Exhibit 9.02
NON-EXCLUSIVE LICENSE AGREEMENT
This Agreement, effective as of July 17, 2006 (the "Effective Date"),
is between the University of Massachusetts ("University"), a public institution
of higher education of the Commonwealth of Massachusetts as represented by its
Worcester campus, and Advanced Influenza Technologies, Inc. ("Company"), a
subsidiary of UTEK Corporation having corporate headquarters at 0000 X. Xxxx
Xxxxxx, Xxxxx, XX 00000.
R E C I T A L S
---------------
WHEREAS, University is co-owner by assignment with St. Jude's
Children's Research Hospital ("SJCRH"), of the invention claimed in the United
States Patents and Patent Applications listed in Exhibit A relating to the
University's invention disclosure number UMMC91-03, entitled "Immunization by
Inoculation of DNA Transcription Unit";
WHEREAS, pursuant to an inter-institutional agreement, effective
November 2, 1994, SJCRH has authorized the University to negotiate and enter
into license agreements with third parties for University's and SJCRH's
ownership interest in the invention;
WHEREAS, Company wishes to obtain a non-exclusive license in the field
of DNA-based vaccines for the prophylaxis and treatment of influenza, under the
rights of University and SJCRH in any patent rights claiming those inventions;
and
WHEREAS, University is willing to grant Company a non-exclusive license
on the terms set forth in this Agreement;
NOW, THEREFORE, University and Company agree as follows:
1. Definitions.
-----------
1.1. "Affiliate" means any legal entity (such as a corporation,
partnership, or limited liability company) that is controlled by Company. For
the purposes of this definition, the term "control" means (i) beneficial
ownership of at least fifty percent (50%) of the voting securities of a
corporation or other business organization with voting securities or (ii) a
fifty percent (50%) or greater interest in the net assets or profits of a
partnership or other business organization without voting securities.
1.2. "Confidential Information" means any confidential or proprietary
information furnished by one party (the "Disclosing Party") to the other party
(the "Receiving Party") in connection with this Agreement that is specifically
designated as confidential.
1.3. "Field" means the use of DNA-based vaccines for the prophylaxis
and treatment of influenza in humans.
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1.4. "Licensed Product" means any product that cannot be developed,
manufactured, used, or sold without infringing one or more claims under the
Patent Rights.
1.5. "Net Sales" means the gross amount billed or invoiced on sales by
Company and its Affiliates of Licensed Products, less the following: (i)
customary trade, quantity, or cash discounts and commissions to non-affiliated
brokers or agents to the extent actually allowed and taken; (ii) amounts repaid
or credited by reason of rejection or return; (iii) to the extent separately
stated on purchase orders, invoices, or other documents of sale, any taxes or
other governmental charges levied on the production, sale, transportation,
delivery, or use of a Licensed Product which is paid by or on behalf of Company;
and (iv) outbound transportation costs prepaid or allowed and costs of insurance
in transit.
In any transfers of Licensed Products between Company and any
Affiliate, Net Sales shall be calculated based on the final sale of the Licensed
Product to an independent third party. In the event that Company or Affiliate
receive non-monetary consideration for any Licensed Products, Net Sales shall be
calculated based on the fair market value of such consideration. If Company or
its Affiliates use or dispose of a Licensed Product in the provision of a
commercial service, the Licensed Product is sold and the Net Sales are
calculated based on the sales price of the Licensed Product to an independent
third party during the same Royalty Period or, in the absence of sales, on the
fair market value of the Licensed Product as determined by the parties in good
faith.
1.6. "Patent Rights" means the Patents and patent applications listed
on Exhibit A, and any divisional, continuation, or continuation-in-part (to the
extent the claims are directed to subject matter specifically described
therein), as well as any patents issued on these patent applications and any
reissues, extensions or supplementary protection certificates thereof.
1.7. "Royalty Period" means the partial calendar quarter commencing on
the date on which the first Licensed Product is sold and every complete or
partial calendar quarter thereafter during which either (i) this Agreement
remains in effect or (ii) Company has the right to complete and sell
work-in-progress and inventory of Licensed Products pursuant to Section 7.5.
