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The Office of Technology Transfer and Innovation Partnerships at Binghamton University is responsible for license agreements covering Research Foundation of State University of New York patent rights. Agreements between the Foundation and licensees typically include the terms set forth below:
LICENSE GRANT: The license agreement will provide an exclusive or non-exclusive field-of-use license grant for the life of the specified patents and patent applications in some or all territories where the Foundation owns patent rights.
SUBLICENSE RIGHTS: The agreement may provide the Licensee with the right to sublicense; however, such right must be explicitly contained in the agreement, may be priced separately, and will be negotiated on a case by case basis.
LICENSE ISSUE FEES AND LICENSE MAINTENANCE FEES: There will be a license issue fee payable on execution, plus minimum annual fees.
ROYALTIES: There will be earned royalties based on net sales of products. Royalty rates will be negotiated in view of a licensee’s business plan and industry standards in the field. Minimum annual royalties, creditable against earned royalties for the calendar year, may also be part of the consideration package.
EQUITY PARTICIPATION: An equity position (with anti-dilution protection) in lieu of some or all royalties may be appropriate in exchange for an exclusive license to patent rights. This arrangement allows licensees to apply early stage cash resources to technology development and business operations at a critical point in the commercialization process.
DUE DILIGENCE: The license agreement will provide for performance milestones, including where appropriate a timetable for commercialization, external investment, and approvals from regulatory authorities.
PROGRESS REPORTS: The agreement will provide for the licensee to submit periodic reports to the Foundation covering activities related to the development / testing / market entry and performance of licensed products and processes.
PATENT MANAGEMENT: The Foundation will file and prosecute patent applications covered by the agreement. The Foundation will keep the licensee informed of filing and prosecution matters. The licensee will reimburse the Foundation for costs of filing, patent prosecution, maintenance, and defense.
INDEMNIFICATION: A licensee will indemnify the Foundation and the University against any claims arising from practice of the license rights. The Foundation will require the licensee to carry insurance to back up such indemnification, with the policy naming the University as an additional insured.
WARRANTIES: The Foundation provides no warranty of merchantability or fitness of the licensed technology for a particular purpose, or warranty of non-infringement of third-party patents.
USE OF NAME: Unless required by law, the use by a licensee of the name "The Research Foundation of State University of New York" or the name of “Binghamton University” in any of publicity, marketing or promotional material is expressly prohibited.
ASSIGNABILITY: The agreement will be personal to a licensee and assignable only with the written consent of the Foundation.
REGULATORY COMPLIANCE: A licensee will observe all applicable U.S. and foreign laws and regulations with respect to regulatory and export control requirements.
GOVERNING LAW: The agreement will be interpreted and construed in accordance with the laws of the State of New York. The laws of the applicable country will govern the scope and validity of any patent included in the license.
TERMS COVERING OTHER UNIVERSITY RIGHTS: Additional terms will be included in the agreement in the event it covers other Foundation rights (e.g., copyrights or tangible property rights such as reagents, antibodies) in addition to patent rights.
governing regulations.
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