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PATENT LICENSE AGREEMENT

BETWEEN
UNIVERSITY OF CENTRAL FLORIDA RESEARCH FOUNDATION, INC.
AND
[COMPANY]

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PATENT LICENSE AGREEMENT
TABLE OF CONTENTS

PREAMBLE TO LICENSE AGREEMENT..................................................................................................................

ARTICLE 1 DEFINITIONS...........................................................................................................................................
ARTICLE 2 LICENSE GRANT.....................................................................................................................................
ARTICLE 3 ROYALTIES, EQUITY, PAYMENTS AND REPORTS............................................................................
ARTICLE 4 DUE DILIGENCE.....................................................................................................................................
ARTICLE 5 KEEPING OF RECORDS.........................................................................................................................
ARTICLE 6 CONFIDENTIAL INFORMATION..........................................................................................................
ARTICLE 7 GOVERNMENT CLEARANCE, PUBLICATION, OTHER USE, EXPORT DUTIES...........................
ARTICLE 8 ENFORCEMENT AND INFRINGEMENT..............................................................................................
ARTICLE 9 TERM AND TERMINATION.................................................................................................................
ARTICLE 10 TRANSFERABILITY OF RIGHTS AND LICENSES..........................................................................
ARTICLE 11 PATENT PROSECUTION AND MAINTENANCE..............................................................................
ARTICLE 12 DISCLAIMER OF PATENT WARRANTY...........................................................................................
ARTICLE 13 INDEMNITY AND INSURANCE........................................................................................................
ARTICLE 14 NON-USE OF NAMES.........................................................................................................................
ARTICLE 15 JUDGMENTS........................................................................................................................................
ARTICLE 16 PATENT MARKINGS...........................................................................................................................
ARTICLE 17 ADDITIONAL INDEMNITY................................................................................................................
ARTICLE 18 NOTICES...............................................................................................................................................
ARTICLE 19 WAIVER.................................................................................................................................................
ARTICLE 20 TITLES...................................................................................................................................................
ARTICLE 21 SEVERANCE........................................................................................................................................
ARTICLE 22 ENTIRE AGREEMENT........................................................................................................................
ARTICLE 23 REGULATORY COMPLIANCE...........................................................................................................
ARTICLE 24 EXPORT CONTROL.............................................................................................................................
ARTICLE 25 SURVIVAL OF TERMS.........................................................................................................................
ARTICLE 26 GOVERNING LAW AND JURISDICTION.........................................................................................
ARTICLE 27 REMEDIES............................................................................................................................................
APPENDIX A DESCRIPTION OF TECHNOLOGY..................................................................................................
APPENDIX B DEVELOPMENT PLAN.....................................................................................................................
APPENDIX C DEVELOPMENT REPORT.................................................................................................................
APPENDIX D EQUITY AGREEMENT......................................................................................................................

PATENT LICENSE AGREEMENT

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PREAMBLE TO LICENSE AGREEMENT

This Agreement is made on this ___ day of
, 2015 (Effective Date) by and between the
University of Central Florida Research Foundation, Inc., and having an address and place of business at 12201
Research Parkway, Suite 501, Orlando, Florida, 32826 (hereinafter "UCFRF") and, [COMPANY], having an office
and place of business at:________________________ (hereinafter "LICENSEE").
WHEREAS, UCFRF is a Florida not-for-profit corporation incorporated under the provisions of Chapter
617, Florida Statutes and approved by the Department of State; and,
WHEREAS, UCFRF is a direct support organization and instrumentality of the University of Central
Florida (UCF) through which UCF generated inventions and technology with potential commercial value may be
made available for commercial use; and
WHEREAS, UCFRF is the owner of the inventions listed in APPENDIX A DESCRIPTION OF
TECHNOLOGY and owns all rights, title and interest to Patent Rights, (as hereinafter defined); and
WHEREAS, LICENSEE desires to license from UCFRF certain rights to the Patent Rights; and
WHEREAS, UCFRF hereby desires to grant a license to the foregoing inventions, Patent Rights (as
hereinafter defined ) and wishes to have the same utilized in the public interest; and
NOW, THEREFORE, in consideration of the premises and mutual covenants of this Agreement, the
parties hereto agree as follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement:
A. Affiliate shall mean (1) any corporation or other non-corporate entity owning directly, or indirectly
controlling, at least fifty percent (50%) of the stock normally entitled to vote for election of directors of
LICENSEE; (2) any corporation owned or controlled by LICENSEE through ownership of at least fifty percent
(50%) of the stock entitled to elect directors; or (3) any corporate or non-corporate entity under common control
(through ownership of at least 50% of the stock entitled to elect directors) with LICENSEE.
B. Development Plan shall mean a written report summarizing the development activities that are to
be undertaken by the LICENSEE to bring Licensed Product to market. The Development Plan is attached as
APPENDIX B DEVELOPMENT PLAN.
C. Development Report shall mean a written account of LICENSEEs progress under the Development
Plan having at least the information specified in APPENDIX C DEVELOPMENT REPORT.
D. "Field of Use" shall mean All Fields of Use _____________________________.
E. License Year shall mean each twelve-month period beginning on January 1 and ending on
December 31; provided, however, that the first License Year shall commence on the Effective Date and end on
December 31 of the same calendar year.
F.

Licensed Patents shall mean Patent Rights in the Field of Use.

G. Licensed Products shall mean any product or services (or part thereof) that: (1) the manufacture,
use, offer for sale, sale, or importation of which without a license from LICENSOR would infringe a Licensed
Patent, or (2) is developed by using a process or composition which without a license from LICENSOR would
infringe a Licensed Patent.

