Setting up a license agreement:
An Italian University perspective
G. Conti – Politecnico di Milano 2006 ©
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CRUI – WIPO 28 marzo 2006
Technology
Transfer
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CRUI - WIPO
Roma, 28.03.06
Giuseppe Conti
CRUI – WIPO 28 marzo 2006
Technology
Transfer
Office
Table of contents
3. Parties
4. Recitals
5. Definitions
6. Grant of the license
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7. Fees
8. Obligations of licensee
G. Conti – Politecnico di Milano 2006 ©
9. Market introduction and Quality control
10. Development & Defense of IP
11. Warranties, liability…
12. Confidentiality and Term
13. Applicable law, jurisdiction
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CRUI – WIPO 28 marzo 2006
Technology
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Parties
between
Politecnico di Milano,address…,
represented by ….
(hereinafter the "Polimi" or “Licensor” or
the “University”)
and
AZIENDA srl,address….,
represented by….
(hereinafter “Aziena” or "Licensee")
(hereinafter all together the “Parties” or
each one a “Party”)
Don’t forget all data
and check who is going to sign
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CRUI – WIPO 28 marzo 2006
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WHEREAS, Licensor owns intellectual
property rights ..TITLE, all of which shall
be licensed under the terms of this
license agreement ("Agreement");
WHEREAS, the invention …was made
in the course of research at Politecnico
di Milano by NAMES ( “Inventors”) …;
WHEREAS, the Inventors are
employees of Polimi, and they assigned
all of their rights to the University
WHEREAS, Licensee is desirous of
obtaining certain rights from University
for commercial development…
Recitals
Describe the IP history, the
negotiation activities and
whatever useful to make a clear
picture of the agreement
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CRUI – WIPO 28 marzo 2006
Technology
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Affiliate
Confidential information
Contractual IPRs
Contractual Year
Down payment
(Exclusive) license
Field
Market
Minimum royalty
New IP
Object of the license
Licensed Patents
Patent costs
Piece royalty
Term
Territory
Definitions
Define all things in order to avoid
misunderstandings…especially
what in red
CRUI – WIPO 28 marzo 2006
Technology
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Grant of license
Royalty-bearing, worldwide
Exclusive License
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No extension to IP improvement
Right to use the IP for its own
non-commercial purposes..
Territory :all countries of the
world
Ok sublicense with consent and
same obligations In any
case
Pay attention to keep the use of
IP and to regulate sublicensees
CRUI – WIPO 28 marzo 2006
Technology
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Fees
Down payment unatantum
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Piece royalty every contractual year,
from licensee and sublicensees
Minimum royalty how much and when
Sales figures, notification, accounting
Payment when, deadlines..
Obligation to allow audit
Right trade off between cash and
royalty
CRUI – WIPO 28 marzo 2006
Technology
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Obligations of Licensee
IP cost maintenaince but NOT mgm
Or
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Also direct payment with high penalty
Best effort in development and
commercialization
Penalty or agreement changes if
milestones fail
Take care about your IP
Be sure your licensee is doing
the best
CRUI – WIPO 28 marzo 2006
Technology
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Market Introduction; Advertising
Responsibility of licensee (including
bearing costs)
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References about university IP in
technical documents
Bad experience in advertising
No references for commercial purpose
Responsibility for Quality control (also
for sublicensees)
CRUI – WIPO 28 marzo 2006
Technology
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Development and defense of IP
Research done by licensor
Research done by licensee
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Research jointly done
Information of IP violation
notify infringment
agree to pursue infringment
equally bear costs
Assignment of IP by licensor
Very important to regulate new IP
and infringment actions
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Representations and Warranties; Liability; Indemnification
Representations by licensor:
is the owner of assigment by inventors
has not granted to third parties
to Licensor’s knowledge no IPRs are
infringing any third parties IP
does not warrant for manufacturing
Idemnification for violating provision…
Licensor not liable for damages
resulting from manufacturing…
Licensee liable also for sublicensees
NO warranties of IP validity
No liability for production
CRUI – WIPO 28 marzo 2006
Technology
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Confidentiality, Term
Restrictions on disclosure
In force till 31.12.09 + renewal 2 years
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Extraordinary termination by licensor
non fulfillment of obligations, license,
fees, maintenance
payment obligations
breach of agreement
Extraordinary termination by licensee
loss of any IP
breach of agreement
Consequences of termination
Be careful on dates
No reimbursment in case of
Invalid IP
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Technology
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Applicable law and jurisdiction
Applicable Law:
agreement italian Law
IP related to territory in action
Jurisdiction
1° choice: court of Milano
2° choice: court of Munich
Notification:
Licensor address
Licensee address
Severability
An Italian university must refer to
Italian Law, easier and cheaper