Exhibit 10.11
LICENSE AGREEMENT
THIS AGREEMENT, effective this 2nd day of March 1994, ("EFFECTIVE DATE") by
and between XXXXX UNIVERSITY, an educational institution located in Providence,
Rhode Island and its technology licensing agent 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 (hereinafter collectively referred to as
"XXXXX"), and SPECTRA SCIENCE CORPORATION, a corporation duly organized and
existing under the laws of the State of Delaware ("LICENSEE") and having a
principal office at 000 Xxxxx Xxxxxx, Xxxxxxx, Xxxxx Xxxxxx 00000.
WHEREAS, XXXXX is the owner of certain inventions related to laser emission
in high gain, strongly scattering media; and
WHEREAS, XXXXX desires to have such inventions and any resulting patent
rights 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 inventions and any
resulting patent rights upon the terms and conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the premises and covenants contained
herein, the parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS
For the purpose of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "FIRST COMMERCIAL SALE" shall mean the initial transfer by LICENSEE or
its sublicensee, to an unrelated third party of LICENSED PRODUCTS subject to
royalties hereunder for commercial use and not for research, development or
testing purposes.
1.2 "LICENSED PRODUCTS" shall mean any product the manufacture, use or sale
of which is within the claims of the PATENT RIGHTS.
1.3 "NET SALES" shall mean the gross sales collected from unrelated third
party customers by LICENSEE for LICENSED PRODUCTS, less the sum of (a)
transportation, insurance, handling charges, discounts, and returns, (b)
commissions and other fees in amounts customary in the trade paid to third party
distributors and other sales agencies and (c) sales, excise, turnover and
similar taxes and any duties and other governmental charges imposed upon the
production, importation, use or sale of such LICENSED PRODUCTS.
In the event that (i) LICENSEE shall manufacture and/or sell an instrument
or system (a "System"), which consists of more than one component or device, and
(ii) one or more of the components or devices in the System is within the claims
of the PATENT RIGHTS ("Patented Components"), and one or more of the components
or devices in the System is not within the claims of the PATENT RIGHTS
("Unpatented Components"), then for the purposes of this Agreement, the Patented
Components shall be deemed to be LICENSED PRODUCTS and subject to payment of
royalties hereunder, but the Unpatented Components and the entire System shall
not be LICENSED PRODUCTS and shall not be subject to the payment of royalties
hereunder. The NET SALES with respect to any such Patented Component shall be
calculated as a proportion of the NET SALES of the System, based on the separate
selling prices of the individual Patented Components and Unpatented Components
included therein, or, if all of such Patented Components and Unpatented
Components are not sold separately, then based on the relative value of the
Patented Components and the Unpatented Components and the technology embodied
therein, which relative value shall be negotiated in good faith by the parties.
In the event the parties are not able to agree on such relative value, it will
be determined by submission to arbitration in accordance with Section 12.5
hereof. In construing this Section, it is the intention of the parties that a
royalty be paid only on that portion of a System which, if sold separately,
would infringe any of the PATENT RIGHTS. An instrument or Component will be
deemed a separate instrument or component if such instrument or component is
capable of functioning either independently, or in combination with additional
separate instruments or components of the type generally available in the
market. For example, if Spectra sells a product consisting of a laser, a
separate power supply, and a computer which operates and controls the laser, and
if the laser contains a laser tube which is within the claims of the PATENT
RIGHTS, as well as other optical, electronic and mechanical components, then,
not withstanding such other electrical and mechanical components the entire
laser would be a Patented Component and subject to royalty hereunder, but the
entire System and the computer and power supply would not be subject to royalty
hereunder.
1.4 "PATENT RIGHTS" shall mean (a) any United States or foreign patent
applications owned or controlled by XXXXX based upon or claiming the TECHNOLOGY;
(b) any divisions, continuations, continuations-in-part, re-examinations,
additions, reissues or extensions based thereon; and (c) any United States or
foreign patent or other industrial property rights obtained from, derived from
or claiming priority or benefit from, any of such United States or foreign
patent applications.
1.5 "RESEARCH AGREEMENT" shall mean the research support agreement between
Xxxxx University and LICENSEE dated February 25, 1994.
1.6 "TECHNOLOGY" shall mean [***].
