Patent and Know-How License Agreement - Boston University and Sequenom Inc.
PATENT AND KNOW-HOW LICENSE AGREEMENT
THIS PATENT AND KNOW-HOW LICENSE AGREEMENT (the "Agreement") dated as of
the 1st day of June, 1996 (the "Effective Date"), is made by and between the
TRUSTEES OF BOSTON UNIVERSITY (hereinafter referred to as "UNIVERSITY"), a
corporation duly organized and existing under the laws of the Commonwealth of
Massachusetts and having a principal office at 147 Bay State Road, Boston,
Massachusetts 02215, and Sequenom, Inc., a corporation organized under the laws
of Delaware, whose address is c/o Techno Venture Management, 101 Arch Street,
Suite 1950, Boston, Massachusetts 02110 (Sequenom, Inc. and any Affiliate of
Sequenom, Inc. hereinafter referred to as "LICENSEE").
WITNESSETH:
WHEREAS, UNIVERSITY and LICENSEE have entered into a certain Sponsored
Research Agreement, effective as of September 15, 1994 (the "Sponsored Research
Agreement"), pursuant to which UNIVERSITY granted to LICENSEE a first option to
acquire an exclusive, worldwide license to certain technology; and
WHEREAS, UNIVERSITY and LICENSEE wish to set forth the terms of such
exclusive, worldwide license;
NOW, THEREFORE, in consideration of the foregoing premises and the mutual
covenants herein contained, the parties hereby agree as follows:
ARTICLE I. DEFINITIONS
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For purposes of the Agreement, the terms defined in this Article shall have
the respective meanings set forth below:
1.1 "Affiliate" shall mean, with respect to any Person, any other Person
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which directly or indirectly controls, is controlled by, or is under common
control with, such Person. A Person shall be regarded as in control of another
Person if it directly or indirectly possesses the power to direct or cause the
direction of the management and policies of the other Person by any means
whatsoever.
1.2 "Field" shall mean analysis, sequencing and detection of nucleic acids
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using mass spectrometry.
1.3 "First Commercial Sale" shall mean, with respect to any Product, the
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first sale for use or consumption by the general public of such Product.
1.4 "Net Income" shall mean all royalties actually received by LICENSEE
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from sublicensees with respect to Products and all sublicense fees (including
technology access fees, license issue fees, and license maintenance fees, but
excluding payments in connection with the issuance of debt or securities by
LICENSEE) actually received by LICENSEE relating solely to sublicenses of
University Patent Rights or University Know-How, in each case that do not
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involve Net Sales of Products by LICENSEE, less all costs, expenses and
disbursements incurred by LICENSEE in connection therewith, including, without
limitation, all legal and accounting fees associated with the preparation,
negotiation and implementation of any such sublicense agreements.
1.5 "Net Sales" shall mean the gross amount billed or invoiced on sales
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by LICENSEE of Products, less the following: (i) trade, quantity, or cash
discounts to the extent actually allowed and taken; (ii) amounts repaid or
credited by reason of rejection or return; and (iii) any taxes, imposts,
tariffs, custom duties or other governmental charges levied on the production,
sale, transportation, delivery, or use of a Product which are paid by or on
behalf of Company.
1.6 "Person" shall mean an individual, corporation, partnership, trust,
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business trust, association, joint stock company, limited liability company,
limited liability partnership, joint venture, pool, syndicate, sole
proprietorship, unincorporated organization, governmental authority or any other
form of entity not specifically listed herein.
1.7 "Product" shall mean any product which if made, used or sold would
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infringe one or more Valid Patent Claims in an issued patent but for the license
granted by the Agreement, or which otherwise uses, incorporates or was
conceived, developed or reduced to practice using the UNIVERSITY Patent Rights
or UNIVERSITY Know-How.
1.8 "Territory"' shall mean all jurisdictions worldwide.
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1.9 "Third Party" shall mean any Person other than UNIVERSITY, LICENSEE
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and their respective Affiliates.
1.10 UNIVERSITY Improvements" shall mean all inventions, discoveries,
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processes, methods, compositions, formulae, procedures, protocols, software
developments and improvements, techniques, results of experimentation and
testing, information and data, which have been conceived by employees or others
acting on behalf of UNIVERSITY, either alone or jointly with others, as of the
Effective Date of the Agreement, or which are conceived by employees or others
acting on behalf of UNIVERSITY, either alone or jointly with others, during any
Research Program under the Sponsored Research Agreement, and which constitute
improvements to the UNIVERSITY Patent Rights or UNIVERSITY Know-How or are
conceived, developed or reduced to practice using the UNIVERSITY Patent Rights
or UNIVERSITY Know-How.
1.11 "UNIVERSITY Know-How" shall mean all inventions, discoveries,
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processes, methods, compositions, formulae, procedures, protocols, software
developments and improvements, techniques, results of experimentation and
testing, information and data, which are not generally known, (i) embodying or
produced through use of UNIVERSITY Patent Rights and associated know-how, or
(ii) embodying or produced through inventions conceived, discovered or reduced
to practice, whether alone or with others, by UNIVERSITY employees or with
UNIVERSITY facilities or equipment, in the course of any Research Program under
the Sponsored Research Agreement, or (iii) otherwise regarding the Field, in
which UNIVERSITY
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has an ownership or other interest during the term of this Agreement; all to the
extent and only to the extent that UNIVERSITY has the right to grant licenses or
other rights thereunder.
1.12 "UNIVERSITY Patent Rights" shall mean (a) United States Patent No.
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5,503,980, entitled "Positional Sequencing by Hybridization;" United States
Patent Application No. 07/972,012, entitled "Positional Sequencing by
Hybridization;" United States Patent Application No. 08/110,691 entitled
"Positional Sequencing by Hybridization;" United States Patent Application No.
08/420,009, entitled "Solid Phase Sequencing of Biopolymers By Mass
Spectrometry;" United States Patent Application No. 08/419,914, entitled "Solid
Phase Sequencing of Nucleic Acids;" United States Patent Application No.
