Terms and Procedures for CRISPR-Cas9 Patent Submissions
Dear Patent Rights Holder,
Thank you for your interest in submitting patent assets for evaluation to determine your eligibility to participate in discussions facilitated by MPEG LA regarding creation of a CRISPR-Cas9 Joint Licensing Platform. The terms and procedures for submission of patent asset(s) follow.
Eligible patent assets consist of issued patents or published patent applications having one or more claims directed to:
- the CRISPR-Cas9 System or any of its elements (as described in the CRISPR-Cas9 Reference Model);
- a composition of matter containing the CRISPR-Cas9 System or any of its elements;
- a composition of matter derived from use of the CRISPR-Cas9 System or any of its elements; or
- a method of use, or a method of manufacture, pertaining to any of the foregoing.
Only one patent asset needs to be submitted and determined to be eligible according to these criteria in order to qualify you, your company or institution (“you”) to participate in discussions regarding creation of a CRISPR-Cas9 Joint Licensing Platform. Although patent applications meeting these criteria may qualify you to participate in these discussions, only issued patents will be included in an actual CRISPR-Cas9 Joint Licensing Platform.
To submit patent asset(s) for internal evaluation by MPEG LA (the “Licensing Administrator”), please use the Submission Letter, which is to be presented on your company letterhead, signed, and mailed or emailed to the Licensing Administrator. In your submission of patent asset(s) you must (a) identify the submitted patent asset(s) [the Patent Submission Form may be used]; (b) if the patent asset is not published in English, provide an English-translation of the claims; and (c) if requested by the Licensing Administrator, provide the prosecution history and cited references.
An initial internal evaluation of your patent asset(s) will be conducted by the Licensing Administrator at no charge to you, and you will be under no obligation to commit to participation in the CRISPR-Cas9 Joint Licensing Platform unless and until such time as you execute agreements governing the terms and conditions under which the patent asset(s) will be included in the CRISPR-Cas9 Joint Licensing Platform for licensing by the Licensing Administrator.
The Licensing Administrator will conduct internal evaluations solely on the basis of nonconfidential information. You agree, however, not to disclose the results of that evaluation for any purpose (including without limitation as evidence in any legal proceeding) except in connection with your participation in the discussions facilitated by the Licensing Administrator regarding creation of a CRISPR-Cas9 Joint Licensing Platform and if you choose to do so, joining the CRISPR-Cas9 Joint Licensing Platform as a Licensor. Similarly, the Licensing Administrator will treat information related to your submission of patents as confidential except as required by law to be disclosed or as authorized by you. By your submitting patents for evaluation, you, other participants and the Licensing Administrator acknowledge their common interest, and communications made in that connection are presumed to be in furtherance of that intention and subject to a common interest privilege and do not otherwise constitute a waiver of any attorney-client or work product protection that may exist under federal, state or other laws of any applicable jurisdiction.
The Licensing Administrator will notify you of your eligibility to join discussions facilitated by the Licensing Administrator regarding creation of a CRISPR-Cas9 Joint Licensing Platform based on your submission as described above. If you are eligible and decide to participate, you will be invited to attend a confidential meeting with other eligible patent rights holders hosted by the Licensing Administrator to explore the potential for joint terms on which the CRISPR-Cas9 Joint Licensing Platform may be offered. Except as otherwise expressly stated in this letter, attendance comes with no obligation or commitment other than to engage in confidential discussions (based solely on publicly available information) nor is there an obligation or commitment to attend any future discussions.
Please note that by submitting a patent asset(s), you represent and warrant that you have the right to grant to the Licensing Administrator a nonexclusive license and/or sublicense rights under the submitted patent asset(s) in order to enable the Licensing Administrator to offer to others a license or sublicense for such submitted patent asset(s) as part of an actual CRISPR-Cas9 Joint Licensing Platform in the event you should decide to join.
We thank you in advance for your cooperation and look forward to working with you on this important matter.
Lawrence A. Horn
President and CEO
MPEG LA, LLC