Standard Licensing Agreement Template
Standard Licensing Agreement Template
This Exclusive License Agreement (the “Agreement”) is made this _________ day of
_______, 20__ (the “Effective Date”) by and between the Ohio State Innovation Foundation,
with an address at 1524 North High Street, Columbus, OH 43201 (hereinafter, “OSIF”) and
[LICENSEE NAME], with an address at _________________ (hereinafter, “Licensee”);
collectively, “Parties”, or singly, “Party”.
WHEREAS, OSIF, the technology transfer function for The Ohio State University
(“OSU”), owns, controls or has the right to license the Licensed Subject Matter;
WHEREAS, OSIF desires to have the Licensed Subject Matter developed and used
for the benefit of the public; and
WHEREAS, Licensee desires to license the Licensed Subject Matter to develop and
commercialize Licensed Products under the terms and conditions of this Agreement.
1. Definitions.
“Affiliate” means any entity that: (a) directly or indirectly owns or controls; (b) is owned or
controlled by; or (c) is under common ownership or control with another entity; where
“ownership” and “control” mean: (i) possession, or the right to possession, of at least fifty
percent (50%) of the voting stock of the entity; (ii) the power to direct the management and
policies of the entity; (iii) the power to appoint or remove a majority of the board of directors
of the entity; or (iv) the right to receive fifty percent (50%) or more of the profits or earnings
of the entity. While an entity is entitled to the benefits of an Affiliate under this Agreement
for only the period of time the entity qualifies as an Affiliate under this definition, all
obligations under this Agreement that accrued to the entity while an Affiliate shall survive
until fulfilled even though the entity no longer qualifies as an Affiliate.
“Contract Period” means each of the three-month periods ending on March 31, June 30,
September 30, and December 31 of each Contract Year.
“Designee” means (i) OSIF or (ii) any entity to which any of OSIF’s rights under Section 3
have been assigned, including to any Affiliate of OSIF.
“Equity Financing” means a cash investment in exchange for any equity securities or
securities exchangeable or convertible into equity securities including, without limitation,
any capital stock (common or preferred) in a corporation; membership units, shares, or
interests in a limited liability company; or partnership interests or shares of a limited
partnership.
“Fully-Diluted” means (i) the number of shares of capital stock of Licensee outstanding,
assuming conversion of all issued and outstanding securities convertible or exchangeable
into capital stock of Licensee, and the exercise of all then outstanding options, warrants and
other rights to acquire capital stock of Licensee, whether or not then exercisable,
exchangeable, or convertible; and (ii) the number of shares of capital stock of Licensee that
have been, or in the future may be, authorized or reserved for issuance or award under
Licensee’s stock option plan pool or other equity compensation plan.
“Government” means any agency, department or other unit of the United States of
America or the State of Ohio.
“Licensed Product” means any product or process that: (a) is claimed in whole or in part
by the Patent Rights and/or whose manufacture or use is claimed in whole or in part by the
Patent Rights; and/or (b) is itself, or whose development, manufacture, use, sale or
importation, uses, incorporates, is made with and/or is or was created or derived from any
Technology Rights.
“Net Sales” means the gross amount of consideration received by Licensee, Affiliates,
and/or Sublicensees for Licensed Products sold, leased, transferred, used, performed or
otherwise provided, less the amount specifically identified on the invoice for the following
items directly attributable to the Licensed Products and borne by Licensee, Affiliates, or
Sublicensees as the provider: (a) discounts and rebates granted; (b) sales, value added, use
and other taxes and government charges, including import and export duties, but excluding
income taxes; (c) freight, transport, packing and transit insurance charges; and (d) amounts
refunded, allowed or credited due to rejections or returns, but not exceeding the original
invoiced amount. Net Sales on Licensed Products transferred as part of a non-cash exchange
or where the gross amount is not in immediately available funds shall be calculated at the
average amount invoiced to third parties for such Licensed Products in the same country in
the Contract Period. If there is no average amount, then OSIF shall select another
reasonable benchmark.
development; and (e) any other property, remuneration or value given or exchanged for a
Sublicense Agreement regardless of how any party characterizes such consideration.
“Patent Rights” means OSIF’s rights in all: (a) patents and/or patent applications listed in
Appendix 1; (b) patent applications that claim priority thereto, including all divisionals,
continuations and continuations-in-part (but only to the extent of the subject matter that is
fully disclosed and enabled by (a) to satisfy 35 U.S.C. §112); (c) patents issuing on (a) and/or
(b); and (d) reissues, reexaminations, extensions and supplementary protection certificates
referencing any of the foregoing.
“Payment Deadline” means each day that is thirty (30) days after the last day of any
particular Contract Period.
“Sublicensee” means any third party, including an Affiliate, with a Sublicense Agreement.
