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LICENSE AGREEMENT For profit

 

This Intellectual Property (IP) License Agreement (hereinafter “Agreement”) is made and entered into on this{date}( Effective date),

 

BETWEEN 

 

Indian Institute of Science, a trust registered under the Charitable Endowments Act of 1890 and a centrally funded Technical institution, an Institute of Eminence, and an autonomous body funded by Ministry of Human Resource Development, Government of India, situated at Sir C.V. Raman Road, Bangalore – 560 012, Karnataka, represented by its Registrar/Duly Authorized Signatory (hereinafter referred to as “IISc”), which expression shall wherever the context requires or admits, unless repugnant thereto, mean and include its administrators, executors, successors-in-interest and permitted assigns of the FIRST PART;

 

AND

 

{companyDetails[1]}a company incorporated under the Companies Act, 1956 having its registered office at {companyDetails[2]}(hereinafter referred to as “Licensee”), which expression shall wherever the context requires or admits, unless repugnant thereto, mean and include its administrators, executors, successors-in-interest and permitted assigns of the OTHER PART;

WHEREAS,

A.    IISc has designed and built an oxygen concentrator and holds certain proprietary and IP rights, as specified hereinafter, related thereto and desires to have it perfected and practiced so that the benefits are readily available for widest public utilization in the shortest time possible.

B.    Licensee represents that it has experience in developing, manufacturing, and marketing products in the biomedical field and has the required wherewithal including financial capabilities, facilities, infrastructure, personnel, finance and expertise to manufacture the products using the information covered by the IP rights and desires to bring and is willing to expend reasonable efforts to bring the products to the point of practical application at an early date. 

C.    IISc is willing to grant, subject to the terms and conditions contained herein and in exchange for the Licensee’s commitment to rapidly make and broadly distribute products and services to address COVID-19 related issues during the pandemic, a non-exclusive license under such IP Rights. 

 

NOW, THEREFORE, in consideration of the premises above, including the above-cited authority and the mutual promises and obligations hereinafter set forth, IISc and Licensee, do hereby agree as set forth below:  

1.    DEFINITIONS 

1.1    “Agreement” means this License Agreement to be executed between the Parties hereto and includes any amendments, annexure hereto made in accordance with the provisions hereof.

1.2    "Affiliate" shall mean any legal entity (including, but not limited to, a company a corporation, registered partnership, or limited liability partnership) that is controlled by a Party. For the purposes of this definition, the term "control" means (i) beneficial ownership of at least fifty percent (51%) of the voting securities of a corporation or other business organization with voting securities or (ii) a fifty percent (51%) or greater interest in the net assets or profits of a partnership or other business organization without voting securities or (iii) the power and ability to control the majority of the composition of the board of directors of such corporation or business organization or the power to direct the management and policies of such partnership or business organization, directly or indirectly, by contract or otherwise.

1.3    “Cost-Based Price” means, in respect of each Licensed Product, a price not exceeding that which fairly reflects the direct cost of manufacture and supply of the Licensed Product.

 

1.4     “Field of Use” means the use of IP Rights for generation of oxygen for medical application. 

1.5    “Intellectual Property" or “IP” shall mean any and all inventions, materials, Know-how, trade secrets, patent rights, IC layout designs, algorithms, technology, trademarks, copyrights, formulae, processes, ideas or other discoveries conceived or reduced to practice, whether patentable or not and whether as relating to the IP Rights including the property which is being granted to the Licensee under this Agreement by IISc. 

1.6    "Know-how" means all tangible and intangible (i) processes; technology, Technical Information, process, concept details or any other proprietary rights including, but not limited to, trade secrets, formulas, research data, software, algorithms, specifications or know how (ii) products, prototypes, components, that is developed by IISc on or before the Effective Date. However, Know- how shall not include any rights under patent or pending non-provisional patent application or protected under integrated circuit(IC) layout design ; nor shall Know-how include any information or know how developed by IISc after the Effective Date. 

1.7    "IP Rights" shall mean and include all rights and interest arising in and out of the Indian patent application bearing number __________and Know-how relating to the invention titled _________________ and as described in Annexure I which will be provided by IISc to the Licensee under this Agreement upon execution by the Parties.

1.8    “Licensed Process(es)” means any process or method that is covered in whole or in part contained in the IP Rights, or any process or method that is covered in whole or in part within Know- how.

1.9    “Licensed Product(s)” means oxygen concentrator manufactured/produced/made using IP Rights or any product, in whole or in part, that incorporates, implement, integrate, use, emulate and /or embody, produced, assembled and/or commercialized using IISc’s IP Rights licensed under this Agreement or any services provided utilizing IP Rights or a product in whole or in part  built using IP Rights (a) for which, absent this Agreement, the making, using, distributing, manufacturing, importing or selling, would infringe, induce infringement or contribute to infringement of IISc IP Rights in the country in which any such product or product part is made, used, imported, offered for sale or sold; (b) that is manufactured using a Licensed Process or is employed to practice a Licensed Process; or (c) that is otherwise covered by or included in licensed IP Rights. 

1.10    New Improvement IP Rights" means a) replacements, improvements, enhancements or modifications to the IP Rights, including but not limited to extensions, divisions, continuations, continued prosecution applications, continuations-in-part and foreign counterparts of any of the foregoing, and b) inventions, discoveries, development, or testing stage, and technology to be researched, generated, developed or tested by IISc or Licensee individually or jointly, subsequent to the date of this Agreement.

1.11    “Net Sales” means the amount billed or invoiced on sales, rental, lease, or use, however characterized, by Licensee for Licensed Products and Licensed Processes, less (a) discounts allowed in amounts customary in the trade; (b) service tax and other tariffs, duties included in bills or invoices with reference to particular sales and actually paid by Licensee to a governmental body (c) outbound transportation prepaid or allowed; or (d) amounts refunded or credited on returns. Net Sales also includes the fair market value of any non-cash consideration received by Licensee for the sale, or transfer of Licensed Product. 

1.12    “Reporting Period”  shall begin on the first day of each calendar quarter and end on the last day of such calendar quarter.

1.13    “Territory” means India.

1.14    Technical Information means the technical information and relevant documentation relating to the design, the bill of materials, software, topography design, manufacturing details described in Annexure 1 for the Licensed Product. 

2.    GRANT OF RIGHTS

2.1    Subject to the Licensee’s performance and compliance of the obligations set forth herein, , IISc hereby grants to Licensee, a non- transferable, revocable, non-sublicensable , non-exclusive license under the IP Rights for the Term in the Territory to make and have made, to use and have used, offer for sale, sell, import and export,  manufacture and distribute the Licensed Products in the Field of Use in accordance with the provisions of this Agreement, in all case strictly for the purposes of designing, manufacturing process, certifying, manufacturing and commercializing the Licensed Products and subject to the confidentiality obligations in Section 5. Any use of the IP Rights including Know-how, Technical Information, or any documentation provided by IISc for any purposes other than the manufacture and commercialization of Licensed Product is excluded under this license.

2.2    Sublicensing: 

a.    This License does not extend to sublicensing of IP Rights until an addendum to this Agreement is executed. Any such sublicense shall be subject to terms and conditions of the addendum, which may specify additional compensation (Royalty or License Fee) to be paid by the Licensee to IISc.

b.    Licensee may use third parties only to manufacture, develop, test or market any Licensed Product with prior intimation to IISc, provided that such third parties are bound by a confidentiality agreement with terms no less restrictive than those contained in this Agreement and in the manner acceptable to IISc.

2.3    No Other Rights Granted: The Parties agree that neither this Agreement, nor any, action of the Parties related hereto, may be interpreted as conferring by implication, or otherwise, any license or rights under any intellectual property rights of IISc other than as expressly and specifically set forth in this Agreement, regardless of whether such other intellectual property rights are dominant or subordinate to the IP Rights.

2.4    Ownership: Licensee acknowledges that IISc is the sole and exclusive owner of the IP Rights in India and in countries outside India and this Agreement shall not grant the Licensee with any right, title, or interest in the IP Rights other than the right to use the same in accordance with this Agreement, whether registered or not and Licensee shall do nothing inconsistent with such ownership of IISc. Licensee further agrees that it will not claim ownership rights to the said IP Rights, or any derivative, compilation, sequel or series, or related IPR owned by or used by IISc.

2.5    Except as expressly permitted by this Agreement and save to the extent and in the circumstances expressly required to be permitted by law, the Licensee is not permitted to rent, lease, sell, offer to sell or loan the Licensed Product or the IP Rights including Know-how or the Technical Information,  or use them for the benefit of any third party. 

3.    CONSIDERATION/LICENSE FEE

a.    In view of the public health emergency and for the benefit of society IISc shall not claim any upfront License Fee payment from Licensee. However, in lieu of the License fee, the Licensee shall provide three units of fully functioning Licensed Product at no cost to IISc as soon as the first batch of the Licensed Product is ready for sale/distribution.

b.    Licensee shall pay to IISc during the Term of this Agreement a non- refundable royalty of 1% on Net Sales (“Royalty”). Royalties shall be payable for each Reporting Period and shall be due to IISc within thirty (30) days of the end of each Reporting Period.

c.    Applicable Taxes: Licensee agrees and acknowledges that the above amounts are exclusive of any imposed tax, duty, etc. In the event any taxes, duties, fees, and other surcharge become applicable during the term of this Agreement to License Fee/Royalty payments made by Licensee to IISc, regardless of whether such payments are due to agencies in India or outside India, the Licensee agrees to bear such levies.

d.    Payments: All sums payable by Licensee hereunder shall be made through Banker's Cheques or Demand Drafts drawn in the name of 

The Registrar, Indian Institute of Science, Bangalore-560012, and couriered to:

The Chairman

Intellectual Property and Technology Licensing office ( IPTeL) 

Indian Institute of Science 

Bangalore- 560012, Karnataka, India

Payment may also be effected through wire transfer (i.e., electronically), after making suitable arrangements in consultation with IISc. Licensee agrees to bear all applicable bank charges for all sums payable to IISc

 

4.    NEW INVENTIONS, IMPROVEMENTS, ETC 

4.1    New Improvement IP Rights: Subject to the provisions identified below, the License granted herein does not extend to New Improvement IP Rights created by IISc unless an addendum to this Agreement or a separate Licensing Agreement is executed by the Parties, under which New Improvement IP Rights are included in the License including the consideration (Royalty) that may have to be paid by the Licensee to IISc for grant of such rights. 

4.2    All New Improvement IP Rights created by Licensee using the Licensed IP Rights shall be jointly and equally owned by IISc and Licensee. The Inventors associated with IISc under different capacities shall keep IISc informed of any such developments. The details of the New Improvement IP Rights shall be subject to a separate license agreement between the Parties.

4.3    Both Parties understand and agree that any modifications, improvements made to the IP Rights by the Licensee, whether jointly with IISc or through their own endeavor, does not confer or transfer any right of ownership of the IP Rights to Licensee.

5.    CONFIDENTIALITY

5.1    “Confidential Information” means (a) any proprietary or confidential information or material in tangible form disclosed in accordance with this Agreement and marked as “Confidential”/“Proprietary” or the like at the time it is delivered to Licensee, (b) Proprietary or Confidential Information disclosed orally hereunder which is identified as confidential or proprietary while disclosing, or (c) IP Rights, Technical Information and Know-how of IISc regardless of whether or not so marked or identified.  

5.2    Licensee hereby agrees to keep any Confidential Information transmitted to it or obtained by it from IISc strictly confidential and not to disclose the same or any part thereof to any other party or person, save to those of its employees who require to know the same, strictly on need-to-know basis. Licensee agrees to use all reasonable endeavors to ensure that any employees to whom such disclosure is made will keep such information confidential and will not use the same for their own purposes or for the purposes of any third party, including by entering into reciprocal confidentiality and non-disclosure agreements with such employees. Licensee shall take all precautions to preserve the confidentiality of IISc’s Confidential Information and shall require that Licensee's employees and any other persons with whom Licensee shares Confidential Information similarly preserve this information. 

5.3    Licensee assumes responsibility for any breach of this Clause 5.2 and 5.3 by its employees or any other person with whom Licensee shares Confidential Information. The Licensee further hereby agrees to indemnify IISc on any loss or damages suffered by IISc resulting directly or indirectly from breach of this Clause 5.2 and 5.3 by Licensee representatives, agents or other licensees or any other persons with whom Licensee shares Confidential Information. Without prejudice, the Licensee further agrees that it will not use the Confidential Information, or any part thereof supplied by IISc for any purposes save for the manufacture of the Licensed Product or as specifically permitted by IISc in writing. The provisions of this clause shall survive termination of this Agreement for any reason or its expiry.

