This Technology Assignment Agreement is entered into by and among the four companies A, B, C and D, and is effective as of ___.
This Technology Assignment Agreement is entered into by and among the four companies A, B, C and D, and is effective as of ___.
A, B C and D are sometimes referred to herein individually as "Party" and collectively as "Parties".
D provided funding to C for development of certain aspects of such technology, received an undivided interest therein and may provide funding to C in the future.
C assigns its right in such technology and certain future technology to E which assigns its rights to A.
Upon the terms set forth herein, A desires to assign to B such technology while retaining certain license rights therein and to license such retained license rights to C and D.
B agrees to acquire from A such technology subject to ___.
C acknowledges that any new technology that it discovers or develops in the Field (as defined below) during the term of the agreement (with or without funding from B or others) is assigned to B pursuant to the terms set forth herein.
NOW,THEREFORE, in consideration of the foregoing and the mutual covenants contained herein, the Parties agree as follows:
1.Definitions: Unless otherwise defined in this Agreement, the following capitalized terms shall have the following meanings:
"Affiliate" means a person or entity that, directly or indirectly through one or more intermediaries, controls, is controlled by or is under common control with D.
For purposes of this definition, "control" shall mean the direct or indirect ownership of more than fifty percent of the voting stock, equity and income interest of the entity, including the possession, directly or indirectly, to direct the management and policies of the entity.
any patent application claiming an invention useful in the "Field" that was made, conceived or reduced to practice, in whole or in part, prior to the date hereof or at any time during the term of the agreement at C's place by X or any person working in his laboratory or under his supervision; 在本合同签订日之前或在协议期限内的任何时间，部分或全部在丁方方由X本人或在X实验室工作或X指导下的他人产生、构思或完成的，在“领域”内使用的发明所产生的任何专利申请；
any patent application which claims priority, directly or indirectly, to a patent application described in clause (m);
any division or continuation, in whole or in part, of a patent application described in clause (m);]第(m)项中描述的专利申请的任何部分或全部的分案或延续申请；
all foreign patent applications corresponding to the patent applications described in clause (m);
all issued and unexpired patents resulting from any patent application described in clause (m);
all issued and unexpired reissues, reexaminations, renewals or extensions that may be based on any of the patents described in clause (m), and any supplemental protection certificates, substitutions and registrations regarding the foregoing;
Patent Rights shall not include any patent application (and any patent issuing thereon) solely claiming a future invention that was made, conceived and reduced to practice solely with funding from the Chinese government and as to which, by law or Chinese government regulations, the Chinese government shall have sole and exclusive ownership rights.
"Related Technology" includes, without limitation, information, data, ideas, inventions, instructions, processes, formulae, methodologies, know how, other materials, copyrights and other intellectual property rights.
"Territory" means, with respect to clause (m), any country of the world and with respect to clause (n), the country of China only.
2.Assignment. Subject to the License Rights, A hereby sells, assigns, transfers and conveys to B all of A's interest in, and rights under, the agreement and all rights, title and interest in and to the Patent Rights and Related Technology, whether now existing or hereafter arising. including all inventions, invention disclosures and discoveries described in any of the Patent Rights; all rights to apply in any or all countries of the world for patents, certificates of invention or other governmental grants or issuances of any type related to any of the Patent Rights and the inventions, invention disclosures and discoveries therein;
all causes of action (whether known or unknown or whether currently pending, filed or otherwise) and other enforcement rights under, or on account of, any Patent Rights, Related Technology or any of the foregoing, including, without limitation, all causes of action and other enforcement rights and remedies of any kind for past, current and future infringement or misappropriation;
rights to collect royalties or other payments under or on account of any of the Patent Rights, Related Technology or any of the foregoing;
3.Cooperation. Upon B’s request, A, C and D shall each execute and deliver, and shall cause E and the inventors or developers of any of the Patent Rights and Related Technology to execute and deliver, such other instruments and perform such other acts and things as may be necessary or desirable to evidence or effect the assignments.
File, prosecute, maintain, defend and enforce the Patent Rights. Defend and enforce the rights related to the Related Technology.
Any future patent applications covering any Patent Rights that are first filed in China, before the filing of any foreign counterparts in another country, shall be filed in the names of C and B, as applicants, and thereafter an assignment to B exclusively shall promptly be filed with the Chinese patent office; and provided, further, that all foreign counterparts, including the PCT application, shall be filed in the name of B.
4.Exclusive License (Alternative). In the event any Patent Rights or Related Technology is not assignable or otherwise transferable, in whole or in part, pursuant to Section (m) to B by operation of any laws in China, then, subject to the License Rights, A hereby grants to B an irrevocable, exclusive, fully paid up, royalty-free, perpetual, worldwide license (including the right to sublicense) to make, have made, use, develop, sell, offer to sell, export and import products or services under or using any Patent Rights or Related Technology, and to modify, practice or reproduce any Related Technology, to the extent such Patent Rights or Related Technology is not assignable or otherwise transferable and shall effect and perfect such license rights in compliance with applicable laws in China. The foregoing license is exclusive even as to A.
