Creator:Brigham Young University Date Created:June 6, 1957 Place Created:Provo, Utah Keywords:patent agreement Context:information about patent agreements from Brigham Young University ************************************************** PATENT AGREEMENT BETWEEN BRIGHAM YOUNG UNIVERSITY AND RESEARCH CORPORATION THIS AGREEMENT, made and executed in duplicate origiaal a® of the oth^y" o{ June_1957, by and between BRIGHAM YOUNG UNIVERSITY, a Utah corporation with office* at Provo, Utah, (hereinafter called "UNIVERSITY"), and RESEARCH CORPORATION, a New York corporation with offices at 405 Lexington Avenue, New York 17, New York, (hereinafter called "RESEARCH"): WITNESSETH THAT: A. WHEREAS, UNIVERSITY believes that patentable inventions may be made by members of its faculty, its associates or employees, and desires to have such inventions evaluated for patentability and commercial and scientific utility, and to have patent applications filed thereon where justified; and B. WHEREAS, UNIVERSITY desires that all of these inventions be administered in an effective manner and with due regard for the publie interest; and C. WHEREAS, UNIVERSITY further desires that any net income from these inventions be used to provide means for the advancement 2nd extension of technical and scientific investigation, research, experimentation and education; and ' D. WHEREAS, RESEARCH has had broad experience In the handling of inventions and patents and in making them more available and effective In the useful arts and manufactures i»T)d for scientific oume««» and oth*rwi*es and E. WHEREAS, RESEARCH la a corporation organised for the purpose of providing means for the advancement and extension of technical and scientific Investigation, research and experimentation, no part of the net earnings of which inures to the benefit of any private shareholder er individual: NOW, THEREFORE, in consideration of the mutual covenants and undertakings herein contained, the parties DO AGREE AS FOLLOWS: I. UNIVERSITY'a Duties: UNIVERSITY agrees to: 1) Recommend to members cf its faculty* Its associates and employees, In such cases as UNIVERSITY may In its discretion Aatormlna, that they assign to RESEARCH such inventions as they may make. 2) Afford to RESEARCH, upon request, the advice and assistance of such members of UNIVERSITY's faculty, associates and employees. In parent a upon such invention*, without charge therefor. II. RESEARCHES Duties: RESEARCH agrees at its ewn sole cost and expense to: 1) Accept such of said inventions as it may determine, in its discretion, should be made tha subject of patent applications. 2) File United States patent applications thereupon, and prosecute the same In good faith with the Intention of securing issuance of patents. 3) File corresponding foreign patent applications thereupon, and prosecute the same In good faith with the intention of securing issuance of patent* thereon, and maintain such patents and eause them to be worked, all to the extent that It may in its discretion determine. 4) Use its beet efforts to introduce such inventions, patent applications, and patents into public use, and secure a reasonable revenue therefrom, by issuing licenses thereunder or otherwise. 5) Issue to each icvftntor so assigning to it a letter-agreement, substantially in the form attached hereto a3 Exhibit A, entitling him to participation hereunder. 6) Pay to each such inventor, his heirs, assigns and personal ^ ' " . \ A representatives, not later than March 15 in each year a fixed percentage ^ , j (to be determined_by UNIVERSITY in each case and communicated by it to V RESEARCH) not exceeding a total of fifteen per centum (15%), of all moneys received by it against the preceding calendar year by reason of RESEARCH'S own«nhip »nd 'or m*n*j?«rrjer.f of such inventions, patent applications and patents as he shall W imi'lW ?r >nder the pertinent letter-agreement or lettor-agreemente issued under Article II, paragraph 5, hereof, and furnish to him simultaneously a report showing the computation thereof. 7) Pay to UNIVERSITY, its successors and assigns, not later than March 15 in each year, fifty per centum (50%) of the sum remaining of all moneys received by it against the preceding calendar year by reason of its ownership and/or management of all such inventions, patent applications and patents, following subtraction of (a) all payments made to inventora pursuant to Article II, paragraph 6, hereof, and (b) retention by RESEARCH of any amounts needed to reimburse it for such expenses of (i) filing of foreign patent applications and maintenance and working of foreign patents, and (ii) litigation in courts of record to obtain, or to assert or defend the validity of. any patent, all as RESEARCH and UNIVERSITY may have previously agreed upon in writing. The remaining fifty per centum (50%) shall be retained by RESEARCH for the general purposes of it charter. 8) Furnish simultaneously to UNIVERSITY a report shewing (a) activities during the preceding calendar year in connection with each such invention, and (b) the computation of payments made'under Article II, paragraphs 6 and 7 of this agreement. 