“Technology Rights” means OSIF’s rights in unpatented subject matter, data (excluding
protected health information as defined in the Health Insurance Portability and
Accountability Act of 1996, codified as 42 U.S.C. 1320d or other personal protected
information), and tangible materials, including Confidential Information, that are: (a)
directly related to or disclosed in the Patent Rights or the Tech ID(s) listed in Appendix 1;
(b) within the Field of Use; and (c) created at OSU before the Effective Date by inventors
who are named on the Patent Rights existing as of the Effective Date or by innovators listed
on such Tech ID(s).
2.1 Grant. Subject to the terms and conditions of this Agreement and Licensee’s
compliance therewith, OSIF grants and Licensee accepts a non-transferable, except
as provided in Section 15, and royalty-bearing:
(a) exclusive license under Patent Rights in the Field of Use in the Territory to
make, have made, use, sell, offer for sale and import Licensed Product in the
Field of Use in the Territory; and
(b) non-exclusive license in the Field of Use in the Territory to use Technology
Rights to develop and make Licensed Products in the Field of Use in the
Territory.
On behalf of itself and OSU, OSIF reserves the right to practice, have practiced and
transfer the Licensed Subject Matter for teaching, research, education, public
service, clinical and other research-related purposes and to publish in connection
therewith, including to grant rights to, and transfer material embodiments of, the
Licensed Subject Matter to OSU, other academic institutions, non-profit research
institutions and governmental entities for these purposes.
2.2 Sublicensing. Subject to the terms and conditions of this Agreement and
Licensee’s and Sublicensee’s compliance therewith, Licensee may grant Sublicense
Agreements under the Licensed Subject Matter provided:
(a) The Sublicense Agreement: (i) is in writing; (ii) has restrictions consistent with
and terms that do not exceed the scope of rights granted to Licensee hereunder;
(iii) states OSIF is a third party beneficiary thereunder; and (iv) includes a right
of termination by Licensee in the event that Sublicensee acts in any manner that
would constitute a breach of this Agreement if such action or inaction were that
of Licensee. Notwithstanding Section 2.2(a)(ii), unless OSIF has provided prior
written consent, no Sublicense Agreement shall be transferable, including to
permit a Sublicensee to grant a further Sublicense Agreement.
(b) Licensee shall deliver to OSIF a copy of each Sublicense Agreement granted and
all modifications or terminations thereof, within thirty (30) days following the
applicable execution, modification or termination.
2.3 Government Rights. Licensee understands that Licensed Subject Matter may
have been conceived or first actually reduced to practice, or during the Term may
be first actually reduced to practice, under a funding agreement with a Government
and, if so, that Government has certain rights relative thereto. This Agreement is
limited by and made subject to the Government’s rights under any such agreement
Licensee: [Company Name] Exclusive License Template
Licensor: Ohio State Innovation Foundation Page 4 of 21
All provisions are subject to addition, elimination or revision by either Party. All provisions, communications and
discussions are tentative until execution of a written agreement by both Parties.
and under any applicable Government’s law or regulation, including 35 U.S.C. §200
et seq. (“Bayh-Dole Act”). To the extent that there is a conflict between any such
agreement, such applicable law or regulation and this Agreement, the terms and
conditions of such Government agreement, and/or applicable law or regulation,
shall prevail. Licensee agrees to comply and permit OSIF to comply with the Bayh-
Dole Act, including to provide the reporting required, and unless waived pursuant
to the Bayh-Dole Act to substantially manufacture Licensed Products and products
produced through the use of Licensed Products in the United States.
If any of the obligations under this Section 2.4 are not fulfilled, OSIF may treat such
failure as a breach in accordance with Section 8.3(b).
2.5 No Use of OSU Resources. Licensee acknowledges that unless OSU executes a
sponsored research agreement with Licensee, Licensee shall not satisfy its diligence
obligations with work conducted at OSU. Licensee agrees not to develop Licensed
Products at OSU, or absent a separate agreement executed by the Parties,
otherwise benefit from any development of Licensed Products performed by OSU.
The Parties shall evaluate the need for, and implement when necessary, a conflict
of interest management plan for overseeing Licensee’s activities related to the
licensed rights in accordance with OSU's conflict of interest policies and procedures.
3. Compensation.
3.1 License Fee. Licensee shall pay to OSIF a non-refundable, up-front license fee in
the amount of __________________ dollars ($___) (“License Fee”) on/within _______
days of the Effective Date. The License Fee shall not be credited against any other
amounts due under this Agreement.
3.2 Royalties. By each Payment Deadline, Licensee shall pay OSIF non-refundable
and non-creditable running royalties as follows:
_____ percent (__%) of Net Sales of Licensed Products defined in (a) of the definition
of Licensed Products; and
Licensee: [Company Name] Exclusive License Template
Licensor: Ohio State Innovation Foundation Page 5 of 21
All provisions are subject to addition, elimination or revision by either Party. All provisions, communications and
discussions are tentative until execution of a written agreement by both Parties.
_____ percent (__%) of Net Sales of Licensed Products defined in (b) of the definition
of Licensed Products;
(collectively the “Royalties”). For clarity, if more than one royalty rate applies to a
given Net Sale, only one rate will be used to calculate Royalties and that rate will
be the higher of the rates.
