Note	=	https: www.ott.nih.gov/sites/default/files/documents/docs/NIH-Patent-License-Exclusive-model-102015.docx
Ti	=	{Doc.Ti}
Doc.Ti	=	Patent License Agreement - Exclusive
Note	=	This Agreement is based on the model Patent License Exclusive Agreement adopted by the U.S. Public Health Service (“{_PHS}”) Technology Transfer Policy Board for use by components of the National Institutes of Health (“{_NIH}”), the Centers for Disease Control and Prevention (“{_CDC}”), and the Food and Drug Administration (“{_FDA}”), which are agencies of the {_PHS} within the Department of Health and Human Services (“{_HHS}”).
sec	=	{Intro.sec} {Background.LI}{Def.LI}{Grant.LI}{Sublicense.LI}{Limit-Govt.LI}{Pay.LI}{Prosecute.LI}{RecordKeeping.LI}{Report.LI}{Commercialize.LI}{Enforce.LI}{Limit-Warranty.LI}{Life.LI}{Misc.LI}
Intro.sec	=	This {Doc.Ti}, hereinafter referred to as the “{_Agreement}”, consists of this Cover Page, an attached Agreement, a Signature Page, Appendix A (List of Patent(s) or Patent Application(s)), Appendix B (Fields of Use and Territory), Appendix C (Royalties), Appendix D (Benchmarks and Performance), Appendix E (Commercial Development Plan), Appendix F (Example Royalty Report), and Appendix G (Royalty Payment Options).
	=
Background.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Background/0.md]
Def.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Def/0.md]
Grant.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Grant/0.md]
Sublicense.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Sublicense/0.md]
Limit-Govt.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Limit_Govt/0.md]
Pay.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Pay/0.md]
Prosecute.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Prosecute/0.md]
RecordKeeping.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/RecordKeeping/0.md]
Report.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Report/0.md]
Commercialize.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Commercialize/0.md]
Enforce.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Enforce/0.md]
Limit-Warranty.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Limit_Warranty/0.md]
Life.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Life/0.md]
Misc.	=	[G/NIH-License-Patent-Exclusive-CmA/Sec/Misc/0.md]
That.sec	=	{_IC} and {_Licensee} agree as follows:
	=	[G/AgtForm/US/0.md]
_Affiliate	=	Affiliate
_Agreement	=	Agreement
_Benchmarks	=	Benchmarks
_CRADA	=	CRADA
_Commercial_Development_Plan	=	Commercial Development Plan
_FDA	=	FDA
_First_Commercial_Sale	=	First Commercial Sale
_Government	=	Government
_HHS	=	HHS
_IC	=	IC
_Licensed_Fields_of_Use	=	Licensed Fields of Use
_Licensed_Patent_Rights	=	Licensed Patent Rights
_Licensed_Process(es)	=	Licensed Process(es)
_Licensed_Process	=	Licensed Process
_Licensed_Processes	=	Licensed Processes
_Licensed_Products	=	Licensed Products
_Licensed_Territory	=	Licensed Territory
_Licensee	=	Licensee
_NIH	=	NIH
_Net_Sales	=	Net Sales
_Practical_Application	=	Practical Application
_Research_License	=	Research License
_The_Licensee	=	The {_Licensee}
_This_Agreement	=	This {_Agreement}
_the_IC	=	the {_IC}
_the_Licensee	=	the {_Licensee}
_this_Agreement	=	this {_Agreement}
_____________Heading	=
This Cover Page identifies the Parties to {_this_Agreement}:	=
The U.S. Department of Health and Human Services, as represented by	=
[Insert the full name of the IC]	=
an Institute or Center (hereinafter referred to as the “{_IC}”) of the	=
[INSERT as appropriate: {_NIH}, {_CDC}, or {_FDA}]	=
and	=
[Insert Company’s official name],	=
hereinafter referred to as the “{_Licensee}”,	=
having offices at [Insert Company’s address],	=
created and operating under the laws of [Insert State of Incorporation].	=
