Common use of Commercialization of Patent Rights Clause in Contracts

Commercialization of Patent Rights. 2.1 Inventor agrees to hereby assign to University Inventor’s entire right, title, and interest in and to the Subject Invention(s), and the Patent Rights pertaining thereto for the purpose of commercial exploitation thereof for the benefit of Inventor and University in accordance with the terms of this Agreement and other applicable agreements, policies, and laws. 2.2 University and Inventor shall cooperate as follows in the filing, prosecution, assignment, and maintenance of the Patent Rights, and in the commercial exploitation of the Patent Rights: (a) The filing, prosecution, assignment, and maintenance of the Patent Rights shall be carried out by University. Inventor shall cooperate with patent counsel designated and engaged by University. All decisions regarding the scope of patent coverage, claim language, and other matters bearing on the substantive content of patents included in the Patent Rights, and in the filing of foreign patent application, shall be made by University in consultation with patent counsel and Inventor. (b) University shall be responsible for the payment of all costs, expenses, taxes, and attorney’s fees relating to the filing, prosecution, assignment, and maintenance of patent applications and patents included in the Patent Rights; provided that University may require licensees to pay or reimburse the University. (c) University agrees to use its best reasonable efforts which may, at the election of the University, be in conjunction with Inventor to commercialize the Patent Rights by licensing or selling the Patent Rights to third parties. It will be the responsibility of University to screen and select qualified potential licensees and purchasers, and to prepare and negotiate the terms of any sublicense or purchase agreement (hereinafter “License Agreements”). Such License Agreements shall provide that all amounts payable as license fees, royalties, or like proceeds shall be paid to University, and University shall, in turn, pay to Inventor a share of such amounts it receives (“revenue”) in accordance with Section 2.2(d) of this Agreement. University agrees to provide Inventor notice within thirty (30) days of the receipt of all such revenues. (d) University agrees that any revenue received by University as licensing fees, royalties or like proceeds under any License Agreement respecting the Patent Rights shall be held and administered in accordance with the terms of this Agreement and other applicable agreements, policies, and laws. University shall allocate and pay the following shares of net revenues: (1) Inventor’s Share: With respect to initial net revenue in the amount of $50,000.00, Inventor shall receive fifty (50) percent of such net revenue. With respect to any subsequent net revenue that exceeds the initial $50,000 net revenue, Inventor shall receive forty (40) percent of such subsequent net revenue. If Inventor comprises multiple inventors, then each shall receive an equal share of the Inventor’s Share unless the inventors advise the University of a different pro rata sharing to which the inventors have mutually agreed. (2) As used herein, the term “net revenue” means gross revenue received by University from commercial application of the Patent Rights, including amounts received by University as license fees, royalties, or like proceeds under any License Agreement respecting the Patent Rights, minus University’s direct, out-of-pocket costs incurred as of the date of receipt of the gross revenue in protecting, maintaining, licensing and preserving the Patent Rights. Examples of such costs include, but are not limited to, legal fees and costs paid in connection with filing and issuance of patent applications, patent annuities and maintenance fees paid to governments, fees paid to attorneys and marketing agents for preparing, negotiating and auditing the License Agreement and un-reimbursed costs of litigation to enforce and maintain the Patent Rights. Gross revenue does not include support for research sponsored by any party including a licensee of the Patent Rights. (e) University agrees to permit Inventor to inspect, copy, and audit University’s records pertaining to University’s revenue under the License Agreement(s) and University’s payments to Inventor pursuant to Section 2.2(d) above. (f) University may at any time elect to withdraw from this Agreement and, at Inventor’s request, University may assign to Inventor the entire right, title, and interest in the Patent Rights. In this event, the University shall have no further obligation to pursue protection and commercial exploitation of the Patent Rights or to pay any further costs and expenses which may be incurred in connection therewith, except that the University shall be responsible for the payment of any costs, expenses, and liabilities incurred by University through the date of such withdrawal. Upon such withdrawal and assignment to Inventor, the University shall not thereafter have any rights regarding or exercise any control over negotiations regarding commercial utilization and exploitation or other management and administration of the Patent Rights; provided, that University shall be entitled to receive a reasonable royalty on the use or sales under the Patent Rights resulting from such commercial utilization and exploitation until it has received an amount equal to the out-of-pocket costs incurred by University in obtaining and maintaining the Patent Rights. It is further provided that the University shall retain a royalty-free license under such Patent Rights for University to make and use the Inventions. (g) The obligation of University to allocate and pay to Inventor the above specified share of University’s revenue under any License Agreement(s) respecting the Patent Rights shall be in effect for the life of such License Agreement(s) and shall insure to the benefit of Inventor, and his/her successors and assigns, irrespective of whether Inventor is employed by University.

