Agreement (hereinafter "this Agreement") entered into as of
<DATE> ("Effective Date") by and between Carnegie
Mellon University, a Pennsylvania not-for-profit corporation, having
a principal place of business at 5000 Forbes Avenue, Pittsburgh, PA
("Carnegie Mellon") and <COMPANY>, a <STATE OF
INCORPORATION> <TYPE OF CORPORATION>, having a principal
place of business at <ADDRESS> ("Licensee").
Carnegie Mellon owns certain rights in certain technology relating to
<______>, and is interested in licensing same;
Licensee desires to acquire rights in and to that technology upon the
terms and conditions herein set forth;
in consideration of the mutual covenants contained herein and
intending to be legally bound hereby, the parties agree as follows:
Definitions ("Defined Terms")
shall mean Source Code and Object Code collectively.
Code" shall mean
code, substantially or entirely in binary form, which is intended to
be directly executable by a computer after suitable processing but
without the intervening steps of compilation or assembly.
shall mean code, other
than Object Code, and related source code level system documentation,
comments and procedural code, such as job control language, which may
be printed out or displayed in human readable form.
shall mean Carnegie
Mellon's copyrights in the Licensed Technology.
shall mean any patent application, including any continuation,
continuation-in-part, divisional or modification filed in the U.S. or
in any other country and any patent claiming priority therefrom or
reissue thereof, which issues to Carnegie Mellon and specifically
claims any of the Licensed Technology in existence on the Effective
Technology" or "Technology"
shall mean (a) the technology
described in Attachment A on an "as is" basis on the
Effective Date, (b) the trade secrets, know-how, [design
architecture, software and algorithm(s) including related Code and
related Copyrights,] owned by Carnegie Mellon [and/or for which
Carnegie Mellon has the right to license] and specifically related to
the technology described in Attachment A, on an "as
basis on the Effective Date; and [(c) any Patents specifically
claiming the technology or other intellectual property described in
(a) or (b) above, including any claims issuing on US Patent
Application Number ###].
shall mean computer
software or other intellectual property developed by Licensee, which
includes, or is based in whole or in part on, the Licensed
Technology, including, but not limited to, translations of the
Licensed Technology to other foreign or computer languages,
adaptation of the Licensed Technology to other hardware platforms,
abridgments, condensations, revisions, and software incorporating all
or any part of the Licensed Technology which may also include
Licensee-created modifications, enhancements or other software.
or "Product" shall
mean any product and/or service which constitutes, is based on,
incorporates or utilizes, wholly or in part, Licensed Technology
[and/or any and all Derivatives].
refers to contract years of this
Agreement, i.e. a twelve (12)
month period starting with the date (or anniversary) of the Effective
Quarter" or "Quarter"
shall refer to the normal quarterly accounting periods of Licensee;
if Licensee does not have normal quarterly accounting periods, then a
"Fiscal Quarter" shall mean the calendar three months
period commencing with January of each year.
mean the use, sale, lease or other transfer.
shall mean the U.S. Dollar value of all consideration realized by
Licensee for the Disposition of Licensed Product(s).
Sales" shall mean the total
Revenues, less the total of all of
the following deductions (to the extent included in computing
discounts allowed in amounts customary in the trade;
sales tariffs, duties and/or taxes imposed on the Licensed Products;
outbound transportation prepaid or allowed; and
amounts allowed or credited on returns.
No deduction shall be
made for commissions paid to individuals or entities whether they be
independent sales agents or persons regularly engaged or employed by
shall mean Disposition royalties which are calculated as a percentage
Net Sales and will be payable by Licensee to Carnegie Mellon
under the provisions of this Agreement.
1.15. "Dollar","U.S. Dollar"
and "$ U.S."
shall mean lawful money of the United States of America.
Rate" shall mean the prime
rate in the Wall Street Journal newspaper in its “Money Rates”
column on the Effective Date.
of Use" shall
mean < DEFINE FIELD(S) OF USE >.
2. License Grant
2.1. Carnegie Mellon
hereby grants to Licensee, and Licensee hereby accepts, an [exclusive
or non-exclusive], [world-wide or Territory] right to use the
Licensed Technology to make, have made, use, [copy], and otherwise
Dispose of Licensed Products [and to create Derivatives for the Field
Licensee shall be entitled to establish all proprietary rights for
itself in the intellectual property represented by Derivatives,
whether in the nature of trade secrets, copyrights, patents or other
rights, provided that Licensee shall promptly notify Carnegie Mellon
of Licensee-originated bug fixes to the Licensed Technology, which
shall be part of the Licensed Technology and owned by Carnegie
Mellon. Any copyright registration by Licensee for Derivatives shall
give full attribution to Carnegie Mellon's Copyrights. Carnegie
Mellon shall have the right to use Derivatives for research,
educational, academic, and/or administrative purposes.