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H. "Net Sales" shall mean LICENSEE, and Affiliate sales, transfers, leases and other dispositions of
Licensed Product, less (i) packaging and freight, (ii) all trade, quantity and cash discounts actually granted on
Licensed Products, (iii) all credits and allowances actually granted on Licensed Products due to returns, rejections,
billing errors, and retroactive price reductions, (iv) duties actually paid on Licensed Products and (v) excise, sale
and use taxes, and equivalent taxes actually paid on Licensed Products. Licensed Products shall be considered sold
when invoiced. No deductions shall be made for commissions paid to individuals or employees of LICENSEE,
nor the cost of collection. The Net Sales for a Licensed Product that is transferred to a third party for promotional
purposes without charge or at a discount shall be the average invoiced price to the customer of that type of Licensed
Product during the applicable calendar quarter.
I. Patent Rights shall mean any and all United States patents and/or any divisions, continuations,
reexamination or reissues thereof, and their foreign counterparts and pending patent applications, as described in
APPENDIX A DESCRIPTION OF TECHNOLOGY.
J. Sales shall mean any sale, transfer, lease, permission to use or other transfer of right or possession
or other conveyance by LICENSEE of Licensed Product.
K. Sublicense shall mean a rights granting contract with an independent third party other than an
Affiliate in which LICENSEE sublicenses the rights granted to LICENSEE in ARTICLE 2 LICENSE GRANT of
this Agreement.
L. Sublicensee shall mean any independent third party other than an Affiliate to which LICENSEE
sublicenses the rights granted to LICENSEE in ARTICLE 2 LICENSE GRANT of this Agreement.
M. "Territory" shall mean any country where there are Patent Rights.

ARTICLE 2
LICENSE GRANT
A. UCFRF hereby grants to LICENSEE and LICENSEE accepts from UCFRF, under the terms and
conditions herein specified, an [exclusive/non-exclusive], [worldwide/limited] license to make, use, sell and offer
for sale Licensed Products under the Patents Rights in the Field-of-Use in the Territory, [with the right to
sublicense throughout the world, on terms at least as restrictive as those provided herein and any agreement shall
provide that its Sublicense is subject to termination by UCFRF upon termination of this Agreement. Such
Sublicense shall remain in effect, on a country by country basis, until the full end of the term or terms of this
Agreement, unless sooner terminated as hereinafter specified.] The foregoing notwithstanding, LICENSEEs rights
and license shall be subject to the rights of the U.S. Government, if applicable, and the State of Florida pursuant to
any funding agreement(s) or any other rights reserved by UCFRF/UCF.
[B. LICENSEE shall have the right to grant Sublicenses to third parties under this Agreement as
described under ARTICLE 3 ROYALTIES, EQUITY, PAYMENTS AND REPORTS (B & C). LICENSEE shall
provide UCFRF with an unredacted copy of each Sublicense thirty (30) days prior to the execution of the
Sublicense agreement.]
C. The foregoing notwithstanding, LICENSEEs rights and license shall be subject to the rights of the
U.S. Government pursuant to any funding agreement between UCFRF or UCF and the Government, if applicable,
and rights reserved by UCFRF. UCFRF reserves the right for itself and UCF to practice without payment of
royalty Patent Rights hereunder for research and educational purposes. U.S. Government-funded inventions or
discoveries shall be available royalty free for the governmental purposes of the United States and the State of
Florida. In this regard, the U.S. Government and the State of Florida are entitled to a non-exclusive,
nontransferable, irrevocable, paid-up license to practice or have practiced the inventions of such Patent Rights for
governmental purposes. Any license granted to LICENSEE in this Agreement shall be subject to such right and
license.

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D. The license granted hereunder shall not be construed to confer any rights upon LICENSEE by
implication, estoppel or otherwise as to any technology not part of the Patent Rights licensed hereunder in the
specified Field- of- Use.
E. LICENSEE agrees to comply with all applicable Federal regulations, statutory requirements, and
administrative obligations, including without limitation, the provisions of the Bayh-Dole act as embodied in 35
U.S.C. 18 to the extent such provisions apply to the inventions and Patent Rights licensed under this Agreement. If
the Patent Rights were developed in course of research sponsored by the United States government, Licensed
Products to be sold in the United States must be manufactured substantially in the Unites States unless LICENSEE
obtains the required written waiver in advance from the government.
F. All rights granted hereunder to LICENSEE shall be subject to rights retained by UCFRF and UCF as
applicable, as well as the right to publish.
G. LICENSEE, by execution hereof, acknowledges, covenants and agrees that it has not been induced in
any way by UCFRF, UCF or any of their employees to enter into this Agreement, and further warrants and
represents that (i) it has concluded sufficient due diligence with respect to all items and issues pertaining to this
ARTICLE 2 LICENSE GRANT and all other matters pertaining to this Agreement; and (ii) LICENSEE has
adequate knowledge and expertise, or has utilized knowledgeable and expert consultants, to adequately conduct
due diligence, and agrees to accept all risks inherent herein.
H. LICENSEE agrees not to directly or indirectly challenge or cause to be challenged the validity or
enforceability of any Patent Rights, or UCFRFs ownership of any Patent Rights, before any court, agency or
tribunal, unless LICENSEE is charged with infringement of any Patent Rights by UCFRF or its affiliates.
LICENSEE acknowledges that any breach of this clause by LICENSEE or any Sublicensee will be cause for
immediate termination of this Agreement.
ARTICLE 3
ROYALTIES, EQUITY, PAYMENTS AND REPORTS
A. LICENSEE agrees to pay UCFRF a non-refundable licensing fee in the amount of
[ --------------------------------- ($ ____________ )
written amount followed by amount expressed in numbers]
upon execution of this Agreement. This licensing fee will not be considered as an advance payment on royalties
due hereunder. Payments shall be made by check and payable as follows:
University of Central Florida Research Foundation, Inc.
Attn: Mieraf Tadesse
12201 Research Parkway, Suite 501
Orlando, FL 32826
B. LICENSEE agrees to pay or cause to be paid to UCFRF, on a semi-annual basis, the greater of a
royalty of: (i) ____ percent (___%) of Net Sales of Licensed Product sold by LICENSEE from the date of
commencement of first commercial activity, or (ii) the minimum payment described in ARTICLE 3 ROYALTIES,
EQUITY, PAYMENTS AND REPORTS (F) below. In addition, LICENSEE agrees to pay UCFRF, on a semiannual basis, a Sublicense royalty equal to fifty percent (50%) of royalties received by LICENSEE from
Sublicensee(s) for the sale, transfer, lease or other disposition of Licensed Products by such Sublicensee(s).
C. In addition to royalties payable under ARTICLE 3 ROYALTIES, EQUITY, PAYMENTS AND
REPORTS (A) and (B), LICENSEE shall pay UCFRF, on a semi-annual basis, fifty percent (50%) of all nonroyalty compensation received by LICENSEE for the grant of a Sublicense of the Patent Rights. Sublicensing
revenues shall not include any amounts received as support for research and development activities, as a loan, or
for the purchase of an equity interest in LICENSEE. Any Sublicense payments due shall be included with the
respective semi-annual report of Net Sales. LICENSEE shall not receive from Sublicensees anything of value in
lieu of cash payments in consideration for any sublicense under this Agreement without the written permission of
UCFRF.]

