EXCLUSIVE SOFTWARE AND INTELLECTUAL PROPERTY LICENSE AGREEMENT WITH EQUITY

This EXCLUSIVE SOFTWARE AND INTELLECTUAL PROPERTY LICENSE AGREEMENT WITH EQUITY (referred to as “Agreement”) made as of the [Day] of [Month], [Year] (the “Effective Date”) is entered into by and between [Company Name], a [Type of Company] duly organized and existing under the laws of the state of [State of Incorporation], having its principal place of business at [Address] (hereinafter referred to as “Licensee”) and the Board of Trustees of Southern Illinois University, a body politic and corporate of the State of Illinois, by and on behalf of [SIU Campus], located at [Campus Location] (hereinafter referred to as “University”).

WHEREAS, University is the owner of the Intellectual Property Rights and Software defined below;

WHEREAS, Licensee is in the business of designing, manufacturing, marketing, and selling [Description of Development/Commercialization] products and services;

WHEREAS, Licensee desires to include the technology covered by the Intellectual Property Rights and Software in certain of its products and services. Furthermore, Licensee desires to develop and advance a product or products or services covered by the Intellectual Property Rights and Software;

WHEREAS, Licensee desires to obtain an exclusive license to the Intellectual Property Rights and Software;

WHEREAS, University is willing to grant such an exclusive license to the Intellectual Property Rights and Software upon the terms and conditions contained in this Agreement;

NOW, THEREFORE, in consideration of the premises and faithful performance of the mutual promises contained in this Agreement, the Parties agree as follows:

ARTICLE 1. DEFINITIONS

For the purposes of this Agreement, the following terms shall have the meaning set forth below:

1.1	“Affiliate” means, as to any person or entity, any other person or entity that directly or indirectly controls, is controlled by, or is under common control with such person or entity, and is identified in writing to the University. For purposes of the preceding sentence, “control” means the right to control, or actual control of, the management of such other entity, whether by ownership of securities, by voting rights, by agreement or otherwise.

1.2	“Derivative Work” means any translation (including translation into other computer languages), modification, correction, addition, extension, upgrade, improvement, compilation, abridgment or other form in which an existing work may be recast, transformed or adapted.

1.3	“Documentation” means the End User Documentation and the System Documentation.

1.4	“End User” means any person who licenses, purchases, or otherwise obtains the Product or has access to or use of the Products (including, but not limited to, by means of online access) directly or indirectly from Licensee.

1.5	“End User Agreement” means a written agreement between Licensee or a Sublicensee and an End User that includes the Mandatory Terms and governs End User's use, access to, or receipt of the Product.

1.6	“End User Documentation” means any user manuals, handbooks and other written or electronic material relating to the Software or Product that are intended for use by End Users.

1.7	“Equity Rights” means the capital stock and related rights granted to the University by Licensee and other parties as set forth herein.

1.8	“Evaluation Agreement” means the written agreement between Licensee or a Sublicensee and an End User that includes the Mandatory Terms and governs End User's evaluatory use, access to, or receipt of the Product, which will not, in any event permit the End User to use the Product for longer than thirty (30) days without entering into an End User Agreement.

1.9	“Field” means the following field of use: .

1.10	“Intellectual Property” means any patent, patent application, copyright, trade secret, know-how, or other relevant items identified and listed in Schedule 1, and any divisions, continuations, reissues, renewals, re-examinations, foreign counterparts, substitutions or extensions of said patents and patent applications to which University has ownership rights comparable to those in said patents and patent applications.

1.11	“Intellectual Property Costs” means out-of-pocket expenses incurred prior to and during the term of this Agreement in connection with the preparation, filing, prosecution and maintenance of the Intellectual Property Rights. Such Intellectual Property Costs include without limitation the fees and expenses of attorneys and patent agents, filing fees and maintenance fees, and costs associated with preparing, filing, and prosecuting the Intellectual Property Rights, but exclude costs involved in any patent infringement claims.

1.12	“Intellectual Property Rights” means all of the University’s rights in the Intellectual Property.

1.13	“Mandatory Terms” means: (i) the terms set forth in Schedule 2 attached to this Agreement that Licensee and Sublicensees must include in all End User Agreements and Evaluation Agreements; and (ii) any mandatory terms for third party products incorporated into the Software, which terms University may provide to Licensee.

1.14	“Net Sales” means all cash amounts and the fair market value of all other consideration received due to or by reason of the sale, distribution or use of Products or Services, less the following deductions: (i) customary trade, quantity or cash discounts and rebates actually granted by Licensee; (ii) refunds, replacements or credits given to purchasers for return of Products for which a royalty was paid under this Agreement; and (iii) unreimbursed freight and other transportation costs, including transportation insurance charges, and unreimbursed duties, tariffs, sales and excise taxes actually paid.

1.15	“Object Code” means the machine-readable, compiled code for the Software that is ready to run on a computer.

1.16	“Parties” means both Licensee and University, and the term “Party” shall mean either of them.

1.17	“Product” means: (i) any and all computer programs created by or on behalf of Licensee that incorporate, integrate, or include part or all of the Software; (ii) all Derivative Works based on the Software; (iii) all Upgrades; (iv) all Documentation related to the foregoing and all Derivative Works based on the Documentation; and (v) any product or process that, in whole or in part, absent the license granted hereunder, would infringe one or more claims of the Intellectual Property Rights.

1.18	“Royalty Period” means one of two six (6) month periods during a calendar year, the first beginning on January 1 and ending June 30 and the second beginning on July 1 and ending December 31, except that the initial Royalty Period shall begin on the Effective Date and end on December 31 of that same calendar year.

1.19	“Services” means services provided by Licensee (or Sublicensee) to its customers that require use of or are based on the Software or Products, including: (i) customer support services; (ii) the creation and distribution of Upgrades (including both basic and major software maintenance services, such as error corrections, incidental or substantial structural, functional, or performance improvements, and additions); (iii) consulting and design services to model and simulate particular designs for customers; (iv) customization, modification, and/or integration of Products for specific customers; (iv) direct training; and (v) workshops and/or seminars.

1.20	“Software” means the computer program that is described in Schedule 1, in Source Code and/or Object Code as specified in Schedule 1.

1.21	“Source Code” means the human-readable program commands for the Software that are compiled to form the Object Code.

1.22	“Sublicense” means a license granted by Licensee to a third party that grants some or all of the rights acquired by Licensee hereunder. For the purposes of this Agreement, Sublicense shall exclude End User Agreements.

1.23	“Sublicensee” means any person or entity to which a Sublicense is granted hereunder. For the purposes of this Agreement, Sublicensee shall exclude End User.

1.24	“System Documentation” means any literature, programmer's notes and other materials that specify or describe the functions, characteristics, performance, structure, sequence, organization, and operation of the Software or Product, and any updates, enhancements, extensions, or revisions thereto.

1.25	“Territory” means the following territory: .

1.26	“Upgrade” shall mean: (i) any modification, correction, fix, enhancement, new version, or change made in or to the original Product created by or on behalf of Licensee, whether sold separately or provided to End Users subscribing to the Services; or (ii) any options, upgrades, new functionality or any functionality not previously licensed by an End User that is related to the Product, whether sold separately or provided to End Users subscribing to the Services.