9) Maintain at its offices, in usual form, books of record, ledgers and accounts relating to its activities under this agreement, all of which shall be open to examination by UNIVERSITY or its nominees, during usual business hours. 10) Assign to UNIVERSITY or its nominee or nominees, upon '•rTninatlor nf thie agreement, but subject to any letter-agreements which R ES It A15 C H " v^a v Sjv^ tnUr*^ !itr> wi^h ;nventor« with re»pact thereto under Article II, paragraph 5 of this agreement, and subject also to any licenses, grants, working rights, agreements or other contracts theretofore made by RESEARCH with respect thereto, all inventions received by RESEARCH hereunder, and patent applications filed and patents issued thereon. 11) Continue to administer and report as to the licenses, grants, working rights, agreements or other contracts to which tho inventions, patent applications and patents as assigned pursuant to Article II, paragraph 10, of this agreement are subject at the time of such assignment. 12) Issue to any third party any license required by any contract between UNIVERSITY and such third party, entered into prior to acceptance, as to any invention accepted by it under Article II, paragraph 1, of this agreement, and patent applications filed and patents issued thereon. in. UNIVERSITY1 a Reserved Right: UNIVERSITY reserves the right to terminate this agreement upon ninety (90) days' written notice to RESEARCH at any time. IV. RESEARCH'S Reserved Rights: RESEARCH reserves the right to: 1) Terminate this agreement upon ninety (90) days' .written notice to UNIVERSITY. '2) Give written notice to UNIVERSITY of its intention to abandon any patent application or foreign patent subject to this agreement, or not to proceed further with the introduction Into public use of any invention, patent application or patent subject to this agreement, and, unless UNIVERSITY shall, within sixty (60) days after such notice, require the assignment of such Invention, patent application, or patent to UNIVERSITY or its nominee, to abandon or take no further action as to such invention, patent application, or patent. 3) Receive for the general purposes of Its charter thirty per centum (30%) of the amount remaining, from all money received by Its assignee or assignees under Article II, paragraph 10, of this agreement by reason of such assignee or assignees' ownership and/or management of any inventions, patent applications or patents so assigned or thereafter filed or issued theroon, following subtraction and retention therefrom by such assignee or assignors of any amounts needed to reimburse It or them for such expenses of (a) filing of foreign patent applications and maintenance and working of foreign patents, and (b) litigation In courts of record to obtain* or to assert or defend the validity of, any patent, all as RESEARCH and such assignee ox assignees may have previously agreed upon In w*t$ing. 1) Any controversy or claim arising out of or relating to this agreement or the breach thereof, shall be settled by arbitration, in accordance with the Rules, then obtaining, of the American Arbitration Association, and judgment upon the award rendered may be entered in the highest court of the forum, state or federal, having jurisdiction. 2) This agreement ib entered into for the express benefit of, and shall be binding upon, alL members of the fac ulty, - as s ociates, and employees of the UNIVERSITY, their heirs, assigns and personal representatives, who shall accept in writing any letter-agreement'issued by RESEARCH pursuant to Article II, paragraph 5, hereof. IN WITNESS WHEREOF, the parties hereto have caused this agreement to be signed and their corporate sea^s to be hereunto affixed, all by their corporate officers thereunto duly authorized, and as of the day and year first above written. BRIGHAM YOUNG UNIVERSITY, RESEARCH CORPORATION, a New York corporation, Attest: 1) Any controversy or claim arising out of or relating to this agreement or the breach thereof, shall be settled by arbitration, in accordance with the Rules, then obtaining, of the American Arbitration Association, and judgment upon the award rendered may be entered in the highest court of the forum, state or federal, having jurisdiction. 2) This agreement it entered into for the express benefit of, and shall be binding upon, all members of the faculty,. associates, and employees of the UNIVERSITY, their heirs, assigns and personal representatives, who shall accept in writing any letter-agreement*issued by RESEARCH pursuant to Article II, paragraph 5, hereof. IN WITNESS WHEREOF, the parties hereto have caused this / agreement to be signed and their corporate seats to be hereunto affixed, ail by their corporate officers thereunto duly authorized, and as of the day and year first above written. BRIGHAM YOUNG UNIVERSITY, A: it »t: RESEARCH CORPORATION, a New York corporation, N&me and Address of Inventor Dear fclr: In accordance with th