[name of consultant]
PRODUCT DEVELOPMENT ROYALTY AGREEMENT
This Product Development Royalty Agreement (Agreement) is entered into effective this day of , 20 (Effective Date), by and between Treace Medical Concepts, Inc., a Delaware corporation with its principal office located at 203 Fort Wade Rd. Suite 150, Ponte Vedra, FL 32081, along with its affiliated companies (Treace Medical), and , an individual having an address at (Assignor).
Treace Medical is in the business of researching, designing, developing and marketing medical devices used in connection with surgical applications.
Assignor has worked with employees and representatives of Treace Medical to help develop products defined by Treace Medical in accordance with the terms of this Agreement and of a Product Development Fee for Service Agreement dated between Assignor and Treace Medical (the Product Development Agreement).
Assignor desires to assign to Treace Medical all of Assignors rights in any and all Inventions and any and all associated Intellectual Property Rights.
Treace Medical desires to acquire all of Assignors rights with respect to any and all Inventions and all associated Intellectual Property Rights.
Treace Medical desires to utilize the technical skills and services of Assignor in order to conduct a commercially meaningful transfer of Assignors rights in the Inventions and all associated Intellectual Property Rights in order to fully carry out the development, clinical evaluation, marketing and commercialization of the Products.
Treace Medical and Assignor agree as follows:
Confidential Information means the terms of this Agreement, information and materials concerning Treace Medicals business affairs, business strategies, pricing, costs, employee compensation, marketing plans, developmental plans, customers, vendors, finances, properties, methods of operations, technology, procedures, computer programs and documentation, inventions, developments, trade secrets, and other such information, whether written or oral, that is confidential in nature.
Excluded Sales means sales of Products for use in connection with patients under the care and treatment of Assignor, any partner or associate surgeon with whom Assignor practices, any hospital or surgery center at which Assignor has privileges to perform surgery or any entity in which Assignor has an ownership interest that results in Assignor having the right to exercise control over the policies or business decisions of the entity. A list of facilities whose purchases will be excluded from royalties paid under this Agreement is attached as Exhibit B. Such facilities shall also include those associated with any other health care professional receiving royalties on the Products listed on Exhibit A.
Invention means the idea(s) and/or product(s) described in Section 3 and/or Exhibit A (attached), including any know-how and/or technical information relating to the Product(s) in the possession of Assignor, or hereinafter developed by Assignor in the course of Assignors providing services to Treace Medical pursuant to Section 6 of this Agreement or the Product Development Agreement.
Intellectual Property Rights or IP Rights means any patent and/or patent application relating to the Invention and/or Products and naming Assignor as an inventor or co-inventor. IP Rights include the following: any and all U.S. and foreign patents issuing from or claiming priority to any of the foregoing; any and all continuations, continuations-in-part, divisionals, reissues, or reexaminations based on or claiming priority to any of the foregoing; and any know-how and technology. IP Rights also include, without limitation, trade secrets; software; copyrights; trademarks; concepts; designs; techniques; formulae; inventions; trade names; trade dress; programs; advertising materials; and other documents, material, or information relating to the Invention(s) or Product(s).
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