ARTICLE 2. GRANT OF LICENSE

2.1.	Grant. Conditioned upon Licensee’s continuing compliance with the terms and conditions of this Agreement, University hereby grants to Licensee, within the Field and within the Territory, subject to Article 2.2 below, the exclusive right to: (i) use the Intellectual Property Rights to identify, develop, make, have made, use, import, export, lease, sell, have sold and offer for sale, Products; (ii) use, promote, distribute, sell, install, maintain, support and otherwise market the Object Code version of the Software as part of or bundled with Products to End Users; (iii) create and have created on its behalf Derivative Works based on the Software and Documentation and/or bundle or integrate the Software with other software, in order to create Products; (iv) copy the Software and Documentation as necessary to exercise its rights pursuant to this Agreement, provided that all such copies of Software shall contain the copyright notices and any other proprietary legends (if applicable) that appear on Software or System Documentation; (v) directly or indirectly, through either itself or through an authorized intermediary, provide Services to third parties; and (vi) only if rights to Source Code are specified in Schedule 1, use, copy, create, and have created on its behalf Derivative Works based on the Source Code version of the Software solely for internal business purposes in order to create Products. Subject to all applicable law and the applicable provisions of this Agreement, the license granted pursuant to this Agreement shall include the exclusive right to grant Sublicenses of the rights granted to Licensee herein. Licensee covenants and agrees not to use the Intellectual Property Rights as granted under Article 2.1 outside the Territory or outside the Field and further agrees that any and all such actions shall be considered a material breach of this Agreement.

2.2.	Grant Back to University and Reservations. University hereby agrees to refrain from directly or indirectly exercising or granting any rights which are inconsistent with the license rights granted in this Agreement. Licensee grants back to University a perpetual, non-exclusive and non-transferable right of research and teaching within the Field and Territory. University shall be free to publish information relating to Intellectual Property in scientific journals and other academically-relevant forums, including via presentations at conferences and seminars. In furtherance of this publication right, University will use its reasonable efforts to assure that Licensee is provided with a copy of any manuscript prior to its submission for publication, to permit Licensee to evaluate such manuscript in order to determine whether it contains additional patentable subject matter relating to Intellectual Property. At the request of Licensee, the submission of the manuscript for publication will be delayed in order to enable the preparation and filing of a patent application on any patentable subject matter described in the manuscript. In implementation of the foregoing, within thirty (30) days after receipt of a manuscript intended for publication, Licensee will notify University in writing whether or not a patent application would be filed in accordance with the terms and conditions of this Agreement. If at the end of such thirty (30) day period, the Parties are not able to agree to a mutually acceptable date for submission of the manuscript for publication to enable the implementation of the decision to file a patent application, University shall notify Licensee in writing of its intention to submit such manuscript for publication without Licensee’s approval and may do so sixty (60) days after giving such notice.

Because the Intellectual Property was developed in part under funding by the [Funding Agency], the Intellectual Property is subject to overriding obligations to the United States Government, including those specified in 35 U.S.C. §§ 200-212 and applicable governmental implementing regulations. Specifically, the United States Government requires a non-transferable, paid up, non-exclusive, irrevocable license to use the Intellectual Property throughout the world. University shall be solely responsible for executing such license and complying with all other applicable reporting and licensing requirements to the United States Government under this Article 2.2. Licensee shall work with University in perfecting the non-transferable, paid up, non-exclusive, irrevocable license to the United States Government as reasonably required by University. [Note: This entire paragraph is not applicable and should be deleted if Intellectual Property Rights and Software were not federally funded.]

2.3.	Sublicenses and End User Agreements. Licensee shall have the exclusive right to grant Sublicenses. Licensee shall provide written notice to University of any proposed Sublicense relating to the Intellectual Property within thirty (30) days of the grant date. Licensee shall remain responsible for payment to University of proceeds of sublicensing according to Article 3.3. Licensee may not sublicense unless the terms of the Sublicense are consistent with all the terms of this Agreement.

In the event that Licensee sublicenses any of its rights to any Sublicensee, such Sublicense shall contain terms no less protective of the University’s rights than those set forth herein and shall not be in conflict with this Agreement, and Licensee shall provide a complete copy of all Sublicenses entered into by Licensee within five (5) business days of University’s request. Sublicensees may not further sublicense and may only grant rights to End Users pursuant to this Agreement and under End User Agreements or Evaluation Agreements. Licensee further agrees to provide University with a copy of each report received by Licensee from a Sublicensee pertinent to any royalties or other sums owing to Licensee. Licensee shall remain responsible for payment to University of proceeds of sublicensing. Licensee shall not receive from Sublicensee anything of value in lieu of cash payments in consideration for any Sublicense without: (i) including the value as Net Sales; or (ii) the prior written consent of the University. Licensee shall be fully responsible to University for any breach of the terms of this Agreement by a Sublicensee. Licensee shall ensure that all Sublicenses and End User Agreements expressly state that the University is an intended third party beneficiary thereof.

Upon termination of this Agreement for any reason, all Sublicenses shall terminate except that if a Sublicensee is in compliance in all material respects with the terms of its Sublicense in effect on the date of termination, such Sublicense shall terminate six months from the date of termination of this Agreement. The University will grant such Sublicensee that so requests, a license with royalty terms and such use rights and other terms as are acceptable to the University. In no event shall University have any obligations of any nature whatsoever with respect to: (i) any past, current or future obligations that Licensee may have had, or may in the future have, for the payment of any obligations owing to Sublicensee pursuant to such Sublicense; (ii) any past obligations whatsoever; and (iii) any future obligations to Sublicensee beyond those to Licensee as set forth herein.

Subject to and conditioned on Licensee’s compliance with the restrictions and obligations contained in this Agreement, Licensee may distribute and sublicense the Source Code and Object Code version of the Products and the End User Documentation to End Users, and permit Sublicensees that are in compliance in all material respects with the terms of their Sublicenses to do the same, provided that Licensee or Sublicensee as applicable shall require that End Users agree to be bound by the confidentiality obligations set forth in Article 5.6 below with respect to the portion of the Source Code of the Software that is embodied in the Source Code version of the Product. Licensee or Sublicensee as applicable will provide the Products in its own name and on its own behalf.

Licensee and Sublicensees may not sublicense or otherwise distribute the Software on a stand-alone basis to End Users, but only as an integral component of Products.

End User Agreements. Licensee and Sublicensee shall not grant any sublicenses in, or otherwise distribute or provide any third party access to stand-alone Products except pursuant to the terms and conditions of: (i) a valid End User Agreement; or (ii) a valid Evaluation Agreement in the event that the Product is provided to the End User solely for evaluation purposes. Licensee may use, and shall require Sublicensees that are permitted to sublicense stand-alone Products to use, either the Mandatory Terms provided by University, or Licensee’s or Sublicensee’s own terms provided that such terms protect University’s rights to the same extent as this Agreement in general and the relevant Mandatory Terms in particular, including substantially the same limitations on the scope of the license, confidentiality protections, and limitations on warranty and liability. If Licensee or Sublicensee modifies the Mandatory Terms, or substitutes Licensee’s or Sublicensee’s own terms for the Mandatory Terms, such Licensee or Sublicensee will indemnify and hold harmless University, any of its Affiliates and any of its respective agents against any damage, loss, liability or expense, including reasonable attorneys’ fees, that any such parties may incur as a result of such modification or substitution (provided that such damage, loss, liability, or expense would have been avoided by use of the Mandatory Terms without modification or substitution). Licensee and Sublicensee each will use best efforts to enforce against their End Users within the Territory the provisions of any End User Agreement or Evaluation Agreement to the extent that such provisions affect University’s rights or interests.

2.4	Delivery. University will deliver to Licensee one (1) copy of the Software and any Documentation that University has in its possession and control, in the best form available as of the Effective Date, on a schedule and in a format to be mutually agreed upon between University and Licensee, in Source Code and/or Object Code form as specified in Schedule 1.

ARTICLE 3. COMMERCIALIZATION, PAYMENTS AND REPORTS

3.1	License Fees. Within thirty (30) days of date of invoice from University, Licensee shall pay University a nonrefundable licensing fee and annual licensing fees thereafter at the times and in the amount(s) as follows. A nonrefundable Licensing Fee of , shall be due on the Effective Date. Annual Licensing Fees shall be due as follows: due on first anniversary of Effective Date, due on second anniversary of Effective Date, due on third anniversary of Effective Date, and due on fourth and each subsequent anniversary of Effective Date.

