Seea Cettetse
`
`Ex.1030
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`

`

`
`
`ASPEN CASEBOOKSERIES
`LICENSING
`INTELLECTUAL PROPERTY
`
`
`
`LAW AND APPLICATION
`
`Fourth Edition
`
`Robert W. Gomulkiewicz
`UW Law Foundation Professor ofLaw
`Director, Intellectual Property Law & Policy Graduate Program
`University of Washington School ofLaw — Seattle
`Xuan-Thao Nguyen
`Gerald L. Bepko Chair in Law
`Director, Centerfor Intellectual Property and Innovation
`IU Robert H. McKinney School ofLaw — Indianapolis
`Danielle M. Conway
`Dean and Professor ofLaw
`University ofMaine School ofLaw
`
`@)Wolters Kluwer
`
`

`

`Copyright © 2018 CCH Incorporated.
`
`Published by Wolters Kluwer in New York.
`
`Wolters Kluwer Legal & Regulatory U.S. serves customers worldwide with CCH, Aspen Publishers,
`and Kluwer Law International products. (www.WKLegaledu.com)
`
`Nopart ofthis publication may be reproduced or transmitted in any form or by any means, electronic or
`mechanical, including photocopy,recording,or utilized by any information storage or retrieval system,
`without written permission from the publisher. For information aboutpermissions or to request permis-
`sions online, visit us at www.WKLegaledu.com, or a written request may be faxed to our permissions
`department at 212-771-0803.
`
`To contact Customer Service, e-mail customer.service@wolterskluwer.com, call 1-800-234-1660,
`fax 1-800-901-9075, or mail correspondence to:
`
`Wolters Kluwer
`Attn: Order Department
`PO Box 990
`Frederick, MD 21705
`
`Printed in the United States of America.
`
`1234567890
`
`ISBN 978-1-4548-9269-4
`
`Library of Congress Catalogingin-Publiaon Data
`
`Names: Gomulkiewicz, Robert W. author. | Nguyen, Xuan-Thao N., author.|
`Conway, Danielle M. author.
`Title: Licensing intellectual property : law and application / Robert W.
`Gomulkiewicz, UW Law Foundation Professor of Law, Faculty Director of the
`. Law, Technology & Arts Group University of Washington School of Law,
`Seattle; Xuan-Thao Nguyen, Gerald L. Bepko Chair in Law, Director, Center
`for Intellectual Property and Innovation IU Robert H. McKinney School of
`Law, Indianapolis; Danielle M. Conway, Dean and Professor of Law
`University of Maine School of Law.
`Description: Fourth edition. | New York : Wolters Kluwer, [2018] | Series:
`Aspen casebookseries | Includes index.
`Identifiers: LCCN 2017056957 | ISBN 9781454892694
`Subjects: LCSH: License agreements — United States.
`| Patent licenses — United
`States.
`| Copyright licenses — United States.
`| Intellectual -
`property — United States. | LCGFT: Casebooks
`Classification: LCC KF3145 .G66 2018 | DDC 346.7304/8 —dc23
`LC record available at https://Iccn.loc.gov/2017056957
`
`