2.3. No right to
sublicense the Technology is hereby granted to Licensee except (a)
that Licensee may sublicense to its customers Licensed Technology in
the ordinary course of business to the extent necessary for use and
practice of the Licensed Product Disposed of by Licensee to said
customers or (b) with the prior written agreement by Carnegie Mellon.
Licensee agrees that any sublicenses granted by Licensee to third
parties, other than to customers in the ordinary course of business
(even though the prior written agreement by Carnegie Mellon to such a
sublicense has been obtained) shall provide that the obligations to
Carnegie Mellon under this Agreement, including but not limited to,
the obligation to indemnify Carnegie Mellon, the obligation to obtain
and maintain insurance to protect Carnegie Mellon and the obligation
relating to settlement of claims and/or controversies specified in
this Agreement, shall be binding upon such sublicensee as if it were
a party to this Agreement, and the economic return to Carnegie Mellon
by reason of such sublicense shall be at least as great as if any
Disposition by the sublicensee had been a Disposition by Licensee.
2.4. Carnegie Mellon
shall have the right to use the Licensed Technology and, free of
charge, any product or process developed by Licensee which contains
or is based on any of the Licensed Technology [and/or Derivatives],
for Carnegie Mellon research, educational, academic, and/or
2.5. Nothing in this
Agreement shall restrict academic research or other not-for-profit
scholarly activities, which are undertaken at a nonprofit or
governmental institution in the Field of Use and/or in the area of
Licensed Technology and/or any other areas.
2.6. All Licensed
Products shall be Disposed of and performed by Licensee in compliance
with all applicable governmental laws, rules, and regulations.
Licensee shall keep Carnegie Mellon fully informed of, and shall move
expeditiously to resolve, any complaint by a governmental body
relevant to the Licensed Products, [except for complaints subject to
Section 22 (Infringement) of this Agreement].
2.7. Carnegie Mellon
retains the right, exercisable in the sole discretion of Carnegie
Mellon and upon advance notice to Licensee, to grant non-exclusive
licenses to practice the Licensed Technology in the Field of Use to
third parties as a means to resolve disputes or settle claims, suits,
or proceedings arising out of allegations that the Licensed
Technology infringes upon the intellectual property rights of the
third party. Each party shall promptly notify the other parties
hereto of its receipt of any such allegations. Nothing in this
Section 2.7 shall be construed as obligating Carnegie Mellon to
resolve any dispute or to settle or defend any claim, suit, or
proceeding arising out of Licensee's Disposition of Licensed
Products. If Carnegie Mellon grants such non-exclusive license, the
economic terms of this Agreement will be adjusted accordingly.
Carnegie Mellon retains the right to grant either exclusive or
non-exclusive licenses for the Licensed Technology in fields of use
other than the Field of Use for which the license hereunder is
2.8. This Agreement is
subject to any government purpose license rights under 35 USC §202
(c) (4) and any march-in rights of the United States of America under
35 USC §203.
3. Term of this
The term of this
Agreement shall conclude [at the end of twenty (20) years from the
Effective Date, or on the expiration date of the last-to-expire
Patent, whichever comes later], unless otherwise terminated pursuant
to another provision of this Agreement.
4.1. Licensee shall use
its best efforts to effect introduction of Licensed Technology into
the commercial market as soon as possible; thereafter, until the
expiration of this Agreement, Licensee shall keep Licensed Technology
reasonably available to the public.
4.2. Licensee shall
achieve the following milestones:
4.3. Licensee's failure
to perform in accordance with Sections 4.1 or 4.2 herein shall be
grounds for Carnegie Mellon to terminate this Agreement pursuant to
Section 10.2 herein.
Royalties and Payment Terms
Royalties payable by Licensee to Carnegie Mellon shall be
____________ percent (x %) of Net Sales.
Licensee shall pay Carnegie Mellon a non-refundable up-front royalty
Dollars ($U.S. _________) due and payable thirty (30) days after the
Effective Date. This up-front royalty will not be credited against
any other amounts due under this Agreement.
Licensee shall pay Carnegie Mellon a non-refundable, minimum royalty
Dollars ($U.S. ________)
("Annual Minimum Royalty"),
[payable on <date> of each
Year]. The Annual Minimum
Royalty shall be credited against the Royalties payable in a Year.
Annual Minimum Royalty payments are to be adjusted by the cumulative
percentage change in the CPI-W Consumer Price Index between December
<_____> and the December preceding the date on which the
payment in question is payable. [Licensee
shall pay Carnegie Mellon Annual Minimum Royalties according to the
Royalties payable to Carnegie Mellon shall be paid by Licensee to
Carnegie Mellon, as set forth in this Section 5, for each Fiscal
Quarter within sixty (60) days after the end of such Fiscal Quarter,
until this Agreement expires or is terminated in accordance with the
terms of this Agreement. If this Agreement terminates before the end
of a Fiscal Quarter, the payment for the terminal fractional portion
of a Fiscal Quarter shall be made within ninety (90) days after the
date of termination of this Agreement. All
Royalties and other amounts payable hereunder shall be paid in U.S.
