Note | = | https: www.ott.nih.gov/sites/default/files/documents/docs/NIH-Patent-License-Exclusive-model-102015.docx |
|
Ti | = | {Doc.Ti} |
|
Doc.Ti | = | Patent License Agreement - Exclusive |
|
Note | = | This Agreement is based on the model Patent License Exclusive Agreement adopted by the U.S. Public Health Service (“{_PHS}”) Technology Transfer Policy Board for use by components of the National Institutes of Health (“{_NIH}”), the Centers for Disease Control and Prevention (“{_CDC}”), and the Food and Drug Administration (“{_FDA}”), which are agencies of the {_PHS} within the Department of Health and Human Services (“{_HHS}”). |
|
sec | = | {Intro.sec}{Background.LI}{Def.LI}{Grant.LI}{Sublicense.LI}{Limit-Govt.LI}{Pay.LI}{Prosecute.LI}{RecordKeeping.LI}{Report.LI}{Commercialize.LI}{Enforce.LI}{Limit-Warranty.LI}{Life.LI}{Misc.LI} |
|
Intro.sec | = | This {Doc.Ti}, hereinafter referred to as the “{_Agreement}”, consists of this Cover Page, an attached Agreement, a Signature Page, Appendix A (List of Patent(s) or Patent Application(s)), Appendix B (Fields of Use and Territory), Appendix C (Royalties), Appendix D (Benchmarks and Performance), Appendix E (Commercial Development Plan), Appendix F (Example Royalty Report), and Appendix G (Royalty Payment Options). |
| = | |
Background. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Background/0.md] |
|
Def. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Def/0.md] |
|
Grant. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Grant/0.md] |
|
Sublicense. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Sublicense/0.md] |
|
Limit-Govt. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Limit_Govt/0.md] |
|
Pay. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Pay/0.md] |
|
Prosecute. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Prosecute/0.md] |
|
RecordKeeping. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/RecordKeeping/0.md] |
|
Report. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Report/0.md] |
|
Commercialize. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Commercialize/0.md] |
|
Enforce. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Enforce/0.md] |
|
Limit-Warranty. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Limit_Warranty/0.md] |
|
Life. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Life/0.md] |
|
Misc. | = | [G/NIH-License-Patent-Exclusive-CmA/Sec/Misc/0.md] |
|
That.sec | = | {_IC} and {_Licensee} agree as follows: |
|
| = | [G/AgtForm/US/0.md] |
|
_Affiliate | = | Affiliate |
|
_Agreement | = | Agreement |
|
_Benchmarks | = | Benchmarks |
|
_CRADA | = | CRADA |
|
_Commercial_Development_Plan | = | Commercial Development Plan |
|
_FDA | = | FDA |
|
_First_Commercial_Sale | = | First Commercial Sale |
|
_Government | = | Government |
|
_HHS | = | HHS |
|
_IC | = | IC |
|
_Licensed_Fields_of_Use | = | Licensed Fields of Use |
|
_Licensed_Patent_Rights | = | Licensed Patent Rights |
|
_Licensed_Process(es) | = | Licensed Process(es) |
|
_Licensed_Process | = | Licensed Process |
|
_Licensed_Processes | = | Licensed Processes |
|
_Licensed_Products | = | Licensed Products |
|
_Licensed_Territory | = | Licensed Territory |
|
_Licensee | = | Licensee |
|
_NIH | = | NIH |
|
_Net_Sales | = | Net Sales |
|
_Practical_Application | = | Practical Application |
|
_Research_License | = | Research License |
|
_The_Licensee | = | The {_Licensee} |
|
_This_Agreement | = | This {_Agreement} |
|
_the_IC | = | the {_IC} |
|
_the_Licensee | = | the {_Licensee} |
|
_this_Agreement | = | this {_Agreement} |
|
_____________Heading | = | |
|
This Cover Page identifies the Parties to {_this_Agreement}: | = | |
|
The U.S. Department of Health and Human Services, as represented by | = | |
|
[Insert the full name of the IC] | = | |
|
an Institute or Center (hereinafter referred to as the “{_IC}”) of the | = | |
|
[INSERT as appropriate: {_NIH}, {_CDC}, or {_FDA}] | = | |
|
and | = | |
|
[Insert Company’s official name], | = | |
|
hereinafter referred to as the “{_Licensee}”, | = | |
|
having offices at [Insert Company’s address], | = | |
|
created and operating under the laws of [Insert State of Incorporation]. | = | |
|
Tax ID No.:_____________________ | = | |
|
| = | |
|
For {_IC} internal use only: | = | |
|
License Number: | = | |
|
License Application Number: | = | |
|