3.2.	Payments on Licensee’s Net Sales. Licensee, or Licensee on behalf of its Affiliates or Sublicensees, shall pay University a royalty of on Licensee’s Net Sales within Territory. This royalty shall cease at the expiration of the last surviving Intellectual Property. Furthermore, the Parties recognize that Intellectual Property developed at University is valuable and warrants additional consideration for its use for the commercialization of Products and Services. As such, a second royalty of shall be payable to University on a Product or Service that uses Intellectual Property throughout the world, regardless of whether parts of Intellectual Property become publicly available.

3.3	Payments on Sublicensee Revenues. Licensee will pay to University the following payments: (i) for sales of Products and/or Services by third party Sublicensees, an amount of revenue equal to the amount University would have received from Licensee if Licensee had sold such Product or Service according to Article 3.2 above; and (ii) of all payments received by Licensee from Sublicensee that are not encompassed by (i) above, regardless of whether payments result from Sublicensee’s Net Sales, or are denominated as fees or otherwise. Licensee shall also have the option, at its discretion, to have the amount paid for sales by Sublicensees under this Article made directly to University by said Sublicensees. For purposes of clarity, payments made to University under this Article shall be the sole payment due University for sales by third party Sublicensees, and no additional royalty payment under Article 3.2 shall be due for any such sale.

3.4.	Annual Minimums. If total amounts actually paid under Articles 3.2 and 3.3 for any calendar year are less than the minimum payment set forth at the end of this Article 3.4 for that calendar year (the “Annual Minimum”), Licensee shall pay University an additional amount for that calendar year equal to the shortfall. Such payment shall be made within forty-five (45) days of the end of each year of this Agreement. If this Agreement terminates for any reason during any year, the Annual Minimum for such year shall be reduced pro-rata. There will be no Annual Minimum for Year 1 (Effective Date through ). The Annual Minimum for Year 2 ( ) will be . The Annual Minimum for Year 3 ( ) and every year thereafter will be .

3.5.	Intellectual Property Costs. Licensee agrees, within thirty (30) days following date of invoice from University, to reimburse University for all Intellectual Property Costs as set forth in this Article 3.5. Further, Licensee also agrees to the payment terms for preparation and filing foreign patent applications as set forth in Article 5.3. All Intellectual Property Costs invoiced to University prior to the Effective Date (“Prior Intellectual Property Costs”) shall be reimbursed by Licensee following the Effective Date. All Intellectual Property Costs invoiced to University on and after the Effective Date (“Ongoing Intellectual Property Costs”) shall be reimbursed by Licensee as Ongoing Intellectual Property Costs are incurred.

3.6.	Milestone Payments. Licensee agrees to make the milestone payments to University as set forth in this Article 3.6 (the “Milestone Payments”) within thirty (30) days after the occurrence of each event set forth on such schedule. The following Milestone Payments are due: .

3.7.	Calculation and Payment of Royalties and Amounts Due. Royalties and other amounts due shall be calculated for each Royalty Period as of the last day of each such Period. Payment of royalties and other amounts with respect to each Royalty Period, and the accompanying accounting report set forth in this Article 3.7 shall be due within forty-five (45) days after the end of such Royalty Period, beginning with the earliest of: (i) the Royalty Period in which the first Net Sale accrues; or (ii) the Royalty Period for which the first Annual Minimum is due; or (iii) the Royalty Period in which Licensee first receives payments or other consideration from Sublicensee other than royalty on Net Sales. Payments and the accompanying accounting report are due as follows: no later than February 15 of each year (for the Royalty Period ending the prior December 31); and no later than August 15 of each year (for the Royalty Period ending the prior June 30).

At the same time that it makes payment of royalties and other amounts due with respect to a Royalty Period, Licensee shall deliver to University a true and complete accounting of Net Sales and other distributions of any Product and revenues from those sales by Licensee and its Sublicensees for each country of sales origin during such Royalty Period and deductions taken, with a separate accounting for each Product of sales and revenues by country, and a detailed calculation of the payment due University for such Royalty Period.

Each Annual Minimum payment shall be accompanied by a calculation of the shortfall with respect to the Annual Minimum such that University can verify the amount of the payment.

3.8.	Records. Licensee shall keep, and shall cause its Sublicensees to keep accurate records in sufficient and customary detail such that the amounts payable may be verified. During the term of this Agreement and for a period of five (5) years following termination, Licensee shall permit University or its representative to inspect, audit and copy its books and records regarding the sale of Products, during normal business hours. Such examination shall be made at University’s expense, except that if such examination discloses a shortage of three percent (3%) or more in the amount of royalties and other payments due University for any Royalty Period, then Licensee shall reimburse University for the reasonable cost of such examination or audit, including any professional fees and out of pocket costs incurred by University. No separate confidentiality agreement will be required to conduct such an examination or audit, and the results of the audit shall be treated as confidential information unless and until a related legal action is taken. Additionally, it is understood that the University or its representative will be allowed to keep a copy of all documents provided by the Licensee hereunder and all documents created by the University or its representative in connection with such examination or audit for archival purposes.

3.9.	Payments. All amounts owing to University under this Agreement shall be paid in U.S. dollars, by check or other instrument representing immediately available funds payable to “Southern Illinois University” or in a wire transfer sent to an account listed at the end of this Article 3.9, if any are listed. Any wire transfer fees and bank fees connected to a payment shall be paid by the Licensee. If Licensee or any Sublicensee receives payment in a currency other than U.S. dollars, such currency will be converted directly from the currency in the country of sales origin to U.S. dollars on the date initial payment was made, without intermediate conversions, and payments will be made based on such conversion. All foreign and domestic tax, tariff, fee, or other applicable obligations must be satisfied by Licensee with respect to payments made to University; i.e. University will not be responsible for satisfying any such obligations on behalf of Licensee upon receipt of payment. Wire transfer account information is as follows: .

3.10.	Overdue Payments. Payments due to the University under this Agreement, if not paid when due, shall be subject to interest of 1.5% per month (or the maximum amount permitted by Illinois law if less) of the delinquent amount, and Licensee shall be responsible for all costs of collection incurred by University including attorney fees and court costs. The accrual or receipt by University of interest under this Article 3.10 shall not constitute a waiver by University of any right it may otherwise have to declare a breach of or default under this Agreement and to terminate this Agreement.

3.11.	Termination Reports and Payment. Within five (5) days after the date of termination of this Agreement, Licensee shall provide a complete copy of each Sublicense in effect, and for each such Sublicense state whether the Sublicensee is in material compliance with the Sublicense. Within sixty (60) days after the date of termination of this Agreement, Licensee shall make a written report to University which report shall state the number, description, and amount of Products sold by Licensee or any Sublicensee upon which royalties are payable hereunder but which were not previously reported to University, a calculation of the Net Sales, and a calculation of the royalty and other payments due University for such Products, all in such form and containing such substance as is required hereunder. Concurrent with the making of such report, Licensee shall make the payment due University for such period.

3.12.	Commercialization and Reporting Requirements. Licensee shall, and shall require each Sublicensee to, use its best efforts to bring one or more Products to market within the Field and throughout the Territory and to develop such markets through a thorough, vigorous and diligent program for the commercial exploitation of the Intellectual Property Rights and Software. In addition, Licensee shall meet the commercialization and reporting requirements set forth as follows and in Article 7.2. Licensee shall deliver to University each year, within thirty (30) days of the anniversary of Effective Date, a report summarizing business and technical development relevant to the Intellectual Property, real or projected sales of Products, and other developments, achievements, or setbacks relevant to Intellectual Property commercialization. Such information may include financing rounds secured by Licensee, Licensee growth in terms of revenue or number of employees, addition of key team members, and more as applicable and appropriate.