Dollars and shall be made by wire transfer to Carnegie Mellon's
account No. xxxxxx, Carnegie Mellon Ref. No <FILE #>, at Mellon
Bank's Pittsburgh office, or by Licensee's check sent in accordance
with Section 22 (Notices).
5.5. All amounts payable
hereunder which are overdue shall bear interest until paid at a rate
equal to the Prime Rate in effect at the date such amounts were due
plus four percent (4%) per annum, but in no event to exceed the
maximum rate of interest permitted by applicable law. This provision
for interest shall not be construed as a waiver of any rights
Carnegie Mellon has as a result of Licensee's failure to make timely
payment of any amounts.
6. Reports and Audits
6.1. Licensee shall
report Quarterly to Carnegie Mellon Net Sales and Revenues which are
subject to Royalty and other payments within sixty (60) days of the
end of the relevant Quarter.
6.2. Licensee shall
maintain accurate books and records such that the Royalties and other
amounts due and payable hereunder can be easily ascertained. Such
books and records shall be maintained at Licensee's principal place
of business. Licensee shall make available Licensee's books and
records for audit by Carnegie Mellon or its designee, and Licensee
agrees to cooperate fully in any such audit, provided that Carnegie
Mellon and its designee (if any) agree to protect the confidentiality
of the information as to the customers of Licensee. Any such audit
shall not be more frequent than annually. In the event of any
deficiency in payment, in addition to paying the deficiency, if the
audit determines that any amounts paid to Carnegie Mellon were
deficient by more than five percent (5%), Licensee shall also pay the
costs of the audit, all within thirty (30) days following written
notice of such deficiency.
6.3. Licensee shall
report to Carnegie Mellon the date of the first commercial
Disposition of a Licensed Product within sixty (60) days of
occurrence in each country.
6.4. Within sixty (60)
days after the end of each of Licensee's fiscal years, Licensee shall
furnish Carnegie Mellon with a written report on the progress of its
efforts during the immediately preceding fiscal year to develop and
commercialize Licensed Products. The report shall also contain a
discussion of intended efforts and sales projections for the year in
which the report is submitted.
6.5. Within sixty (60)
days after the end of each of Licensee's fiscal years, Licensee shall
provide Carnegie Mellon with Licensee's financial statements for the
immediately preceding fiscal year (including, at a minimum, an income
statement, a statement of cash flows, and a balance sheet) that have
been certified by Licensee's treasurer, chief financial officer, or
an independent auditor.
6.6 Carnegie Mellon
shall keep confidential, not disclose to any third party and not use
for any purpose other than monitoring Licensee’s performance under
this Agreement and/or enforcing its rights under this Agreement, the
terms of this Agreement and all reports, financial statements,
documents and other confidential or proprietary information of
Licensee provided to Carnegie Mellon’s Center for Technology
Transfer and Enterprise Creation by Licensee under this Agreement;
provided, however, that Carnegie Mellon may include in its annual
reports totals derived from information received from Licensee
(without attribution to Licensee) that show revenues generated by the
Licensed Technology; and provided further that the non-disclosure and
non-use obligations shall not apply to any information that (a) is or
becomes part of the public domain other than by breach by Carnegie
Mellon of this Section 6.6, or (b) is required to be disclosed by
Carnegie Mellon pursuant to interrogatories, requests for information
or documents, subpoena, civil investigative demand issued by a court
or governmental agency or as otherwise required by law, provided that
Carnegie Mellon shall limit the disclosure to such information that
it is legally required to disclose. Notwithstanding the foregoing, to
the extent that it is reasonably necessary as determined by Carnegie
Mellon, Carnegie Mellon may disclose information it is otherwise
obligated under this Section 6.6 not to disclose in confidence to its
lawyers, accountants, auditors, trustees, inventors, funding sources
and financial advisors.
Discussion of a problem during collaboration between the parties to
this Agreement will not create any rights to ownership of patents,
copyrights, mask work rights, trade secrets or other intellectual
property rights in solutions to the problem developed solely by
employees or agents of the other party hereto.
Licensee will own all of the right, title and interest (including
patents, copyrights, mask work rights, trade secrets and any other
intellectual property rights, [but excluding Patents]) in and to the
results of the collaboration between the parties that are developed
solely by Licensee employees or agents.