Payment of the Minimum Annual Royalty may be credited toward Royalties due in
the Contract Year to which the payment corresponds.
3.4 Milestone Fees. Licensee shall pay OSIF the following amounts within (XX) days
of achievement of each corresponding Milestone according to the following
(collectively the “Milestone Fees”):
3.5 Sublicense Fees. For clarity, Net Sales by Sublicensees shall be subject to
royalties payable to OSIF as provided in Section 3.2. Also, within thirty (30) days
of receiving any Non-Royalty Sublicensing Consideration, Licensee shall pay to
OSIF an amount equal to the percentage of all Non-Royalty Sublicensing
Consideration as follows (collectively the “Sublicensee Fees”):
3.6 Equity Consideration. On the Effective Date, Licensee shall issue to Designee,
equity securities in the form of [interests/shares] of [common/preferred] stock
(“Equity Securities”) constituting [_______] percent (___%) of the ownership of
Licensee on a Fully-Diluted basis (such fully-diluted percentage, the “Applicable
Percentage”). Such Equity Securities shall be delivered to Designee in a certificate,
affidavit, or other applicable form duly signed by the Licensee or, if a member-
managed limited liability company, by the members of Licensee and issued in
Designee’s name. All shares issued to Designee under this Section 3.6 will be
Licensee: [Company Name] Exclusive License Template
Licensor: Ohio State Innovation Foundation Page 6 of 21
All provisions are subject to addition, elimination or revision by either Party. All provisions, communications and
discussions are tentative until execution of a written agreement by both Parties.
At least ten (10) business days prior to the Effective Date, Licensee shall have
delivered to OSIF all applicable documents to which Designee is required to be a
party in order to be issued the Equity Securities or to which Designee shall be bound
as a holder of Equity Securities. Such documents shall not be amended or modified
prior to the execution by Designee.
A cash investment in exchange for convertible securities shall not contribute to the
Equity Financing Threshold at the time of issuance of such convertible securities,
but instead shall contribute to the Equity Financing Threshold only at the time that
(i) the convertible securities (other than convertible notes) are convertible or
exchangeable into Equity Securities; and, (ii) the convertible notes are converted
into Equity Securities.
For clarity, in the event the Licensee receives Equity Financing in a certain
transaction, a portion of which (“Applicable Portion”), when added to the prior
aggregate amount of Equity Financing received by Licensee, brings the total
amount of Equity Financing received by the Licensee up to the Equity Financing
Threshold and a portion of which, when added to the aggregate amount of Equity
Financing received by Licensee (inclusive of the Applicable Portion), brings the total
amount of Equity Financing receive by the Licensee above the Equity Financing
Threshold (“Excess Portion”), the anti-dilution provision in this Section 3.7 shall
only apply to the Applicable Portion and not to the Excess Portion.
3.8 Registration Rights. In the event of a public offering, Designee shall be entitled
to have its Equity Securities registered subject only to “lock-up” provisions no more
restrictive than those binding any other pre-offering holder of Licensee’s Equity
Securities. Designee’s Equity Securities and related rights shall in no event be
subject to revocation, refund or nullification for any reason.
3.9 Observation Right. OSIF, at its sole expense and discretion, may appoint one
representative ("Observer") to attend and participate in all meetings of the
Licensee’s board of directors or board of managers or other governing body, as the
case may be, (the “Board”) in a non-voting observer capacity. The Observer shall be
entitled to receive copies of all notices, minutes, written consents, and other
materials that the Licensee provides to members of the Board ("Board Materials")
at the same time that Licensee provides such Board Materials to members of the
Board.
3.11 Co-Sale Rights (Tag-Along Rights). Designee shall have the right to be party to
any definitive agreement among Licensee and any of its equity holders that governs
co-sale rights and will be entitled to all co-sale rights provided to any equity holder
thereunder. Additionally, more than fifty percent (50%) of the Licensee’s
outstanding equity securities, or more than fifty percent (50%) of the ownership of
Licensee, cannot be transferred, whether in one or a series of transactions, unless
Designee is a party to such transaction or has had the right to sell its Equity
Securities in the same proportion on substantially the same terms and conditions,
but subject to the other terms in this Section 3.11; provided, however, that this
Section 3.11 shall not apply (a) in the case of an equity holder that is an entity, upon
a transfer to its stockholders, members, partners or other equity holders, or (b) in
the case of an equity holder that is a natural person, upon a transfer of equity
securities by such equity holder made for bona fide estate planning purposes, either
during his or her lifetime or on death by will or intestacy to his or her spouse, child
(natural or adopted), or any other direct lineal descendant of such equity holder (or
his or her spouse) (all of the foregoing collectively referred to as “family members”),
or any custodian or trustee of any trust, partnership or limited liability company
for the benefit of, or the ownership interests of which are owned wholly by such
equity holder or any such family members. Designee (i) shall not be required to
give disproportionately greater or more onerous representations, warranties,
indemnities or covenants than the selling equity holder(s), (ii) shall only make
representations, warranties, indemnities and covenants severally and in its
capacity as an equity holder concerning its valid equity ownership, free of all liens,
and its authority, power and right to enter into and consummate such purchase and
sale without violating any other agreements to which it is a party or its assets are
bound, and (iii) shall not be obligated to bear more than its pro rata share of any
expenses or any indemnification liability up to the net cash proceeds received by
such equity holder(s) in connection with the sale.
