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Last modified at 5/25/2018 5:51 PM by Kip Bodi

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Agreement Summaries*

*Nothing included in the sample agreements or elsewhere on this wiki site should be considered legal advice on the part of AIPLA or any of its members.

Material Transfer Agreements

Material Transfer Agreement #1 (01_Final Annotated MTA.docxOpen .doc) (01_Final Annotated MTA.pdfPDF)

  • This agreement was designed to govern a transfer of pharmaceutical and other biological materials from atransferring company to a receiving company.  The receiving company intends to use the materials for its own research purposes.  The agreement defines the rights of each organization as part of the transfer, including rights in any derivative materials that the receiving company may produce.

  • Favored Party: This agreement includes strong protection for the IP rights of the transferring party.

  • Special Provisions: receiving party’s use restricted to internal, non-commercial research (2.1, 2.6); transferring party has the right to review any proposed publication of receiving party’s research results (4.2); rights in inventions allocated to the inventing party (6.1)

  • Area of Law: patent, copyright

  • Area of Technology: pharmaceuticals, biological materials, chemicals

Material Transfer Agreement #2 (17_Annotated MTA.docxOpen .doc) (17_Annotated MTA.pdfPDF)

  • Overview: This agreement was designed to govern the transfer by a university or other research organization of pharmaceuticals, biologic materials and non-pharmaceutical products, developed by the research organization, to a company for further development and evaluation.

  • Favored Party: This agreement favors the company to the extent that it obtains an unrestricted free non-exclusive license to technology developed by the research organization with the use of information provided by the company, with an exclusive option to convert the license to an exclusive license. Also the company has the right to review research reports prepared by the research organization prior to publication.

  • Special Provisions: company obtains: an unrestricted free non-exclusive license to technology developed by the research organization with the use of information provided by the company (5.6 ); an exclusive option to convert the license to an exclusive license (5.7); the right to review research reports prepared by the research organization prior to publication (7.1).

  • Area of Law: patent, trade secret

  • Area of Technology: life science, chemistry

Patent Licensing Agreements

Generic Patent License Agreement #1 (06_Annotated Generic Patent License.docxOpen .doc) (06_Annotated Generic Patent License.pdfPDF)

  • Overview: This agreement was designed to grant a non-exclusive license where not all fields of use are being licensed or where only a particular subset all of the licensor’s patents are being licensed. It may be useful in situations where the licensor is obligated to license some of its patents broadly, such as with a standard essential patent that is required to be licensed under reasonable and non-discriminatory terms and conditions.

  • Favored Party: This agreement does not favor either party.

  • Special Provisions: have made rights are carefully restricted to products marketed by the licensee (1)

  • Area of Law: patent

  • Area of Technology: all

Non-Exclusive Patent License Agreement #1 (09_Annotated Non-Exclusive Patent License_Final.docxOpen .doc) (09_Annotated Non-Exclusive Patent License_Final.pdfPDF)

  • Overview: This agreement was designed to govern a situation where a patent owner grants a non-exclusive license to a licensee in return for a running royalty based on net sales of a licensed product. The agreement is intended to convey the license without any additional intellectual property, product, or know-how.

  • Favored Party: This agreement favors the licensor.

  • Special Provisions: comprehensive language describing the contributions impacted by the agreement (1)

  • Area of Law: patent

  • Area of Technology: all

Exclusive Patent License Agreement #1 (14) (14_EPLA annotated.docxOpen .doc) (14_EPLA annotated.pdfPDF)

  • Overview: This agreement was designed to govern an exclusive patent license between a university's tech transfer office and a third party. It is divided into two general sections: Business Terms, which primarily includes templated sections for the territory, field of use, patents, and payments associated with the agreement; and General Terms, which govern the specific licensing of rights. The agreement is most appropriate for Universities offering an exclusive license, in which the university requires specific reporting to comply with obligations related to government funding.

  • Favored Party: university / licensor

  • Special Provisions: Obligation of licensee to commercialize the invention (GT-7, GT-10.1b); university approval required for university to be named as a party in an infringement action (8.4)

  • Area of Law: Patent

  • Area of Technology: All

Patent Cross-License Agreement #1 (19) (19_Patent Annotated Cross License Agreement.docOpen .doc) (19_Patent Annotated Cross License Agreement.pdfPDF)

  • Overview: This agreement was designed for each party to grant a non-exclusive royalty-free license under its patents to the other party.

