EXCLUSIVE LICENSE AGREEMENT
This Exclusive License Agreement (hereinafter called "Agreement"), to be effective as of the [date] day of [month], 2020 (hereinafter called "Agreement Date"), is by and between [Name of Institution] (the "College"), a [state in which incorporated] non-profit corporation, having its principal place of business at [Address], and [Name of Licensee], a corporation organized under the laws of [state in which incorporated] and having a principal place of business at [Address], and its Affiliates (hereinafter, collectively referred to as "LICENSEE.")
WITNESSETH:
WHEREAS, the College is the owner of the Subject Technology as defined below; and
WHEREAS, the College is willing to grant a royalty bearing, worldwide, exclusive license to the Subject Technology to LICENSEE on the terms set forth herein; and WHEREAS, LICENSEE desires to obtain said exclusive license under the Subject Technology.
NOW, THEREFORE, for and in consideration of the premises and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties hereto expressly agree as follows:
1. DEFINITIONS AS USED HEREIN
1.1 The term "Subject Technology" shall mean all technology, cell lines, biological materials, compounds, know-how, methods, documents, materials, tests, all improvements thereto, and all confidential information related to [name of invention] which was developed as of the Agreement Date by [name of Principal Investigator], an employee of the College and a faculty member in the Department of [name of the department] at the College. The term "Subject Technology" shall also include Indian Patent Application Serial No. [____], entitled [Title of pending application], filed [date], together with all applications for patent or like protection on said invention and all patents or like protection that may in the future be granted on said invention whether in India or any other country and all substitutions for and divisions, continuations, continuations in part, renewals, reissues, extensions and the like on said applications and patents.
1.2 The term "Licensed Product(s)" shall mean all products that incorporate, utilize or are made with the use of the Subject Technology.
1.3 The term "Field" shall mean _________________________
1.4 The term "Net Sales" shall mean the gross amount of monies or cash equivalent of other consideration which is paid by unrelated third parties to LICENSEE for the Licensed Products by sale or other mode of transfer, less all trade, quantity and cash discounts actually allowed, credits, and allowances actually granted on account of rejections, returns or billing errors, duties, transportation and insurance, taxes and other governmental charges actually paid. The term "Net Sales" in the case of non-cash sales, shall mean all equivalent or other consideration received by LICENSEE for the Licensed Products.
1.5 The term "Affiliates" shall mean any corporation, partnership, joint venture or other entity of which the common stock or other equity ownership thereof is twenty five percent (25%) or more owned by LICENSEE.
1.6 The term "the Parties" shall mean LICENSEE and the College.
NOTE: if license will include sublicense rights, include the following term.
1.7 The term "SUBLICENSING REVENUE" shall mean all cash, sublicensing fees, royalties and all other payments and the cash equivalent thereof paid to LICENSEE by sublicensees of LICENSEE of its rights hereunder, other than research and development money paid to LICENSEE to conduct research in the FIELD
2. GRANT OF LICENSE
2.1 The College hereby grants to LICENSEE an exclusive, worldwide, right and license under the Subject Technology to make, use, market, sell and offer for sale Licensed Products in the Field.
NOTE: if exclusive license, use these terms as guidelines:
2.2 The grant in Section 2.1 shall be further subject to, restricted by and non-exclusive with respect to:
(i) the use of the Subject Technology by the College for non-commercial research, patient care, teaching and other educationally related purposes;
(ii) the use of the Subject Technology by the inventors thereof for non-commercial research purposes at academic or research institutions; and
(iii) any non exclusive license of the Subject Technology that the College is required by law or regulation to grant to India or to a foreign state pursuant to an existing or future treaty with India.
NOTE: if non-exclusive license, use these terms as guidelines:
2.2 The College shall at all times retain the right to:
(i) use the Subject Technology for its non-commercial research, patient care, teaching and other educationally related purposes;
(ii) allow the inventors to use the Subject Technology for non-commercial research purposes at academic institutions;
(iii) grant any non-exclusive license to the Subject Technology that the College is required by law or regulation to grant to India or to a foreign state pursuant to an existing or future treaty with India; and
(iv) grant non-exclusive licenses and other rights to the Subject Technology to third parties, whether such be commercial entities, academic institutions or other persons.
3. MARKETING EFFORTS
LICENSEE shall use reasonable efforts, as defined herein, to effect assiduously the introduction of Licensed Products into the commercial market as soon as practicable. Such efforts shall include, but not be limited to:
- sufficient funding at the College to continue Dr. ______'s research efforts at a rate mutually agreed to by LICENSEE, the College and Dr. _______,
- submitting an IND to the FDA within three years of the Agreement Date,
- launching a prophylactic or therapeutic product in a North American or European market within [ ] years of the Agreement Date,
- publishing and distributing a product circular for the Subject Technology;
- advertising in at least one of the key journals (i.e., Science, Nature, Cell, Biotechniques) at least _______ times during the first year of the introduction of Licensed Products and twice annually for _____years thereafter; and
- marketing the Licensed Products with the same diligence as LICENSEE employs for comparable products marketed by LICENSEE.
4. PAYMENTS AND REPORTS
4.1 As partial consideration for the rights conveyed by the College under this Agreement, LICENSEE shall pay the College a license fee of ___________ ($XX,XXX) upon execution of this Agreement.
4.2 In addition to the foregoing license execution fee, LICENSEE shall pay the College a running royalty of ____ percent (X%) of Net Sales. Such running royalties shall be payable as provided in Paragraph 4.5.
4.3 In the event that the running royalties paid on Net Sales in any calendar year do not reach the minimum amount set out below for such year, LICENSEE shall pay an additional amount with the payment due for the period ending December 31 of such year, so that the total amount paid for such year shall reach such minimum amount:
Year One Rs.
Year Two Rs.
Year Three Rs.
Year Four Rs.
Year Five and after Rs.
4.4 LICENSEE shall also pay the College the following milestone payments: (a) __________ thousand rupees (Rs.XX,000) upon the submission of an IND to the FDA; (b) _________________ thousand rupees (Rs.XX,000) upon the submission of and NDA to the FDA and (c) ________________ thousand rupees (Rs.X00,000) upon product approval and launch in a North American or European market.
4.5 In addition to the foregoing fees and running royalties, LICENSEE agrees to pay to the College as royalties hereunder, xx percent (XX%) of all SUBLICENSING REVENUE.
4.6 Payment of the royalties specified in Paragraph 4.2 and Paragraph 4.3 shall be made by LICENSEE to the College within thirty (30) days after March 31, June 30, September 30 and December 31 of each year during the term of this Agreement covering the quantity of Licensed Products sold by LICENSEE during the preceding calendar quarter. After termination or expiration of this Agreement, a final payment shall be made by LICENSEE covering the whole or partial calendar quarter. Each quarterly payment shall be accompanied by a written statement of Net Sales of Licensed Products by LICENSEE during such calendar quarter. Such written statements shall be duly signed by an authorized signatory of LICENSEE on behalf of LICENSEE and shall show the Net Sales of Licensed Products by LICENSEE during such calendar quarter and the amount of royalties payable under this Agreement based thereon.