Tax ID No.:_____________________	=
	=
For {_IC} internal use only:	=
License Number:	=
License Application Number:	=
Serial Number(s) of Licensed Patent(s) or Patent Application(s):	=
Cooperative Research and Development Agreement ({_CRADA}) Number (if a subject invention):	=
Additional Remarks:	=
Public Benefit(s):	=
_______________________End	=
SIGNATURES BEGIN ON NEXT PAGE	=
{_NIH} PATENT LICENSE AGREEMENT – EXCLUSIVE	=
SIGNATURE PAGE	=
For {_IC}:	=
____________ DRAFT ________________________ _______________	=
Name Date	=
Title	=
Office	=
National Institutes of Health	=
Mailing Address or E-mail Address for {_Agreement} notices and reports:	=
License Compliance and Administration	=
Monitoring & Enforcement	=
Office of Technology Transfer	=
National Institutes of Health	=
6011 Executive Boulevard, Suite 325	=
Rockville, Maryland 20852-3804 U.S.A.	=
E-mail: LicenseNotices_Reports@mail.nih.gov	=
For {_Licensee} (Upon, information and belief, the undersigned expressly certifies or affirms that the contents of any statements of {_Licensee} made or referred to in this document are truthful and accurate.):	=
by:	=
____________ DRAFT ________________________ _______________	=
Signature of Authorized Official Date	=
	=
Printed Name	=
	=
Title	=
I. Official and Mailing Address for {_Agreement} notices:	=
	=
Name	=
	=
Title	=
Mailing Address	=
	=
	=
	=
	=
Email Address:	=
Phone:	=
Fax:	=
II. Official and Mailing Address for Financial notices ({_Licensee}’s contact person for royalty payments)	=
	=
Name	=
	=
Title	=
Mailing Address:	=
	=
	=
	=
	=
Email Address:	=
Phone:	=
Fax:	=
Any false or misleading statements made, presented, or submitted to the {_Government}, including any relevant omissions, under {_this_Agreement} and during the course of negotiation of {_this_Agreement} are subject to all applicable civil and criminal statutes including Federal statutes 31 U.S.C. §§3801-3812 (civil liability) and 18 U.S.C. §1001 (criminal liability including fine(s) or imprisonment).	=
APPENDIX A – PATENT(S) OR PATENT APPLICATION(S)	=
Patent(s) or Patent Application(s):	=
I.	=
II.	=
III.	=
IV.	=
V.	=
APPENDIX B – LICENSED FIELDS OF USE AND TERRITORY	=
I. {_Licensed_Fields_of_Use}:	=
(a)	=
II. {_Licensed_Territory}:	=
APPENDIX C – ROYALTIES	=
Royalties:	=
I. {_Licensee} agrees to pay to {_IC} a noncreditable, nonrefundable license issue royalty in the amount of ________ dollars ($X) within sixty (60) days from the effective date of {_this_Agreement}.	=
II. {_Licensee} agrees to pay to {_IC} a nonrefundable minimum annual royalty in the amount of ________ dollars ($X) as follows:	=
(a) The first minimum annual royalty is due within sixty (60) days of the effective date of {_this_Agreement} and may be prorated according to the fraction of the calendar year remaining between the effective date of {_this_Agreement} and the next subsequent January 1; and	=
(b) Subsequent minimum annual royalty payments are due and payable on January 1 of each calendar year and may be credited against any earned royalties due for sales made in that year.	=
III. {_Licensee} agrees to pay {_IC} earned royalties of _____ percent (X%) on {_Net_Sales} by or on behalf of {_Licensee} and its sublicensees.	=
IV. {_Licensee} agrees to pay {_IC} Benchmark royalties within sixty (60) days of achieving each Benchmark:	=
(a)	=
(b)	=
(c)	=
(d)	=
(e)	=
V. {_Licensee} agrees to pay {_IC} additional sublicensing royalties of ____ percent (X%) on the fair market value of any consideration received for granting each sublicense within sixty (60) days of the execution of each sublicense.	=
APPENDIX D – BENCHMARKS AND PERFORMANCE	=
{_Licensee} agrees to the following {_Benchmarks} for its performance under {_this_Agreement} and, within thirty (30) days of achieving a Benchmark, shall notify {_IC} that the Benchmark has been achieved.	=