5.4    Permitted Disclosures: Notwithstanding the foregoing, Licensee may disclose:

a.    IISc’s Confidential Information to the extent as required by the applicable laws or by an order of a Court of competent Jurisdiction, administrative agency or pursuant to governmental proceedings, regulatory approvals, or any other Government body, rules or regulations. Provided that, however to the extent possible, the Licensee gives prior written notice of such disclosure to IISc and reasonably cooperates and assists IISc in its efforts to oppose or mitigate such disclosure or to limit such disclosure to only those third parties on a need-to-know basis; and 

b.    Licensee may disclose IISc’s Confidential Information in confidence to third parties to the extent which is reasonably necessary to enable the Licensee to successfully commercialize the Licensed Product, with the prior written consent of the IISc, subject to the terms of this Agreement and subject to such third party being bound by confidentiality and non-disclosure agreements.

5.5    Licensee Confidential Information. All copies, if any, of financial information, pricing, marketing plans, business plans and other confidential and/or proprietary information of Licensee disclosed to IISc in the course of negotiating the transaction contemplated by this Agreement(“Licensee Confidential Information”), will be held in confidence and not used or disclosed by IISc or any of its employees, during the Term of this Agreement and will be promptly destroyed by IISc or returned to Licensee, upon Licensee’s written request to IISc. It is agreed that Licensee’s Confidential Information will not include information that: (a) is proven to have been known to IISc prior to receipt of such information from Licensee; (b) is disclosed by a third party having the legal right to disclose such information and who owes no obligation of confidence to Licensee; (c) is now, or later becomes part of the general public knowledge or literature, other than as a result of a breach of this Agreement by IISc; or (d) is independently developed by IISc without the use of any Licensee’s Confidential Information.

5.6    For the purpose of this Agreement, “Confidential Information” shall not include information that can be established by the Licensee by competent proof that such information:

a.    was already known to the Licensee, other than under an obligation of confidentiality, at the time of disclosure.

b.    was generally available to the public or otherwise part of the public domain at the time of its disclosure to the Licensee.

c.    became generally available to the or otherwise part of the public domain after its disclosure and other than through any act or omission of the receiving party in breach of this Agreement.

d.    was subsequently lawfully disclosed by the Licensee by a person other than a party hereto; or

e.    was lawfully developed independently by the receiving party without misappropriating Confidential Information from a third party.

6.    DUE DILIGENCE AND REPORTING

6.1    Commercialization: Licensee shall use its best efforts to bring one or more products to market within the Field of Use and throughout the Territory as soon as practicable and to develop such markets through a thorough, vigorous, and diligent program for the commercial exploitation of the Licensed Product.

6.2    Technical Assistance: IISc agrees in good faith to assist the Licensee as provided in Annexure- 1

6.3    Reporting: Licensee shall issue to IISc a detailed written report on its progress in introducing commercial Licensed Product and working of the product for each Reporting Period from the Effective Date. Such report shall be considered confidential information of Licensee, governed by Section 5.5 of this Agreement. From the Effective Date, representatives of IISc and the Licensee shall hold discussions every month for the first six (6) months to track the progress of the Licensee toward commercialization. In addition the Licensee shall provide a royalty report setting forth for each quarter at least the following information: (i) the number of Licensed Product sold by Licensee and its Affiliates in each Territory; (ii) total billings for such Licensed Product; (iv) deductions applicable to determine the Net Sales thereof; and (v) the amount of royalty due thereon, and the various calculations used to arrive at those amounts, including the quantity, description or, if no royalties are due to IISc for any reporting period, the statement that no royalties are due. Such report shall be certified as correct by an authorised officer of Licensee and shall include a detailed listing of all deductions from royalties.

6.4     Record-keeping and Audits: The Licensee shall keep complete and accurate records of the production, manufacture, and sales of the Licensed Product and accounting records relating to commercialization and the royalties or other revenues that the Licensee received from the Licensed Product during each Reporting Period and provide a provisional statement of the aggregate net revenue and total quantity and value of Licensed Product sold by the Licensee in such Reporting Period and the amount of royalties thus due to IISc. Each such provisional statement shall be adjusted to the actual figure on the submission of the next provisional quarterly statement and the adjusted statement shall be certified as true and correct by a duly authorized officer of the Licensee. The Licensee shall also provide IISc with certification of the accounts statement by Statutory Auditor of the Licensee or by a Chartered Accountant identified by IISc, stating that Generally Accepted Accounting Practices (GAAP) (or any similarly rigorous financial accounting standard used in the respective part of the Territory) has been followed by the Licensee in maintaining its books and records. Royalties payable to IISc shall not be deducted due to bad debts of the Licensee.  IISc (whether itself or third-party professionals) shall also be entitled to audit the books of account of the Licensee and shall be entitled to deploy professionals/personnel to conduct any such audit, without any prior intimation to the Licensee.  Licensee shall be bound to fully cooperate and produce all documents and records for the purpose of the audit and failure shall entail suspension of the License granted hereunder. 

 

   

7.    TRADEMARKS AND BRANDING

       The licensee shall use the IISc trademarks on or in association with the Licensed Products on any packaging, promotional and advertising material associated therewith, only upon seeking a written permission from IISc.

8.    LICENSEE INFRINGEMENT AND IP RIGHTS ENFORCEMENT

       Licensee will promptly notify IISc of each infringement or possible infringement of the IP Rights, as well as any facts which may affect the validity, scope or enforceability of the IP Rights of which Licensee becomes aware.

9.     WARRANTIES

9.1    IISc offers no warranties other than those specified in this Agreement.

9.2    Licensee acknowledges to IISc that the IP Rights granted herein is on “as is, where is” and “as available” basis and experimental in nature, licensee will have the opportunity to conduct prior to executing the Agreement such evaluation and investigations of the IP Rights and the prototype developed by IISc using the IP Rights as licensee deems necessary or desirable to satisfy itself as to the required license thereof. Licensee further warrants and represents to IISc that the Licensee will rely solely on its own review and other inspections and investigations in this transaction and not upon the information provided by or on behalf of IISc or its agents, employees or representatives with respect thereto. Licensee hereby assumes the risk that adverse matters including, but not limited to, latent or patent defects, adverse physical or other adverse matters, may not have been revealed by Licensee’s review, evaluation and investigations. Licensee assumes all risk in its use, including IP infringement, suitability for a particular purpose, etc. IISc expressly disclaims all express, implied or statutory warranties or conditions, as to any matter whatsoever, including without limitation, warranties or conditions of merchantability, merchantable quality or fitness for a particular purpose, originality or accuracy of the IP Rights, whether tangible or intangible or any warranty of title or non-infringement or that the IP Rights or Licensed Product (or any portion thereof) is correct, useful, defect-free or free of errors of any subject matter provided under this Agreement. In no event shall IISc be liable for any claim, damages, or other liability, whether in an action of contract, tort or otherwise, arising from, out of or in connection with the Licensed Product, it’s IP Rights or the use or other dealings in the Licensed Product.

9.3    Licensee is solely responsible for determining the appropriateness of using or redistributing the Licensed Product and assume any risks associated with Licensee’s exercise of permissions under this Agreement

9.4    IISc does not represent that it shall commence legal actions against third parties infringing the IP Rights.

9.5    IISc offers no warranty, express or implied, regarding the patentability of the technology covered under the IP Rights

9.6    Licensee shall defend, indemnify, and hold IISc, its employees, students, fellows, agents, and consultants harmless from and against all liability, demands, damages, expenses and losses, including but not limited to death, personal injury, illness or property damage in connection with or arising out of:
a.     the use by or on behalf of Licensee its directors, employees or third parties of any IP Rights; or

b.    the design or use of any Licensed Products or Licensed Processes by Licensee or other products or processes developed in connection with or arising out of the IP Rights.

9.7    Licensee’s obligations and warranties

a.    The Licensee shall, at its own expense, be responsible for obtaining and maintaining all regulatory approvals for Licensed Product in all relevant territories where the Licensed Product/Process is developed, manufactured and/or commercialized.

b.    Compliance with Law.  Licensee for themselves and on behalf of their contractors, subcontractors or manufacturers shall comply, at all times, with applicable and documentable local, state, central, foreign and international laws, ordinances, and regulations, including, but not limited to, those pertaining to the manufacturing, distribution, packaging, marketing, advertising, promotion and sale of the Licensed Product/Process. It shall ensure that it fulfils all procedural, legal, regulatory and operational requirements for the commercial utilization of the IP Rights/Licensed Product. Licensee shall strictly comply with the laws, rules and regulations of the Drugs and Cosmetic Act,1940 as well as all applicable laws for manufacturing and selling the Licensed Products or any comparable laws, rules and regulations of other nations.  If, at any time, IISc becomes aware of the Licensee violating any law, ordinance, or regulation, IISc will notify Licensee, of the alleged violation as per Section 10. 2.

c.    The Licensee agrees to commercialise the Licensed Product in the Territory only and selling/distributing the Licensed Product shall be the responsibility of the Licensee.

d.    Release: In additional consideration for the license granted by IISc set forth herein, and by acceptance of this license for any portion of the Term, Licensee, on behalf of itself, its predecessors, successors, Affiliates, assigns, and transferees, hereby: (a) accepts and assumes all risks and liabilities with respect to, and (b) forever agrees to release, discharge, indemnify, hold harmless, and defend IISc, together with its predecessors, successors, Affiliates, assigns, and transferees, from all liabilities of any nature whatsoever, known or unknown, which Licensee has, or may have had, against IISc , for any acts or omissions whatsoever related to this Agreement, the IP Rights, and any products, methods, and processes described in or related to the IP Rights.

e.    Covenant Not to Sue: Licensee, on behalf of itself, its predecessors, successors, Affiliates, assigns, and transferees, hereby irrevocably covenants that neither it nor any of its related entities granting a release in Section 9.7(d) will participate or cooperate in the commencement, maintenance, or prosecution of any action or proceeding of any kind or nature whatsoever against IISc, together with its predecessors, successors, Affiliates, assigns, and transferees, related to this Agreement, the IP Rights, and the Licensed Product, methods, and processes described in or related to the IP Rights.
f.     The Licensee acknowledges the absolute ownership of the IP Rights by IISc and shall not dispute the legality, validity or enforceability of the license granted.

g.    Licensee shall not claim the IP Rights in his/its own name on the plea of having affected any improvements/modifications upon the IP Rights or upon the Licensed Product or on any matter relating to the Technical Information disclosed to it by IISc under this agreement.. All Licensed Product manufactured by the Licensee shall be deemed to have been manufactured under the license hereby granted.

h.    Licensee shall ensure that, in the event of any quality incidents including any medical adverse events, claims or complaints or if any product recall or field corrective action is required as a result of quality or safety issues relating to Licensed Product, the Licensee shall be solely responsible for and take all necessary action to ensure that any Licensed Product that are defective or unsafe are removed from the market and collected from customers who purchased such Licensed Products and that all actions are taken to investigate the root cause of such incidents and to ensure that they do not recur .

i.     The Licensee shall not make any misleading statements or representations in relation to the Licensed Products when marketing and selling Licensed Products other than what is provided under this Agreement. 

j.     The Licensee shall permit the personnel of IISc or its representative or duly authorized officials, at all convenient time to enter into and upon the premises of Licensee where Licensed Product under this license, are [manufactured/stocked/sold/ used] for the purpose of inspecting the same and the manufacture thereof, generally to ascertain that the provision of this license are being complied with and quality of the Licensed Product maintained and fulfilment of other terms and conditions. 

k.    The Licensee shall not oppose or direct or cause any persons to oppose any application seeking intellectual property rights relating to the IP Rights filed by IISc. 

l.    The Licensee hereby agrees to have the sole responsibility for the quality of the Licensed Product developed/manufactured/produced from the IP Rights licensed hereunder and shall use its best efforts to maintain high quality standards of the Licensed Product(s).

m.    The Licensee shall obtain all such insurance policies from reputable insurers as required under the law and shall maintain such insurance for as long as it makes, sells, supplies or supports the Licensed Product(s). 

n.    Licensee shall not sell or offer to sell the Licensed Product at an exorbitant or unreasonably high price. 