Carnegie Mellon will own all of the right, title and interest
(including patents, [Patents], copyrights, Copyrights, mask work
rights, trade secrets and any other intellectual property rights) in
and to the results of the collaboration between the parties that are
developed solely by Carnegie Mellon employees or agents.
All intellectual property which results in [Patents or] Licensed
Technology developed jointly by employees or agents of Carnegie
Mellon and Licensee shall be owned by Carnegie Mellon. Licensee may
utilize such jointly developed property pursuant to the terms of this
Agreement. Carnegie Mellon may issue licenses to others regarding
such jointly developed property which results in [Patents or]
Licensed Technology, as long as such licenses do not violate any
exclusive license to Licensee then existing under Section 2 (License
Grant). If any other property rights are developed jointly by
employees or agents of Carnegie Mellon and Licensee which would not
constitute [a Patent or] Licensed Technology and which are not
subject to another agreement between Carnegie Mellon and Licensee,
Carnegie Mellon and Licensee shall jointly own (without any duty to
account to the other for profits) all right, title and interest
(including patents, copyrights, mask work rights, trade secrets, and
other intellectual property rights) in and to the results of such
joint development. If any patentable invention which would not
constitute [a Patent or] Licensed Technology arises out of such joint
development by employees or agents of Carnegie Mellon and Licensee,
Carnegie Mellon and Licensee will engage in good faith efforts to
mutually agree on whether and how to pursue patent, copyright or mask
work protection of the invention in the U.S. and elsewhere.
Except as provided in this Section 7, nothing herein shall be deemed
to grant any license or rights in any other technology in addition to
the Licensed Technology.
8. Patents and Other
property rights to Licensed Technology such as [Patent(s)],
patent(s), and Copyrights which may be obtainable will remain the
property of Carnegie Mellon. Trademarks existing on the Effective
Date belong to Carnegie Mellon.
8.2 Within thirty
(30) days of the Effective Date, Licensee shall make a one-time
payment to Carnegie Mellon of US$_______ for patenting and other
intellectual property protection costs incurred by Carnegie Mellon
prior to the Effective Date and relating to the Licensed Technology.
shall bear [fifty percent (50%)
of (in the case of a nonexclusive)] all patenting and other
intellectual property protection costs relating to intellectual
property rights to Licensed Technology. Licensee will reimburse
Carnegie Mellon for all amounts related to such patenting and other
intellectual property costs, within thirty (30) days of the receipt
of each notification or bill therefor from Carnegie Mellon.
Carnegie Mellon has applied for, and/or will apply for and prosecute
Patent coverage in any country if so requested by Licensee, at
Licensee’s sole expense, for any and all Patents to the extent that
such protection is reasonably obtainable.
8.4. Carnegie Mellon
may, at its option and sole discretion and at its own expense pursue
patent, copyright and/or trademark rights for Licensed Technology in
any country for which coverage has not been requested by Licensee in
accordance with Subsection 8.3 herein. If Licensee does not reimburse
Carnegie Mellon for such amounts within thirty (30) days of the
receipt of each notification or bill therefor, then Licensee shall
have no rights relating to same in that country.
8.5. No less than
forty-five (45) days before instituting any legal proceeding
contesting the validity or enforceability or use of a license granted
hereunder, Licensee shall give written notice to Carnegie Mellon of
its intention to bring such a challenge and a detailed description of
the legal and factual basis for such a challenge to preserve Carnegie
Mellon’s ability to have any such challenge proceed in a forum
convenient for Carnegie Mellon and to assist the parties in seeking
to resolve the dispute without the need for judicial action.
Trademarks and Trade Names
9.1. Licensee shall have
included in all sales, marketing literature and invoices relating to
Licensed Product, a statement to the effect that "this product
or portions thereof is manufactured under license from Carnegie
9.2. If a Licensed
Product falls within the scope of one or more claims of a pending
application within Patents, Licensee shall mark each Licensed Product
and/or packaging therefor with Patent Pending”, and, if a Licensed
Product falls within the scope of one or more claims of an unexpired
patent within Patents, Licensee shall mark each Licensed Product
and/or packaging therefor, with the applicable patent number or
numbers in accordance with the applicable laws of the countries in
which the materials are intended to be used.
acknowledges that it does not have any rights or any title whatsoever
in or to Carnegie Mellon's technology, trade name or in or to any of
Carnegie Mellon's trademarks, except as provided under this
Agreement. Licensee shall neither register nor use any Carnegie
Mellon trademarks or trade names. Any reference by Licensee to
Carnegie Mellon beyond the above may only be done with express
written permission of Carnegie Mellon's Director of the Center for
Technology Transfer and Enterprise Creation.
