Additional License Terms (1.27.2025)

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Additional License Terms

The following terms and conditions (the “Terms”) shall apply to any license granted by The Regents of the University of California ("The Regents"), acting through its University of California Los Angeles’ Technology Development Group, to Sponsor pursuant an Agreement executed by the Parties.  The Regents and Sponsor may be referred to individually as Party (“Party”) and collectively as Parties (“Parties”).

  1. Definitions.    

“IP Rights” means, to the extent assigned to or otherwise controlled by The Regents, all technology and intellectual property, regardless of form, including without limitation: all copyrightable works, including any, published and unpublished works of authorship, including without limitation audiovisual works, collective works, computer programs, compilations, databases, derivative works, literary works, mask works, and sound recordings (collectively, “Copyright”); all data, information, test results, measurements, analyses, or other information generated, obtained, or produced by The Regents in relation to this Agreement (collectively, “Data”) inventions and discoveries, including without limitation articles of manufacture, business methods, compositions of matter, improvements, machines, methods, and processes and new uses for any of the preceding items (collectively, “Inventions”); and any United States patent and patent applications, corresponding foreign patents and patent applications, and any reissues, extensions, substitutions, continuations, divisions, and continuation-in-part applications (only to the extent, however, that the continuation-in-part applications are entirely supported in the specification and entitled to the priority date of the parent application) based on and including all the patents and patent applications filed under the Agreement to claim The Regents Inventions (collectively, “Patents”). Notwithstanding the foregoing, IP Rights must be specifically stated, and the specific Intellectual Property must be specified, in the body of the Agreement. 

“License” means the limited license to the applicable IP Rights granted by The Regents to Sponsor under the Agreement. 

  1. Limited Warranty.

    1. The License is provided by THE REGENTS WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY OF ANY KIND, EITHER EXPRESS OR IMPLIED.  THE REGENTS MAKES NO EXPRESS OR IMPLIED REPRESENTATION OR WARRANTY THAT THE SUCH SUBJECT INVENTIONS, COPYRIGHT,  PATENT, OR IP RIGHTS WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK OR OTHER RIGHTS OF ANY OTHER PARTY.

 

  1. Nothing in the Agreement or the Terms is or shall be construed as:

    1. a warranty or representation by The Regents as to the validity, enforceability, or scope of any IP Rights; or

      1. a warranty or representation that any product, method or service made, used, or otherwise exploited by Sponsor or its affiliates under the License is or will be free from infringement of patents, copyrights, or other rights of third parties; or

      2. an obligation to bring or prosecute actions or suits against third parties for patent, copyright, or other infringement; or

      3. conferring by implication, estoppel, or otherwise any license or rights under any IP Rights, including any patent rights, copyright rights, or other rights of The Regents, regardless of whether such patents are dominant or subordinate to any IP Rights; or

      4. an obligation by either Party to furnish any new developments, know-how, technology, or technological information not provided in IP Rights, except as expressly stated in the Agreement. 

       

  2. LIMITATION OF LIABILITY.  THE REGENTS WILL NOT BE LIABLE FOR ANY LOST PROFITS, COSTS OF PROCURING SUBSTITUTE GOODS OR SERVICES, LOST BUSINESS, ENHANCED DAMAGES FOR INTELLECTUAL PROPERTY INFRINGEMENT OR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, PUNITIVE OR OTHER SPECIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE OF THE WORK OR LICENSED PRODUCTS. THE REGENTS WILL NOT BE LIABLE FOR ANY CAUSES OF ACTION OF ANY KIND (INCLUDING TORT, CONTRACT, NEGLIGENCE, STRICT LIABILITY AND BREACH OF WARRANTY) EVEN IF THE REGENTS HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

 

INDEMNIFICATION.  Sponsor shall, and will require its sublicensees to, indemnify, hold harmless and defend The Regents, The Regents’ officers, employees, and agents, the sponsors of the research that led to The Regents Invention or The Regents Copyright, the inventors of the patents and patent applications in The Regents’ IP Rights, the authors of  The Regents Copyright and their respective employers from and against any and all liability, claims, suits, losses, damages, costs, fees and expenses resulting from or arising out of exercise of this Agreement or any sublicense. Indemnification includes but is not limited to products liability. If The Regents, in its sole discretion, believes that there will be a conflict of interest or it will not otherwise be adequately represented by counsel chosen by Sponsor to defend The Regents in accordance with this Section C, then The Regents may retain counsel of its choice to represent it, and Sponsor will pay all expenses for such representation.

