ESA UNCLASSIFIED – For Official Use

PATENT LICENCE AGREEMENT FOR RESEARCH CONCERNING NON SPACE USE

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 European Patent No. […] with the title[…], which has a filing date of [date]and claims priority of [nation/region of application, application number].

hereinafter referred to as the “Licensed Patent”;

WHEREAS ESA wishes to grant to the Licenseea licence under the Licensed Patent to conduct Researchas defined in Article 1.1. andthe 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 its Member States’ own Purposes” / means activities and programmes undertaken by ESA or one of its member states in the field of space research and technology and their applications;
“Improvement” / means any improvement, enhancement, adaptation or modification to the Licensed Patent;
“Licensed Field” / means[…];
“Licensed Patent” / the European Patent No. […] with the title […], which has a filing date of [date] and claims priority of [nation/region of application, application number];
“Research” / means experimental or laboratory activities or work conducted to scientifically evaluate and gain knowledge about the Licensed Patent and its possible applications for further research or practical utilization. Research does not include the right to sell or transfer the Licensed Patent or any product or service derived from it to a third party for any purpose without the prior written permission of ESA.
“Technical Report” / means all technical information and market research data resulting from the Research.

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 Patent to conduct Research 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 commercially exploit the Licensed Patent, it may make a proposal to ESA in writing. ESA will consider the proposal and discuss with the Licenseethe possibility of a commercial licence agreement.

ARTICLE 3: Licensee’S OBLIGATIONS

3.1The Licensee shall submit to ESA withinthirty (30)days of the termination of this Agreement, a written Technical Report including a narrative summary of all Research performed. The Technical Report shall include and precisely state: (i) the objectives and goals ofthe Licensee; and (ii) all relevant information including technical information stating the results of testing and analyses conducted, and technical and performance results achieved by the Licenseeunder this Agreement as well as market research. The Technical Report shall summarise the significant findings, conclusions drawn, and recommendations resulting from the Research.

3.2The Licensee shall also provide in due course a written description of any invention, Improvement, or patentable discovery that arose or was created through the use of the Licensed Patent 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” by the Licensee.

3.3On each anniversary of the signature of this Agreement the Licensee shall provide the Licensor with a written report describing the efforts made by the Licensee in the preceding twelve (12) months with respect tothe Research.

3.4Upon receipt of a copy of the Licensed Patent and of a corresponding invoice, the Licensee shall pay to ESA a handling fee of 1000 EURO.

ARTICLE 4: ESA’S UNDERTAKING

Promptly after the signature of this Agreement, ESA shall make available to the Licensee a copy of the LicensedPatent.

ARTICLE 5: PROTECTION OF LICENSED Patent

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

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

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 Purposesto make, have made, use, distribute, sell, offer to sell, and/or import products and services that make use ofany Improvement.The license on the Improvements shall include the right for ESA and its Member States tosublicense to companies working under contract or subcontractors of said contractors, solely for ESA’s andits 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 Research performed under the Agreement it shall inform ESA in due course. After such notification ESA shall consult the Licenseeand investigate the reasons for failure to apply or abandonment of such rights. Following this consultation ESAmay require the Licenseeto assign to ESA free of charge the rights necessary to apply for such registered intellectual property rights. In such case, ESA will provide to the Licensee a corresponding assignment agreement for signature.

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 this 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 Licensee to grant the third party a license to the Improvement on conditions to be agreed between theLicensee, ESA and the third party. For the avoidance of doubt the Licensee may not unreasonably object to the terms of such license. If ESA cannot find a suitable third party to exploit such rights it can requirethe 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; or

(b) that the Licensed Patent is or will be valid or subsisting; or

(c) that the use of the Licensed Patent 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 thatapplies the Licensed Patent.

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 the Licensed Patent.

ARTICLE 9: DURATION AND TERMINATION

9.1This Agreement shall come into force upon its signature and shall remain in force for a period of 36 months.

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 Licensed Patent and 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; 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 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 Research.

(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 amendedin 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 made 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 Commerceby one or more arbitrators appointed in accordance with the said Rules.

14.3The language of arbitration shall beEnglish. 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 Licensee and ESA have each received a copy of this Agreement with boththe 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]

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