For purposes of this Section 3.12, a “Related Party Transaction” means any
agreement or arrangement pursuant to which Licensee directly or indirectly
through intermediaries authorizes a Related Party to: (a) develop, manufacture,
offer for sale, sell , lease, transfer, import and/or otherwise provide a Licensed
Product; or (b) practice the Licensed Subject Matter; regardless of whether the
agreement or arrangement requires or is captioned as a license or sublicense under
the Licensed Subject Matter.
For purposes of this Section 3.12, “Related Party” means any one or more
investors, officers, employees or directors of Licensee or any entity in which any
such investor, officer, employee or director (or any of their respective Affiliates) has
a direct or indirect financial interest of twenty percent (20%) or more. Nothing in
this Section 3.12 shall be interpreted to diminish the obligations of Licensee as set
forth in Sections 3.7, 3.8, 3.9, 3.10 and 3.11.
4.1 Reports and Plans. Utilizing the report forms in Appendices 2 and 3, incorporated
herein by reference, Licensee shall provide to the attention of OSIF’s payment and
reporting contact stated in Appendix 4: (a) an annual written progress report by
January 31 of each Contract Year; (b) a payment and royalty report each Contract
Period by the Payment Deadline; (c) annual funding and employment survey. If no
payments are due in any Contract Period, then Licensee shall submit the report so
stating. The obligations in this Section 4 are in addition to and not in lieu of the
other reporting obligations in this Agreement.
4.2 Financial Statements. The capitalization table set forth as Appendix 5 shows all
outstanding, committed and reserved equity securities and convertible notes of
Licensee as of the date hereof on a Fully-Diluted basis. Upon the consummation of
any Equity Financing or at OSIF’s request, Licensee shall provide an updated
capitalization table along with a certification from the Licensee’s chief financial
officer certifying the tables’ completeness and accuracy and identifying any holders
of equity securities who are employees of OSU. Additionally, so long as OSIF or
OSIF’s Designee owns any equity in the Licensee, OSIF shall be entitled to receive
all financial statements, budgets and business plans of Licensee that Licensee
provides to any other shareholder, member, lender or prospective investor of
Licensee, at the same time and in the same format as provided to such other parties.
Without limitation to Section 5.5, OSIF shall be entitled to access such other
financial information and books and records of Licensee as OSIF may reasonably
request from time to time and in any event, annually.
5.1 Payments. All amounts referred to in this Agreement are expressed in U.S. dollars
without deductions for taxes, assessments, fees, or charges of any kind. All
payments to OSIF shall be made in U.S. dollars by check or wire transfer (Licensee
to pay all wire or other transfer fees) payable to Ohio State Innovation Foundation
as stated in Appendix 4. Licensee may not make any tax withholdings from
payments to OSIF.
5.2 Sales Outside the U.S. If any currency conversion shall be required in connection
with the calculation of payments hereunder, such conversion shall be made using
the rate used by Licensee for its financial reporting purposes in accordance with
U.S. Generally Accepted Accounting Principles (or foreign equivalent).
5.3 Late Payments. Amounts that are not paid when due shall accrue a late charge
from the due date until payment is received by OSIF, at a rate equal to 1.5% per
month (or the maximum allowed by law, if less). Acceptance of late payments does
not negate or waive any other right or remedy to which OSIF may be entitled.
5.4 Records. For a period of six (6) years after the Contract Period to which the records
pertain, Licensee agrees that it, Affiliates and Sublicensees shall keep complete and
accurate records pertaining to any consideration relating to this Agreement and/or
Sublicense Agreements, including Net Sales, Royalty payment calculations,
Milestone Fees, Equity Financing and Non-Royalty Sublicensing Consideration, in
sufficient detail to enable payments or securities due hereunder to be determined
and audited.
6.1 Past Patent Expenses. Within thirty (30) days after Licensee’s receipt of invoice,
Licensee shall reimburse OSIF for all costs and expenses associated with the Patent
Rights incurred prior to the Effective Date (the “Past Patent Expenses”). Past
Patent Expenses are presently estimated to total [must get total from accounting
and attach schedule]. Licensee will pay OSIF for Past Patent Expenses according
to the following schedule:
6.2 Ongoing Patent Expenses. Licensee shall pay all costs and expenses associated
with the Patent Rights on or after the Effective Date within thirty (30) days after
Licensee’s receipt of each invoice. Notwithstanding the foregoing, OSIF may require
Licensee to pre-pay costs and expenses predicted for certain Patent Rights upon
written request, including for nationalization of the Patent Rights. Without
limitation, failure to strictly comply with Sections 6.1 or 6.2 shall be considered a
payment default under Section 8.3(a).
