Standard Agreements

The IATC office handles a variety of agreements. We are listing below a list of some standard terms, and in some cases sample form agreements. Depending on the type of agreement and the engaging partner, negotiation of some of the terms may be possible provided that the final terms remain consistent with UC policy and standard practice for equity purposes.

Non-Disclosure Agreements (Two-Way/Mutual)

Outgoing Material Transfer Agreement

Incoming Material Transfer Agreement

UCSC IATC office is open to negotiating and using the provider’s form agreement as long as consistent with UC policy and practice.

Research Collaboration Agreement

Once a UCSC researcher and a company have decided to participate in a research project, a Research Collaboration Agreement is executed detailing the terms and conditions of the engagement. Common terms in these Agreements include:

• Confidentiality. Often a separate NDA has already been executed between the parties related to the research project, but the Research Agreement will include a standard confidentiality section to cover all confidential information exchanged during the project. Given that UC is a public institution, some aspects to the Agreement may not be kept confidential.
• Publication. UC is a public institution and is committed to the free and open exchange of ideas and publishing research results. All research results will be published as agreed under the terms of the Research Agreement. 
• Indemnification. Standard indemnification clause is included in every Research Agreement. Indemnification by UC is limited to its intentional or negligent acts. Additionally, UC is not able to indemnify for third party acts or assume third party liability.
• Export Control. UC on-campus research falls within the fundamental research exemption for export control. UC does not restrict access to research facilities or projects based upon citizenship status. See Export Controls for information on UC Export Control regulations.
• Intellectual Property. UC research building are funded using tax-free bonds. In order to stay within the safe harbor provisions of the tax code, UC must retain ownership of all intellectual property produced during research projects. To that end, UC offers its patentable intellectual property or copyrightable materials for exclusive and non-exclusive licenses. Research Agreements include the option to negotiate a license to the intellectual property resulting from the research work subject to the Agreement.

License Agreement

The following is a guideline of the most common terms, contractual obligations, and other provisions that are included in a UCSC technology license agreement. Each Agreement is negotiated on its own merits giving consideration for the special circumstances pertaining to the technology and the parties involved to arrive at mutually acceptable terms that are consistent with UC policy and practice for equity.

Due Diligence. UC recognizes the need for and desirability of encouraging the broad utilization of the results of University research in practical application for the general public benefit. Therefore, the Licensee is required to diligently proceed with the development, manufacture, and sale of the Licensed Products. 

License Fees. The following is a list of consideration items that are payable to UC under all technology license agreements:

• Issue fee: Initial fee paid to obtain the license
• Annual Maintenance fees: Paid until first commercial sale of product resulting from the intellectual property.
• Milestone fees: Interim fees paid during according to a schedule tied to a set of development and/or commercial milestones
• Patent cost: Licensee is required to cover all patent prosecution costs in all the jurisdictions in which a license is granted.
• Royalties: Paid as a percentage of product sales revenues. The payment of a Minimum Annual Royalty is required after the first commercial sale of the product.

Under certain circumstances, UCSC is open to receiving equity in the Licensee’s corporate entity as consideration in lieu of some of the fees listed above. 

All late payments incur interest charges.

Sublicenses. Generally, Licensee is permitted to grant sublicenses of the technology to third parties.

Assignability. Assigning a License Agreement requires UC’s prior written consent.

Progress and Royalty Reports. Licensee is required to submit annual progress and royalty reports.

Audit Rights. UC retains the right to audit Licensee’s books and records to confirm the accuracy of reporting.

Use of Names and Trademarks and Patent Marking. Specifies the extent to which Licensee may use The Regents name (i.e. The Regents of the University of California) in the context of the licensed technology and patents.

Warranty. Covers basic representations, warranties and disclaimers in relation to the intellectual property.

Patent Infringement. This section covers the process in the event of a patent infringement.

Indemnification. Standard indemnification clause is included in every License Agreement. Indemnification by UC is limited to its intentional or negligent acts. Additionally, UC is not able to indemnify for third party acts or assume third party liability.

Insurance. Licensee is required to carry liability insurance and other appropriate insurance covering its activities in connection with any work performed under the License Agreement.

Governing Laws and Venue. License Agreements are governed by and interpreted in accordance with the laws of the State of California, with the venue being in the State of California.

Government Approvals and Registrations. Licensee is responsible for all foreign government reporting and approval requirements.

Confidentiality. License Agreements include a standard confidentiality section to cover all confidential information exchanged under the Agreement. Given that UC is a public institution, some aspects to the Agreement may not be kept confidential.