AGREEMENT is made by and between the BOARD OF REGENTS (BOARD) OF THE
UNIVERSITY OF TEXAS SYSTEM, an agency of the State of Texas, whose address is
201 West 7th Street, Austin, Texas 78701, and ____________________________, a
____________ corporation with its principal place of business at
Board owns certain Technology Rights related to Licensed
Subject Matter, which were developed at The University of Texas (“University”),
a component institution of System.
Board desires to have the Licensed Subject Matter developed and
used for the benefit of Licensee, the inventor, Board, and the public as
outlined in the Intellectual Property Policy promulgated by the Board.
Licensee wishes to obtain a license from Board to practice
Licensed Subject Matter.
THEREFORE, in consideration of the mutual covenants and premises herein
contained, the parties hereto agree as follows:
1. EFFECTIVE DATE
agreement shall be effective as of _______________________ (the “Effective
Date”), subject to approval by Board.
used in this Agreement, the following terms shall have the meanings indicated:
AFFILIATE shall mean (1) any corporation or other noncorporate entity owning
directly, or indirectly controlling, at least fifty percent (50%) of the stock
normally entitled to vote for election of directors of LICENSEE, (2) any
corporation owned or directly controlled by LICENSEE through ownership of at
least fifty percent (50%) of the stock normally entitled to vote for election
of directors or any other entity actually controlled by LICENSEE, (3) any
corporate or noncorporate entity under common control with LICENSEE; provided,
however, that in the circumstance where the country of incorporation of such
owned or controlled corporation requires the maximum ownership by a foreign
entity be less than fifty percent (50%), the percentage of ownership required
to make such an entity an affiliate, shall be equal to the maximum percentage
of ownership permitted by such country.
LICENSED FIELD shall mean any use of the Biological Material(s) for research
purposes. The LICENSED FIELD specifically excludes any use of Biological
Material(s) which requires regulatory approval, including any in vitro
and in vivo diagnostic or therapeutic applications, and any in vivo
use for whatever purpose.
LICENSED PRODUCT shall mean any product SOLD within the LICENSED TERRITORY by
LICENSEE comprising LICENSED SUBJECT MATTER pursuant to this Agreement.
LICENSED SUBJECT MATTER shall mean inventions and discoveries considered by
BOARD to be proprietary know-how or TECHNOLOGY RIGHTS within LICENSED FIELD.
LICENSED TERRITORY shall mean worldwide.
NET SALES shall mean the gross revenue received by LICENSEE or an AFFILIATE
from the SALE of LICENSED PRODUCTS less sales and/or use taxes actually paid,
import and/or export duties actually paid, outbound transportation prepaid or
allowed, and amounts allowed or credited due to returns (not to exceed the
original billing or invoice amount).
SALE, SELL or SOLD shall mean the transfer or disposition of a LICENSED
PRODUCT for value to a party other than LICENSEE or an AFFILIATE.
TECHNOLOGY RIGHTS shall mean BOARD'S rights in [describe biological material,
and name of developer, etc.] ______________________________.
WARRANTY; SUPERIOR RIGHTS
Except for the rights, if any, of the Government of the United States, as set
forth below, BOARD represents and warrants its belief that it is the owner of
the entire right, title, and interest in and to LICENSED SUBJECT MATTER, and
that it has the sole right to grant licenses thereunder, and that it has not
knowingly granted licenses thereunder to any other entity that would restrict
rights granted hereunder except as stated herein.
LICENSEE acknowledges that UNIVERSITY has not carried out any patent or other
searches. In the event that any such infringement is alleged by third parties,
LICENSEE agrees to notify UNIVERSITY promptly. LICENSEE and UNIVERSITY agree
to investigate the situation fully and to collaborate in taking appropriate
action, including meeting with the third party in a settlement conference. Any
settlement reached with the third party must be agreeable to LICENSEE and
UNIVERSITY; however, neither party will unreasonably or arbitrarily withhold
approval of a settlement agreement. If LICENSEE is required to make payments
to such third party for infringement of the third party's patents, such
payments will be deducted from royalty payments due UNIVERSITY under Paragraph
5.1 up to but not to exceed fifty percent (50%) of the royalty payment due
UNIVERSITY. LICENSEE shall have the right to terminate the Agreement without
liability in the event that the sale of LICENSED SUBJECT MATTER infringes
third party intellectual property rights, and no reasonable accommodation is
LICENSEE understands that the LICENSED SUBJECT MATTER may have been developed
under a funding agreement with the Government of the United States of America
and, if so, that the Government may have certain rights relative thereto. This
Agreement is explicitly made subject to the Government's rights under any such
agreement and any applicable law or regulation. To the extent that there is a
conflict between any such agreement, applicable law or regulation and this
Agreement, the terms of such Government agreement, applicable law or
regulation shall prevail.