6.3 Responsibility & Coordination. In its discretion, OSIF shall control the
preparation, prosecution, defense and maintenance of the Patent Rights using
Licensee: [Company Name] Exclusive License Template
Licensor: Ohio State Innovation Foundation Page 10 of 21
All provisions are subject to addition, elimination or revision by either Party. All provisions, communications and
discussions are tentative until execution of a written agreement by both Parties.
counsel of its choosing. So long as Licensee is not in default of Section 6.2, OSIF
shall instruct such patent counsel to provide copies of all material documents it
receives from or submits to patent offices regarding the Patent Rights in the Field
of Use and Territory and OSIF shall reasonably consider Licensee’s comments when
timely provided. OSIF shall pay under large entity designation unless the Licensee
and each of its Sublicensees are entitled to claim small entity designation with the
USPTO and Licensee has provided OSIF written notice thereof. Licensee shall
promptly notify OSIF upon loss of entitlement to small entity designation and,
without limitation, pay all costs and expenses associated therewith.
6.4 Foreign Filings. In addition to the U.S., the Patent Rights shall, subject to
applicable bar dates and Licensee’s compliance with Section 6.2, be pursued in such
foreign countries as Licensee so designates in writing to OSIF in sufficient time to
reasonably enable the preparation of such additional filings (in no event less than
thirty (30) days prior to any deadline), and in those foreign countries in which OSIF
has filed applications prior to the Effective Date. If Licensee does not choose to
pursue patent rights in a particular foreign country and OSIF chooses to do so,
Licensee shall so notify OSIF, and thereafter said patent application or patent shall
no longer be included in the Licensed Subject Matter and Licensee shall have no
further rights thereto.
6.5 Withdrawal from Paying Patent Costs. If at any time Licensee wishes to cease
paying for any costs for a particular Patent Right, including for patent prosecution
in a particular jurisdiction, Licensee must give OSIF at least ninety (90) days prior
written notice and Licensee shall continue to be obligated under Section 6.2 for costs
and expenses incurred during said notice period. Thereafter, said patent
application or patent shall no longer be included in the Licensed Subject Matter and
Licensee shall have no further rights thereto.
6.6 Challenge. In the event Licensee, its Affiliate and/or any Sublicensee intends to
challenge the validity or enforceability of any of the Patent Rights, whether through
a declaratory judgment action, opposition, post-grant proceeding or otherwise, then
Licensee shall: (a) give OSIF ninety (90) days prior written notice; (b) continue to
make all payments due hereunder directly to OSIF, provided, however, payments
due under this Agreement (other than those for reimbursement of costs) shall be
doubled for the remainder of the Term; and (c) have no right to pay into escrow or
other account any amounts due OSIF. For purposes of clarity, no payment made to
OSIF is refundable or may be offset, including any amounts paid under this
Agreement prior to or during the period of the challenge, even if the challenge is
successful or it is otherwise determined that the Patent Rights are invalid or
unenforceable.
6.7 Paid In Capital. When Licensee has obtained paid in capital (i.e., cash provided
by investors or their agents to purchase equity securities from Licensee) or grant
funding of at least two hundred fifty thousand dollars ($250,000), Licensee will
allocate a minimum of five percent (5%) of any additional paid in capital or grant
funding to pay first, toward any outstanding patent costs and expenses at the time
such paid in capital or grant funding is received by Licensee, and second, toward
any patent costs and expenses incurred after the time such paid in capital or grant
funding is received by Licensee. The foregoing is neither intended to nor does waive
or excuse any failure to strictly comply with Sections 6.1 or 6.2 and without
limitation, failure to strictly comply with Sections 6.1 or 6.2 shall be considered a
payment default under Section 8.3(a).
7.1 Enforcement. OSIF intends to protect the Patent Rights against infringers or
otherwise act to eliminate infringement, when, in OSIF’s sole judgment, such action
may be necessary, proper, and justified and makes reasonable business sense
considering all factors. In the event that Licensee or its Sublicensee(s) believe there
is infringement of any Patent Rights under this Agreement which is to its substantial
detriment, Licensee will provide OSIF with notification and reasonable evidence of
such infringement. Upon request by OSIF, Licensee will provide OSIF with such
assistance and information as may be useful to OSIF in connection with OSIF’s
taking such action (if the cause of action arose during the term of this Agreement and
OSIF reimburses Licensee for Licensee’s reasonable out-of-pocket expenses). For
clarity, in no event will Licensee or any Sublicensee have the right to demand that
OSIF initiate or join in any suit for infringement.
7.2 Cooperation between OSIF and Licensee. In any infringement suit or dispute
regarding the Patent Rights, the Parties agree to cooperate fully with each other in a
reasonable manner. In the event OSIF receives Net Assertion Recovery, OSIF shall
distribute to Licensee _[same percentage as royalty rate set forth in Section 3.2]_____
of Net Assertion Recovery within 90 days of receiving Net Assertion Recovery.
