ESA UNCLASSIFIED – For Official Use

LICENCE AGREEMENT FOR USE OF PATENT-(APPLICATIONS) AND PATENTS AND KNOW-HOW[1]IN SPACE RESEARCH AND TECHNOLOGY AND THEIR SPACE APPLICATIONS

THE UNDERSIGNED

The European Space Agency

an intergovernmental organisation established by the Convention opened for signature in Paris on 30 May 1975, with its headquarters at

8-10, rue Mario Nikis, 75738 Paris Cedex 15, France,

hereinafter referred to as“ESA”,

duly represented for the present purposes by Marco Ferrazzani, Legal Counsel and Head of the Legal Department,

AND

[Name of Company],

with the principle place of business at [Address],

hereinafter referred to asthe “Licensee”

duly represented for the present purposes by[Name and title] ,

individually referred to herein as the “Party” or collectively as the “Parties”;

WHEREAS ESA is the owner of the [published] International/European Patent Application No. ……., [filed with priority of European application No…..] on [date], and any patent issuing or issued thereof,

hereinafter referred to as the “Licensed Patent Applications and Patents”

WHEREAS ESA is also the owner of the unregistered Information and Data described in the Annex of the present License Agreement,

hereinafter referred to as the “Licensed Know-How”;

WHEREAS ESA wishes to grant tothe Licensee a licence under the Licensed Patent Applications and Patents and Licensed Know-How to conduct certain activities in the Licensed Field and the Licenseewishes to take such a licence on the terms and conditions of this Agreement.

HAVE AGREED AS FOLLOWS

ARTICLE 1: DEFINITIONS

1.1 In this Agreement the following defined terms have the meanings set out below:

“Entity” / means any natural or legal person, partnership, association or governmental authority;
“ESA Member States
Territory” / means the territory of the member states of the European Space Agency at the time when this Agreement comes into force and thereafter;
“ESA’s and Member States’ own purpose” / means activities and programme undertaken by ESA or one or more member states in the field of space research and technology;
“Improvement” / means any improvement, enhancement, adaptation or modification to the Licensed Know-How and/orto the Licensed Patent Applications and Patents;
“Licensed Field” / Space research and technology and their space applications;
“Licensed Intellectual Property” / means Licensed Know-How andLicensed Patent Applications and Patents as defined in this Agreement;
“Licensed Know-How” / means all unregistered confidential information and data related to the Licensed Patent Applications and Patents communicatedby ESA to the Licenseeand listed in the Annex;
“Licensed Patent Applications and Patents” / the [published] International/European Patent Application No. ……., [filed with priority of European application No….] on [date], and any patent issuing or issued thereof;
“Licensed Products and Services” / means any and all products and services for which the development, manufacture, use, importation or sale involves use of the Licensed Intellectual Property;
“Technical Report” / A report describing the efforts made by the Licensee with respect to commercial exploitation of the Licensed Intellectual Property, and development and promotion of the Licensed Products and Services as well as number of Products or Services sold and their sales price.

ARTICLE 2: LICENCE GRANT

2.1 ESA hereby grants to the Licensee, subject to the provisions of this agreement, a non-exclusiveroyalty free licence under the Licensed Intellectual Property to develop, manufacture, have manufactured, keep, import, use, offer for sale, and sell or otherwise supply Licensed Products and Services in the Licensed Fieldthroughout the ESA Member States Territory.This Licence shall not include the right to grant sub-licences.

2.2If the Licenseewishes to exploit the Licensed Intellectual Property outside the Licensed Field, it may make a proposal to ESA in writing. ESA will consider the proposal and discuss with the Licensee the possibility of an amendment of the Licence Agreement.

2.3Should the Licensee wish to develop, manufacture, have manufactured, keep, import, use, offer for sale, and sell or otherwise supply Licensed Products and Services outside the ESA Member States Territory, it shall make an official request in writing to ESA. ESA will study the request and will assess the possibility to extend the License Agreement to countries outside ESA Member States Territory.

ARTICLE 3:Licensee’ S OBLIGATIONS

3.1The Licensee shall take all reasonable endeavours to exploit the Licensed Patent Applications and Patents and Licensed Know-How, and develop and promote the Licensed Products and Services in the Licensed Field.

3.2The Licenseeshall mark all Licensed Products and Services with (i) the relevant patent or patent application numbers of the Licensed Patent Applications and Patents to satisfy the laws of each of the countries in which the Licensed Products and Services are offered, sold or supplied, and (ii) such clear and prominent statement, that the Licensed Products and Services are developed or manufactured and supplied by the Licenseeunder licence from ESA.

3.3The Licensee shall submit to ESA within thirty (30) days of the date of anniversary of this agreement and of termination of this Agreement, a written Technical Report.

3.4The Licenseeshall also provide a written description of any invention, Improvement, or patentable discovery that arose or was created through the use of the Licensed Intellectual Property and is conceived or reduced to practice by the Licenseeduring the term of this Agreement. Such written description of any invention shall be clearly marked “Proprietary Information” bythe Licensee.