08/614/151 entitled "Solid Phase Sequencing of Double-Stranded Nucleic Acids;"
and all patent applications, heretofore or hereafter filed or having legal force
in any country within the Territory, embodying or produced through inventions
conceived, discovered or reduced to practice, whether alone or with others, by
UNIVERSITY employees or with UNIVERSITY facilities or equipment, in the course
of any Research Program under the Sponsored Research Agreement, or otherwise
regarding analysis, sequencing and detection of nucleic acids using mass
spectrometry, which claim an invention in which UNIVERSITY has an ownership or
other interest during the term of this Agreement, (b) all patents that have
issued or in the future issue from the patent applications described in clause
(a) above, including utility, model and design patents and certificates of
invention, and (c) all divisions, continuations, continuations-in-part which are
directed to subject matter specifically described in the U.S. Patents and Patent
Applications listed above, reissues, renewals, extensions or additions to any
such patent applications and patents, and any UNIVERSITY Improvements thereto
upon which a patent application has been filed or a patent has issued. A list of
the UNIVERSITY Patent Rights as of the date of the Agreement is attached hereto
as Exhibit A.
1.13 "Valid Patent Claim" shall mean a claim of an issued and
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unexpired patent included within the UNIVERSITY Patent Rights that has not been
held permanently revoked, unenforceable or invalid by a decision of a court or
other governmental agency of competent jurisdiction, which decision is
unappealable or has not been appealed within the time allowed for appeal, and
that has not been admitted to be invalid or unenforceable through reissue or
disclaimer or otherwise.
ARTICLE II. REPRESENTATIONS AND WARRANTIES
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Each party hereby represents and warrants to the other party as follows:
2.1 Existence and Power. Such party (a) is duly organized, validly
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existing and in good standing under the laws of the jurisdiction in which it is
incorporated and (b) has the power and authority and the legal right to own and
operate its property and assets, to lease the property and assets it operates
under lease, and to carry on its business as it is now being conducted.
2.2 Authorization and Enforcement of Obligations. Such party (a) has the
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power and authority and the legal right to enter into this Agreement and to
perform its obligations hereunder and (b) has taken all necessary action on its
part to authorize the execution and delivery of this Agreement and the
performance of its obligations hereunder. This Agreement has been duly
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executed and delivered on behalf of such party and constitutes a legal, valid
and binding obligation of such party, enforceable against such party in
accordance with its terms.
2.3 No Consents. To the knowledge of such party and subject to the rights
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of the United States government set forth in the Bayh-Dole Act, 35 U.S.C. (S)
200 et seq. (1980), all necessary consents, approvals and authorizations of all
governmental authorities and other Persons required to be obtained by such party
in connection with this Agreement have been obtained.
2.4 No Conflict. The execution and delivery of this Agreement and the
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performance of such party's obligations hereunder (a) to the knowledge of such
party and subject to the rights of the United States government set forth in the
Bayh-Dole Act, 35 U.S.C. (S) 200 et seq. (1980), do not conflict with or violate
any requirement of applicable laws or regulations, and (b) do not conflict with,
or constitute a default under, any contractual obligation of it.
2.5 University Representations and Warranties. UNIVERSITY hereby
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represents and warrants to LICENSEE as follows:
(a) Validity and Enforceability of UNIVERSITY Patent Rights. To the
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knowledge of UNIVERSITY, every claim of the patents listed on Exhibit A attached
hereto is valid and enforceable, and every claim of the patent applications
listed on such Exhibit A, is valid and, if issued, shall be enforceable.
(b) Third Party Claims. No claim has been made by, and to the
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knowledge of UNIVERSITY no claim is available to, any Third Party that any
activity permitted by the licenses granted to LICENSEE pursuant to this
Agreement constitutes an infringement of any right of any such Third Party
anywhere in the world, including, without limitation, any right under any
copyright, trademark, trade secret, patent, or other proprietary right of any
such Third Party.
(c) Patent Documents. UNIVERSITY has provided LICENSEE with copies of
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all documents relevant to the validity or enforceability of the University
Patent Rights, including, without limitation, copies of all patent searches and
legal opinion letters relating to any patents included within the University
Patent Rights and copies of all documents relating to any infringement of the
University Patent Rights.
2.6 Warranty Disclaimer. EXCEPT AS SET FORTH IN THIS SECTION 2,
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UNIVERSITY MAKES NO WARRANTY, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION,
ANY IMPLIED WARRANTIES OF MERCHANTABILITY, OF NON-INFRINGEMENT, OF SCOPE OF
PATENT RIGHTS, OR OF FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT TO ANY
PATENT, TRADEMARK, SOFTWARE, NON-PUBLIC OR OTHER INFORMATION, OR TANGIBLE
RESEARCH PROPERTY, LICENSED OR OTHERWISE PROVIDED TO LICENSEE HEREUNDER AND
HEREBY DISCLAIMS THE SAME.
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ARTICLE III. LICENSE GRANT
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3.1 License Grant to LICENSEE. UNIVERSITY hereby grants to LICENSEE an
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exclusive license, including the right to grant sublicenses, under the
UNIVERSITY Patent Rights and UNIVERSITY Know-How to develop, make, have made,
use, sell, license, market and otherwise exploit Products in the Territory.
Except as set forth in Section 3.2 of this Agreement, such license shall be
exclusive as to UNIVERSITY. Such license shall be limited to the Field with
respect to the inventions set forth on Exhibit C-I to the Sponsored Research
Agreement; otherwise, such license shall be valid with respect to any field.
3.2 Reservation of Certain Rights. Notwithstanding the foregoing, the
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license granted to LICENSEE by the Agreement is subject to the reservation of
(a) a non-exclusive license, without the right to sublicense, for UNIVERSITY and
its affiliated hospitals to use the inventions claimed by the UNIVERSITY Patent
Rights solely for noncommercial research purposes and (b) if and to the extent
applicable, the rights of the United States of America as set forth in Public
Laws 96-517 and 98-620 (codified at 35 U.S.C. 200 et. seq.).
-- ---
LICENSEE shall comply with the provisions of 35 U.S. C. 204, as amended from
time to time. The Parties shall comply with all applicable United States and
foreign laws and regulations, and nothing in this Agreement shall require or be
construed to require either Party to violate such provisions of law or subject
either Party to liability for adhering to such provisions of law.
3.3 Technical Assistance.
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(a) Upon execution of the Agreement, UNIVERSITY shall disclose and
make available to LICENSEE all information available to UNIVERSITY and not
previously disclosed to LICENSEE regarding the use of the UNIVERSITY Patent
Rights and UNIVERSITY Know-How.