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  2. Insurance.  Sponsor shall, at its sole cost and expense, must insure its activities in connection with the work under this Agreement and obtain, keep in force and maintain Commercial Form General Liability Insurance (contractual liability included) with limits as follows:

    1. Each Occurrence: $5,000,000
    2. Products/Completed Operations Aggregate: $10,000,000
    3. Personal and Advertising Injury: $5,000,000
    4. General Aggregate (commercial form only): $10,000,000

  3. USE OF NAMES AND TRADEMARKS.  Nothing contained in the Agreement, or the Terms, will be construed as conferring any right to either Party to use in advertising, publicity, or other promotional activities any name, trade name, trademark, likeness, or other designation of the other Party (including a contraction, abbreviation or simulation of any of the foregoing).  Unless consented to in writing by the authorized licensing office of The Regents, the use by Sponsor of the name “The Regents of the University of California” or the name of any campus of the University of California in advertising, publicity, or other promotional activities is expressly prohibited.

     

  4. License Conditions.   The granting of the License is subject to the following conditions:

    1. The Regents expressly reserves the right (i) for itself and other nonprofit as well as academic research institutions, as well as for profit entities to use IP Rights  for educational, nonprofit, and research purposes (including clinical research and research sponsored by commercial entities) and to publish their respective results, and in the case of for profit entities, for uses that The Regents deems fit, and (ii) for the University of California System (“UC”) to offer and perform clinical diagnostic and prognostic services for patients in the UC healthcare system. 

    2. To the extent any inventions of the IP Rights were conceived or made in the course of research funded in whole or in part by any agency of the U.S. Government, the licenses granted in this Agreement are subject to any rights required to be granted by The Regents to the U.S. Government, including a nonexclusive license to practice or have practiced the invention(s) claimed by the IP Rights throughout the world, as well as any requirements of any agreements between The Regents and any agency of the U.S. Government that provided funding for the subject matter covered by the IP Rights.  Sponsor agrees to comply in all respects and will provide The Regents with all reasonably requested information and cooperation for The Regents to comply with applicable provisions of the same.  Sponsor agrees (and will require all Sublicensees and Wholly-Owned Affiliates to agree in writing) that, unless a valid waiver is obtained from the applicable funding agency at Sponsor’s written request, all Licensed Products will be manufactured substantially in the United States, to the extent required by 35 U.S.C § 204, applicable regulations of Chapter 37 of the Code of Federal Regulations, and the funding agency’s orders, declarations and requirements.

       

  5. Wholly-Owned Affiliates. If applicable and subject to compliance with the terms and conditions of the Terms, Sponsor may exercise its rights granted under the License through its Wholly-Owned Affiliates (so long as they continue to satisfy the definition of “Wholly-Owned Affiliates” meaning such Wholly Owned Affiliate is one hundred percent owned, in all rights and capacities, by Sponsor), provided that (i) Sponsor shall be jointly responsible and liable for the acts, omissions, and liabilities of such Wholly-Owned Affiliates and their compliance with the terms and conditions of this Agreement, including without limitation, if applicable, payment due to The Regents under the Terms; (ii) any acts, omissions, or liabilities of such Wholly-Owned Affiliates under the Agreement as well as the Terms shall be deemed to be those of Sponsor; (iii) any assumption(s) of rights or obligations of Sponsor under the Terms shall by such Wholly-Owned Affiliates shall not relieve Sponsor of any of its obligations under the Terms shall; and (iv) such Wholly-Owned Affiliates are not in violation of any applicable laws or regulations and are capable of complying with the same.  For clarity, except for the limited right for Sponsor to exercise its rights granted under the License through its Wholly-Owned Affiliates, no other affiliates shall have any ability to practice any right under the Terms, unless Sponsor grants such affiliate a Sublicense in accordance with the sublicense provisions of the Terms. 

