UC Davis Sample Template for Exclusive Patent License Agreement
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infringement of, a Valid Claim of any issued, unexpired patent under Patent Rights, or (b) is
covered by a claim in a pending patent application under Patent Rights. As used in
Subparagraph (b) of this Paragraph 1.3, “covered by a claim in a pending patent application”
means that such use or practice would, but for the license granted pursuant to this Agreement,
constitute infringement, contributory infringement, or inducement of infringement, of such claim if
such claim were issued.
1.4 “Licensed Product” means any product, material, kit, or other article of manufacture or
composition of matter, the making, use, Sale, offer for Sale, or import of which (a) but for the
license granted pursuant to this Agreement, would infringe, or contribute to or induce the
infringement of, a Valid Claim of any issued, unexpired patent under Patent Rights, or (b) is
covered by a claim in a pending patent application under Patent Rights. As used in
Subparagraph (b) of this Paragraph 1.4, “covered by a claim in a pending patent application”
means that such making, use, Sale, offer for Sale, or import would, but for the license granted
pursuant to this Agreement, constitute infringement, contributory infringement, or inducement of
infringement, of such claim if such claim were issued.
1.5 “Licensed Service” means a service provided using Licensed Products or Licensed Methods,
including, without limitation, any such service provided in the form of contract research or other
research performed by Licensee on behalf of a third party.
1.6 “Licensed Territory” means the United States and its territories and possessions, and any foreign
countries where Patent Rights exist.
1.7 “Net Sales” means the gross invoice price charged by, and the value of non-cash consideration
owed to, Licensee or a Sublicensee for Sales of Licensed Products and Licensed Services, less
the sum of the following actual and customary deductions to the extent applicable: (a) cash,
trade or quantity discounts; (b) sales, use, tariff, import or export duties, or other excise taxes,
when included in Sales, but not value-added taxes assessed on (or income taxes derived from)
such Sales; and (c) allowances or credits to customers because of rejections or returns. For
purposes of calculating Net Sales, a Sale by Licensee to a Sublicensee for end use by the
Sublicensee will be treated as a Sale at Licensee’s list price.
1.8 “Patent Rights” means The Regents' rights in the claims of the following: __________________,
entitled “_____________________________,” and “__________________________________,”
filed on _________________________________ and _______________________________,
respectively, by Drs. ____________________________ and assigned to The Regents;
continuing applications thereof, including divisions, substitutions, extensions and continuation-in-
part applications (only to the extent, however, that claims in the continuation-in-part applications
are entitled to the priority filing date of the applicable above-listed parent patent application);
patents issuing on said applications or continuing applications; reissues of such patents; and
corresponding foreign patents or applications of any of the foregoing.
1.9 “Sale” means the act of selling, leasing, or otherwise transferring or providing Licensed Products
and Licensed Services for any consideration. Correspondingly, “Sell” means to make or cause to
be made a Sale, and “Sold” means to have made or caused to be made a Sale.
1.10 “Sublicense” means a sublicense under this Agreement.
1.11 “Sublicensee” means a sublicensee under this Agreement.
1.12 “Sublicense Agreement” means a sublicense agreement under this Agreement.
1.13 “Valid Claim” means a claim of a patent in any country, which claim (a) has not expired and (b)
has not been held to be invalid by a final judgment of a court of competent jurisdiction from which
no appeal can be or is taken.