LICENSE AGREEMENT
This agreement ("Agreement") is made by and between Composite Solutions,
Inc., a Florida corporation having an address at 0000 Xxx Xxx., Xxxxx 000, Xx
Xxxxx, XX 00000 ("LICENSEE") and The Regents Of The University Of California,
a California corporation having its statewide administrative offices at 0000
Xxxxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000-0000 ("UNIVERSITY"), represented
by its San Diego campus having an address at University of California, San
Diego, Technology Transfer Office, Mail-code 0910, 0000 Xxxxxx Xxxxx, Xx
Xxxxx, Xxxxxxxxxx 00000-0000 ("UCSD").
This Agreement is effective on the date of the last signature ("Effective
Date").
RECITALS
WHEREAS, the inventions disclosed in UCSD Case Docket No. SD96-103 and titled
"Retrofit and Repair of Concrete and Masonry Walls with Carbon Overlays"
("Invention"), were made in the course of research at UCSD by Profs. Xxxxxxx
X. Xxxxxxxx and Xxxxxxx Xxxxxx and their associates (hereinafter and
collectively, the "Inventors") and are covered by Patent Rights as defined
below;
WHEREAS, the research was sponsored in part by the Government of the United
States of America and as a consequence this license is subject to overriding
obligations to the Federal Government under 35 U.S.C. Sections 200-212 and
applicable regulations;
WHEREAS, the Inventors are employees of UCSD, and they are obligated to
assign all of their right, title and interest in the Invention to UNIVERSITY;
WHEREAS, UNIVERSITY is desirous that the Invention be developed and utilized
to the fullest possible extent so that its benefits can be enjoyed by the
general public;
WHEREAS, LICENSEE is desirous of obtaining certain rights from UNIVERSITY for
commercial development, use, and sale of the Invention, and the UNIVERSITY
is willing to grant such rights; and
WHEREAS, LICENSEE understands that UNIVERSITY may publish or otherwise
disseminate information concerning the Invention and Technology (as defined
below) at any time and that LICENSEE is paying consideration thereunder for
its early access to the Invention and Technology, not continued secrecy
therein.
NOW, THEREFORE, the parties agree:
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ARTICLE 1. DEFINITIONS
The terms, as defined herein, shall have the same meanings in both their
singular and plural forms.
1.1 "Affiliate" means any corporation or other business entity in which
LICENSEE owns or controls, directly or indirectly, at least twenty
percent (20%) of the outstanding stock or other voting rights entitled
to elect directors, or in which LICENSEE is owned or controlled
directly or indirectly by at least twenty percent (20%) of the
outstanding stock or other voting rights entitled to elect directors;
but in any country where the local law does not permit foreign equity
participation of at least twenty percent (20%), then an "Affiliate"
includes any company in which LICENSEE owns or controls or is owned or
controlled by, directly or indirectly, the maximum percentage of
outstanding stock or voting rights permitted by local law.
1.2 "Sublicensee" means a third party to whom LICENSEE grants a sublicense
of certain rights granted to LICENSEE under this Agreement.
1.3 "Field" means the construction, retrofit, repair, or reinforcement of
unreinforced cementitious or masonry walls or other structures.
1.4 "Territory" means world-wide.
1.5 "Term" means the period of time beginning on the Effective Date and
ending on the later of (i) the expiration date of the longest-lived
Patent Rights; or (ii) the twenty-first (21st) anniversary of Effective
Date.
1.6 "Patent Rights" means any of the following: the US patent application
(serial number 08/667,916, titled "Reinforcement of Cementitous Walls
to Resist Seismic Forces") disclosing and claiming the Invention,
filed by Inventors and assigned to UNIVERSITY; and continuing
applications thereof including divisions, substitutions, and
continuations-in-part (but only to extent the claims thereof are enabled
by disclosure of the parent application); any patents issuing on said
applications including reissues, reexaminations and extensions; and
any corresponding foreign applications or patents.
1.7 "Technology" means the written technical information relating to the
Invention which the Inventors provide to LICENSEE prior to the
Effective Date and which the Inventors may provide to LICENSEE during
the Term of this Agreement.