3.5The Licenseeshall ensure that the Licensed Products and Services are developed or manufactured in compliance with all applicable laws and regulations, in particular with all export control regulations.

ARTICLE 4: ESA’S UNDERTAKING

Promptly after the signature of the Agreement, ESA shall make available to the Licenseea copy of the Licensed Intellectual Property.

ARTICLE 5: PROTECTION OF LICENSED INTELLECTUAL PROPERTY

5.1ESA shall be solely responsible for the prosecution and maintenance of the Licensed Patent Applications and Patents.

5.2The Parties shall promptly give written notice to each other of any actual or potential infringement of the Licensed Intellectual Property. ESA does not represent that it will commence legal actions against third parties infringing the Licensed Intellectual Property.

ARTICLE 6: IMPROVEMENTS

6.1All Improvements devised, discovered, or acquired by a Party shall, as between the parties, be solely owned by that Party.

6.2The Licenseeshall grant to ESA a non-exclusive, free-of-charge, irrevocable, worldwide license for ESA’s and its Member States’ own Purposes to make, have made, use, distribute, sell, offer to sell, and/or import products and services that make use of any Improvement. The license on the Improvements shall include the right for ESA and its Member States to sublicense to companies working under contract or subcontractors of said contractors or subcontractors solely for ESA’s and its Member States’ own Purposes.

6.3If the Licenseedoes not wish to apply for registered intellectual property rights (or wishes to abandon registered intellectual property rights) arising from the work performed under the Agreement it shall inform ESA. After such notification ESA shall consult the Licenseeand investigate the reasons for failure to apply or abandonment of such rights. Following this consultation ESA can require the Licenseeto assign to ESA free of charge the rights necessary to apply for such registered intellectual property rights.

6.4If the Licenseedoes not intend to exploit or does not effectively exploit the Improvement it shall inform ESA in due course. After such notification ESA shall consult the Licenseeand investigate the reasons for the failure to exploit. Following the consultation ESA may investigate whether third parties would be interested in exploiting the Improvement. If ESA finds a suitable third party ESA can require the Licenseeto grant the third party a licence to the Improvement on conditions to be agreed between theLicensee, ESA and the third party. For the avoidance of doubt the Licenseemay not unreasonably object to the terms of such licence. If ESA cannot find a suitable third party to exploit such rights it can require the Licenseeto assign such rights to ESA.

6.5If the Licensee intends to assign or license to any third party any rights in any Improvement, the Licensee shall first notify ESA in writing with sufficient details to enable ESA to evaluate the Improvement and the rights intended to be assigned or licensed by the Licensee. ESA may, within sixty (60) days after receipt of such notice notify the Licensee in writing that ESA wishes to acquire the rights offered by the Licensee. If ESA issues such notification, the parties shall negotiate the terms and conditions of such assignment or licence with a view to entering into an agreement. The Licensee may not offer to any third party any assignment or licence of any rights in any Improvement on terms more favourable than those that have previously been offered to ESA and which ESA has declined or not responded within a period of sixty (60) days after receipt of such offer.

ARTICLE 7: Proprietary Information, EXCHANGE OF INFORMATION AND DATA

Each Party undertakes to protect as proprietary the terms of this licence agreement and all other information of a proprietary nature communicated to it by the other Party. The disclosing Party shall clearly mark any proprietary information as such. The receiving Party shall use at least the same degree of care and safeguard as it uses to protect its own proprietary information of like importance. All proprietary information shall neither be used, nor duplicated, in whole or in part, for any purpose other than the purpose agreed between the Parties, without the prior written consent of the disclosing Party. The receiving Party may disclose the same or any part of the same information to its employees and/or consultants on a need-to-know basis, provided that, before any such disclosure takes place, the receiving Party shall procure that each such person execute a confidentiality undertaking with the receiving Party on terms equivalent to those in this Agreement.

Article 8: WARRANTIES and LIABILITY

8.1ESA gives no warranty, representation or undertaking:

(a) as to the efficacy or usefulness of the Licensed Patent Applications and Patents and Licensed Know-How; or

(b) that the Licensed Patent Applications and Patents and Licensed Know-Howis or will be valid or subsisting; or

(c) that the use of the Licensed Patent Applications and Patents and Licensed Know-How will not infringe any other intellectual property or other rights of any other person.

8.2 The liability of ESA is excluded for any damages arising from the use of any product, prototype or service that applies the Licensed Patent Applications and Patents and Licensed Know-How.

8.3No Party shall be responsible if the other Party infringes any existing and/or future national, communal or provincial laws or decrees, rules or regulations in force in the European Union or in any country whatsoever.

8.4 ESA warrants that ESA has full right to grant this licence on Licensed Patent Applications and Patents and Licensed Know-How.

ARTICLE 9: DURATION AND TERMINATION

9.1This Agreement shall come into force upon its signature and shall remain in force for a period of […] months.[until all Licensed Patent Application and Patents have expired[2]]

9.2The Parties may terminate this Agreement at any time, without giving any reason, upon giving at least one (1) month written notice to the other Party.

