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INVENTION NONEXCLUSIVE LICENSE AGREEMENT



This Invention Nonexclusive License Agreement (the Agreement) is effective [DATE],


BETWEEN:  [YOUR COMPANY NAME] (the "Inventor"), a corporation organized and existing under the laws of [STATE/PROVINCE], with its head office located at OR an individual with his main address at:

  [YOUR COMPLETE ADDRESS]


AND:  [LICENSEE NAME] (the "Licensee"), an individual with his main address located at OR a corporation organized and existing under the laws of [STATE/PROVINCE], with its head office located at:

  [COMPLETE ADDRESS]


RECITALS

Inventor has an assignment of [DESCRIBE INVENTION], as described in Docket [NUMBER], ("Invention(s)") and any Licensed Patent(s), as hereinafter defined and further described in Exhibit A.

Inventor desires to have [SPECIFY] (the "Invention(s)") perfected and marketed at the earliest possible time in order that products resulting therefrom may be available for public use and benefit.

Licensee desires a license under said Invention(s) and Licensed Patent(s) for commercialization of this technology.

The Invention(s) was/were made in the course of research conducted by [ORGANIZATION OR LABORATORY] or supported by [ORGANIZATION OR LABORATORY] C IF APPLICABLE.


DEFINITIONS

When used in this Agreement, the following terms shall have the respective meanings indicated herein:

"Invention(s)" means any invention disclosed in Inventor Docket [NUMBER].

"Licensed Patent(s)" means Inventor's [COUNTRY] Patent Application, Serial Number [NUMBER], filed [DATE] and any divisions, continuations, continuations-in-part, reexaminations or reissues of any such patent applications or patents.

"Licensed Field of Use" is for [SPECIFY FIELD OF USE].


GRANT

Inventor hereby grants and Licensee hereby accepts a non-exclusive license to the Invention(s) and to the Licensed Patents in the Licensed Field of Use.

Said license of Section 2.1 shall commence on [DATE] and continue until expiration of the last to expire of Licensed Patent(s).
Inventor acknowledges that future inventions and discoveries relating to this technology may be useful to Licensee in its development and/or commercialization process. Subject to Inventor's obligations to sponsored research, Inventor will, as soon as practicable, bring any such new invention and discovery related to this technology to Licensee's attention and provide Licensee a reasonable opportunity to negotiate a license therefore.


GOVERNMENT RIGHTS

This Agreement is subject to all of the terms and conditions of [TITLE 35 UNITED STATES CODE SECTIONS 200 THROUGH 204 or YOUR COUNTRYS EQUIVALENT], and Licensee agrees to take all reasonable action necessary on its part as licensee to enable Inventor to satisfy its obligation thereunder, relating to Invention(s).


REPORTS

Beginning [DATE], during the term of the Agreement, Licensee shall make a written annual report to Inventor every [TIME INTERVAL] regarding the progress of Licensee toward commercial use of the Invention(s) and Licensed Patent(s). Such report shall include, as a minimum, information sufficient to enable Inventor to satisfy reporting requirements of the [GOVERNMENT/REGULATING BODY] and for Inventor to ascertain progress by Licensee toward commercializing the Invention(s) and Licensed Patent(s).


ROYALTIES

Licensee agrees to pay to Inventor a nonrefundable license issue royalty of $[AMOUNT] upon signing this Agreement. Such payment is due [DATE].

On [DATE] and at every [TIME INTERVAL] thereafter, Licensee agrees to pay to Inventor royalty payments of $[AMOUNT].

Licensee will also pay to Inventor a one time, nonrefundable patent issue royalty of $[AMOUNT] after the issuance of a Licensed Patent(s). Such payment is due within [NUMBER] days after notification from Inventor.


NEGATION OF WARRANTIES

Nothing in this Agreement is or shall be construed as:

A warranty or representation by Inventor as to the validity or scope of any Licensed Patent(s);

A warranty or representation that anything made, used, sold, or otherwise disposed of under any license granted in this Agreement is or will be free from infringement of patents, copyrights, and other rights of third parties;

An obligation to bring or prosecute actions or suits against third parties for infringement; or

Granting by implication, estoppel, or otherwise any licenses or rights under patents or other rights of Inventor or other persons other than to the Invention(s) and Licensed Patent(s), regardless of whether such patents or other rights are dominant or subordinate to any Licensed Patent(s).

Except as expressly set forth in this Agreement, Inventor 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 PATENT(S) WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.

Licensee agrees that nothing in this Agreement grants Licensee any express or implied license or right under or to:

[COUNTRY] Patent No. [NUMBER], "[TITLE]" or reissues thereof; or

[COUNTRY] Patent No. [NUMBER], "[TITLE]" or any patent application corresponding thereto.


INDEMNITY

Licensee agrees to indemnify, hold harmless, and defend Inventor and Inventor Affiliates and their respective trustees, officers, employees, students, and agents against any and all claims for death, illness, personal injury, property damage, and improper business practices arising out of the manufacture, use, sale, or other disposition of Invention(s), Licensed Patent(s), or Licensed Product(s) by Licensee, or their customers.

Inventor shall not be liable for any indirect, special, consequential, or other damages whatsoever, whenever grounded in tort (including negligence), strict liability, and contract or otherwise. Inventor shall not have any responsibilities or liabilities whatsoever with respect to Licensed Product(s).