3.13.	No Refunds or Credits. Other than as set forth herein, all payments made to University hereunder shall be nonrefundable, and any amount paid with respect to an obligation of Licensee under this Agreement shall not be credited against any other amount paid with respect to any other obligation of Licensee under this Agreement.

3.14.	Equity Rights. As further consideration for the grant of the license rights set forth in this Agreement, Licensee hereby agrees to issue to University, equity securities, on the price and terms for the number and type of equity securities of Licensee, and rights to acquire equity securities of Licensee, and with such other related rights, preferences and privileges with respect to such equity securities, all as set forth in this Articles 3.14 below.

Licensee shall, upon execution of this Agreement or as mutually agreed in writing by the Parties, issue to Southern Illinois Research Park, Inc. (SIRP), on behalf of the Board of Trustees of Southern Illinois University a fully paid, fully vested, non-assessable, non-voting share of ownership interest in Licensee equaling [Number of Shares or Percentage of Company] of Licensee’s shares outstanding. The Parties acknowledge and agree that the interest to be granted to University by this paragraph is a material part of this Agreement and that the granting of said interest is a material inducement to University granting the license.

Licensee agrees to enact a term of Licensee’s operating agreement that SIRP, on behalf of the Board of Trustees of Southern Illinois University, shall be a member of Licensee with a fully paid, fully vested, non-assessable, non-voting share of ownership interest in Licensee equaling [Number of Shares] membership units ([Ownership %] of outstanding Licensee equity at the time of execution of the operating agreement), which shall be exchanged for University’s [Ownership %] share in Licensee. Said ownership interest shall be dilutable only to the same extent as other founding/initial members’ shares are at the time of issuance to the University. Any such ownership interest shall be issued in the name of “Southern Illinois Research Park, Inc., on behalf of the Board of Trustees of Southern Illinois University.” Other terms and conditions pursuant to said ownership interest shall be consistent with terms and conditions for other founders and as negotiated in good faith by the Parties. The Parties acknowledge and agree that the interest to be granted to University by this paragraph is a material part of this Agreement and that the granting of said interest is a material inducement to University granting the license.

University’s status in Licensee shall be that of a non-managing member and University shall have all rights accorded to other non-managing members.

3.15	Product Transfers. If a Product is made in a country in which any of the Intellectual Property Rights exist, then Licensee shall be obligated to pay a royalty on the sale or transfer of such Product even if such sale or transfer occurs in a country in which no intellectual property protection exists; and if a Product is sold in a country in which any of the Intellectual Property Rights exist, then Licensee shall be obligated to pay a royalty on the sale or transfer of such Product even if such Product was made in a country in which no intellectual property protection exists.

ARTICLE 4. WARRANTIES; INDEMNIFICATION

4.1.	Limited Representation. University represents that it has the right, power and authority to enter into and perform its obligations under this Agreement. University represents and warrants as follows: (i) that University, to the best of University’s knowledge and unless otherwise stated, is the exclusive owner of the entire right, title and interest in and to the Intellectual Property and that University has full legal right, authority and power to enter into this Agreement and to grant the exclusive license to Licensee as set forth herein; (ii) that University is not aware of any existing or threatened litigation concerning the Intellectual Property Rights; (iii) that University has not granted nor will it grant any licenses under the Intellectual Property that would be in conflict with the rights granted in this Agreement; (iv) That to the best knowledge of University each of the Intellectual Properties is valid and enforceable; and (v) University will use commercially reasonable efforts to maintain in effect all Intellectual Property, and will provide reasonable assistance to Licensee in maintaining and/or extending the term of each of the Intellectual Properties.

4.2.	Disclaimer of Warranties. The Intellectual Property Rights and Software are licensed “AS IS.” Licensee acknowledges that: (i) the Software may not satisfy all of Licensee’s or its customers’ requirements; and (ii) the use or receipt of the Software may not be uninterrupted or error-free. Licensee further acknowledges that: (i) the royalties and other charges contemplated under this Agreement are based on the limited warranty, limited remedy, disclaimer and liability limitation provisions specified in this Article 4; and (ii) such royalties and other charges would be substantially higher if any of these provisions were unenforceable. EXCEPT AS SPECIFICALLY SET FORTH IN ARTICLE 4.1 ABOVE, UNIVERSITY DISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND OR NATURE, WHETHER EXPRESS OR IMPLIED, RELATING TO PERFORMANCE, MARKETABILITY, TITLE OR OTHERWISE IN ANY RESPECT RELATED TO THE INTELLECTUAL PROPERTY RIGHTS, SOFTWARE, PRODUCTS or SERVICES. UNIVERSITY FURTHER DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, AND DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTY REGARDING INFRINGEMENT OF ANY PATENT, COPYRIGHT, TRADEMARK OR OTHER RIGHTS OF THIRD PARTIES IN CONNECTION WITH THE PRACTICE OF THE INTELLECTUAL PROPERTY RIGHTS, THE USE OF THE SOFTWARE, OR THE MAKING, USING OR SELLING OR OTHER DISTRIBUTION OF PRODUCTS OR SERVICES BY ANY PERSON OR ENTITY. LICENSEE, AND ITS SUBLICENSEES, ASSUME THE ENTIRE RISK AND RESPONSIBILITY FOR THE SAFETY, EFFICACY, PERFORMANCE, DESIGN, MARKETABILITY, TITLE AND QUALITY OF ALL PRODUCTS. Without limiting the generality of the foregoing, University does not warrant: (i) the patentability of any of the Intellectual Property Rights; (ii) the accuracy of any information provided to Licensee; or (iii) the accuracy, safety, or usefulness for any purpose of any of the Intellectual Property Rights, Software, or Products or Services. Nothing contained in this Agreement shall be construed as either a warranty or representation by University as to the validity or scope of any Intellectual Property Rights or intellectual property right in the Software.

4.3.	Limitation of Liability. EXCEPT FOR RESPECTIVE OBLIGATIONS SET FORTH IN ARTICLE 4.4, AND EXCEPT FOR ANY LOSS, LIABILITY, DAMAGE OR OBLIGATION ARISING OUT OF THE WILLFUL FAILURE OF ANY PARTY TO TIMELY PAY ANY AMOUNTS DUE UNDER THIS AGREEMENT, IN NO EVENT SHALL ANY PARTY HAVE ANY LIABILITY TO THE OTHER PARTY FOR ANY DEVELOPMENT COSTS, LOST OPPORTUNITY OR PROFITS, COSTS OF PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES, OR FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, PUNITIVE OR SPECIAL DAMAGES ARISING OUT OF THIS AGREEMENT, UNDER ANY CAUSE OF ACTION OR THEORY OF LIABILITY (INCLUDING NEGLIGENCE), AND WHETHER OR NOT SUCH PARTY TO THIS AGREEMENT HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE. THESE LIMITATIONS SHALL APPLY NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY. SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION OR LIMITATION OF CERTAIN LIABILITIES, SO THE ABOVE LIMITATIONS OR EXCLUSIONS MAY NOT APPLY TO THE EXTENT SUCH LIMITATION IS SO PROHIBITED. Licensee shall not, and shall require that its Sublicensees do not, make any statements, representations or warranties or accept any liabilities or responsibilities whatsoever with regard to any person or entity that are inconsistent with any disclaimer or limitation included in this Article 4.

4.4.	Indemnification. Licensee agrees to indemnify, hold harmless, and defend University and its respective trustees, officers, employees, students, and agents against any liability, damage, loss or expense (including reasonable attorneys’ fees and expenses of litigation) arising from any and all claims for death, illness, personal injury, property damage, and improper business practices arising out of the sale or use of Products or Services by Licensee and/or its Affiliates or Sublicensees, or the performance of Services by Licensee and/or its Affiliates or Sublicensees whether grounded in tort (including negligence), strict liability, contract or otherwise, except to the extent that such claims for death, illness, personal injury, property damage, or improper business practices arises out of or results from the gross negligence or willful misconduct of University or its respective trustees, officers, employees, students, and agents, either collectively or individually.

