PETITION FOR ASSIGNMENT OF PATENT RIGHTS
TO INVENTOR
The undersigned Inventor(s), an employee(s)
of The Pennsylvania State University, seeks to have the patent rights covering
the Invention described in PSU Inv. Disc. No. _________ (which patent rights
are described in Appendix A) (hereafter “Patent Rights”) assigned from The
Penn State Research Foundation (“PSRF”) to them under the terms of University
Policy No. RA-12. Inventor warrants
and represents the following to be true:
1. Compliance
with My Obligations to IPO.
I have complied with all obligations
under University policy to adequately and accurately disclose the Invention and
all corresponding data which would assist the University in identifying and
negotiating with potential licensees.
Similarly, I have complied with the obligation to fully disclose the
usefulness of the Invention and any related inventions which are made or
imminently will be made in my laboratory or facilities. I understand that if I have failed to so
discharge these responsibilities to the University, no assignment will be
considered. Similarly, if PSRF
determines within two years after an assignment that I have failed to discharge
these responsibilities, PSRF will have the right to reclaim title to the
invention, and to rescind any assignment.
2. Agreement
Among Joint Inventors.
PSRF will only assign an equal,
undivided interest in the Patent Rights to all inventors who have an obligation
to assign to The Pennsylvania State University. In such an instance, it is the responsibility of the inventors to
determine in a separate agreement, to which PSRF is not a party, arrangements
for commercialization and apportionment of royalties or revenues.
3. I
understand that PSRF’s assignment of patent rights shall be conditioned upon
the following:
a.
Permission from Sponsors.
Wherever
the invention in question has been funded by either an industrial sponsor or a
government agency, the University must strictly comply with all statutory and
contractual obligations to seek permission, concurrence, or approval of any
such entity prior to assignment. The
University will diligently seek to do so.
I understand that there is never a guarantee that the University will
obtain this consent, and that in any event the process of seeking consent can
take several months. I will cooperate
with any government approval process, including signing any necessary forms,
and abiding by any applicable governmental requirements.
b.
Patent Expenses My
Responsibility.
I will be responsible to ensure that PSRF
receives reimbursement for all outside patent fees incurred by the Intellectual
Property Office in protecting the Invention.
In the event I receive royalties or other income from the commercialization
of the Invention, half of any receipt by inventor(s) of royalties or other
income will be shared with PSRF until it has recovered all of its reasonable
out of pocket expenses incurred in protecting the technology.
Furthermore, in the event there are
patenting fees which are due or coming due after the time I submit this
petition, I agree as a condition of submitting the petition that I will be
responsible for all of those patent costs as they are incurred. Upon request, the IPO will provide me with
an estimate of what these costs will be and when they will be incurred. Even if the petition is denied because of
failure to obtain governmental approvals or any other good faith reason, I
understand I will remain liable for these “interim” expenses.
c.
Exclusion of Related Inventions.
In the event the petition for
reassignment is granted, it will only cover the Patent Rights based upon the
specific Invention covered by the invention disclosure, and will not cover
“future inventions” or “related inventions” which may arise out of my
laboratory, or to any “background rights” that may be needed to practice the
Invention. The only Patent Rights
subject to this petition are those expressly referenced in Appendix A. It will not cover any continuation-in-part
applications where new matter is added that is not covered by the
assignment.
d. Protection
of University from Liability.
Any time the University licenses or
assigns its intellectual property rights, it obtains complete indemnity and
insurance protection from the licensee/assignee. This must remain true in any assignments back to inventors. Furthermore, we agree that any licenses we
enter or agreements we enter will contain the language in Appendix B protecting
PSRF and the University, and that unless PSRF agrees in writing, no product
will be sold by you or any licensee or assignee until adequate insurance
coverage is in place.
e. Non-exclusive
Right to University.
I agree that PSRF and the University
will retain a non-exclusive, royalty-free right to practice the Invention, and
any resulting patents, for their own internal, non-commercial research
purposes, including the right to sublicense to other research entities.
f. Compliance
with Conflict of Interest Policies.
I agree that any further research I
conduct that is related to the Invention will be covered by a Memorandum of
Understanding under guidelines and University Policies RA 11 and RA 12.
4. Royalty.
In
consideration for PSRF’s assignment of Patent Rights to me, I agree that I will
pay to PSRF a one (1%) percent royalty or other income based upon sales of any
product or service covered by Patent Rights.
This obligation to pay royalties shall apply to any licensee, assignee
of Patent Rights, or of any other party making, selling or commercially using
the Patent Rights.
Sworn to and
subscribed
before me this _____ day of Inventor__________________
____________ 20__.
Date:_____________________
_____________________
Notary Public
My Commission
Expires:
Sworn to and
subscribed
before me this _____ day of Inventor__________________
___________ 20__.
Date:_____________________
_____________________
Notary Public
My Commission Expires:
Sworn to and
subscribed
before me this _____ day of Inventor__________________
____________ 20__.
Date:_____________________
_____________________
Notary Public
My Commission
Expires:
[Attach pages
for additional inventors]
APPROVED BY:
______________________________________
Research
Dean Date
THE PENN STATE
RESEARCH FOUNDATION
By:________________________________
Title:_______________________________
Date:_______________________________
PATENT RIGHTS
INDEMNITY AND
INSURANCE REQUIREMENTS
I agree that all licenses, assignments, or other written documents between me and any other entity or person which transfer or grant rights to the subject Invention, including any entity or business owned in full or in part by me, will contain the standard indemnity and insurance provisions below and shall state the University, PSRF, its trustees, directors, officers, employees, affiliates, agents, and students (“Protected Parties”) are agreed to be third party beneficiaries of said agreement. Any such agreement which is entered without said clauses incorporated, and without specifically referencing the Protected Parties as set forth above, shall be null and void, shall constitute a material breach of such agreement, and shall be grounds for University to revoke the assignment of the subject Invention. Under no circumstances will you sell, offer for sale, or allow sales of products incorporating said Invention without said products being covered by appropriate level of product liability insurance, as set forth below:
At all times during the terms and
thereafter, of any license agreement, assignment or other written documents which
transfer or grant rights to the subject Invention, any entity or business owned
in full or in part by any of the Inventor(s), PSRF, its trustees, directors,
officers, employees, affiliates, agents, and students are to be indemnified,
defended and held harmless against all claims, proceedings, demands and
liabilities of any kind whatsoever, including legal expenses and reasonable
attorneys’ fees, arising out of the death of or injury to any person or persons
or out of any damage to property, or resulting from the production,
manufacture, sale, use, lease, consumption or advertisement of any product
incorporating the Invention, or which
falls within the claims of any issued or pending patent of the subject Invention,
or arising from any obligation thereof.
Prior to the first commercial sale of any
product incorporating said Invention, full force and effect commercial general
liability insurance which shall protect the Protected Parties shall be
obtained. Such insurance shall be
written by a reputable insurance company authorized to do business in the
Commonwealth of Pennsylvania, shall list PSRF and The Pennsylvania State
University as an additional insured thereunder, shall include product liability
coverage and shall require thirty (30) days written notice to be given to PSRF
prior to any cancellation or material change thereof. The limits of such insurance shall not be less than One Million
Dollars ($1,000,000) per occurrence with an aggregate of Three Million Dollars
($3,000,000).