Exhibit 10.12
LICENSE AGREEMENT
This AGREEMENT, effective this 15th day of April, 2002, ("EFFECTIVE
DATE") by and between XXXXX UNIVERSITY RESEARCH FOUNDATION, a corporation duly
organized and existing under the laws of the State of Rhode Island and having a
principal office at 00 Xxxxxxxxxxxx Xxxxxx, Xxxxxxxxxx, Xxxxx Xxxxxx 00000
("BURF") and Spectra Systems Corporation, Inc. a Delaware corporation having its
principal office at 000 Xxxxx Xxxx Xx., Xxxxxxxxxx, Xxxxx Xxxxxx 00000
("LICENSEE").
WHEREAS BURF is the owner by assignment from Xxxxx University of
several patent applications and patents relating to the studies of Xx. Xxxxx
Xxxxxxx conducted at Xxxxx University; and
WHEREAS, LICENSEE has expertise in commercial laser machining and
materials processing and is further assembling the capabilities needed to
develop the above referenced patent applications and patents into one or more
commercial products; and
WHEREAS BURF desires to have its patents, inventions and proprietary
information used in the public interest and is willing to grant a license
thereto on the terms set forth below; and
WHEREAS LICENSEE desires to obtain a license for such patents,
inventions and proprietary information rights for purposes which may include
developing commercial products upon the terms and conditions set forth below;
NOW, THEREFORE in consideration of the premises and the mutual
covenants contained herein, the parties agree as follows:
ARTICLE 1 - DEFINITIONS
For the purpose of this Agreement, the following words and phrases shall have
the following meanings:
1.1. "AFFILIATE" shall mean a corporation or other business entity
controlled by, controlling or under common control with, a party hereto. For
purposes of this Agreement, control of a corporation or other business entity
shall include direct or indirect beneficial ownership of fifty one percent (51%)
or more of the voting interest in, or a fifty one percent (51%) or greater
interest in the equity of, such corporation or other business entity.
1.2 "CONFIDENTIAL INFORMATION" shall mean all information related to
the PATENT RIGHTS which is disclosed by one party to the other, to the extent
that such information, as of the date of disclosure, is not (a) known to the
receiving party (as
demonstrated by competent documentary evidence); (b) disclosed in published
literature through no fault of the receiving party; (c) generally available to
industry; or (d) obtained by the receiving party from a third party without
binder of secrecy, provided, however, that such third party has no
confidentiality obligations to the disclosing party or to any of its affiliates
relating to the disclosed information.
1.3 "FIRST COMMERCIAL SALE" shall mean the initial transfer by
LICENSEE, or any of its AFFILIATES or sublicensees, to an unrelated third party
of LICENSED PRODUCTS for commercial use and not for research, development or
testing purposes.
1.4 "Licensed product" shall mean any product, device, software,
protocol, process or service, the manufacture, use or sale of which is within
the claims of PATENT RIGHTS.
1.5 "PATENT RIGHTS" shall mean (a) all United States and foreign patent
applications listed in Exhibit A hereto; and (b) any additions, continuations,
continuations-in-part, divisions, reissues or renewals and extensions based
thereon. PATENT RIGHTS shall not include any patent or patent application
(additions, continuations, continuations-in-part, divisions, reissues or
renewals or extensions based thereon) as to which LICENSEE shall have
surrendered its rights under Section 5.3 or 7.4 hereof.
1.6 "GOVERNMENT RIGHTS" shall mean the rights of the United States of
America, as set forth in Public Laws 96-517 and 98-620 (35 U.S.C.(S)200 et seq.)
or any successor thereto, as well as federal regulations promulgated thereunder,
all as modified and in effect from time to time.
1.7 "TERRITORY" shall mean the world.
ARTICLE 2 - GRANT
2.1 Grant. BURF hereby grants to LICENSEE, subject to the terms herein
recited, the exclusive except for the Government Rights-, transferable , right
and license under the PATENT RIGHTS with the right to grant sublicenses, to (i)
make, have made, use, sell and distribute (directly or indirectly through third
parties) LICENSED PRODUCTS in the TERRITORY; and (ii) to practice the Patent
Rights (collectively, the "License Grant"). LICENSEE agrees that for so long as
this license remains exclusive in the United States any LICENSED PRODUCT
produced for sale in the United States will be manufactured substantially in the
United States unless otherwise permitted under applicable law.