(b) During the term of the Agreement, upon reasonable notice, during
normal business hours and after agreement on anticipated costs, UNIVERSITY (a)
shall provide such technical assistance regarding the UNIVERSITY Patent Rights
and UNIVERSITY Know-How as LICENSEE reasonably requests to conduct its
activities contemplated by the Agreement, (b) shall make available to LICENSEE
such technical personnel of UNIVERSITY as reasonably necessary to provide the
foregoing technical assistance, and (c) shall disclose and make available to
LICENSEE all information available to UNIVERSITY and not previously disclosed to
LICENSEE regarding the use of the UNIVERSITY Patent Rights and UNIVERSITY Know-
How. LICENSEE shall reimburse UNIVERSITY for research or consulting costs agreed
by the parties for any such technical assistance, together with such reasonable
out-of-pocket travel and other expenses incurred by UNIVERSITY in providing such
technical assistance as are approved in advance by LICENSEE. UNIVERSITY shall
provide LICENSEE with estimates of the anticipated costs of any requested
technical assistance prior to undertaking such technical assistance.
3.4 Exclusivity of Sublicenses. LICENSEE hereby agrees that every
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sublicensing agreement to which it shall be a party and which shall relate to
the rights, privileges and license
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<PAGE>
granted hereunder shall contain a statement describing the conditions under
which LICENSEE'S exclusive rights, privileges and license hereunder may
terminate.
3.5 Copies of Sublicenses. LICENSEE shall furnish to UNIVERSITY a true
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and complete copy of each sublicense agreement and each amendment thereto,
promptly after the sublicense or amendment has been executed. Each such
sublicense agreement or amendment shall constitute Confidential Information of
LICENSEE.
3.6 Obligations of Sublicensees. LICENSEE agrees that any sublicenses
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granted by it shall not be inconsistent with this Agreement and shall contain
provisions comparable to the provisions of this Agreement with respect to
confidentiality.
3.7 Limitation on Rights. The license granted hereunder shall not be
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construed to confer any rights upon LICENSEE by implication, estoppel or
otherwise as to any technology not specifically licensed hereunder.
ARTICLE IV. DUE DILIGENCE
--------------------------
4.1 LICENSEE agrees to use commercially reasonable efforts to effect
introduction of the use of the Products into the United States commercial market
as soon as practical, consistent with sound and reasonable business practices
and judgments.
4.2 LICENSEE acknowledges that UNIVERSITY shall be permitted to review any
business plan of LICENSEE that LICENSEE has provided to UNIVERSITY's Community
Technology Fund ("CTF") from time to time, and LICENSEE hereby authorizes CTF to
release any such business plan to UNIVERSITY. UNIVERSITY shall have the right to
render non-exclusive the license granted under Section 3 of this Agreement,
solely with respect to any particular "subject inventions," as defined in the
Bayh-Dole Act, 35 U.S.C. 201(e) (1980), within the UNIVERSITY Patent Rights, if
and only if: (i) at any time after four (4) years after the Effective Date,
within ninety (90) days after written notice from UNIVERSITY to LICENSEE of
UNIVERSITY's intent to render such license non-exclusive, LICENSEE has not put
the subject inventions into commercial use and is not keeping such subject
inventions reasonably available to the public; (ii) LICENSEE is not demonstrably
engaged in a significant research, development, manufacturing, marketing or
licensing program with respect to such subject inventions; and (iii) such
failure does not result from actions or inactions of any agency whose approval
is required for commercial sales. At any time after seven (7) years after the
Effective Date, UNIVERSITY shall have the right to terminate the license granted
under Section 3 of this Agreement, solely with respect to any such "subject
inventions," if and only if the conditions set forth in sub-paragraphs (ii) and
(iii) in the preceding sentence are met and, within ninety (90) days after
written notice from UNIVERSITY to LICENSEE of UNIVERSITY's intent to terminate
such license, LICENSEE has not put such subject inventions into commercial use
and is not keeping such subject inventions reasonably available to the public.
If UNIVERSITY elects to terminate such license with respect to particular
subject inventions, the UNIVERSITY shall refund to LICENSEE that portion of the
funds provided to UNIVERSITY by LICENSEE under the Sponsored Research Agreement
that related to the development of such subject
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<PAGE>
inventions. UNIVERSITY's rights under this Section 4.2 shall be UNIVERSITY's
sole remedy for failure by LICENSEE to put Products to commercial use or to make
Products available to the public. Without limiting the generality of the
foregoing, failure by LICENSEE to put Products to commercial use or to make
Products available to the public shall not constitute a ground for UNIVERSITY to
terminate this Agreement under Section 9.4 hereof.
ARTICLE V. PAYMENTS
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5.1 Royalties. ***
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(a) ***
(b) ***
(c) ***
5.2 Payments. All royalties pursuant to Section 5.1 shall accrue on the
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date on which LICENSEE actually receives payment with respect to Net Sales of
particular Products or with respect to particular Net Income. All royalties
pursuant to Section 5.1 shall be paid on a quarterly basis, within 60 days
following the end of the quarter in which they accrued. Each payment shall be
accompanied by a report setting forth the calculation of the amount due. All
monies to be paid to UNIVERSITY shall be made and computed in United States
Dollars, and LICENSEE shall use its best efforts to convert royalties in any
country to United States Dollars; provided, however, that if conversion to and
transfer of Dollars cannot be made by LICENSEE in any country for any reason,
LICENSEE may pay such sums in the currency of the country in which Net Sales are
made or Net Income is paid to LICENSEE, deposited in UNIVERSITY's name, in a
bank designated by UNIVERSITY in any such country. The rate of exchange of local
currencies to United States Dollars shall be the rate of exchange prevailing at
the Bank of Boston on the day such payment is made pursuant to the periods set
forth in this Section 5.2.
5.3 Reports. Within sixty (60) days after March 31, June 30, September 30
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and December 31 of each year in which this Agreement is in effect, LICENSEE
shall deliver to UNIVERSITY full, true and accurate reports of its activities
relating to this Agreement during the preceding three month period. These
reports shall include at least the following:
(a) amount of Net Sales for period;
(b) deductions applicable to a determination of Net Sales;
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*** Portions of this page have been omitted pursuant to confidential
treatment request and filed separately with the Commission.
<PAGE>
(c) amount of Net Income received from sublicensees;
(d) deductions applicable to a determination of Net Income;
(e) total royalties due; and
(f) activities of LICENSEE directed toward promoting the sale and use
of Products.
