Common use of LICENSE TO RESEARCH INTELLECTUAL PROPERTY Clause in Contracts

LICENSE TO RESEARCH INTELLECTUAL PROPERTY. In consideration for sponsoring the applicable Research Task Order, KSURF hereby grants to Sponsor: a fully paid-up, non-exclusive, non-transferable, royalty-free license (without the right to sublicense except to Sponsor’s affiliates worldwide) to use, make or have made any products or processes containing KSURF owned Research Intellectual Property and jointly owned Research Intellectual Property, exclusively for Sponsor’s own internal, research and development purposes, and should Sponsor so elect (in its sole discretion and at any time), a fully paid-up, non-exclusive, non-transferable, royalty-free license to make, use, offer for sale, sell or have sold any products or processes containing KSURF owned Research Intellectual Property and jointly owned Research Intellectual Property (provided that, in the event Sponsor elects to receive the license pursuant to this Clause (ii), Sponsor shall: pay a pro-rata share of all reasonable patent/patent application and prosecution costs, and contact KSURF to execute a confirmatory commercial non-exclusive, royalty-free license. Furthermore, Sponsor shall have an exclusive option to negotiate an exclusive commercial license with KSURF for KSURF owned Research Intellectual Property and/or KSURF’s interest in jointly owned Research Intellectual Property, subject to any rights of the U.S. Government therein, provided that Sponsor pays all costs for the preparation, filing, prosecution and maintenance of any patents on such Intellectual Property. KSURF shall promptly disclose to Sponsor all KSURF owned and/or jointly owned Research Intellectual Property, and Sponsor agrees to notify K-State in writing within ninety (90) days of such disclosure to Sponsor as to whether or not it wishes to exercise its option to secure an exclusive commercial license with respect thereto (the “Option Period”). The Parties will mutually agree on any extensions of the Option Period. During the Option Period, Sponsor shall advise KSURF whether it requests KSURF to file and prosecute patent applications related to any such Intellectual Property at Sponsor’s expense. Sponsor shall have ninety (90) days from the date it exercises its option to conclude an exclusive license agreement with KSURF for KSURF owned Research Intellectual Property and/or KSURF’s interest in jointly owned Research Intellectual Property (the “Negotiation Period”). The Parties will mutually agree upon any extensions of the Negotiation Period. The Parties shall negotiate all exclusive licenses in good faith, with such licenses containing reasonable business terms common to Sponsor’s field of commercial interest and proposed application of the inventions. During the Option Period and, if any, the Negotiation Period, KSURF shall not disclose or offer for sale or license to any third party any KSURF owned Research Intellectual Property and/or KSURF’s interest in jointly owned Research Intellectual Property; and if Sponsor elects not to secure an exclusive license or fails to notify KSURF within the Option Period, or if the Parties fail to enter into an exclusive license during the Negotiation Period without mutual agreement to extend such period, rights to KSURF owned Research Intellectual Property and/or KSURF’s interest in jointly owned Research Intellectual Property disclosed hereunder shall be disposed of in accordance with KSURF’s policies with no further obligation to Sponsor; provided, however, that for a period of one year from the end of the Negotiation Period, if any, KSURF agrees that it shall not grant, or offer to grant, identical or substantially comparable rights to a third party on terms or at a price more favorable than offered to Sponsor during the course of negotiations. Any violation of the foregoing provision shall automatically grant Sponsor the right and option to acquire such rights on terms offered to any such third party.