(a) “Net Assertion Recovery” means all monetary recovery actually received by OSIF
from assertion and/or enforcement (including enforcement through litigation and
any other legal means deemed appropriate by OSIF) of Patent Rights against any
infringement or potential infringement by any third party and any settlement
arising therefrom, less all Patent Assertion Expenses. In the event of a merger,
acquisition or other business combination of Licensee by a third party in connection
with or as a consequence of OSIF’s assertion and/or enforcement activities under
Section 9.3(a), the Net Assertion Recovery shall be determined by a third party
valuation expert mutually acceptable to each of OSIF and Licensee within 60 days
of such merger, acquisition or other business combination of Licensee. The parties
agree to provide all information reasonably necessary to perform the subject
valuation upon request of such expert.
(b) “Patent Assertion Expenses” means all expenses and fees, including, but not limited
to, expenses for attorney time, staff time, printing costs, discovery costs, travel
costs, research database fees, and all other costs associated with legal
representation, litigation funding, and third party expert fees, incurred by, for, or
on behalf of OSIF to (1) evaluate infringement or potential infringement of Patent
Rights by any third party; (2) assert and/or enforce (including enforcement through
litigation and any other legal means deemed appropriate by Licensor) Patent Rights
against any infringement or potential infringement by any third party; and (3) settle
any disputes arising from activities described in (1) and (2).
8.1 Term. Unless earlier terminated as provided herein, the term of this Agreement
shall commence on the Effective Date and continue until the longer of: (a) the last
to expire of the Patent Rights; or (b) twenty (20) years (“Term”).
8.2 Termination by Licensee. Licensee, at its option, may terminate this Agreement
by providing OSIF written notice stating its reason for termination, and such
Licensee: [Company Name] Exclusive License Template
Licensor: Ohio State Innovation Foundation Page 12 of 21
All provisions are subject to addition, elimination or revision by either Party. All provisions, communications and
discussions are tentative until execution of a written agreement by both Parties.
termination shall become effective ninety (90) days after receipt of such notice by
OSIF.
8.3 Termination by OSIF. OSIF, at its option, may immediately terminate this
Agreement, in whole or in part, upon delivery of written notice to Licensee of OSIF’s
decision to terminate, if any of the following occur:
(a) Licensee has failed to make any payment when due under this Agreement, and
does not make the required payment within ten (10) days after delivery of
written notice thereof from OSIF;
(b) Licensee is in breach of any non-payment provision of this Agreement, and does
not cure such breach within thirty (30) days after delivery of written notice from
OSIF; or
(c) To the extent not prohibited by applicable law, Licensee or its Affiliate or
Sublicensee initiates any proceeding or action to challenge the validity,
enforceability, ownership or scope of one or more of the Licensed Subject Matter,
or assist a third party in pursuing such a proceeding or action.
(a) Immediately unless prohibited by applicable law, without the necessity of any
action being taken by OSIF or Licensee if: (i) Licensee files a bankruptcy action
or becomes bankrupt or insolvent; (ii) Licensee’s Board of Directors 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 Licensee and OSIF.
(b) Is terminated, then all rights granted under this Agreement immediately revert
to OSIF, and Licensee and any Sublicensee that is not in compliance with this
Agreement and its Sublicense Agreement, shall cease to practice the Licensed
Subject Matter, including making, having made, distributing, having
distributed, using, providing, selling, offering to sell, leasing, loaning and
importing any Licensed Products after the effective date of termination;
(c) Is terminated, then within forty-five days thereof, Licensee shall provide OSIF
with a copy of all data, including clinical data, owned or controlled by Licensee
and/or Sublicensee(s) relating to each Licensed Product, and without further
consideration Licensee hereby grants OSIF the right to access use and refer to,
and have accessed, have used and to have referred to the foregoing, including
Licensee: [Company Name] Exclusive License Template
Licensor: Ohio State Innovation Foundation Page 13 of 21
All provisions are subject to addition, elimination or revision by either Party. All provisions, communications and
discussions are tentative until execution of a written agreement by both Parties.
(d) Is terminated or expires, then Licensee immediately shall tender payment of all
accrued payments due to OSIF as of the effective date of termination or
expiration, including payment of all unreimbursed costs and expenses incurred
under Section 6 prior to the effective date of termination or expiration upon
receipt of invoice therefor, and render a final report covering the subject matter
described in Section 4; in each case regardless of whether otherwise due
hereunder;
(f) Is terminated or expires, then this provision Section 8.5(f) and the provisions of
Sections 1 (Definitions), payment obligations in 7.1 (Licensee’s Enforcement
Rights), 7.3 (Cooperation between OSIF and Licensee), 9 (Confidentiality), 11.2
(OSIF Disclaimers), 12 (Limit of Liability), 13 (Indemnification Obligation), 14
(Insurance Requirements), 17 (Use of Name), 18 (Notices), and 19 (General
Provisions) shall survive any termination or expiration of this Agreement until
their purposes are fulfilled. In addition, the provisions of Sections 3
(Compensation), 4 (Reports and Plans), 5 (Payment, Records and Audits), 6
(Intellectual Property Management) and 8 (Term and Termination) shall survive
with respect to all activities and payment obligations accruing prior to the
termination or expiration of this Agreement. In addition the termination or
expiration of this Agreement has no effect on the equity issued to OSIF or
Designee.