5.4 Records. LICENSEE shall keep (or cause to be kept) and maintain
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complete and accurate records of its sales of the Products in accordance with
generally accepted accounting principles. Such records shall be accessible to an
authorized representative selected and paid for by UNIVERSITY and acceptable to
LICENSEE, not more than once a year at any reasonable time during business hours
until three (3) years after the end of the royalty period to which such records
relate, for the purpose of verifying NET SALES and any royalty due thereon. Such
representative shall disclose to UNIVERSITY only information relating to the
accuracy of the records kept and the payments made, and shall be under a duty to
keep confidential any other information gleaned from such records. Any
adjustment in the amount of royalties due the UNIVERSITY on account of
overpayment or underpayment of royalties shall be made at the next date when
royalty payments are to be made to the UNIVERSITY under Section 5.2 herein. If
the verification on behalf of the UNIVERSITY results in an upward adjustment of
greater than ten percent (10%) of royalties due to the UNIVERSITY for the period
of time in question, LICENSEE shall pay the out-of-pocket expenses of the
UNIVERSITY relating to such verification.
5.5 Credits.
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(a) If LICENSEE must pay license fees or royalties to Third Parties
on a Product, LICENSEE may credit against any amounts due UNIVERSITY a total of
*** of such payments to Third Parties; provided, however, that any payment
otherwise due UNIVERSITY shall not be reduced by more than ***. In addition, and
notwithstanding, the last clause of the preceding sentence, in the event that
the license fees and royalties payable hereunder and to Third Parties on a
Product exceed *** of the Net Sales price of such Product in any jurisdiction or
*** of LICENSEE's Net Income with respect to sublicenses in such jurisdiction,
LICENSEE may reduce any amounts due UNIVERSITY hereunder pro rata with the
license fees and royalties due Third Parties on such Product, to the extent
necessary to reduce the total license fees and royalties for such Product to ***
of the Net Sales price of the Product or *** of LICENSEE'S Net Income in such
jurisdiction.
(b) LICENSEE may credit against any amounts due UNIVERSITY under this
Agreement a total of *** of expenses relating to patent filings, prosecution,
and maintenance for the licensed invention(s).
(c) The amounts credited pursuant to this Section 5.5 are in addition
to any credit or offset permitted pursuant to Section 6.2 hereof.
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*** Portions of this page have been omitted pursuant to confidential
treatment request and filed separately with the Commission.
<PAGE>
5.6 Late Payments. In the event that any payment due hereunder is not
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made when due, the payment shall accrue interest beginning on due date as herein
specified, calculated at the annual rate of the prime interest rate quoted by
the Bank of Boston on the date said payment is due, the interest being
compounded on the last day of each calendar quarter, provided that in no event
shall said annual rate exceed the maximum legal interest rate in Massachusetts.
The payment of such interest shall not foreclose UNIVERSITY from exercising any
other rights it may have as a consequence of any overdue payment.
ARTICLE VI. INFRINGEMENT ACTIONS
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6.1 Enforcement of UNIVERSITY Patent Rights. UNIVERSITY shall notify
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LICENSEE of any infringement in the Territory known to UNIVERSITY of the
UNIVERSITY Patent Rights and shall provide LICENSEE with the available evidence,
if any, of such infringement. LICENSEE, at its sole expense, shall have the
right to determine the appropriate course of action to enforce the UNIVERSITY
Patent Rights or otherwise abate the infringement thereof, to take (or refrain
from taking) appropriate action to enforce the UNIVERSITY Patent Rights, to
control any litigation or other enforcement action and to enter into, or permit,
the settlement of any such litigation or other enforcement action with respect
to the UNIVERSITY Patent Rights, and shall consider, in good faith, the
interests of UNIVERSITY in so doing. The parties may agree to permit UNIVERSITY
to control any such enforcement action. The party controlling any enforcement
action shall not settle the action or otherwise consent to judgment in such
action that adversely affects the rights or interests of the non-controlling
party or imposes additional obligations on the non-controlling party, without
the prior written consent of the non-controlling party. The party controlling
any enforcement action shall pay all expenses associated with such action;
provided, however, that LICENSEE may offset fifty percent (50%) of the expenses
incurred in any such action against any amounts due UNIVERSITY, provided that in
no event shall any payment otherwise due UNIVERSITY be reduced for such purpose
by more than fifty percent (50%). Any recovery obtained in such action shall be
distributed in the following order of precedence: (1) UNIVERSITY will be
reimbursed for any withheld payments, (2) LICENSEE will be reimbursed for its
expenses, (3) UNIVERSITY will be paid a reasonable approximation of its royalty
on lost sales of Products, and (4) LICENSEE will retain any remaining amounts
except with respect to punitive or other exemplary damages, which shall be
distributed seventy percent (70%) to LICENSEE and thirty percent (30%) to
UNIVERSITY.
6.2 Abandonment of Suit. Should either party commence a suit under these
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provisions and thereafter elect to abandon the same, it shall give timely notice
to the other party who, if it so desires, may continue prosecution of such suit;
provided, however, that the sharing of expenses and any recovery in such suit
shall be as agreed upon between the parties.
6.3 Allegations of Invalidity or Non-Infringement. In the event any claim
---------------------------------------------
or action alleging invalidity or non-infringement of any of the UNIVERSITY
Patent Rights is brought against LICENSEE and/or UNIVERSITY, LICENSEE shall have
the right to control the defense and settlement of the action, provided that
payment of the expenses and costs of such action, including attorneys' fees,
shall be borne and reimbursed as set forth in Section 6. 1.
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6.4 Cooperation. In any infringement suit as either party may institute
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to enforce the UNIVERSITY Patent Rights pursuant to this Agreement, the other
party hereto agrees, at the request and expense of the party initiating the
suit, to use its best efforts to cooperate, to have its employees testify when
requested and to make available relevant records, papers, information, samples,
specimens, and the like.
6.5 Consent to Settlement. No settlement or consent judgment or other
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voluntary and final disposition of any suit affecting the UNIVERSITY Patent
Rights may be entered into without the consent of both parties, which consent
shall not be unreasonably withheld. Notwithstanding the foregoing, the party
controlling any suit referred to in this Article VI shall have the right to
settle any claims for infringement upon such terms and conditions that shall be
mutually agreed upon by UNIVERSITY and LICENSEE. During the term of this
Agreement, and upon the consent of UNIVERSITY, LICENSEE shall have the right to
sublicense any alleged infringer under the UNIVERSITY Patent Rights.
