Repository: UIHistories Project: Board of Trustees Minutes - 1924 [PAGE 93]

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board of trustees

[November 9,

University reassign to Professors Parr and Layng all rights to the foreign patents for this process as part or all of their share of the remuneration from the use of the process under the patent, according as m a y be determined by agreement between these gentlem e n and the University at a later date.

MEMORANDUM OF SUGGESTED AGREEMENT between The Koppers

Company, hereinafter called "Koppers" and the University of Illinois, hereinafter called "University." 1. Pending United States Patent application, Serial N o . 260,541, for certain inventions of S. W . Parr and T. E. Layng has been assigned by the inventors to the University of Illinois. It is understood that this application has been allowed by the United States Patent Office. 2. "University" is to grant "Koppers," its successors and assigns, the sole and exclusive license and right to employ, for the life thereof, the United States Patent corresponding to Application Serial N o . 260,541, and like license and right to all present or future patents assigned to "University" relating to modifications or improvements of or pertaining to the inventions comprised in United States Patent Application, Serial N o . 260,541. 3. "University" is to permit the inventors, S. W . Parr and T. E. Layng, under their own personal contract, to assist "Koppers" in the development, improvement, and exploitation of the inventions that are the subject matter of this agreement and any further inventions of said Parr or Layng relating to such subject matter; and agrees to render available to "Koppers" all the information in its possession that will be of assistance in relation to said inventions. 4. It is recognized that at present it is impossible to estimate the value of the inventions and that, in view of the complicated relations of these inventions to present developed processes, it is impossible to compute what increased earnings could be obtained by the application of said inventions. It is, therefore, agreed to use the following method as a basis for determining the payments to be made by "Koppers" to the "University" in consideration of the license andrightto employ these inventions: "Koppers" shall be entitled, but not obligated, to construct and operate a demonstration plant, embodying the inventions covered by the above mentioned application, treating any amount of coal therein at the discretion of "Koppers" up to but not exceeding 1000 tons of coal per day. The construction and operation of such demonstration plant, whenever built, shall be free of payment of any royalty. O n the basis of results obtained during a year's operation of the demonstration plant, or during a shorter period of operation if mutually agreed, a royalty charge shall be calculated applicable to all other installations by "Koppers" making use of the inventions comprised in this agreement. The amount of said royalty charge and the manner of payment thereof shall befixedby mutual agreement or by arbitration to be provided for. The royalties collected from any such other installations shallfirstbe applied in toto to reimburse "Koppers" for expenses necessarily incurred in the development of the inventions that are the subject matter of this agreement which shall include any expense incurred under terms of agreement on this same subject with Messrs. Parr and Layng and shall include the net cost of the demonstration plant or such part of said net cost as shall not then have been reimbursed from the earnings of said plant itself. After "Koppers" has been fully reimbursed for all such expenses, all additional royalties collected under this agreement shall, after deducting the necessary expenses of collection, be divided in the proportion of 8 0 % to "Koppers" and 2 0 % to "University." 5. "University" agrees to settle all claims against the inventions that are the subject matter of this agreement so that there will be no charges against The Koppers C o m p a n y by the inventors or by other parties who m a y have assisted in the development of the inventions and so that "Koppers" shall have full, free, and unrestricted ponding In Serial N o or260,541 whatever except as herein as to States Patent corressubject employ event.ofexpensebeing decided license to so provided. herein provided, right6. to no chargesaid litigation affectingthe adversely of Unitedinvalidate the patent, to to the the inventions under the validity be granted as