10.1. In the event that
Licensee defaults in the payment in full of any amount required to be
paid under this Agreement on the date such payment is due, in
addition to utilizing any other legal and/or equitable remedies,
Carnegie Mellon shall have the right by written notice to Licensee to
[(a) terminate the exclusivity, if any, of any license hereunder (by
amending the word "exclusive" in the related license grant
to read "non-exclusive") without any reduction in any of
the payments due from Licensee or (b)] terminate this Agreement. In
addition to the foregoing, in the
event that (a)
Licensee shall make or offer to make any arrangement or composition
with or for the benefit of its creditors, or (b) Licensee ceases or
threatens to cease to carry on its business, or (c) Licensee is or
becomes unable to pay its debts as they become due, or (d) Licensee
commits any act of insolvency or bankruptcy, or (e) a petition or
resolution for the making of an administration order or for the
bankruptcy, winding-up or dissolution of Licensee is presented or
passed, or (f) Licensee files a voluntary petition in bankruptcy or
insolvency, or (g) a receiver or administrator takes possession of or
is appointed over the whole or any part of the assets of Licensee, or
(h) any analogous procedure is commenced against or by Licensee in
any jurisdiction, Carnegie
Mellon shall have the right by written notice to Licensee to
terminate this Agreement.
10.2. In the event that
either party to this Agreement defaults in the performance of any of
its obligations hereunder (other than any of the defaults or events
referred to in Section 10.1. hereof) and fails to cure such default
within thirty (30) days after written notice of such default from
such other party, the other party shall have the right by written
notice to the defaulting party to terminate this Agreement.
10.3. In the event
that any of (a) Licensee, or (b) an affiliate of Licensee, or (c) a
third party acting on behalf of Licensee or one of its affiliates,
challenges or disputes the validity or enforceability of any
intellectual property rights licensed hereunder in any judicial or
administrative proceeding, Carnegie Mellon may, at its option and
sole discretion, terminate the license [or terminate exclusivity] as
to such challenged intellectual property by notice in writing to
10.4. The Royalty
rates and other amounts stated herein have been negotiated with the
understanding that no court has made any determination as to the
validity or enforceability of any Patent specifically claiming any of
the Licensed Technology or whether any of Licensee’s products
infringe any claim of any Patent. Licensee desires to obtain a
license under the terms stated herein, without regard to the lack of
such adjudication. In the event that Licensee or any affiliate of
Licensee, either directly or indirectly, challenges the validity or
enforceability of any intellectual property rights licensed
hereunder, or commences a judicial proceeding involving whether any
of its products infringe any claim of Carnegie Mellon’s
intellectual property rights or would infringe in the absence of this
license, and such validity, enforceability or infringement is upheld
in any such judicial or administrative proceeding (including a
reexamination that results in issuance of amended claims), Royalties
due and payable under Section 5.1 herein shall, effective immediately
as of the date such validity, enforceability or infringement is
upheld, increase to _______ percent to take into account the
additional certainty regarding Carnegie Mellon’s rights provided by
such a resolution and to compensate Carnegie Mellon for the burden
and expense of such challenge.
10.5. The termination of
this Agreement pursuant to this Section 10 or pursuant to Section 3
hereof shall not terminate (a) the obligation of Licensee to pay any
amounts which have accrued or would otherwise be required to be paid
by Licensee under the terms of this Agreement, and (b) the
obligations of Licensee under Sections 6 (Reports and Audits), 8
(Patents and Other Intellectual Property), 10 (Termination), 11
(Taxes), 14 (Confidentiality and Trade Secrets), 15
(Indemnification), 16 (Insurance), 20 (Dispute Resolution), and [21
Licensee shall pay all
taxes which may be assessed or levied on, or on account of, the
Licensed Products made or Disposed of and all taxes assessed or
levied on, or on account of, the amounts payable to, or for the
account of, Carnegie Mellon under this Agreement (other than Carnegie
Mellon’s U.S. federal, state or local income or franchise taxes).
