licensee shall provide the Licensor with Certificates of Insurance evidencing the same.

17.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, THE LICENSOR MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY THE LICENSOR THAT THE PRACTICE BY THE LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL THE LICENSOR BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER THE LICENSOR SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY.

17.4 THE LICENSOR MAKES NO REPRESENTATION OR WARRANTY OF ANY KIND WHATSOEVER, EITHER EXPRESS OR IMPLIED, TO THE LICENSEE, OR ANY SUBLICENSEE, OR ANY CUSTOMER OF THE LICENSEE OR ANY SUBLICENSEE, AS TO THE ABILITY OF THE LICENSEE OR SUBLICENSEE OR CUSTOMER TO UNDERSTAND OR UTILIZE THE LICENSED TECHNOLOGY OR THE LICENSED PATENTS, OR THAT THE PRACTICE OF THE LICENSED TECHNOLOGY OR THE LICENSED PATENTS WILL ACHIEVE ANY PARTICULAR RESULTS.

18. Notices

All notices, communications, and remittances shall be sent to the Licensor at:

Miami University
501 E High St
Oxford, OH 45065
USA
Attention: Vice President for Research and Innovation

and to the Licensee at:

____________________________________________

____________________________________________

____________________________________________

____________________________________________

____________________________________________

by first-class mail, postage prepaid, or by facsimile transmission, confirmed within three (3) days by first-class mail, postage prepaid, addressed as set forth above, provided that either party may from time to time notify the other party of a different address to which all notices, communications or remittances shall thereafter be addressed. Notice shall be deemed to have been given as of the date of its deposit with the United States Postal Service.

 

19. Export License

This License Agreement is subject to United States laws and regulations controlling the export of technical data, computer software, laboratory prototypes, and all other export controlled commodities. These laws include, but are not limited to, the Arms Export Control Act and the Export Administration Act as they may be amended. All rights granted by this License Agreement are contingent upon compliance with these laws and regulations. The Licensee shall not, directly or indirectly, export any export controlled commodities, which are subject to this License Agreement, unless the required authorization and/or license is obtained from the proper government agency(ies) prior to export. By granting rights in this License Agreement, the Licensor does not represent that export authorization or an export license will not be necessary or, if necessary, that such authorization or export license will be granted.

 

 20. Publicity and Patent Marking

Neither party shall utilize the name of the other party, or the name of any employee of the other party, in its literature or advertisements, except upon express written consent of the other party, provided, however, that the Licensee shall place an appropriate patent notice on the Licensed Products. The Licensee shall not use the name, mark, or trade name of the Licensor or any name or likeness of any employee of the Licensor or the name of any inventor of the Licensed Patents, except upon written consent of the Licensor for each instance.

  

21. Governing Law and Severability

This License Agreement shall be governed as to the formation, interpretation, and validity thereof by the laws of the State of Ohio. If any provision of this License Agreement is determined to be invalid or unenforceable for any reason whatsoever, the remainder of this License Agreement shall be enforced to the extent possible, and the offending provision shall be treated as though not a part of this License Agreement.

 

22. Entire Agreement

This License Agreement sets forth the entire agreement and understanding between the parties hereto with respect to the subject matter hereof, and supersedes all previous agreements, negotiations, commitments, and writings, if any, between the parties hereto relating thereto. This License Agreement may not be changed except by an amendment in writing subsequent to the date hereof and signed by a duly authorized officer or representative of the parties hereto to be bound thereby.

 

23. Arbitration

All disputes, controversies or differences arising between the parties hereto in connection with this License Agreement or a breach thereof which cannot be solved by the mutual endeavors of the parties hereto shall be referred to and settled by arbitration in accordance with the Rules of the American Arbitration Association, provided, however, that the foregoing provisions of this Section 23 shall not apply to the following:

(a) the payment of one half (1/2) of any sublicense issue fee or other consideration due under Section 2.5 hereof;

(b) the payment of the License Fee under Section 5 hereof;

(c) the payment of earned royalties or Annual Minimum Royalty Payments pursuant to Sections 6 and 7 hereof; and

(d) the payment of late fees and interest pursuant to Section 8.5 hereof.

Three arbitrators, chosen according to the Rules, shall be used. Arbitration shall be conducted in Dayton, Ohio and any award rendered shall be final and binding upon both parties and shall be enforceable by a court of competent jurisdiction.

 

24. Patent Prosecution

24.1 The Licensor shall apply for, seek prompt issuance of, and/or maintain during the term of this License Agreement the Licensed Patents in the United States and in the foreign countries listed in Schedule A attached hereto. Schedule A may be amended by verbal agreement of both parties, such agreement to be confirmed in writing within ten (10) days. The prosecution, filing, and maintenance of all Licensed Patents and applications shall be the primary responsibility of the Licensor; provided, however, the Licensee shall have reasonable opportunities to advise the Licensor and shall cooperate with the Licensor in such prosecution, filing and maintenance.

24.2 Payment of all fees and costs relating to the filing, prosecution, and maintenance of the Licensed Patents incurred by the Licensor after the Effective Date shall be the responsibility of the Licensee. If the Licensee elects not to bear the cost of preparing and filing any patent application in the United States or in any foreign country, or decides to discontinue the financial support of the prosecution or maintenance of any patent application or patent, the Licensee shall give the Licensor timely written notice thereof, and the Licensor shall then be free to file or to continue the prosecution or maintenance of any such application, and to maintain any patent issuing thereon in the U.S. and in any foreign country, at no further expense to the Licensee, and the Licensor shall have the right to dispose of such patent applications and patents as it chooses and without further obligation to the Licensee with respect to such patent applications or patents, and such patent applications or patents shall be deleted from the scope of this License Agreement. 

 

IN WITNESS WHEREOF, the parties hereto have executed this License Agreement on the date(s) indicated below, to be effective as of the latest such date. 

 

Miami University
Licensor

 

By __________________________________ (signature)

Name ________________________________

Title _________________________________

Date _________________________________

 

 

____________________________________
Licensee

 

By __________________________________ (signature)

Name ________________________________

Title _________________________________

Date _________________________________

 

 

 

 

Schedule A
Licensed Patents