Licensee shall at all times comply, through insurance or self-insurance, with all statutory workers' compensation and employers' liability requirements covering any and all employees with respect to activities performed under this Agreement.

In addition to the foregoing, Licensee shall maintain, during the term of this Agreement, [COMPREHENSIVE GENERAL LIABILITY INSURANCE], including products liability insurance, with reputable and financially secure insurance carrier(s) to cover the activities of Licensee. Such insurance shall provide minimum limits of liability of $[AMOUNT] and shall include Inventor, Inventor Affiliates, their trustees, directors, officers, employees, students, and agents as additional insureds. Such insurance shall be written to cover claims incurred, discovered, manifested, or made during or after the expiration of this Agreement. At Inventor's request, Licensee shall furnish a Certificate of Insurance evidencing primary coverage and requiring [NUMBER] days prior written notice of cancellation or material change to Inventor. Licensee shall advise Inventor, in writing, that it maintains excess liability coverage (following form) over primary insurance for at least the minimum limits set forth above. All such insurance of Licensee shall be primary coverage; insurance of Inventor or Inventor Affiliates shall be excess and noncontributory.


INVENTOR NAMES AND MARKS

Licensee agrees not to identify Inventor in any promotional advertising or other promotional materials to be disseminated to the public or any portion thereof or to use the name of any Inventor faculty member, employee, or student or any trademark, service mark, trade name, or symbol of Inventor or Inventor Affiliates, or that is associated with either of them, without Inventor's prior written consent.

Licensee with respect to sales, marketing, advertising or promotional materials disseminated concerning the technology covered by the Invention(s) and Licensed Patent(s) shall have the right to refer to and use the name, number(s), and owner(s) of the Invention(s) and Licensed Patent(s), as referred to in Section 1. Licensee may optionally use the following citation, and Licensee agrees when using said citation for sales, marketing, advertising, or promotional materials to use the entire citation written as follows: [NAME, NUMBER(S), AND OWNER(S) OF THE INVENTION(S) AND LICENSED PATENT(S)]


INFRINGEMENT BY OTHERS: PROTECTION OF PATENTS

During the nonexclusive period of this Agreement, Inventor and Licensee agree to discuss the appropriate course of action to be taken should either party be aware of any suspected infringement of any Licensed Patent(s) by a third party.


SUBLICENSE(S)

Purchasers of equipment, software and [SPECIFY] from Licensee for use in the Licensed Field of Use shall be deemed to have an implied license under the Licensed Patent(s) to practice the inventions thereof and shall be free from any suit brought based on the Licensed Patent(s). Otherwise, Licensee may not grant sublicense(s).


TERMINATION

Licensee may terminate this Agreement by giving Inventor notice in writing at least [NUMBER] days in advance of the effective date of termination selected by Licensee.

Inventor may terminate this Agreement if Licensee:

Is in default in payment of royalty or providing of reports;

Is in breach of any provision hereof;

Provides any false report; or

Licensee fails to remedy any such default, breach, or false report within [NUMBER] days after written notice thereof by Inventor.

Surviving any termination are:

Any cause of action or claim of Licensee or Inventor, accrued or to accrue, because of any breach or default by the other party; and

The provisions of Articles 6 and 7.


ASSIGNMENT

This Agreement may not be assigned except to a successor in business of all or substantially all the assets of Licensee.


ARBITRATION

Any controversy arising under or related to this Agreement, and any disputed claim by either party against the other under this Agreement excluding any dispute relating to patent validity or infringement arising under this Agreement, shall be settled by arbitration in accordance with the Commercial Arbitration Rules of the American Arbitration Association.

Upon request by either party, arbitration will be by a third party arbitrator mutually agreed upon in writing by Licensee and Inventor within [NUMBER] days of such arbitration request. Judgment upon the award rendered by the arbitrator shall be final and nonappealable and may be entered in any court having jurisdiction thereof.

The parties shall be entitled to discovery in like manner as if the arbitration were a civil suit in the [SPECIFY] Court. The Arbitrator may limit the scope, time and/or issues involved in discovery.

Any arbitration shall be held in [CITY], unless the parties hereto mutually agree in writing to another place.


NOTICES

All notices under this Agreement shall be deemed to have been fully given when done in writing and deposited in the [COUNTRY] mail, registered or certified, and addressed as follows:

To Inventor: 
ATTN. [NAME], [YOUR COMPANY NAME], [YOUR COMPLETE ADDRESS], [YOUR FAX NUMBER].

To Licensee: 
ATTN. [NAME], [COMPANY NAME], [COMPLETE ADDRESS], [FAX NUMBER].

Either party may change its address upon written notice to the other party.


WAIVER

None of the terms of this Agreement can be waived except by the written consent of the party waiving compliance.


APPLICABLE LAW

This Agreement shall be governed by the laws of the [State/Province] of [STATE/PROVINCE] applicable to agreements negotiated, executed and performed wholly within [STATE/PROVINCE].

This Agreement constitutes the entire agreement between Licensee and Inventor and supersedes all prior communications, understandings and agreements with respect to all matters covered in the Agreement.

IN WITNESS WHEREOF, each party to this agreement has caused it to be executed at [PLACE OF EXECUTION] on the date indicated above.


[YOUR COMPANY NAME]        [LICENSEE NAME]




                          
Authorized Signature          Authorized Signature

                          
Print Name and Title          Print Name and Title

EXHIBIT A
THE INVENTION(S) AND RELATED PATENT(S)

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