Please read the terms and conditions of this license agreement ("Agreement") carefully. By clicking "Accept" on the "Review and Accept Agreement" page during the licensing process, you are agreeing to the following terms and conditions on behalf of the Licensee identified below, and you represent and warrant that you are authorized to do so.
Itasca Grape Vines
Non-Exclusive Plant Material License Agreement
Licensee desires to propagate Itasca grape vines for commercial sale of vines in the United States.
The Licensee shall pay to the University a one-time, non-refundable license fee of $AGREEMENT - UNIT PRICE ($) USD. Beginning at the end of the first year the Licensee shall pay to the University an annual royalty of $1.00 USD for each vine of the Licensed Plant Material sold or $500.00 USD, whichever is larger. The royalty payment is due within 30 days after June 30 of each year during the term of this Agreement. Any vine that is propagated prior to termination or end of term of this Agreement shall be subject to this royalty payment, even if the vine is sold during the Post-Termination Period.
Licensee: LICENSEE - ORGANIZATION
Contact: LICENSEE - FIRST NAME LICENSEE - LAST NAME
Contact Email: LICENSEE - EMAIL ADDRESS
Contact Phone: LICENSEE - PHONE NUMBER
Business Address -
LICENSEE ADDRESS - STREET LICENSEE ADDRESS - STREET (LINE TWO)
LICENSEE ADDRESS - CITY, LICENSEE ADDRESS - STATE LICENSEE ADDRESS - ZIP CODE
LICENSEE ADDRESS - COUNTRY
TERMS AND CONDITIONS - The following terms and conditions govern this Agreement by and between Regents of the University of Minnesota, a constitutional corporation under the laws of the State of Minnesota, ("University") and the Licensee.
Definitions - For purposes of this agreement, the following terms have the following meanings.
"Effective Date" means the date when the Licensee clicks the button indicating agreement with all the terms and conditions of this Agreement and has successfully completed payment in the checkout process. The Effective Date is GENERAL - EFFECTIVE DATE.
"Licensed Intellectual Property Rights" means, the University’s rights under United States Plant Patent application 62/387,956 entitled ‘Grape Vine Plant Named “Itasca” ‘, filed January 11, 2016 and any patent issued thereunder.
"Licensed Plant Material" means, collectively, the plant variety or material claimed in one or more of the Licensed Intellectual Property Rights.
"Licensed Product" means any product or good made by the Licensee during the term of this Agreement and the Post-Termination Period that but for the granting of the rights set forth in this Agreement would infringe (including under the doctrine of equivalents) one or more claims in a Licensed Intellectual Property Right.
"Permitted Sales" means sales of Vines to purchasers for
- commercial production of Fruit for the manufacture of wine and
- non-commercial production of Fruit for personal use only.
FOR CLARIFICATION, SALES OF VINES FOR THE COMMERCIAL PRODUCTION OF FRUIT FOR THE MANUFACTURE OF NON-ALCOHOL CONTAINING FOOD OR BEVERAGES IS PROHIBITED.
"Fruit" means any and all fruit produced from a Vine which, but for the granting of rights set forth in this Agreement, would infringe (including under the doctrine of equivalents) one or more claims in a Licensed Intellectual Property Right.
"Term" commences on the Effective Date and expires automatically on the date that no Licensed Intellectual Property Rights remain pending or valid.
"Territory" means United States of America.
"Vine" means any vine propagated from the Licensed Plant Material which, but for the granting of rights set forth in this Agreement, would infringe (including under the doctrine of equivalents) one or more claims in a Licensed Intellectual Property Right.
Grant of Licenses - Subject to the terms and conditions set forth in this Agreement, Regents of the University of Minnesota ("University") grants Licensee the non-exclusive, non-sublicensable license to grow, asexually propagate offer to sell or sell, offer to dispose or dispose (all for Permitted Sales only) of the Licensed Products in the Territory.
The Licensee shall not and shall not permit others to use or alter the Licensed Plant Material or any progeny, portion or derivative thereof for breeding purposes, genetic manipulation, transformation, mutagenesis, non-propagative tissue culture, molecular or cellular techniques, or for any form of plant variety improvement.
Licensee shall apply a conspicuous tag or label (affixed in an appropriate manner) to all specimens (e.g. bundles) in a form substantially similar to the example in Exhibit A, for all Licensed Plant Material or Licensed Product produced, sold or offered for sale by Licensee. Licensee shall not apply such tag or label on or in connection with any other cultivar or variety of plant material. Such tag or label, and any other labeling material, packaging, advertising, or other material referring to the Licensed Intellectual Property Rights shall include appropriate variety name, the patent numbers of any plant patents or plant breeders rights that issue, and a statement that Licensed Plant Material or Licensed Product, whichever the case may be, is sold under a license from the University of Minnesota and that unlicensed propagation of Licensed Plant Material or Licensed Product is prohibited.