1.8 "Sponsor Rights" means all the applicable provisions of any license to
the United States Government executed by UNIVERSITY and the overriding
obligations to the Federal Government under 35 U.S.C. Sections 200-212
and applicable governmental implementing regulations.
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1.9. "Licensed Method" means any method that uses Technology, or is covered
by Patent Rights the use of which would constitute, but for the
license granted to LICENSEE under this Agreement, an infringement of
any pending or issued and unexpired claim within Patent Rights.
1.10 "Licensed Product" means any services, composition or product that uses
the Invention or Technology, or is covered by the claims of Patent
Rights, or that is produced by the Licensed Method, or the
manufacture, use, sale, offer for sale, or importation of same which
would constitute, but for the license granted to LICENSEE by UNIVERSITY
herein, an infringement of any pending or issued and unexpired claim
within the Patent Rights.
1.11 "Net Sales" means the total of the gross invoice prices of Licensed
Products sold by LICENSEE, its Sublicensee, an Affiliate, or any
combination thereof, less the sum of the following actual and
customary deductions where applicable and separately listed: cash,
trade, or quantity discounts; sales, use, tariff, import/export duties
or other excise taxes imposed on particular sales (except for
value-added and income taxes imposed on the sales of Product in
foreign countries); transportation charges; or credits to customers
because of rejections or returns. For purposes of calculating Net
Sales, transfers to a Sublicensee or an Affiliate of Licensed Product
under this Agreement for (i) end use (but not resale) by the
Sublicensee or Affiliate shall be treated as sales by LICENSEE at list
price of LICENSEE, or (ii) resale by a Sublicensee or an Affiliate
shall be treated as sales at the list price of the Sublicensee or
Affiliate.
1.12 "Patent Costs" means all out-of-pocket expenses for the preparation,
filing, prosecution, and maintenance of all United States and foreign
patents included in Patent Rights. Patent Costs shall also include
reasonable out-of-pocket expenses for patentability opinions,
inventorship determination, preparation and prosecution of patent
application, re-examination, re-issue, interference, and opposition
activities related to patents or applications in Patent Rights.
1.13 "Combination Product" means any product which is a Licensed Product and
contains other product(s) or product component(s) that (i) does not
use Invention, Technology or Patent Rights; (ii) the sale, use or
import by itself does not contribute to the infringement of Patent
Rights; (iii) can be sold separately by LICENSEE, its Sublicensee or an
Affiliate; and (iv) enhances the market price of the final product(s)
sold, used or imported by LICENSEE, its Sublicensee, or an Affiliate.
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ARTICLE 2. GRANTS
2.1 LICENSE. Subject to the limitations set forth in this Agreement and
Sponsor's Rights, UNIVERSITY hereby grants to LICENSEE, and LICENSEE hereby
accepts, a license under Patent Rights to make, use, sell, offer for sale,
and import Licensed Products and to practice Licensed Methods and to use
Technology, in the Field within the Territory and during the Term.
The license granted herein is co-exclusive and LICENSEE understands and
acknowledges that UNIVERSITY has the right to grant one license to a third
party under Patent Rights to make, use, sell, offer for sale, and import
Licensed Products and to practice Licensed Methods and to use Technology, in
the Field within the Territory and during the Term.
UNIVERSITY shall not grant a third license under Patent Rights or to use
Technology in the Field, within the Territory and during the Term.
2.2 SUBLICENSE.
(a) The license granted in Paragraph 2.1 includes the right of LICENSEE to
grant sublicense to third parties during the Term but only for as long
the license is exclusive.
(b) With respect to sublicense granted pursuant to Paragraph 2.2(a),
LICENSEE shall:
(1) not receive, or agree to receive, anything of value in lieu of
cash as considerations from a third party under a sublicense
granted pursuant to Paragraph 2.2(a) without the express written
consent of UNIVERSITY;
(2) to the extent applicable, include all of the rights of and
obligations due to UNIVERSITY (and, if applicable, the Sponsor's
Rights) and contained in this Agreement;
(3) promptly provide UNIVERSITY with a copy of each sublicense
issued; and
(4) collect and guarantee payment of all payments due, directly or
indirectly, to UNIVERSITY from Sublicensees and summarize and
deliver all reports due, directly or indirectly, to UNIVERSITY
from Sublicensees.