10.    TERM AND TERMINATION

10.1    Term: This Agreement shall be effective till 31st December 2022 (“Termination Date”) from the Effective Date of this Agreement but may be renewed at the discretion of IISc for a further term upon receiving a request in writing from the Licensee at least four months prior to the Termination Date. In the event IISc is convinced with the commercialization progress and subject to the availability of possible licensing options and additional royalty terms, the Parties shall either extend this Agreement through an amendment or enter into a new agreement.

 

10.2    Either Party may terminate this Agreement without prejudice to any rights of action accrued to either Party at the date of termination or to any other express obligations in this Agreement of a continuing nature, if the other Party has committed any breach of any of the terms of this Agreement on its part and fails to remedy such breach within thirty (30) business days after written notice shall have been given by the Party not in breach to the other specifying the nature of the breach. 

10.3    This Agreement may be terminated at any time upon the mutual agreement of the  Parties.

10.4    Failure to Commercialise/manufacture/distribute: If the Licensee fails to commercialise/manufacture/distribute the Licensed Product within six months from the Effective date, IISc at its discretion shall terminate this Agreement. 

10.5    Return of Information: Upon Termination of this Agreement, the Licensee shall not be entitled to utilize the IP Rights/Technical Information in any manner whatsoever and immediately Licensee shall return all data, software, technical writing, specifications, drawings, Know-how and the like provided and made available to it by IISc, relating to the IP Rights, under the terms of this Agreement, immediately on the date of termination. It is further undertaken by the Licensee that all improvements made by it to the IP Rights up to date of termination, including data, technical writing, specifications etc., shall be provided promptly to IISc, as and when these are achieved and the Licensee shall not claim any or all of the above in any manner whatsoever. IISc shall return all the Confidential Information received from the Licensee, immediately upon termination of this Agreement.

11.    GENERAL PROVISIONS

11.1    Applicable law: This Agreement shall be construed, interpreted, and governed by the laws of India. The courts of Bangalore City alone shall have jurisdiction for any injunctive or other equitable relief to prevent or curtail any breach of this Agreement.

11.2    Arbitration:  a) If any dispute arises in connection with this MoA and any individual Project, a senior representative of the Parties shall attempt, in fair dealing and in good faith, to settle such dispute in the best interests of Parties. If the Parties are not able to reach an amicable settlement, either Party may initiate an arbitration proceeding; b) Any dispute or difference or claim arising out of or in relation to this transaction including construction, validity performance or breach thereof shall, shall be referred to and finally resolved by arbitrator under Arbitration and Conciliation Act of 1996 and any subsequent amendments thereof for time being in force. The Arbitration shall be presided by a sole arbitrator mutually appointed by the Parties. The seat of arbitration shall be Bengaluru. The language to be used in the arbitration proceedings shall be English; c) Each Party may seek provisional measures from Courts at Bengaluru, including provisional injunctive relief, provided that the final resolution of the dispute is through the arbitral tribunal appointed in accordance with this clause 11.2

11.3    Notices: All notices pertaining to or required by this Agreement shall be in writing, shall be signed by an authorized representative and shall be delivered to the addresses indicated on the signature page for each Party with a copy to address mentioned below,  in its original form or scanned copy by e-mail. For the avoidance of doubt other electronic communication shall not qualify as a written notice or document.  
If to IISc, to: 

                          With a copy to

                          The Chairperson

                          Intellectual Property and Technology Licensing office (IPTeL)

                          Bangalore-560012, INDIA

                          Phone No.: +91-80-22932037/2038

                          Fax No.: 91-80-2360-0265

Or to such other person or address as IISc shall furnish to Licensee in writing.

           If to Licensee, with a copy to: 

            Any Party to this Agreement may change its address for the purposes of this Agreement by giving notice thereof in accordance with this Section.

11.4    Binding Effect. This Agreement shall be binding upon and inure to the benefit of the Parties and their respective permitted successors and assigns.

11.5    Entire Agreement: This Agreement, including all the Annexures, sets forth the complete agreement of the Parties concerning the subject matter hereof. No claimed oral agreement in respect thereto shall be considered as any part hereof. No amendment or change in any of the terms hereof subsequent to the execution hereof shall have any force or effect unless agreed to in writing by duly authorized representatives of the Parties.

11.6    Waiver: No waiver of any provision of this Agreement shall be effective unless executed in writing. No waiver shall be deemed to be or shall constitute, a waiver of a breach of any other provision of this Agreement, whether or not similar, nor shall such waiver constitute a continuing waiver of such breach unless otherwise expressly provided in such waiver.

11.7    Severability: Each provision contained in this Agreement is declared to constitute a separate and distinct covenant and provision and to be severable from all other separate, distinct covenants and provisions. It is agreed that should any article, condition or term or any part thereof, contained in this Agreement be unenforceable or prohibited by law or by any present or future legislation then:

a.    such article, condition, term, or part thereof, shall be amended and is hereby amended, so as to be in compliance therewith the legislation or law; but

b.    if such article, condition or term, or part thereof, cannot be amended so as to be in compliance with the legislation or law, then such clause, condition, term or part thereof shall be severed from this Agreement and all the rest of the articles, terms and conditions or parts thereof contained in this Agreement shall remain unimpaired.

11.8    Assignment: IISc may freely assign or transfer this Agreement without Licensee’s consent. Licensee may not assign or transfer this Agreement without the express written consent of IISc. Any purported assignment or other transfer without such consent shall be void and unenforceable.

11.9    Export Regulations: This Agreement is subject in all respects to the Laws and regulations of the Republic of India. The Licensee or its Affiliates will not in any form export, re-export, resell, ship, divert, or cause to be exported, re-exported, resold, shipped, or diverted, directly or indirectly, any product or technical data or software of IISc, or the direct product of such technical data or software, to any country for which the Indian Government or its agencies thereof requires an export license or other governmental approval without first obtaining such license or approval.

11.10    Force Majeure: Neither Party shall lose any rights hereunder or be liable to the other Party for damages or losses (except for payment obligations) on account of failure of performance by the defaulting Party if the failure is occasioned by war, strike, fire, Act of God, earthquake, flood, lockout, embargo, governmental acts or orders or restrictions, failure of suppliers, or any other reason where failure to perform is beyond the reasonable control and not caused by the negligence or intentional conduct or misconduct of the non-performing Party and such Party has exerted all reasonable efforts to avoid or remedy such force majeure; provided, however, that in no event shall a Party be required to settle any labour dispute or disturbance.

11.11    Counterparts/Facsimiles: This Agreement may be executed in one or more counterparts, all of which taken together shall be deemed one original.

IN WITNESS WHEREOF, the Parties have caused this Agreement to be signed by their duly authorized representatives on the date and the year first hereinabove written.

 

Signatures
For 

Indian Institute of Science

Name: 

Designation: Registrar

Date:

 

 

For 

{companyDetails[1]}

Name: {aboutMe[1]}

Designation: {aboutMe[6]}

Date:

 

Witness1

Signature:…………………..

Name:      

Address: 

 

 

Witness 2

Signature:…………………..

Name:

Address:

 

 

 

ANNEXURE - I

 

IP Rights Title:  A method and apparatus to concentrate Oxygen from ambient air

Technical Information

Bill of materials (component technical specifications)
Schematic drawings
System Block Diagram
Electronics Circuit Diagram
Firmware in .out or .hex files optimized to work on TI MSP430i2041
System: Performance and reliability data
Webinar/Videos illustrating the information shared above
 

 

IISc shall within (3 working days) of the signing of the agreement, hand over to the Licensee, Technical Information and documents related to the technology as listed above.

 

ADDITIONAL SUPPORT:

At the request of the Licensee, IISc may extend further product development support through a third party identified by IISc. The Licensee may choose to engage with such third parties to support them in absorbing the technology and doing further development. The financial and other terms of the engagement shall be independently arrived at by the Licensee and the third party concerned.

LICENSE AGREEMENT Not-For-Profit

 

This Intellectual Property (IP) License Agreement (hereinafter “Agreement”) is made and entered into on this {date} ( Effective date),

BETWEEN 

Indian Institute of Science, a trust registered under the Charitable Endowments Act of 1890 and a centrally funded Technical institution, an Institute of Eminence and an autonomous body funded by Ministry of Human Resource Development, Government of India, situated at Sir C.V. Raman Road, Bangalore – 560 012, Karnataka, represented by its Registrar/Duly Authorized Signatory (hereinafter referred to as “IISc”), which expression shall wherever the context requires or admits, unless repugnant thereto, mean and include its administrators, executors, successors-in-interest and permitted assigns of the FIRST PART;

AND

{companyDetails[1]}a company incorporated under the Companies Act, 1956 having its registered office at {companyDetails[2]}(hereinafter referred to as “Licensee”), which expression shall wherever the context requires or admits, unless repugnant thereto, mean and include its administrators, executors, successors-in-interest and permitted assigns of the OTHER PART;

WHEREAS,

A.    IISc has designed and built an oxygen concentrator and holds certain proprietary and IP rights, as specified hereinafter, related thereto and desires to have it perfected and practiced so that the benefits are readily available for widest public utilization in the shortest time possible.

B.    Licensee represents that it has experience in developing, manufacturing, and marketing products in the biomedical field and has the required wherewithal including financial capabilities, facilities, infrastructure, personnel, finance and expertise to manufacture the products using the information covered by the IP rights and desires to bring and is willing to expend reasonable efforts to bring the products to the point of practical application at an early date. 

C.    IISc is willing to grant, subject to the terms and conditions contained herein and in exchange for the Licensee’s commitment to rapidly make and broadly distribute products and services to address COVID-19 related issues during the pandemic, a non-exclusive license under such IP Rights. 

NOW THEREFORE, in consideration of the premises above, including the above-cited authority and the mutual promises and obligations hereinafter set forth, IISc and Licensee, do hereby agree as set forth below: 

1. DEFINITIONS 

1.1    “Agreement” means this License Agreement to be executed between the Parties hereto and includes any amendments, annexure hereto made in accordance with the provisions hereof.

1.2    "Affiliate" shall mean any legal entity (including, but not limited to, a company a corporation, registered partnership, or limited liability partnership) that is controlled by a Party. For the purposes of this definition, the term "control" means (i) beneficial ownership of at least fifty percent (51%) of the voting securities of a corporation or other business organization with voting securities or (ii) a fifty percent (51%) or greater interest in the net assets or profits of a partnership or other business organization without voting securities or (iii) the power and ability to control the majority of the composition of the board of directors of such corporation or business organization or the power to direct the management and policies of such partnership or business organization, directly or indirectly, by contract or otherwise.

1.3    “Cost-Based Price” means, in respect of each Licensed Product, a price not exceeding that which fairly reflects the direct cost of manufacture and supply of the Licensed Product.

1.4    “Field of Use” means the use of IP Rights for generation of oxygen for medical application. 

1.5    “Intellectual Property" or “IP” shall mean any and all inventions, materials, Know-how, trade secrets, patent rights, IC layout designs, algorithms, technology, trademarks, copyrights, formulae, processes, ideas or other discoveries conceived or reduced to practice, whether patentable or not and whether as relating to the IP Rights including the property which is being granted to the Licensee under this Agreement by IISc. 

1.6    "Know-how" means all tangible and intangible (i) processes; technology, Technical Information, process, concept details or any other proprietary rights including, but not limited to, trade secrets, formulas, research data, software, algorithms, specifications or know how (ii) products, prototypes, components, that is developed by IISc on or before the Effective Date. However, Know- how shall not include any rights under patent or pending non-provisional patent application or protected under integrated circuit(IC) layout design ; nor shall Know-how include any information or know how developed by IISc after the Effective Date. 

1.7    "IP Rights" shall mean and include all rights and interest arising in and out of the Indian patent application bearing number __________and Know-how relating to the invention titled _________________ and as described in Annexure I which will be provided by IISc to the Licensee under this Agreement upon execution by the Parties.

1.8    “Licensed Process(es)” means any process or method that is covered in whole or in part contained in the IP Rights, or any process or method that is covered in whole or in part within Know- how.

1.9    “Licensed Product(s)” means oxygen concentrator manufactured/produced/made using IP Rights or any product, in whole or in part, that incorporates, implement, integrate, use, emulate and /or embody, produced, assembled and/or commercialized using IISc’s IP Rights licensed under this Agreement or any services provided utilizing IP Rights or a product in whole or in part  built using IP Rights (a) for which, absent this Agreement, the making, using, distributing, manufacturing, importing or selling, would infringe, induce infringement or contribute to infringement of IISc IP Rights in the country in which any such product or product part is made, used, imported, offered for sale or sold; (b) that is manufactured using a Licensed Process or is employed to practice a Licensed Process; or (c) that is otherwise covered by or included in licensed IP Rights. 