2.2 Reservation of Research Rights. Anything to the contrary
notwithstanding, BURF, reserves the right to use (and to permit Xxxxx University
to use) the PATENT RIGHTS and CONFIDENTIAL INFORMATION for its own research and
educational non-commercial purposes, subject to the confidentiality provisions
of this Agreement.
2.3 Rights of the Federal Government. Any right granted in this
Agreement greater than that permitted by the Government Rights shall be subject
to modification as may be
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required to conform to the provisions of the Government Rights. BURF shall take
all action necessary pursuant to the Government Rights to preserve its ownership
of all PATENT RIGHTS.
ARTICLE 3 - LICENSE FEE
3.1 License Fee. LICENSEE shall grant BURF a license issue fee of [***]
3.2 Royalties. No royalties shall be due BURF with respect to the
License Grant or any sublicenses thereof.
ARTICLE 4 - REPORTS AND RECORDS
4.1 Reports. Upon the request of BURF, LICENSEE shall report to BURF on
its efforts to bring the PATENT RIGHTS into commercial use. BURF shall keep all
information furnished under this Article 4 confidential.
4.2 Marking. LICENSEE and its sublicensees agree to xxxx all LICENSED
PRODUCTS sold in the United States with all applicable U.S. patent numbers to
the extent commercially practicable. All LICENSED PRODUCTS shipped to or sold in
other countries shall be marked in such a manner as to conform with the patent
laws and practice of the country to which such products are shipped or in which
such products are sold, to the extent commercially practicable.
ARTICLE 5 - PATENT PROSECUTION AND ENFORCEMENT
5.1 BURF and LICENSEE shall cooperate fully in the preparation, filing,
prosecution, maintenance and defense of the PATENT RIGHTS and of all patents and
patent applications licensed to LICENSEE hereunder, executing all papers and
instruments or requiring inventors to execute such papers and instruments so as
to enable BURF to apply for, to prosecute and to maintain patent applications
and patents in BURF's name in any country, using counsel of LICENSEE's
selection. Each party shall provide to the other prompt notice as to all matters
which come to its attention and which may affect the preparation, filing,
prosecution, maintenance or defense of any such patent applications or patents.
5.2 LICENSEE shall reimburse BURF for all reasonable expenses incurred
by BURF for the preparation, filing, prosecution and maintenance of PATENT
RIGHTS except those previously reimbursed by LICENSEE or third parties. LICENSEE
shall pay BURF within thirty (30) days of receipt of invoices from BURF. Late
payment of these amounts shall be subject to interest charges at an annual rate
of one and one-half percent (1 1/2%) in excess of
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
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the prime rate published from time to time in the Wall Street Journal. BURF
shall take responsibility for the preparation, filing, prosecution and
maintenance of such patent applications and patents and shall furnish to
LICENSEE copies of documents relevant to any such preparation, filing,
prosecution or maintenance. If BURF fails promptly to take any action reasonably
requested by LICENSEE and LICENSEE reasonably determines that such failure will
materially and adversely affect the PATENT RIGHTS, LICENSEE, in the name and as
the agent of BURF, may take all such action.
5.3 If LICENSEE elects to no longer pay the expenses of a patent
application or patent included within PATENT RIGHTS, LICENSEE shall notify BURF
not less than sixty (60) days prior to such action and shall thereby surrender
its rights under such patent or patent application on a country by country
basis.
5.4 Enforcement. BURF and LICENSEE shall each give immediate notice to
the other of any infringement of PATENT RIGHTS by third parties which may come
to their attention. BURF hereby grants LICENSEE, at LICENSEE's expense, the
right to institute and conduct such legal action against third party infringers
of the PATENT RIGHTS, or enter into such settlement agreements, as are deemed
appropriate by LICENSEE. The benefits of any action taken by LICENSEE shall be
retained by LICENSEE. In any such action, LICENSEE shall be entitled to join
BURF as a party plaintiff and BURF will be obligated to reasonably assist at
LICENSEE's expense. Should LICENSEE fail to commence actions or proceedings
against infringers of the PATENT RIGHTS within sixty (60) days of receiving
written notice thereof from BURF, BURF, at BURF's expense, shall have the right
to initiate and pursue such action and receive all resulting benefits. If BURF
fails to take such action within sixty (60) days of receiving written notice
from LICENSEE, LICENSEE shall again have such right and authority to take such
actions as set forth in this Section 5.4. No settlement, consent judgment or
other voluntary final disposition of the suit may be entered into without the
consent of BURF, which consent shall not be unreasonably withheld, delayed or
conditioned.