9.3ESA shall have the right to terminate this Agreement with immediate effect by notice in writing to the Licensee in the event that:

(a)the Licensee fails to perform or observe any of its obligations under this Agreement; or

(b)a recognition of status of insolvency is made, or a petition for a bankruptcy order is presented or a bankruptcy order is made against the Licensee, or a receiver or trustee in bankruptcy is appointed of the Licensee’s estate or an administration order is made, or a receiver or administrative receiver is appointed of any of the Licensee’s assets or undertaking, or a winding-up resolution or petition is passed or presented (otherwise than for the purposes of solvent reconstruction or amalgamation) or any circumstances arise which entitle the court or a creditor or the company or its directors to appoint a receiver, administrative receiver or administrator or to present a winding-up petition or make a winding-up order, or other similar or equivalent action is taken against or by the Licensee by reason of its insolvency or in consequence of debt; or

(c)the Licensee challenges the validity of the Licensed Patent Applications and Patents and Licensed Know-Howand its protection by national and international conventions and laws; or

(d)the Licenseefiles without prior written approval by ESA to its own benefit any intellectual or industrial property rights whatsoever on the subject matter of the Licensed Patent Applications and Patents and Licensed Know-How; or

(e)there is a change in the status or the location of the registered office or the operating location of the Licensee such that the registered office or operating location or principal place of business of the Licensee is outside ESA Member States’ Territory; or

(f)any Entity or group of Entities acting together acquires control (in the meaning defined in the EU regulations in force from time to time) of the Licensee.

9.4In the event of [expiry or[3]] termination of this Agreement howsoever arising, and subject to any express provisions set out elsewhere in this Agreement:

(a)all rights and licences granted pursuant to this Agreement shall cease and the Licensee shall immediately stop all Commercial Exploitation.

(b)the expiry or termination of this Agreement for any reason shall not affect the validity of those provisions which are by their nature meant to survive the termination of this Agreement, including but not limited to the provisions of Article 3: LICENSEE’S OBLIGATIONS, Article 7: Proprietary Information, EXCHANGE OF INFORMATION AND DATA, Article 8: WARRANTIES AND LIABILITY, Article 13: NOTICES, and Article 14: APPLICABLE LAW AND DISPUTES. The expiry or termination of this Agreement for any reason shall be without prejudice to any rights of either Party which may have accrued by, at or up to the date of such termination.

9.5The terms and provisions of this Agreement may be amended in writing by mutual consent. Such an amendment shall enter into force on the date of its signature by the duly authorised representatives of both Parties.

ARTICLE 10: ASSIGNMENT

This Agreement is entered into in consideration of the person (intuitu personae)

The Agreement and the licence granted cannot be assigned, transferred or contributed to any person any way whatsoever, directly or indirectly, in full or in part, for payment or no charge, without ESA’s prior written consent.

This Agreement and the licence granted can under no circumstances be treated as an asset belonging to the Licensee.

ARTICLE 11: NO PARTNERSHIP OR AGENCY

The Agency and the Licensee are independent Parties under this Agreement and nothing herein is intended nor shall be construed as creating a partnership, joint venture, agency relationship or any exclusive arrangement between the Parties.

ARTICLE 12: SEVERABILITY

Should any provision of this Agreement be found to be invalid, illegal or unenforceable under the laws of any relevant jurisdiction, the invalid or unenforceable provision shall be given no effect but the remaining provisions of this Agreement shall remain in full force and effect. The Parties shall forthwith enter into good faith negotiations to amend the Agreement so that the invalid, illegal or unenforceable provision is replaced by a valid, legal, and enforceable provision, which conforms to the extent possible to the intended purpose of the former provision.

Article 13: Notices

All notices, payments, or statements under this Agreement shall be in writing and shall be sent first-class certified mail, return receipt requested, postage prepaid, to the party concerned at the above address, or to any substituted address given by notice hereunder. Any such notice, payment, or statement shall be considered sent or made on the day deposited in the mails.

Article 14: Applicable law and disputes

14.1Without prejudice to the ESA Convention, especially its Annex I, this Agreement shall be governed and shall be interpreted in accordance with the laws of[Country].

14.2All disputes arising out of, or in connection with, the present contract shall be finally settled under the Rules of Arbitration of the International Chamber of Commerce by one or more arbitrators appointed in accordance with the said Rules.

14.3The language of arbitration shall be English. The place of arbitration shall be[City, Country].

The parties, having carefully read this Agreement, have indicated their agreement to all of the above terms by signing this Agreement on the respective dates below indicated. The Licenseeand ESA have each received a copy of this Agreement with both the Licensee’s and ESA's original ink signatures thereon.

Date: ………………………………
Signature: ………………………………
Name: Marco Ferrazzani
Title: Legal Counsel and Head of the Legal Department
European Space Agency / Date: ………………………………
Signature: ………………………………
Name:………………………………
Title:………………………………
[Name of Licensee]

[1]All mentioning of Know-How need to be removed throughout the text, if the Know-How is not licensed.

[2]provided that no Know-How has been licensed!

[3] “expiry” with yellow underline needs to be removed in 9.4 if the licence agreement shall expire with the expiration of all patent applications and patents