9. Confidentiality.
(b) To the extent it is reasonably necessary to fulfill its obligations or exercise its
rights under this Agreement, Licensee may disclose Confidential Information on
the condition that the party to whom it provides the Confidential Information
has agreed to terms and conditions of confidentiality and non-use at least as
stringent as those on Licensee herein. In no event shall Licensee or anyone
receiving Confidential Information from Licensee use Confidential Information
in a manner detrimental to OSIF, OSU or their respective rights.
(c) If Recipient is required by law, regulation, or court order to disclose any of the
Confidential Information, then it may do so provided it had promptly notified
Discloser and had reasonably assisted Discloser, if needed, for Discloser to try to
obtain a protective order or other remedy of Discloser’s election and expense.
9.4 Surviving Obligations. All Confidential Information of the other party shall be
returned or destruction certified at the end of the Term, at Discloser’s election,
provided that Recipient shall be permitted to retain one copy of the Confidential
Information in its legal function in order to verify its compliance hereunder and
electronic records maintained for archival purposes need not be destroyed. The
Parties’ confidentiality and non-use obligations under this Agreement shall survive
the expiration or termination of this Agreement, and shall continue for a period of
three (3) years thereafter.
9.5 Injunctive Relief. In addition to and not in lieu of any other rights or remedies,
Discloser may seek specific performance, injunctive and other equitable relief as a
remedy for any breach or threatened breach of this Section 9 without showing actual
monetary damages in connection therewith.
10. Export Compliance. Without limiting Section 11.3(c), Licensee shall observe all
applicable United States and foreign laws and regulations with respect to the research,
development, manufacture, marketing and transfer of Licensed Products and related
technical data, including, without limitation, the International Traffic in Arms
Regulations (ITAR) and the Export Administration Regulation and hereby represents
and covenants that Licensee: (a) is neither a national of, nor controlled by a national of,
any country to which the United States prohibits the export or re-export of goods,
services, or technology; (b) is not a person specifically designated as ineligible to export
from the United States or deal in U.S. origin goods, services, or technologies; (c) shall not
export or re-export, directly or indirectly, any goods, services, or technology to any
country or person (including juridical persons) to which the United States prohibits the
export of goods, technology or services; and (d) in the event that a United States
government license or authorization is required for an export or re-export of goods,
services, or technology (including technical information acquired from OSIF under this
Agreement and/or any products created by using such technical information or any part
thereof), shall obtain any necessary United States government license or other
authorization prior to undertaking the export or re-export. Without limitation, Licensee
shall require a provision in Sublicense Agreement, substantially similar to this Section
10, requiring that Sublicensees comply with all then-current applicable export laws and
regulations and other applicable laws and regulations.
11.1 OSIF Representations. Except for the rights, if any, of the Government, OSIF
represents and warrants to Licensee that to the knowledge of OSIF: (a) OSIF is the
owner or agent of the entire right, title, and interest in and to Patent Rights (other
than the right, title and interest of any joint owner); (b) OSIF has the right to grant
the license(s) hereunder; and, (c) OSIF has not knowingly granted and shall not
Licensee: [Company Name] Exclusive License Template
Licensor: Ohio State Innovation Foundation Page 15 of 21
All provisions are subject to addition, elimination or revision by either Party. All provisions, communications and
discussions are tentative until execution of a written agreement by both Parties.
knowingly grant licenses or other rights under the Patent Rights that are in conflict
with the terms and conditions in this Agreement.
11.3 Licensee Representation. Licensee represents and warrants that: (a) Licensee
has: (i) not been induced in any way by OSIF or its employees to enter into this
Agreement; (ii) been given an opportunity to conduct sufficient due diligence with
respect to all items and issues pertaining to this Agreement; (iii) adequate
knowledge and expertise to conduct the due diligence; and (iv) accepted all risks
inherent herein; (b) it is a duly organized and validly existing entity in good
standing under the laws of its jurisdiction of organization, and has all necessary
corporate or other appropriate power and authority to execute, deliver and perform
its obligations hereunder; (c) it shall comply with all applicable international,
national, or local laws and regulations in its performance under this Agreement,
including export control laws; (d) it shall diligently pursue the development,
manufacture, and sale of Licensed Products throughout the Term; and (e) it shall
continue to maintain throughout the Term and beyond insurance coverage as set
forth in Section 14.
13. Indemnification Obligation. Licensee agrees to hold harmless, defend and indemnify
OSIF, OSU, their respective Affiliates, and their respective officers, directors, employees,
Licensee: [Company Name] Exclusive License Template
Licensor: Ohio State Innovation Foundation Page 16 of 21
All provisions are subject to addition, elimination or revision by either Party. All provisions, communications and
discussions are tentative until execution of a written agreement by both Parties.