ARTICLE VII. CONFIDENTIALITY
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7.1 Confidential Information. Each party shall exercise reasonable care
------------------------
to maintain in confidence all information of the other party (including samples)
disclosed by the other party and identified as, or acknowledged to be,
confidential (the "Confidential Information"), and shall not use, disclose or
grant the use of the Confidential Information except on a need-to-know basis to
those directors, officers, employees, agents, permitted sublicensees and
permitted assignees, to the extent such disclosure is reasonably necessary in
connection with such party's activities as authorized under this Agreement. Each
party shall notify the other promptly upon discovery of any unauthorized use or
disclosure of the other party's Confidential Information.
7.2 Permitted Disclosures. The nonuse and nondisclosure obligations
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contained in this Article shall not apply to the extent that (a) any receiving
party (the "Recipient") is required (i) to disclose information by law, order or
regulation of a governmental agency or a court of competent jurisdiction, or
(ii) to disclose information to any governmental agency for purposes of
obtaining approval to test or market a product or to apply for a patent on any
UNIVERSITY Improvement, provided that the Recipient shall provide written notice
thereof to the other party and sufficient opportunity to object, time
permitting, to any such disclosure or to request confidential treatment thereof;
or (b) the Recipient can demonstrate that (i) the information was public
knowledge at the time of such disclosure by the Recipient, or thereafter became
public knowledge, other than as a result of acts attributable to the Recipient
in violation hereof-, (ii) the information was rightfully known by the Recipient
(as shown by its written records) prior to the date of disclosure to the
Recipient by the other party hereunder; (iii) the information was disclosed to
the Recipient on an unrestricted basis by a Third Party not under a duty of
confidentiality to the other party; or (iv) the information was independently
developed by employees or agents of the Recipient without access to the
Confidential Information of the other party.
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ARTICLE VIII. INVENTIONS AND PATENTS
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8.1 Ownership of Inventions. Ownership of UNIVERSITY Patent Rights and
-----------------------
UNIVERSITY Know-How developed by individuals providing technical assistance on
behalf of UNIVERSITY pursuant to this Agreement shall be governed as if such
UNIVERSITY Patent Rights and UNIVERSITY Know-How were developed pursuant to the
Sponsored Research Agreement.
8.2 Patent Rights Generally. Control over, and associated expenses for,
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the filing, prosecution, and maintenance of patents and patent applications
relating to inventions licensed hereunder will be allocated according to Section
8.2 of the Sponsored Research Agreement. In the event that UNIVERSITY obtains
additional licensees under any invention licensed by LICENSEE, LICENSEE shall
pay only its pro rata share of patent-related expenses. LICENSEE shall have the
right to cease paying for the filing, prosecution, or maintenance of any patent
or patent application in any country upon thirty (30) days prior written notice
to UNIVERSITY. In such event, LICENSEE will have no further rights under this
Agreement with respect to such patent or patent application in such country, and
LICENSEE agrees to assign to UNIVERSITY any rights LICENSEE may have in such
patent or patent application in such country.
8.3 Reimbursement of Expenses. LICENSEE shall reimburse UNIVERSITY for
-------------------------
the reasonable expenses incurred by UNIVERSITY in relation to the filing,
prosecution, and maintenance of patents and patents applications licensed
hereunder; provided, however, that such expenses shall be equally divided among
LICENSEE and any other licensees of the UNIVERSITY Patent Rights or the
UNIVERSITY Know-How.
ARTICLE IX. TERM AND TERMINATION
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9.1 Term. This Agreement shall expire upon the expiration of the last to
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expire patent included with the UNIVERSITY Patent Rights.
9.2 Termination by UNIVERSITY. UNIVERSITY's right to terminate the
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license set forth in Section 3 of this Agreement shall be as set forth in
Section 4.2.
9.3 Termination by LICENSEE. LICENSEE may terminate the Agreement,
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in its sole discretion, upon written notice to UNIVERSITY.
9.4 Termination for Cause. Except as otherwise provided in the
---------------------
Article below regarding force majeure, either party may terminate the Agreement
upon or after the breach of any material provision of the Agreement by the other
party, if the other party has not cured such breach within sixty (60) days after
written notice thereof by the non-breaching party.
9.5 Effect of Expiration or Termination. Expiration or termination
-----------------------------------
of the Agreement shall not relieve the parties of any obligation accruing prior
to such expiration or termination, and the provisions of Articles VI, VII, X and
XIII shall survive the expiration or termination of the Agreement. The effect of
termination by UNIVERSITY pursuant to Section 4.2 shall be as set forth therein.
Upon expiration of the Agreement under Section 9.1 above,
-Page 11 of 23-
<PAGE>
LICENSEE shall have a fully-paid, non-exclusive license to make, have made, use,
sell, license, market and otherwise exploit Products in the Territory.
ARTICLE X. INDEMNIFICATION; INSURANCE; AND LIABILITY
-----------------------------------------------------
10.1 Compliance with Government Regulations. The parties agree to
--------------------------------------
comply with all regulations and safety standards of government agencies such as
the FDA.
10.2 Indemnification. LICENSEE shall defend, indemnify and hold
---------------
harmless UNIVERSITY, and its trustees, officers, employees and agents and their
respective successors, heirs and assigns (the "Indemnitees"), against any and
all liability, damage, loss or expense (including reasonable attorneys' fees and
expenses of litigation) that may be incurred by or imposed upon the Indemnitees,
or any of them, in connection with any Third Party claim, suit, demand, action
or judgment arising out of the following:
(a) the design, production, manufacture, sale, use in commerce, lease
or promotion by LICENSEE or by an Affiliate or sublicensee of LICENSEE of any
product, process or service relating to or developed pursuant to this Agreement;
or
(b) any other activities of LICENSEE or a sublicensee to be carried
out pursuant to this Agreement.
LICENSEE'S indemnity under (a) shall apply to any liability, damage, loss or
expense whether or not it is attributable to the negligent activities of the
Indemnitees, and "Third-Party" claims under (a) shall be deemed to include
LICENSEE'S cross-claims and Third-Party complaints against Indemnitees arising
out of the matters described in (a) to the extent they are based on Third-Party
claims against LICENSEE arising out of such matters. LICENSEE'S indemnification
under (b) shall not apply to any liability, damage, loss or expense to the
extent that it is attributable to the negligence or willful misconduct of the
Indemnitees.