  6. Sublicenses.  If applicable, The Regents also grants to Sponsor the right to sublicense to third parties the rights licensed to Sponsor under the License (each, a “Sublicense” and each such third party that receives a Sublicense, a “Sublicensee”).  All Sublicenses must be in writing and will be subject to, and contain terms consistent with, the terms in the Agreement as well as the Terms.  No Sublicenses granted under the Terms may, or may purport to, grant any rights greater than or otherwise beyond the scope of the license rights granted to Sponsor under the License.  For clarity, Sponsor will be obligated to pay any fees or amounts due to The Regents irrespective of whether such Sublicensees pay royalties to Sponsor. For the purposes of this Agreement, the operations of all Sublicensees will be deemed to be the operations of Sponsor, for which Sponsor will be responsible and liable.  Sponsor must provide The Regents with a copy of each Sublicense issued, including any agreements and amendments executed in relation thereto, within thirty (30) days of its execution.  Sublicensees will not be deemed to constitute third party beneficiaries under this Agreement.

  7. Patent Infringement. (Applicable where the License is an Exclusive License where the IP Rights include Patent Rights.)
    1. Infringement Notice.  In the event Sponsor learns of infringement of potential commercial significance of any Patent Right, Sponsor will immediately, provide The Regents with written notice, including evidence of such infringement, if available (“Infringement Notice”).  Sponsor will not (and will require its Wholly-Owned Affiliates and Sublicensees to not) notify such infringer regarding such potential infringement until receiving The Regents’ written permission.  For the avoidance of doubt, if Sponsor breaches the foregoing restriction and a declaratory judgment action is filed by such infringer against The Regents, then Sponsor will pay within thirty (30) days of receipt of an invoice for The Regents’ out of pocket costs in defending the IP Rights (including any Patents) as a result of such declaratory judgment.  Both The Regents and Sponsor will use their diligent efforts to cooperate with each other to terminate such infringement without litigation. 
    2.  IP (Patent) Rights Suits and The Regents’ Joinder.  If infringing activity of potential commercial significance by the infringer has not been abated within ninety (90) days following the date the Infringement Notice takes effect, then so long as Sponsor’s license under Section 2.1 of this Agreement (License) remains exclusive and such infringement falls within the scope of the license granted to Sponsor pursuant to this Agreement, Sponsor may institute suit for patent infringement against the infringer.       The Regents may voluntarily join such suit but may not otherwise commence suit against the infringer for the acts of infringement that are the subject of Sponsor’s suit or any judgment rendered in that suit.  Sponsor may not join The Regents as a party in a suit involving the IP Rights without The Regents’ prior written consent.  If The Regents joins such a suit, then Sponsor will pay any costs incurred by The Regents arising out of such suit, including but not limited to, any legal fees of counsel that The Regents selects and retains to represent it in the suit.  Sponsor and The Regents hereby agree that, notwithstanding anything to the contrary contained herein, nothing in this Agreement is or shall be deemed a waiver of The Regents’ sovereign immunity under the Eleventh Amendment, and that The Regents does not waive its sovereign immunity.
    3. The Regents-Initiated Suit.  If, within a hundred and eighty (180) days following the date the Infringement Notice takes effect, infringing activity of potential commercial significance by the infringer has not been abated and if Sponsor has not brought suit against the infringer, then The Regents may institute suit for patent infringement against the infringer.  If The Regents institutes such suit, then Sponsor may not join such suit without The Regents’ consent.
    4. Cooperation.  Any litigation proceedings will be controlled by the Party bringing the suit, except that The Regents may be represented by counsel of its choice in any suit brought by Sponsor.  Notwithstanding the foregoing, any agreement made by Sponsor for purposes of settling litigation concerning infringing activity of potential commercial significance must receive The Regents prior written approval, such approval not to be unreasonably withheld.
