MASSVENTIL PATENT LICENSE
TERMS AND CONDITIONS FOR USE, MANUFACTURE, AND DISTRIBUTION
The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this license (the “MassVentil License”) to the person or entity exercising the Licensed Rights, as defined below (the “Licensee”).
“Field of Use” means the treatment of patients having Covid-19 coronavirus infection.
“Licensed Patent Rights” means
(a) the following patent applications:
- International Patent Application No. PCT/HU2020/050013
- Hungarian Patent Application No. P2000116
(b) all divisional, continuation, and foreign counterpart applications claiming priority from any patent or patent application described in (a),
(c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b);
(d) all patents issuing from patent applications included in (a) through (c); and
(e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).
“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in the MassVentil License, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process, or (c) copyrighted matter, including software, the use or reproduction of which would constitute copyright infringement, but for the licenses granted in the MassVentil License, under copyright law.
“Licensed Rights” means the rights granted in section 2, subject to the terms and conditions of the MassVentil License.
“Necessary Patent Claims” means any patent claim(s), now owned or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the rights granted in Section 2, by the making, using, selling, or importation of processes or products that implement the Specification, but excluding any claims that are not necessary to implement the Specification as written.
“Specification” means the specification, if any, set forth in the License Data Record by the “Specification” entry.
“Territory” means worldwide.
“Term” means the period until December 31, 2020 or, if this expires later, the period while the status of the Covid-19 outbreak is officially categorized as “pandemic” by the World Health Organization (WHO) or, if this expires later, while the WHO’s global assessment of the threat posed by the Covid-19 is “High” or “Very High”.
2. GRANT OF RIGHTS
2.1. Subject to the terms and conditions of the MassVentil License, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Licensed Patent Rights, in the Territory and during the Term, to make, have made, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use. For the purpose of the MassVentil License making, having made, selling, offering for sale and importing Licensed products shall be considered as acts falling within the Field of Use if such acts are performed during the Term.
3.1 No fees, royalties, or other monetary consideration are required during the Term in the Field of Use.
4. OTHER CONDITIONS
4.1 Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents. In particular, Licensee shall:
(a) for the purpose of use of the Licensed Products: acknowledge, in any reasonable manner, the use of the Patent Rights;
(b) for the purpose of making, having made, selling, offering for sale and importing the Licensed Products provide to business partners, consumers and potential users of the Licensed Products indicate that the Licensed Product is licensed under the MassVentil License, and include the text of, or the URI or hyperlink to, the MassVentil License.
4.2 At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.
4.3 Licensor may use the information provided by Licensee to analyse and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce the MassVentil License, and/or to comply with a court order, or otherwise as required by law.
5.1 The MassVentil License terminates, unless earlier terminated as permitted below, at the end of the Term, or in the event this occurs earlier: upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights. However, in the event of a material breach of the MassVentil License the MassVentil License is terminated automatically.
5.2 Licensor may terminate the MassVentil License upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.
5.3 Licensee may terminate the MassVentil License by providing Licensor with at least thirty (30) days prior written notice.
5.4 The following sections shall survive termination of the MassVentil License: 6, 7, 8, and 9.
6.1 Licensor warrants that it has the right and authority to grant the rights and licenses granted in the MassVentil License.
6.2 Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.
6.3 Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.
7.1 Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by the MassVentil License or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee. Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defence of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defence of such claims at its own expense.
8. TRADEMARKS AND ATTRIBUTION
8.1 Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.
9. GENERAL PROVISIONS
9.1 Nothing in the MassVentil License constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.
9.2 A delay or failure in enforcing a right or obligation under the MassVentil License shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under the MassVentil License. A waiver under the MassVentil License is only effective if made in writing and signed by the party granting the waiver.
9.3 An amendment or modification of the MassVentil License is effective only if made in writing and signed by the duly authorized representatives of the parties.
9.4 The MassVentil License constitutes the entire MassVentil License between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, MassVentil Licenses, representations, memorandums, and understandings.
9.5 If any provision of the MassVentil License is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of the MassVentil License shall continue in full force and effect.
9.6 Licensee may not assign any of its rights under the MassVentil License, delegate any of its obligations under the MassVentil License, or otherwise transfer the MassVentil License, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of the MassVentil License. Licensor may assign the MassVentil License in connection with a sale, merger, or transfer of the assets to which the MassVentil License relates, provided that the assignee assumes all rights and obligations under the MassVentil License.
9.7 The MassVentil License is governed by and interpreted in accordance with the laws of the jurisdiction of Hungary. The parties agree that the proper jurisdiction and venue for any disputes arising out of the MassVentil License shall be in the courts of Budapest, Hungary.
9.8 No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in the MassVentil License.
9.9 EXCEPT FOR THE OBLIGATION TO MAKE PAYMENTS (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THE MASSVENTIL LICENSE, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.