2. Grant of Rights. Subject to the terms of this Agreement, University hereby
grants to Company and its Affiliates a non-exclusive, non-transferable,
worldwide, royalty-bearing license (without the right to sublicense) under its
commercial rights in the Patent Rights to develop, make, have made, use, sell
and otherwise commercialize Licensed Products in the Field. This license grant
to Company by University hereto shall also include the right to permit a third
party or Affiliate manufacturer to practice or use the Patent Rights to
manufacture the Licensed Products.
3. Company Obligations Relating to Commercialization.
-------------------------------------------------
3.1. Diligence Requirements. Company shall use diligent commercially
reasonable efforts, or shall cause its Affiliates to use diligent commercially
reasonable efforts, to develop Licensed Products and to introduce Licensed
Products into the commercial market. Thereafter, Company and its Affiliates
shall make Licensed Products reasonably available to the public. Specifically,
Company shall fulfill the following obligation:
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(a) Within sixty (60) days after each anniversary of delivery
of the optimized flu DNA vaccine plasmids ready for GMP manufacturing, Company
shall furnish University with a written report on the progress of its
commercially reasonable efforts during the prior year to develop and
commercialize Licensed Products, including without limitation research and
development efforts, commercially reasonable efforts to obtain regulatory
approval, marketing efforts, and sales figures.
3.2. Indemnification.
---------------
(a) Indemnity. Company and its Affiliates shall indemnify,
defend, and hold harmless University and its trustees, officers, faculty,
students, employees, and 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 any of the Indemnitees in connection with any claims, suits,
actions, demands or judgments arising out of any theory of liability (including
without limitation actions in the form of tort, warranty, or strict liability
and regardless of whether such action has any factual basis) concerning any
product, process, or service that is made, used, or sold pursuant to any right
or license granted under this Agreement; provided, however, that such
indemnification shall not apply to any liability, damage, loss, or expense to
the extent directly attributable to (i) the gross negligence or intentional
misconduct of the Indemnitees or (ii) the settlement of a claim, suit, action,
or demand by Indemnitees without the prior written approval of Company.
(b) Procedures. The Indemnitees agree to provide Company with
prompt written notice of any claim, suit, action, demand, or judgment for which
indemnification is sought under this Agreement. Company agrees, at its own
expense, to provide attorneys reasonably acceptable to University to defend
against any such claim. The Indemnitees shall cooperate fully with Company in
such defense and will permit Company to conduct and control such defense and the
disposition of such claim, suit, or action (including all decisions relative to
litigation, appeal, and settlement); provided, however, that any Indemnitee
shall have the right to retain its own counsel, at the expense of Company, if
representation of such Indemnitee by the counsel retained by Company would be
inappropriate because of actual or potential differences in the interests of
such Indemnitee and any other party represented by such counsel. Company, its
Affiliates agree to keep University informed of the progress in the defense and
disposition of such claim and to consult with University with regard to any
proposed settlement.
(c) Insurance Company and its Affiliates shall maintain
insurance or self-insurance that is reasonably adequate to fulfill any potential
obligation to the Indemnitees, but in any event not less than two million
dollars ($2,000,000) for injuries to any one person arising out of a single
occurrence pursuant to any right or license granted herein and four million
dollars ($4,000,000) for injuries to all persons arising out of a single
occurrence pursuant to any right or license granted herein. Company and its
Affiliates shall provide University, upon request, with written evidence of such
insurance or self-insurance. Company and its Affiliates shall continue to
maintain such insurance or self-insurance after the expiration or termination of
this Agreement during any period in which Company or any Affiliate or continues
to make, use, or sell a product that was envisioned by the license under this
Agreement.
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3.3. Marking of Licensed Products. To the extent commercially feasible
and consistent with prevailing business practices, Company shall xxxx, and shall
cause its Affiliates to xxxx, all Licensed Products that are manufactured or
sold under this Agreement with the number of each issued patent under the Patent
Rights that applies to such Licensed Product.