[*] = 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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ARTICLE 2 - OWNERSHIP AND GRANT
2.1 Ownership. LICENSEE agrees to assign to XXXXX any interest that
LICENSEE may possess by virtue of co-inventorship by LICENSEE'S employees of the
PATENT RIGHTS and/or any improvements or new inventions arising out of the
RESEARCH AGREEMENT.
2.2 Grant. Xxxxx hereby grants to Licensee, subject to the terms herein
recited, an exclusive, non-transferable (except as provided in ARTICLE 9
herein), perpetual, royalty-bearing, worldwide right and license, with the right
to grant sublicenses, under the PATENT RIGHTS to develop, make, have made, use,
sell and distribute (directly or indirectly through third parties) LICENSED
PRODUCTS.
2.3 Reservation of Research Rights. Anything to the contrary
notwithstanding, XXXXX reserves the right to use the PATENT RIGHTS and
TECHNOLOGY for its own academic, non-commercial scientific research purposes.
2.4 Non-Assertion of Patent Rights. During the term of this Agreement and
so long as LICENSEE is not in default with respect to any payment due to BROWN
hereunder, BROWN will not assert its rights under the PATENT RIGHTS to prevent
any party from using or selling any quantity of product on which royalty has
been paid hereunder.
ARTICLE 3 - ROYALTIES
3.1 License Fee. Upon signing this Agreement, LICENSEE shall pay XXXXX a
license fee of [***].
3.2 Royalties. Beginning with the first COMMERCIAL SALE and subject to the
terms hereof, LICENSEE agrees to pay to XXXXX, as partial consideration for the
rights granted under this Agreement, an amount equal to [***] of NET SALES of
LICENSED PRODUCTS within the claims of an issued patent which is part of the
PATENT RIGHTS.
3.3 Sublicenses. In the event that LICENSEE enters into a sublicense,
LICENSEE shall pay to XXXXX [***] of any royalty payments received by LICENSEE
under such sublicense with respect to the sale by the sublicensee of LICENSED
PRODUCTS within the claims of an issued patent which is part of the PATENT
RIGHTS. In no event will equity investments in LICENSEE or payments for research
and development conducted by LICENSEE be considered to be royalty payments.
LICENSEE shall not offer sublicense royalty rates less than the rate that would
be due under Section 3.2 for NET SALES of LICENSEE without the written prior
approval of XXXXX.
3.4 Royalty Period. The obligation to pay royalties under Section 3.2 and
3.3 shall continue in each country in which sales are made until the date of
expiration of the last to expire of any patent issued in such country which is
part of the PATENT RIGHTS, whereupon the exclusive licenses granted hereunder
shall be fully paid and LICENSEE and its affiliates and sublicensees shall be
free to develop, make, have made, use, sell and distribute LICENSED PRODUCTS in
such country without further duties or responsibilities to XXXXX.
[*] = 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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3.5 License Maintenance Fee. In order to keep this Agreement in force,
LICENSEE shall pay XXXXX an annual maintenance fee of [***] and [***] no later
than [***], and [***] no later than [***] each successive year during the term
of this Agreement. Such license maintenance fees shall be creditable against
royalties due hereunder.
3.6 Payment. Royalties will be due and payable within forty-five (45) days
of the end of each calendar quarter. Royalty payments shall be made in United
States Dollars in Providence, Rhode Island. Exchange rates applied will be the
closing buying rates quoted by the Wall St. Journal on the last business day of
the applicable calendar quarter.
3.7 Joint Intellectual Property. The royalty rates defined above in
paragraphs 3.2 and 3.3 shall apply to all Patent Rights derived from the
technology (i.e. based upon an initial draft patent application presently being
prepared to claim the subject matter of the Lawandy et al. draft publication) as
well as any continuations, additions, divisions, continuations-in-part,
reissuances, or other continuing applications which claim the priority of such
initial application and whether or not the initial application or any of the
continuing applications names one or more employees of LICENSEE as co-inventors
together with XXXXX employees. If, however, a distinct improvement or invention
is made subsequent to the execution of this AGREEMENT and is the subject of a
separate patent application which names both LICENSEE'S employees and XXXXX
employees as co-inventors, then the applicable royalty rate shall be one-half
the royalty rate set forth in Section 3.2 or 3.3.
