UNITED STATES DEPARTMENT OF ENERGY
WASHINGTON, D.C. 20585
NONEXCLUSIVE PATENT LICENSE
This LICENSE made this 7th day DECEMBER, 2006, by and between the
United States of America, as represented by the United States
Department of Energy (hereinafter “LICENSOR” or
“DOE”) and USEC Inc. (hereinafter called
“LICENSEE”). (Each of the LICENSOR and the LICENSEE a
“Party” and collectively the
“Parties”.)
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6903 Rockledge
Drive
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Bethesda, MD
20817
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Inventions
owned by DOE or in which DOE has the right to license or otherwise
grant the right to use that were made or conceived by DOE employees
or by DOE contractor or subcontractor employees under contracts or
subcontracts awarded by DOE or by its Oak Ridge, Tennessee
facilities contractors, that pertain to the enrichment of uranium
using gas centrifuge technology, including the design and
fabrication of gas centrifuge machines and related systems. See
Exhibit A, List of LICENSED INVENTIONS. If either Party becomes
aware of additional inventions owned by DOE that pertain to gas
centrifuge technology or systems related thereto that LICENSEE may
desire to use for enriching uranium using gas centrifuge
technology, DOE agrees to take reasonable steps to add those
inventions to this LICENSE, subject to any licenses that may exist
for those inventions.
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This LICENSE
shall be effective upon the execution of this LICENSE by both
Parties and shall terminate upon the (i) termination or
expiration of the DOE lease for facilities used by the LICENSEE for
its centrifuge plant and return of such facilities to DOE or, if
LICENSEE utilizes the LICENSED INVENTIONS on property not leased
from DOE, then upon
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termination of
operations and completion of decontamination and decommissioning of
the facility utilizing the LICENSED INVENTIONS; (ii) upon the
expiration of all patents on LICENSED INVENTIONS; or (iii) as
provided by Paragraph 15 hereto, whichever is earlier. This
LICENSE shall be conditioned on LICENSEE’s acquiring and
maintaining a License from the Nuclear Regulatory Commission for
the operation of a gas centrifuge facility. To the extent LICENSEE
wants to extend the term of this LICENSE, a grant of an extension
will not be withheld unreasonably.
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Nonexclusive
license for LICENSEE’s use or manufacture (or use or
manufacture on the LICENSEE’s behalf) of the LICENSED
INVENTIONS for the enrichment of uranium in the U.S., or the sale
of enriched uranium products, and using the LICENSED INVENTIONS in
accordance with the Advanced Technology Demonstration and
Deployment milestones contained in Article 3 of the
June 17, 2002 Agreement Between DOE and LICENSEE (the
“June 17, 2002 Agreement”).
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WHEREAS: LICENSOR is the owner of or has the right to grant a
license in the above-identified LICENSED INVENTIONS.
WHEREAS: LICENSEE desires to obtain a nonexclusive license in the
above-identified LICENSED INVENTIONS.
WHEREAS: The licensing of said LICENSED INVENTIONS under the terms
provided herein is determined to be in the public interest and is
in accordance with the policy of the regulations on licensing of
government-owned inventions, 37 C.F.R. Part 404, as
promulgated under the authority of Section 208 of Pub. L.
96-517, (35 U.S.C. 208) and 10 C.F.R. Part 781.
NOW, THEREFORE, in consideration of the foregoing premises and of
the mutual covenants and obligations hereinafter contained, and
other good and valuable consideration, the Parties hereto agree as
follows:
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1. LICENSOR hereby grants to LICENSEE and LICENSEE hereby accepts,
subject to the terms and conditions herein recited, a non-exclusive
license to the LICENSED INVENTIONS (as specified herein) for the
LICENSE TERM (as specified herein) solely for the purposes
specified by the SCOPE OF LICENSE.
2. LICENSEE agrees to carry out the plan for development, using
and/or marketing of the LICENSED INVENTIONS as provided for in the
June 17, 2002 Agreement, and thereafter to continue to make
the benefits of the LICENSED INVENTIONS reasonably accessible to
the public through the production and/or sales of uranium
enrichment or enriched uranium products utilizing the LICENSED
INVENTIONS.
3. For the sole purpose of operating facilities within the U.S. and
in accordance with the June 17, 2002 Agreement, this LICENSE
may extend to subsidiaries that are controlled by the LICENSEE, but
it is not assignable or otherwise transferable without approval of
LICENSOR in writing, which approval will not be withheld
unreasonably. No request will be approved unless, at a minimum, the
assignee or transferee is a U.S. company that is a successor of
that part of the LICENSEE’s business to which the LICENSED
INVENTIONS pertain, and the U.S. Company meets applicable FOCI,
security clearance, and facility clearance requirements. If
LICENSEE extends this LICENSE to a subsidiary, LICENSEE shall
promptly notify the LICENSOR in writing. Subject to
LICENSOR’s approval in writing, LICENSEE may grant
sublicenses in the LICENSED INVENTIONS.