ARTICLE 6 - REPRESENTATIONS AND WARRANTIES
6.1 Utilization. LICENSEE may take such steps as LICENSEE may deem
appropriate to commercialize the PATENT RIGHTS.
6.2 Patent Ownership. BURF represents and warrants that it is the owner
of the PATENT RIGHTS by virtue of assignment from the inventors of PATENT
RIGHTS.
6.3 Authority. Each party represents and warrants that it has the right
and authority to enter this Agreement.
6.4 Exceptions. Nothing in this Agreement shall be construed as:
(A) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement is or will be
free from infringement of patents, copyrights and trademarks of third parties;
provided, however, that BURF has not
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received any notice or claim that the Patent Rights infringe upon the
intellectual property of any third party.
(B) conferring rights on BURF to use in advertising, publicity or
otherwise the name of LICENSEE or of its employees, AFFILIATES or Sublicensees
without the prior written approval of LICENSEE; or
(C) conferring rights on LICENSEE or Sublicensees to use in
advertising or publicity the name of "Xxxxx University", "Xxxxx University
Research Foundation" or their staff and employees without the prior written
approval of BURF.
6.5 Disclaimer. EXCEPT AS EXPRESSLY PROVIDED HEREIN, BURF MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE. THE PARTIES ACKNOWLEDGE THAT THIS AGREEMENT IS
NOT A CONSUMER TRANSACTION UNDER THE UNIFORM COMMERCIAL CODE OF RHODE ISLAND.
6.6 LICENSEE Representations and Warrants . LICENSEE covenants,
represents and warrants to BURF as follows:
6.6.1 Corporate Existence; Compliance with Law. LICENSEE: (i) is duly
organized, validly existing and in good standing under the laws
of the State of Delaware, and (ii) is duly qualified to do
business as a foreign corporation under the laws of the State
of Rhode Island.
6.6.2 Power; Authorization; Enforceable Obligations. LICENSEE has all
requisite power and authority to execute, deliver and perform
this License Agreement and has taken all necessary action to
authorize the License Agreement and issuance of shares
hereunder. This License Agreement, has been duly executed and
delivered on behalf of LICENSEE and constitutes a legal, valid
and binding obligation of LICENSEE enforceable against LICENSEE
in accordance with its terms, except as enforceability may be
limited by applicable bankruptcy, insolvency, reorganization,
moratorium or similar laws affecting the enforcement of
creditors' rights generally.
6.6.3 Capitalization. The authorized capital stock of LICENSEE as of
the date hereof consists of 23,000,000 shares of Common Stock,
$0.01 per share, and 10,007,178 shares of Preferred Stock, par
value $0.01 per share, of which 1,059,869 shares of Common
Stock and 9,214,744 shares of Preferred Stock are issued and
outstanding.
6.6.4 Authorization and Issuance of Shares. The issuance of the
Shares has been duly authorized and, upon delivery to BURF of
certificates therefore against payment in fulfillment of all
obligations hereunder in accordance with the
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terms hereof, such Shares will have been validly issued and
fully paid and will be non-assessable.
6.6.5 No Legal Bar. The authorization, execution, delivery and
performance of this License Agreement by LICENSEE will not
violate any requirement of law or any contractual obligation.
6.6.6 No Litigation. No litigation, investigation or proceeding is
pending or, to the best knowledge of LICENSEE, threatened by or
against LICENSEE or any officer, director or employee thereof
which might reasonably be expected to have a material adverse
effect on the business, operations, property, prospects or
financial or other condition of LICENSEE.
6.7 BURF Representations and Warranties. BURF covenants, represents and
warrants to LICENSEE as follows:
6.7.1 BURF is aware of LICENSEE's business affairs and financial
condition and has acquired sufficient information about
LICENSEE to reach an informed and knowledgeable decision to
acquire the securities. BURF is acquiring these securities for
investment for BURF's own account only and not with a view to,
or for resale in connection with, any "distribution" thereof
within the meaning of the Securities Act of 1933. BURF is an
"accredited investor" as that term is defined under Rule 501
promulgated under the Securities Act of 1933.