12. NO WARRANTY;
LIMITATION AS TO TYPES OF DAMAGES
ANY AND ALL INFORMATION,
MATERIALS, SERVICES, INTELLECTUAL PROPERTY AND OTHER PROPERTY AND
RIGHTS GRANTED AND/OR PROVIDED BY CARNEGIE MELLON PURSUANT TO THIS
AGREEMENT, INCLUDING THE LICENSED TECHNOLOGY ARE GRANTED AND/OR
PROVIDED ON AN "AS IS" BASIS. CARNEGIE MELLON MAKES NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, AS TO ANY MATTER,
AND ALL SUCH WARRANTIES, INCLUDING WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE, ARE EXPRESSLY DISCLAIMED. WITHOUT
LIMITING THE GENERALITY OF THE FOREGOING, CARNEGIE MELLON DOES NOT
MAKE ANY WARRANTY OF ANY KIND RELATING TO EXCLUSIVITY, INFORMATIONAL
CONTENT, ERROR-FREE OPERATION, RESULTS TO BE OBTAINED FROM USE,
FREEDOM FROM PATENT, TRADEMARK AND COPYRIGHT INFRINGEMENT AND/OR
FREEDOM FROM THEFT OF TRADE SECRETS. LICENSEE IS PROHIBITED FROM
MAKING ANY EXPRESS OR IMPLIED WARRANTY TO ANY THIRD PARTY ON BEHALF
OF CARNEGIE MELLON RELATING TO ANY MATTER, INCLUDING THE APPLICATION
OF OR THE RESULTS TO BE OBTAINED FROM THE INFORMATION, MATERIALS,
SERVICES, INTELLECTUAL PROPERTY OR OTHER PROPERTY OR RIGHTS,
INCLUDING THE LICENSED TECHNOLOGY GRANTED AND/OR PROVIDED BY CARNEGIE
MELLON PURSUANT TO THIS AGREEMENT
CARNEGIE MELLON SHALL
NOT BE LIABLE TO LICENSEE OR ANY THIRD PARTY FOR ANY REASON WHATSOVER
ARISING OUT OF OR RELATING TO THIS AGREEMENT (INCLUDING ANY BREACH OF
THIS AGREEMENT) FOR LOSS OF PROFITS OR FOR INCIDENTAL, INDIRECT,
SPECIAL OR CONSEQUENTIAL DAMAGES, EVEN IF CARNEGIE MELLON HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR HAS OR GAINS KNOWLEDGE
OF THE EXISTENCE OF SUCH DAMAGES.
All costs and expenses
incurred by Licensee in carrying out Licensee's obligations under
this Agreement shall be paid by Licensee, and Licensee shall not be
entitled to reimbursement from Royalties hereunder or otherwise
therefor from Carnegie Mellon. Licensee shall possess or obtain at
its own expense all necessary licenses and permits and shall comply
with all laws, ordinances, rules or regulations affecting the
exportation or Disposition of Licensed Products, Licensed Technology
and Trade Secrets
Information" shall mean any
information relating to the Licensed Technology, the terms of this
Agreement (as from time to time amended), Patents, copyrights,
algorithms, and software covered by this Agreement or information
disclosed to Licensee in the manner set forth hereinafter. All such
information shall be Confidential Information, including information
disclosed to Licensee prior to the Effective Date, unless such
information (a) was already in Licensee's possession prior to the
disclosure thereof by Carnegie Mellon as provided in subsection
14.1(1) hereof, (b) has been published or is published hereafter,
unless such publication is a breach of this Agreement, (c) is
received by Licensee from a third party not under an obligation of
confidentiality with respect thereto, or (d) is independently
developed by Licensee.
In the event that such information shall be established to have been
known to Licensee prior to the disclosure thereof by Carnegie Mellon
by reference to any publication thereof by Licensee or by reference
to any internal writing or other business record maintained by
Licensee in the ordinary course of business, such information shall
not be deemed to be Confidential Information for purposes of this
Agreement following notification to Carnegie Mellon of such fact.
With respect to any information not related to the Licensed
Technology which is sought by Carnegie Mellon to be Confidential
Information subject to this Agreement, Carnegie Mellon shall mark
such information as "Confidential" prior to disclosing it
With respect to any oral communication not related to the Licensed
Technology which is deemed by Carnegie Mellon to be Confidential
Information subject to this Agreement, Carnegie Mellon shall notify
Licensee of such fact and within thirty (30) days thereafter Carnegie
Mellon shall send a memorandum to Licensee outlining the information
deemed to be Confidential Information.
14.2. Licensee shall
maintain in confidence and shall not disclose to any person not a
party hereto, nor shall Licensee use or exploit in any way without
Carnegie Mellon's written agreement, any Confidential Information
until three (3) years after the later of the date of termination of
this Agreement or the end of the term of the last to expire Patent,
unless such information ceases to be Confidential Information prior
to the end of such period through no fault of Licensee or Licensee
and Carnegie Mellon enter into an agreement authorizing same.
14.3. Licensee shall
exercise all reasonable precautions to prevent the disclosure of
Confidential Information by its employees or representatives, and in
any event shall maintain with respect to such Confidential
Information a standard of care which is no less than that standard
which Licensee maintains to prevent the disclosure of its own
confidential information but no less than a reasonable standard of
14.4. Upon termination
of this Agreement, Licensee agrees to return at once to Carnegie
Mellon, without copying, all originals and copies of all materials
(other than this Agreement) containing any Confidential Information.