3.8 [***]
3.9 Only One Royalty Payable. Only one royalty will be paid with respect to
any particular product, regardless of the number of inventions within the claims
of PATENT RIGHTS which are included therein. If different royalty rates apply to
different inventions, the highest royalty rate will apply to the product.
[*] = 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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ARTICLE 4 - REPORTS AND RECORDS
4.1 Reports. LICENSEE shall report to XXXXX quarterly on its efforts to
bring the TECHNOLOGY into broad commercial use and shall provide copies of all
sublicenses granted. At the time of each royalty payment, LICENSEE shall provide
a full account of all business activities subject to royalty payments hereunder.
The quarterly report by LICENSEE shall also attest to compliance by LICENSEE
with the insurance provisions of Article 8, below, if applicable as result of
clinical trials or commercial activities, and shall further include a copy of
the insurance policy currently in force.
4.2 Records. LICENSEE shall keep, and shall require its sublicensees to
keep, complete and accurate books of account containing all particulars which
may be reasonably necessary for the purpose of showing the royalties payable to
XXXXX. Said books of account of LICENSEE shall be kept at LICENSEE's principal
place of business or the principal place of business of a division of LICENSEE
which is marketing LICENSED PRODUCTS. Said books and particulars shall be
available during normal business hours, upon reasonable notice, for two (2)
years following the end of the calendar year to which they pertain, to the
inspection, not more than once during any calendar year, of an independent
certified public accountant retained by XXXXX, and reasonably acceptable to
LICENSEE, for the purpose of verifying LICENSEE records directly related to
LICENSEE royalty obligations under this Agreement. Said certified public
accountant shall be required to enter into reasonable confidentiality agreements
provided by LICENSEE prior to any inspection.
4.3 Audit Costs. If an audit conducted on behalf of XXXXX pursuant to
Section 4.1 reveals that LICENSEE has made an error of five percent (5%) or more
in its favor of the sum of royalty payments due XXXXX in a calendar year,
LICENSEE shall be obliged to pay the audit fee in connection with the audit.
Except for the provision in the prior sentence, XXXXX shall be responsible for
all fees and expenses of said independent certificate public accountant.
4.4 Marking. LICENSEE agrees to xxxx and to require and its sublicensees to
xxxx all LICENSED PRODUCTS or associated packaging 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 Initiation of patent application. As soon as practicable following the
signing of this Agreement, LICENSEE shall engage patent counsel reasonably
acceptable to XXXXX to prepare and file a U.S. Patent Application in the name of
Xxxxx University Research Foundation covering the patentable aspects of the
TECHNOLOGY.
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5.2 Applications. For so long as this Agreement shall be in effect, XXXXX
hereby authorizes LICENSEE, in the name of Xxxxx University Research Foundation
and as its agent, at LICENSEE's expense, to apply for and seek prompt issuance
of, and, upon issuance, maintain during the term of this Agreement patents
worldwide as described in the PATENT RIGHTS or as may otherwise arise as a
result of new inventions or improvements made in the course of the RESEARCH
AGREEMENT. LICENSEE shall apply all reasonable efforts to obtain broad patent
claims. XXXXX hereby agrees to take all actions necessary to cooperate with and
assist LICENSEE in the filing and prosecution of such patent applications.
LICENSEE shall keep XXXXX informed as to the status of such patent applications
including providing XXXXX with copies of all written communications with the
patent offices, and consulting with XXXXX on responses to patent offices in
advance of submission. The filing, continued prosecution and maintenance of
patent applications, patents, and patent rights shall, after consultation with
XXXXX, be within the discretion of LICENSEE provided, however, if LICENSEE in
its discretion elects not to file, or decides to discontinue prosecution of,
such patent applications or maintain such patents of TECHNOLOGY which is owned
or controlled by BROWN, BROWN may do so as its own expense and such patents,
patent applications, and resulting patents shall henceforth be excluded from the
PATENT RIGHTS licensed hereunder. If LICENSEE decides not to maintain patent
applications, patents, or patent rights already in existence, LICENSEE will give
XXXXX at least ninety (90) days prior written notice before any expiration date
for response or action required by the U.S. Patent Office or any foreign patent
office. LICENSEE will provide XXXXX with reasonable cooperation in the transfer
of responsibility for the maintenance of such patent applications, patents, or
patent rights.
