Key Terms in License Agreements

Intellectual property ownership: Duke University provides access to our technologies, patent rights and/or tangible properties through licensing our rights to interested commercial partners. It is important to note that Duke does not sell, assign, or otherwise transfer ownership of Duke University owned intellectual property to companies.
Patent expenses: When Duke University exclusively licenses our patent rights, we require the licensee to reimburse Duke for its historic patent expenses and to pay ongoing patent expenses. These expenses are direct, out-of-pocket costs for OLV, and re-couping these expenses ensures our ability to protect future inventions. This obligation is also a recognition that the License Agreement provides the commercial partner with rights as well as responsibilities. Non-exclusive licenses may also be structured to include the reimbursement of patent costs to Duke.
Financial terms: Each license agreement will be customized to the particular technology/market sector and will contain fees, royalties, and other considerations that are customary within the relevant industry sector.
Indemnification and insurance: Each license agreement, whether exclusive or non-exclusive, will contain contract language that requires the licensee to provide comprehensive indemnification to Duke University, its trustees, officers, employees and students for any liability claim resulting from any actions by the licensee. Licensees will also be required to carry general business liability and/or product liability insurance coverage sufficient to protect against the liabilities that are incurred through the practice of the Duke University technology, and in particular, the manufacture and sale of products. Licensees will be solely responsible for their actions under a license agreement with Duke University.
Diligence requirements: OLV will work with our licensees to develop a commercialization schedule for the development of one or more products based on the Duke University technology. This timeline will be used to develop commercialization milestones within the license agreement. It is important to note that Duke is interested in finding partners that wish to commercialize our technologies. It is not our intention to license our technologies to companies that wish to lock up or “shelve” the technology to keep it away from their competitors.
Termination: Duke’s standard License Agreement allows our Licensee to terminate the Agreement at anytime. Duke University retains the right to terminate the License Agreement (or at its sole discretion, convert an exclusive License Agreement to a non-exclusive License Agreement) for fraud, willful misconduct, and multiple breaches of the Agreement.

After Signing the License Agreement

Licensee obligations: Our standard license agreement calls for the licensee to make at least yearly progress reports on the development of commercial products based on Duke University technologies. Once the licensee has achieved the first commercial sale of Licensed Products, the licensee will owe to Duke periodic sales reports as well as any running royalties or other sale based consideration.
Licensee compliance: The licensee will have multiple responsibilities to perform in order to stay in compliance with the Agreement. OLV is responsible for ensuring Licensee compliance with the terms and conditions of the license agreements.
Licensing consideration: OLV is responsible for collecting all revenue that is received as consideration for the grant of a license to a licensee. OLV will disperse licensing income in accordance with Duke University policies.