3.4. Compliance with Law. Company shall comply with, and shall ensure
that its Affiliates comply with, all local, state, federal, and international
laws and regulations relating to the development, manufacture, use, and sale of
Licensed Products. Company expressly agrees to comply with the following:
(a) Company and its Affiliates shall obtain all necessary
approvals from the United States Food & Drug Administration and any similar
governmental authorities of any foreign jurisdiction in which Company or an
Affiliate intends to make, use, or sell Licensed Products
(b) Company and its Affiliates shall comply with all United
States laws and regulations controlling the export of certain commodities and
technical data, including without limitation all Export Administration
Regulations of the United States Department of Commerce. Among other things,
these laws and regulations prohibit, or require a license for, the export of
certain types of commodities and technical data to specified countries. Company
hereby gives written assurance that it will comply with, and will cause its
Affiliates to comply with, all United States export control laws and
regulations, that it bears sole responsibility for any violation of such laws
and regulations by itself and its Affiliates, and that it will indemnify,
defend, and hold University harmless (in accordance with Section 3.2) for the
consequences of any such violation.
4. Consideration for Grant of Rights.
---------------------------------
[ * ]
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5. Royalty Reports; Payments; Records.
----------------------------------
5.1. First Sale. Company shall report to University the date of first
commercial sale of each Licensed Product by Company and its Affiliates within
thirty (30) days of occurrence in each country.
5.2. Reports and Payments. Within sixty (60) days after the conclusion
of each Royalty Period, Company shall deliver to University a report containing
the following information:
(a) the number of Licensed Products sold to independent third
parties in each country;
(b) the gross sales price for each Licensed Product in each
country;
(c) calculation of Net Sales for the applicable Royalty Period
in each country, including a listing of applicable deductions; and
(d) total royalty payable on Net Sales in U.S. dollars,
together with the exchange rates used for conversion.
If no royalties are due to University for any Royalty Period, the report shall
so state. Concurrent with this report, Company shall remit to University any
payment due for the applicable Royalty Period. University shall instruct Company
as to the method of payment. The contents of all such reports shall be the
confidential and proprietary information of Company. To the extent permitted by
applicable law, University shall use reasonable efforts to maintain the
confidentiality of such reports.
5.3. Payments in U.S. Dollars. All payments due under this Agreement
shall be payable in United States dollars. Conversion of foreign currency to
U.S. dollars shall be made at the conversion rate existing in the United States
(as reported in the Wall Street Journal) on the last working day of the calendar
quarter preceding the applicable Royalty Period. Such payments shall be without
deduction of exchange, collection, or other charges.
5.4. Payments in Other Currencies. If by law, regulation, or fiscal
policy of a particular country, conversion into United States dollars or
transfer of funds of a convertible currency to the United States is restricted
or forbidden, Company and its Affiliates shall give University prompt written
notice of such restriction, which notice shall satisfy the sixty-day payment
deadline described in Section 5.2. Company and its Affiliates shall pay any
amounts due University through whatever lawful methods University reasonably
designates; provided, however, that if University fails to designate such
payment method within thirty (30) days after University is notified of the
restriction, Company may deposit such payment in local currency to the credit of
University in a recognized banking institution selected by Company and
identified by written notice to University, and such deposit shall fulfill all
obligations of Company to University with respect to such payment.
5.5. Records. Company shall maintain, and shall cause its Affiliates to
maintain, complete and accurate records of Licensed Products that are made,
used, sold, or performed under this Agreement and any amounts payable to
University in relation to such Licensed Products, which records shall contain
sufficient information to permit University to confirm the accuracy of any
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reports delivered to University under Section 5.2. The relevant party shall
retain such records relating to a given Royalty Period for at least three (3)
years after the conclusion of that Royalty Period, during which time University
shall have the right, at its expense, to cause its internal accountants or an
independent, certified public accountant to inspect such records during normal
business hours for the sole purpose of verifying any reports and payments
delivered under this Agreement. Such accountant shall not disclose to University
any information other than information relating to accuracy of reports and
payments delivered under this Agreement. The parties shall reconcile any
underpayment or overpayment within thirty (30) days after the accountant
delivers the results of the audit. In the event that any audit performed under
this Section reveals an underpayment in excess of ten percent (10%) in any
Royalty Period, Company shall bear the full cost of such audit. University may
exercise its rights under this Section only once every year and only with
reasonable prior notice to Company.
5.6. Late Payments. Any payments by Company that are not paid on or
before the date such payments are due under this Agreement shall bear interest,
to the extent permitted by law, at two percentage points above the Prime Rate of
interest as reported in the Wall Street Journal on the date payment is due, with
interest calculated based on the number of days that payment is delinquent.