This agreement is effective on the Effective Date.
Rights of the U.S. Government and Third Parties - No provision of this Agreement limits, conditions or otherwise affects the United States of America's or any other third party’s rights and interests in the Licensed Plant Material.
University’s Rights - The University retains all right, title and interest in and to the Licensed Plant Material and the Licensed Intellectual Property Rights except for the licenses granted to the Licensee. No provision of this Agreement shall be construed to grant the Licensee, by implication, estoppel or otherwise, any rights other than the rights expressly granted it in this Agreement.
Use of the University's Name and Trademarks or the Names of University Faculty, Staff or Students - The University hereby grants to the Licensee the right to state in its promotional and informational materials that the Licensed Products were developed at the University of Minnesota, as long as such statements are in regular 12-point (or smaller) typeface and do not imply an endorsement or promotion by the University of the Licensee or of the Licensee's Products.
No provision of this Agreement grants the Licensee any right or license to use the name or trademarks of the University or the names or identities of any member of the faculty, staff, or student body of the University. The Licensee shall not use any such trademarks, names, or identities without the University's and, as the case may be, such member’s prior written approval.
Sports – Licensee shall report immediately to the University any sport or mutation ("Sports") of the Licensed Plant Material discovered by Licensee. The Licensee hereby grants the University all rights, titles, and interests, including all patent and other intellectual property rights in and to any such Sports.
Licensee agrees to assist in the assignment of rights to the University to any such Sports of the Licensed Plant Material. Upon request, the Licensee will provide the University or a representative designated by the University with plant material of the Sports of the Licensed Plant Material suitable for propagation. The Licensee is not allowed to propagate the Sports of the Licensed Plant Material without written permission of the University.
Annual Royalty Payments – The Licensee shall deliver to the University the payment specified as Royalties in the License Fees section. The Licensee may make such payments by check or wire transfer. All checks to the University shall be payable to “Regents of the University of Minnesota” and shall be mailed to the University at the address specified in the Notices section of this Agreement. Upon request the University shall deliver to the Licensee written wire transfer instructions.
The Licensee’s royalty rate and annual royalty as provided in the License Fees section are subject to change. The University, at its sole discretion, may increase the above-noted royalty rate or minimum annual royalty by giving Company ninety (90) days prior written notice. Such increased royalty rate or minimum annual royalty shall be effective on a date selected by the University.
Written Sales Report – Within thirty (30) days after the end of each Year during the term of this Agreement and the Post-Termination Period, the Licensee shall deliver to the University a written sales report recounting the number of all sales or other dispositions of Licensed Products during such Year.
Records Retention - Throughout the term of this Agreement
and the Post-Termination Period and for five (5) years thereafter, the
Licensee, at its expense, shall keep and maintain complete and accurate records
of all production, sales, and other dispositions of Licensed Products during
the term of this Agreement and the Post-Termination Period and all other
records related to this Agreement.
The Licensee, at its expense, shall keep and maintain complete and accurate records of all propagation and planting of vines of the Licensed Plant Material and all other records related to this Agreement. These records shall be furnished to the University upon request.
Payment Terms Upon Checkout - Licensee shall pay, upon checkout, the License Fee and any applicable taxes, duties, fees, excises or other charges. All amounts payable hereunder by Licensee are non-refundable and non-creditable. All amounts payable hereunder by Licensee shall be payable in United States Dollars.
Audit - The University, at its expense except as set forth below in this section, shall have the right to inspect and audit the records such as purchase, propagation and planting reports at the Licensee's principal office and during the Licensee’s normal business hours, or such other locations as the parties shall mutually agree. Licensee shall allow the University reasonable opportunity to observe vineyards or greenhouses if requested to do so. The University shall have the right to determine the Licensee’s compliance with the terms of this Agreement. The Licensee shall reimburse the University for all its out-of-pocket expenses to inspect and audit such records if the University, in accordance with the results of such inspection and audit, determines that the Licensee has underpaid amounts owed to the University by at least three percent (3%) or twenty-five thousand and no/100 U.S. dollars ($25,000.00 USD), whichever is smaller. In connection with, and prior to the commencement of, an audit, if the Licensee so requests in writing to the University, the Licensee, the University and the auditor shall enter into an agreement prohibiting the auditor and the University from disclosing the Licensee’s nonpublic, proprietary information to any third party without the Licensee’s prior written consent; provided, however, that consistent with generally accepted auditing standards and the auditor’s professional judgment, the auditor may disclose such information to the University and its agents, counsel, or consultants. The Licensee acknowledges that such an agreement is adequate to protect its legitimate interests, and the parties agree that there shall be no additional nondisclosure agreement demanded as a condition to the commencement of an audit and the University’s exercising its rights under this section.