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D. LICENSEE agrees to make written reports of Net Sales to UCFRF semi-annually or within thirty (30)
days after the June 30 and December 31 during the life of this Agreement. The obligation to make Net Sales reports
shall terminate upon expiration or termination of this Agreement, except as to Net Sales or other dispositions or
manufacturing incurred but not reported prior to such date of expiration or termination. LICENSEE shall make
such reports even if there have been no Net Sales, or if no royalties are due to UCFRF for the reporting period. Net
Sales reports shall include but not be limited to the following:
(1) total invoiced billings for all Sales of Licensed Products
(2) total amount of Licensed Products made
(3) total royalties or payments (including Sublicense) due UCFRF
(4) names and addresses of sublicensees.
E.

Royalty or other payments are due and payable concurrently with reports of Net Sales.

F. Consistent with ARTICLE 3ROYALTIES, EQUITY, PAYMENTS AND REPORTS (B) above,
LICENSEE agrees to pay UCFRF a minimum annual royalty as set forth in the Payment Schedule below by
January 30 of each License Year. The minimum annual royalty will be considered as a credit for the royalties due
for the License Year and the Net Sales reports required under ARTICLE 3ROYALTIES, EQUITY, PAYMENTS
AND REPORTS (D) should reflect the use of such credit.
Payment Schedule:
License Year 1: $_______ annually
License Year 2: $_______ annually
License Year 3: $_______ annually
License Year 4 and all subsequent years of the Agreement: $_________ annually.
G. In the event that any payment of royalties due from LICENSEE under this Agreement is for any
reason not paid when due, i.e. thirty (30) days after the end of each semi-annual interval, LICENSEE shall pay to
UCFRF interest on such overdue payment during the period commencing thirty (30) days from such due date until
the date that such overdue payment is actually made to UCFRF, the rate of interest being equal to the lower of three
percent (3%) above U.S. prime rate, or the highest rate allowed by law. The foregoing shall not limit UCFRFs
right to exercise any other rights resulting from LICENSEEs breach of this Agreement, including without
limitation termination of the Agreement in accordance with ARTICLE 9 TERM AND TERMINATION - Term and
Termination.
H. All payments made as a result of this Agreement are non-refundable and shall be paid in United
States Dollars in Orlando, Florida, or at such other place as UCFRF may reasonably designate consistent with the
laws and regulations controlling in any foreign country. If any currency conversion shall be required in connection
with the payment of royalties hereunder, such conversion shall be made by using the exchange rate prevailing on
the last business day of the calendar semi-annual reporting period to which such royalty payments relate.
I. UCFRF is exempt from paying income taxes under U.S. law. Therefore, all payments due under this
Agreement shall be made without deduction for taxes, assessments, or other charges of any kind which may be
imposed on UCFRF by any government outside of the United States or any political subdivision of such
government with respect to any amounts payable to UCFRF pursuant to this Agreement. All such taxes,
assessments, or other charges shall be assumed by LICENSEE.
J. In consideration of the rights granted to LICENSEE by UCFRF in this Agreement, LICENSEE shall,
issue to UCFRF shares of stock in LICENSEE that, when issued, will represent ______% of the equity interest in
LICENSEE issued and outstanding on a Fully-Diluted Basis (Fully-diluted basis means the total equity of
LICENSEE issued and outstanding).
K. Concurrently with the execution and delivery of this Agreement, LICENSEE shall execute and
deliver to UCFRF an equity agreement in substantially the form attached hereto as APPENDIX D EQUITY
AGREEMENT (the Equity Agreement). Additionally, Licensee shall, concurrently with its execution and
delivery of this Agreement to UCFRF, deliver to UCFRF a complete and accurate copy of Licensees capitalization
table as of the date hereof, reflecting the above referenced issuance of equity to UCFRF. Execution and delivery of
the Equity Agreement to UCFRF is a condition precedent to the validity and enforceability of the license granted