Licensee shall obtain and carry in full force and effect, and shall cause its Sublicensees to obtain and carry in full force and effect, insurance with the coverages and limits as are reasonably adequate to ensure that Licensee can meet its obligations to University pursuant to this Article 4, the nature and extent of which insurance shall be commensurate with usual and customary industry practices for similarly situated companies, but in any event not less than the amounts set forth in this Article 4.4 below. Such insurance will be written by a reputable insurance company reasonably acceptable to the University authorized to do business in the State of Illinois, will name the University as an additional insured under all general liability and product liability policies and shall require thirty (30) days written notice to be given to University prior to any cancellation or substantive policy change. Upon receiving notice of a product liability claim, University may request Licensee to provide, and upon such request Licensee shall provide, for itself and on behalf of any Sublicensee, appropriate certificates of insurance sufficient to cover its obligations hereunder.

Except as otherwise stated herein the policies of insurance described below shall remain in full force and effect for the entire term of this Agreement and for two (2) years after the activities described herein cease. The insurance shall be obtained from an insurance company with a B+:VI or better rating in the current editions of Best’s Key Rating Guide to cover all claims, liability, expenses, damages, and costs due to injury to persons or damage to property arising or resulting from Products or Services made, used, sold, or imported worldwide by Licensee, its Affiliates, or its Sublicensees pursuant to this Agreement. If a policy required under this Article is written on a claims-made basis and that policy is not replaced or renewed, or if that policy is cancelled, Licensee agrees to purchase an extended reporting endorsement of not less than two years or purchase prior acts coverage with a retroactive date that coincides with or precedes expiration of the prior policy to assure coverage for unreported events. Licensee shall include University as a named insured on all insurance policies except workers compensation. Licensee shall furnish an original Certificate of Insurance evidencing the required coverage to be in force on the date of this Agreement. The receipt of any certificate does not constitute an agreement by University that insurance requirements have been met. Failure of University to obtain certificates or other insurance evidence from Licensee shall not be deemed a waiver by University. The insurance obtained by Licensee shall cover activities in the United States and throughout the world. Licensee shall provide University with thirty (30) days’ notice of any cancellation or material change to any insurance policy described above.

Licensee shall maintain at minimum the following insurance coverage:

commercial general liability insurance with limits of $1,000,000 per occurrence and a $3,000,000 general aggregate commencing no later than the Effective Date of this Agreement and terminating no less than two (2) years following the last date of commercial activity associated with a Product or Service;

products liability and completed operations liability coverage with limits of at least $1,000,000 per occurrence and a $3,000,000 general aggregate for the period commencing three (3) months prior to and continuing throughout, the time period during which any product trials or testing are conducted and ending upon the market approval, sale, offer for sale, or other commercial activity related to the Product being used by a third party;

products liability and completed operations liability coverage with limits of at least $5,000,000 per occurrence and a $10,000,000 general aggregate for the period commencing upon the market approval, sale, offer for sale, or other commercial activity related to the Product being used by a third party and expiring no less than two (2) years after all such market activity has ceased;

professional liability coverage with limits of at least $1,000,000 per occurrence and a $3,000,000 general aggregate commencing no later than the Effective Date of this Agreement and terminating no less than two (2) years following the last date of commercial activity associated with a Product or Service, if professional services or advice are to be provided by Licensee; and

workers compensation coverage with limits of at least those required by applicable law and employer liability coverage with limits of at least $500,000 per occurrence (if required by applicable law).

Licensee’s obligations under this Article 4 shall survive the expiration or earlier termination of all or any part of this Agreement.

4.5	Licensee Representations and Warranties. Licensee represents and warrants as follows: (i) that Licensee has the full legal right, authority and power to enter into this Agreement; (ii) that the execution, delivery, and performance of this Agreement do not conflict with any law or regulation or constitute a default under any contractual obligation to which Licensee is subject; (iii) that Licensee will comply with any and all applicable laws and regulations in performing its obligations and responsibilities under this Agreement; and (iv) that Licensee will cooperate with University for the protection of University’s rights in the Intellectual Property and will furnish University with any information that it may require, within reason, in protecting the Intellectual Property.

ARTICLE 5. PROSECUTION AND MAINTENANCE OF INTELLECTUAL PROPERTY RIGHTS

5.1.	Prosecution and Maintenance. During the term of this Agreement, and subject to the provisions of this Article 5, University shall be responsible for prosecuting and maintaining the Intellectual Property Rights. Licensee shall pay promptly when due, or at University’s option promptly reimburse University for, all Intellectual Property Costs incurred by University with respect to the Intellectual Property Rights in each jurisdiction in the Territory. Failure to reimburse University within thirty (30) days of receipt of invoices by Licensee shall result in a penalty of five percent (5%) of the amount owed and shall be compounded monthly. Failure to reimburse University within sixty (60) days of receipt of invoices by Licensee shall constitute a material breach of this Agreement by Licensee. At Licensee’s request, University shall use its reasonable efforts to provide Licensee with copies of all official actions and other communications received by University or its patent counsel, or submitted by University or its patent counsel, from or to the United States Patent and Trademark Office (and corresponding foreign authorities) with respect to the Intellectual Property Rights.

5.2	Cooperation. Licensee agrees to cooperate with University, at Licensee’s expense, in the preparation, filing, prosecution and maintenance of the Intellectual Property Rights, by disclosing such information as may be necessary and by promptly executing such documents as University may request to effect such efforts. All Intellectual Property Rights shall be filed, prosecuted and maintained in University’s name or as University shall designate.

5.3.	Foreign Intellectual Property Filings. For foreign intellectual property filings (including but not limited to individual national and regional foreign intellectual property applications), Licensee shall notify University at least ninety (90) days in advance of the filing due date of any foreign countries or regions in which Licensee desires University to pursue intellectual property protection. To the best of its ability, University will obtain cost estimates for preparation and filing of foreign intellectual property applications in each of those countries or regions requested by Licensee (“Foreign Cost Estimate”). Licensee will authorize any such foreign filing by written instruction to University. Licensee will be responsible for all expenses related to such foreign filings.

5.4	Abandonment of Applications. If University determines to abandon any of the intellectual property listed in Schedule 1, it will give Licensee advance notice of such determination as is reasonably practicable, provided that such notice will be deemed given by reason of any related correspondence delivered to Licensee pursuant to this Article 5. Licensee may, by written notice to University, elect to continue the prosecution of the intellectual property at Licensee’s sole expense but in University’s name, and such intellectual property shall continue to be deemed part of the “Intellectual Property Rights” for all purposes of this Agreement.

5.5.	Interferences. University will give Licensee written notice promptly upon the declaration of any interference involving any of the Intellectual Property Rights. University will have the sole and exclusive right to determine whether and in what manner to proceed in such interference. If University fails to contest the interference, University will promptly notify Licensee. Licensee agrees that it will not, and will not permit any Sublicensee to, directly or indirectly initiate, support, or without the express written consent of the University participate in, any interference involving any of the Intellectual Property Rights.

5.6.	Confidentiality. Subject to the exceptions below, Licensee agrees to treat (and agrees to cause its Sublicensees to treat) as confidential all proprietary information with respect to the Software in Source Code form, System Documentation, and Intellectual Property Rights. Licensee shall take, and shall cause its Sublicensees to take, such actions as the University may reasonably request from time to time to safeguard the confidentiality of any University information which Licensee has an obligation to keep confidential pursuant to this Article 5.6. University acknowledges that Licensee may find it beneficial to disclose information provided by University during the conduct of Licensee’s business. Under such circumstances, Licensee may make such information available to third parties, provided that Licensee shall first obtain from the recipient(s) a fully-executed confidentiality agreement which is at least as protective of the University’s proprietary or confidential information as the confidentiality agreement Licensee employs to protect its own proprietary information. Licensee shall notify University promptly in writing of the circumstances surrounding any reasonably suspected possession, use or knowledge of the Source Code and/or System Documentation by any person or entity other than those authorized by this Agreement.

