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Patent Licensing Agreements (PLAs)

Patent Licensing Agreements (PLAs). Mr. Paul Fritz ORTA, Naval Air Warfare Center Aircraft Division Patuxent River (NAWCADPAX), MD. NAWCADPAX Mission. NAWCADPAX Background. NAWCAD Technology Transfer Team. Commander, NAWCADPAX Vice Commander, NAWCADPAX Executive Director, NAWCADPAX

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Patent Licensing Agreements (PLAs)

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  1. Patent Licensing Agreements (PLAs) Mr. Paul Fritz ORTA, Naval Air Warfare Center Aircraft Division Patuxent River (NAWCADPAX), MD

  2. NAWCADPAX Mission

  3. NAWCADPAX Background

  4. NAWCAD Technology Transfer Team • Commander, NAWCADPAX • Vice Commander, NAWCADPAX • Executive Director, NAWCADPAX • Business Office Director/ORTA Lakehurst, NJ – Hans Kohler • Business Office Manager – Ella Tennyson • ORTA PAX – Paul Fritz • ORTA PAX Assistant – Michelle Miedzinski • Patent Counsel – Ron Billi • Security Team – Joyce Foca, Barbara Fenwick • Contracts – Vicki Fuhrmann • Technical Review Lead – Fred Kuster • CSA Lead – Rick Tarr • CSA Assistant – Tina Guy • SBIR – Carol Van Wyk • IP/T2 Class Scheduler – Robin Joy • Marketing Team • Geo-Centers – Tim Wittig, Dick Stern • TechLink • NAWCAD Reserve Unit 0193

  5. Patent License Agreement (PLA)

  6. What is Technology Transfer?

  7. Technology Transfer

  8. What company filed the first patent for a microwave oven that cooked food? • DuPont • IBM • General Electric • Raytheon

  9. What company filed the first patent for a microwave oven that cooked food? • Raytheon

  10. When was the first GPS satellite launched? • 1966 • 1978 • 1981 • 1983

  11. When was the first GPS satellite launched? • 1978

  12. How many GPS satellites are currently in operation? • 16 • 8 • 24 • 32

  13. How many GPS satellites are currently in operation? • 24

  14. What is the maximum wall-height that a HUMMER® can scale? • 15 inches • 22 inches • 31 inches • 38 inches

  15. What is the maximum wall-height that a HUMMER® can scale? • 22 inches

  16. Night Vision Goggles

  17. What is a US Patent?

  18. What is a License?

  19. Authorities

  20. Types of Licenses

  21. Non-Exclusive License

  22. Exclusive or Partially Exclusive License

  23. License Policy

  24. Application for License to Practice Invention

  25. Business Plan Policy

  26. Time Line

  27. Patent License Agreement

  28. License Outline Introduction Page Preamble Article I Definitions Article II LICENSE Grant Article III LICENSEE’s Performance Article IV Royalties Article V Patent Marking and Non-endorsement Article VI Representation and Warranties Article VII Reports Article VIII Modification and Termination Article IX Notice Article X Sublicensing Article XI Reservations of Rights Article XII Litigation Signature page

  29. Licensing Terminology • Preamble

  30. Preamble Example 1 • WHEREAS LICENSOR has an assignment of title to the invention disclosed and claimed in: • PCT Application Number: PCT/US 01/45434 for “Corrosion Resistant Coatings for Aluminum and Aluminum Alloys” in China, Japan and contracting states of the European Patent Convention, and • PCT Application Number: PCT/US 02/35599 for “Post-Treatment for Anodized Aluminum” in China, Japan and contracting states of the European Patent Convention, and • PCT Application Number: PCT/US 02/35490 for “Post-Treatment for Coated Substrates” in China, Japan and contracting states of the European Patent Convention; and

  31. Preamble Example 2 • WHEREAS LICENSOR has an assignment of title to the invention disclosed and claimed in: • U.S. Patent Number 6,375,726 in the United States issued on 23 April 2002, for “Corrosion Resistant Coatings for Aluminum and Aluminum Alloys” (PCT Application Number: PCT/US 01/45434 in Canada), and • U.S. Patent Number 6,511,532 in the United States issued on 28 January 2003, for “Post-Treatment for Anodized Aluminum” (PCT Application Number: PCT/US 02/35599 in Canada and Mexico), and • U.S. Patent Number 6,521,029 in the United States issued on 18 February 2003, for “Pretreatment for Aluminum and Aluminum Alloys”, and • U.S. Patent Number 6,527,841 in the United States issued on 4 March 2003, for “Post-Treatment for Metal Coated Substrates” (PCT Application Number: PCT/US 02/35490 in Canada and Mexico); and

  32. Licensing Terminology • Recitals (“whereas” clause)

  33. Licensing Terminology • Article I • Definitions

  34. Definitions Example 1 • The following definitions shall apply to the defined words where such words are used in this LICENSE: a. The “Licensed Patents means • PCT Application Number: PCT/US 01/45434 for “Corrosion Resistant Coatings for Aluminum and Aluminum Alloys” in China, Japan and contracting states of the European Patent Convention, and • PCT Application Number: PCT/US 02/35599 for “Post-Treatment for Anodized Aluminum” in China, Japan and contracting states of the European Patent Convention, and • PCT Application Number: PCT/US 02/35490 for “Post-Treatment for Coated Substrates” in China, Japan and contracting states of the European Patent Convention b. A “Licensed Invention” means an invention claimed in PCT Application Number: • PCT Application Number: PCT/US 01/45434, PCT Application Number: PCT/US 02/35599, and PCT Application Number: PCT/US 02/35490;