14.5. For the purposes
of this Section 14, the term “Carnegie Mellon” shall include the
creators of the Licensed Technology and those working with or under
Licensee shall defend,
indemnify, and hold harmless Carnegie Mellon and its trustees,
officers, employees, attorneys and agents from and against any
liability, damage, loss or expense (including attorneys’ fees and
expenses) incurred by or imposed upon any of Carnegie Mellon and/or
its trustees, officers, employees, attorneys and agents in connection
with any claim, suit, action or demand arising out of or relating to
any exercise of any right or license granted or provided to Licensee
or any failure to perform any obligation of Licensee under this
Agreement, including any Disposition of Licensed Product(s), under
any theory of liability (including without limitation, actions in the
form of tort, warranty, or strict liability, or violation of any law,
and regardless of whether such action has any factual basis).
Licensee shall, at its
own expense, obtain and maintain throughout the term of this
Agreement, commercial general liability insurance with a limit of not
less than <<one million>>
U.S. Dollars ($ U.S. <<1,000,000>>)
per occurrence and <<two
million>> U.S. Dollars ($
aggregate for products liability and completed operations from an
insurance company(ies) having a financial rating from AM Best or
similar rating service of at least an "A-".
Carnegie Mellon shall be identified and named as an additional
insured on such insurance policy(ies). Licensee agrees to provide
Carnegie Mellon with evidence of such insurance upon the execution of
this Agreement (and thereafter from time to time as Carnegie Mellon
17. No Acquiescence
No acquiescence in any
breach of this Agreement by either party shall operate to excuse any
subsequent or prior breach.
18. Entire Agreement
supersedes all previous agreements relating to the subject matter
hereof, whether oral or in a writing, and constitutes the entire
agreement of the parties hereto relating to the subject matter hereof
and may not be amended or altered in any respect except in a writing
executed by the parties.
19. Governing Law
This Agreement shall be
governed by, and construed and enforced in accordance with, the laws
of the Commonwealth of Pennsylvania, without regard to conflict of
law principles in that or any other jurisdiction.
All claims and/or
controversies of every kind and nature arising out of or relating to
this Agreement, including any questions concerning its existence,
negotiation, validity, meaning, performance, non-performance, breach,
continuance or termination shall be settled (a) at Carnegie Mellon’s
election, by binding arbitration administered by the American
Arbitration Association ("AAA") in accordance with its
Commercial Arbitration Rules and, in such case (i) the arbitration
proceedings shall be conducted before a panel of three arbitrators,
with each party selecting one disinterested arbitrator from a list
submitted by the AAA and the two disinterested arbitrators selecting
a third arbitrator from the list, (ii) each party shall bear its own
cost of arbitration, (iii) all arbitration hearings shall be
conducted in Allegheny County, Pennsylvania, and (iv) the provisions
hereof shall be a complete defense to any suit, action or proceeding
instituted in any federal, state or local court of before any
administrative tribunal with respect to any claim or controversy
arising out of or relating to this Agreement and which is arbitrable
as provided in this Agreement, provided that either party may seek
injunctive relief in a court of law or equity to assert, protect or
enforce its rights in any intellectual property and/or confidential
or proprietary information as described in this Agreement, or (b) in
the event that Carnegie Mellon does not elect binding arbitration as
permitted in point (a) above, exclusively in the U.S. District Court
for the Western District of Pennsylvania or, if such Court does not
have jurisdiction, in any court of general jurisdiction in Allegheny
County, Pennsylvania and each party consents to the exclusive
jurisdiction of any such courts and waives any objection which such
party may have to the laying of venue in any such courts.
So long as Licensee remains the exclusive licensee of any of the
Patents in the Field of Use, Licensee shall have the right during the
term of this Agreement to commence an action for infringement of any
of those Patents against any third party for any infringement
occurring within the Field of Use, provided that Licensee shall
provide Carnegie Mellon sixty (60) days' prior written notice of such
infringement and of Licensee's intent to file such action. Carnegie
Mellon shall have the right at its own expense (subject to being
reimbursed from any settlement amount or proceeds as provided herein)
to appear in such action by counsel of its own selection. If required
by the jurisdictional laws of the forum that any such action be
prosecuted in the name of the owner of the Patent or that Carnegie
Mellon be joined as a party-plaintiff, Carnegie Mellon may
voluntarily appear; provided that Licensee shall hold Carnegie Mellon
harmless from, and indemnify Carnegie Mellon against any liability,
damage, loss, or expense that Carnegie Mellon suffers or incurs,
including Carnegie Mellon’s attorneys’ fees and expenses, in
connection with, in consequence of or resulting from any
participation or involvement in such action.
damage, loss, or expense suffered or incurred by Carnegie Mellon in
accordance with the preceding sentence, including reasonable
compensation for the time of any Carnegie Mellon personnel, shall be
paid by Licensee as the same as incurred by Carnegie Mellon.