  • Favored Party: This agreement does not favor either party.

  • Special Provisions: comprehensive disclaimer of warranties (4.2) including: validity and scope of licensed patents (4.2c1); non-infringement of third party patents (4.1c2); no obligation to continue prosecuting pending patent applications (4.1c3) or maintaining issued patent (4.1c4).

  • Area of Law: patent

  • Area of Technology: all

Patent Sub-License Agreement #1 (20) (20_AIPLA_Annotated Sublicense Agreement.docxOpen .doc) (20_AIPLA_Annotated Sublicense Agreement.pdfPDF)

  • Overview: This agreement was designed to govern the grant of a royalty-bearing non-exclusive patent license for specific presently existing products.

  • Favored Party: This agreement favors the licensor to the extent that the licensee is not licensed to any product modifications that may be necessary to update the licensee’s product offerings..

  • Special Provisions: licensed products limited to those specified in an appendix (1.4); licensee may withhold 50% of royalties if infringing sales by a third party exceed a threshold amount (6.1) and 100% of royalties if all claims covering the licensed product are held invalid or unenforceable (3.3)

  • Area of Law: patent

  • Area of Technology: all

Patent License Agreement #1 (22) (22_Patent License with Annotations.docxOpen .doc) (22_Patent License with Annotations.pdfPDF)

  • Overview: This agreement was designed to govern the grant of both an exclusive patent license to sell certain licensed products in a limited field of use, and a non-exclusive patent license to sell those same products in other fields. Also there are provisions for technical collaboration and sharing of know-how.

  • Favored Party: This agreement generally favors the licensor. The annotations include suggestions for push-back by the licensee.

  • Special Provisions: grant of exclusive rights in a specific field and an nonexclusive license outside the field (3.1); right of licensee to prevent the grant of additional nonexclusive licenses outside the field upon payment of compensation (3.2)

  • Area of Law: patent, trade secret

  • Area of Technology: all

Patent License Agreement #2 (24) (24_ Patent License Agreement.docxOpen .doc) (24_ Patent License Agreement.pdfPDF)

  • Overview: This agreement was designed to govern the grant of IP rights as needed for a customer to manufacture a product supplied in the past by a supplier who no longer is able to supply the product.

  • Favored Party: This agreement does not particularly favor either the supplier of the customer.

  • Special Provisions: license grant limited to the above specific products in a specific territory (2.1) with a right of first refusal for extension of the license to other territories (2.4) and other products (2.7)

  • Area of Law: patent, copyright, trade secret

  • Area of Technology: all

End User License Agreements

End User License Agreement #1 (2) (02_Annotated End user License Agreement_FINAL.docxOpen .doc) (02_Annotated End user License Agreement_FINAL.pdfPDF)

  • Overview: This agreement was designed to govern a license of software to an end user from a company. The software company provides a very limited license to the end user for use of the software. This sort of agreement is usually provided in a clickwrap situation.

  • Favored Party: This agreement, like most form EULAs, favors the licensor, especially with respect to permitted uses.

  • Special Provisions: restrictions on the scope of license (1, 2); software provided “as is” (4)

  • Area of Law: patent, copyright

  • Area of Technology: software

  • Other Notes: This agreement was used for software provided free to the end user. Other situations where the end user pays for the software may require some changes to the agreement.

End User License Agreement #2 (11) (11_Annotation of End user License Agreement with comments.docxOpen .doc) (11_Annotation of End user License Agreement with comments.pdfPDF)

  • Overview: This agreement was designed to govern the trial use of pre-production or beta software.

  • Favored Party: This agreement favors the licensor.

  • Special Provisions: comprehensive language on forming a click-through license (preamble) and limiting use to internal evaluation (1)

  • Area of Law: patent, copyright

  • Area of Technology: software

IP Assignment Agreements

Patent Sale Agreement #1 (4) (04_Annotated Patent Sale Agreement_FINAL.docxOpen .doc) (04_Annotated Patent Sale Agreement_FINAL.pdfPDF)

  • Overview: This agreement was designed to govern the sale of all rights, title, and interest in a patent from one party to another for a fixed price. This is in contrast with license agreements, where the first party retains ownership rights in the patent but grants another party some other rights in the patent.

