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Exhibit 99b
LICENSE AGREEMENT
BY AND BETWEEN
PERIODONTIX, INC.
AND
DEMEGEN, INC.
FEBRUARY 8, 2001
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LICENSE AGREEMENT
This LICENSE AGREEMENT (this "Agreement") is made as of February 8,
2001 ("Effective Date"), by and between Periodontix, Inc., a Delaware
corporation ("Periodontix") and Demegen, Inc., a Colorado corporation
("Demegen").
RECITALS
A. Pursuant to the terms of that certain Agreement dated February
8, 2001 between Demegen and Periodontix (the "Option Agreement"), Periodontix
granted Demegen an Option to purchase certain Technology (as defined herein).
B. Prior to the exercise of the Option in the Option Agreement
and pursuant to the Option Agreement, Demegen desires to license from
Periodontix the Technology on the terms and conditions set forth in this
Agreement.
NOW, THEREFORE, in consideration of the respective representations,
warranties, covenants and agreements set forth herein, the parties hereto,
intending to be bound, agree as follows:
ARTICLE I
DEFINITIONS
1.1 Technology
The term "Technology" shall mean the Intellectual Property (as defined
in the Option Agreement) and any research data, designs, formulas, process
information, clinical data and other information known to the Company which
pertains to any invention claimed in the Intellectual Property (it being
understood that the term "Technology" shall not include the Photodynamic
Technology or any intellectual property rights therein).
1.2 Peptides.
The term "Peptides" shall mean the quantity of peptides described in
and quantified on Exhibit A.
1.3 Photodynamic Technology.
The term "Photodynamic Technology" shall mean the technology described
on Exhibit B.
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1.4 Other Terms
All capitalized terms not otherwise defined in this Agreement shall
have the meanings ascribed to them in the Option Agreement.
ARTICLE II
LICENSE GRANT AND PAYMENTS
2.1 Grant.
Periodontix hereby grants to Demegen an exclusive, world-wide, license
to use, exploit, sublicense(subject to Section 2.2), produce, modify, duplicate,
prepare and develop derivative works and new inventions with respect to, the
Technology and solely in connection therewith to use the Peptides.
2.2 Sublicenses.
Demegen shall have the right to enter into sublicensing agreements for
any or all of the rights, privileges and licenses granted hereunder; provided
that such sublicensing agreements shall terminate upon the termination of this
Agreement without any obligation on the part of Periodontix; and provided
further that Demegen provides to Periodontix prior written notice of such
sublicense and a copy of any and all fully-executed sublicense agreements within
ten (10) days after the grant thereof.
2.3 Sublicense Income.
To the extent that Demegen commercially sublicenses the Technology to a
third party pursuant to Section 2.2 ("Third Party Sublicensee"), Demegen shall
retain all consideration received from such Third Party Sublicensee; provided,
however, to the extent that Demegen receives prior to January 31, 2002,
aggregate consideration, whether cash or non-monetary consideration (excluding
payments made by a Third Party Sublicensee to support or fund research
activities to be undertaken by Demegen) in excess of three hundred fifty
thousand dollars ($350,000.00) ("Threshold Fees"), Demegen shall issue and
deliver to Periodontix upon receipt of such consideration shares of Demegen
Common Stock (valued at the average closing share price for the twenty (20)
trading days ending on the date of receipt of the Threshold Fees) that are equal
in value the amount of any such consideration.
ARTICLE III
CLINICAL TRIALS
3.1 Clinical Trials.
Demegen shall have the exclusive right to conduct, and shall assume
responsibility for conducting any and all Clinical Trials associated with the
Technology, including but not limited to Clinical Trials related to the Company
Sponsored INDs, except to the extent a third party conducts Clinical Trials that
do not infringe the Technology.
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3.2 Assistance.
Periodontix shall, at Demegen's expense, prepare, execute and deliver
any and all documents and/or agreements required by the FDA or other
governmental authority to transfer to Demegen the rights to conduct Clinical
Trials pursuant to any Company Sponsored IND. If Periodontix fails to so execute
and deliver such instruments (or to cause its employees to do so), Demegen shall
have the right to execute such instruments as Periodontix's attorney-in-fact,
and Periodontix does hereby constitute and appoint Demegen as its true and
lawful attorney-in-fact for the sole purpose of executing such documentation.
The rights of Demegen under this Section constitute a power coupled with an
interest with rights of substitution and delegation and which is for the sole
benefit of Demegen. Demegen, as agent for Periodontix under the power of
attorney, is not a fiduciary for Periodontix.
ARTICLE IV
OWNERSHIP
4.1 Technology Delivered by Periodontix.
Periodontix shall continue to own all right, title and interest
(including but not limited to any and all intellectual property rights) in and
to the Technology and the Peptides as delivered by Periodontix to Demegen
pursuant to this Agreement.