1.10    New Improvement IP Rights" means a) replacements, improvements, enhancements or modifications to the IP Rights, including but not limited to extensions, divisions, continuations, continued prosecution applications, continuations-in-part and foreign counterparts of any of the foregoing, and b) inventions, discoveries, development, or testing stage, and technology to be researched, generated, developed or tested by IISc or Licensee individually or jointly, subsequent to the date of this Agreement.

1.11    “Reporting Period”  shall begin on the first day of each calendar quarter and end on the last day of such calendar quarter.

1.12    “Territory” means India.

1.13    Technical Information means the technical information and relevant documentation relating to the design, the bill of materials, software, topography design, manufacturing details described in Annexure 1 for the Licensed Product. 

2.    GRANT OF RIGHTS

2.1    Subject to the Licensee’s performance and compliance of the obligations set forth herein, , IISc hereby grants to Licensee, a non- transferable, revocable, , non-sublicensable , non-exclusive license under the IP Rights for the Term in the Territory to make and have made, to use and have used, offer for sale, sell, import and export,  manufacture and distribute the Licensed Products in the Field of Use in accordance with the provisions of this Agreement, in all case strictly for the purposes of designing, manufacturing process, certifying, manufacturing and commercializing the Licensed Products and subject to the confidentiality obligations in Section 5. Any use of the IP Rights including Know-how, Technical Information, or any documentation provided by IISc for any purposes other than the manufacture and commercialization of Licensed Product is excluded under this license.

2.2    Sublicensing: 

a.    This License does not extend to sublicensing of IP Rights until an addendum to this Agreement is executed. Any such sublicense shall be subject to terms and conditions of the addendum, which may specify additional compensation (Royalty or License Fee) to be paid by the Licensee to IISc.

b.    Licensee may use third parties only to manufacture, develop, test or market any Licensed Product with prior intimation to IISc, provided that such third parties are bound by a confidentiality agreement with terms no less restrictive than those contained in this Agreement and in the manner acceptable to IISc.

2.3    No Other Rights Granted: The Parties agree that neither this Agreement, nor any, action of the Parties related hereto, may be interpreted as conferring by implication, or otherwise, any license or rights under any intellectual property rights of IISc other than as expressly and specifically set forth in this Agreement, regardless of whether such other intellectual property rights are dominant or subordinate to the IP Rights.

2.4    Ownership: Licensee acknowledges that IISc is the sole and exclusive owner of the IP Rights in India and in countries outside India and this Agreement shall not grant the Licensee with any right, title, or interest in the IP Rights other than the right to use the same in accordance with this Agreement, whether registered or not and Licensee shall do nothing inconsistent with such ownership of IISc. Licensee further agrees that it will not claim ownership rights to the said IP Rights, or any derivative, compilation, sequel or series, or related IPR owned by or used by IISc.

2.5    Except as expressly permitted by this Agreement and save to the extent and in the circumstances expressly required to be permitted by law, the Licensee is not permitted to rent, lease, sell, offer to sell or loan the Licensed Product or the IP Rights including Know-how or the Technical Information,  or use them for the benefit of any third party. 

3.    CONSIDERATION/LICENSE FEE

a.    In view of the public health emergency and for the benefit of society IISc shall not claim any consideration from Licensee as long as the Licensed Product is manufactured and distributed under the Corporate Social Responsibility (CSR) activities of the Company or sells it at Cost-Based Price. However, in License fee, the Licensee shall provide five units of Licensed Product at no cost to IISc as soon as the first batch of the Licensed Product is ready for sale/distribution.

b.    In the event, the Licensee commercializes the Licensed Product or generates any revenue using the IP Rights and/or the Licensed Products/Technical Information, this License Agreement shall stand terminated with immediate effect and shall be considered as breach of this Agreement. 

4.    NEW INVENTIONS, IMPROVEMENTS, ETC 

4.1    New Improvement IP Rights: Subject to the provisions identified below, the License granted herein does not extend to New Improvement IP Rights created by IISc unless an addendum to this Agreement or a separate Licensing Agreement is executed by the Parties, under which New Improvement IP Rights are included in the License including the consideration (Royalty) that may have to be paid by the Licensee to IISc for grant of such rights. 

4.2    All New Improvement IP Rights created by Licensee using the Licensed IP Rights shall be jointly and equally owned by IISc and Licensee. The Inventors associated with IISc under different capacities shall keep IISc informed of any such developments. The details of the New Improvement IP Rights shall be subject to a separate license agreement between the Parties.

4.3    Both Parties understand and agree that any modifications, improvements made to the IP Rights by the Licensee, whether jointly with IISc or through their own endeavor, does not confer or transfer any right of ownership of the IP Rights to Licensee.

5.    CONFIDENTIALITY

5.1    “Confidential Information” means (a) any proprietary or confidential information or material in tangible form disclosed in accordance with this Agreement and marked as “Confidential”/“Proprietary” or the like at the time it is delivered to Licensee, (b) Proprietary or Confidential Information disclosed orally hereunder which is identified as confidential or proprietary while disclosing, or (c) IP Rights, Technical Information and Know-how of IISc regardless of whether or not so marked or identified.  

5.2    Licensee hereby agrees to keep any Confidential Information transmitted to it or obtained by it from IISc strictly confidential and not to disclose the same or any part thereof to any other party or person, save to those of its employees who require to know the same, strictly on need-to-know basis. Licensee agrees to use all reasonable endeavors to ensure that any employees to whom such disclosure is made will keep such information confidential and will not use the same for their own purposes or for the purposes of any third party, including by entering into reciprocal confidentiality and non-disclosure agreements with such employees. Licensee shall take all precautions to preserve the confidentiality of IISc’s Confidential Information and shall require that Licensee's employees and any other persons with whom Licensee shares Confidential Information similarly preserve this information. 

5.3    Licensee assumes responsibility for any breach of this Clause 5.2 and 5.3 by its employees or any other person with whom Licensee shares Confidential Information. The Licensee further hereby agrees to indemnify IISc on any loss or damages suffered by IISc resulting directly or indirectly from breach of this Clause 5.2 and 5.3 by Licensee representatives, agents or other licensees or any other persons with whom Licensee shares Confidential Information. Without prejudice, the Licensee further agrees that it will not use the Confidential Information, or any part thereof supplied by IISc for any purposes save for the manufacture of the Licensed Product or as specifically permitted by IISc in writing. The provisions of this clause shall survive termination of this Agreement for any reason or its expiry.

5.4   Permitted Disclosures: Notwithstanding the foregoing, Licensee may disclose:

a.   IISc’s Confidential Information to the extent as required by the applicable laws or by an order of a Court of competent Jurisdiction, administrative agency or pursuant to governmental proceedings, regulatory approvals, or any other Government body, rules or regulations. Provided that, however to the extent possible, the Licensee gives prior written notice of such disclosure to IISc and reasonably cooperates and assists IISc in its efforts to oppose or mitigate such disclosure or to limit such disclosure to only those third parties on a need-to-know basis; and 

b.    Licensee may disclose IISc’s Confidential Information in confidence to third parties to the extent which is reasonably necessary to enable the Licensee to successfully commercialize the Licensed Product, with the prior written consent of the IISc, subject to the terms of this Agreement and subject to such third party being bound by confidentiality and non-disclosure agreements.

5.5    Licensee Confidential Information. All copies, if any, of financial information, pricing, marketing plans, business plans and other confidential and/or proprietary information of Licensee disclosed to IISc in the course of negotiating the transaction contemplated by this Agreement(“Licensee Confidential Information”), will be held in confidence and not used or disclosed by IISc or any of its employees, during the Term of this Agreement and will be promptly destroyed by IISc or returned to Licensee, upon Licensee’s written request to IISc. It is agreed that Licensee’s Confidential Information will not include information that: (a) is proven to have been known to IISc prior to receipt of such information from Licensee; (b) is disclosed by a third party having the legal right to disclose such information and who owes no obligation of confidence to Licensee; (c) is now, or later becomes part of the general public knowledge or literature, other than as a result of a breach of this Agreement by IISc; or (d) is independently developed by IISc without the use of any Licensee’s Confidential Information.

5.6    For the purpose of this Agreement, “Confidential Information” shall not include information that can be established by the Licensee by competent proof that such information:

a.   was already known to the Licensee, other than under an obligation of confidentiality, at the time of disclosure.

b.   was generally available to the public or otherwise part of the public domain at the time of its disclosure to the Licensee.

c.   became generally available to the or otherwise part of the public domain after its disclosure and other than through any act or omission of the receiving party in breach of this Agreement.

d.    was subsequently lawfully disclosed by the Licensee by a person other than a party hereto; or

e.    was lawfully developed independently by the receiving party without misappropriating Confidential Information from a third party.

6.    DUE DILIGENCE AND REPORTING

6.1    Commercialization: Licensee shall use its best efforts to bring one or more products to market within the Field of Use and throughout the Territory as soon as practicable and to develop such markets through a thorough, vigorous, and diligent program for the commercial exploitation of the Licensed Product.

6.2    Technical Assistance: IISc agrees in good faith to assist the Licensee as provided in Annexure- 1

6.3    Reporting: Licensee shall issue to IISc a detailed written report on its progress in introducing commercial Licensed Product and working of the product for each Reporting Period from the Effective Date. Such report shall be considered confidential information of Licensee, governed by Section 5.5 of this Agreement. From the Effective Date, representatives of IISc and the Licensee shall hold discussions every month for the first six (6) months to track the progress of the Licensee toward commercialization. In addition the Licensee shall provide a royalty report setting forth for each quarter at least the following information: (i) the number of Licensed Product sold by Licensee and its Affiliates in each Territory; (ii) total billings for such Licensed Product; (iv) deductions applicable to determine the Net Sales thereof; and (v) the amount of royalty due thereon, and the various calculations used to arrive at those amounts, including the quantity, description or, if no royalties are due to IISc for any reporting period, the statement that no royalties are due. Such report shall be certified as correct by an authorised officer of Licensee and shall include a detailed listing of all deductions from royalties.

6.4    Record-keeping and Audits: The Licensee shall keep complete and accurate records of the production, manufacture, and sales of the Licensed Product and accounting records relating to commercialization and the royalties or other revenues that the Licensee received from the Licensed Product during each Reporting Period and provide a provisional statement of the aggregate net revenue and total quantity and value of Licensed Product sold by the Licensee in such Reporting Period and the amount of royalties thus due to IISc. Each such provisional statement shall be adjusted to the actual figure on the submission of the next provisional quarterly statement and the adjusted statement shall be certified as true and correct by a duly authorized officer of the Licensee. The Licensee shall also provide IISc with certification of the accounts statement by Statutory Auditor of the Licensee or by a Chartered Accountant identified by IISc, stating that Generally Accepted Accounting Practices (GAAP) (or any similarly rigorous financial accounting standard used in the respective part of the Territory) has been followed by the Licensee in maintaining its books and records. Royalties payable to IISc shall not be deducted due to bad debts of the Licensee.  IISc (whether itself or third-party professionals) shall also be entitled to audit the books of account of the Licensee and shall be entitled to deploy professionals/personnel to conduct any such audit, without any prior intimation to the Licensee.  Licensee shall be bound to fully cooperate and produce all documents and records for the purpose of the audit and failure shall entail suspension of the License granted hereunder. 

   

7.    TRADEMARKS AND BRANDING

             The licensee shall use the IISc trademarks on or in association with the Licensed Products on any packaging, promotional and advertising material associated therewith, only upon seeking a written permission from IISc.

 

8.    LICENSEE INFRINGEMENT AND IP RIGHTS ENFORCEMENT

Licensee will promptly notify IISc of each infringement or possible infringement of the IP Rights, as well as any facts which may affect the validity, scope or enforceability of the IP Rights of which Licensee becomes aware.

