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.