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pursuant to ARTICLE 2 LICENSE GRANT of this Agreement and Licensees failure to execute and deliver the
Equity Agreement to UCFRF will render this Agreement null and void ab initio. Notwithstanding anything to the
contrary contained in this Agreement or the Equity Agreement, the Equity Agreement as executed by the parties
shall also survive termination of this Agreement as an independent agreement in accordance with its respective
terms.
ARTICLE 4
DUE DILIGENCE
LICENSEE agrees to diligently pursue the development of the Patent Rights according to the following due
diligence requirements:
A
LICENSEE agrees to and warrants that: 1) it has, or will obtain, the expertise necessary to
independently evaluate the inventions of the Patent Rights; 2) it will establish and actively and diligently pursue
the Development Plan (see APPENDIX B DEVELOPMENT PLAN) to the end that the inventions of the Patent
Rights will be utilized to provide Licensed Products for sale in the retail market within the Field of Use; and 3)
within one month following the end of the final quarter of each calendar year and until the date of first commercial
sale of Licensed Products, it will supply UCFRF with a written Development Report (see APPENDIX C
DEVELOPMENT REPORT). All development activities and strategies and all aspects of product design and
decisions to market and the like are entirely at the discretion of LICENSEE, and LICENSEE shall rely entirely on
its own expertise with respect thereto. UCFRFs review of LICENSEEs Development Plan is solely to verify the
existence of LICENSEEs commitment to development activity and to ensure compliance with LICENSEEs
obligations to commercialize the inventions of the Patent Rights, as set forth above.
B
LICENSEE agrees that the first commercial sale of Licensed Products shall occur on or before
[__________] or UCFRF shall have the right and option to terminate this Agreement upon sixty (60) days written
notice to the LICENSEE.
C. LICENSEE agrees to have the Licensed Products cleared for marketing in those countries in which
LICENSEE intends to sell Licensed Products by responsible government agencies requiring such clearance.
LICENSEE agrees to concurrently file the necessary data which may be required prior to approval. Should
LICENSEE terminate this Agreement, it agrees to assign its full interest and title in such market clearance
application, including all associated data to UCFRF at no cost to UCFRF. This would include a reversion of rights
to UCFRF of all relevant materials, research information and technology including Patent Rights and any other
rights whatsoever granted to LICENSEE pursuant to this Agreement by UCFRF.
ARTICLE 5
KEEPING OF RECORDS
A. LICENSEE shall keep full, true, and accurate books of accounts and other records containing all
particulars which may be necessary to ascertain and verify properly such Net Sales and sublicense royalties. These
shall include but not be limited to inventory, purchase and invoice records, manufacturing records, sales analysis,
general ledgers, financial statements, and tax returns relating to the Licensed Products. Such books and records
shall be preserved for a period not less than five (5) years after they are created, both during and after the term of
this Agreement. Upon UCFRFs request, LICENSEE shall permit an independent Certified Public Accountant
selected by UCFRF (except one to whom LICENSEE has some reasonable objection) to have access during
ordinary business hours to such of LICENSEEs records as may be necessary to determine, in respect of any period
or periods ending not more than five (5) years prior to the date of such request, the correctness of any report made
under this Agreement. Nothing herein shall be construed to limit the authority of the State Auditor of Florida.
B. At any time during the term of this Agreement, UCFRF may request in writing that LICENSEE
verify the calculation of any past payments owed to UCFRF through the means of a self-audit. Within ninety (90)
days of the request, LICENSEE shall complete a self-audit of its books and records to verify the accuracy and
completeness of the payments owed. Within thirty (30) days of the completion of the self-audit, LICENSEE shall
submit to UCFRF a report detailing the findings of the self-audit and the manner in which it was conducted in
order to verify the accuracy and completeness of the payments owed. If LICENSEE has determined through its
self-audit that there is any payment deficiency, LICENSEE shall pay UCFRF the deficiency along with applicable

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interest under ARTICLE 3 ROYALTIES, EQUITY, PAYMENTS AND REPORTS (G) with the submission of the
self-audit report to UCFRF.
C. In the event that any examination or audit is conducted pursuant to this ARTICLE 5 KEEPING OF
RECORDS shall indicate an underpayment in royalties due UCFRF in an amount greater than three percent (3%),
LICENSEE agrees to reimburse UCFRF for any and all expenses incurred by the approved accountant in
conducting the examination or audit.
ARTICLE 6
CONFIDENTIAL INFORMATION
A.
UCFRF and LICENSEE each agree for the term of this Agreement that all information disclosed
by one party to the other, if so designated or marked Confidential at the time of disclosure, shall: (i) be received
in strict confidence; (ii) be used only for the purposes of this Agreement; and (iii) not be disclosed by the receiving
party without the prior written consent of the other party except if and to the extent that the receiving party can
establish by competent proof that such information:
(a)
(b)
(c)
(d)
(e)
(f)

was in the public domain at the time of disclosure;

later became part of the public domain through no act or omission of the receiving party;
was lawfully disclosed to the receiving party by a third party having the right to disclose it;
was already known by the receiving party at the time of disclosure;
was independently developed by the receiving party; or
is required by law or regulation or valid court order to be disclosed.

Without limiting the generality of the foregoing, all non-public information relating to the Patent Rights
shall be treated by LICENSEE as confidential information under this Agreement. If the confidential information is
disclosed orally or visually, then the secret nature of the information must first be announced, and the disclosing
party shall within ten (10) days after such initial oral or visual disclosure, send the receiving party a written
summary of the disclosure, marked confidential with disclosers name included thereon. Failure to do so shall
mean the information is not entitled to confidential protection.
B. Each partys obligation of secrecy hereunder shall be fulfilled by using at least the same degree of
care with the other partys confidential information as it uses to protect its own confidential information.
ARTICLE 7
GOVERNMENT CLEARANCE, PUBLICATION, OTHER USE, EXPORT DUTIES
A.
LICENSEE agrees that the right of publication shall reside in the inventor and other staff of
UCF/UCFRF. UCFRF will be free to publish the results of any research related to the Patent Rights or Licensed
Products (or anything else covered by this Agreement) and use any information for research and/or educational
and/or teaching purposes only and may have UCF do the same.
B. It is agreed that notwithstanding any provisions herein, UCFRF is free to offer and license the Patent
Rights outside the Field-of-Use, outside the Territory, and to use the inventions and Patent Rights (and anything
else covered by this Agreement) for its own educational, teaching, and research purposes and without payment of
royalties or other fees and may have UCF do the same.
C. This Agreement is subject to, and LICENSEE will comply with all applicable United States and
foreign laws and regulations, including without limitation all laws and regulations controlling the export of
technical data, laboratory prototypes, and other commodities and technology which may be applicable.
D. LICENSEE shall be solely responsible for the payment and discharge of any taxes or duties relating
to any transaction of LICENSEE, its employees, contractors, or agents, and Sublicensees in connection with the
manufacture, use, or sale in any country of Licensed Product(s).