Settlement of any action brought by Licensee shall require the
consent of Carnegie Mellon and any settlement amount or recovery for
damages shall be applied as follows: (a) first, to reimburse the
parties for their unreimbursed expenses in connection with the
litigation; and (b) second, Carnegie Mellon shall receive
compensation for unreimbursed time of any Carnegie Mellon personnel
involved in the action; and (c) third, Carnegie Mellon shall receive
the following percentage of the monies remaining: ten percent (10%).
21.2. In the event
that Licensee is unsuccessful in persuading an alleged infringer to
desist or fails to initiate any infringement action contemplated by
Section 21.1 within a reasonable time after Licensee first becomes
aware of the basis for such action, Carnegie Mellon shall have the
right, in its sole discretion, to prosecute such infringement action
at its sole expense, and any settlement amount or recovery shall
belong to Carnegie Mellon.
the pendency of any infringement (or other) claim or action by or
against Licensee, Licensee shall have no right to terminate or
suspend (or escrow) payment of any amounts required to be paid to
Carnegie Mellon pursuant to this Agreement.
Any notice under any of
the provisions of this Agreement shall be deemed given when (a)
personally delivered, or (b) sent prepaid by nationally recognized
overnight carrier, or (c) deposited in the mail, postage prepaid,
registered or certified first class mail, and in the case of (b) or
(c), when addressed to the applicable party at the address stated on
the signature page hereof, or such other address as such party shall
specify for itself by like notice to other party. Each party shall in
the case of (b) or (c), transmit to the other a facsimile copy or an
electronic mail copy of each such notice promptly after sending same
by nationally recognized overnight carrier or depositing same in the
mail, as applicable.
shall not assign or transfer this Agreement or any interest herein
without the prior written consent of Carnegie Mellon.
The section headings
contained in this Agreement are set forth for the convenience of the
parties only, do not form a part of this Agreement and are not to be
considered a part hereof for the purpose of construction or
interpretation hereof, or otherwise.
If any provision of this
Agreement or portion thereof is determined by a court of competent
jurisdiction, or declared under any law, rule or regulation of any
government having jurisdiction over the parties hereto, to be
invalid, illegal or otherwise unenforceable, then such provision
will, to the extent permitted by the court or government not be
voided but will instead be construed to give effect to its intent to
the maximum extent permissible under applicable law and the remainder
of this Agreement will remain in full force and effect according to
(The balance of this
page is intentionally left blank).
parties hereto have caused this Agreement to be executed by their
duly authorized representatives in duplicate counterparts, each of
which shall be deemed to constitute an original, effective as of the
Associate Vice Provost
Address for Notices:
4615 Forbes Avenue,
Pittsburgh, PA 15213
Vice Provost for Technology Transfer and Enterprise Creation
Address for Notices:
The invention entitled
"xxx" and the related documentation, if any, disclosed on
<DATE> and bearing Carnegie Mellon File #xxx on an "as is"
basis on the Effective Date.
Per Section 6.4 of the
license agreement between Carnegie Mellon and [name
of company] and dated as of
_____(the “Agreement”) , Licensee is required to furnish Carnegie
Mellon with an annual commercialization report describing Licensee’s
efforts to diligently commercialize Licensed Products during the past
fiscal year and current plans for the next year. For convenience,
Carnegie Mellon is providing the following outline to enable Licensee
to report the required information.
Per Section 6.5 of the
Agreement, Licensee is required to provide Carnegie Mellon with
Licensee's financial statements for the immediately preceding fiscal
year (including, at a minimum, an income statement, a statement of
cash flows, and a balance sheet) that have been certified by
Licensee's treasurer, chief financial officer, or an independent
auditor. Please include the financial statements with the submission
of the Annual Commercialization Report.
The submission will
be treated as confidential business information of the company per
Section 6.6 of the Agreement.
question, please place an “X” between the appropriate brackets.
fields will expand as needed. You are not limited to the space
Rows can be
added or removed from tables as needed.
Licensee Name and
Name of Primary
Effective Date of
Dates of any
Licensee been in existence for less than five (5) years?
NO – Licensee has been in existence for five (5) or more years
YES – Please attach Licensee’s most recent business plan to this
Annual Report. This submission satisfies the requirements of numbers
II, III, and IV below.
complete the two tables below:
Activities of Past Year:
the space provided below, please summarize:
efforts and accomplishments during past fiscal year to diligently
commercialize Licensed Products including any first commercial
Dispositions of Licensed Products in any country.
towards completing applicable milestones.
and development activities of past year.
of obtaining necessary government approvals (if applicable).
Activities of Next Year:
the space provided below, please summarize:
development and commercialization plans for Licensed Products during
for completing applicable milestones.
research and development activities for next year.
for obtaining necessary government approvals (if applicable).
the space provided below, please summarize sales projections for
Licensed Products during the next year:
I certify that the
information above is true and correct to the best of my knowledge.
of authorized representative
delivery is preferred)
Technology Transfer and Enterprise Creation