5.7. Method of Payment. All payments under this Agreement should be
made in the name of the "University of Massachusetts" and sent to the address
identified below. Each payment should reference this Agreement and identify the
obligation under this Agreement that the payment satisfies.
5.8. Withholding and Similar Taxes. Royalty payments and other payments
due to University under this Agreement shall not be reduced by reason of any
withholding or similar taxes applicable to such payments to University.
6. Patents and Infringement.
-------------------------
6.1. Responsibility for Patent Rights. University has primary
responsibility at the expense of Company for the preparation, filing,
prosecution, and maintenance of all Patent Rights as they relate to influenza
specific claims, using patent counsel reasonably acceptable to Company.
University shall consult with Company as to the preparation, filing,
prosecution, and maintenance of all Patent Rights as they relate to influenza
reasonably prior to any deadline or action with the United States Patent &
Trademark Office or any foreign patent office and shall furnish Company with
copies of relevant documents reasonably in advance of consultation.
6.2. Cooperation. Company shall cooperate fully in the preparation,
filing, prosecution, and maintenance of all Patent Rights. Cooperation includes,
without limitation, (a) promptly executing all papers and instruments or
requiring employees of Company to execute papers and instruments as reasonable
and appropriate to enable University to file, prosecute, and maintain Patent
Rights in any country; and (b) promptly informing the University of matters that
may affect the preparation, filing, prosecution, or maintenance of Patent
Rights.
6.3. Infringement. Each party agrees to provide written notice to the
other party promptly after becoming aware of any infringement of the Patent
Rights.
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6.4. Payment of Expenses.
-------------------
(a) Within thirty (30) days after University invoices Company,
Company shall reimburse University for all patent-related expenses incurred by
University pursuant to Section 6.1, as they relate to the prosecution of
influenza-related patent claims.
7. Confidential Information; Publications; Publicity.
-------------------------------------------------
7.1. Confidential Information.
------------------------
(a) Designation. Confidential Information that is disclosed in writing shall be
marked with a legend indicating its confidential status (such as, "Confidential"
or "Proprietary"). Confidential Information that is disclosed orally or visually
shall be documented in a written notice prepared by the Disclosing Party and
delivered to the Receiving Party within thirty (30) days of the date of
disclosure. The notice shall summarize the Confidential Information disclosed to
the Receiving Party and reference the time and place of disclosure.
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(b) Obligations. For a period of five (5) years after
disclosure of any portion of Confidential Information, the Receiving Party shall
(i) maintain Confidential Information in confidence, except that the Receiving
Party may disclose or permit the disclosure of any Confidential Information to
its trustees or directors, officers, employees, consultants, and advisors who
are obligated to trustees or directors, officers, employees, consultants, and
advisors who are obligated to maintain the confidential nature of Confidential
Information and who need to know Confidential Information for the purposes of
this Agreement; (ii) use Confidential Information solely for the purposes of
this Agreement; and (iii) allow its trustees or directors, officers, employees,
consultants, and advisors to reproduce the Confidential Information only to the
extent necessary for the purposes of this Agreement, with all reproductions
being Confidential Information.
(c) Exceptions. The obligations of the Receiving Party under
Subsection 7.1.(b) above do not apply to the extent that the Receiving Party can
demonstrate that Confidential Information (i) was in the public domain prior to
the time of its disclosure under this Agreement; (ii) entered the public domain
after the time of its disclosure under this Agreement through means other than
an unauthorized disclosure resulting from an act or omission by the Receiving
Party; (iii) was already known or independently developed or discovered by the
Receiving Party without use of the Confidential Information; (iv) is or was
disclosed to the Receiving Party at any time, whether prior to or after the time
of its disclosure under this Agreement, by a third party having no fiduciary
relationship with the Disclosing Party and having no obligation of
confidentiality with respect to the Confidential Information; or (v) is required
to be disclosed to comply with applicable laws or regulations or with a court or
administrative order, provided that the Disclosing Party receives reasonable
prior written notice of the disclosure.