Neither Party shall, directly or indirectly, deal with, use, exploit or disclose confidential information of the other Party to any person or entity for any purpose except as described or permitted herein or unless and until expressly authorized in writing to do so by the other Party.

Each Party may disclose the confidential information only to those employees and agents who shall have a need to know the confidential information for the purpose of the activities contemplated by this Agreement. Each Party shall, prior to disclosing the confidential information or portion thereof to such designated employees or agents issue appropriate instructions to them to satisfy the obligations herein and obtain their agreement to receive and use the confidential information as confidential and subject to non-disclosure on the same conditions as contained herein.

Licensee shall not be bound by the provisions of the first paragraph of this Article 5.6 with respect to information which: (i) becomes publically available other than through a breach of this Agreement; (ii) is subsequently lawfully obtained by a Party from a third party or parties without breach of this Agreement by such Party as shown by documentation sufficient to establish the third party as a source of the confidential information; (iii) was known to a Party prior to its disclosure by the other Party as shown by documentation kept in the ordinary course of business sufficient to establish such knowledge; (iv) has been subject to prior written consent for such disclosure; (v) is required to be disclosed by law, regulation or legal process; provided that the other Party shall be advised as to the nature of the information to be disclosed notified prior to such disclosure to enable it to seek an protective order or other appropriate remedy to prevent such disclosure; or (vi) is independently developed by a Party, as shown by written documentation kept in the ordinary course of business.

The obligations under this Article 5.6 shall survive the expiration or earlier termination of all or any part of this Agreement for a period of five (5) years.

Licensee and University acknowledge that they may have previously entered into one or more confidentiality and nonuse agreements with respect to some or all of the Software or Intellectual Property Rights (collectively, the “Confidentiality Agreements”). The Parties agree that, to the extent this Agreement conflicts with the terms of any of the Confidentiality Agreements, this Agreement shall supersede the Confidentiality Agreements and be binding on University and Licensee with respect to the information covered under the terms of this Article 5, without otherwise limiting the binding nature and effect of the Confidentiality Agreements.

Each Party shall, upon request of the other Party, return all confidential information and copies thereof or shall destroy such confidential information and copies as directed by a Party; provided that Licensee may retain a copy of all confidential information disclosed to Licensee pursuant to this Agreement for the duration of this Agreement for archival purposes and University may retain all confidential information disclosed to University for use outside the Field in perpetuity.

ARTICLE 6. INFRINGEMENT

6.1.	Notification. If either Party becomes aware of any claim of infringement of any intellectual property right in the Software or any patent under the Intellectual Property Rights within the Field, it shall promptly notify the other Party in writing of such alleged infringement.

6.2	Licensee shall have the right, but not the duty, to initiate and control any legal action for infringement of Intellectual Property, either in its own name or jointly with University, if University’s joinder is required as a matter of law in order to enforce Intellectual Property, and University agrees to provide reasonable assistance, at the expense of Licensee, to allow Licensee to initiate and prosecute such legal action. University shall enjoy a continuing right to intervene in such legal action in order to protect its own interest if a declaratory judgment action alleging invalidity or non-infringement of a patent within the Intellectual Property is raised by a third party.

If Licensee elects to initiate legal action for intellectual property infringement, University shall have the right to participate in such litigation using counsel of its choice at its own expense. Licensee will consult with University throughout the litigation as to its course of action with respect thereto and will not enter into any settlement agreement with a third party without first obtaining University’s written consent, which shall not be unreasonably withheld. All damages recovered shall first be used to reimburse Licensee for its expenses in connection with such legal action, and the remainder of such damages shall be shared, with eighty percent (80%) going to Licensee and twenty percent (20%) going to University.

If Licensee elects not to institute legal action for patent infringement, University shall thereafter have the right to initiate and control any legal action for infringement of Intellectual Property, and Licensee agrees to provide reasonable assistance, at the expense of University, to allow University to initiate and prosecute such legal action. If University elects to institute legal action under this Article 6.2 for patent infringement, Licensee shall have the right to participate in such litigation using counsel of its choice at its own expense. University shall consult with Licensee throughout the litigation as to its course of action with respect thereto and will not enter into any settlement agreement with a third party without first obtaining Licensee’s written consent, which shall not be unreasonably withheld. All damages recovered shall first be used to reimburse University for its expenses in connection with such legal action, and the remainder of such damages shall be shared, with eighty percent (80%) going to University and twenty percent (20%) going to Licensee.

6.3	Licensee shall have the right to be represented in any action that may affect or impact its use of the Intellectual Property in the Territory and the Field by counsel of its own selection and at its own expense.

ARTICLE 7. TERM AND TERMINATION

7.1.	Term. Unless terminated earlier under Article 7.2 or 7.3, this Agreement shall become effective as of the Effective Date and shall remain in effect for years, unless earlier terminated as specified herein.

7.2	University Right to Terminate. University shall have the right (without prejudice to any of its other rights conferred on it by this Agreement or otherwise) to terminate this Agreement if Licensee: (i) is in default in payment of any amount or other consideration or reimbursement required under this Agreement, or the making of any reports required under Article 3.7 to be made by Licensee or Sublicensees pursuant to this Agreement, and Licensee fails to remedy any such default within sixty (60) days after written notice thereof by University; (ii) is in breach of or defaults with respect to any other provision of this Agreement, including failing to meet any requirements under Article 3.12, and Licensee fails to remedy any such breach or default within sixty (60) days after written notice thereof by University; (iii) makes any materially false report and such termination shall be upon written notice to Licensee; (iv) experiences institution by or against Licensee of insolvency, receivership or bankruptcy proceedings; makes an assignment for the benefit of creditors; or dissolves or ceases to do business; (v) takes any action that purports to cause any Intellectual Property Rights or Software to be subject to any liens or encumbrances, and fails to cause such purported lien or encumbrance to be removed within thirty (30) days after notice from the University; or (vi) fails to make diligent progress toward commercialization of Intellectual Property, as indicated by passage of years from Effective Date with less than in sales of commercial products incorporating Intellectual Property during the preceding twelve (12) month period.

7.3.	Licensee Right to Terminate. Licensee may terminate this Agreement at any time by written notice to University at least ninety (90) days prior to the termination date specified in the notice.

7.4.	Effect of Termination.

If this Agreement terminates for any reason, on the effective date of termination Licensee shall immediately cease and to the extent required hereunder, cause its Sublicensees to immediately cease using, making, having made, importing, exporting, leasing, selling, having sold and offering for sale the Software, Intellectual Property Rights, Products and Services, and shall return to University, or deliver or destroy as University directs, the Products, Software and Documentation then in its possession. The terms of this Article 7.4 may be superseded by a separate agreement as to termination terms entered into by the Parties in writing before the effective date of termination. Such agreement may, for example, facilitate transition of Licensee employees to an acquirer or ensure continued End User support during Intellectual Property transition.

Notwithstanding the termination of the other provisions of this Agreement pursuant to Articles 7.2 or 7.3, the following provisions of this Agreement shall survive such termination: (i) Licensee’s obligation to pay any fees accrued or perform obligations remaining unpaid or unperformed under the terms of this Agreement prior to such termination (including without limitation the delivery and continuing benefits, if any, of any Equity Rights); (ii) Licensee’s obligations under Articles 3.11, 4, 5.1, 5.2, 5.3, 5.6 and, to the extent proceedings have been initiated, Articles 6.2, 7.4 and 8; and (iii) any cause of action or claim of Licensee or University, accrued or to accrue, because of any breach or default of this Agreement by the other Party.