(c) Upon termination of this Agreement for any reason, UNIVERSITY, at its
sole discretion, shall determine whether LICENSEE shall cancel or assign
to UNIVERSITY any and all sublicenses.
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2.3 RESERVATION OF RIGHTS. UNIVERSITY reserves the right to:
(a) use the Invention, Technology and Patent Rights for educational and
research purposes;
(b) publish or otherwise disseminate any information about the Invention
and Technology at any time; and
(c) allow other nonprofit institutions to use Invention, Technology and
Patent Rights for educational and non-commercial research purposes in
their facilities.
ARTICLE 3. CONSIDERATIONS
3.1 FEES AND ROYALTIES. The parties hereto understand that the fees and
royalties payable by LICENSEE to UNIVERSITY under this Agreement are
partial considerations for the license granted herein to LICENSEE under
Technology, and Patent Rights. LICENSEE shall pay UNIVERSITY:
(a) A LICENSE ISSUE FEE of Forty Thousand Dollars (US$ 40,000) upon
execution of this Agreement;
(b) AN EARNED ROYALTY of one and one half percent (1.5%) on Net Sales
of Licensed Products by LICENSEE and/or its Affiliate(s);
(c) fifty percent (50%) of all SUBLICENSE FEES received by LICENSEE
from its Sublicensees that are not earned royalties;
(d) on each and every SUBLICENSE ROYALTY payment received by LICENSEE
from its Sublicensees on sales of Licensed Product by Sublicensee,
the higher of (i) fifty percent (50%) of the royalties received
by LICENSEE; or (ii) royalties based on the royalty rate in
Paragraph 3.1(d) as applied to Net Sales of Sublicensee;
(e) beginning the calendar year of the Effective Date if the total
earned royalties paid by LICENSEE under Paragraphs 3.1(b) and (d)
to UNIVERSITY in any such year cumulatively amounts to less than
the amount specified herein for each calendar year ("MINIMUM
ANNUAL ROYALTY"), LICENSEE shall pay to UNIVERSITY a minimum
annual royalty on or before February 28 following the last quarter
of such year of the difference between amount noted above and the
total earned royalty paid by LICENSEE for such year under
Paragraphs 3.1(b) and (d).
1999 US$ 5,000
2000 US$ 10,000
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2001 US$ 20,000
2002 US$ 30,000
2003 US$ 40,000
2004 US$ 50,000 and for each calendar year of the Agreement
thereafter
All fees and royalty payments specified in Paragraphs 3.1(a) through
3.1(e) above shall be paid by LICENSEE pursuant to Paragraph 4.3 and
shall be delivered by LICENSEE to UNIVERSITY as noted in Paragraph 10.1.
3.2 PATENT COSTS. LICENSEE shall reimburse UNIVERSITY for one-half (1/2) of
all past (prior to the Effective Date) and future (on or after the
Effective Date) Patent Costs within thirty (30) days following receipt
by LICENSEE of an itemized invoice from UNIVERSITY.
One-half (1/2) of Past Patent Costs are five thousand eight hundred
seventy four dollars (US$ 5874).
3.3 DUE DILIGENCE.
(a) LICENSEE shall:
(1) diligently proceed within a reasonable time with the development,
manufacture and sale of Licensed Products according to the
business plan provided by LICENSEE to UNIVERSITY;
(2) market Licensed Products in the United States within six (6)
months of receiving regulatory approval to market such Licensed
Product's;
(3) should LICENSEE'S License be converted to an exclusive license,
then reasonably fill the market demand for Licensed Products
following commencement of marketing at any time during the term of
this Agreement; and
(4) obtain all necessary governmental approvals for the manufacture,
use and sale of Licensed Products.
(b) If LICENSEE fails to perform any of its obligations specified in
Paragraphs 3.3(a)(1)-(4), then UNIVERSITY shall have the right and option,
subject to LICENSEE'S right to written notice and rights to cure provided
herein under paragraph 7.1, to either terminate this Agreement or change
LICENSEE's exclusive license to a nonexclusive license. This right, if
exercised by UNIVERSITY, supersedes the rights granted in Article 2.
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ARTICLE 4. REPORTS, RECORDS AND PAYMENTS
4.1 REPORTS.
(a) PROGRESS REPORTS.