Except as expressly set forth in this Agreement, UNIVERSITY MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE LICENSED PRODUCT(S)
WILL NOT INFRINGE ANY PATENT, COPYRIGHT, OR TRADEMARK, OR OTHER RIGHTS OR ANY
OTHER EXPRESS OR IMPLIED WARRANTIES.
BOARD hereby grants to LICENSEE a royalty-bearing, exclusive/non-exclusive
license under LICENSED SUBJECT MATTER to manufacture, have manufactured, and/or
sell LICENSED PRODUCTS for use within LICENSED FIELD. This grant shall be
subject to the payment by LICENSEE to BOARD of all consideration as provided
in this Agreement, and shall be further subject to rights retained by BOARD to:
Publish the general scientific findings from research related
to LICENSED SUBJECT MATTER; and
Use LICENSED SUBJECT MATTER and any information contained in
LICENSED SUBJECT MATTER for research, teaching and other educationally-related
Maintain LICENSED SUBJECT MATTER and make it available to the
nonprofit research community as may be required by applicable NIH Procedures.
LICENSEE shall have the right to extend the license granted herein to any
AFFILIATE provided that such AFFILIATE consents to be bound by this Agreement
to the same extent as LICENSEE.
LICENSEE shall have the right to grant sublicenses consistent with this
Agreement provided that LICENSEE shall be responsible for the operations of
its sublicensees relevant to this Agreement as if such operations were carried
out by LICENSEE, including the payment of royalties whether or not paid to
LICENSEE by a sublicensee. LICENSEE further agrees to deliver to BOARD a true
and correct copy of each sublicense granted by LICENSEE, and any modification
or termination thereof, within thirty (30) days after execution, modification,
or termination. Upon termination of this Agreement, any and all existing
sublicenses granted by LICENSEE shall be assigned to BOARD.
If license is exclusive] BOARD shall have the right at any time after two (2)
years from the date of this Agreement, to terminate the exclusivity of the
license granted herein in any national political jurisdiction within ninety
(90) days after written notice from BOARD as to such intended termination of
exclusivity, if LICENSEE fails to provide written evidence that it has
commercialized or is actively attempting to commercialize LICENSED SUBJECT
MATTER within such jurisdiction. BOARD agrees to negotiate in good faith with
LICENSEE for adjusting terms under such a non-exclusive arrangement. BOARD
shall have the right at any time after three (3) years from the date of this
Agreement to terminate the license completely in any national political
jurisdiction if LICENSEE, within ninety days after written notice from BOARD
of such intended termination, fails to provide written evidence that it has
commercialized or is actively attempting to commercialize LICENSED SUBJECT
MATTER within such jurisdiction. Evidence provided by LICENSEE that it has an
ongoing and active research, development, manufacturing, marketing or
licensing program as appropriate, directed toward production and sale of
LICENSED PRODUCTS within such jurisdiction shall be deemed satisfactory
5. PAYMENTS AND REPORTS
consideration of rights granted by BOARD to LICENSEE under this Agreement,
LICENSEE agrees to pay BOARD the following:
A running royalty equal to _____ percent (____%) of NET SALES
for LICENSED PRODUCTS; and
One half of the gross revenues received by LICENSEE from any
During the Term of this Agreement and for one (1) year thereafter, LICENSEE
shall keep complete and accurate records of its and its sublicensees' SALES
and NET SALES of LICENSED PRODUCTS under the license granted in this Agreement
in sufficient detail to enable the royalties payable hereunder to be
determined. LICENSEE shall permit BOARD or its representatives, at BOARD'S
expense, to periodically examine its books, ledgers, and records during
regular business hours for the purpose of and to the extent necessary to
verify and report information required under this Agreement. In the event that
the amounts due to BOARD are determined to have been underpaid, LICENSEE shall
pay the cost of such examination, and accrued interest at the highest
5.3 Within forty-five (45) days after March 31, June 30, September 30 and
December 31, LICENSEE shall deliver to BOARD a true and accurate report,
giving such particulars of the business conducted by LICENSEE and its
sublicensees, if any exist, during the preceding three (3) calendar months
under this Agreement as are pertinent to an account for payments hereunder.
Such report shall include at least (a) the quantities of LICENSED PRODUCT that
it has produced; (b) the total SALES;
of royalties thereon; and (d) the total royalties so computed and due BOARD.
Simultaneously with the delivery of each such report, LICENSEE shall pay to
the BOARD the amount, if any, due for the period of such report. If no
payments are due, it shall be so reported.
Upon the request of BOARD but not more often than once per calendar year,
LICENSEE shall deliver to BOARD a written report as to LICENSEE'S efforts and
accomplishments during the preceding year in commercializing LICENSED SUBJECT
MATTER and its commercialization plans for the upcoming year.