(d) Ownership and Return. The Receiving Party acknowledges
that the Disclosing Party (or a third party entrusting its own information to
the Disclosing Party) owns the Confidential Information in the possession of the
Receiving Party. Upon expiration or termination of this Agreement, or at the
request of the Disclosing Party, the Receiving Party shall return to the
Disclosing Party all originals, copies, and summaries of documents, materials,
and other tangible manifestations of Confidential Information in the possession
or control of the Receiving Party, except that the Receiving Party may retain
one copy of the Confidential Information in the possession of its legal counsel
solely for the purpose of monitoring its obligations under this Agreement.
7.2. Publications. University and its employees are free to disclose
publicly (through journals, lectures, or otherwise) the results of any research
relating to the Field or the subject matter of the Patent Rights, except as
otherwise provided by written agreement between University and Company (e.g., a
sponsored research agreement).
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7.3. Publicity Restrictions. Company and its Affiliates may not use the
name of University or any of its trustees, officers, faculty, students,
employees, or agents, or any adaptation of their names, or any terms of this
Agreement in any public announcement or disclosure without the prior written
consent of University, with such consent not to be unreasonably withheld. The
foregoing notwithstanding, Company may disclose that information without the
consent of University in any prospectus, offering memorandum, or other document
or filing required by applicable securities laws or other applicable law or
regulation, provided that Company provides University at least ten (10) days
prior written notice of the proposed text for the purpose of giving University
the opportunity to comment on the text.
8. Term and Termination.
--------------------
8.1. Term. This Agreement shall commence on the Effective Date and
shall remain in effect until the expiration of all issued patents within the
Patent Rights unless earlier terminated in accordance with the provisions of
this Agreement.
8.2. Voluntary Termination by Company. Company shall have the right to
terminate this Agreement, for any reason, upon ninety (90) days prior written
notice to University.
8.3. Termination for Default. In the event that either party commits a
material breach of its obligations under this Agreement and fails to cure that
breach within sixty (60) days after receiving written notice thereof, the other
party may terminate this Agreement immediately upon written notice to the party
in breach. If the alleged breach involves nonpayment of any amounts due
University under this Agreement, Company shall have only one opportunity to cure
a material breach for which it receives notice as described above; any
subsequent material breach by Company will entitle University to terminate this
Agreement immediately upon written notice to Company, without the sixty-day cure
period.
8.4. Force Majeure. Neither party will be responsible for delays
resulting from causes beyond the reasonable control of such party, including
without limitation fire, explosion, flood, war, strike, acts of terrorism, or
riot, provided that the nonperforming party uses commercially reasonable efforts
to avoid or remove such causes of nonperformance and continues performance under
this Agreement with reasonable dispatch whenever such causes are removed.
8.5. Effect of Termination. The following provisions shall survive the
expiration or termination of this Agreement: Articles 1 and 9; Sections 3.2,
4.1, 5.2 (obligation to provide final report and payment), 5.3, 5.4, 5.5, 5.6,
6.4, 8.4, 8.5, 9.1, 9.6, and 9.7. Upon the early termination of this Agreement,
Company and its Affiliates may complete and sell any work-in-progress and
inventory of Licensed Products that exist as of the effective date of
termination, provided that (i) Company is current in payment of all amounts due
University under this Agreement, (ii) Company pays University the applicable
royalty on such sales of Licensed Products in accordance with the terms and
conditions of this Agreement, and (iii) Company and its Affiliates shall
complete and sell all work-in-progress and inventory of Licensed Products within
six (6) months after the effective date of termination.
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9. Dispute Resolution.
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9.1. Procedures Mandatory. The parties agree that any dispute arising
out of or relating to this Agreement shall be resolved solely by means of the
procedures set forth in this Article, and that such procedures constitute
legally binding obligations that are an essential provision of this Agreement;
provided, however, that all procedures and deadlines specified in this Article
may be modified by written agreement of the parties. If either party fails to
observe the procedures of this Article, as modified by their written agreement,
the other party may bring an action for specific performance in any court of
competent jurisdiction.
9.2. Dispute Resolution Procedures.
-----------------------------
(a) Negotiation. In the event of any dispute arising out of or
relating to this Agreement, the affected party shall notify the other party, and
the parties shall attempt in good faith to resolve the matter within ten (10)
days after the date of such notice (the "Notice Date"). Any disputes not
resolved by good faith discussions shall be referred to senior executives of
each party, who shall meet at a mutually acceptable time and location within
thirty (30) days after the Notice Date and attempt to negotiate a settlement.