Inspection Rights - The University (or its authorized representatives), at all reasonable times and without prior notice to the Licensee, may inspect all the Licensee’s specimens of the Licensed Plant Material, as well as the methods of reproduction, growth, cultivation, and quality control of the Licensed Plant Material, on the premises of the Licensee or elsewhere, so that the University may be assured that the Licensed Plant Material is propagated and grown in accordance with industry standards and in compliance with the terms of this Agreement. The University may deliver to the Licensee a written notice of deficiency if, in the University’s sole opinion, any of the plants of the Licensed Plant Material fail to comply with the standards, specifications, and controls of University. Within 60 days of its receipt of a notice of deficiency, the Licensee shall promptly correct such failure or deficiencies in accordance with the University’s written instructions and recommendations. If the Licensee fails to correct such failures or deficiencies to the sole satisfaction of the University within such sixty-day period, the University may immediately terminate this Agreement.
Third Party Infringement of a Licensed Intellectual Property Right - Upon learning of substantial, credible evidence that a third party is making, using or selling a product in the Territory that infringes a Licensed Intellectual Property Right, the Licensee promptly shall deliver written notice of the possible infringement to the University, describing in detail the information suggesting infringement of the Licensed Intellectual Property Right. The University shall determine, in its sole discretion, whether and which steps to take to investigate, stop or seek compensation for infringement of a Licensed Intellectual Property Right; provided, however, the University shall not have an obligation under this Agreement to commence or maintain a suit or action and nothing in this Agreement grants any right to Licensee to commence, maintain or otherwise threaten to commence or maintain any suit or action against a third party.
Licensee’s Alleged Infringement of a Third Party's Rights - Upon learning of substantial, credible evidence that its propagation, sale, or other disposition of a Licensed Product potentially or likely infringes the intellectual property rights of a third party or that a claim in a Licensed Intellectual Property Right is invalid, in whole or in part, the Licensee promptly shall deliver written notice of the possible infringement or claimed invalidity to the University.
Termination for Cause - If a party (the “Defaulting Party”) fails to perform a material term of this Agreement, the other party (the “Aggrieved Party”) may deliver a written notice of default to the Defaulting Party. The Aggrieved Party may terminate this Agreement by delivering to the Defaulting Party a written notice of termination if the default has not been cured in full within sixty (60) days of the delivery to the Defaulting Party of the notice of default.
Automatic Termination - This Agreement without further act of a party shall terminate with respect to all Licensed Intellectual Property Rights on the date on which no Licensed Intellectual Property Right is valid and subsisting in any country in the Territory and no application for a Licensed Intellectual Property Right is pending in any such country. The University shall promptly deliver to the Licensee a written notice of the expiration of each Licensed Intellectual Property Right or rejection of each application for each Licensed Intellectual Property Right.
If the Licensee reports, as required under payments section, no sales or dispositions of Licensed Products for a period of two (2) consecutive Years, or the Licensee fails to deliver a report as required for such two year period, this Agreement, without further act of a party, shall terminate thirty (30) days after the last day of such period, notwithstanding the expiration or invalidation of any Licensed Intellectual Property Right.
General Termination - A party may terminate this Agreement by delivering to the other party a written notice of termination at least ninety (90) days prior to the end of a Year, and in such event, this Agreement shall terminate at the end of that Year.
Bankruptcy and Insolvency - A party (the “Insolvent Party”) shall promptly deliver to the other party a written notice if the Insolvent Party (i) becomes insolvent; (ii) voluntarily files or has filed against it a petition under applicable bankruptcy or insolvency laws which the Insolvent Party fails to have released within thirty (30) days after filing; (iii) proposes any dissolution, composition or financial reorganization with creditors or if a receiver, trustee, custodian or similar agent is appointed, or (iv) makes a general assignment for the benefit of creditors (each, an “Event of Insolvency”). Upon the occurrence of an Event of Insolvency, this Agreement may be terminated by delivering to the Insolvent Party a written notice of termination at least ten (10) days prior to the date of termination.