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E. LICENSEE shall be solely responsible for obtaining all approvals, such as, for example, Underwriters
Laboratory (U.L.) approval for Licensed Products, necessary or advisable for sale or use of Licensed Products in the
United States and throughout the world, at LICENSEEs sole cost and expense.
F. LICENSEE agrees to comply with all government laws and regulations in the manufacture, sale and
delivery of Licensed Products, including, but not limited to, Import/Export regulations and the antitrust laws of the
United States.
ARTICLE 8
ENFORCEMENT AND INFRINGEMENT
A. Notice of Infringement. In the event LICENSEE has knowledge of infringing
activity or potential for infringement, or if LICENSEE or its Affiliate or Sublicensee is accused of infringement by
making, using or selling a Licensed Product, LICENSEE shall notify UCFRF promptly in writing regarding the
identity of the alleged infringer and at least the general basis for the allegation. In the event LICENSEE takes any
action to give notice of, or otherwise seek to enjoin infringement, including bringing suit, LICENSEE shall notify
UCFRF promptly, and in advance where reasonably practical, regarding the actions pending or taken, and shall
keep UCFRF reasonably appraised as to the course of any such enforcement matter.
While and as long as its license under this Agreement is effective and this Agreement has not been terminated and
has not expired, LICENSEE is empowered:
1) to bring suit in its own name or, if required by law and upon the written authorization of the UCF
General Counsel, jointly with UCFRF, at LICENSEES sole own expense and on its own behalf,
subject to the obligations set forth in this Section 8, for infringement of the Patent Rights;
2) to enjoin infringement and to collect for its use, damages, profits and awards of whatever nature
recoverable for such infringement;
3) to settle any claim or suit for infringement of Patent Rights by granting the infringing party a
Sublicense under the provisions of ARTICLE 2 LICENSE GRANT of this Agreement, provided
that no such settlement shall include any implication or admission of wrongdoing by UCFRF or
UCF, and following written notice to and upon written authorization of UCF General Counsel.
All damages or other recoveries collected as a result of any joint action brought pursuant to this
Section 8 shall first be applied to the amount of LICENSEEs costs, expenses, and attorneys fees,
LICENSORs costs, expenses, and attorneys fees incurred in connection with such action. Any
remaining amounts shall be subject to royalty payments to LICENSOR, as set forth herein, but
shall otherwise belong to LICENSEE.
B. In the event UCFRF shall bring to the attention of LICENSEE any trade secret and/or unlicensed
infringement of the Patent Rights, then LICENSEE shall, within six (6) months:
1) secure cessation of the infringement; or
2) enter suit against the infringer; or
3) provide UCFRF with evidence of the acceptance by the infringer of a Sublicense under the Patent
Rights; or
4) provide UCFRF with evidence in support of LICENSEEs position that there is no infringement;
or
5) provide UCFRF with other response asserting a position against undertaking enforcement.
LICENSEE shall have no right to obligate UCFRF or UCF in any way or cause anything to have a negative impact
on UCF or be a disadvantage to UCFRF or UCF by virtue of the entitlement conveyed in ARTICLE 8
ENFORCEMENT AND INFRINGEMENT (A) and (B) above.
In the event LICENSEE fails to act in accordance with this section, UCFRF shall have the right to sue for
infringement at UCFRFs own expense and to collect for its own use all damages, profits, and awards of whatever
nature recoverable for such infringement, and shall have the right to either (1) modify the license grant to nonexclusive, or (2) terminate the license, or (3) modify this Agreement according to other renegotiated terms of the
parties.

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ARTICLE 9
TERM AND TERMINATION

A. Unless previously terminated in accordance with the provision of this Agreement, this Agreement
shall be in force from the Effective Date and shall remain in effect on a country-by-country basis until the last to
expire patent.
B. LICENSEE shall have the right to terminate the license granted herein by this Agreement by written
notice to UCFRF at least sixty (60) days prior to the date such termination is to take effect, but those provisions set
forth in ARTICLE 25 SURVIVAL OF TERMS, Survival of Terms shall survive the termination or expiration of this
Agreement, including that any royalties accrued through this date of termination shall be paid to UCFRF within 30
days thereafter.
C. Should LICENSEE fail to pay UCFRF royalties due and payable hereunder, UCFRF shall have the
right to terminate this Agreement on thirty (30) days notice, unless LICENSEE shall cure the default within the
thirty (30) day period. Upon the expiration of the thirty (30) day period, if LICENSEE shall not have paid all such
royalties and interest due and payable, the rights, privileges and license granted hereunder shall immediately
terminate with no further notice to LICENSEE required.
D. Any termination of this Agreement hereunder shall not relieve LICENSEE from its obligation under
ARTICLE 3ROYALTIES, EQUITY, PAYMENTS AND REPORTS hereof to make a terminal report or from its
liability for payment of royalties on Licensed Products sold or otherwise disposed of hereunder prior to the date of
such termination, and shall not prejudice the right of UCFRF to recover any royalty or interest due or accrued at
the time of such termination and shall not prejudice any cause of action or claim of UCFRF accrued or to accrue on
account of any breach or default by LICENSEE.
E. Any termination of this Agreement hereunder shall not prejudice the right of UCFRF to conduct a
final audit of the books and records of LICENSEE in accordance with the provisions of ARTICLE 5 KEEPING OF
RECORDS hereof.
F. In the event an order for relief is entered against LICENSEE under the United States Bankruptcy
Code, or for insolvency or an order appointing a receiver for substantially all of LICENSEEs assets is entered by a
court of competent jurisdiction, or LICENSEE makes an assignment for the benefit of creditors, or a levy of
execution is made upon substantially all of the assets of LICENSEE and such levy is not quashed or dismissed
within thirty (30) days, this Agreement shall automatically terminate effective on the date of such order or
assignment or, in the case of such levy, the expiration of such thirty (30) day period; provided, however, that such
termination shall in no way impair or prejudice any right of remedy that UCFRF might have under this Agreement.
G. In the event of termination by either Party, LICENSEE agrees that all right, title and interest
whatsoever granted to LICENSEE pursuant to this Agreement by LICENSOR shall immediately revert to
LICENSOR without any further notice or action by LICENSOR.
ARTICLE 10
TRANSFERABILITY OF RIGHTS AND LICENSES
A. The obligations of LICENSEE hereunder, including the obligations to make Net Sales reports and
pay royalties, shall run in favor of the successors, assignees, or other legal representatives of UCFRF, as applicable.
B. This Agreement shall be assignable by LICENSEE with UCFRFs prior written consent to an
affiliate or as part of a sale or transfer of a substantial portion of its business to which this Agreement relates and
will inure to the benefit of and be binding on the successors and assigns of LICENSEE only upon written consent
of UCFRF, which shall not be unreasonably withheld.
ARTICLE 11
PATENT PROSECUTION AND MAINTENANCE