(b) Mediation. If the matter remains unresolved within sixty
(60) days after the Notice Date, or if the senior executives fail to meet within
thirty (30) days after the Notice Date, either party may initiate mediation upon
written notice to the other party, whereupon both parties shall be obligated to
engage in a mediation proceeding under the then current Center for Public
Resources ("CPR") Model Procedure for Mediation of Business Disputes, except
that specific provisions of this Section shall override inconsistent provisions
of the CPR Model Procedure. The mediator will be selected from the CPR Panels of
Neutrals. If the parties cannot agree upon the selection of a mediator within
ninety (90) days after the Notice Date, then upon the request of either party,
the CPR shall appoint the mediator. The parties shall attempt to resolve the
dispute through mediation until one of the following occurs: (i) the parties
reach a written settlement; (ii) the mediator notifies the parties in writing
that they have reached an impasse; (iii) the parties agree in writing that they
have reached an impasse; or (iv) the parties have not reached a settlement
within one hundred and twenty (120) days after the Notice Date.
(c) Trial Without Jury. If the parties fail to resolve the
dispute through mediation, or if neither party elects to initiate mediation,
each party shall have the right to pursue any other remedies legally available
to resolve the dispute, provided, however, that the parties expressly waive any
right to a jury trial in any legal proceeding under this Section.
9.3. Preservation of Rights Pending Resolution.
-----------------------------------------
(a) Performance to Continue. Each party shall continue to
perform its obligations under this Agreement pending final resolution of any
dispute arising out or relating to this Agreement; provided, however, that a
party may suspend performance of its obligations during any period in which the
other party fails or refuses to perform its obligations.
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(b) Provisional Remedies. Although the procedures specified in
this Article are the sole and exclusive procedures for the resolution of
disputes arising out of relating to this Agreement, either party may seek a
preliminary injunction or other provisional equitable relief if, in its
reasonable judgment, such action is necessary to avoid irreparable harm to
itself or to preserve its rights under this Agreement.
(c) Statute of Limitations. The parties agree that all
applicable statutes of limitation and time-based defenses (such as estoppel and
laches) shall be tolled while the procedures set forth in Subsections 8.2(a) and
8.2(b) are pending. The parties shall take any actions necessary to effectuate
this result.
10. Miscellaneous.
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10.1. Representations and Warranties. University represents and
warrants that its employees have assigned to University their entire right,
title, and interest in the Patent Rights and that it has authority to grant the
rights and licenses set forth in this Agreement. UNIVERSITY MAKES NO OTHER
WARRANTIES CONCERNING THE PATENT RIGHTS, INCLUDING WITHOUT LIMITATION ANY
EXPRESS OR IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE. Specifically, University makes no warranty or representation (i) that
the exploitation of any Licensed Product will not infringe any patents or other
intellectual property rights of a third party, (ii) regarding the validity or
scope of the Patent Rights, and (iii) that any third party is not currently
infringing or will not infringe the Patent Rights
10.2. Publications. University and its employees will be free to
publicly disclose (through journals, lectures, or otherwise) the results of any
research in the Field or relating to the subject matter of the Patent Rights,
except as otherwise provided by written agreement between University and Company
(e.g., a sponsored research agreement).
10.3. Publicity Restrictions. Company (as well as its Affiliates) shall
not use the name of University or any of its trustees, officers, faculty,
students, employees, or agents, or any adaptation of such names, or any terms of
this Agreement in any public announcement or disclosure without the prior
written consent of University, with such consent not to be unreasonably
withheld. The foregoing notwithstanding, Company shall have the right to
disclose such information without the consent of University in any prospectus,
offering memorandum, or other document or filing required by applicable
securities laws or other applicable law or regulation, provided that Company
shall have given University at least ten (10) days prior written notice of the
proposed text for the purpose of giving University the opportunity to comment on
such text.
10.4. Assignment. This Agreement may not be assigned by either party
without the prior written consent of the other party, such consent not to be
unreasonably withheld. University hereby agrees that it would be unreasonable to
withhold consent to the assignment of this Agreement to any third party that
acquires all of the voting securities of Company.