5.3 Enforcement. XXXXX 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. XXXXX hereby grants LICENSEE, at LICENSEE's expense, the right
to institute and conduct such legal action against third party infringers of the
PATENT RIGHTS and/or unauthorized users of TECHNOLOGY, or enter into such
settlement agreements, as are deemed appropriate by LICENSEE. The benefits of
any action taken by LICENSEE shall first be applied to reimbursing LICENSEE's
reasonable expense for such action and then shall be treated as sublicense
royalty payments hereunder, upon which LICENSEE shall be obligated to pay a
royalty. In any such action, LICENSEE shall be entitled to join XXXXX as a party
plaintiff and XXXXX will be obligated to reasonably assist at LICENSEE's
expense. Should LICENSEE fail to commence actions or proceedings against
infringers of the PATENTS or unauthorized users of the TECHNOLOGY within sixty
(60) days of receiving written notice thereof from BROWN, BROWN, at XXXXX'x
expense, shall have the right to initiate and pursue such action and receive all
resulting benefits. If XXXXX fails to take such an 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 5.3.
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ARTICLE 6 - REPRESENTATIONS AND WARRANTIES
6.1 Ownership. XXXXX warrants to its best knowledge and belief that it is
the owner of the PATENT RIGHTS and TECHNOLOGY and that any resultant patents are
free of any liens, encumbrances, restrictions and other legal or equitable
claims from third parties. XXXXX warrants that it is not aware of any claims
that the PATENT RIGHTS or TECHNOLOGY infringe the intellectual property rights,
including patents, of third parties. XXXXX warrants that it is not aware and
believes that no third party has asserted the existence of any right, title or
interest in or to the PATENT RIGHTS or TECHNOLOGY and no third party has alleged
that the PATENT RIGHTS OR TECHNOLOGY infringe the intellectual property rights,
including patents, of a third party.
6.2 Utilization. LICENSEE represents and warrants that it intends to use
commercially reasonable efforts to exploit the PATENT RIGHTS and the TECHNOLOGY
so that utilization will result therefrom.
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;
(B) conferring rights on XXXXX 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; and
(C) conferring rights on LICENSEE to use in advertising, publicity or
otherwise the name of "Xxxxx University" or its employees without prior written
approval of XXXXX.
6.5 Disclaimer. EXCEPT AS EXPRESSLY PROVIDED HEREIN, XXXXX 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.
XXXXX has not conducted any study of the patentability of the TECHNOLOGY and
makes no representations or Warrantee of any kind with regard to the
patentability of any aspect of the TECHNOLOGY.
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ARTICLE 7 - TERM AND TERMINATION
7.1 Bankruptcy. If LICENSEE undergoes a liquidation in bankruptcy, or files
a petition for liquidation in bankruptcy, or applies for or consents to the
appointment of a receiver or trustee, or makes an assignment 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, XXXXX may at its election terminate this Agreement
upon thirty (30) days written notice to LICENSEE. LICENSEE agrees to provide
written notice to XXXXX 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 Failure to Pay Royalties. Should LICENSEE fail in its payment to XXXXX
of royalties due in accordance with the terms of this Agreement, XXXXX shall
have the right, subject to LICENSEE's right hereunder to dispute any amounts
due, to serve notice upon LICENSEE by certified mail at an address designated in
Article 11 hereof, of its intention to terminate this Agreement within ninety
(90) days after receipt of said notice of termination unless LICENSEE shall pay
XXXXX within the ninety (90) day period, and if the amount of royalties due is
uncontested by LICENSEE, the rights, privileges and license granted hereunder
shall terminate upon the end of such ninety (90) day period if such amount
remains unpaid. Upon the receipt by XXXXX of a royalty payment from LICENSEE,
XXXXX shall have a period of sixty (60) days to send a notice to LICENSEE of its
intention to dispute the amount due regarding such payment. Upon receipt by
LICENSEE of a notice pursuant to the first sentence of this Section, LICENSEE
shall, during the ninety (90) day period referred to therein have a right to
send a notice to XXXXX of its dispute of XXXXX'x claim. In either case, upon
receipt of such notice, the parties hereto will work expeditiously and in good
faith in an attempt to resolve such disputes within a period of ninety (90) days
after the date of such notice, failing which such disputes shall be submitted
for determination to a national accounting firm mutually decided upon by both
parties; the determination of the accounting firm shall be made within
forty-five (45) days, shall be final and binding on the parties hereto and not
subject to appeal (the "FINAL DECISION"), and any payment by a party to the
other party following the resolution of any dispute in accordance with the
foregoing shall be made forthwith upon such a resolution. The cost and expenses
of the accounting firm shall be borne equally by the parties hereto. LICENSEE
and XXXXX shall each bear their own costs in presenting their respective cases
to the accounting firm. In the even that royalties are due after the resolution
of such dispute, the amount due shall accrue simple interest at the average
prime rate plus two (2) as established in the Wall Street Journal for the period
from the date such amount shall have been due until such amount is paid in full.