Post-Termination Period - After the termination of this Agreement prior to the expiration or invalidation of the Licensed Intellectual Property Right, the Licensee may sell or dispose of Licensed Products in the Territory for one (1) calendar year after the date of termination, provided the Licensed Products were planted prior to the effective date of termination of this Agreement. Within thirty (30) days after the end of such one (1) calendar year, the Licensee shall destroy all its stock of, and cause its agents and contractors to destroy all its and their stock of, Licensed Plant Material licensed under this Agreement. The Licensee shall deliver to the University written confirmation of the destruction of all such stock as required under this Agreement. After the termination of this Agreement, the Licensee shall not (and shall not authorize others on its behalf to) grow, propagate or use the Licensed Plant Material except as permitted in this section.
Licensee's Release - For itself and its employees and agents, the Licensee hereby releases the University and its regents, employees and agents, forever, from any and all actions, claims, or liabilities relating to or arising out of the University’s acts or omissions with the exception of the University’s warranties set forth in the Express Warranties section.
Licensee's Indemnification - Throughout the term of this Agreement and thereafter, the Licensee shall indemnify, defend and hold the University and its regents, employees and agents harmless from all suits, actions, claims, liabilities, demands, damages, losses or expenses (including reasonable attorneys' and investigative expenses), relating to or arising out of the Licensee’s and each of the Licensee’s agent’s acts and omissions, including, without limitation, any contract, tort or other claim, arising out of or relating to a Licensed Product, including, without limitation, breach of contract and warranty and products liability claims.
Licensee 's Insurance - Throughout the term of this Agreement,
or during such period as the parties shall agree in writing, the Licensee shall
maintain in full force and effect comprehensive general liability (CGL)
insurance, with single claim limits acceptable to the University. Such insurance
policy shall include coverage for claims that may be asserted by the University
against the Licensee under the indemnification section of this Agreement and
for claims by a third party against the Licensee or the University arising out
of purchase or use of a Licensed Product. Such insurance policy shall name the
University as an additional insured if the University so requests in writing.
Such insurance policy shall require the insurer to deliver written notice to
the University at the address set forth in this Agreement, at least thirty (30)
days prior to the termination of the policy. Upon receipt of the University's
written request, the Licensee shall deliver to the University a copy of the
certificate of insurance for such policy.
The provisions of this section shall not apply if the University agrees in writing to accept the Licensee’s self-insurance plan as adequate insurance.
Express Warranties - Each party represents and warrants to the other party that it has full corporate power and authority to execute, deliver and perform this Agreement, and that no other corporate proceedings by such party are necessary to authorize the party's execution or delivery of this Agreement.
DISCLAIMER - EXCEPT FOR THE WARRANTIES SET FORTH IN THE EXPRESS WARRANTIES SECTION, THE UNIVERSITY DISCLAIMS AND EXCLUDES ALL WARRANTIES, EXPRESS AND IMPLIED, CONCERNING THE LICENSED PLANT MATERIAL, LICENSED INTELLECTUAL PROPERTY RIGHTS, AND LICENSED PRODUCTS, INCLUDING, WITHOUT LIMITATION, WARRANTIES OF NON-INFRINGEMENT AND THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR PARTICULAR PURPOSE.
In addition to the foregoing, the University expressly disclaims any warranties concerning and makes no representations:
- that an application for a Licensed Intellectual Property Right will be approved or that a Licensed Intellectual Property Right will remain valid and subsisting throughout the term of this Agreement;
- concerning the validity or scope of any Licensed Intellectual Property Right; or
- hat the propagation, sale, or disposition of a Licensed Product will not infringe or violate a third party's domestic or foreign intellectual property rights.
LIMITATION OF LIABILITY - UNIVERSITY IS NOT LIABLE FOR ANY INDIRECT, INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES, OR DAMAGES FOR LOSS OF PROFITS, LOSS OF DATA, INCURRED BY THE LICENSEE OR ANY THIRD PARTY, WHETHER IN AN ACTION IN CONTRACT OR TORT (INCLUDING NEGLIGENCE), OR ANY OTHER LEGAL THEORY, EVEN IF THE UNIVERSITY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. IN NO EVENT WILL THE UNIVERSITY’S AGGREGATE LIABILITY UNDER THIS AGREEMENT EXCEED THE LICENSE FEE PAID TO THE UNIVERSITY UNDER THE AGREEMENT. THIS LIMITATION APPLIES REGARDLESS OF WHETHER OTHER PROVISIONS OF THIS LICENSE HAVE BEEN BREACHED OR HAVE PROVEN INEFFECTIVE. THE EXISTENCE OF MORE THAN ONE CLAIM WILL NOT ENLARGE OR EXTEND THESE LIMITS. LICENSEE ACKNOWLEDGES AND AGREES THAT THE FOREGOING LIABILITY LIMITATIONS ARE ESSENTIAL ELEMENTS OF THIS LICENSE AND THAT IN THE ABSENCE OF SUCH LIMITATIONS, THE MATERIAL AND ECONOMIC TERMS OF THIS LICENSE WOULD BE SUBSTANTIALLY DIFFERENT.