  • Favored Party: This agreement does not favor either party.

  • Special Provisions: language for comprehensive assignment of specified patents and all related patents as well as right to sue for past infringement (1,2,1a); subsequent assignments subject to specified encumbrances and obligations (1, 2.1b)

  • Area of Law: patent

  • Area of Technology: all

Patent Assignment Agreement #1 (5) (05_Annotated Patent Assignment.docxOpen .doc) (05_Annotated Patent Assignment.pdfPDF)

  • Overview:This agreement was designed to perfect the assignment of a patent or patent application from one party to another.This assignment agreement can be used in a variety of situations where the parties would like to record an assignment with the USPTO,e.g., from an employee to an employer.

  • Favored Party:This agreement does not favor either party as it simply facilitates the formal assignment in a document that would be recorded and publicly available The consideration, for example employment or purchase price, would be included in other documents.

  • Special Provisions: language for comprehensive assignment of a specified patent application and related applications, and for post assignment cooperation.

  • Area of Law: patent

  • Area of Technology: all

IP Assignment #1 (12) (12_IP Assignment Agreement.docOpen .doc ) (12_IP Assignment Agreement.pdfPDF)

  • Overview: This agreement was designed to govern a transfer of the IP rights of a company to an affiliate of that company. in order for the affiliate to carry on a business activity allocated to that affiliate.

  • Favored Party: This agreement does not favor either party.

  • Special Provisions: comprehensive language for cross-licensing rights amount affiliates (4)

  • Area of Law: patent, copyright, trade secret

  • Area of Technology: all

Inventor Assignment #1 (13) (13_Inventor Assignment Template.docOpen .doc) (13_Inventor Assignment Template.pdfPDF)

  • Overview: This agreement was designed as a simple patent application assignment by the inventor, to be recorded without disclosing the commercial details of the underlying transaction creating the assignment obligation.

  • Favored Party: This agreement covers only the actions required to be taken by the assignor- inventor, and to that extent favors the assignee.

  • Special Provisions: streamlined statement of assignor obligations (unnumbered)

  • Area of Law: patent

  • Area of Technology: all

Technology Transfer, University, and IP Licensing Agreements

Life Science Technology License Agreement #1 (15) (15_License Agreemen for Life Sciences Technoloy.docxOpen .doc) (15_License Agreemen for Life Sciences Technoloy.pdfPDF)

  • Overview: This agreement was designed to govern the exclusive licensing of a pharmaceutical drug candidate by the drug’s developer to a large pharmaceutical company.

  • Favored Party: This agreement favors the licensee, with annotations on possible pushback by the licensor.

  • Special Provisions: scope of grant extended to analogs of the starting drug (1.5, 1.6); extensive definitions of commercially reasonable efforts” (1.14) and “diligent efforts” (1.17); calculation of royalties when licensed compound is sold in combination with non-licensed compounds (1.34)

  • Area of Law: patent, trade secret

  • Area of Technology: pharmaceuticals

Assignment and Technology Transfer Agreement #1 (16) (16_Assignment and Tech Transfer.docxOpen .doc) (16_Assignment and Tech Transfer.pdfPDF )

  • Overview: This agreement was designed to govern the sale of patents as well as the technology related to the patents in order for the purchaser to commercialize the technology.

  • Favored Party: This agreement together with comments strives to favor the purchaser to the extent that it receives full value for the purchase price.

  • Special Provisions: right of purchaser to sue for past infringement (4.2); representations and warranties to protect the purchaser (6)

  • Area of Law: patent, trade secret

  • Area of Technology: all

Technology Transfer Agreement #1 (23) (23_Tech Transfer Agreement.docxOpen .doc) (23_Tech Transfer Agreement.pdfPDF)

  • Overview: This agreement was designed to govern the transfer of confidential manufacturing know-how.

  • Favored Party: This agreement does not particularly favor either the transferor or the transferee.