Commercialization of Patent Rights. 2.1 Inventor agrees to and does hereby assign to University, and University Inventor’s agrees to exclusively license to Research Foundation their entire right, title, and interest in and to the Subject Invention(s), and the Patent Rights pertaining thereto for the purpose of commercial exploitation thereof for the benefit of Inventor and University in accordance with the terms of this Agreement and other applicable agreements, policies, and laws. 2.2 University University, Research Foundation, and Inventor shall cooperate as follows in the filing, prosecution, assignment, and maintenance of the Patent Rights, and in the commercial exploitation of the Patent Rights: (a) The filing, prosecution, assignment, and maintenance of the Patent Rights shall be carried out by University. Inventor shall cooperate with patent counsel Patent Counsel designated and engaged by University. All decisions regarding the scope of patent coverage, claim language, and other matters bearing on the substantive content of patents included in the Patent Rights, and in the filing of foreign patent applicationapplications, shall be made by University in consultation with patent counsel Patent Counsel and Inventor. Research Foundation may agree that a sublicensee will, at its own expense, carry out the filing, prosecution, assignment, and maintenance of the Patent Rights. (b) University shall be responsible for the payment of all costs, expenses, taxes, and attorney’s 's fees relating to the filing, prosecution, assignment, and maintenance of patent applications and patents included in the Patent Rights; provided that University Research Foundation may require licensees to pay or reimburse the UniversityResearch Foundation and/or University for such costs, expenses, taxes, and fees. (c) University Research Foundation agrees to use its best reasonable efforts which may, at the election of the University, be in conjunction with Inventor to commercialize the Patent Rights by licensing or selling the Patent Rights to third parties. It will be the responsibility of University Research Foundation to screen and select qualified potential licensees and purchasers, and to prepare and negotiate the terms of any sublicense or purchase agreement (hereinafter “License Agreements”), provided that University and Inventor shall confer with Research Foundation regarding such licensees, License Agreements and the specific aims of such negotiations. Such License Agreements shall provide that all amounts payable as license fees, royalties, or like proceeds shall be paid to UniversityResearch Foundation, and University Research Foundation shall, in turn, pay to Inventor a share of such amounts it receives (“revenue”) in accordance with Section 2.2(d) of this Agreement. Research Foundation agrees to provide to Inventor and University agrees a copy of any fully executed License Agreement (and any amendments or waivers thereto) at their request, and to provide Inventor notice within thirty (30) days of the receipt of all such revenues. (d) University Research Foundation agrees that any revenue received by University Research Foundation as licensing license fees, royalties or like proceeds under any License Agreement respecting the Patent Rights shall be held and administered in accordance with the terms of this Agreement and other applicable agreements, policies, and laws. University In accordance with the University's pertinent Rules, Policies and Procedures regarding Inventions and Works, Research Foundation shall allocate and pay the following shares of net revenues: (1) Inventor’s Share: With respect to initial net revenue in the amount of $50,000.00, Inventor shall receive fifty (50) percent of such net revenue. With respect to any subsequent net revenue that exceeds the initial $50,000 net revenue, Inventor shall receive forty (40) percent of such subsequent net revenue. If Inventor comprises multiple inventors, then each shall receive an equal share of the Inventor’s Share unless the inventors advise the University of a different pro rata sharing to which the inventors have mutually agreed. (2) As used herein, the term “net revenue” means gross revenue received by University from commercial application of the Patent Rights, including amounts received by University as license fees, royalties, or like proceeds under any License Agreement respecting the Patent Rights, minus University’s direct, out-of-pocket costs incurred as of the date of receipt of the gross revenue in protecting, maintaining, licensing and preserving the Patent Rights. Examples