SCOPE: An exclusive or non-exclusive field-of-use license for the life of the patents in all territories where the University owns patent rights, covering all patents, patent applications or unpatented tangible properties to which Licensee is granted a license.
SUBLICENSE: An exclusive license may provide for sublicensing under commercially reasonable terms, with a passthrough of sublicense income to the University.
LICENSE ISSUE FEES, MILESTONE FEES, AND LICENSE MAINTENANCE FEES: There will be a License Issue Fee payable on execution. The agreement may also include maintenance fees and fees tied to development milestones, depending on the type of license.
ROYALTIES: Royalties on net sales of products covered by the University's patent and proprietary rights will be payable on pending patent applications on issued patents and or on unpatented tangible properties. Royalty rates will be negotiated in good faith based on the Licensee’s business plan using industry standards in the field.
MINIMUM ANNUAL ROYALTIES: There will be minimum annual royalties, payable at the beginning of each calendar year following public sale, creditable against earned royalties for that calendar year.
DILIGENCE: The license will provide a timetable by which Licensee will file for approval from appropriate United States and corresponding foreign regulatory authorities for permission to sell products as commercially appropriate. If Licensee does not meet these development milestones, the University will have the option of terminating the license or of converting it to a non-exclusive license.
PROGRESS AND ROYALTY REPORTS: Licensee shall submit periodric reports to the University covering Licensee's (and sublicensees') activities related to the development and testing of licensed products and the obtaining of governmental approvals necessary for marketing. After the first commercial sale of a licensed product, Licensee shall make quarterly royalty reports.
PATENT PROSECUTION AND MAINTENANCE: The University will own and diligently prosecute and maintain all patents and patent applications included in the license. The University will keep Licensee informed in a timely manner of prosecution matters and will confer with Licensee when making prosecution decisions. Licensee will reimburse the University for all past and future costs of patent prosecution and maintenance.
PATENT INFRINGEMENT: Licensee may notify the University of any infringement of the licensed patents of which it becomes aware. The University will have the first right to sue infringers, and if it does not take action within 100 days, Licensee is free to sue in its own name and at its own expense.
INDEMNIFICATION: Licensee will indemnify the University against any claims arising from the exercise of the license. The University will require Licensee to carry insurance to back up such indemnification, and name the University as an additional insured.
WARRANTIES: The University provides no warranty of merchantability or fitness of the licensed technology for a particular purpose or any other warranty. The University does not represent that the licensed products will not infringe any patent or other proprietary right.
USE OF NAME: Unless required by law, the use by Licensee of the name, "The Regents of the University of California" or the name of any campus of the University of California in any Licensee publicity, marketing or promotional material is expressly prohibited.
ASSIGNABILITY: The license agreement shall be personal to Licensee and assignable by Licensee only with the written consent of the University, which consent will not be unreasonably withheld or delayed.
LATE PAYMENTS: In the event that payments are not received by the University when due, Licensee shall pay to the University interest charges.
GOVERNING LAWS: The license agreement shall be interpreted and construed in accordance with the laws of the State of California. The applicable laws of the country of the subject patent or patent application will govern the scope and validity of any patent or patent application included in the license agreement.
EXPORT CONTROL LAWS: Licensee shall observe all applicable U.S. and foreign laws with respect to transfer of products and related technical data to foreign countries.