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10.5. Amendment and Waiver. This Agreement may be amended,
supplemented, or otherwise modified only by means of a written instrument signed
by both parties. Any waiver of any rights or failure to act in a specific
instance shall relate only to such instance and shall not be construed as an
agreement to waive any rights or fail to act in any other instance, whether or
not similar.
10.6. Governing Law. This Agreement shall be governed by and construed
in accordance with the laws of the Commonwealth of Massachusetts irrespective of
any conflicts of law principles.
10.7. Notice. Any notices required or permitted under this Agreement
shall be in writing, shall specifically refer to this Agreement, and shall be
sent by hand, recognized national overnight courier, confirmed facsimile
transmission, confirmed electronic mail, or registered or certified mail,
postage prepaid, return receipt requested, to the following addresses or
facsimile numbers of the parties:
If to University:
Office of Technology Management
University of Massachusetts Medical School
000 Xxxxx Xxxxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000
Attention: Xxxxx X. XxXxxxxx, Ph.D.
Executive Director
Tel: (000) 000-0000
Fax: (000) 000-0000
If to Company:
Advanced Influenza Technologies, Inc.
0000 X. Xxxx Xxxxxx
Xxxxx, XX 00000
Attention: Xxxx Xxxxxxx, President
Tel: 000-000-0000
Fax: 000-000-0000
All notices under this Agreement shall be deemed effective upon receipt. A party
may change its contact information immediately upon written notice to the other
party in the manner provided in this Section.
10.8. Severability. In the event that any provision of this Agreement
shall be held invalid or unenforceable for any reason, such invalidity or
unenforceability shall not affect any other provision of this Agreement, and the
parties shall negotiate in good faith to modify the Agreement to preserve (to
the extent possible) their original intent. If the parties fail to reach a
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modified agreement within sixty (60) days after the relevant provision is held
invalid or unenforceable, then the dispute shall be resolved in accordance with
the procedures set forth in Article 8. While the dispute is pending resolution,
this Agreement shall be construed as if such provision were deleted by agreement
of the parties.
10.9. Entire Agreement. This Agreement constitutes the entire agreement
between the parties with respect to its subject matter and supersedes all prior
agreements or understandings between the parties relating to its subject matter.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives as of the date first written above.
UNIVERSITY OF MASSACHUSETTS ADVANCED INFLUENZA TECHNOLOGIES, INC.
By: _________________________________ By: _________________________________
Xxxxx X. XxXxxxxx, Ph.D. Xxxx Xxxxxxx
Executive Director, OTM President
Date: Date:
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EXHIBIT A
List of Patent Rights
---------------------
------------------ --------------- -------------- ------------- -----------
Serial Number Filing Date Issue Date Patent # Country
------------------ --------------- -------------- ------------- -----------
08/009,833 1/27/1993 7/1/1997 5,643,578 USA
------------------ --------------- -------------- ------------- -----------
08/187,879 1/27/1994 1/11/2005 6,841,381 USA
------------------ --------------- -------------- ------------- -----------
10/763,049 1/22/2004 NA pending USA
------------------ --------------- -------------- ------------- -----------
PCT/US93/02394 3/17/1993 NA NA PCT
------------------ --------------- -------------- ------------- -----------
PCT/US95/00997 1/25/1995 NA NA PCT
------------------ --------------- -------------- ------------- -----------
93907536 3/17/1993 NA NA EP
------------------ --------------- -------------- ------------- -----------
01202355.2 6/18/2001 NA NA EP
------------------ --------------- -------------- ------------- -----------
2,132,836 9/23/1994 NA NA CA
------------------ --------------- -------------- ------------- -----------
2,181,832 1/25/1995 NA NA CA
------------------ --------------- -------------- ------------- -----------
07-520142 1/25/1995 NA NA JP
------------------ --------------- -------------- ------------- -----------
2003-28160 7/29/2003 NA NA JP
------------------ --------------- -------------- ------------- -----------
JP7507203
------------------ --------------- -------------- ------------- -----------
JP9508622T
------------------ --------------- -------------- ------------- -----------
JP2004099603
------------------ --------------- -------------- ------------- -----------
AU3150295
------------------ --------------- -------------- ------------- -----------
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