6.7.2 BURF understands that the securities have not been registered
under the Securities Act by reason of a specific exemption
therefrom, which exemption depends upon, among other things,
the bona fide nature of BURF's intent as expressed herein. In
this connection, BURF understands that, in the view of the
Securities and Exchange Commission, the statutory basis for
such exemption may not be present if BURF's representations
meant that BURF's present intention was to hold these
securities for a minimum capital gains period under the tax
statutes, for a deferred sale, for a market rise, for a sale if
the market does not rise, or for a year or any other fixed
period in the future.
6.7.3 BURF further acknowledges and understands that the securities
must be held indefinitely unless they are subsequently
registered under the Securities Act or an exemption from such
registration is available. BURF further acknowledges and
understands that LICENSEE is under no obligation to register
the securities. BURF understands that the certificate
evidencing the securities will be imprinted with a legend that
prohibits the transfer of the securities unless they are
registered or such registration is not required in the opinion
of counsel satisfactory to LICENSEE.
6.7.4 BURF is aware of the adoption of Rule 144 by the Securities and
Exchange Commission, promulgated under the Securities Act,
which permits limited
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public resale of securities acquired in a non-public offering
subject to the satisfaction of certain conditions.
6.7.5 BURF further acknowledges that in the event that all of the
requirements of Rule 144 are not met, compliance with
Regulation A or some other registration exemption will be
required; and that although Rule 144 is not exclusive, the
staff of the Securities and Exchange Commission has expressed
its opinion that persons proposing to sell private placement
securities other than in a registered offering and other than
pursuant to Rule 144 will have a substantial burden of proof in
establishing that an exemption from registration is available
for such offers or sales and that such persons and the brokers
who participate in the transactions do so at their own risk.
6.7.6 Authorization; Enforceable Obligations. This License Agreement
has been duly authorized, executed and delivered by BURF and
constitutes a legal, valid and binding obligation of BURF
enforceable against BURF in accordance with its terms, except
as enforceability may be limited by applicable bankruptcy,
insolvency, reorganization, moratorium or similar laws
affecting the enforcement of creditors' rights generally.
6.7.7 Each of the inventors listed on the patent applications
associated with the Patent Rights have executed assignment
agreements assigning all right, title, and interest to such
Patent Rights to BURF.
6.8 Registration under Securities Act; Transfer. BURF (i) understands and
agrees that the Shares have not been registered or qualified under the
Securities Act or any state securities or blue sky laws, because the offer,
issuance and sale of said Shares is exempt from the registration or
qualification requirements of the Securities Act and applicable state securities
or blue sky laws; (ii) acknowledges that reliance on said exemptions is
predicated in part on the accuracy of BURF's representations, warranties and
covenants in this Section; (iii) understands and agrees that the Shares being
acquired by BURF hereunder must be held by BURF indefinitely unless a subsequent
disposition thereof is registered or qualified under the Securities Act and
applicable state securities or blue sky laws or is exempt from registration or
qualification, and that LICENSEE is not required to register or qualify the
Shares or to take any action to make such an exemption available; and (iv)
acknowledges that (a) there is no public market for the Shares, (b) there can be
no assurance that any such market will ever develop, and (c) there can be no
assurance that BURF will be able to liquidate BURF's investment in LICENSEE.
ARTICLE 7 - TERM AND TERMINATION
7.1 Bankruptcy. If LICENSEE undergoes a liquidation in bankruptcy, or
files a petition for liquidation in bankruptcy, or receiver, trustee or assignee
for the benefit of creditors, whether by the voluntary act of LICENSEE or
otherwise, and if LICENSEE fails to terminate any such proceeding within one
hundred twenty (120) days after its commencement, BURF may at its election
terminate this Agreement upon thirty (30) days written notice to LICENSEE.
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LICENSEE agrees to provide written notice to BURF of LICENSEE's or third party's
intention to file a petition for liquidation of LICENSEE in bankruptcy prior to
such filing, if known.
7.2 Material Breach. Upon any material breach or default by LICENSEE,
BURF shall have the right to terminate this Agreement and the rights and license
granted hereunder by ninety (90) days notice by certified mail to LICENSEE. Such
termination shall become effective at the end of such ninety (90) day period
unless LICENSEE has cured any such breach or default prior to the expiration of
the ninety (90) day period.
7.3 Termination by LICENSEE. LICENSEE may terminate this Agreement upon
ninety (90) days notice by certified mail to BURF. LICENSEE may terminate its
rights and obligations under this Agreement as to any patent included in the
PATENT RIGHTS upon ninety (90) days notice by certified mail to BURF.
