Common use of Patents and Licensing Clause in Contracts

Patents and Licensing. A. Within thirty (30) days of receipt by UNIVERSITY's Office of Economic Innovation & Partnerships of an invention disclosure pertaining to inventions made during the conduct of this research by UNIVERSITY employees, UNIVERSITY will inform COMPANY of any potentially patentable inventions arising out of research performed under this Agreement. Title to any invention or discovery conceived or reduced to practice solely by UNIVERSITY personnel in the performance of this research shall remain with UNIVERSITY provided, however, that UNIVERSITY shall grant to COMPANY an option for a royalty-bearing, worldwide, exclusive or nonexclusive license limited to the field of research set forth in Attachment 1 to be exercised and the license to be negotiated in good faith within three (3) months of disclosure of each respective invention to make, have made, use, sell, and import the products based on such invention or discovery for the term of any patent thereon. The royalty rate shall take into consideration the intellectual contribution of each party to the conception and reduction to practice (not to include product development efforts and costs) of invention(s) created and licensed under this Agreement, the proprietary position provided, and the profit potential where payments shall be based on the net sales of product. Inventions conceived or reduced to practice hereunder by UNIVERSITY personnel jointly with employees of COMPANY shall be jointly owned. B. If COMPANY considers any of the information and ideas arising out of the research program to warrant patent protection thereon, UNIVERSITY will upon written request by COMPANY procure and maintain such patent protection in the U.S. and in such foreign countries as COMPANY may designate. COMPANY shall provide UNIVERSITY with a written response within thirty (30) days of COMPANY's receipt of the invention disclosure. COMPANY will reimburse UNIVERSITY for its out-of-pocket expenses associated with the procurement and maintenance of such patent rights. While UNIVERSITY shall be responsible for making decisions regarding the scope and content of applications to be filed and prosecution thereof, COMPANY shall be provided with a copy of each draft of each patent application hereinunder, copies of all documents filed, and copies of all correspondence relating to the prosecution and maintenance of such patent rights. C. COMPANY agrees to and does hereby grant a nonexclusive, noncommercial, nontransferable, royalty-free license for the practice by UNIVERSITY in UNIVERSITY's continuing teaching and research efforts of any invention covered by claims of any patent arising from the research at UNIVERSITY and licensed exclusively or assigned to COMPANY.

Patents and Licensing. A. Within thirty (30) days of receipt by UNIVERSITY's Office of Economic Innovation & Partnerships of an invention disclosure pertaining to inventions made during the conduct of this research by UNIVERSITY employees, UNIVERSITY will inform COMPANY of any potentially patentable inventions arising out of research performed under this Agreement. Title to any invention or discovery conceived or reduced to practice solely by UNIVERSITY personnel in the performance of this research shall remain with UNIVERSITY provided, however, that UNIVERSITY shall grant to COMPANY an option for a royalty-bearing, worldwide, exclusive or nonexclusive license limited to the field of research set forth in Attachment 1 to be exercised and the license to be negotiated in good faith within three (3) months of disclosure of each respective invention to make, have made, use, sell, and import the products based on such invention or discovery for the term of any patent thereon. The royalty rate shall take into consideration the intellectual contribution of each party to the conception and reduction to practice (not to include product development efforts and costs) of invention(s) created and licensed under this Agreement, the proprietary position provided, and the profit potential where payments shall be based on the net sales of product. Inventions conceived or reduced to practice hereunder by UNIVERSITY personnel jointly with employees of COMPANY shall be jointly owned. B. If COMPANY considers any of the information and ideas arising out of the research program to warrant patent protection thereon, UNIVERSITY will upon written request by COMPANY procure and maintain such patent protection in the U.S. and in such foreign countries as COMPANY may designate. COMPANY shall provide UNIVERSITY with a written response within thirty (30) days of COMPANY's receipt of the invention disclosure. COMPANY will reimburse UNIVERSITY for its out-of-pocket expenses associated with the procurement and maintenance of such patent rights. While UNIVERSITY shall be responsible for making decisions regarding the scope and content of applications to be filed and prosecution thereof, COMPANY shall be provided with a copy of each draft of each patent application hereinunder, copies of all documents filed, and copies of all correspondence relating to the prosecution and maintenance of such patent rights. C. COMPANY agrees to and does hereby grant a nonexclusive, noncommercial, nontransferable, royalty-free license for the practice by UNIVERSITY in UNIVERSITY's continuing teaching and research efforts of any invention covered by claims of any patent arising from the research at UNIVERSITY and licensed exclusively or assigned to COMPANY. UNIVERSITY does not accept obligations of confidentiality on behalf of its employees. If COMPANY and the principal investigator agree that confidential or proprietary information of COMPANY is necessary for the research, the information should be submitted to the principal investigator in writing and clearly marked as such. COMPANY at its discretion may require that the principal investigator enter into a confidentiality agreement that is acceptable to COMPANY and not in conflict with UNIVERSITY policy.