All amounts payable hereunder by LICENSEE shall be payable in United States
funds without deductions for taxes, assessments, fees or charges of any kind.
Checks shall be made payable to The University of Texas.
6. TRANSFER OF MATERIAL
thirty (30) days after the execution of this Agreement, or less if both
parties agree, UNIVERSITY, through _________________ (Inventor or Department),
will disclose and furnish to LICENSEE a quantity of __________________ in an
amount agreed upon by LICENSEE, and UNIVERSITY.
7. TERM AND TERMINATION
The Term of this Agreement shall extend from the Effective Date for a period
of ________ (_____) years.
This Agreement will earlier terminate:
automatically if LICENSEE shall become bankrupt or insolvent
and/or if the business of LICENSEE shall be placed in the hands of a receiver,
assignee, or trustee, whether by voluntary act of LICENSEE or otherwise;
upon ninety (90) days written notice if LICENSEE shall breach
or default on any obligation under this License Agreement; provided, however,
LICENSEE may avoid such termination if before the end of such period LICENSEE
notifies BOARD that such breach has been cured and states the manner of such
under the provisions of Paragraph 4.4 if invoked.
Upon termination of this Agreement for any cause, nothing herein shall be
construed to release either party of any obligation matured prior to the
effective date of such termination. LICENSEE may, after the effective date of
such termination, sell all LICENSED PRODUCTS that it may have on hand at the
date of termination, provided that it pays earned royalties thereon as
provided in this Agreement.
Agreement may not be assigned by LICENSEE without the prior written consent of
LICENSEE shall hold harmless and indemnify BOARD, SYSTEM, UNIVERSITY, its
Regents, officers, employees and agents from and against any claims, demands,
or causes of action whatsoever, including without limitation those arising on
account of any injury or death of persons or damage to property caused by, or
arising out of, or resulting from, the exercise or practice of the license
granted hereunder by LICENSEE, its Subsidiaries, or their officers, employees,
agents or representatives.
UNIVERSITY shall not be liable for any indirect, special, consequential, or
other damages whatsoever, whether grounded in tort (including negligence),
strict liability, contract, or otherwise.
10. USE OF BOARD AND COMPONENT'S NAME
LICENSEE shall not use the name of UNIVERSITY, SYSTEM, BOARD or Regents
without express written consent.
11. CONFIDENTIAL INFORMATION
BOARD and LICENSEE each agree that all information contained in documents
marked “confidential”, or orally disclosed and reduced to writing within
thirty (30) days and marked “confidential”, which are forwarded to one by the
other shall be received in strict confidence, used only for the purposes of
this Agreement, and not disclosed by the recipient party (except as required
by law or court order), its agents or employees without the prior written
consent of the other party, unless such information (a) was in the public
domain through no act or omission of the recipient party, its employees,
agents, successors or assigns, (b) later became part of the public domain
through no act or omission of the recipient party, its employees, agents,
successors or assigns, (c) was lawfully disclosed to the recipient party by a
third party having the right to disclose it, (d) was already known by the
recipient party at the time of disclosure, (e) was independently developed by
the recipient or (f) is required to be disclosed to a government agency.
Each party's obligation of confidence hereunder shall be fulfilled by using at
least the same degree of care with the other party's confidential information
as it uses to protect its own confidential information. This obligation shall
exist while this Agreement is in force and for a period of three (3) years
This Agreement constitutes the entire and only agreement between the parties
for LICENSED SUBJECT MATTER and all other prior negotiations, representations,
agreements, and understandings are superseded hereby. No agreements altering
or supplementing the terms hereof may be made except by means of a written
document signed by the duly authorized representatives of the parties.
Any notice required by this License Agreement shall be given by prepaid, first
class, certified mail, return receipt required, addressed in the case of BOARD
University of Texas System
ATTENTION: Office of General Counsel
the case of LICENSEE to:
such other addresses as may be given from time to time under the terms of this
This Agreement shall be construed and enforced in accordance with the laws of
the United States of America and of the State of Texas.
Failure of BOARD to enforce a right under this Agreement shall not act as a
waiver of that right or the ability to later assert that right relative to the
particular situation involved.
Headings included herein are for convenience only and shall not be used to
construe this Agreement.
If any provision of this Agreement shall be found by a court to be void,
invalid or unenforceable, the same shall be reformed to comply with applicable
law or stricken if not so conformable, so as not to affect the validity or
enforceability of this Agreement.
WITNESS WHEREOF, parties hereto have caused
of Contracting Party]
BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS SYSTEM
APPROVED AS TO CONTENT:
THE UNIVERSITY OF TEXAS