Serial Number(s) of Licensed Patent(s) or Patent Application(s): | = | |
|
Cooperative Research and Development Agreement ({_CRADA}) Number (if a subject invention): | = | |
|
Additional Remarks: | = | |
|
Public Benefit(s): | = | |
|
_______________________End | = | |
|
SIGNATURES BEGIN ON NEXT PAGE | = | |
|
{_NIH} PATENT LICENSE AGREEMENT – EXCLUSIVE | = | |
|
SIGNATURE PAGE | = | |
|
For {_IC}: | = | |
|
____________ DRAFT ________________________ _______________ | = | |
|
Name Date | = | |
|
Title | = | |
|
Office | = | |
|
National Institutes of Health | = | |
|
Mailing Address or E-mail Address for {_Agreement} notices and reports: | = | |
|
License Compliance and Administration | = | |
|
Monitoring & Enforcement | = | |
|
Office of Technology Transfer | = | |
|
National Institutes of Health | = | |
|
6011 Executive Boulevard, Suite 325 | = | |
|
Rockville, Maryland 20852-3804 U.S.A. | = | |
|
E-mail: LicenseNotices_Reports@mail.nih.gov | = | |
|
For {_Licensee} (Upon, information and belief, the undersigned expressly certifies or affirms that the contents of any statements of {_Licensee} made or referred to in this document are truthful and accurate.): | = | |
|
by: | = | |
|
____________ DRAFT ________________________ _______________ | = | |
|
Signature of Authorized Official Date | = | |
|
| = | |
|
Printed Name | = | |
|
| = | |
|
Title | = | |
|
I. Official and Mailing Address for {_Agreement} notices: | = | |
|
| = | |
|
Name | = | |
|
| = | |
|
Title | = | |
|
Mailing Address | = | |
|
| = | |
|
| = | |
|
| = | |
|
| = | |
|
Email Address: | = | |
|
Phone: | = | |
|
Fax: | = | |
|
II. Official and Mailing Address for Financial notices ({_Licensee}’s contact person for royalty payments) | = | |
|
| = | |
|
Name | = | |
|
| = | |
|
Title | = | |
|
Mailing Address: | = | |
|
| = | |
|
| = | |
|
| = | |
|
| = | |
|
Email Address: | = | |
|
Phone: | = | |
|
Fax: | = | |
|
Any false or misleading statements made, presented, or submitted to the {_Government}, including any relevant omissions, under {_this_Agreement} and during the course of negotiation of {_this_Agreement} are subject to all applicable civil and criminal statutes including Federal statutes 31 U.S.C. §§3801-3812 (civil liability) and 18 U.S.C. §1001 (criminal liability including fine(s) or imprisonment). | = | |
|
APPENDIX A – PATENT(S) OR PATENT APPLICATION(S) | = | |
|
Patent(s) or Patent Application(s): | = | |
|
I. | = | |
|
II. | = | |
|
III. | = | |
|
IV. | = | |
|
V. | = | |
|
APPENDIX B – LICENSED FIELDS OF USE AND TERRITORY | = | |
|
I. {_Licensed_Fields_of_Use}: | = | |
|
(a) | = | |
|
II. {_Licensed_Territory}: | = | |
|
APPENDIX C – ROYALTIES | = | |
|
Royalties: | = | |
|
I. {_Licensee} agrees to pay to {_IC} a noncreditable, nonrefundable license issue royalty in the amount of ________ dollars ($X) within sixty (60) days from the effective date of {_this_Agreement}. | = | |
|
II. {_Licensee} agrees to pay to {_IC} a nonrefundable minimum annual royalty in the amount of ________ dollars ($X) as follows: | = | |
|
(a) The first minimum annual royalty is due within sixty (60) days of the effective date of {_this_Agreement} and may be prorated according to the fraction of the calendar year remaining between the effective date of {_this_Agreement} and the next subsequent January 1; and | = | |
|
(b) Subsequent minimum annual royalty payments are due and payable on January 1 of each calendar year and may be credited against any earned royalties due for sales made in that year. | = | |
|
III. {_Licensee} agrees to pay {_IC} earned royalties of _____ percent (X%) on {_Net_Sales} by or on behalf of {_Licensee} and its sublicensees. | = | |
|
IV. {_Licensee} agrees to pay {_IC} Benchmark royalties within sixty (60) days of achieving each Benchmark: | = | |
|
(a) | = | |
|
(b) | = | |
|
(c) | = | |
|
(d) | = | |
|
(e) | = | |
|
V. {_Licensee} agrees to pay {_IC} additional sublicensing royalties of ____ percent (X%) on the fair market value of any consideration received for granting each sublicense within sixty (60) days of the execution of each sublicense. | = | |
|
APPENDIX D – BENCHMARKS AND PERFORMANCE | = | |
|
{_Licensee} agrees to the following {_Benchmarks} for its performance under {_this_Agreement} and, within thirty (30) days of achieving a Benchmark, shall notify {_IC} that the Benchmark has been achieved. | = | |