7.4. Obligations on Termination. Upon termination of this Agreement for
any reason, nothing herein shall be construed to release either party of any
obligation which matured prior to the effective date of such termination, and
LICENSEE may, after the effective date of such termination, complete LICENSED
PRODUCTS in the process of or manufacture at the time of such termination and
sell the same together with LICENSED PRODUCTS in inventory.
7.5 Sublicenses. Any sublicenses granted by LICENSEE under this Agreement
shall provide for termination or assignment to BURF, at the option of BURF, of
LICENSEE'S interest therein upon termination of this Agreement.
7.6 Survival. Article 8 and 7.4 shall survive termination of this
Agreement.
ARTICLE 8 - INDEMNIFICATION AND INSURANCE
8.1 Indemnification. Except as provided below, LICENSEE shall indemnify,
defend and hold harmless BURF, XXXXX UNIVERSITY and their trustees, officers,
professional staff, employees, agents and their respective successors, heirs and
assigns (the "Indemnitees"), against any liability, damage, loss or expense
(including reasonable attorneys' fees and expenses of litigation) incurred by or
imposed upon the Indemnitees or any one of them in connection with any claims,
suits, actions, demands or judgments arising out of (i) any theory of product
liability (including, but not limited to, actions in the form of tort, warranty,
or strict liability) concerning any product, process of service made, used or
sold pursuant to any right or license granted under this Agreement, or (ii) the
exercise by LICENSEE of the rights and licenses granted to LICENSEE under this
Agreement. LICENSEE shall have no obligation to indemnify any of the Indemnitees
under this Article 8 to the extent that a court of competent jurisdiction or an
arbitrator pursuant to Article 12 determines that the damages were the result of
the fraud, gross negligence or willful misconduct of the Indemnitees. LICENSEE
reserves all rights it may have against the Indemnitees arising by reason of
such fraud, gross negligence or willful misconduct.
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8.2. Defense. LICENSEE agrees, at its own expense, to provide attorneys
reasonably acceptable to BURF to defend against any actions brought or filed
against any party indemnified hereunder with respect to the subject of indemnity
contained herein, whether or not such actions are rightfully brought.
8.3 Insurance. Beginning at the time of the FIRST COMMERCIAL SALE,
LICENSEE shall, at its sole cost and expense, procure and maintain comprehensive
general liability insurance in amounts consistent with the prudent industry
practice, naming the Indemnitees as additional insureds, to the extent they may
be so named without material increase in the premium. To the extent available on
commercially reasonable terms and rates, such comprehensive general liability
insurance shall provide (i) product liability coverage and (ii) broad form
contractual liability coverage for LICENSEE's indemnification under this
Agreement. LICENSEE shall provide BURF with written evidence of such insurance
upon request of BURF. To the extent available on commercially reasonable terms
and rates LICENSEE shall maintain such comprehensive general liability insurance
beyond the expiration or termination of this Agreement during the period that
any product, process, or service, relating to, or developed pursuant to, this
Agreement is being commercially distributed or sold by LICENSEE or by an agent
of LICENSEE and for a reasonable period after the period thereafter. LICENSEE
shall notify BURF in the event any insurance is not available as provided
herein. If such insurance is not available on commercially reasonable terms,
LICENSEE will not sell, distribute or otherwise dispose of LICENSED PRODUCTS
unless and until LICENSEE and BURF have agreed to a reasonable arrangement or
accomodation to protect the Indemnitees from exposure to product liability
claims.
8.4 Sublicense. Without in any way limiting LICENSEE'S Indemnification
obligations hereunder, LICENSEE shall require all of its sublicensees hereunder
to indemnify and hold harmless BURF and Xxxxx University under the same terms as
stated in Section 8.1 and to carry insurance under the same terms as Section
8.3.
ARTICLE 9 - ASSIGNMENT
9.1 BURF agrees that its rights and obligations under this AGREEMENT may
not be transferred or assigned without the prior written consent of LICENSEE.
LICENSEE may assign or otherwise transfer this Agreement and the license granted
hereby and the rights acquired by it hereunder only if such assignment or
transfer (a) is to an AFFILIATE or (b) is accompanied by the sale or transfer of
LICENSEE's entire business or of that part of LICENSEE'S business to which the
license granted hereby relates; provided, that any assignee or transferee has
agreed in writing to be bound by the terms and provisions of this AGREEMENT .
Upon such assignment or transfer and agreement by such assignee or transferee,
the term LICENSEE as used herein shall include such assignee or transferee.
