Repository: UIHistories Project: Board of Trustees Minutes - 1938 [PAGE 791]

EXTRACTED TEXT FROM PAGE:

1938]

UNIVERSITY OF ILLINOIS

789

except that in case the Company discontinues the prosecution of any of said applications as provided for in paragraph 9 of this agreement, then, from that time on, any expenses incurred in the prosecution by the University of said applications shall be paid by the University. 2. That if any patentable discoveries concerning the elimination of sulphurous gases from stack gases be made during the course of such investigation as may be conducted under any existing research agreement between the University and Utilities Research Commission, Inc. or extension or assignment thereof which inventions the Company considers worthy of patenting in the United States or foreign countries, the Company shall request the University to make application for United States Letters Patent and foreign patents covering such inventions in the name or names of University agents concerned in making such discoveries, and the University shall assign to the Company all right, title and interest in and to such inventions, applications and patents on the conditions herein stated, and the Company shall diligently prosecute such applications and make reasonable efforts to obtain United States Letters Patent or foreign patents for such inventions at the Company's own expense, provided, however, that if the Company informs the University in writing that it does not desire any particular invention or inventions assigned to it, then the University shall be under no obligation to assign said invention or inventions. 3. That the provisions of P a r a g r a p h 2 shall apply to any patentable discoveries resulting directly and exclusively from researches made under any such research agreement aforesaid, provided such discoveries are made not later than one year after termination of said research agreement or any extension thereof. 4. That the University shall promptly notify the Company of any and all discoveries or inventions which its investigators may make relative to sulphur fumes in stack gases, within the provisions of Paragraphs 2 and 3 hereof, and render all reasonable assistance to the Company in obtaining Letters Patent, by procuring the necessary signatures to the papers and making available full information concerning the inventions. 5. That where the Company grants licenses under the patents referred to in this agreement, said licenses shall be made with provisions for the use of the patents which will safe-guard the public, during the life of said patents, from unreasonable restrictions or exorbitant royalties for the use of later patents that may depend for their usefulness on the patents referred to in this agreement. 6. That the Company itself, or by means of a licensee or licensees, will make reasonable and diligent efforts to develop and promote such of the inventions referred to in this agreement as to the Company seem to warrant such procedure. 7. That the Company shall pay annually to the University twenty-five per cent (25%) of all royalties, license fees, or compensations which it may receive under any license agreements or assignments of the inventions covered by this agreement. As to any inventions for which applications for patents have been filed and assigned to the Company and for which patents have been issued, the Company shall, upon request, inform the University fully concerning the status thereof from the standpoint of commercial development, licensing thereunder, and receipts under licensing agreements. T h e Commission shall file copies of all licensing agreements with the University immediately upon the execution thereof. 8. That the Company shall have the right to discontinue the prosecution of any of said applications for patents which have been or may be assigned by the University to the Company, and in that event the Company shall, upon written request from the University, reassign said discontinued application to the University. The Company will, if requested by the University, at least once every six months report the status and progress of all patent applications pending in the Patent Office, pursuant to this agreement. 9. Upon thirty (30) days written notice by the University to the Company of its desire to terminate its future obligations under paragraphs 1, 2, 3 and 4