4.2 Developments.
Demegen shall own all right, title and interest (including but not
limited to any and all intellectual property rights) in and to any materials,
developments, technologies, know-how, data, research, inventions, reports,
studies, creative works of expression or other information created or developed
by Demegen in connection with this Agreement, whether a derivative work or
otherwise derived from the Technology ("Developments"). Periodontix agrees to
assign any and all right, title and interest it has in and to the Developments
as a result of this Agreement to Demegen, and agrees to execute and deliver to
Demegen such instruments as Demegen deems necessary to assign to Demegen
Periodontix's right, title and interests in the Developments. If Periodontix
fails to so execute and deliver such instruments (or to cause its employees to
do so), Demegen shall have the right to execute such instruments as
Periodontix's attorney-in-fact, and Periodontix does hereby constitute and
appoint Demegen as its true and lawful attorney-in-fact for the purpose of
executing such documentation. The rights of Demegen under this Section
constitute a power coupled with an interest with rights of substitution and
delegation and which is for the sole benefit of Demegen. Demegen, as agent for
Periodontix under the power of attorney, is not a fiduciary for Periodontix.
Demegen, in exercising any of its rights or powers pursuant to the power of
attorney, may do so for the sole benefit of Demegen and not for the benefit of
Periodontix. The parties acknowledge and agree that the provisions of Title 20,
Pennsylvania Consolidated Statutes, Section 5601 et seq., as amended
(specifically including act 39 of 1999) shall not be applicable to the power of
attorney. Nothing in this Section 4.2 shall be construed as giving Demegen any
rights in the Technology and effective upon the termination of this Agreement,
Demegen hereby grants to the Company a fully-paid, royalty-free, world-wide,
perpetual non-exclusive license to use, exploit, sublicense, produce,
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modify, duplicate, prepare and develop derivative works and new inventions with
respect to, the Developments.
ARTICLE V
TERMINATION
5.1 Termination.
This Agreement shall terminate upon the earlier of (i) the expiration
or termination of the Option Agreement, and (ii) the exercise of the Option in
the Option Agreement and the closing of the transactions contemplated by the
Asset Purchase Agreement.
5.2 Effect of Termination.
Except in the event that this Agreement is terminated as a result of
Demegen's exercise of the Option in the Option Agreement, upon termination of
this Agreement, Demegen shall cease to have any rights to and shall return to
Periodontix the Technology provided by Periodontix to Demegen hereunder and any
Peptides that have not been consumed by Demegen in accordance with this
Agreement; provided, however, in any event, Demegen may retain any and all
Developments (subject to the rights of Periodontix under Section 4.2).
5.3 Survivability.
The provisions of Article 4 V shall survive termination or expiration
of this Agreement.
5.4 Consequences
In the event of termination, Demegen shall transfer and assign to
Periodontix all clinical and other data in its possession or to which it has
rights that relate to the Technology and all regulatory filings with respect
thereto.
ARTICLE VI
PATENT PROSECUTION; INFRINGEMENT
6.1 Filing, Prosecution and Maintenance of Intellectual Property.
Demegen shall be responsible for the preparation, filing, prosecution
and maintenance of all patent applications and patents included in Intellectual
Property. Demegen shall consult with Periodontix as to the preparation and
filing, prosecution and maintenance of such patent applications and patents and
shall furnish to Periodontix copies of all correspondence and other documents
relevant to such preparation, filing, prosecution or maintenance Demegen
promptly shall provide Periodontix with copies of any and all communications
received from any patent office regarding the Intellectual Property.
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6.2 Abandonment.
Demegen, to the extent it has responsibility for patent prosecution
under Section 6.1, agrees that it shall not, without first providing written
notice to Periodontix, abandon the prosecution of any patent applications nor
shall it fail to make any payment or fail to take any other action necessary to
maintain a patent under the Intellectual Property .
6.3 Notice of Infringement.
Demegen shall inform Periodontix promptly in writing, and Periodontix
shall inform Demegen promptly in writing, of any alleged infringement of the
Intellectual Property by a third party and of any available evidence thereof.
6.4 Prosecution of Infringement.
During the term of this Agreement, Demegen shall have the right, but
shall not be obligated, to prosecute any infringements of the Intellectual
Property. Subject to any indemnification obligation of Periodontix under the
terms of the Option Agreement, the cost and expenses of any such infringement
action commenced or defended by Demegen shall be borne by Demegen.
ARTICLE VII
MISCELLANEOUS
7.1 No Third Party Beneficiaries.
This Agreement and the Option Agreement shall not confer any rights or
remedies upon any person other than the parties and their respective heirs,
successors and permitted assigns.
7.2 Further Assurances.
Each party to this Agreement shall, upon the request of the other party
hereto, at any time and from time to time execute, acknowledge, deliver and
perform all such further acts, deeds, assignments, transfers, conveyances, and
instruments of further assurances as may reasonably be necessary or appropriate
to carry out the provisions and intent of this Agreement.
7.3 Entire Agreement.
This Agreement, including the Exhibits attached hereto and the
documents referred to herein, constitute the entire agreement among the parties
and supersedes any prior understandings, agreements, or representations by or
among the parties, written or oral, with respect to the subject matter hereof,
except for that certain confidentiality agreement between Demegen and
Periodontix, dated September 14, 2000, which shall remain in full force and
effect, except as may be amended hereby.
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7.4 No Presumption Against Draftsman.