10.3 Indemnification Procedure. A party (the "Indemnitee") that intends to
-------------------------
claim indemnification under this article shall promptly notify LICENSEE of any
loss, liability, damage or expense, or any claim, demand, action or other
proceeding with respect to which the Indemnitee intends to claim such
indemnification, and the Indemnitee shall provide LICENSEE with the sole control
of the defense or settlement of any such claim, demand, action or other
proceeding. LICENSEE's indemnity obligations under this article shall not apply
to amounts paid in any settlement if effected without its consent. LICENSEE
shall not settle or consent to an adverse judgment in any such claim, demand,
action or other proceeding that directly affects the rights or interests of any
Indemnitee or imposes additional obligations on such Indemnitee, without the
prior express written consent of such Indemnitee, which consent shall not be
unreasonably withheld or delayed. The Indemnitee, its employees and agents,
shall cooperate fully with LICENSEE and its legal representatives in the
investigation of any action, claim or liability covered by this indemnification.
10.4 Liability Insurance. At such time as any product, process or service
-------------------
relating to, or developed pursuant to, this Agreement is being commercially
distributed or sold (other than for
-Page 12 of 23-
<PAGE>
the purpose of obtaining regulatory approvals) by LICENSEE or a sublicensee,
LICENSEE shall at its sole expense, procure and maintain policies of
comprehensive general liability insurance in amounts not less than $2,000,000
per incident and $2,000,000 in annual aggregate and naming the Indemnitees as
additional insureds. Such comprehensive general liability insurance shall
provide product liability coverage. LICENSEE shall provide UNIVERSITY with
written evidence of such insurance upon request of UNIVERSITY. In the event the
product liability coverage aforesaid is not occurrence liability, LICENSEE shall
maintain such comprehensive general liability insurance for a reasonable period
of not less than five (5) years after it has ceased commercial distribution or
use of any product, process or service relating to, or developed pursuant to,
this Agreement. If LICENSEE is unable to obtain the required amounts of
insurance at commercially reasonable rates, UNIVERSITY will cooperate with
LICENSEE to either obtain a waiver of this provision, assist in identifying a
carrier to provide such insurance, or identify a program for self-insurance or
other alternative measures. This Section 10.4 shall survive the expiration or
termination of this Agreement. Upon request, LICENSEE shall provide UNIVERSITY
with certificates of insurance evidencing its compliance with the insurance
requirements of this Section.
10.5 Additional Limitations of Liability. Notwithstanding the provisions
-----------------------------------
Section 2.3, the liability of UNIVERSITY of for any and all breaches of this
Agreement by a party other than UNIVERSITY, and for any and all failures of
Products in the aggregate, shall be limited to five percent (5%) of the
cumulative royalties paid by LICENSEE, and LICENSEE hereby waives and disclaims
the right to recover any damages in excess of such amount for any and all such
breaches and for any and all such failures irrespective of whether such damages
are direct, indirect, consequential, incidental, or any other types of damages
and irrespective of whether based upon loss of investment, loss of production,
lost profits, interest on investment, interruption of business, or any other
loss of any character whatsoever. LICENSEE further agrees that its sole and
exclusive remedy for any and all such breaches and any and all such failures
shall be to recover damages actually sustained up to, and not in excess of, such
amount. The foregoing notwithstanding, nothing in this Agreement shall limit
LICENSEE'S right to seek equitable relief in the event of University's breach of
Article VII or Article II of this Agreement.
10.6 Limited Liability. In no event shall either party be liable to
-----------------
the other or any third party for any special, consequential or incidental
damages arising out of or related to this Agreement or with respect to any
claim, demand, action or other proceeding relating to this Agreement however
caused, and on any theory of liability (including negligence), whether or not
the party has been advised of the possibility of such damages.
ARTICLE XI. FORCE MAJEURE
--------------------------
Neither party shall be held liable or responsible to the other party nor be
deemed to have defaulted under or breached the Agreement for failure or delay in
fulfilling or performing any term of this Agreement to the extent, and for so
long as, such failure or delay is caused by or results from causes beyond the
reasonable control of the affected party including but not limited to from,
earthquakes, floods, embargoes, wars, acts of war (whether war is declared or
not),
-Page 13 of 23-
<PAGE>
insurrections, riots, civil commotions, strikes, lockouts or other labor
disturbances, acts of God or acts, omissions or delays in acting by any
governmental authority or other party.
ARTICLE XII. DISPUTE RESOLUTION
--------------------------------
12.1 Forum. Any claim or controversy arising out of or relating to
-----
this Agreement may be resolved by a court of competent jurisdiction located in
Boston, Massachusetts.
12.2 Injunctive Relief. Each party acknowledges that a breach by the
-----------------
other party of any provision of this agreement relating to Confidential
Information would cause irreparable harm, that legal damages are not sufficient
to remedy any such breach, and that the sufficiency of legal damages shall not
constitute a ground for opposing any action for equitable relief with respect to
any breach or prospective breach of any such provision. LICENSEE shall be
entitled to seek equitable relief with respect to the prospective termination of
this Agreement by UNIVERSITY.
ARTICLE XIII. MISCELLANEOUS
----------------------------
13.1 Patent Policy. This Agreement shall be subject to the Boston
-------------
University Patent Policy, Charles River Campus, as in effect as of the Effective
Date, a copy of which is attached hereto as Exhibit B.
13.2 Notices. Any consent, notice or report required or permitted to
-------
be given or made under this Agreement by one party to the other party shall be
in writing, shall be delivered personally, by confirmed facsimile transmissions,
or by U.S. first class mail, courier or nationally recognized delivery service,
and shall be addressed to the other party at its address indicated below, or to
such other address as the addressee shall have last furnished in writing to the
addressor. Except as otherwise provided in the Agreement, such consent, notice
or report shall be effective upon receipt by the addressee.
If to UNIVERSITY:
Boston University
Office of Technology Transfer
Community Technology Fund
80 East Concord Street, Suite L307C
Boston, Massachusetts 02118
Attention: Director
Tel: (617) 638-4540
Fax: (617) 638-4515
-Page 14 of 23-
<PAGE>
with a copy to:
Boston University
Office of General Counsel
125 Bay State Road
Boston, Massachusetts 02215
Attention: Dennis Hart, Esq.