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A. All past, present, and future costs of preparing, filing, prosecuting, defending, and maintaining all
patent applications and/or patents, including interferences and oppositions, and all corresponding foreign patent
applications and patents covered by Patent Rights shall be borne by LICENSEE.
B. ADD PAYMENT TERMS
In exchange for the [worldwide/limited] [exclusive, non-exclusive] Field-of-Use license granted hereunder, and
subject to the provisions of this Agreement, LICENSEE agrees to pay for or reimburse UCFRF for ALL patent
expenses associated with the Patent Rights. LICENSEE shall pay all invoices sent by UCFRF or UCF within sixty
(60) days of invoice date. LICENSEEs reimbursement shall cover all patents licensed under this Agreement. If
LICENSEE expressly declines, or fails, to timely reimburse UCFRF for such patent expenses, LICENSEE shall
forfeit its license rights.

ARTICLE 12
DISCLAIMER OF PATENT WARRANTY
A. Neither UCFRF nor UCF warrant that any invention comprising the Patent Rights which may be the
subject of a patent or patent application licensed hereunder is or will be patentable, marketable, valuable or
otherwise subject to commercialization.
B. Nothing contained in this Agreement shall be construed as a warranty or representation that the use
of the Patent Rights will be free from infringement of patents or other intellectual property or proprietary rights of
third parties or (2) that LICENSOR will not grant licenses to others to make, use or sell products not covered by
the claims of the Licensed Patents which may be similar and/or compete with products made or sold by
LICENSEE.
C. Nothing contained in this Agreement shall be construed as an obligation of UCFRF or UCF to (1)
provide or furnish any know-how not provided in Licensed Patents or any services other than those specified in this
Agreement or (2) bring or to prosecute actions or suits against third parties for infringement of any patent, or as an
obligation by UCFRF or UCF to defend any actions brought by any third party(s) alleging infringement of or
claims of damages in respect to any patent of such third party(s).
D. In the event LICENSEE should be required to defend itself against any infringement claims, actions
or suits of any third party(s) as a consequence of LICENSEEs use of any Patent Rights furnished by UCFRF
hereunder, UCFRF shall provide at LICENSEEs request reasonable assistance and cooperation with respect to
each infringement claim, action or suit in which LICENSEE may become involved during the life of this
Agreement at LICENSEEs expense.
E. NEITHER UCFRF NOR UCF MAKE ANY REPRESENTATIONS AND EXTEND NO
WARRANTIES OF ANY KIND, EITHER EXPRESSED OR IMPLIED, INCLUDING, BUT NOT LIMITED TO
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR VALIDITY OR
SCOPE OF PATENT CLAIMS ISSUED OR PENDING. FURTHER, UCFRF OR UCF MAKE NO
REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESSED OR
IMPLIED, THAT THE USE OF THE INVENTION OR ANYTHING ELSE LICENSED HEREUNDER WILL
NOT INFRINGE ANY PATENT AND/OR OTHER INTELLECTUAL PROPERTY OR PROPRIETARY RIGHT
OF A THIRD PARTY. LICENSOR ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH RESPECT TO
USE, SALE, OR OTHER DISPOSITION BY LICENSEE, ITS SUBLICENSEE(S), OR THEIR VENDEES OR
OTHER TRANSFEREES OF PRODUCT INCORPORATING OR MADE BY USE OF INVENTIONS LICENSED
UNDER THIS AGREEMENT.
ARTICLE 13
INDEMNITY AND INSURANCE

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A. LICENSEE shall indemnify, defend and hold UCFRF, UCF, the UCF Board of Trustees, the State of
Florida and the Florida Board of Governors and their respective employees, agents, officers and servants and all
UCF faculty and inventors and affiliates (collectively Indemnitees), harmless against all claims and expenses,
including legal expenses and reasonable attorneys fees, arising out of the death or injury to any person or persons
or out of any damage to property and against any other claim, proceeding, demand, expense and liability of any
kind whatsoever resulting from utilization of the Patent Rights licensed to LICENSEE or its Sublicensee(s)
hereunder in the production, manufacture, sales, use, lease, consumption or advertisement of the Licensed Products
by LICENSEE or its Sublicensee(s), including without limitation any loss, damage, or injury sustained by
LICENSEE or any user or purchaser of Licensed Products manufactured by or on behalf of LICENSEE or by any
Affiliate or Sublicensee of LICENSEE, arising out of, connect with, or resulting from this Agreement, or from the
design or operation of the Licensed Products or components thereof or arising from any obligations of LICENSEE
hereunder or otherwise arising out of or in conjunction with this Agreement.
B. LICENSEE shall for the term of this Agreement maintain Comprehensive General Liability
Insurance, including Products Liability Insurance, to cover the activities of LICENSEE. Such insurance coverage
shall list UCFRF, the University of Central Florida Board of Trustees, the University of Central Florida, and the
inventors of the Patent Rights as additional insureds and such policies shall be acceptable to UCFRF. LICENSEE
shall provide copies of such insurance certificate(s) to UCFRF.
C. UCFRF or UCF shall have no obligation, expressed or implied, to supervise, monitor, review, or
otherwise assume responsibility for the production, manufacture, testing, marketing, or sale of any Licensed
Products.
D. UCFRF or UCF shall have no liability whatsoever related to LICENSEE, Sublicensee(s), or any third
party activities for or on account of any injury, loss, or damage, of any kind or nature, sustained by, or any damage
assessed or asserted against, or any other liability incurred by or imposed upon LICENSEE, Sublicensee(s), or any
other person or entity, arising out of or in connection with or resulting from the following:
(1) the production, use or sale of any Licensed Products by or for LICENSEE or Sublicensee(s);
(2) the use by or for INTEL or Sublicensee(s) of the Patent Rights under the license herein; or
(3) any advertising or other promotional activities of INTEL or Sublicensee(s) with respect to any of the
foregoing.
ARTICLE 14
NON-USE OF NAMES
A. LICENSEE shall not use the name of UCFRF or UCF, or any trademark, trade device, service mark,
symbol, or any abbreviation, contraction, or simulation thereof, owned by UCFRF or UCF, nor the names of any
office employees, or any adaptation thereof, in any advertising, promotional, or sales literature without the prior
written consent obtained from an authorized officer of UCFRF or UCF in each case, , which consent shall not be
unreasonably withheld.
B. LICENSEE may state that it is licensed by UCFRF under one or more of the patents and/or patent
applications comprising the Patent Rights.
ARTICLE 15
JUDGMENTS
A. If, in any proceeding in which the validity or infringement of any of the aforesaid licensed claims is
at issue, a judgment or decree is entered which becomes not further reviewable through the exhaustion of all
permissible applications for rehearing or review by a superior tribunal (hereinafter referred to as an "irrevocable
judgment"), the construction placed upon any such claim by any such irrevocable judgment shall be thereafter
followed not only as to such claim but as to all claims to which such construction applies, with respect to acts
occurring thereafter; and, if such irrevocable judgment holds any claim invalid, LICENSEE shall be relieved
thereafter from including in its reports hereunder Licensed Products sold thereafter where there is royalty liability
only by reason of such claim or any other claim in which such irrevocable judgment is applicable, and from the
performance of those other acts which may be required by this Agreement only because of such claim; the decision