Patents and Licensing. A. Within thirty (30) days of receipt by UNIVERSITY's Office of Economic Innovation & Partnerships of an invention disclosure pertaining to inventions made during the conduct of this research by UNIVERSITY employees, UNIVERSITY will inform COMPANY of any potentially patentable inventions arising out of research performed under this Agreement. Title Likewise, within thirty (30) days of receipt by COMPANY’s office that processes invention disclosures of an invention disclosure pertaining to any invention or discovery conceived or reduced to practice solely by potentially patentable inventions arising out of research performed under this Agreement for which UNIVERSITY personnel in are identified as co-inventors, COMPANY will inform UNIVERSITY's Office of Economic Innovation & Partnerships. Within thirty (30) days of COMPANY's receipt of the performance invention disclosure from UNIVERSITY, COMPANY shall provide UNIVERSITY with a written notice of this research shall remain with UNIVERSITY provided, however, that UNIVERSITY shall grant to COMPANY an option for a royalty-bearing, worldwide, exclusive its decision of whether or nonexclusive license limited to the field of research set forth in Attachment 1 to be exercised and the license to be negotiated in good faith within three (3) months of disclosure of each respective invention to make, have made, use, sell, and import the products based on such invention or discovery for the term of any patent thereon. The royalty rate shall take into consideration the intellectual contribution of each party to the conception and reduction to practice (not to include product development efforts and costs) of invention(s) created and licensed under this Agreement, the proprietary position provided, and the profit potential where payments shall be based on the net sales of productseek patent protection. Inventions conceived or reduced to practice hereunder by UNIVERSITY personnel jointly with employees of COMPANY shall be jointly owned. B. If COMPANY considers any of the information and or ideas arising out of the research program to warrant patent protection, COMPANY will have the right to procure and maintain, at its own expense, such patent protection thereon, in the U.S. and in such foreign countries as COMPANY may designate for inventions in which it has an ownership or licensing interest. UNIVERSITY will upon written request by COMPANY procure and maintain such patent protection in the U.S. and in such foreign countries as COMPANY may designate. COMPANY shall provide UNIVERSITY with a written response within thirty (30) days of COMPANY's receipt of the invention disclosure. COMPANY will reimburse UNIVERSITY for its out-of-pocket expenses associated with the procurement and maintenance of such patent rights. While UNIVERSITY The party that takes the lead in patent prosecution shall be responsible for making decisions regarding provide the scope and content of applications to be filed and prosecution thereof, COMPANY shall be provided other party with a copy of each draft of each patent application hereinunderapplication, copies of all documents filed, and copies of all correspondence relating to the prosecution and maintenance of such patent rights. Title to any inventions conceived solely by UNIVERSITY in the performance of the Research described in Attachment 1 and any patent or patent application for such invention(s) shall remain with UNIVERSITY. Title to any inventions conceived solely by COMPANY in the performance of the Research described in Attachment 1 and any patent or patent application for such invention(s) shall remain with COMPANY. Title to any inventions conceived jointly by UNIVERSITY and COMPANY in the performance of the Research described in Attachment 1 and any patent or patent application for such invention(s) shall be jointly owned by UNIVERSITY and COMPANY. B. Inventions or discoveries conceived or reduced to practice in the performance of this Agreement and to which the University has an ownership interest (i.e., solely owned by UNIVERSITY or jointly owned) shall be exclusively licensed to COMPANY if COMPANY pays the exclusivity amount specified in Article 4 with no royalty payment due if annual sales by COMPANY using the