Tel: (617) 353-2326
Fax: (617) 353-5529
If to LICENSEE:
Sequenom, Inc.
c/o Techno Venture Management
101 Arch Street,
Suite 1950
Boston, Massachusetts 02110
Attention: Dr. Hubert Koster
Tel: (617) 345-9320
Fax: (617) 345-9377
with a copy to:
Foley, Hoag & Eliot
One Post Office Square
Boston, Massachusetts 02109
Attention: David R. Pierson, Esq.
Tel: (617) 832-1000
Fax: (617) 832-7000
13.3 Governing Law. This Agreement shall be governed by, and construed and
-------------
enforced in accordance with, the laws of The Commonwealth of Massachusetts,
without regard to the conflicts of law principles thereof, and shall not be
governed by the United Nations Convention on Contracts for the International
Sale of Goods.
13.4 U.S. Export Laws and Regulations. Each party hereby
--------------------------------
acknowledges that the rights and obligations of this Agreement are subject to
the laws and regulations of the United States relating to the export of products
and technical information. Without limitation, each party shall comply with all
such laws and regulations.
13.5 No Other Rights. This Agreement shall not be construed to grant
---------------
any license or other rights to either party in any patent rights, know-how or
other technology of the other, except as expressly provided in this Agreement.
-Page 15 of 23-
<PAGE>
13.6 Waivers and Amendments. No change, modification, extension,
----------------------
termination or waiver of this Agreement, or any of the provisions herein
contained, shall be valid unless made in writing and signed by duly authorized
representatives of the parties hereto.
13.7 Entire Agreement. This Agreement and the Sponsored Research
----------------
Agreement embody the entire understanding between the parties and supersede any
prior understanding and agreements between and among them respecting the subject
matter hereof. There are no representations, agreements, arrangements or
understandings, oral or written, between the parties hereto relating to the
subject matter of this Agreement which are not fully expressed herein.
13.8 Independent Contractors. UNIVERSITY and LICENSEE are
-----------------------
independent contractors and are not, and shall not represent themselves as,
principal and agent, partners or joint venturers. Neither party shall attempt
to act, or represent itself as having the power, to bind the other or create any
obligation on behalf of the other. Each party shall be solely responsible for
the employment, direction and control of its employees and their acts.
13.9 Severability. Whenever possible, each provision of this
------------
Agreement will be interpreted in such manner as to be effective and valid under
applicable law. The parties agree that (i) the provisions of this Agreement
shall be severable in the event that any of the provisions hereof are for any
reason whatsoever invalid, void or otherwise unenforceable, (ii) such invalid,
void or otherwise unenforceable provisions shall be replaced by other provisions
which are as similar as possible in terms to such invalid, void or otherwise
unenforceable provisions but are valid and enforceable, and (iii) the remaining
provisions shall remain enforceable to the fullest extent permitted by law.
13.10 Captions. The Captions herein have been inserted solely for
--------
convenience of reference and in no way define or limit the scope or substance of
any provision of this Agreement.
13.11 Certain Additional Definitions. As used in this Agreement,
------------------------------
"herein" and "hereof' shall refer to this Agreement as a whole, and "including"
shall mean "including but not limited to."
-Page 16 of 23-
<PAGE>
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed and delivered as a document under seal by their duly authorized
officers, as of the date first above written.
SEQUENOM, INC. (LICENSEE) TRUSTEES OF BOSTON UNIVERSITY
(UNIVERSITY)
By: /s/ John J. DiBello By:____________________________
-------------------------
Name: John J. DiBello Name: John Bagalay
-----------------------
Title: Treasurer/CFO Title: Assistant Treasurer
----------------------
-Page 17 of 23-
<PAGE>
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
and delivered as a document under seal by their duly authorized officers, as of
the date first above written.
SEQUENOM, INC. (LICENSEE) TRUSTEES OF BOSTON UNIVERSITY
(UNIVERSITY)
By:________________________ By: /s/ John Bagalay
---------------------------------
Name:______________________ Name: John Bagalay
Title:_____________________ Title: Assistant Treasurer
-Page 18 of 23-
<PAGE>
Exhibit A
UNIVERSITY Patent Rights
BU92-42
Positional Sequencing by Hybridization
Charles Cantor
07/972,012
Filed 11/6/92
Now abandoned
BU92-42
Positional Sequencing by Hybridization
Charles Cantor
08/322,526
Filed 10/17/94
Issued as US Patent 5,503,980 on 4/2/96
BU92-42
Positional Sequencing by Hybridization with Mass Spectrometry
Charles Cantor
08/462,704
Filed 6/5/95
BU92-42
Positional Sequencing by Hybridization
Charles Cantor and Marek Przetakiewiez
08/110,691
Filed 8/23/93
BU92-42
Positional Sequencing by Hybridization
Charles Cantor
08/470,832
Filed 6/5/95
-Page 19 of 23-
<PAGE>
PCT/US/93/10616EPO
PCT/US/93/10616JAPAN
Filed 11/5/93
Correspond to 08/110,691
BU92-42B/94-71
Solid Phase Sequencing of Nucleic Acids
Charles Cantor
08/420,009
Filed 4/11/95
BU92-42B
Solid Phase Sequencing of Nucleic Acids
Charles Cantor
08/470,835
Filed 6/6/95
BU92-42C
Solid Phase Biopolymer Sequencing with Mass Spectrometry
Charles Cantor and Hubert Koster
08/419,994
Filed 4/11/95
BU92-42C
Solid Phase Biopolymer Sequencing with Mass Spectrometry
Charles Cantor and Hubert Koster
08/470,716
Filed 4/11/95
BU92-42C
Solid Phase Sequencing of Double Stranded Nucleic Acids
Charles Cantor, Hubert Koster, Dong-Jing Fu and Cassandra Smith
08/614,151
Filed 3/26/96
-Page 20 of 23-
<PAGE>
Exhibit B
Patent Policy
-Page 21 of 23-
<PAGE>
Boston University Patent Policy [university logo]
CHARLES RIVER CAMPUS
--------------------------------------------------------------------------------
PREAMBLE
The patent policy outlined herein is the Policy of the Trustees of Boston
University (the "University"). The University recognizes that patentable
inventions may be made in the course of research sponsored by the University
and/or by others through the University. It is the policy of the University to
---
maximize the benefits to the individual who makes such patentable inventions, to
the University and to the general public, and thus to stimulate initiative in
the faculty, staff, and employees of the University. The University recognizes
that this may best be accomplished through patenting and licensing such
inventions in a manner consistent with the public interest, and for such purpose
the University hereby establishes the patent policy set forth herein. This
Policy supersedes all prior patent policies and amendments thereto applicable to
the Charles River Campus.