`

`
`
`Il. Materials
`
`- 729 +
`
`commercialize”
`
`ercialize meanshavingSales of Licensed Products oran effective ongoing
`:
`and active research, development, manufacturing
`|
`marketingorsales program as
`appropriate, directed toward obtaining regulatory a
`pproval, production orSales of
`Licensed Products in any jurisdiction, and plans
`acceptable to University,
`in its
`sole discretion, to commercialize licensed inven
`tions in the jurisdiction(s) that
`University intends to terminate.
`
`7.5 This Agreementwill earlier terminate:
`a. automatically if Licensee becomesbankrupt orinsolvent and/orif the busi-
`ness of Licensee is placed in the hands of a receiver, assignee, ortrustee,
`whether by voluntary act of Licensee or otherwise; or
`b. upon 30 days’ written notice from Board if Licensee breachesor defaults on its
`obligation to make payments(if any are due) or reports, in accordance with
`the termsof Article 5, unless, before the end of the 30-day period, Licensee
`has cured the default or breach and so notifies Board,stating the mannerof
`the cure; or
`
`c. upon 90 days’ written notice if Licensee breachesor defaults on any other
`obligation underthis Agreement, unless, before the end of the 90-day period,
`Licensee has cured the default or breach and so notifies Board, stating the
`mannerof the cure; or
`
`d. at any time by mutual written agreement between Licensee, University and
`Board, upon 180 days’ written notice to all parties and subject to any terms
`herein which survive termination; or
`
`e. underthe provisions of Paragraphs 7.2 and 7.3if invoked.
`
`7.6 If this Agreementis terminated for any cause:
`a. nothing herein will be construed to release either party of any obligation
`maturedprior to the effective date of the termination,
`b. after the effective date of the termination, Licensee may sell all Licensed
`Products and parts therefor it has on hand at the date of termination,if it
`pays earnedroyalties thereon according to the termsofArticle 5; and
`c. Licensee will be bound bythe provisions of Articles 11 (Indemnification), 12
`(Use of Board and Component's Name), and 13 (Confidential Information) of
`this Agreement.
`8. INFRINGEMENTBY THIRD PARTIES
`8.1 Licensee,atits expense, must enforce any patent exclusively licensed eae
`against infringementbythird parties andit is entitled to retain recovery from suc
`enforcement. Licensee must pay Board a royalty on anymonetary recovery if the
`monetary recovery isfordamages ora reasonableroyalty in lieu thereat. iee
`does notfile suit against a substantialinfringer of a patent within 6 months o
`
`

`

`730:
`
`Chapter 12. University Intellectual Property Transfers
`
`knowledge thereof, then Board may enforce any patent licensed hereunder on
`behalf of itself and Licensee, Board retainingall recoveries from such enforcement
`and/or reducingthe license granted hereunderto non-exclusive.
`8.2 In any infringementsuit ordispute,the parties agree to CO fully with each
`other, At the request and expenseofthe party bringing sult the otherparty will
`permit accessto all relevant personnel, records, papers, information, samples,
`specimens,etc., during regular business hours.
`
`9. ASSIGNMENT
`Except in connection with the sale of substantially all of Licensee's assets toa third
`party, this Agreement may not be assigned by Licensee without the prior written
`consentof Board, which will not be unreasonably withheld.
`|
`
`Licensee's liability with respect to its indemnification underthis Agreement.
`
`a. Beginningat the time whenany Licensed Subject Matteris beingdistributed or
`sold(includingforthe purposeofobtaining regulatory approvals) by Licenseeor
`by a sublicensee, Licensee shall, at its sole cost and expense, procure and
`maintain commercial generalliability insurance in amounts not less than
`$2,000,000 perincident and $2,000,000 annual aggregate, and Licensee
`shall use reasonable efforts to have the Board, System, University, its Regents,
`officers, employees and agents named as additional insureds. Such commercial
`generalliability insurance shall provide (j) product liability coverage;(ii) broad
`form contractualliability coverage for Licensee's indemnification underthis
`Agreement; and (Iii) coverageforlitigation costs. The minimum amounts
`of insurance coverage required shall not be construed to create a limit of
`
`10. PATENT MARKING
`
`Licensee must permanently and legibly mark all products and documentation
`manufactured or sold by it under this Agreement with a patent notice as may be
`permitted or required underTitle 35, United States Code.
`
`11. INDEMNIFICATION AND INSURANCE
`
`its
`11.1 Licensee agrees to hold harmless and indemnify Board, System, University,
`Regents, officers, employees and agents from and against any claims, demands,
`or causes of action whatsoever, including withoutlimitation those arising on account
`of anyinjury or death of persons or damage to property caused by,orarising outof,
`or resulting from, the exercise or practice of the license granted hereunder by
`Licensee,its Affiliates or their officers, employees, agents or representatives.
`
`11.2 Innoeventshall Board beliable for anyindirect, special, consequentialor punitive
`damages(including, withoutlimitation, damagesfor loss of profits or expected
`savings or other economic losses,orfor injury to personsor property) arising out
`of or in connection with this Agreement orits subject matter, regardless of
`whether Board knowsor should know of the possibility of such damages.
`
`11.3 Insurance
`
`