Agreement To Release Intellectual Property Rights (Page 3 of 6) in pdf

In exchange for the release of rights by the Institution, Inventor agrees to the following

obligations.

5.1

As of the Effective Date, Inventor shall be responsible for the payment of all patent and

other expenses associated with the Invention incurred after the Effective Date.

5.2

Inventor agrees to file a provisional U.S. patent application covering the Invention within

three (3) months of the Effective Date. If a provisional application covering the Invention has

already been filed by Institution, Inventor agrees to convert the provisional application to a

regular U.S. application and/or international PCT application before expiration of the provisional

application. If a regular U.S. application and/or international PCT application has been filed,

Inventor agrees to maintain patent rights in the U.S. for at least six (6) months from the Effective

Date.

5.3

As of the Effective Date, Inventor shall be responsible for any continuing obligations to

third parties who have an interest in the Invention (e.g. funding sources, material providers, etc.).

To the best of Institution’s knowledge, these obligations are:

[List any and all obligations Institution is aware of]

5.4

Within thirty days of the anniversary of the Effective Date, Inventor shall provide an

annual written report to Institution summarizing progress during the preceding year toward

commercialization of the Invention, compliance with any funding source or material provider

obligations and the status of any patent filings covering the Invention. This report will include a

copy of any license or other agreement transferring rights in the Invention to another party

completed during this period. Institution agrees to treat all nonpublic information in this report

as confidential information.

5.5

If Inventor decides to abandon patent rights in the Invention, Inventor shall notify

Institution of this decision in writing at least sixty (60) days in advance of any action needed to

maintain pendency of the patent rights. Inventor agrees, upon request of Institution, to negotiate

in good faith the assignment of the patent rights in the Invention back to Institution.

5.7

Inventor agrees to share Net Income with Institution as follows:

Net Income up to $_______: 0% to Institution [Amount, if any, to be determined by

Institution. Intended to recognize typically weak financial position of Inventors even after

some Net Income is achieved. The higher this net income threshold is, the higher the

percentage in the succeeding paragraph may be.]

Lisa Rich

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