5.Retention of License Rights, the license rights are not for other commercial or for-profit entities, services, activities, or purposes; In the event of a pandemic or other national emergency in China, it is recognized that the Chinese government may, by government action in accordance with Chinese law, have the power to elect to use the Patent Rights and Related Technology in China or to require that license rights therein be given to or shared with other Chinese entities for use in China.
A shall promptly provide to B a copy (together with an English language translation) of any amendment or notice of termination of the licenses.
6.Sublicensing. C shall not have the right to sublicense its License Rights, which have been granted to it under Section (m).
D may sublicense its License Rights that are described in Section (m) only to an Affiliate of D so long as the Affiliate remains an Affiliate of D and shall not sublicense its rights to any other party. 丁方可以将第(m)节中所述的“许可权”再许可给其“关联企业”，只要该“关联企业”一直保持为丁方的“关联企业”，且该“关联企业”不得将该许可权再许可给其它方。
D may sublicense its License Rights that are described in Section (m) to any party. No permitted sublicensee shall have the right to further sublicense its rights.
All permitted sublicenses shall be in writing, and shall be subject to and consistent with the terms of Sections m through n
7.The License Rights shall be terminable at B's option. D shall promptly provide to B a copy of each sublicense of its License Rights; provided, however, that the financial terms contained therein may be redacted from the copy. if providing such a copy is not permitted by D's sublicense agreement because of a mutual nondisclosure agreement between D and the sublicensee, D shall promptly provide B with a written description of the scope, territory, amendment of scope/territory and termination of each sublicense and the name and address of each sublicensee.
For the avoidance of doubt and notwithstanding the sublicensing of its rights and obligations hereunder, D and A shall remain responsible for the full and complete performance of all of the obligations of D and A with respect to the License Rights.
8.Confidentiality. D and C, as licensees of the License Rights, shall keep confidential and not disclose the Patent Rights and Related Technology, except to the extent that any information therein is in the public domain or becomes generally available to the public through no fault of theirs or is required to be disclosed to comply with applicable law, regulations or court order (provided advance notice is given to B); provided, however, that D may disclose information to the extent necessary to make, use or sell products outside the Field under its License Rights, or subject to obligations of confidentiality and nondisclosure, to sublicensees and prospective sublicensees of D’s License Rights.
9.Publication. C and X shall have the right to publish or present information (including posters at a conference) related to the Related Technology (but not copies of any patent applications, in whole or in part), provided such publication or presentation does not disclose confidential or proprietary information of B and such publication or presentation (and any revisions thereto) is submitted to B at least one month prior to submission of such proposed publication or presentation. Upon notice by B that B reasonably believes a patent application relating to an invention should be filed prior to the publication or presentation or that B desires to offer comments or suggested changes to the publication or submission, submission of the publication or presentation may be postponed at the request of B, but in no case longer than two months.
10.Infringement. If C, D or A become aware of any alleged or threatened infringement of the Patent Rights, it shall promptly notify B. B, at its sole discretion, shall have the sole and exclusive right to enforce the Patent Rights. Provided, however, that in the event there is an alleged or threatened infringement of D's exclusive license rights that are described in Section (m), then B and D shall confer regarding all available evidence of the infringement and the manner of addressing such infringement.
B shall keep D promptly informed of any action brought against such infringer and allow D, at its own expense, to join such action, and B shall have the right to retain all damages awarded in such action after the reimbursement of each party's reasonable attorneys' fees. Provided, further, that in the event B has not brought an infringement action within sixty days after notice from D of such alleged or threatened infringement, then D shall have the right, but not the obligation, to take such action with respect to such infringement (but not infringement outside of the rights that are described in Section (m)).
For the avoidance of doubt, B has the sole and exclusive right to enforce the Patent Rights in the Field.
11.Indemnification. Each of D and A shall indemnify and hold harmless B, its employees, officers, directors, shareholders and agents from any liability for damage to or loss of property or injury to or death of any persons arising out of the possession or use of the Patent Rights or Related Technology pursuant to the License Rights.
Upon receipt by B of any claim or suit with respect to which it is to receive indemnification hereunder, B shall promptly notify D or A, as the case may be (together with D, an "Indemnitor"), and permit the Indemnitor to handle and control the defense of such claim or suit. The Indemnitor shall have the full right to settle such claim or suit, but no settlement shall be made which does not include an unconditional release of all claims against B without B's prior written consent.