of such costs include, but are not limited to, legal fees and costs paid in connection with filing and issuance of patent applications, patent annuities and maintenance fees paid to governments, fees paid to attorneys and marketing agents for preparing, negotiating and auditing the License Agreement and un-reimbursed costs of litigation to enforce and maintain the Patent Rights. Gross revenue does not include support for research sponsored by any party including a licensee of the Patent Rights. (e) University agrees to permit Inventor to inspect, copy, and audit University’s records pertaining to University’s revenue under the License Agreement(s) and University’s payments to Inventor pursuant to Section 2.2(d) above. (f) University may at any time elect to withdraw from this Agreement and, at Inventor’s request, University may assign to Inventor the entire right, title, and interest in the Patent Rights. In this event, the University shall have no further obligation to pursue protection and commercial exploitation of the Patent Rights or to pay any further costs and expenses which may be incurred in connection therewith, except that the University shall be responsible for the payment of any costs, expenses, and liabilities incurred by University through the date of such withdrawal. Upon such withdrawal and assignment to Inventor, the University shall not thereafter have any rights regarding or exercise any control over negotiations regarding commercial utilization and exploitation or other management and administration of the Patent Rights; provided, that University shall be entitled to receive a reasonable royalty on the use or sales under the Patent Rights resulting from such commercial utilization and exploitation until it has received an amount equal to the out-of-pocket costs incurred by University in obtaining and maintaining the Patent Rights. It is further provided that the University shall retain a royalty-free license under such Patent Rights for University to make and use the Inventions. (g) The obligation of University to allocate and pay to Inventor the above specified share of University’s revenue under any License Agreement(s) respecting the Patent Rights shall be in effect for the life of such License Agreement(s) and shall insure to the benefit of Inventor, and his/her successors and assigns, irrespective of whether Inventor is employed by University.

Commercialization of Patent Rights. 2.1 Inventor agrees to and does hereby assign to University Inventor’s entire right, title, and Paranotek a 50% interest in and to the Subject Invention(s), Invention and 100% of the Patent Rights pertaining thereto for the purpose of commercial exploitation thereof for the benefit of Inventor and University Paranotek in accordance with the terms of this Agreement and other applicable agreements, policies, and laws. 2.2 University Paranotek and Inventor shall cooperate as follows in the filing, prosecution, assignment, and maintenance of the Patent Rights, and in the commercial exploitation of the Patent Rights: (a) The filing, prosecution, assignment, and maintenance of the Patent Rights shall be carried out by UniversityParanotek or its agent. Inventor shall cooperate with patent legal and other counsel designated and engaged by UniversityParanotek. All decisions regarding the scope of patent coverage, claim language, and other matters bearing on the substantive content of patents included in the Patent Rights, and in the filing of foreign patent applicationapplications, shall be made by University Paranotek in consultation with patent legal counsel and Inventor. (b) University Paranotek shall be responsible for the payment of all costs, expenses, taxes, and attorney’s 's fees relating to the filing, prosecution, assignment, and maintenance of patent applications and patents included in the Patent Rights; provided that University may require licensees to pay or reimburse the University. (c) University agrees to Paranotek may use its best reasonable efforts which may, at the election of the University, be in conjunction with Inventor to commercialize the Patent Rights by licensing or selling the Patent Rights to third parties. It will be the responsibility of University Paranotek to screen and select qualified potential licensees and purchasers, and to prepare and negotiate the terms of any sublicense or purchase agreement (hereinafter “License Agreements”). Such License Agreements shall provide that all amounts payable as license fees, royalties, or like proceeds shall be paid to University, and University shall, in turn, pay