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of the higher tribunal shall be followed until the less favorable decision has been followed by the irrevocable
judgment of another tribunal of at least equal dignity.
ARTICLE 16
PATENT MARKINGS
A. LICENSEE is required to mark all Licensed Products made, imported, offered for sale, sold or
otherwise disposed of by it under this Agreement with the words Patent Pending until and after patent issuance,
and then with the words "Patent" or Pat. and either (1) the patent number or patent numbers of each valid
Licensed Patent with at least one issued claim applicable to the marked Licensed Products, or (2) the address of a
posting on the Internet, accessible to the public without charge and that associates the patented article with the
number of the patent(s). If the Licensed Products is a product with a character that prevents direct marking, the
marking may be on the package or label of the product. If the Licensed Products is a service or a virtual article
that is generally without tangible form, marking shall at least be on a landing page of an operating web site of
LICENSEE through which the virtual article or service is available.
B. LICENSEE agrees that all Licensed Products sold by LICENSEE, Affiliates, as applicable, will be
legibly marked with the number of any applicable patent(s) licensed hereunder as part of the Patent Rights in
accordance with each countrys patent marking laws, including 35, U.S.C. 287.
C. In the event that LICENSEE fails to act in accordance with this section, and damage recovery is
limited as a result of LICENSEEs negligence in patent markings, LICENSEE shall be obligated to UCFRF for any
and all damages that would have otherwise been awarded and recovered but for the absence of the marking.
D. In the event that LICENSEE or Sublicensee(s) is assessed a civil penalty or becomes obligated for
damages to a third party who has suffered a competitive injury as a result of LICENSEE marking activities,
LICENSEE shall be solely responsible for such penalty or damages.
ARTICLE 17
ADDITIONAL INDEMNITY
A. LICENSEE agrees to hold UCFRF, UCF, the UCF Board of Trustees, the State of Florida and the Florida
Board of Governors and their respective employees, agents, officers and servants and all UCF faculty, staff and
inventors and affiliates harmless against any claim of any kind, including negligence, for any loss, damage or
injury allegedly sustained by LICENSEE or any user or purchaser of Licensed Products manufactured by
LICENSEE or on behalf of LICENSEE or by any licensee of LICENSEE, arising out of, connected with, or
resulting from this Agreement, or from the design, manufacture, sale, operation or use of Licensed Products or
components thereof.
ARTICLE 18
NOTICES
A. All notices provided for in this Agreement shall be given in writing and shall be effective when either
(1) served by personal delivery or (2) deposited, postage prepaid, as Registered or Certified Mail or (3) e-mailed or
by facsimile with receipt confirmed and addressed to the parties respectively at the following addresses:
As to LICENSEE: ___________________________________________________________________________

As to UCFRF: Office of Technology Transfer, 12201 Research Pkwy, Suite 501,Orlando, Florida 32826
Attention: Raju Nagaiah, Licensing Associate
[email protected]
Telephone: (407) 882-0593
Facsimile: (407) 823-3299
or to other such address as LICENSEE or UCFRF, respectively, may later fix by written notice to the other.

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ARTICLE 19
WAIVER

A. The failure of a party in any instance to insist upon the strict performance of the terms of this
Agreement shall not be construed to be a waiver or relinquishment of any of the terms of this Agreement, either at
the time of the partys failure to insist upon strict performance or at any time in the future, and such term or terms
shall continue in full force and effect.
ARTICLE 20
TITLES
A. All titles and article headings contained in this Agreement are inserted only as a matter of
convenience and reference. They do not define, limit, extend, or describe the scope of this Agreement or the intent
of any of its provisions.
ARTICLE 21
SEVERANCE
A. Each clause of this Agreement is a distinct and severable clause and if any clause is deemed illegal,
void, or unenforceable, the validity, legality, or enforceability of any other clause or portion of this Agreement will
not be affected thereby.
ARTICLE 22
ENTIRE AGREEMENT
A. This instrument contains the entire and only agreement between the parties, and it supersedes all
preexisting agreements between such parties.
B. This Agreement merges all prior discussions between the parties and neither party shall be bound by
conditions, definitions, warranties, understandings, or representations unless otherwise provided in this Agreement
or as otherwise provided later in writing and signed by the authorized representatives of the parties.
C. This Agreement can be modified or amended only by written agreement, duly signed by persons
authorized to sign agreements on behalf of the parties.
ARTICLE 23
REGULATORY COMPLIANCE
A. The parties agree to comply with Titles VI and VII of the Civil Rights Act of l964 Title IX of the
Education Amendments of l972, Section 504 of the Rehabilitation Act of 1973, Executive Order 11,246, the
Americans with Disabilities Act of 1990 and the related regulations to each. Each party assures that it will not
discriminate against any individual including, but not limited to, employees or applicants for employment and/or
students because of race, religion, creed, color, sex, age, disability, veteran status or national origin.
B. The parties also agree to take affirmative action to ensure that applicants are employed, and that
employees are treated during their employment, without regard to their race, religion, creed, color, sex, disability,
or national origin. Such action shall include, but not be limited to, the following: employment, upgrading,
demotion or transfer, recruitment or recruitment advertising, layoff or termination, rates of pay or other forms of
compensation, and selection available to employees and applicants for employment.
ARTICLE 24
EXPORT CONTROL
A. LICENSEE acknowledges that it and Sublicensee(s) is subject to and agrees to abide by all applicable
United States laws and regulations (including but not limited to the Export Administration Act of 1979 and Arms
Export Control Act) controlling the export of technical data, computer software, laboratory prototypes, biological