B shall indemnify and hold harmless C, D, A and their employees, officers, directors, shareholders and agents (each an "Indemnitee") from any liability for damage to or loss of property or injury to or death of any persons arising out of the possession or use of the Patent Rights or Related Technology by B and not by another party pursuant to the License Rights.
12.Termination. B shall have the right to terminate the License Rights if A commits a material breach of this Agreement.
B has the right to terminate D’s License Rights in the event that D, depending on the situation, is in material breach of any of the terms of its License Rights, any of its obligations under this Agreement or any of its representations and warranties made in this Agreement, provided such breach is not cured within forty five days after receipt of notice thereof from B.
13.Disclosure. C shall ensure that X and other inventors or developers of the Patent Rights and Related Technology are available to B, at no charge, for such reasonable periods of consultation and at such times as are mutually convenient; provided, however, a reasonable fee may be charged by C for extra consultation that may occur after the term of the Agreement or with respect to information and materials for which consultation has previously been provided if the extra consultation is not pursuant to the Agreement.
14.PAYMENT. Within fifteen days of the delivery to B of product pursuant to Section (m) and proper documentation for such delivery satisfactory to B, B shall pay to A the amount of Three Hundred Thousand United States Dollars.
It is recognized and agreed that, by virtue of Section (m) (if applicable), B has all rights, at its expense, to file, prosecute, maintain and defend the Patent Rights and, subject to certain rights granted in Section (n), to enforce the Patent Rights; provided, however, that B will first file patent applications for China in the names of C and B as required by Section (m). B has all rights to bring an action against any party that may misappropriate the Related Technology.
15.Representations and Warranties. C and D each hereby jointly and separately represents and warrants to B as follows; provided, however, that any representations and warranties by C as to D’s matters and by D as to C's matters shall be limited to the knowledge of such matters by C or D, as the case may be .
16.Organization. A is a company duly formed, validly existing and in good standing under the laws of the jurisdiction of its formation. C is a public institution of higher education in good standing under the laws of China.
17.Authority. Each of A, C and D has full power and authority to enter into this Agreement and perform its obligations hereunder. Consents . Each of A, C and D has received all consent, approvals and authorizations required from third parties (including any governmental authorities) to enter into this Agreement, perform its obligations hereunder and, in the case of D, make the assignments contained herein.
18.Title. A owns the entire right, title and interest in and to the Patent Rights and Related Technology, including, without limitation, all right, title and interest to sue for infringement thereof. The Patent Rights and Related Technology are, and shall be kept, free and clear of all liens, claims, mortgages, security interests or other encumbrances, except the License Rights.There are no actions, suits, investigations, claims or proceedings threatened or pending that relate to the Patent Rights or Related Technology. There are no existing contracts, agreements, options, commitments, proposals or offers with respect to the Patent Rights or the Related Technology, except the License Rights
19.No Restrictions on Rights. Except for the License Rights, no licenses, interests or other rights in or to any of the Patent Rights or Related Technology have been or shall be granted or retained by A, C, D, or any prior owners or inventors. B will not be subject to any covenant not to sue or similar restrictions on its enforcement or enjoyment of the Patent Rights as a result of any prior transaction related to the Patent Rights or Related Technology.
20.Prior Assignments. The Assignment Agreement is valid, binding and enforceable in accordance with their terms, is in full force and effect, and has not been amended or modified in any way. No breach, default or claim under the Assignment Agreement has occurred.
True and complete copies of the executed Assignment Agreement is attached hereto as Exhibits M. 附件M是已签署的“转让合同”的真实完整副本。
21.No Conflicts. The execution, delivery and performance of this Agreement by each of A, C and D will not conflict with or violate any applicable laws, regulations or governmental approvals and will not conflict with, violate or breach or constitute a default or require any consent under any of its contractual obligations; provided, however, that the Chinese government may have rights to future inventions made, conceived and reduced to practice by C with funding from the Chinese government.
22.Third Parties. A is not aware of any third parties who may have misappropriated or otherwise taken or are using the Related Technology or who would be infringing the Patent Rights if the patent applications included in the Patent Rights were issued as patents with their current claims in all countries of the world. No third party has alleged that it has an interest in the Patent Rights or Related Technology. No third party has alleged that the development, manufacture, use or sale of products based on the Patent Rights or Related Technology has violated or would violate any intellectual property rights owned or controlled by such third party.
X and all other persons working in his laboratory or under this supervision have assigned their interest in the Patent Rights and Related Technology to B and are obligated to cooperate and assist in the protection and enforcement of intellectual property rights related to the Patent Rights and Related Technology. All material information and data with respect to the Patent Rights and Related Technology have been disclosed to B.