retained by Paranotek. Paranotek agrees to provide to Inventor a share copy of such amounts it receives any fully executed License Agreement (“revenue”and any amendments or waivers thereto) in accordance with Section 2.2(d) of this Agreement. University agrees at Inventor’s request, and to provide Inventor notice within thirty (30) days of the receipt of all such revenues. (d) University Paranotek agrees that any revenue received by University Paranotek as licensing license fees, royalties or like proceeds under any License Agreement respecting the Patent Rights shall be held and administered in accordance with the terms of this Agreement and other applicable agreements, policies, and laws. University In accordance with Paranotek 's pertinent Rules, Policies and Procedures regarding inventions, Paranotek shall allocate and pay the following shares of net revenues: (1) Inventor’s Share: With respect to initial net revenue in the amount of $50,000.00, Inventor shall receive fifty (50) percent no portion of such net revenue. With respect to any subsequent net revenue that exceeds the initial $50,000 net revenue, Inventor shall receive forty (40) percent of such subsequent net revenue. If Inventor comprises multiple inventors, then each shall receive an equal share of the Inventor’s Share unless the inventors advise the University of a different pro rata sharing to which the inventors have mutually agreed. (2) As used herein, the term “"net revenue” " means gross revenue received by University Paranotek from commercial application of the Patent Rights, including amounts received by University Paranotek as license fees, royalties, or like proceeds under any License Agreement respecting the Patent Rights, minus University’s Paranotek 's direct, out-of-pocket costs incurred as of the date of receipt of the gross revenue in protecting, maintaining, licensing and preserving the Patent Rights. Examples of such costs include, but are not limited to, include legal fees and costs paid in connection with filing and issuance of patent applications, patent annuities and maintenance fees paid to governments, fees paid to attorneys and marketing agents for preparing, negotiating and auditing the License Agreement and un-un- reimbursed costs of litigation to enforce and maintain the Patent Rights. Gross revenue does not include support for research sponsored by any party including a licensee of the Patent Rights. (e) University Paranotek agrees to permit Inventor to inspect, copy, and audit University’s Paranotek's records pertaining to University’s Paranotek's revenue under the License Agreement(s) and University’s Paranotek 's payments to Inventor pursuant to Section 2.2(d2.2 (d) above. (f) University Paranotek may at any time elect to withdraw from this Agreement and, at Inventor’s 's request, University Paranotek may assign to Inventor the entire right, title, and interest in the Patent Rights, or any of them, including any corresponding interest in revenue from the commercial exploitation of the Patent Rights, or any of them. In this event, the University Paranotek shall not have no further obligation to pursue protection and commercial exploitation of the Patent Rights or to pay any further costs and expenses which may be incurred in connection therewith, except that the University Paranotek shall be responsible for the payment of any costs, expenses, and liabilities incurred by University Paranotek through the date of such withdrawal. Upon such withdrawal and assignment to Inventor, the University Paranotek shall not thereafter have any rights regarding or exercise any control over negotiations regarding commercial utilization and exploitation or other management and administration of the Patent Rights; provided, that University Paranotek shall be entitled to receive a reasonable royalty on the use or sales under the Patent Rights resulting from such commercial utilization and exploitation until it has received an amount equal to the out-of-pocket costs incurred by University Paranotek in obtaining and maintaining the Patent Rights. It is further provided that the University shall retain a royalty-free license under such Patent Rights for University to make and use the Inventions. (g) The obligation of University to allocate and pay to Inventor the above specified share of University’s revenue under any License Agreement(s) respecting the Patent Rights shall be in effect for the life of such License Agreement(s) and shall insure to the benefit of Inventor, and his/her successors and assigns, irrespective of whether Inventor is employed by University.