 

9.    WARRANTIES

9.1    IISc offers no warranties other than those specified in this Agreement.

9.2    Licensee acknowledges to IISc that the IP Rights granted herein is on “as is, where is” and “as available” basis and experimental in nature, licensee will have the opportunity to conduct prior to executing the Agreement such evaluation and investigations of the IP Rights and the prototype developed by IISc using the IP Rights as licensee deems necessary or desirable to satisfy itself as to the required license thereof. Licensee further warrants and represents to IISc that licensee will rely solely on its own review and other inspections and investigations in this transaction and not upon the information provided by or on behalf of IISc or its agents, employees or representatives with respect thereto. Licensee hereby assumes the risk that adverse matters including, but not limited to, latent or patent defects, adverse physical or other adverse matters, may not have been revealed by Licensee’s review, evaluation and investigations. Licensee assumes all risk in its use, including IP infringement, suitability for a particular purpose, etc. IISc expressly disclaims all express, implied or statutory warranties or conditions, as to any matter whatsoever, including without limitation, warranties or conditions of merchantability, merchantable quality or fitness for a particular purpose, originality or accuracy of the IP Rights, whether tangible or intangible or any warranty of title or non-infringement or that the IP Rights or Licensed Product (or any portion thereof) is correct, useful, defect-free or free of errors of any subject matter provided under this Agreement. In no event shall IISc be liable for any claim, damages, or other liability, whether in an action of contract, tort or otherwise, arising from, out of or in connection with the Licensed Product, it’s IP Rights or the use or other dealings in the Licensed Product.

9.3    Licensee is solely responsible for determining the appropriateness of using or redistributing the Licensed Product and assume any risks associated with Licensee’s exercise of permissions under this Agreement

9.4    IISc does not represent that it shall commence legal actions against third parties infringing the IP Rights.

9.5   IISc offers no warranty, express or implied, regarding the patentability of the technology covered under the IP Rights

9.6    Licensee shall defend, indemnify, and hold IISc, its employees, students, fellows, agents, and consultants harmless from and against all liability, demands, damages, expenses and losses, including but not limited to death, personal injury, illness or property damage in connection with or arising out of:

a.    the use by or on behalf of Licensee its directors, employees or third parties of any IP Rights; or

b.    the design or use of any Licensed Products or Licensed Processes by Licensee or other products or processes developed in connection with or arising out of the IP Rights.

9.7    Licensee’s obligations and warranties

a.    The Licensee shall, at its own expense, be responsible for obtaining and maintaining all regulatory approvals for Licensed Product in all relevant territories where the Licensed Product/Process is developed, manufactured and/or commercialized.

b.    Compliance with Law.  Licensee for themselves and on behalf of their contractors, subcontractors or manufacturers shall comply, at all times, with applicable and documentable local, state, central, foreign and international laws, ordinances, and regulations, including, but not limited to, those pertaining to the manufacturing, distribution, packaging, marketing, advertising, promotion and sale of the Licensed Product/Process. It shall ensure that it fulfils all procedural, legal, regulatory and operational requirements for the commercial utilization of the IP Rights/Licensed Product. Licensee shall strictly comply with the laws, rules and regulations of the Drugs and Cosmetic Act,1940 as well as all applicable laws for manufacturing and selling the Licensed Products or any comparable laws, rules and regulations of other nations.  If, at any time, IISc becomes aware of the Licensee violating any law, ordinance, or regulation, IISc will notify Licensee, of the alleged violation as per Section 10. 2.

c.    The Licensee agrees to commercialise the Licensed Product in the Territory only and selling/distributing the Licensed Product shall be the responsibility of the Licensee.
 

d.    Release: In additional consideration for the license granted by IISc set forth herein, and by acceptance of this license for any portion of the Term, Licensee, on behalf of itself, its predecessors, successors, Affiliates, assigns, and transferees, hereby: (a) accepts and assumes all risks and liabilities with respect to, and (b) forever agrees to release, discharge, indemnify, hold harmless, and defend IISc, together with its predecessors, successors, Affiliates, assigns, and transferees, from all liabilities of any nature whatsoever, known or unknown, which Licensee has, or may have had, against IISc , for any acts or omissions whatsoever related to this Agreement, the IP Rights, and any products, methods, and processes described in or related to the IP Rights.

e.    Covenant Not to Sue: Licensee, on behalf of itself, its predecessors, successors, Affiliates, assigns, and transferees, hereby irrevocably covenants that neither it nor any of its related entities granting a release in Section 9.7(d) will participate or cooperate in the commencement, maintenance, or prosecution of any action or proceeding of any kind or nature whatsoever against IISc, together with its predecessors, successors, Affiliates, assigns, and transferees, related to this Agreement, the IP Rights, and the Licensed Product, methods, and processes described in or related to the IP Rights.

f.    The Licensee acknowledges the absolute ownership of the IP Rights by IISc and shall not dispute the legality, validity or enforceability of the license granted.

g.    Licensee shall not claim the IP Rights in his/its own name on the plea of having affected any improvements/modifications upon the IP Rights or upon the Licensed Product or on any matter relating to the Technical Information disclosed to it by IISc under this agreement.. All Licensed Product manufactured by the Licensee shall be deemed to have been manufactured under the license hereby granted.

h.    Licensee shall ensure that, in the event of any quality incidents including any medical adverse events, claims or complaints or if any product recall or field corrective action is required as a result of quality or safety issues relating to Licensed Product, the Licensee shall be solely responsible for and take all necessary action to ensure that any Licensed Product that are defective or unsafe are removed from the market and collected from customers who purchased such Licensed Products and that all actions are taken to investigate the root cause of such incidents and to ensure that they do not recur .

i.   The Licensee shall not make any misleading statements or representations in relation to the Licensed Products when marketing and selling Licensed Products other than what is provided under this Agreement. 

j.   The Licensee shall permit the personnel of IISc or its representative or duly authorized officials, at all convenient time to enter into and upon the premises of Licensee where Licensed Product under this license, are [manufactured/stocked/sold/ used] for the purpose of inspecting the same and the manufacture thereof, generally to ascertain that the provision of this license are being complied with and quality of the Licensed Product maintained and fulfilment of other terms and conditions. 

k.   The Licensee shall not oppose or direct or cause any persons to oppose any application seeking intellectual property rights relating to the IP Rights filed by IISc. 

l.    The Licensee hereby agrees to have the sole responsibility for the quality of the Licensed Product developed/manufactured/produced from the IP Rights licensed hereunder and shall use its best efforts to maintain high quality standards of the Licensed Product(s).

m.   The Licensee shall obtain all such insurance policies from reputable insurers as required under the law and shall maintain such insurance for as long as it makes, sells, supplies or supports the Licensed Product(s). 

10.    TERM AND TERMINATION

10.1    This Agreement shall be effective till 31st December 2022 (“Termination Date”) from the Effective Date of this Agreement but may be renewed at the discretion of IISc for a further term upon receiving a request in writing from the Licensee at least four months prior to the Termination Date. In the event IISc is convinced with the commercialization/distribution progress and subject to the availability of possible licensing options, the Parties shall execute an amendment agreement or a new agreement on commercial/royalty terms to be negotiated in good faith between Parties.

10.2   Either Party may terminate this Agreement without prejudice to any rights of action accrued to either Party at the date of termination or to any other express obligations in this Agreement of a continuing nature, if the other Party has committed any breach of any of the terms of this Agreement on its part and fails to remedy such breach within thirty (30) business days after written notice shall have been given by the Party not in breach to the other specifying the nature of the breach. 

10.3   This Agreement may be terminated at any time upon the mutual agreement of the  Parties.

10.4   Failure to Commercialise/manufacture/distribute: If the Licensee fails to commercialise/manufacture/distribute the Licensed Product within six months from the Effective date, IISc at its discretion shall terminate this Agreement. 

10.5   Return of Information: Upon Termination of this Agreement, the Licensee shall not be entitled to utilize the IP Rights/Technical Information in any manner whatsoever and immediately Licensee shall return all data, software, technical writing, specifications, drawings, Know-how and the like provided and made available to it by IISc, relating to the IP Rights, under the terms of this Agreement, immediately on the date of termination. It is further undertaken by the Licensee that all improvements made by it to the IP Rights up to date of termination, including data, technical writing, specifications etc., shall be provided promptly to IISc, as and when these are achieved and the Licensee shall not claim any or all of the above in any manner whatsoever. IISc shall return all the Confidential Information received from the Licensee, immediately upon termination of this Agreement.

11.    GENERAL PROVISIONS

11.1   Applicable law: This Agreement shall be construed, interpreted, and governed by the laws of India. The courts of Bangalore City alone shall have jurisdiction for any injunctive or other equitable relief to prevent or curtail any breach of this Agreement.

11.2   Arbitration:  a) If any dispute arises in connection with this MoA and any individual Project, a senior representative of the Parties shall attempt, in fair dealing and in good faith, to settle such dispute in the best interests of Parties. If the Parties are not able to reach an amicable settlement, either Party may initiate an arbitration proceeding; b) Any dispute or difference or claim arising out of or in relation to this transaction including construction, validity performance or breach thereof shall, shall be referred to and finally resolved by arbitrator under Arbitration and Conciliation Act of 1996 and any subsequent amendments thereof for time being in force. The Arbitration shall be presided by a sole arbitrator mutually appointed by the Parties. The seat of arbitration shall be Bengaluru. The language to be used in the arbitration proceedings shall be English; c) Each Party may seek provisional measures from Courts at Bengaluru, including provisional injunctive relief, provided that the final resolution of the dispute is through the arbitral tribunal appointed in accordance with this clause 11.2

11.3    Notices: All notices pertaining to or required by this Agreement shall be in writing, shall be signed by an authorized representative and shall be delivered to the addresses indicated on the signature page for each Party with a copy to address mentioned below,  in its original form or scanned copy by e-mail. For the avoidance of doubt other electronic communication shall not qualify as a written notice or document.  
If to IISc, to: 

                          With a copy to

                          The Chairperson

                          Intellectual Property and Technology Licensing office (IPTeL)

                          Bangalore-560012, INDIA

                          Phone No.: +91-80-22932037/2038

                          Fax No.: 91-80-2360-0265

Or to such other person or address as IISc shall furnish to Licensee in writing.

           If to Licensee, with a copy to: 

            Any Party to this Agreement may change its address for the purposes of this Agreement by giving notice thereof in accordance with this Section.

11.4   Binding Effect. This Agreement shall be binding upon and inure to the benefit of the Parties and their respective permitted successors and assigns.

11.5   Entire Agreement: This Agreement, including all the Annexures, sets forth the complete agreement of the Parties concerning the subject matter hereof. No claimed oral agreement in respect thereto shall be considered as any part hereof. No amendment or change in any of the terms hereof subsequent to the execution hereof shall have any force or effect unless agreed to in writing by duly authorized representatives of the Parties.

11.6   Waiver: No waiver of any provision of this Agreement shall be effective unless executed in writing. No waiver shall be deemed to be or shall constitute, a waiver of a breach of any other provision of this Agreement, whether or not similar, nor shall such waiver constitute a continuing waiver of such breach unless otherwise expressly provided in such waiver.

11.7    Severability: Each provision contained in this Agreement is declared to constitute a separate and distinct covenant and provision and to be severable from all other separate, distinct covenants and provisions. It is agreed that should any article, condition or term or any part thereof, contained in this Agreement be unenforceable or prohibited by law or by any present or future legislation then:

a.    such article, condition, term, or part thereof, shall be amended and is hereby amended, so as to be in compliance therewith the legislation or law; but

b.    if such article, condition or term, or part thereof, cannot be amended so as to be in compliance with the legislation or law, then such clause, condition, term or part thereof shall be severed from this Agreement and all the rest of the articles, terms and conditions or parts thereof contained in this Agreement shall remain unimpaired.

11.8   Assignment: IISc may freely assign or transfer this Agreement without Licensee’s consent. Licensee may not assign or transfer this Agreement without the express written consent of IISc. Any purported assignment or other transfer without such consent shall be void and unenforceable.

11.9   Export Regulations: This Agreement is subject in all respects to the Laws and regulations of the Republic of India. The Licensee or its Affiliates will not in any form export, re-export, resell, ship, divert, or cause to be exported, re-exported, resold, shipped, or diverted, directly or indirectly, any product or technical data or software of IISc, or the direct product of such technical data or software, to any country for which the Indian Government or its agencies thereof requires an export license or other governmental approval without first obtaining such license or approval.

11.10   Force Majeure: Neither Party shall lose any rights hereunder or be liable to the other Party for damages or losses (except for payment obligations) on account of failure of performance by the defaulting Party if the failure is occasioned by war, strike, fire, Act of God, earthquake, flood, lockout, embargo, governmental acts or orders or restrictions, failure of suppliers, or any other reason where failure to perform is beyond the reasonable control and not caused by the negligence or intentional conduct or misconduct of the non-performing Party and such Party has exerted all reasonable efforts to avoid or remedy such force majeure; provided, however, that in no event shall a Party be required to settle any labour dispute or disturbance.

11.11    Counterparts/Facsimiles: This Agreement may be executed in one or more counterparts, all of which taken together shall be deemed one original.