    5. Costs & Recovery.  Each Party will cooperate with the other in third party litigation proceedings instituted in relation to this Agreement but at the expense of the Party who initiated the suit (unless such suit is being jointly prosecuted by the Parties, in which case the Parties will agree in advance of initiating the suit how they will share in such expenses).  Any recovery or settlement received in connection with any suit will first be shared by The Regents and Sponsor equally to cover any litigation costs each incurred and next will be paid to The Regents or Sponsor to cover any litigation costs it incurred in excess of the litigation costs of the other.  In any suit initiated by Sponsor, The Regents will receive twenty-five percent (25%) of any recovery in excess of litigation costs and Sponsor will receive the remaining seventy-five percent (75%).  In any suit initiated by The Regents, one hundred percent (100%) of any recovery in excess of litigation costs will belong to The Regents.  Notwithstanding the foregoing, if Sponsor joins such suit at The Regents’ request or is involuntarily joined, The Regents will receive seventy-five percent (75%) of any recovery and Sponsor will receive the remaining twenty-five percent (25%). 
  8. PATENT FILING, PROSECUTION, AND MAINTENANCE. (Applicable where the IP Rights include Patent Rights.)
    1. Ownership and Prosecution.  The IP Rights to any Patent(s) (“Patent Rights”) will be held in the name of The Regents and obtained with counsel of The Regents’ choice.  The Regents will instruct its outside counsel to provide Sponsor copies of all correspondence filed with and received in relation to the Patent Rights from the applicable patent office (e.g., patent applications, office actions, office action responses, etc.) during the term of this Agreement.  Sponsor will hold such information confidential and use such information provided by The Regents or its counsel only for the purpose of advancing the Patent Rights.  While The Regents will control all Patent Actions and all decisions with respect to Patent Actions, it will work closely with Sponsor to incorporate any reasonable comments or suggestions provided by Sponsor with respect thereto, e.g., to amend any patent application under the Patent Rights to include claims reasonably requested by Sponsor to protect the products contemplated to be sold by Sponsor under this Agreement.       Sponsor has the right to provide comments and suggestions regarding Patent Actions in writing to The Regents thirty (30) days prior to the deadline set by the patent office in the territory such Patent Action is to take place (a “Patent Prosecution Request”).
    2. Ongoing Patent Costs.  Sponsor will bear its proportionate share of all out-of-pocket costs incurred by The Regents for Patent Actions incurred during the term of the Agreement (“Patent Costs”).  With respect to Patent Costs incurred during the term of this Agreement (“Ongoing Patent Costs”), such Ongoing Patent Costs will be directly billed to Sponsor by The Regents’ outside counsel.       
    3. Obligations, Termination & Rights.       Sponsor may terminate its License with respect to any or all IP Rights, including any Patent Rights by providing written notice to The Regents (“Termination Notice”).       Regarding termination of Patent Rights, termination of Sponsor’s obligations with respect to a correlating patent application or patent will be effective ninety (90) days after receipt of such  Termination Notice by The Regents.  For the avoidance of doubt and as between the Parties, The Regents shall have no obligation to prepare, file, nationalize, validate, or otherwise pursue any given patent application of the Patent Rights, including, without limitation, the preparation and filing of continuing or divisional applications, national stage entries, validations, or foreign counterpart applications, which Sponsor did not request in a Patent Prosecution Request.  In addition, if Sponsor fails to timely (i) provide a Patent Prosecution Request, or (ii) pay for any Patent Costs as required by the Terms, then such failure will be deemed to be an election by Sponsor not to secure the applicable patent application(s) and patent(s) and The Regents will have the right to terminate the Terms with respect to the applicable patent application(s) and patent(s).  For the avoidance of doubt, immediately effective upon such termination, Sponsor will have no further right or license to any IP Rights, including any Patent Rights, including patent applications and patents, and Sponsor will remain liable for any Patent Costs incurred prior to such termination with respect to such patent applications and patents.
    4. Sponsor’s Small Entity Status.  Sponsor represents and warrants that it is [not] a “small entity” as defined in 37 C.F.R. § 1.27(a)(2) for the purposes of determining whether The Regents is eligible for reduced patent fees.  Sponsor will provide a written update to The Regents upon any change as to whether Sponsor qualifies as a “small entity”.

Upon termination of the Agreement or of the Terms, all Sublicenses will terminate.