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material and other commodities. LICENSEE understands that the transfer of such items may require a license
from the responsible agency of the U.S. Government or written assurances by LICENSEE that it and Sublicensee(s)
shall not export such items to certain foreign countries without prior approval of such agency. LICENSOR neither
represents that a license is or is not required or that, if required, it shall be issued.
ARTICLE 25
SURVIVAL OF TERMS
A. The provisions of Articles 1, 5, 6, 7, 8, 9 (D) and (E), 10, 13, 14, 15, 16, 17, 18, 19, 25 and 26 shall
survive the expiration or termination of this Agreement.
ARTICLE 26
GOVERNING LAW AND JURISDICTION
This Agreement shall be interpreted in accordance with the laws of the State of Florida, without regard to
its choice of law principles. The Parties agree that jurisdiction and venue for any action arising under this
Agreement shall lie exclusively within either the state courts of Florida located in Orange County, Florida or the
United States District Court for the Middle District of Florida, Orlando Division. The parties specifically waive the
right to any other jurisdiction and venue, and the defense based on inconvenient forum.
ARTICLE 27
REMEDIES
LICENSEE understands and agrees that UCFRF and UCF may suffer irreparable harm in the event that
LICENSEE or its managers, members, employees, agents, accountants, financial counselors and/or attorneys
breach any of the obligations under this Agreement and that monetary damages may be inadequate to compensate
for such breach. Accordingly, LICENSEE agrees that in the event of breach or threatened breach by LICENSEE of
any of the provisions of this Agreement, UCFRF and UCF, in addition to and not in limitation of any other
available rights, remedies, or damages, shall be entitled to temporary restraining order, preliminary injunction, and
permanent injunction in order to prevent or restrain any such breach by LICENSEE or its employees, servants,
agents, and/or any and all persons directly or indirectly acting for LICENSEE.
(REMAINDER OF PAGE INTENTIONALLY LEFT BLANK)

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IN WITNESS WHEREOF, the parties hereto have caused their duly authorized representatives to execute this
Agreement as of the date first set forth above.
UNIVERSITY OF CENTRAL FLORIDA RESEARCH FOUNDATION, INC.

By:

Thomas P. ONeal, Ph.D.

Title:

Vice President

Date:

[COMPANY]

By: _____________________________________________
Title:____________________________________________
Date:

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APPENDIX A
DESCRIPTION OF TECHNOLOGY

Patent/Application
No./UCF #

Title

Inventor (s)

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APPENDIX B
DEVELOPMENT PLAN

A development plan of the scope outlined below shall be submitted to UCFRF by LICENSEE prior to the
execution of this agreement. In general, the plan should provide UCFRF with a summary overview of the activities
that LICENSEE believes are necessary to bring products to the marketplace.

I.

Development Program
A.

Development activities to be undertaken

(Please break activities into subunits with the date of completion of major milestones)
1.
2.
3.
4.

B.
II.

Estimated total development time

Governmental Approval
A.
B.

Types of submissions required

Government agency, e.g., FDA, EPA, etc.

III.

Proposed Market Approach

IV.

Competitive Information
A.
B.
C.
D.

Potential competitors
Potential competitive devices/compositions
Known competitors plans, developments, technical achievements
Anticipated date of product launch

Total Length: approximately 2-3 pages

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APPENDIX C
DEVELOPMENT REPORT

When appropriate, indicate estimated start date and finish date for activities.

A.

Date Development Plan Initiated and Time Period Covered by this Report.

B.

Development Report (4-8 paragraphs).

1.
Activities completed since last report including the object and parameters of the development,
when initiated, when completed and the results.
2.
Activities currently under investigation, i.e., ongoing activities including object and parameters
of such activities, when initiated, and projected date of completion.
C.

Future Development Activities (4-8 paragraphs).

1.
Activities to be undertaken before next report including, but not limited to, the type and object of
any studies conducted and their projected starting and completion dates.
2.
D.

Estimated total development time remaining before a product will be commercialized.

Changes to Initial Development Plan (2-4 paragraphs).

1.
2.

Reasons for change.

Variables that may cause additional changes.

E. Items to be provided if Applicable:

1.

Information relating to Licensed Products that has become publicly available, e.g., published articles,
competing products, patents, etc.

2.

Development work being performed by third parties, other than LICENSEE, to include name of third party,
reasons for use of third party, planned future uses of third parties including reasons why and type of work.

3.

Update of competitive information trends in industry, government compliance (if applicable) and market
plan.

4.

Information and copies of relevant materials evidencing the status of any patent applications or other
protection relating to Licensed Products or the Patent Rights.

PLEASE SEND DEVELOPMENT REPORTS TO:

University of Central Florida Research Foundation
Attn: Director of Technology Transfer
12201 Research Parkway, Suite 501
Orlando, FL 32826-3246
Copy: [email protected]

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APPENDIX D
EQUITY AGREEMENT

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