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7.3 Material Breach. Upon any material breach or default by LICENSEE or the
failure of LICENSEE to pay the amounts set forth in Exhibit B to the Research
Agreement, unless the Research Agreement has been terminated, XXXXX 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
terminations hall become effective at the end of such ninety (90) day period
unless LICENSEE has cured or has commenced reasonable good faith efforts to cure
any breach or default prior to the expiration of the ninety (90) day period.
Notwithstanding the foregoing, XXXXX may not terminate this Agreement based on
non-payment of royalties unless and until there has been a FINAL DECISION
pursuant to Section 7.2 and LICENSEE has failed to pay the amount required by
the FINAL DECISION within thirty (30) days of the date thereof.
7.4 Termination by LICENSEE. LICENSEE may terminate this Agreement upon
ninety (90) days notice by certified mail to XXXXX.
7.5 Obligations on Termination. Upon termination of this Agreement for any
reason, nothing herein shall be construed to release either party from any
obligation which matured prior to the effective date of such termination, and
LICENSEE, LICENSEE's affiliates, and LICENSEE's sublicensees may, after the
effective date of such termination, complete LICENSED PRODUCTS in the process of
manufacture at the time of such termination and sell the same together with
LICENSED PRODUCTS in inventory at the effective date of such termination,
provided that LICENSEE pays to XXXXX royalties as required by Article 3 of this
Agreement and submits the reports required by Article 4.
7.6 Survival. Sections 4.2, 5.3, 6.1, 6.4, 14.2 and 14.3 shall survive
termination of this Agreement as well as the right
of XXXXX to collect any accrued royalties as recited in Article 3.
ARTICLE 8 - INDEMNIFICATION AND INSURANCE
8.1 Indemnification. Except as provided in the RESEARCH AGREEMENT, LICENSEE
agrees to hold harmless, indemnify and defend XXXXX and its officers, trustees
and employees, from all liabilities, demands, damages, expenses and losses
arising out of (a) use by LICENSEE, or by any party acting on behalf of or under
authorization from LICENSEE, of the TECHNOLOGY or PATENT RIGHTS; and (b) use,
sale or other disposition by LICENSEE, or by any party acting on behalf of or
under authorization from LICENSEE, of LICENSED PRODUCTS. The provisions of this
Article 8 shall survive termination of this Agreement.
8.2 Insurance. LICENSEE shall carry the appropriate insurance coverage in
order to carry out the terms of this Article 8. Neither LICENSEE nor any
sublicensee shall commence clinical trials, or selling on a commercial basis
devices for the treatment of human subjects incorporating the PATENT RIGHTS
without having first presented to XXXXX evidence that it has obtained liability
insurance reasonably acceptable to XXXXX, provided that such insurance is
available to LICENSEE or its sublicensee on commercially reasonable terms.
Should LICENSEE or sublicensee be unable to obtain such coverage then the
parties hereto agree to consider in good faith reasonable alternatives for the
protection of Xxxxx University against third party liability.