  35. Definitions Example 2 • The following definitions shall apply to the defined words where such words are used in this LICENSE:  a. The “Licensed Patents” means • U.S. Patent Number 6,375,726 in the United States issued on 23 April 2002, for “Corrosion Resistant Coatings for Aluminum and Aluminum Alloys” (PCT Application Number: PCT/US 01/45434 in Canada), and • U.S. Patent Number 6,511,532 in the United States issued on 28 January 2003, for “Post-Treatment for Anodized Aluminum” (PCT Application Number: PCT/US 02/35599 in Canada and Mexico), and • U.S. Patent Number 6,521,029 in the United States issued on 18 February 2003, for “Pretreatment for Aluminum and Aluminum Alloys”, and • U.S. Patent Number 6,527,841 in the United States issued on 4 March 2003, for “Post-Treatment for Metal Coated Substrates” (PCT Application Number: PCT/US 02/35490 in Canada and Mexico)

  36. Net Selling Price Example 1 • The “Net Selling Price” shall mean the invoice price of the Royalty-Bearing Product sold and not returned f.o.b. factory, before deduction of trade or quantity discounts or any other items, including, but not limited to, freight allowances, cash discounts or commissions. A Royalty-Bearing Product will be considered to be sold when shipped to a customer

  37. Cost of Patent Protection Example 1 • “Cost of Patent Protection” means all costs incurred by LICENSOR on or after January 1, 2006 for maintaining patent protection for granted patents in the Licensed Territory from the PCT applications noted within the definition of Licensed Patents;

  38. Territory Definitions Example 1 • “North America” means the United States of America including its territories and possessions, the Dominion of Canada and the United Mexican States. • “United States” means the United States of America, its territories and possessions, the District of Columbia, and the Commonwealth of Puerto Rico; • “Canada” means the Dominion of Canada • “Mexico” means the United Mexican States • “North America” means collectively the United States, Canada and Mexico;

  39. Territory Definitions Example 2 • “Licensed Territory” means People’s Republic of China (CH), Japan (JA) and contracting states of the European Patent Convention which are the Republic of Austria (AT), Kingdom of Belgium (BE), Republic of Bulgaria (BG), Swiss Confederation (CH), Republic of Cyprus (CY), Czech Republic (CZ), Federal Republic of Germany (DE), Kingdom of Denmark (DK), Republic of Estonia (EE), Kingdom of Spain (ES), Republic of Finland (FI), French Republic (FR), United Kingdom of Great Britain and Northern Ireland (GB), Hellenic Republic (GR), Republic of Hungary (HU), Ireland (IE), Italian Republic (IT), Principality of Liechtenstein (LI), Grand Duchy of Luxembourg (LU), Principality of Monaco (MC), Kingdom of the Netherlands (NL), Republic of Poland (PL), Portuguese Republic (SO), and the Republic of Turkey (TR), to the extend that patent protection is achieved, LICENSEE elects such countries and pay the Cost of Patent Protection in accordance with Articles III and IV for such countries;

  40. Licensing Terminology • Article III • Licensee’s Performance

  41. Licensing Terminology Example 1 • The LICNESEE shall pay to the LICENSOR a nonrefundable licensing fee in the amount of fifty thousand dollars ($50,000), which shall accrue upon the execution of the LICENSE by LICENSEE and shall be due and payable as follows: • Ten thousand dollars ($10,000) immediately upon the execution of this LICENSE by LICNESEE; • Fifteen thousand dollars ($15,000) no later than three (3) months after execution of this LICENSE by LICENSEE; and • The balance of twenty five thousand dollars ($25,000) no later than six (6) months after execution of this LICENSE by LICENSEE.

  42. Licensing Terminology Example 2 • LICENSEE shall pay to the LICENSOR a non-refundable licensing fee in the amount of fifty thousand dollars ($50,000), which shall accrue upon the execution of the LICENSE by LICENSEE and shall be due and payable as follows: • Twenty five thousand dollars ($25,000) immediately upon execution of this LICENSE by LICNESEE; and • Twenty five thousand dollars ($25,000) no later than one (1) year after execution of this LICENSE by LICENSEE; and  • LICENSEE agrees to pay to LICENSOR one half of any licensing fee collected from any sublicensee.

  43. Licensing Terminology • Article IV Royalties • Upfront payment • Running royalty • Topping payments • Sublicensing payments

  44. Royalties and Fees

  45. Royalties and Fees • License Fees can include: • Upfront fees • Royalties • Combination of Upfront fees and Royalties

  46. Royalties and Fees • Upfront Fees

  47. Royalties and Fees • Royalties

  48. Royalties and Fees • Annual Minimum Royalties

  49. Royalty Rates

  50. Royalties Example 1 • LICENSEE shall pay a royalty to LICENSOR in accordance with the following: • a. LICENSEE shall pay to LICENSOR an amount equal to five percent (5%) of the Net Selling Price of each Royalty-Bearing Product made, used, or sold by LICENSEE or its sublicensees and five percent (5%) of the net selling price of any other item(s) made, used with or sold in conjunction with a Royalty-Bearing Product made, used, or sold by LICENSEE or its sublicensees. • b. LICENSEE shall pay to LICENSOR an amount equal to five percent (5%) of the dollar amount charged for all services, excluding Operational and Maintenance (O&M) services, provided by LICENSEE, or its sublicensees, relating to a Royalty-Bearing Product. Such services shall include services provided by LICENSEE, or its sublicensees, for the expansion, upgrade or modification of an existing fully operational system.

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