R2020-156 Resolution Authorizing Sponsored Research Agreement with the Board of Trustees of the University of Illinois for Hydrologic, Sediment and Nutrient Monitoring Upper Sangamon River Watershed

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of any patent application filed at SPONSOR's expense and will give SPONSOR reasonable opportunity to comment. If SPONSOR elects not to have UNIVERSITY file patent applications,then UNIVERSITY may,at its discretion and at its expense,file patent applications in the United States and in foreign countries for any UNIVERSITY or Joint Invention. 6.3.2. FOREIGN FILING ELECTION. SPONSOR will notify UNIVERSITY of any foreign countries in which SPONSOR desires a license at least 60 days prior to the respective foreign filing due date. 6.3.3. COSTS. If SPONSOR requests UNIVERSITY to file a patent application or if SPONSOR elects to license UNIVERSITY Inventions, SPONSOR will pay UNIVERSITY, within 30 days of invoice date, all documented costs to secure and maintain the patents. 6.4 LICENSING. In consideration of SPONSOR's support of the Research, UNIVERSITY grants to SPONSOR the following: 6.4.1 NON-COMMERcIAL USE LICENSE. A non-exclusive,non-transferable,royalty-free license to practice each UNIVERSITY Invention for non-commercial purposes. 6.4.2 COMMERCIAL USE LICENSE. A. UNIVERSITY INVENTIONS: The option to negotiate a royalty-bearing commercial license in a designated field of use and territory,for either non-exclusive or exclusive rights in each UNIVERSITY Invention,which SPONSOR may elect by written notice to UNIVERSITY no later than six months after UNIVERSITY's notice of Invention disclosure.The negotiation period for the license shall be three months from the date of notice of election.If the parties have not entered into a license before the end of the negotiation period,then UNIVERSITY may license the Invention to third parties without further obligation to SPONSOR. B. JOINT INVENTIONS: The option to negotiate an exclusive,royalty-bearing commercial license in a designated field of use and territory which SPONSOR may elect by written notice to UNIVERSITY no later than six months after UNIVERSITY's notice of Invention disclosure.The negotiation period for the license shall be three months from the date of notice of election.If the parties have not entered into a license before the end of the negotiation period,then UNIVERSITY may non-exclusively license its interest in the Joint Invention to third parties without further obligation to SPONSOR. 6.S. BACKGROUND INTELLECTUAL PROPERTY. Nothing in this Agreement grants to either Party any rights or interest in the other Party's y s Background Intellectual Property. "Background Intellectual Y kgProperty" means a all works of authorship I created outside the p scope of this Agreement and (b) potentially patentable discoveries, including pending patent applications and issued patents, conceived or first reduced to practice outside the scope of this Agreement. Any Background Intellectual Property that is reasonably anticipated by the Principal Investigator to be required to perform the Research or to practice the results thereof will be specified in an exhibit to this Agreement. 6.6. CREATE ACT. The Parties agree by marking this box Q that this Agreement constitutes a "joint research agreement"as that term is defined by the Cooperative Research and Technology Enhancement Act of 2004,pre-America Invents Act("AIA")35 U.S.C. § 103(c)and/or AIA USC 102(c)and 100(h). In the event of any Inventions, the Parties will reasonably cooperate in invoking the CREATE Act and its companion regulations to overcome an obviousness or novelty rejection of a patent application. SPA Form Updated 06012018 Page 5 of 9