4. LICENSEE agrees that any centrifuge machines and major
components thereof embodying the LICENSED INVENTIONS or produced
through the use of the inventions will be manufactured
substantially in the United States and that any enrichment of
uranium performed using centrifuge machines embodying the LICENSED
INVENTIONS will be performed in the U.S.
5. LICENSEE shall submit periodic written reports, annually within
30 days of the anniversary date of this LICENSE, and such
other reports as reasonably requested by the LICENSOR, on its
efforts to bring the LICENSED INVENTIONS to a point of practical
application, with particular reference to the Milestones set forth
in the June 17, 2002 Agreement, and the extent to which the
LICENSEE thereafter continues to make the benefits of the
inventions reasonably accessible to the public. Subject to
compliance with this paragraph, LICENSEE may satisfy these
reporting requirements through the reporting requirements in
Article 3 of the June 17, 2002 Agreement with a copy to
LICENSOR pursuant to Paragraph 18 of this LICENSE.
The LICENSEE agrees to pay to the
LICENSOR the royalty amount specified in Exhibit B hereto. At
the request of the LICENSEE, LICENSOR will consider in good faith a
request by LICENSEE to modify the royalty payments due under this
LICENSE based
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on a substantial change in business or market conditions.
Additionally, upon written request by USEC, not later than sixty
days before royalty payments become due and payable, DOE may
approve a request to adjust the royalties due under the LICENSE in
any given year: (1) where third parties assert a claim for
patent infringement against USEC, the alleged infringement
necessarily arises out of the practice of the DOE-owned licensed
inventions and USEC incurs costs in defending against such claim;
or (2) where USEC owes royalties to third parties for use of
third party-owned patents that are necessary for the practice of
the DOE-owned licensed inventions. Except as provided in this
Section 6 there shall be no other royalty, fee, or other
charge or cost due or payable by LICENSEE for this LICENSE or for
the use of the LICENSED INVENTIONS or data provided under this
LICENSE.
7. LICENSEE shall pay to LICENSOR, on or before April 1 of each
year, any royalty or other payments due and payable under this
Agreement for use of the LICENSED INVENTIONS during the preceding
calendar year. LICENSEE shall keep true books of account containing
an accurate record of all data necessary for the computation of any
fees payable under this LICENSE, and shall render to LICENSOR
annually, on or before April 1 of each year, an accurate statement
of performance under the LICENSE, whether or not royalties, other
than the annual fees, are due and payable under the LICENSE. Such a
statement shall be in writing, showing in reasonable detail the
identification of SWU produced using the LICENSED INVENTIONS and
sold during the previous year. The statement shall include the
computation of the license fees and royalties due and payable.
LICENSEE shall from time to time permit the LICENSOR, by its
authorized representative, to examine the books of account of
LICENSEE to such an extent as may be reasonably necessary for
LICENSOR to determine the accuracy of any such
statement.
8. LICENSEE shall promptly report to LICENSOR any change in mailing
address, name, or company affiliation during the period of this
LICENSE, and LICENSEE shall promptly report any decision to
discontinue producing enriched uranium or providing uranium
enrichment using centrifuge machines embodying the LICENSED
INVENTIONS in the U.S.
9. LICENSOR makes no warranty or representation as to the validity
or patentability of any LICENSED INVENTIONS or that the exercise of
this LICENSE will not result in the infringement of any patent(s),
nor shall LICENSOR assume any liability whatsoever resulting from
the exercise of this LICENSE.
10. LICENSOR makes no representations, extends no warranties of any
kind, either express or implied, and assumes no responsibilities
whatever with respect to manufacture, use, sale, or other
disposition by LICENSEE, or its vendees or transferees, of products
incorporating or made by use of LICENSED INVENTIONS.
11. LICENSEE will indemnify and hold harmless LICENSOR for any
liability arising
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from activity under this LICENSE by LICENSEE, its agents, employees
or contractors at any tier. In the event of any inconsistency
between this indemnification provision and any provision in the
lease by the LICENSEE of the DOE facilities used by the LICENSEE
for its centrifuge plant using the LICENSED INVENTIONS then the
provisions of the lease will govern.
12. The grant of this LICENSE or anything related thereto shall not
be construed to confer on any person any immunity from or defenses
under the antitrust laws or from a charge of patent misuse, and the
acquisition and use of rights pursuant to this LICENSE shall not be
immunized from the operation of State or Federal law
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