14. Insurance Requirements. Prior to any Licensed Product being used, including for the
purpose of obtaining regulatory approval, or offered for sale by Licensee or Sublicensee,
and for a period of five (5) years after this Agreement expires or is terminated, Licensee
shall, at its sole cost and expense, procure and maintain commercial general liability
insurance in commercially reasonable and appropriate amounts for the Licensed Product
to ensure its obligations under this Agreement. Licensee shall use commercially
reasonable efforts to have OSIF, OSU and their respective Affiliates, officers, directors
and employees named as additional insureds. Such commercial general liability
insurance shall provide, without limitation: (a) product liability coverage; (b) broad form
contractual liability coverage for Licensee’s indemnification under this Agreement; and
(c) coverage for abatement and/or litigation costs. Upon request by OSIF, Licensee shall
provide OSIF with written evidence of such insurance. Additionally, Licensee shall
provide OSIF with advance written notice of at least sixty (60) days prior to Licensee
cancelling, not renewing, or materially changing such insurance.
16. Patent Markings. Licensee agrees that all Licensed Products shall be marked as
permitted in accordance with each country’s patent marking laws, including Title 35,
U.S. Code, in the United States.
17. Use of Name. Licensee shall not use the name, trademarks or other marks of OSIF or
OSU without the advance written consent of OSIF and OSU. OSIF and OSU may use
Licensee’s name for annual reports, brochures, website and internal reports without
prior consent.
18. Notices. Any notice or other communication of the Parties required or permitted to be
given or made under this Agreement shall be in writing and shall be deemed effective on
the date received when sent in a manner that provides confirmation or acknowledgement
of delivery and received at the applicable address set forth in Appendix 4, incorporated
Licensee: [Company Name] Exclusive License Template
Licensor: Ohio State Innovation Foundation Page 17 of 21
All provisions are subject to addition, elimination or revision by either Party. All provisions, communications and
discussions are tentative until execution of a written agreement by both Parties.
herein by reference. Notices required under this Agreement may be delivered via E-mail
provided such notice is confirmed in writing as indicated. Late payment notices are
sufficiently delivered via E-mail only.
19.1 Binding Effect. This Agreement is binding upon the Parties hereto, their
respective executors, administrators, heirs, assigns and successors in interest and
inures to the benefit of the Parties and their permitted successors and assigns.
Conveyances made in contravention with the terms of this Agreement shall be null
and void.
19.2 Construction of Agreement. Both Parties agree that any ambiguity in this
Agreement shall not be construed more favorably toward one Party than the other
Party, regardless of which Party primarily drafted this Agreement. Headings are
for the convenience of the Parties and do not impart independent meaning to this
Agreement.
19.4 Registration of Licenses. Licensee agrees to register and give required notice
concerning this Agreement, at its expense, in each country where an obligation
exists under law to so register or give notice and shall reasonably consider OSIF’s
comments regarding redaction.
19.5 Governing Law; Jurisdiction. This Agreement shall be construed and enforced
in accordance with laws of the State of Ohio, without regard to choice of law and
conflicts of law principles. The Parties agree that any claim or cause of action
regarding this Agreement shall be brought in a court of competent jurisdiction in
Franklin County, Ohio and this is the Parties’ sole and exclusive process for
seeking a remedy for any and all claims and causes of action regarding this
Agreement that are permitted to be brought in Franklin County, Ohio. Licensee
waives any objection to the jurisdiction of the courts in Franklin County.
relationship and neither Party shall have the right or authority to obligate or bind
the other Party on its behalf. Nothing in this Agreement, express or implied, is
intended to confer any benefits, rights or remedies on any entity, other than the
Parties, OSU, and their permitted successors and assigns. However, if there is a
joint owner of any Patent Rights (other than Licensee), then Licensee hereby
agrees that the following provisions extend to the benefit of the co-owner identified
therein (excluding Licensee to the extent it is a co-owner) as if such co-owner was
identified in each reference to OSIF: the retained rights under Section 2.1 (Grant),
Section 2.3 (Government Rights); Section 6 (Intellectual Property Management);
Section 7 (Infringement and Litigation); Section 9 (Confidentiality); Section 11.3
(OSIF Disclaimers); Section 12 (Limit of Liability); Section 13 (Indemnification
Obligation); Section 14 (Insurance Requirements); Section 15 (Assignment);
Section 17 (Use of Name); and Section 19.8 (Third Party Beneficiaries).
19.9 Waiver. Neither Party shall be deemed to have waived any of its rights under this
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 this
Agreement shall operate as a waiver thereof.
19.10 Cross Default. In the event that Licensee is a party to any other agreement with
OSIF or OSU, a default by Licensee of this or any other agreement shall be deemed
a default under all other agreements with OSIF and OSU.
19.11 Entire Agreement. This Agreement constitutes the entire agreement between
the Parties regarding the subject matter hereof, and supersedes all prior written
or verbal agreements, representations and understandings relative to such
matters.
IN WITNESS WHEREOF, the Parties hereto have caused their duly authorized
representatives to execute this Agreement.
Appendix 1
Description of Licensed Subject Matter
Patent Rights
Technology Rights