  • Special Provisions: each party is obligated to transfer information regarding modifications to the know-how, made by it, to the other party (3.3)

  • Area of Law: trade secret

  • Area of Technology: all

Trademark License Agreement #1 (25) (25_Trademark License.docxOpen .doc) (25_Trademark License.pdfPDF)

  • Overview: This agreement was designed to grant rights to use a trademark with a breakdown of territories and exclusivity for various products and services identified by the trademark.

  • Favored Party: This agreement favors the licensor to the extent that it includes provisions for protecting the licensor’s ownership of the trademark.

  • Special Provisions: grant of trademark license to accomplish the distribution appointment (2.1); registration of domain names and use of trademarks on the internet (2.3); right of licensor to maintain control of the quality of goods and services distributed under the licensed trademarks (Article V)

  • Area of Law: trademark

  • Area of Technology: all

Sponsored Research Agreement #1 (27) (27_Sponsored Research Agreement Annotated_Updated.docxOpen .doc) ( 27_Sponsored Research Agreement Annotated_Updated.pdfPDF)

  • Overview: This agreement was designed to govern research performed by a university for the benefit of a sponsoring company.

  • Favored Party: Considering that the company is paying for the performance of research that is strategically important to the business of the company, this agreement is more favorable to the company than many form agreements used by universities with respect to work performed by their faculty.

  • Special Provisions: IP developed under the agreement owned by the company (7); comprehensive background rights provisions and discussion (1.11); company veto power over publishing the results of the research (6.1); university not required to expend funds in excess of those provided by the company (4.4), but company may withhold payment if the university has not met agreed requirements specified in an attached statement of work (4.7); extensive warranties and indemnification provided by each party (12).

  • Area of Law: patent, copyright

  • Area of Technology: all

Sponsored Research Agreement #2 (28) (28_Sponsored Research Agreement.docxOpen .doc) ( 28_Sponsored Research Agreement.pdfPDF)

  • Overview: This agreement was designed to govern the performance of research at a university or other research organization with funds provided by a sponsoring company. In this example the research involves preclinical study of a human disease therapy.

  • Favored Party: This agreement is based on a form used by the research organization and generally favors the organization.

  • Special Provisions: cost-reimbursable and fixed-price funding alternatives (1.5); IP resulting from the research owned by the research organization subject to the right of the sponsoring company to obtain a nonexclusive or exclusive license(2); research organization permitted to freely publish research results with a limited right of review on the part of the sponsoring company (4.3, 4.4); required adherence to a human research protection program (10.4)

  • Area of Law: patent, copyright

  • Area of Technology: disease therapy

Other IP Agreements

Software Development Agreement #1 (3) (03_Annotated Software Development Agreement _FINAL_krc edits.docxOpen .doc) (03_Annotated Software Development Agreement _FINAL_krc edits.pdfPDF)

  • Overview: This agreement was designed to govern a software development engagement between a customer company and a software development company. The customer company contracts the software developer company to develop some software product on its behalf, e.g., a website or a smartphone application.

  • Favored Party: This agreement was used in representation of a software developer company, and it favors that party particularly with respect to performance of the development services. Howver the customer is granted rights to the developed software.

  • Special Provisions: stringent requirements for customer company’s rejection of deliverables (1.8); customer company warrants non-infringement of all material provided by it to development company 1.10(d); customer company gains ownership of the work product produced by the development company except for specific preexisting material and derivatives thereof (7.1).

  • Area of Law: patent, copyright

  • Area of Technology: software

  • Other Notes: This agreement was used for a medium-sized project, and some modifications might be necessary to scale it up or down to other projects. Additionally, this agreement has certain provisions taking care of the fact that some of the software developer company’s employees were not always located within the United States.

Mutual Non-Disclosure Agreement #1 (07_Mutual NDA.docxOpen. doc) (07_Mutual NDA.pdfPDF)

  • Overview: This agreement was designed to establish obligations of non-disclosure by two parties in a variety of situations, e.g., during a contract negotiation.

  • Favored Party:This agreement does not favor either party under circumstances in which the relative risk for each party in disclosing its proprietary information is expected to be about equal to the risk of its undertaking to protect the other party’s proprietary information.