IN WITNESS WHEREOF, the Parties have caused this Agreement to be signed by their duly authorized representatives on the date and the year first hereinabove written.

 

Signatures
For 

Indian Institute of Science

Name: 

Designation: Registrar

Date:

 

 

For 

{companyDetails[1]}

Name: {aboutMe[1]}

Designation: {aboutMe[6]}

Date: 

 

Witness1

Signature:…………………..

Name:      

Address: 

 

 

Witness 2

Signature:…………………..

Name:

Address:

 

 

 

ANNEXURE - I

 

IP Rights Title:  A method and apparatus to concentrate oxygen from ambient air

Technical Information

Bill of materials (component technical specifications)
Schematic drawings
System Block Diagram
Electronics Circuit Diagram
Firmware in .out or .hex files optimized to work on TI MSP430i2041
System: Performance and reliability data
Webinar/Videos demonstrating the product and illustrating the information shared above
 

IISc shall within (3 working days) of the signing of the agreement, hand over to the Licensee, Technical Information and documents related to the technology as listed above.

 

ADDITIONAL SUPPORT:

At the request of the Licensee, IISc may extend further product development support through a third party identified by IISc. The Licensee may choose to engage with such third parties to support them in absorbing the technology and doing further development. The financial and other terms of the engagement shall be independently arrived at by the Licensee and the third party concerned.

LICENSE AGREEMENT For Profit 

 

This Intellectual Property (IP) License Agreement (hereinafter “Agreement”) is effective from  {date} (Effective date),

 

BETWEEN

 

Indian Institute of Science, a trust registered under the Charitable Endowments Act of 1890 and a centrally funded Technical institution, an Institute of Eminence and an autonomous body funded by Ministry of Human Resource Development, Government of India, situated at Sir C.V. Raman Road, Bangalore – 560 012, Karnataka, represented by its Registrar/Duly Authorized Signatory (hereinafter referred to as “IISc”), which expression shall wherever the context requires or admits, unless repugnant thereto, mean and include its administrators, executors, successors-in-interest and permitted assigns of the FIRST PART;

 

AND

 

{companyDetails121[1]}, a company incorporated under the Companies Act, 1956 having its registered office at {companyDetails121[2]} (hereinafter referred to as “Licensee”), which expression shall wherever the context requires or admits, unless repugnant thereto, mean and include its Affiliates, administrators, executors, successors-in-interest and permitted assigns of the OTHER PART;

“IISc” and “Licensee” shall be individually referred to as “Party” and collectively referred to as “Parties” under this Agreement.

WHEREAS,

A.    IISc has designed and built an oxygen concentrator and holds certain proprietary and IP rights, as specified hereinafter, related thereto and desires to have it perfected and practiced so that the benefits are readily available for widest public utilization in the shortest time possible.

B.    Licensee represents that it has experience in developing, manufacturing, and marketing products in the medical device field or in the area of equipment manufacturing and has the required wherewithal including financial capabilities, facilities, infrastructure, personnel, finance and expertise to manufacture the oxygen concentrator using the information covered by the IP rights and desires to bring and is willing to expend reasonable efforts to bring the products to the point of practical application at an early date. 

 

C.    IISc is willing to grant, subject to the terms and conditions contained herein and in exchange for the Licensee’s commitment to rapidly manufacture and broadly distribute Licensed Product to address COVID-19 related issues during the pandemic, a non-exclusive license under such IP Rights. 

 

NOW THEREFORE, in consideration of the premises above, including the above-cited authority and the mutual promises and obligations hereinafter set forth, IISc and Licensee, do hereby agree as set forth below:  

 

1.    DEFINITIONS 

1.1   “Agreement” means this License Agreement to be executed between the Parties hereto and includes any amendments, annexure hereto made in accordance with the provisions hereof.

1.2   "Affiliate" means any legal entity (including, but not limited to, a company a corporation, registered partnership, or limited liability partnership) that is controlled by a Party directly or indirectly. For the purposes of this definition, the term "control" means (i) beneficial ownership of at least fifty percent (51%) of the voting securities of a corporation or other business organization with voting securities or (ii) a fifty percent (51%) or greater interest in the net assets or profits of a partnership or other business organization without voting securities or (iii) the power and ability to control the majority of the composition of the board of directors of such corporation or business organization or the power to direct the management and policies of such partnership or business organization, directly or indirectly, by contract or otherwise.

1.3   “Cost-Based Price” means, in respect of each Licensed Product, a price not exceeding that which fairly reflects the direct cost of manufacture and supply of the Licensed Product.

1.4   “Field of Use” means the use of IP Rights for generation of oxygen for medical application. 

1.5   “Intellectual Property" or “IP” means any and all inventions, materials, Know-how, trade secrets, patent rights, IC layout designs, algorithms, technology, trademarks, copyrights, formulae, processes, ideas or other discoveries conceived or reduced to practice, whether patentable or not and whether as relating to the IP Rights including the property which is being granted to the Licensee under this Agreement by IISc. 

1.6   "Know-how" means all tangible and intangible (i) processes; technology, Technical Information, process, concept details or any other proprietary rights including, but not limited to, trade secrets, formulas, research data, software, algorithms, specifications, invention disclosures, studies or testing procedures, or placing into operation of the licensed product, knowledge of the operation useful or necessary to enable Licensee to manufacture Licensed Product, invention disclosure, studies, procedures (ii) products, prototypes, components, that is developed by IISc. However, Know- how shall not include any rights under patent or pending non-provisional patent application or protected under integrated circuit (IC) layout design; 

1.7   "IP Rights" means and include all rights and interest arising in and out of the Indian provisional patent application bearing number 202141021651 and Know-how relating to the invention titled “Method and Apparatus for Generating Oxygen with Controlling the Operations in Oxygen Concentrators” and as mentioned under Annexure I which will be provided by IISc to the Licensee under this Agreement upon execution by the Parties.

1.8   “Licensed Process(es)” means any process or method that is covered in whole or in part contained in the IP Rights, or any process or method that is covered in whole or in part within Know- how.

1.9   “Licensed Product(s)” means oxygen concentrator manufactured/produced/made using IP Rights or any product, in whole or in part, that incorporates, implement, integrate, use, emulate and /or embody, produced, assembled and/or commercialized using IISc’s IP Rights licensed under this Agreement or any services provided utilizing IP Rights or a product in whole or in part  built using IP Rights (a) for which, absent this Agreement, the making, using, distributing, manufacturing, importing or selling, would infringe, induce infringement or contribute to infringement of IISc IP Rights in the Territory in which any such product or product part is made, used, imported, offered for sale or sold; (b) that is manufactured using a Licensed Process or is employed to practice a Licensed Process; or (c) that is otherwise covered by or included in licensed IP Rights. 

1.10   “New Improvement IP Rights" means a) replacements, improvements, enhancements or modifications to the IP Rights, including but not limited to extensions, divisions, continuations, continued prosecution applications, continuations-in-part and foreign counterparts of any of the foregoing, and b) inventions, discoveries, development, data or the technology to be researched, generated, developed or tested by IISc or Licensee individually or jointly, subsequent to the Effective Date of this Agreement.

1.11   “Net Sales” means the amount billed or invoiced on sales, rental, lease, or use, however characterized, by Licensee for Licensed Products and Licensed Processes, less (a) discounts allowed in amounts customary in the trade; (b) service tax and other tariffs, duties included in bills or invoices with reference to particular sales and actually paid by Licensee to a governmental body (c) outbound transportation prepaid or allowed; or (d) amounts refunded or credited on returns. Net Sales also includes the fair market value of any non-cash consideration received by Licensee for the sale, or transfer of Licensed Product. 

1.12   “Reporting Period” shall begin on the first day of each calendar quarter and end on the last day of such calendar quarter.

1.13   “Territory” means India.

1.14   “Technical Information” means the technical information and relevant documentation relating to the design, the bill of materials, software, topography design, manufacturing details described in Annexure I for the Licensed Product. 

2.    GRANT OF RIGHTS

2.1    Subject to the Licensee’s performance and compliance of the obligations set forth herein, IISc hereby grants to Licensee, a non- transferable, revocable, non-sublicensable , non-exclusive license under the IP Rights for the Term in the Territory to make and have made, to use and have used, offer for sale, sell, manufacture and distribute the Licensed Products in the Field of Use in accordance with the provisions of this Agreement, in all case strictly for the purposes of designing, manufacturing process, certifying, manufacturing and commercializing the Licensed Products and subject to the confidentiality obligations in Section 5. Any use of the IP Rights including Know-how, Technical Information, or any documentation provided by IISc for any purposes other than the manufacture and commercialization of Licensed Product is excluded under this license. 

2.2    Sublicensing: 

a.    This License does not extend to sublicensing of IP Rights until an addendum to this Agreement is executed. Any such sublicense shall be subject to terms and conditions of the addendum, which may specify additional compensation (Royalty or License Fee) to be paid by the Licensee to IISc.

b.    Licensee may use third parties only to manufacture, develop, test or market any Licensed Product with prior intimation to IISc, provided that such third parties are bound by a confidentiality agreement with terms no less restrictive than those contained in this Agreement and in the manner acceptable to IISc.

2.3    No Other Rights Granted: The Parties agree that neither this Agreement, nor any, action of the Parties related hereto, may be interpreted as conferring by implication, or otherwise, any license or rights under any intellectual property rights of IISc other than as expressly and specifically set forth in this Agreement, regardless of whether such other intellectual property rights are dominant or subordinate to the IP Rights.

2.4    Ownership: Licensee acknowledges that IISc is the sole and exclusive owner of the IP Rights in India and in countries outside India and this Agreement shall not grant the Licensee with any right, title, or interest in the IP Rights other than the right to use the same in accordance with this Agreement, whether registered or not and Licensee shall do nothing inconsistent with such ownership of IISc. Licensee further agrees that it will not claim ownership rights to the said IP Rights, or any derivative, compilation, sequel or series, or related IPR owned by or used by IISc.

2.5    Except as expressly permitted by this Agreement and save to the extent and in the circumstances expressly required to be permitted by law, the Licensee is not permitted to rent, lease, or loan the Licensed Product or the IP Rights including Know-how or the Technical Information, or use them for the benefit of any third party. 

3.    CONSIDERATION/LICENSE FEE

a.    Upfront License Fee: In view of the public health emergency and for the benefit of society IISc shall not claim any upfront License Fee payment from Licensee. However, in lieu of the upfront License fee, the Licensee shall provide three units of fully functioning Licensed Product at no cost to IISc as soon as the first batch of the Licensed Product is ready for sale/distribution. The Parties hereby agree that any unit of Licensed Product provided to IISc at no cost, including the three units given in lieu of upfront license fee, shall not be considered for the calculation of Net Sales.  

b.    Royalty: Licensee shall pay to IISc during the Term of this Agreement a non- refundable royalty of 1% on Net Sales (“Royalty”). Royalties shall be payable for each Reporting Period and shall be due to IISc within thirty (30) days of the end of each Reporting Period.

c.    Applicable Taxes: Licensee agrees and acknowledges that the above amounts are exclusive of any imposed tax, duty, etc. In the event any taxes, duties, fees, and other surcharge become applicable during the term of this Agreement to License Fee/Royalty payments made by Licensee to IISc, regardless of whether such payments are due to agencies in India or outside India, the Licensee agrees to bear such levies.

d.   Payments: All sums payable by Licensee hereunder shall be made through Banker's Cheques or Demand Drafts drawn in the name of 

The Registrar, Indian Institute of Science, Bangalore-560012, and couriered to:

The Chairman

Intellectual Property and Technology Licensing Office ( IPTeL) 

Indian Institute of Science 

Bangalore- 560012, Karnataka, India

Payment may also be effected through wire transfer (i.e., electronically), after making suitable arrangements in consultation with IISc. Licensee agrees to bear all applicable bank charges for all sums payable to IISc

4.    NEW INVENTIONS, IMPROVEMENTS, ETC 

 

4.1    New Improvement IP Rights: Subject to the provisions identified below, the License granted herein does not extend to New Improvement IP Rights created by IISc solely unless an addendum to this Agreement or a separate Licensing Agreement is executed by the Parties, under which New Improvement IP Rights are included in the License including the consideration (Royalty) that may have to be paid by the Licensee to IISc for grant of such rights. 

4.2   Any New Improvement IP Rights arising from the IP Rights and that are not severable from the IP Rights will be deemed to form part of the IISc’s IP Rights.