Export and Regulatory Restrictions – The Licensee shall ensure that the propagation, sale or transfer of a Licensed Product complies with all applicable federal and provincial law, including all federal export laws and regulations regarding the use of the Licensed Plant Material in the relevant Territory.
Right to Injunctive Relief - Licensee acknowledges and agrees that monetary damages are not sufficient to compensate the University in the event of Licensee’s material breach or violation of this Agreement, and that the University may be irreparably harmed by such breach or violation, and that the University will have the right to seek other remedies available to it in law and equity to remedy such breach or violation, including injunctive and equitable relief. If Licensee fails to perform an obligation or otherwise breaches one or more of the terms of this Agreement, Licensee shall pay the University’s costs and expenses (including actual attorneys’ and investigative fees) to enforce the terms of this Agreement.
Governing Law and Forum – The internal laws of the State of Minnesota shall govern the validity, construction and enforceability of this Agreement, without giving effect to the conflict of laws principles thereof. Any suit, claim, or other action to enforce the terms of this agreement may be brought only in the state courts of Hennepin County, Minnesota. The Licensee hereby submits to the jurisdiction of that court and waives any objections it may have to that court asserting jurisdiction over the Licensee or its assets and property. This Agreement is not to be governed by the United Nations Convention on Contracts for the International Sale of Goods.
Entire Agreement - This Agreement constitutes the entire understanding of the parties with respect to the subject matter hereof, and supersedes all prior agreements and understandings of the parties on such subject matter. This Agreement may be amended, only in writing, and duly executed by all the parties.
Assignments - The Licensee may not assign or sublicense its interests or delegate any right or duty under this Agreement, unless the University has consented, in writing, to such assignment, sublicense or delegation. An assignment, sublicense or delegation made in violation of this section shall be void and shall not bind the other party.
Compliance With Laws - Licensee represents and warrants that its use and sale of the Licensed Plant Material will comply with all applicable laws and regulations.
Survival - The following provisions (to the extent they appear in this Agreement) survive termination of the Agreement: " Disclaimer, Limitation of Liability, Indemnification, Right to Injunctive Relief, Governing Law, and any other provision, which by its nature is intended to survive.
Relationship of the Parties - In entering into, and performing their duties under the Agreement, the parties are acting as independent contractors and independent employers. No provision of the Agreement creates or is to be construed as creating a partnership, joint venture, or agency relationship between the parties. No party has the authority to act for or bind the other party in any respect.
Severability - If a court of competent jurisdiction adjudges a provision of the Agreement to be unenforceable, invalid, or void, such determination is not to be construed as impairing the enforceability of any of the remaining provisions hereof and such provisions will remain in full force and effect.
Notice - In order to be effective, all notices, requests, and other communications that a party is required or elects to deliver must be in writing and must be delivered personally, or by facsimile or electronic mail (provided such delivery is confirmed), or by a recognized overnight courier service or by United States mail, first-class, certified or registered, postage prepaid, return receipt requested, to the other party at its address set forth below or to such other address as such party may designate by notice given under this section:
If to University:
Office for Technology
Commercialization, University of Minnesota
Attn: Contracts Manager
McNamara Alumni Center
200 Oak St. SE, Suite 280
Minneapolis, MN 55455
If notice alleges breach of the Agreement, a copy must be sent to:
Office of the General
Counsel, University of Minnesota
Attention: Director of Transactional Law Services.
200 Oak Street, SE
Minneapolis, MN, 55455
If to Licensee: As set forth above in the "Licensee" section.
Non-Exclusive Plant Material License Agreement – Itasca Grape
Language for tag or label affixed to all specimens of Licensed Plant Material or Licensed Product sold by Licensee.
“The Itasca grape variety is protected by a pending plant patent application (application number 62/387,956, submitted January 11, 2016) by the University of Minnesota. This variety may only be propagated and sold by individuals/entities who have a license agreement with the University of Minnesota. All unlicensed propagation of this variety, including use in your own vineyard, is prohibited.”