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ARTICLE 9 - ASSIGNMENT
XXXXX 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 is accompanied by a sale or other transfer of LICENSEE's entire
business or of that part of LICENSEE's business to which the license granted
hereby relates; provided, that any such 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 mean 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
Except as otherwise provided for herein, any payment, notice or other
communication pursuant to this Agreement shall be sufficiently made or given (i)
on the date of hand delivery if delivered with written receipt at the
addressee's address below or such address as the addressees shall designate by
written notice given to the other party or (ii) five (5) business days after the
date of mailing if sent to such party by certified first class mail, return
receipt requested, 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 XXXXX: Xxxxx University Research Foundation
00 Xxxxxxxxxxxx Xxxxxx
Xxx 0000 Xxxxxxxxxx, XX 00000
ATTN: Xxxxxxx X. Xxxxxxx, President
In the case of LICENSEE: Spectra Science Corporation
000 Xxxxx Xxxxxx
Xxxxxxx,XX 00000
ATTN: Xxxxxxxx Xxxxxx, CEO
ARTICLE 12 - MISCELLANEOUS PROVISIONS
12.1 Limitation of Liability. Neither party shall be liable to the other
for any punitive, special, consequential, incidental or indirect damages arising
out of this Agreement, however caused, under any theory of liability.
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12.2 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.
12.3 Entire Agreement. The parties hereto acknowledge that this instrument,
together with the RESEARCH AGREEMENT, sets forth the entire agreement and
understanding of the parties hereto as to the subject of the 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.
12.4 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 any controlling body of law, such invalidity or
unenforceability shall not in any way effect the validity or enforceability of
the remaining provisions hereof.
12.5 Disputes. Except as set forth in Section 7.2, any dispute, claim, or
difference arising in connection with this Agreement or as to the rights or
liabilities of the parties hereunder (each such event being hereinafter called a
"dispute"), shall be referred to arbitration in Providence, Rhode Island in
accordance with the Commercial Arbitration Rules of the American Arbitration
Association. The Arbitration tribunal shall consist of three arbitrators. The
party initiating arbitration shall nominate one arbitrator (who shall not be
affiliated with such party) in the request for arbitration and the other party
shall nominate a second arbitrator (who shall not be affiliated with such party)
in the answer thereto. The two arbitrators so named will then jointly appoint
the third arbitrator as chairman of the Arbitration Tribunal. In the event a
party shall fail to nominate its arbitrator or the two shall fail to nominate
the third, such nomination shall be made by the office of the American
Arbitration Association in Providence, Rhode Island. The Arbitration Tribunal
shall have no rights to award any damages except actual direct damages. The
award of the Arbitration shall be accompanied by a written decision explaining
the basis for the award. The award of the Arbitration tribunal shall be final
and judgment upon such an award may be entered in any competent court or
application may be made to any competent court for judicial acceptance of such
an award and an order of enforcement. In the event of any procedural matter not
covered by the aforesaid Rules, the procedural law of the State of Rhode Island
shall govern.
ARTICLE 14 - IMPROVEMENTS
14.1 XXXXX. Improvements to the TECHNOLOGY made by XXXXX shall belong to
BROWN. BROWN hereby grants to LICENSEE a right to negotiate, in accordance with
the RESEARCH AGREEMENT and any other research support agreement, a
royalty-bearing license to all improvements which are not within the definition
of TECHNOLOGY but which are developed at BROWN by Xxxxx Xxxxxxx or by XXXXX
employees working with Xxxxx Xxxxxxx under the RESEARCH AGREEMENT or other
research support agreement with LICENSEE.
14.2 LICENSEE. XXXXX 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, with the proviso 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.
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14.3 ROYALTIES. For products or processes incorporating improvements not
made, owned, or controlled by XXXXX which are utilized in the manufacture, use
or sale of LICENSED PRODUCT, the royalties of Article 3 hereof will be
renegotiated in good faith to reflect the value of the technology made, owned,
or controlled by XXXXX relative to the value of the improvement not made, owned,
or controlled. by XXXXX except that to the extent the PATENT RIGHTS dominate the
improvements not made, owned, or controlled by XXXXX the royalties due to XXXXX
shall not be diminished pursuant to this Section.
XXXXX UNIVERSITY RESEARCH FOUNDATION SPECTRA SCIENCE CORPORATION
By: /s/ Xxxxxxx X Xxxxxxx By: /s/ Illegible
----------------------------- -----------------------------
Title: President Title: Chief Executive Officer
Date: March 2, 1994 Date: March 2, 1994
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