  • Special Provisions: a comprehensive definition of royalty bearing net sales (1.5)

  • Area of Law:patent, copyright, trade secret

  • Area of Technology: all

Contributor License Agreement#1 (8) (08_Open Source Contributor License Agreement.docxOpen .doc) (08_Open Source Contributor License Agreement.pdfPDF)

  • Overview: This agreement was designed to govern a situation where a party contributes software to an open source project. This agreement would be provided by the open source project owner for execution by each contributor to the project. The agreement clarifies the transfer of rights in the software (e.g., copyrights and patents) from the contributor to the project.

  • Favored Party: This agreement does not favor either party.

  • Special Provisions: comprehensive language describing protected information (1.1, 1.2)

  • Area of Law: patent, copyright,software

  • Area of Technology: software

Memorandum of Understanding #1 (21) (21_AIPLAFormsProject_MOUAdaptingComponent.docxOpen .doc) (21_AIPLAFormsProject_MOUAdaptingComponent.pdfPDF)

  • Overview: This Memorandum of Understanding was designed to facilitate a collaboration for adapting a supplier’s component into a customer’s larger product, and includes a mutual commercially reasonable efforts obligation to complete the collaboration and, if the collaboration results in the achievement of agreed performance metrics, enter into a purchase agreement for a certain quantity of components.

  • Favored Party: This agreement does not favors either party. The supplier retains all IP in the component and any modifications thereto made in the course of the collaboration, and the customer retains all IP in the lager product and any modifications thereto made in the course of the collaboration.

  • Special Provisions:obligation to exercise commercially reasonable efforts to enter into a supply agreement for components (2); each party owns all modifications to its pre-existing IP made in the course of the collaboration (4); if a party is acquired, either party may terminate if the acquirer does not agree to be bound to the MOU (6); New York is governing law regardless of contacts with that state (7a) and disputes are to be arbitrated in New York County under rules of the Centre for International Dispute Resolution (7b)

  • Area of Law: patent, copyright, trade secret

  • Area of Technology: all

Distribution Agreements

Exclusive Distribution Agreement #1 (10) (10_Exclusive Distribution Agreement_final.docxOpen .doc) (10_Exclusive Distribution Agreement_final.pdfPDF)

  • Overview: This agreement was designed to govern a relationship between a supplier of products and a distributor of those products

  • Favored Party: This agreement favors the supplier.

  • Special Provisions: protection of supplier’s trademarks (10.1.8, 13)

  • Area of Law: patent, copyright, trademark

  • Area of Technology: all

Distribution Agreement #1 (18) (18_Annotated Distribution Agreement.docxOpen .doc) (18_Annotated Distribution Agreement.pdfPDF)

  • Overview: This agreement was designed to govern the appointment of a distributor for a developer’s vaccine product under the developer’s name and trademark.

  • Favored Party: This agreement favors the developer to the extent of mitigating its risks under governmental regulations rerated to drug approvals.

  • Special Provisions: distributor responsible for regulatory compliance 2.1; company right to terminate as to any sub-region where distributor is not using reasonable efforts to market the product (2.1i); company responsible for compliance with regulatory requirements (2.1h,10.2, 14.7); procedure for dealing with adverse events and product recalls (9)

  • Area of Law: drug regulation, trademark

  • Area of Technology: pharmaceuticals

Distribution Agreement #2 (26) (26_Distribution Agreement.docxOpen .doc) (26_Distribution Agreement.pdfPDF)

  • Overview: This agreement was designed for the licensor to grant the licensee the right to distribute licensor’s software packages to end users through the licensee’s web and mobile portal applications.

  • Favored Party: This agreement favors the licensor to the extent that it is protective of the licensor’s ownership of the software packages and related IP.

  • Special Provisions: appointment of licensee as a distributor of licensor’s software packages (2.1); obligation to distribute the software packages to end users under a specific end user license agreement (2.3.); obligation of licensor to customize the software packages at the licensee’s request (2.4); grant of license to trademarks and website content as needed to effectuate the distributorship appointment (2.7); arbitration before the American Arbitration Association under the rules of the United Nations Commission on International Trade Law (8.3)

  • Area of Law: patent, copyright, trademark

  • Area of Technology: software