1. PATENT POLICY
A. In order to protect the public good and the University, and in order
to fulfill obligations to research sponsors, the University shall claim equity
in all discoveries and its right to acquire the title to and control of such
discoveries where the discoveries are made by faculty, staff, employees, or
students (including all types of trainees or postgraduate fellows) working on or
arising from programs supported in whole or in part by funds, space, personnel,
or facilities provided by the University.
B. When a discovery is made by an inventor outside of any program
conducted by the University, and the inventor can demonstrate that the
University did not provide or administer significant funds, space, personnel, or
facilities for work leading to the discovery, the discovery shall remain the
exclusive property of the inventor or his/her sponsor. The University shall not
ordinarily consider provision of office, classroom, or library facilities as
constituting significant use of University funds, space, personnel, or
facilities. For purposes of this Policy, the term "Inventor" shall include all
individuals who participated in and signed a disclosure statement respecting a
discovery or invention.
C. When necessary, the University Committee on Inventions and Discoveries
("Committee") shall decide whether an invention or discovery should be
classified under Paragraph A or Paragraph B of this Paragraph 1. Persons or
entities claiming a right to receive royalty interests under the provisions of
Paragraph 4 may appeal the decision of the Committee to the President of the
University. The President shall recommend final action to the Trustees, whose
decision shall be final.
2. ROYALTIES
Where the University is entitled to equity in a discovery, the Inventor shall
receive 30 percent of the net royalties accruing therefrom unless the University
recommends a lesser share, which shall not be less than 15 percent, based upon
relevant circumstances relating to the discovery. In the event that the
University determines that such lesser share is appropriate, the University
shall in its sole discretion designate the recipient or recipients of the
percentage share by which the Inventor's share has been reduced. The Community
Technology Foundation (CTF) of Boston University, exclusive agent for the
administration of patents or discoveries made within the University, shall
receive 45 percent of the net royalties (see Paragraph 4). The remaining
royalties from, and equities in, the invention shall be distributed to the
School of the Inventor, or in the absence of a School's being involved, the
primary unit or entity of the University with which the inventor works or is
affiliated. Net royalties are defined as gross royalties less amounts granted
by the University specifically for the invention or discovery process, and the
costs of securing, protecting, preserving, and maintaining patents, and of
licensing and marketing of the patent rights, or other costs or fees directly
attributable to the inventions being licensed.
<PAGE>
3. DISCLOSURES
Because the securing of rights in discoveries and inventions depends on prompt
and efficient patent application and administration, all faculty, staff,
students, and employees of the University who make inventions or discoveries
shall immediately disclose said inventions or discoveries to the CTF Patent
Administrator and to the Inventor's supervisor. This disclosure obligation
shall apply to all inventions and discoveries, without regard to whether they
fall under Paragraph A or B above.
4. PATENT ADMINISTRATION
CTF shall be the exclusive agent of the University for the administration of
inventions and discoveries made within the University and covered under
Paragraph l.A. CTF shall present the disclosures to the Committee. Such report
shall state whether CTF has determined that an invention or discovery will be
developed by the University. The Committee shall consist of eleven voting
members, at least a majority of whom shall be faculty members from the Schools
and Colleges of the University. The members of the Committee and the Chairman
of the Committee shall be designated by the President of the University. CTF
shall render a written semiannual report to the Chairman of the Committee on the
disposition and status of all inventions and discoveries submitted. CTF shall as
promptly as practicable determine whether an invention or discovery shall be
pursued by the University. If the Committee determines that CTF has not filed a
patent application within one year after it has received a disclosure in respect
of which the University is entitled to claim an interest, the Committee, in
consultation with the Inventor, shall determine what other disposition, if any,
shall be made of the invention or discovery and of its development.
5. COVERAGE
The Policy shall cover only discoveries and inventions that are patentable as
the term is defined in the United States Code, as amended, or the laws of other
countries where applications are filed.
6. TRUSTEE REVIEW
Any disputes that arise under this Policy that are not resolved by the Committee
shall be referred to the President of the University, who shall recommend final
action to the Trustees. The decision of the Trustees shall be final with
respect to all disputes.
7. EMPLOYMENT AGREEMENTS
Rights and obligations under this Policy shall survive any termination of
enrollment or employment at the University.
Nothing herein contained is intended to grant or dispose of any right,
title, and interest to any disclosure, idea, improvement, or invention, whether
patentable or not, which has been supported or funded by outside parties who
acquire rights to such disclosure, ideas, improvements, and invention.
7. CONSULTING AGREEMENTS
The rights of the University under this policy, and the interests of sponsors
under research grants or contracts, may not be abrogated or limited by
consulting agreements or other contracts entered into between University
students or employees and outside organizations or employers. University
students and employees should inform outside employers of their obligations and
commitments to the University under this policy. Such students and employees
should ascertain that patent clauses in their agreements are not in conflict
with their obligations to the University or this Policy statement. Each student
and employee should make his/her obligations to the University clear to those
with whom such agreements may be made, and should ensure that they are provided
with a current statement of University policy. Upon request, the University
will provide a standard clause which may be inserted in a student's or
employee's consulting agreement. This clause will put third parties on notice
as to the University's rights under this policy with respect to inventions and
<PAGE>
discoveries. In cases of conflict of interest, the University reserves the
ultimate right to determine the final disposition of the rights and interests
involved.
Adopted, as amended, by the Trustees of Boston University, November 12, 1991.
PATENT AGREEMENT
I affirm that I have received and have read the Boston University Patent Policy
Charles River Campus.
For and in consideration of the provision by Boston University or support in the
form of funds, space, personnel, facilities instruction, supervision or other
assistance, I hereby accept the aforesaid Patent Policy as determinative of my
rights are (_________) in relation to any discoveries or patentable inventions.
________________________________________________________________________________
Signature Date
________________________________________________________________________________
Name