inventions licensed hereunder are less than $10 million USD. COMPANY shall pay a 1% royalty to UNIVERSITY on net sales when annual sales using the inventions licensed hereunder exceed $10 million USD. C. This Agreement does not apply to pre-existing intellectual property, or to intellectual property developed outside of this Agreement, which must be examined on a case-by-case-basis. D. COMPANY agrees to and does hereby grant a nonexclusive, noncommercial, nontransferable, royalty-free license for the practice by UNIVERSITY in UNIVERSITY's continuing teaching and research efforts of any invention covered by claims of any patent arising from the research at UNIVERSITY and licensed exclusively or assigned to COMPANY.

Patents and Licensing. A. Within thirty (30) days of receipt by UNIVERSITY's Office of Economic Innovation & Partnerships of an invention disclosure pertaining to inventions made during the conduct of this research by UNIVERSITY employees, UNIVERSITY will inform COMPANY of any potentially patentable inventions arising out of research performed under this Agreement. Title Likewise, within thirty (30) days of receipt by COMPANY’s office that processes invention disclosures of an invention disclosure pertaining to any invention or discovery conceived or reduced to practice solely by potentially patentable inventions arising out of research performed under this Agreement for which UNIVERSITY personnel in are identified as co-inventors, COMPANY will inform UNIVERSITY's Office of Economic Innovation & Partnerships. Within thirty (30) days of COMPANY's receipt of the performance invention disclosure from UNIVERSITY, COMPANY shall provide UNIVERSITY with a written notice of this research shall remain with UNIVERSITY provided, however, that UNIVERSITY shall grant to COMPANY an option for a royalty-bearing, worldwide, exclusive its decision of whether or nonexclusive license limited to the field of research set forth in Attachment 1 to be exercised and the license to be negotiated in good faith within three (3) months of disclosure of each respective invention to make, have made, use, sell, and import the products based on such invention or discovery for the term of any patent thereon. The royalty rate shall take into consideration the intellectual contribution of each party to the conception and reduction to practice (not to include product development efforts and costs) of invention(s) created and licensed under this Agreement, the proprietary position provided, and the profit potential where payments shall be based on the net sales of productseek patent protection. Inventions conceived or reduced to practice hereunder by UNIVERSITY personnel jointly with employees of COMPANY shall be jointly owned. B. If COMPANY considers any of the information and or ideas arising out of the research program to warrant patent protection, COMPANY will have the right to procure and maintain, at its own expense, such patent protection thereon, in the U.S. and in such foreign countries as COMPANY may designate for inventions in which it has an ownership or licensing interest. UNIVERSITY will upon written request by COMPANY procure and maintain such patent protection in the U.S. and in such foreign countries as COMPANY may designate. COMPANY shall provide UNIVERSITY with a written response within thirty (30) days of COMPANY's receipt of the invention disclosure. COMPANY will reimburse UNIVERSITY for its out-out- of-pocket expenses associated with the procurement and maintenance of such patent rights. While UNIVERSITY The party that takes the lead in patent prosecution shall be responsible for making decisions regarding provide the scope and content of applications to be filed and prosecution thereof, COMPANY shall be provided other party with a copy of each draft of each patent application hereinunderapplication, copies of all documents filed, and copies of all correspondence relating to the prosecution and maintenance of such patent rights. Title to any inventions conceived solely by UNIVERSITY in the performance of the Research described in Attachment 1 and any patent or patent application for such invention(s) shall remain with UNIVERSITY. Title to any inventions conceived solely by COMPANY in the performance of the Research