There shall be no presumption against either party hereto on the ground
that such party or its counsel was responsible for preparing this Agreement on
any part hereof.
7.5 Succession and Assignment.
This Agreement shall be binding upon and inure to the benefit of the
parties named herein and their respective heirs, successors and permitted
assigns. Except as otherwise expressly provided herein, no party may assign
either this Agreement or any of its rights, interests, or obligations hereunder
without the prior written approval of the other party; provided that following
the termination of this Agreement, Periodontix may assign this Agreement and its
surviving rights, interests and obligations to a third party without the consent
of Demegen.
7.6 Counterparts.
This Agreement may be executed in two or more counterparts, each of
which shall be deemed an original but all of which together shall constitute one
and the same instrument.
7.7 Headings.
The section headings contained in this Agreement are inserted for
convenience only and shall not affect in any way the meaning or interpretation
of this Agreement.
5.8 Effect of Investigation.
Any inspection, preparation, or compilation of information or
schedules, or audit of the inventories, properties, financial condition, or
other matters relating to Periodontix conducted by or on behalf of Demegen
pursuant to this Agreement shall in no way limit, affect, or impair the ability
of Demegen to rely upon the representations, warranties, covenants and
agreements of Periodontix set forth herein.
5.9 Notices.
All notices, requests, demands and other communications which are
required or may be given under this Agreement shall be in writing and shall be
deemed to have been duly given when received if personally delivered; when
transmitted if transmitted by telecopy, electronic or digital transmission
method; the next Business Day after it is sent, if sent for next Business Day
delivery to a domestic address by recognized overnight delivery service (e.g.,
Federal Express); and upon receipt or refusal of receipt, if sent by certified
or registered mail, return receipt requested. In each case notice shall be sent
to:
If to the Company, addressed to:
Periodontix, Inc.
00 Xxxx Xxxx Xxxxx
Xxxxxxx, XX 00000
Fax: (000) 000-0000
Attention: Xxx Xxxxx
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with a copy to:
Xxxx and Xxxx LLP
00 Xxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Fax: (000) 000-0000
Attention: Xxxxxx X. Xxxxxx, Esquire
If to Demegen, addressed to:
Demegen, Inc.
0000 Xxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxxxxxx 00000
Fax: (000) 000-0000
Attention: Xxxxxxx Xxxxxxx, President
with a copy to:
Xxxxxxxx Xxxxxxxxx Professional Corporation
One Oxford Centre
000 Xxxxx Xxxxxx, 00xx Xxxxx
Xxxxxxxxxx, Xxxxxxxxxxxx 00000-0000
Fax: (000) 000-0000
Attention: Xxxx X. Xxxxxxxxxx, Esquire
or to such other place and with such other copies as either party may designate
as to itself by written notice to the others.
7.10 Governing Law.
This Agreement shall be governed by and construed in accordance with
the internal substantive laws of the State of Delaware regardless of the laws
that might otherwise govern under applicable principles of conflicts of laws
thereof.
7.11 Amendments and Waivers.
The parties may mutually amend any provision of this Agreement at any
time. No amendment of any provision of this Agreement shall be valid unless the
same shall be in writing and signed by the parties. No waiver by any party of
any default, misrepresentation, or breach of warranty or covenant hereunder,
whether intentional or not, shall be deemed to extend to any prior or subsequent
default, misrepresentation, or breach of warranty or covenant hereunder or
affect in any way any rights arising by virtue of any prior or subsequent such
occurrence.
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7.12 Severability.
Any term or provision of this Agreement that is invalid or
unenforceable in any situation in any jurisdiction shall not affect the validity
or enforceability of the remaining terms and provisions hereof or the validity
or enforceability of the offending term or provision in any other situation or
in any other jurisdiction. If the final judgment of a court of competent
jurisdiction declares that any term or provision hereof is invalid or
unenforceable, the parties agree that the court making the determination of
invalidity or unenforceability shall have the power to reduce the scope,
duration, or area of the term or provision, to delete specific words or phrases,
or to replace any invalid or unenforceable term or provision with a term or
provision that is valid and enforceable and that comes closest to expressing the
intention of the invalid or unenforceable term or provision, and this Agreement
shall be enforceable as so modified after the expiration of the time within
which the judgment may be appealed.
7.13 Expenses.
Periodontix and Demegen shall each bear the cost and expense of their
own attorneys, accountants and financial advisors.
7.14 Construction.
The language used in this Agreement shall be deemed to be the language
chosen by the parties hereto to express their mutual intent, and no rule of
strict construction shall be applied against any party. Any reference to any
federal, state, local, or foreign statute or law shall be deemed also to refer
to all rules and regulations promulgated thereunder, unless the context requires
otherwise.
7.15 Incorporation of Exhibits and Recitals.
The Exhibits and Recitals identified in this Agreement are incorporated
herein by reference and made a part hereof.
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IN WITNESS WHEREOF, the parties have executed this LICENSE AGREEMENT as
of the date first above written.
DEMEGEN, INC.
By: /s/Xxxxxx X. Xxxxx
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Title: President
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PERIODONTIX, INC.
By: /s/Xxxxxxx X. Xxxxxxx
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Title: President
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