ARTICLE 8. MISCELLANEOUS

8.1.	Nonassignability and Binding Effect. Neither Party shall assign or transfer this Agreement or any rights or obligations hereunder (whether by operation of law or otherwise) without the prior written consent of the other Party, which consent shall not be unreasonably withheld. Notwithstanding the foregoing, either Party may assign or transfer this Agreement upon thirty (30) day advance written notice to the other Party in connection with: (i) an assignment or transfer of this Agreement by either Party to its Affiliate(s); (ii) the merger of a Party with or into another entity; (iii) the sale of a Party’s stock to a third party in a single transaction or a series of related transactions, where that Party’s shareholders immediately prior to such merger or sale do not own at least fifty percent (50%) of the voting stock of the surviving entity after such transaction; or (iv) a transfer of all or substantially all of the assets of a Party pertaining to the Intellectual Property. Any attempted assignment contrary to the provisions of this Article 8.1 shall be null and void. Prior to any such assignment becoming effective, all amounts due (including Intellectual Property Costs, if any), must be paid in full and a permitted assignee must agree in writing to become bound by this Agreement.

8.2.	Entire Agreement, Amendment and Waiver. This Agreement, including any schedules, exhibits, or appendices, contains the entire understanding of the Parties with respect to the subject matter of this Agreement and supersedes any and all prior written or oral discussions, arrangements, courses of conduct or agreements. This Agreement may be amended only by an instrument in writing duly executed by the Parties. The waiver of a breach hereunder may be effected only by a writing signed by the waiving Party and shall not constitute a waiver of any other breach.

8.3.	Notices. Any notices or communications required or permitted to be given by this Agreement must be (i) given in writing and (ii) personally delivered or mailed, by prepaid, certified mail or overnight courier, or transmitted by facsimile or electronic mail transmission (including PDF), to the Party to whom such notice or communication is directed, to the mailing address or regularly-monitored electronic mail address of such Party as follows:

To University:

Attention:	Director

Office of Technology Transfer

SIU School of Medicine

913 North Rutledge Street

P.O. Box 19631

Springfield, IL 62794-9631

Telephone: (217) 545-8168

Email: rpatino@siumed.edu

To Licensee:

Attention:	[Company Contact]

[Company Name]

[Street Address]

[City, State, Zip Code]

Telephone: [Phone Number]

Fax: [Fax Number]

Email: [Email Address]

Any such notice or communication shall be deemed to have been given on (i) the day such notice or communication is personally delivered, (ii) three (3) days after such notice or communication is mailed by prepaid certified or registered mail, (iii) one (1) working day after such notice or communication is sent by overnight courier, or (iv) the day such notice or communication is faxed or sent electronically, provided that the sender has received a confirmation of such fax or electronic transmission. A Party may, for purposes of this Agreement, change his, her or its address, fax number, email address or the person to whom a notice or other communication is marked to the attention of, by giving notice of such change to the other Party pursuant to this Article. For purposes of this Article a “regularly monitored electronic mail address” shall include the email address provided for each Party hereinabove.

8.4.	Severability. If any one or more of the provisions of this Agreement should for any reason be held by any court of competent jurisdiction to be invalid, illegal or unenforceable, such provision or provisions shall be reformed to approximate as nearly as possible the intent of the Parties, and the validity of the remaining provisions shall not be affected.

8.5.	Governing Law. This Agreement, and any dispute arising thereunder, shall be governed by and construed under the laws of the State of Illinois, without regard to the conflict of laws provisions thereof. The Parties agree that the jurisdiction and venue for any legal controversy arising hereunder shall lie exclusively in a court of competent jurisdiction sitting within the State of Illinois. All claims against SIU arising from this Agreement are subject to the Illinois Court of Claims Act and the exclusive jurisdiction of the Illinois Court of Claims.

8.6.	Jurisdiction. The Parties agree that all claims against the University are subject to the Illinois Court of Claims Act and that the exclusive venue for all such claims arising from this Agreement, in whole or in part, shall be the Illinois Court of Claims. Licensee waives any and all objections to the jurisdiction of the Illinois Court of Claims for claims against University. Licensee: (i) consents and submits to the jurisdiction of any local or state court located within said state; (ii) consents to delivery and service of process by means of the notice provisions established in this Agreement; (iii) shall not bring any action or claim against University in any other jurisdiction without the prior written consent of University granted in University’s sole discretion; and (iv) shall require that its Sublicensees agree not to bring any action or claim against University in any other jurisdiction or without the prior written consent of University granted in University’s sole discretion.

8.7	Marking. Licensee shall place in a conspicuous location on any Product (or its packaging where appropriate) made or sold under this Agreement an intellectual property notice in accordance with the laws concerning the marking of patented, copyrighted, and trademarked articles.

8.8.	Export Controls. Licensee agrees to strictly comply, and shall require its Affiliates and Sublicensees to strictly comply, with any and all applicable United States export control and trade laws and regulations, including but not limited to the U.S. Department of Commerce’s Export Administration Regulations and the regulations administered by the Office of Foreign Assets Control. Licensee hereby gives written assurance that it will comply with, and will cause its Sublicensees/Affiliates to comply with all United States export control laws and regulations, that it bears sole responsibility for any violation of such laws and regulations by itself or its Sublicensees/Affiliates, and that it will indemnify, defend and hold University harmless for the consequences of any such violation. Licensee will not disclose export controlled items or information unless and until a plan for the transfer, use, dissemination and control of the items or information has been approved by University’s Export Control Director.

8.9.	Implementation. Each Party shall, at the request of the other Party, execute any document reasonably necessary to implement the provisions of this Agreement.

8.10.	Counterparts/Electronic Signature. This Agreement may be executed in multiple counterparts by the Parties hereto. All counterparts so executed shall constitute one agreement binding upon all Parties, notwithstanding that all Parties are not signatories to the original or the same counterpart. Each counterpart shall be deemed an original to this Agreement, all of which shall constitute one agreement to be valid as of the date of this Agreement. Documents executed, scanned and transmitted electronically and electronic signatures shall be deemed original signatures for purposes of this Agreement and all matters related thereto, with such scanned and electronic signatures having the same legal effect as original signatures.​

8.11.	Relationship of Parties. The Parties to this Agreement are independent contractors. There is no relationship of principal to agent, master to servant, employer to employee, or franchiser to franchisee between the Parties. Neither Party has the authority to bind the other or incur any obligation on its behalf.

8.12.	Headings. The headings of the Articles, sections, subsections, and paragraphs of this Agreement have been added for convenience only and shall not be deemed to be a part of this Agreement, nor shall they affect the interpretation or construction of this Agreement in any manner.

8.13.	Advertising. Licensee shall not use (and shall prohibit its Sublicensees from using) the names of University or agents, or any adaptation thereof, in any commercial activity, marketing, advertising or sales brochures without the prior written consent of University, which consent may be granted or withheld in University’s sole and complete discretion. Notwithstanding the foregoing, Licensee may use the name of University in a non-misleading fashion in: (i) executive summaries, business plans, offering memoranda and other similar documents used by Licensee for the purpose of raising financing for the operations of Licensee or entering into commercial contracts with third parties, but in such case only to the extent necessary to inform a reader that the Intellectual Property Rights and Software have been licensed by Licensee from University, and to inform a reader of the identity and published credentials of the University faculty members listed as inventors of the Intellectual Property Rights; and (ii) any securities reports required to be filed with the Securities and Exchange Commission.

8.14.	Conflicts. Licensee acknowledges and agrees that it will use reasonable efforts to avoid potential conflicts of interest between the University and University employees who may also be employees, consultants, shareholders or directors of Licensee.

8.15	University Rights in Data. In the event that Licensee abandons development of a Product or Service within the Field and within the Territory during the term of this Agreement, it shall so notify University, and Licensee will make available to University a copy of any data generated by Licensee and/or its Affiliates in the course of development of any Product or Service, provided that University shall have the right to use such data for development and to disclose such data to third parties in connection with efforts to commercialize Products and Services.