described in Attachment 1 and any patent or patent application for such invention(s) shall remain with COMPANY. Title to any inventions conceived jointly by UNIVERSITY and COMPANY in the performance of the Research described in Attachment 1 and any patent or patent application for such invention(s) shall be jointly owned by UNIVERSITY and COMPANY. B. Inventions or discoveries conceived or reduced to practice in the performance of this Agreement and to which the University has an ownership interest (i.e., solely owned by UNIVERSITY or jointly owned) shall be exclusively licensed to COMPANY if COMPANY pays the exclusivity amount specified in Article 4 with no royalty payment due if annual sales by COMPANY using the inventions licensed hereunder are less than $10 million USD. COMPANY shall pay a 1% royalty to UNIVERSITY on net sales when annual sales using the inventions licensed hereunder exceed $10 million USD. C. This Agreement does not apply to pre-existing intellectual property, or to intellectual property developed outside of this Agreement, which must be examined on a case-by-case-basis. D. COMPANY agrees to and does hereby grant a nonexclusive, noncommercial, nontransferable, royalty-free license for the practice by UNIVERSITY in UNIVERSITY's continuing teaching and research efforts of any invention covered by claims of any patent arising from the research at UNIVERSITY and licensed exclusively or assigned to COMPANY.

Patents and Licensing. A. Within thirty (30) days of receipt by UNIVERSITY's Office of Economic Innovation & Partnerships the Vice ▇▇▇▇▇▇▇ for Research of an invention disclosure pertaining to inventions made during the conduct of this research by UNIVERSITY employees, UNIVERSITY will inform COMPANY of any potentially patentable inventions arising out of research performed under this Agreement. Title to any invention or discovery conceived or reduced to practice solely by UNIVERSITY personnel in the performance of this research shall remain with UNIVERSITY provided, however, that UNIVERSITY shall grant to COMPANY an option for a royalty-bearing, worldwide, exclusive or nonexclusive license limited to the field of research set forth in Attachment 1 to be exercised and the license to be negotiated in good faith within three (3) months of disclosure of each respective invention to make, have made, use, sell, and import the products based on such invention or discovery for the term of any patent thereon. The royalty rate shall take into consideration the intellectual contribution of each party to the conception and reduction to practice (not to include product development efforts and costs) of invention(s) created and licensed under this Agreementparty, the proprietary position provided, and the profit potential where payments shall be based on the net sales of productpotential. Inventions conceived or reduced to practice hereunder by UNIVERSITY personnel jointly with employees of COMPANY shall be jointly owned. B. If COMPANY considers any of the information and ideas arising out of the research program to warrant patent protection thereon, UNIVERSITY will upon written request by COMPANY procure and maintain such patent protection in the U.S. and in such foreign countries as COMPANY may designate. COMPANY shall provide UNIVERSITY with a written response within thirty (30) days of COMPANY's receipt of the invention disclosure. COMPANY will reimburse UNIVERSITY for its out-of-pocket expenses associated with the procurement and maintenance of such patent rights. While UNIVERSITY shall be responsible for University of Delaware (PI Name)/ Company Name making decisions regarding the scope and content of applications to be filed and prosecution thereof, COMPANY shall be provided with a copy of each draft of each patent application hereinunder, copies of all documents filed, and copies of all correspondence relating to the prosecution and maintenance of such patent rights. C. COMPANY agrees to and does hereby grant a nonexclusive, noncommercial, nontransferable, royalty-free license for the practice by UNIVERSITY in UNIVERSITY's continuing teaching and research efforts of any invention covered by claims of any patent arising from the research at UNIVERSITY and licensed exclusively or assigned to COMPANY.