4.3   All-New Improvement IP Rights created by Licensee and Licensor jointly using the Licensed IP Rights shall be jointly and equally owned by IISc and Licensee. The Licensee shall keep IISc informed of any such developments. The details and joint rights under the New Improvement IP Rights created/developed by Licensee shall be subject to a separate license agreement between the Parties.

4.4   Subject to the confidentiality obligations, New Improvement IP Rights that are created by Licensee using the Licensed IP Rights and that are severable from the IP Rights shall be owned by Licensee (“Licensee IP”). The Licensee shall keep IISc informed of any such developments and the Licensee hereby grants to IISc a non-exclusive royalty-free non-commercial license to the Licensee IP.

4.5   The license granted herein shall not include any rights to improve, develop, or modify the Know-how nor does it allow to alter the functionality, performance, or specification of the Licensed Product without express written consent from IISc.

4.6   The Licensee understands and agrees that any modifications, improvements made to the IP Rights by it, whether jointly with IISc or through its own endeavor, does not confer or transfer any right of ownership of the IP Rights to Licensee.

5.    CONFIDENTIALITY

5.1    “Confidential Information” means (a) any proprietary or confidential information or material in tangible form disclosed in accordance with this Agreement and marked as “Confidential”/“Proprietary” or the like at the time it is delivered to Licensee, (b) Proprietary or Confidential Information disclosed orally hereunder which is identified as confidential or proprietary while disclosing, or (c) IP Rights, Technical Information and Know-how of IISc regardless of whether or not so marked or identified.  

5.2    Licensee hereby agrees to keep any Confidential Information transmitted to it or obtained by it from IISc strictly confidential and not to disclose the same or any part thereof to any other party or person, save to those of its employees who require to know the same, strictly on need-to-know basis. Licensee agrees to use all reasonable endeavors to ensure that any employees to whom such disclosure is made will keep such information confidential and will not use the same for their own purposes or for the purposes of any third party, including by entering into reciprocal confidentiality and non-disclosure agreements with such employees. Licensee shall take all precautions to preserve the confidentiality of IISc’s Confidential Information and shall require that Licensee's employees and any other persons with whom Licensee shares Confidential Information similarly preserve this information. 

5.3    Licensee assumes responsibility for any breach of this Clause 5.2 and 5.3 by its employees or any other person with whom Licensee shares Confidential Information. The Licensee further hereby agrees to indemnify IISc on any loss or damages suffered by IISc resulting directly or indirectly from breach of this Clause 5.2 and 5.3 by Licensee representatives, agents or other licensees or any other persons with whom Licensee shares Confidential Information. Without prejudice, the Licensee further agrees that it will not use the Confidential Information, or any part thereof supplied by IISc for any purposes save for the manufacture of the Licensed Product or as specifically permitted by IISc in writing. The provisions of this clause shall survive termination of this Agreement for any reason or its expiry.

5.4    Permitted Disclosures: Notwithstanding the foregoing, Licensee may disclose:

a.    IISc’s Confidential Information to the extent as required by the applicable laws or by an order of a Court of competent Jurisdiction, administrative agency or pursuant to governmental proceedings, regulatory approvals, or any other Government body, rules or regulations. Provided that, however to the extent possible, the Licensee gives prior written notice of such disclosure to IISc and reasonably cooperates and assists IISc in its efforts to oppose or mitigate such disclosure or to limit such disclosure to only those third parties on a need-to-know basis; and 

b.    Licensee may disclose IISc’s Confidential Information in confidence to third parties to the extent which is reasonably necessary to enable the Licensee to successfully commercialize the Licensed Product, with the prior written consent of the IISc, subject to the terms of this Agreement and subject to such third party being bound by confidentiality and non-disclosure agreements.

5.5    Licensee Confidential Information. All copies, if any, of financial information, pricing, marketing plans, business plans and other confidential and/or proprietary information of Licensee disclosed to IISc in the course of negotiating the transaction contemplated by this Agreement(“Licensee Confidential Information”), will be held in confidence and not used or disclosed by IISc or any of its employees, during the Term of this Agreement and will be promptly destroyed by IISc or returned to Licensee, upon Licensee’s written request to IISc. It is agreed that Licensee’s Confidential Information will not include information that: (a) is proven to have been known to IISc prior to receipt of such information from Licensee; (b) is disclosed by a third party having the legal right to disclose such information and who owes no obligation of confidence to Licensee; (c) is now, or later becomes part of the general public knowledge or literature, other than as a result of a breach of this Agreement by IISc; or (d) is independently developed by IISc without the use of any Licensee’s Confidential Information.

5.6    For the purpose of this Agreement, “Confidential Information” shall not include information that can be established by the Licensee by competent proof that such information:

a.    was already known to the Licensee, other than under an obligation of confidentiality, at the time of disclosure.

b.    was generally available to the public or otherwise part of the public domain at the time of its disclosure to the Licensee.

c.    became generally available to the or otherwise part of the public domain after its disclosure and other than through any act or omission of the Licensee in breach of this Agreement.

d.    was subsequently lawfully disclosed to the Licensee by a person other than a IISc; or

e.    was lawfully developed independently by the Licensee without misappropriating Confidential Information of IISc.

6.    DUE DILIGENCE AND REPORTING

6.1    Commercialization: Licensee shall use its best efforts to bring one or more products to the market within the Field of Use and throughout the Territory as soon as practicable and to develop such markets through a thorough, vigorous, and diligent program for the commercial exploitation of the Licensed Product.

6.2    Technical Assistance: IISc agrees in good faith to assist the Licensee as provided in Annexure- 1

6.3    Reporting: Licensee shall issue to IISc a detailed written report on its progress in introducing commercial Licensed Product and working of the product for each Reporting Period from the Effective Date. Such report shall be considered confidential information of Licensee, governed by Section 5.5 of this Agreement. From the Effective Date, representatives of IISc and the Licensee shall hold discussions every month for the first six (6) months to track the progress of the Licensee toward commercialization. In addition the Licensee shall provide a royalty report setting forth for each quarter at least the following information: (i) the number of Licensed Product sold by Licensee and its Affiliates in the Territory; (ii) total billings for such Licensed Product; (iv) deductions applicable to determine the Net Sales thereof; and (v) the amount of royalty due thereon, and the various calculations used to arrive at those amounts, including the quantity, description or, if no Royalties are due to IISc for any Reporting Period, the statement that no Royalties are due. Such report shall be certified as correct by an authorised officer of Licensee and shall include a detailed listing of all deductions from Royalties.

6.4    Record-keeping and Audits: The Licensee shall keep complete and accurate records of the production, manufacture, and sales of the Licensed Product and accounting records relating to commercialization and the royalties or other revenues that the Licensee received from the Licensed Product during each Reporting Period and provide a provisional statement of the aggregate net revenue and total quantity and value of Licensed Product sold by the Licensee in such Reporting Period and the amount of royalties thus due to IISc. Each such provisional statement shall be adjusted to the actual figure on the submission of the next provisional quarterly statement and the adjusted statement shall be certified as true and correct by a duly authorized officer of the Licensee. The Licensee shall also provide IISc with certification of the accounts statement every year during the Term, by Statutory Auditor of the Licensee or by a Chartered Accountant identified by IISc, stating that Generally Accepted Accounting Practices (GAAP) (or any similarly rigorous financial accounting standard used in the respective part of the Territory) has been followed by the Licensee in maintaining its books and records. Royalties payable to IISc shall not be deducted due to bad debts of the Licensee.  IISc (whether itself or third-party professionals) shall also be entitled to audit the books of account of the Licensee and shall be entitled to deploy professionals/personnel to conduct any such audit, without any prior intimation to the Licensee.  Licensee shall be bound to fully cooperate and produce all documents and records for the purpose of the audit and failure shall entail suspension of the License granted hereunder. 

   

7.    TRADEMARKS AND BRANDING

       The Licensee shall use the IISc trademarks on or in association with the Licensed Products on any packaging, promotional and advertising material associated therewith, only upon seeking a written permission from IISc.

8.    LICENSEE INFRINGEMENT AND IP RIGHTS ENFORCEMENT

       Licensee will promptly notify IISc of each infringement or possible infringement of the IP Rights, as well as any facts which may affect the validity, scope or enforceability of the IP Rights of which Licensee becomes aware.

9.    WARRANTIES

9.1   IISc offers no warranties other than those specified in this Agreement.

9.2   Licensee acknowledges to IISc that the IP Rights granted herein is on “as is, where is” and “as available” basis and experimental in nature, Licensee will have the opportunity to conduct prior to executing the Agreement such evaluation and investigations of the IP Rights and the prototype developed by IISc using the IP Rights as licensee deems necessary or desirable to satisfy itself as to the required license thereof. Licensee further warrants and represents to IISc that the Licensee will rely solely on its own review and other inspections and investigations in this transaction and not upon the information provided by or on behalf of IISc or its agents, employees or representatives with respect thereto. Licensee hereby assumes the risk that adverse matters including, but not limited to, latent or patent defects, adverse physical or other adverse matters, may not have been revealed by Licensee’s review, evaluation and investigations. Licensee assumes all risk in its use, including IP infringement, suitability for a particular purpose, etc. IISc expressly disclaims all express, implied or statutory warranties or conditions, as to any matter whatsoever, including without limitation, warranties or conditions of merchantability, merchantable quality or fitness for a particular purpose, originality or accuracy of the IP Rights, whether tangible or intangible or any warranty of title or non-infringement or that the IP Rights or Licensed Product (or any portion thereof) is correct, useful, defect-free or free of errors of any subject matter provided under this Agreement. In no event shall IISc be liable for any claim, damages, or other liability, whether in an action of contract, tort or otherwise, arising from, out of or in connection with the Licensed Product, it’s IP Rights or the use or other dealings in the Licensed Product.

9.3   Licensee is solely responsible for determining the appropriateness of using or redistributing the Licensed Product and assume any risks associated with Licensee’s exercise of permissions under this Agreement

9.4   IISc does not represent that it shall commence legal actions against third parties infringing the IP Rights.

9.5   IISc offers no warranty, express or implied, regarding the patentability of the technology covered under the IP Rights.

9.6   Licensee shall defend, indemnify, and hold IISc, its employees, students, fellows, agents, and consultants harmless from and against all liability, demands, damages, expenses and losses, in connection with or arising out of:

a.   the use by or on behalf of Licensee its directors, employees or third parties of any IP Rights; or

b.   the design or use of any Licensed Products or Licensed Processes by Licensee or other products or processes developed in connection with or arising out of the IP Rights.

9.7    Licensee’s obligations and warranties

a.    The Licensee shall, at its own expense, be responsible for obtaining and maintaining all regulatory approvals including the approval from Central Drug Standards Control Organization (CDSCO) for Licensed Product and if applicable in all relevant territories where the Licensed Product/Process is developed, manufactured and/or commercialized. Upon the regulatory approvals from the appropriate authorities, the Licensee shall provide a copy of the approval details to IISc before the launch of the Licensed Product into the market.

b.   Compliance with Law.  Licensee for themselves and on behalf of their contractors, subcontractors or manufacturers shall comply, at all times, with applicable and documentable local, state, central, foreign and international laws, ordinances, and regulations, including, but not limited to, those pertaining to the manufacturing, distribution, packaging, marketing, advertising, promotion and sale of the Licensed Product/Process. It shall ensure that it fulfils all procedural, legal, regulatory and operational requirements for the commercial utilization of the IP Rights/Licensed Product. Licensee shall strictly comply with the laws, rules and regulations of the Drugs and Cosmetic Act,1940 as well as all applicable laws for manufacturing and selling the Licensed Products or any comparable laws, rules and regulations of other nations.  If, at any time, IISc becomes aware of the Licensee violating any law, ordinance, or regulation, IISc will notify Licensee, of the alleged violation as per Section 10. 2.

c.   The Licensee agrees to commercialise the Licensed Product in the Territory only and selling/distributing the Licensed Product shall be the responsibility of the Licensee.

d.   The Licensee, on behalf of itself, its predecessors, successors, Affiliates, assigns, and transferees, hereby: (i) accepts and assumes all risks and liabilities with respect to, and (ii) forever agrees to release, discharge, indemnify, hold harmless, and defend IISc, together with its predecessors, successors, Affiliates, assigns, and transferees, from all liabilities of any nature whatsoever, known or unknown, which Licensee has, or may have had, against IISc , for any acts or omissions whatsoever related to this Agreement, the IP Rights, and any products, methods, and processes described in or related to the IP Rights.