8.16	Improvements. University may from time to time make and/or acquire improvements to the Intellectual Property. Any such improvements will be promptly disclosed to Licensee. If Licensee desires to acquire rights in improvements, the University agrees to negotiate in good faith a license with Licensee. If an agreement cannot be consummated within six (6) months from notice to Licensee, University shall have the right to offer intellectual property rights in improvements to third parties.

8.19	Intellectual Property Invalidity. If, during the term of this Agreement, as a result of any litigation or re-examination or reissue proceeding involving one or more Intellectual Properties in a country in the Territory, all claims of all Intellectual Properties in such country are declared to be finally invalid or unenforceable in said country, no further payments shall be due to University for Products or Services provided, manufactured, caused to be manufactured, sold, offered for sale, used, imported into, or exported from such country, except for as specified under Article 3.2, where such payment was solely based upon the Intellectual Properties in such country. Notwithstanding the foregoing, such final declaration of invalidity or unenforceability shall not operate to extinguish any obligation of Licensee to pay University royalties or proceeds from sublicensing otherwise payable for Products or Services provided, manufactured, caused to be manufactured, sold, offered for sale, used, imported into, or exported from a country other than the county or countries in which the Intellectual Properties are subject to a final judgment or decree of invalidity or unenforceability.

8.17	Force Majeure. No Party shall be considered in default of performance of its obligations under this Agreement to the extent that performance of such obligations is delayed by force majeure or contingencies or causes beyond the reasonable control of such Party or its suppliers, including but not limited to strike, fire, flood, earthquake, windstorm, governmental acts or orders or restrictions, failure of suppliers, or any other reason to the extent that the failure to perform is beyond the reasonable control and not caused by the negligence or willful misconduct of the non-performing Party.

8.18	Public Relations and Announcements. Except as otherwise required by law, no Party shall issue a press release or any other published statement that refers to another Party or the other Party’s products without first obtaining the agreement of such other Party as to the form and content of the statement, which approval shall be timely and not unreasonably withheld.

8.19	Licensee Challenge to Intellectual Property. If Licensee or any of its Affiliates or Sublicensees challenges, directly or indirectly, in whole or in part, the validity of the Intellectual Property, before or with anyuniversity body, jurisdiction or authority, whether of judicial and/or administrative nature, the royalty due to University under Articles 3.2 and 3.3 shall increase by [Rate Increase] to [Final Rate] on Net Sales of Products and Services. In the event that the invalidity challenge is ultimately unsuccessful and the Intellectual Property is held to be at least partially not invalid such that the royalty obligations of Articles 3.2 and 3.3 are still in effect, Licensee or its Affiliates or Sublicensees as appropriate, shall be responsible for reimbursement of University’s out of pocket attorney fees related to University’s participation in the invalidity proceedings.

IN WITNESS WHEREOF, the Parties hereto have caused this Exclusive Software and Intellectual Property License Agreement with Equity to be executed by their respective duly authorized officers or representatives on the date indicated below.

[Company Name] (“COMPANY”) By: ________________________________ Name: [Signing Official Name] Title: [Signing Official Title] Date: ____________________________	BOARD OF TRUSTEES OF SOUTHERN ILLINOIS UNIVERSITY (“UNIVERSITY”) By: ________________________________ Name: [Signing Official Name] Title: [Signing Official Title] Date: ____________________________

Schedule 1 to Exclusive License Agreement

“Intellectual Property Rights”:

Type	No.	Title	Filing/Issue Date	SIU Reference No.
US Provisional Patent Application
US Patent Application
PCT Patent Application
Taiwan Patent Application
US Patent
Copyright
Trade Secret
Know-How

“Software”:

[Provide description. Also specify whether Souce Code is included and how it will be provided if applicable.]

Schedule 2 to Exclusive License Agreement

Mandatory Terms for End Users

These terms will apply because you (“End User”) are licensing, using, or are provided access to software or services (“Company Product”) that incorporates, or is based on, certain software (“University Software”) of The Board of Trustees of Southern Illinois University (“University”).

1.	Rights. End User may (i) use the University Software only as an integral component of the Company Product; (ii) make copies of the Company Product for back-up or archival purposes only (provided that all notices are included as specified in Section 4 below); and (iii) use the Company Products for its internal business purposes only, and will not sublicense, redistribute, or otherwise allow third parties to use them directly or indirectly, whether on a time sharing, remote job entry or service bureau arrangement. Any use of the Company Products beyond these limitations will be subject to Company’s prior written consent and payment of the applicable fees.

2.	Ownership. All patents, copyrights, trade secrets and other proprietary rights in or related to the University Software are and will remain the exclusive property of University, whether or not specifically recognized or perfected under applicable law. End User will not take any action that jeopardizes University’s proprietary rights. End User acknowledges and agrees that it acquires no right in the University Software, except the limited use license specified in Section 1. University will own all rights in any copy of the University Software or any derivative work thereof, including any improvement or development of the University Software.

3.	Source Code. The End User is not entitled to receive the source code version of the University Software, and under no circumstances may the End User recipient reverse-compile, reverse-assemble, decompile, disassemble, decrypt, extract, or otherwise reverse-engineer or modify the object code version of the Company Product.

4.	Notices. The End User must reproduce and include the copyright notice(s) and proprietary legend(s) of University, as applicable, as they appear in the Company Product and on any media containing the Company Product on all copies of the Company Product prepared by the End User.

5.	Third Party Beneficiary. End User acknowledges that the provisions of its agreement with Company, including, but not limited to these Terms (“Agreement”), are intended to inure to the benefit of University as a third party beneficiary of this Agreement, and University will be entitled to enforce such provisions against End User. End User further acknowledges that University accepts its third party beneficiary rights hereunder and that such rights will be deemed irrevocable.

6.	All warranties, maintenance, and support (if any) with respect to the University Software and Company Products will be provided solely by Company and not by University. UNIVERSITY MAKES NO WARRANTIES OR REPRESENTATIONS CONCERNING THE COMPANY PRODUCTS OR ANY OTHER MATERIALS, SERVICES, INFORMATION, OR TECHNOLOGY, AND UNIVERSITY EXPRESSLY DISCLAIMS ALL SUCH WARRANTIES AND REPRESENTATIONS, EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE AND NON-INFRINGEMENT.

7.	UNDER NO CIRCUMSTANCES WILL UNIVERSITY BE LIABLE FOR CONSEQUENTIAL, INDIRECT, SPECIAL, PUNITIVE OR INCIDENTAL DAMAGES OR LOST PROFITS, WHETHER FORESEEABLE OR UNFORESEEABLE, BASED ON CLAIMS OF END USER OR ANY OTHER PARTY ARISING OUT OF BREACH OR FAILURE OF EXPRESS OR IMPLIED WARRANTY, BREACH OF CONTRACT, MISREPRESENTATION, NEGLIGENCE, STRICT LIABILITY IN TORT, FAILURE OF ANY REMEDY TO ACHIEVE ITS ESSENTIAL PURPOSE, OR OTHERWISE, NOTWITHSTANDING THE FORM (E.G., CONTRACT, TORT, OR OTHERWISE) IN WHICH ANY LEGAL OR EQUITABLE ACTION MAY BE BROUGHT. IN NO EVENT WILL UNIVERSITY BE LIABLE FOR DAMAGES OR LOSSES THAT EXCEED, IN THE AGGREGATE, THE AMOUNT OF FEES PAID BY END USER FOR THE PRODUCTS THAT GAVE RISE TO SUCH DAMAGES OR LOSSES FOR EACH RESPECTIVE BREACH OR SERIES OF RELATED BREACHES, AND END USER AGREES THAT IT MUST FIRST PURSUE AND EXHAUST ALL REMEDIES AGAINST COMPANY BEFORE PURSUING ANY REMEDY (IF ANY) AGAINST UNIVERSITY.