ARTICLE 10 - EXPORT REQUIREMENTS
10.1 License to Export. Any and all licenses, permits or other
governmental approvals for the export of materials, data, know-how, and the like
carried out under this Agreement by LICENSEE shall be the responsibility of
LICENSEE.
ARTICLE 11 - PAYMENTS, NOTICES AND COMMUNICATIONS
11.1 Any payment, notice or other communication pursuant to this
Agreement shall be sufficiently made or given on the date of mailing if sent to
such party by certified first class mail, postage prepaid, addressed to it at
its address below or as it shall designate by written notice given to the other
party:
In the case of BURF:
Xxxxx University Research Foundation
00 Xxxxxxxxxxxx Xxxxxx
Xxx 0000
Xxxxxxxxxx, XX 00000
Attention: President
In the case of LICENSEE:
Spectra Systems Corporation
000 Xxxxx Xxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Attention: President
With a required copy to:
Xxxxxxxxxxx & Xxxxxxxx LLP
00 Xxxxx Xxxxxx
Xxxxxx, XX 00000
Attn: Xxxxxxx X. Xxxxxx
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ARTICLE 12 - ARBITRATION
12.1 Any controversy arising under or related to this Agreement, or any
disputed claim by either party against the other under this Agreement excluding
any dispute relating to patent validity or infringement arising under this
Agreement, shall be settled by arbitration in accordance with the Licensing
Agreement Arbitration Rules of the American Arbitration Association. Upon
request of either party, arbitration will be by:
a. A third party arbitrator mutually agreed upon in writing by
LICENSEE and BURF within thirty (30) days of such arbitration request; or
b. A member of the American Arbitration Association.
12.2 Judgment upon the award rendered by the Arbitrator may be entered
in any court having jurisdiction thereof. The parties shall be entitled to
discover in like manner as if the arbitration were a civil suit in the Rhode
Island Superior Court.
12.3 Any arbitration shall be held in Providence, Rhode Island, unless
the parties hereto mutually agreed in writing to another place.
ARTICLE 13 - MISCELLANEOUS PROVISIONS
13.1 Confidentiality. During the duration of this Agreement and for a
period of five (5) years thereafter, each party agrees to use reasonable efforts
not to (i) disclose to third parties any CONFIDENTIAL INFORMATION of the other
party or (ii) use the CONFIDENTIAL INFORMATION of the other party in any manner
except as contemplated by this Agreement. Nothing in this Agreement shall limit
in any way the disclosure of information required by a public authority of the
disclosure of information that is necessary to prevent imminent danger to the
public.
13.2 Limitation of Liability. Neither party shall be liable to the
other for any special, consequential, incidental or indirect damages arising out
of this Agreement, however caused, under any theory of liability.
13.3 Governing Law. This Agreement shall be construed, governed,
interpreted and applied in accordance with the laws of the State of Rhode
Island, U.S.A., except that questions affecting construction and effect of any
patent shall be determined by the law of the country in which the patent was
granted.
13.4 Entire Agreement. The parties hereto acknowledge that this
instrument sets forth the entire agreement and understanding of the parties
hereto as to the subject matter hereof, and shall not be subject to any change
or modification except by the execution of a written instrument subscribed to by
the parties hereto.
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13.5 Severability. The provisions of this Agreement are severable, and
in the event that any provisions of this Agreement are determined to be invalid
or unenforceable under anycontrolling body of law, such invalidity or
enforceability shall not in any way affect the validity or enforceability of the
remaining provisions hereof.
ARTICLE 14 - IMPROVEMENTS
BURF shall have no right, title or interest, in or to improvements to
the TECHNOLOGY made by LICENSEE, LICENSEE's sublicensees or LICENSEE'S
consultants, contractors, subcontractors, joint venturers, customers or the
like, except that to the extent that a product or process incorporating such
improvements is within the scope of a LICENSED PRODUCT, the terms and conditions
of this Agreement apply.
XXXXX UNIVERSITY RESEARCH SPECTRA SYSTEMS
FOUNDATION CORPORATION
By: /s/ Xxxxxxx Xxxxxxx By: /s/ Xxxxx X. Xxxxxxx
------------------------- -------------------------
Title: Title:
---------------------- -----------------------
Date: Date:
----------------------- ------------------------
EXHIBIT A
List of patent applications and patents
[***]
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
Page 12 of 14
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
Page 13 of 14