23.Patentability. A is not aware of any information or reason that would prevent the patent applications included in the Patent Rights from issuing as patents in their current form or, if issued as patents in their current form, would make the issued patents invalid or unenforceable. 可获得专利。甲方不知晓任何可能阻碍“专利权”中的专利申请在当前形式下被授予专利的信息或原因，或者如果该专利申请在当前形式下被授予专利，甲方不知晓使该专利无效或是不可执行的信息或原因。
24. Enforceability. This Agreement constitutes a valid and binding obligation of A, enforceable in accordance with its terms.
B may disclose such information to the extent necessary to make, use or sell products in the Field or subject to obligations of confidentiality and nondisclosure, to actual or prospective investors, licensees, assignees, partners or other professional advisors.
25.Governing Law. This Agreement shall be governed by and interpreted in accordance with the laws of the State of California (without reference to its choice of law principles). Each party shall not commence or prosecute any action, suit, proceeding or claim arising under or by reason of this Agreement other than in the state or federal courts located in California and hereby consents to the jurisdiction and venue of such courts located in California for such action, suit, proceeding or claim by a Party.
26.Assignment. No Party may assign or transfer this Agreement or any rights or obligations hereunder without the prior written consent of the other Party, except that a Party may make such an assignment without the other Party's consent to an entity that acquires all or substantially all of the business of such Party, whether in a merger, consolidation, reorganization, acquisition, sale or otherwise. This Agreement shall be binding on the successors and permitted assigns of each Party. Any attempted assignment in violation of this Section (m) shall be null and void.
27.Relationship of Parties. The Parties are independent contractors. Nothing in this Agreement shall be construed to create a partnership, joint venture, employment or agency relationship between or among the Parties. No Party shall have any authority, and shall not attempt, to assume or create any obligations on behalf of another Party or to bind another Party.
Waiver. No waiver by a Party of any breach or default of any of the provisions of this Agreement shall be deemed a waiver as to any subsequent or similar breach or default.
28.Severability. If any one or more of the provisions of this Agreement are held to be invalid or unenforceable by any court of competent jurisdiction from which no appeal can be or is taken, the provision shall be considered severed from this Agreement and the Parties shall make a good faith effort to replace such provision with a valid and enforceable one such that the objectives contemplated by the Parties when entering this Agreement, as evidenced by the terms of this Agreement, may be realized.
29.Entire Agreement; Amendment. This Agreement, including its exhibits, constitutes the entire agreement among the Parties with respect to the subject matter hereof and merges and supersedes all prior and contemporaneous agreements, understandings, negotiations and discussions. No oral explanation or oral information by a Party shall alter the meaning or interpretation of this Agreement. No amendments or modifications of this Agreement shall be effective unless made in a writing signed by authorized representatives of all Parties.
30.Sections. The section headings contained in this Agreement are for reference purposes only and shall not affect in any way the meaning or interpretation of this Agreement.
31.Review of Agreement. This Agreement has been submitted to the scrutiny of each of the Parties and their counsel and shall be given a fair and reasonable interpretation in accordance with the words hereof, without consideration or weight being given to its being drafted, in whole or in part, by or for one of the Parties.
32.Notices. Any notice or other communication required or permitted to be given to a Party pursuant hereto shall be sufficiently given if delivered personally or by facsimile or express courier service (expenses prepaid) to the address set forth below or to such other address as the Party shall designate by written notice given to the other Party.
All notices, information, reports and other communications in connection with this Agreement shall be in English.
33.Counterparts. This Agreement may be executed in two or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument.
34.Arbitration. Any dispute, controversy or claim arising out of or relating to this Agreement (a "Dispute") which cannot be amicably settled shall be referred to arbitration held in London, England under the Rules of Conciliation and Arbitration of the International Chamber of Commerce, to the exclusion of any other forum, before a panel of three arbitrators appointed in accordance with such rules.
Each Party shall bear its own expenses in connection with any such arbitration. The costs and expenses of the arbitration shall be borne by the Parties to the arbitration equally unless the determination by the panel of arbitrators includes an award of costs, in which case expenses shall be borne in accordance with such award.
The decision and award of the Court of Arbitration shall be final and conclusive upon the Parties in lieu of all other legal, equitable or judicial proceedings between or among them, and any such award or decision may be entered as a judgment and enforced in any court having jurisdiction over the Party against whom enforcement is sought.
In no event shall a demand for arbitration be made after the date when institution of a legal or equitable proceeding based upon such claim, dispute or other matter in question would be barred by the applicable statute of limitations.
35.Bankruptcy. In the event B is declared bankrupt or insolvent by a court of competent jurisdiction, the Patent Rights and Related Technology shall be reassigned to A.
36.Overdue Payments . Any payments under this Agreement that are overdue shall be charged interest at the prime rate as quoted by the Bank of America on the first business day of each month plus two percentage points or the maximum permitted by applicable law, whichever is less.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be made and executed by their duly authorized officers as of the date first above written.