I.	=
II.	=
III.	=
IV.	=
V.	=
VI.	=
VII.	=
APPENDIX E – COMMERCIAL DEVELOPMENT PLAN	=
APPENDIX F – EXAMPLE ROYALTY REPORT	=
Required royalty report information includes:	=
• License reference number (L-XXX-200X/0)	=
• Reporting period	=
• Catalog number and units sold of each Licensed Product (domestic and foreign)	=
• Gross Sales per catalog number per country	=
• Total Gross Sales	=
• Itemized deductions from Gross Sales	=
• Total {_Net_Sales}	=
• Earned Royalty Rate and associated calculations	=
• Gross Earned Royalty	=
• Adjustments for Minimum Annual Royalty (MAR) and other creditable payments made	=
• Net Earned Royalty due	=
Example	=
Catalog Number Product Name Country Units Sold Gross Sales (US$)	=
1 A US 250 62,500	=
1 A UK 32 16,500	=
1 A France 25 15,625	=
2 B US 0 0	=
3 C US 57 57,125	=
4 D US 12 1,500	=
Total Gross Sales 153,250	=
Less Deductions:	=
Freight 3,000	=
Returns 7,000	=
Total {_Net_Sales} 143,250	=
Royalty Rate 8%	=
Royalty Due 11,460	=
Less Creditable Payments 10,000	=
Net Royalty Due 1,460	=
APPENDIX G – ROYALTY PAYMENT OPTIONS	=
The License Number MUST appear on payments, reports and correspondence.	=
Credit and Debit Card Payments	=
Credit and debit card payments can be submitted for amounts up to $29,999. Submit your payment through the U.S. Treasury web site located at: https://www.pay.gov/public/form/start/28680443.	=
Automated Clearing House (ACH) for payments through U.S. banks only	=
{_IC} encourages its licensees to submit electronic funds transfer payments through the Automated Clearing House (ACH). Submit your ACH payment through the U.S. Treasury web site located at: https://www.pay.gov/public/form/start/28680443. Please note that {_IC} “only” accepts ACH payments through this U.S. Treasury web site.	=
Electronic Funds Wire Transfers	=
The following account information is provided for wire payments. In order to process payment via Electronic Funds Wire Transfer sender MUST supply the following information within the transmission:	=
Drawn on a U.S. bank account via FEDWIRE should be sent directly to the following account:	=
Beneficiary Account: Federal Reserve Bank of New York or TREAS NYC	=
Bank: Federal Reserve Bank of New York	=
ABA# 021030004	=
Account Number: 75080031	=
Bank Address: 33 Liberty Street, New York, NY 10045	=
Payment Details: License Number (L-XXX-XXXX)	=
Name of {_Licensee}	=
Drawn on a foreign bank account should be sent directly to the following account. Payment must be sent in U.S. Dollars (USD) using the following instructions:	=
Beneficiary Account: Federal Reserve Bank of New York/ITS or FRBNY/ITS	=
Bank: Citibank N.A. (New York)	=
SWIFT Code: CITIUS33	=
Account Number: 36838868	=
Bank Address: 388 Greenwich Street, New York, NY 10013	=
Payment Details (Line 70): NIH 75080031	=
License Number (L-XXX-XXXX)	=
Name of {_Licensee}	=
Detail of Charges (line 71a): Charge Our	=
	=
Checks	=
All checks should be made payable to “NIH Patent Licensing”	=
Checks drawn on a U.S. bank account and sent by US Postal Service should be sent directly to the following address:	=
National Institutes of Health	=
P.O. Box 979071	=
St. Louis, MO 63197-9000	=
Checks drawn on a U.S. bank account and sent by overnight or courier should be sent to the following address:	=
US Bank	=
Government Lockbox SL-MO-C2GL	=
1005 Convention Plaza	=
St. Louis, MO 63101	=
Phone: 314-418-4087	=
Checks drawn on a foreign bank account should be sent directly to the following address:	=
National Institutes of Health	=
Office of Technology Transfer	=
License Compliance and Administration	=
Royalty Administration	=
6011 Executive Boulevard	=
Suite 325, MSC 7660	=
Rockville, Maryland 20852	=