e.   Covenant Not to Sue: Licensee, on behalf of itself, its predecessors, successors, Affiliates, assigns, and transferees, hereby irrevocably covenants that neither it nor any of its related entities granting a release in Section 9.7(d) will participate or cooperate in the commencement, maintenance, or prosecution of any action or proceeding of any kind or nature whatsoever against IISc, at the instance of a third party together with its predecessors, successors, Affiliates, assigns, and transferees, related to this Agreement, the IP Rights, and the Licensed Product, methods, and processes described in or related to the IP Rights

f.   The Licensee acknowledges the absolute ownership of the IP Rights including Technical Information by IISc as provided under Annexure I and shall not dispute the legality, validity or enforceability of the license granted.

g.  Licensee shall not claim the IP Rights in his/its own name on the plea of having affected any improvements/modifications upon the IP Rights or upon the Licensed Product or on any matter relating to the Technical Information disclosed to it by IISc under this Agreement. All Licensed Product(s) manufactured by the Licensee shall be deemed to have been manufactured under the license hereby granted.

h.   Licensee shall ensure that, in the event of any quality incidents including any medical adverse events, claims or complaints or if any product recall or field corrective action is required as a result of quality or safety issues relating to Licensed Product, the Licensee shall be solely responsible for and take all necessary action to ensure that any Licensed Product that are defective or unsafe are removed from the market and collected from customers who purchased such Licensed Products and that all actions are taken to investigate the root cause of such incidents and to ensure that they do not recur .

i.   The Licensee shall not make any misleading statements or representations in relation to the Licensed Products when marketing and selling Licensed Products other than what is provided under this Agreement. 

j.   The Licensee shall permit the personnel of IISc or its representative or duly authorized officials, at all convenient time to enter into and upon the premises of Licensee where Licensed Product under this license, are manufactured, stocked, sold or used for the purpose of inspecting the same and the manufacture thereof, generally to ascertain that the provision of this license are being complied with and quality of the Licensed Product maintained and fulfilment of other terms and conditions. 

k.   The Licensee shall not oppose or direct or cause any persons to oppose any application seeking intellectual property rights relating to the IP Rights filed by IISc. 

l.    The Licensee hereby agrees to have the sole responsibility for the quality of the Licensed Product developed/manufactured/produced from the IP Rights licensed hereunder and shall use its best efforts to maintain high quality standards of the Licensed Product(s).

m.   The Licensee shall obtain all such insurance policies from reputable insurers as required under the law and shall maintain such insurance for as long as it makes, sells, supplies or supports the Licensed Product(s). 

n.   Licensee shall not sell or offer to sell the Licensed Product at an exorbitant or unreasonably high price. 

10.    TERM AND TERMINATION

10.1   Term: This Agreement shall be effective till 31st December 2022 (“Termination Date”) from the Effective Date of this Agreement but may be renewed at the discretion of IISc for a further term upon receiving a request in writing from the Licensee at least four months prior to the Termination Date. In the event IISc is satisfied with the commercialization progress and subject to the availability of license and additional royalty terms, the Parties shall either extend this Agreement through an amendment or enter into a new agreement.

10.2   Either Party may terminate this Agreement without prejudice to any rights of action accrued to either Party at the date of termination or to any other express obligations in this Agreement of a continuing nature, if the other Party has committed any breach of any of the terms of this Agreement on its part and fails to remedy such breach within thirty (30) business days after written notice shall have been given by the Party not in breach to the other specifying the nature of the breach. 

10.3   This Agreement may be terminated at any time upon the mutual agreement of the  Parties.

10.4   Failure to Commercialise/manufacture/distribute: If the Licensee fails to commercialise/manufacture/distribute the Licensed Product within six months from the Effective Date, IISc at its discretion shall terminate this Agreement. 

10.5   Upon any termination the Licensee shall have six (06) months to complete the manufacture of any Licensed Product that are then works in progress for sale and to sell its inventory of Licensed Product, provided that Licensee pays the applicable royalties. In the event the Licensee requires more time to dispose of the Licensed Product, it shall write to IISc within a period of 7 days’ from the date of termination and furnishes an authenticated and duly certified stock statement of the Licensed Product available with the Licensee and it’s Affiliates and seeks additional time for the disposal of the same, which extension may not be unreasonably withheld.  

10.6   Accrued Liabilities: Notwithstanding termination of this Agreement for any reason shall not release the Licensee from any liability which, at the time of such termination, has already accrued to IISc or which is attributable to a period prior to such termination, nor shall such termination preclude IISc from pursuing any rights and remedies it may have hereunder or at law or in equity which accrued or are based upon any event occurring prior to such termination.

10.7   Return of Information: Upon Termination of this Agreement, the Licensee shall not be entitled to utilize the IP Rights/Technical Information in any manner whatsoever and immediately Licensee shall return all data, software, technical writing, specifications, drawings, Know-how and the like provided and made available to it by IISc, relating to the IP Rights, under the terms of this Agreement, immediately on the date of termination. It is further undertaken by the Licensee that all improvements made by it to the IP Rights up to date of termination, including data, technical writing, specifications etc., shall be provided promptly to IISc, as and when these are achieved and the Licensee shall not claim any or all of the above in any manner whatsoever. IISc shall return all the Confidential Information received from the Licensee, immediately upon termination of this Agreement.

10.8   Survival: The following shall survive any expiration or termination (in whole or in part) of this Agreement: (a) any provision plainly indicating that it should survive; (b) any royalty due and payable on account of activity prior to the termination; and (c) Section 4,5,9,10 and 11

11    GENERAL PROVISIONS

11.1   Applicable law: This Agreement shall be construed, interpreted, and governed by the laws of India. The courts of Bangalore City alone shall have jurisdiction for any injunctive or other equitable relief to prevent or curtail any breach of this Agreement.

11.2   Arbitration:  a) If any dispute arises in connection with this Agreement, a senior representative of the Parties shall attempt, in fair dealing and in good faith, to settle such dispute in the best interests of Parties. If the Parties are not able to reach an amicable settlement, either Party may initiate an arbitration proceeding; b) Any dispute or difference or claim arising out of or in relation to this transaction including construction, validity performance or breach thereof shall, shall be referred to and finally resolved by arbitrator under Arbitration and Conciliation Act of 1996 and any subsequent amendments thereof for time being in force. The Arbitration shall be presided by a sole arbitrator mutually appointed by the Parties. The seat and venue of arbitration shall be Bengaluru. The language to be used in the arbitration proceedings shall be English; c) Each Party may seek provisional measures from Courts at Bengaluru, including provisional injunctive relief, provided that the final resolution of the dispute is through the arbitral tribunal appointed in accordance with this clause 11.2

11.3   Notices: All notices pertaining to or required by this Agreement shall be in writing, shall be signed by an authorized representative and shall be delivered to the addresses indicated on the signature page for each Party with a copy to address mentioned below,  in its original form or scanned copy by e-mail. For the avoidance of doubt other electronic communication shall not qualify as a written notice or document.  
If to IISc, to: 

                          With a copy to

                          The Chairperson

                          Intellectual Property and Technology Licensing office (IPTeL)

                          Bangalore-560012, INDIA

                          Phone No.: +91-80-22932037/2038

                          Fax No.: 91-80-2360-0265

Or to such other person or address as IISc shall furnish to Licensee in writing.

           If to Licensee, with a copy to: 

{aboutMe[1]}

{companyDetails121[1]}

{companyDetails121[2]}

{aboutMe[4]}

 

            Any Party to this Agreement may change its address for the purposes of this Agreement by giving notice thereof in accordance with this Section.

11.4   Binding Effect. This Agreement shall be binding upon and inure to the benefit of the Parties and their respective permitted successors and assigns.

11.5   Entire Agreement: This Agreement, including all the Annexures, sets forth the complete agreement of the Parties concerning the subject matter hereof. No claimed oral agreement in respect thereto shall be considered as any part hereof. No amendment or change in any of the terms hereof subsequent to the execution hereof shall have any force or effect unless agreed to in writing by duly authorized representatives of the Parties.

11.6   Waiver: No waiver of any provision of this Agreement shall be effective unless executed in writing. No waiver shall be deemed to be or shall constitute, a waiver of a breach of any other provision of this Agreement, whether or not similar, nor shall such waiver constitute a continuing waiver of such breach unless otherwise expressly provided in such waiver.

11.7   Severability: Each provision contained in this Agreement is declared to constitute a separate and distinct covenant and provision and to be severable from all other separate, distinct covenants and provisions. It is agreed that should any article, condition or term or any part thereof, contained in this Agreement be unenforceable or prohibited by law or by any present or future legislation then:

a.   such article, condition, term, or part thereof, shall be amended and is hereby amended, so as to be in compliance therewith the legislation or law; but

b.   if such article, condition or term, or part thereof, cannot be amended so as to be in compliance with the legislation or law, then such clause, condition, term or part thereof shall be severed from this Agreement and all the rest of the articles, terms and conditions or parts thereof contained in this Agreement shall remain unimpaired.

11.8   Assignment: IISc may freely assign or transfer this Agreement without Licensee’s consent. Licensee may not assign or transfer this Agreement without the express written consent of IISc. Any purported assignment or other transfer without such consent shall be void and unenforceable.

11.9   Export Regulations: This Agreement is subject in all respects to the Laws and regulations of the Republic of India. The Licensee or its Affiliates will not in any form export, re-export, resell, ship, divert, or cause to be exported, re-exported, resold, shipped, or diverted, directly or indirectly, the Licensed Product or any product or technical data or software of IISc licensed hereunder to any country.

11.10  Force Majeure: Neither Party shall lose any rights hereunder or be liable to the other Party for damages or losses (except for payment obligations) on account of failure of performance by the defaulting Party if the failure is occasioned by war, strike, fire, Act of God, earthquake, flood, lockout, embargo, governmental acts or orders or restrictions, failure of suppliers, or any other reason where failure to perform is beyond the reasonable control and not caused by the negligence or intentional conduct or misconduct of the non-performing Party and such Party has exerted all reasonable efforts to avoid or remedy such force majeure; provided, however, that in no event shall a Party be required to settle any labour dispute or disturbance.

11.11  Counterparts/Facsimiles: This Agreement may be executed in one or more counterparts, all of which taken together shall be deemed one original. A signed copy of this Agreement or any amendments hereto delivered by facsimile, e-mail or other means of electronic transmission (“pdf” or “tif”) shall be deemed to have the same legal effect as delivery of an original signed copy of this Agreement or any amendments hereto unless the applicable law requires the original signature and/or stamp.  In addition, each party expressly agrees to the use and acceptance of electronic signatures, whether digital or encrypted, and that the electronic signature of a party shall have same force and effect as a manual signature. Subject to any provision in this Agreement to the contrary, each Party must bear its own legal and other costs and expenses including stamp duty relating directly or indirectly to the preparation of, and performance of its obligations under, this Agreement.

IN WITNESS WHEREOF, the Parties have caused this Agreement to be signed by their duly authorized representatives on the date and the year first hereinabove written.

 

Signatures
For Indian Institute of Science

Name: 

Designation: Registrar

Date:

 

 

For 

{companyDetails121[1]}

Name: {aboutMe[1]}

Designation: {aboutMe[6]}

Date: 

 

Witness 1

Signature:…………………..

Name: Prof. Praveen C. Ramamurthy

Address:

Department of Materials Engineering

Indian Institute of Science

Bangalore 560012

 

 

Witness 2

Signature:…………………..

Name: 

Address: 

 

 

ANNEXURE - I

 

IP Rights Title:  METHOD AND APPARATUS FOR GENERATING OXYGEN WITH CONTROLLING THE OPERATIONS IN OXYGEN CONCENTRATORS

Technical Information

Bill of materials (component technical specifications)
Schematic drawings
System Block Diagram
Electronics Circuit Diagram
Firmware in .out or .hex files optimized to work on TI MSP430i2041
System: Performance and reliability data
Webinar/Videos illustrating the information shared above
 

 

TECHNICAL SUPPORT PROVIDED FROM IISc

IISc shall within (3 working days) of the signing of the agreement, hand over to the Licensee, Technical Information and documents related to the technology as listed above.
IISc shall demonstrate the Licensed Product on prior booking only once to a maximum of two identified Licensee’s representatives.

ADDITIONAL SUPPORT:

At the request of the Licensee, IISc may extend further product development support through a third party identified by IISc. The Licensee may choose to engage with such third parties to support them in absorbing the technology and doing further development. The financial and other terms of the engagement shall be independently arrived at by the Licensee and the third party concerned.