|
I. | = | |
|
II. | = | |
|
III. | = | |
|
IV. | = | |
|
V. | = | |
|
VI. | = | |
|
VII. | = | |
|
APPENDIX E – COMMERCIAL DEVELOPMENT PLAN | = | |
|
APPENDIX F – EXAMPLE ROYALTY REPORT | = | |
|
Required royalty report information includes: | = | |
|
• License reference number (L-XXX-200X/0) | = | |
|
• Reporting period | = | |
|
• Catalog number and units sold of each Licensed Product (domestic and foreign) | = | |
|
• Gross Sales per catalog number per country | = | |
|
• Total Gross Sales | = | |
|
• Itemized deductions from Gross Sales | = | |
|
• Total {_Net_Sales} | = | |
|
• Earned Royalty Rate and associated calculations | = | |
|
• Gross Earned Royalty | = | |
|
• Adjustments for Minimum Annual Royalty (MAR) and other creditable payments made | = | |
|
• Net Earned Royalty due | = | |
|
Example | = | |
|
Catalog Number Product Name Country Units Sold Gross Sales (US$) | = | |
|
1 A US 250 62,500 | = | |
|
1 A UK 32 16,500 | = | |
|
1 A France 25 15,625 | = | |
|
2 B US 0 0 | = | |
|
3 C US 57 57,125 | = | |
|
4 D US 12 1,500 | = | |
|
Total Gross Sales 153,250 | = | |
|
Less Deductions: | = | |
|
Freight 3,000 | = | |
|
Returns 7,000 | = | |
|
Total {_Net_Sales} 143,250 | = | |
|
Royalty Rate 8% | = | |
|
Royalty Due 11,460 | = | |
|
Less Creditable Payments 10,000 | = | |
|
Net Royalty Due 1,460 | = | |
|
APPENDIX G – ROYALTY PAYMENT OPTIONS | = | |
|
The License Number MUST appear on payments, reports and correspondence. | = | |
|
Credit and Debit Card Payments | = | |
|
Credit and debit card payments can be submitted for amounts up to $29,999. Submit your payment through the U.S. Treasury web site located at: https://www.pay.gov/public/form/start/28680443. | = | |
|
Automated Clearing House (ACH) for payments through U.S. banks only | = | |
|
{_IC} encourages its licensees to submit electronic funds transfer payments through the Automated Clearing House (ACH). Submit your ACH payment through the U.S. Treasury web site located at: https://www.pay.gov/public/form/start/28680443. Please note that {_IC} “only” accepts ACH payments through this U.S. Treasury web site. | = | |
|
Electronic Funds Wire Transfers | = | |
|
The following account information is provided for wire payments. In order to process payment via Electronic Funds Wire Transfer sender MUST supply the following information within the transmission: | = | |
|
Drawn on a U.S. bank account via FEDWIRE should be sent directly to the following account: | = | |
|
Beneficiary Account: Federal Reserve Bank of New York or TREAS NYC | = | |
|
Bank: Federal Reserve Bank of New York | = | |
|
ABA# 021030004 | = | |
|
Account Number: 75080031 | = | |
|
Bank Address: 33 Liberty Street, New York, NY 10045 | = | |
|
Payment Details: License Number (L-XXX-XXXX) | = | |
|
Name of {_Licensee} | = | |
|
Drawn on a foreign bank account should be sent directly to the following account. Payment must be sent in U.S. Dollars (USD) using the following instructions: | = | |
|
Beneficiary Account: Federal Reserve Bank of New York/ITS or FRBNY/ITS | = | |
|
Bank: Citibank N.A. (New York) | = | |
|
SWIFT Code: CITIUS33 | = | |
|
Account Number: 36838868 | = | |
|
Bank Address: 388 Greenwich Street, New York, NY 10013 | = | |
|
Payment Details (Line 70): NIH 75080031 | = | |
|
License Number (L-XXX-XXXX) | = | |
|
Name of {_Licensee} | = | |
|
Detail of Charges (line 71a): Charge Our | = | |
|
| = | |
|
Checks | = | |
|
All checks should be made payable to “NIH Patent Licensing” | = | |
|
Checks drawn on a U.S. bank account and sent by US Postal Service should be sent directly to the following address: | = | |
|
National Institutes of Health | = | |
|
P.O. Box 979071 | = | |
|
St. Louis, MO 63197-9000 | = | |
|
Checks drawn on a U.S. bank account and sent by overnight or courier should be sent to the following address: | = | |
|
US Bank | = | |
|
Government Lockbox SL-MO-C2GL | = | |
|
1005 Convention Plaza | = | |
|
St. Louis, MO 63101 | = | |
|
Phone: 314-418-4087 | = | |
|
Checks drawn on a foreign bank account should be sent directly to the following address: | = | |
|
National Institutes of Health | = | |
|
Office of Technology Transfer | = | |
|
License Compliance and Administration | = | |
|
Royalty Administration | = | |
|
6011 Executive Boulevard | = | |
|
Suite 325, MSC 7660 | = | |
|
Rockville, Maryland 20852 | = | |
|