(1) Beginning January 1, 2000 and ending on the date of first
commercial sale of a Licensed Product in the United States,
LICENSEE shall submit to UNIVERSITY semi-annual progress reports
covering LICENSEE's (and Affiliate's and Sublicensee's)
activities to develop and test all Licensed Products and obtain
governmental approvals necessary for marketing the same. Such
reports shall include a summary of work completed; summary of work
in progress; current schedule of anticipated events or milestones;
market plans for introduction of Licensed Products; and summary of
resources (dollar value) spent in the reporting period.
(2) LICENSEE shall also report to UNIVERSITY, in its immediately
subsequent progress report, the date of first commercial sale of a
Licensed Product in each country.
(b) ROYALTY REPORTS. After the first commercial sale of a Licensed
Product anywhere in the world, LICENSEE shall submit to UNIVERSITY
quarterly royalty reports on or before each February 28, May 31, August 31
and November 30 of each year. Each royalty report shall cover LICENSEE's
(and each Affiliate's and Sublicensee's) most recently completed calendar
quarter and shall show:
(1) the gross sales, deductions as provided in Paragraph 1.11, and
Net Sales during the most recently completed calendar quarter and
the royalties, in US dollars, payable with respect thereto;
(2) the number of each type of Licensed Product sold;
(3) sublicense fees and royalties received during the most recently
completed calendar quarter in US dollars, payable with respect
thereto;
(4) the method used to calculate the royalties; and
(5) the exchange rates used.
If no sales of Licensed Products has been made and no sublicense
revenues has been received by LICENSEE during any reporting period,
LICENSEE shall so report.
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(c) To the extent allowed by law, all records and other proprietary
business information of LICENSEE made available to UNIVERSITY under
foregoing paragraphs 4.2(a) and 4.2(b) shall be held by UNIVERSITY and
UNIVERSITY'S inspecting agents in strictest confidence and shall not be
disclosed to any person or entity except for those persons who need to
have access to the same for the specific and limited purposes intended
by those sections to determine the compliance of LICENSEE with respect
to LICENSEE'S obligation to make royalty payments under this Agreement.
All such records, upon the completion of the audit, shall be returned
to LICENSEE with no copies being retained except those limited records
necessary to resolve a claim against LICENSEE if and when a reasonable
dispute exists about such payments.
4.2 RECORDS & AUDITS.
(a) LICENSEE shall keep, and shall require its Affiliates and Sublicensees
to keep, accurate and correct records of all Licensed Products
manufactured, used, and sold, and sublicense fees received under this
Agreement. Such records shall be retained by LICENSEE for at least five
(5) years following a given reporting period.
(b) All records shall be available during normal business hours for
inspection at the expense of UNIVERSITY by UNIVERSITY'S Internal
Audit Department or by a Certified Public Accountant selected by
UNIVERSITY and in compliance with the other terms of this Agreement for
the sole purpose of verifying reports and payments. Such inspector
shall not disclose to UNIVERSITY any information other than information
relating to the accuracy of reports and payments made under this
Agreement or other compliance issues. In the event that any such
inspection shows an under reporting and underpayment in excess of five
percent (5%) for any twelve (12) month period, then LICENSEE shall pay
the cost of the audit as well as any additional sum that would have been
payable to UNIVERSITY had the LICENSEE reported correctly, plus an
interest charge at a rate of ten percent (10%) per year. Such interest
shall be calculated from the date the correct payment was due to
UNIVERSITY up to the date when such payment is actually made by LICENSEE.
For underpayment not in excess of five percent (5%) for any twelve (12)
month period, LICENSEE shall pay the difference within thirty (30) days
without interest charge or inspection cost.
4.3 PAYMENTS.
(a) All fees and royalties due UNIVERSITY shall be paid in United States
dollars and all checks shall be made payable to "The Regents of the
University of California", referencing UNIVERSITY'S taxpayer
identification number, 00-0000000. When Licensed Products are sold in
currencies other than United States dollars, LICENSEE shall first
determine the earned royalty in the currency of the country in which
Licensed Products were sold and then convert the amount into
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equivalent United States funds, using the exchange rate quoted in the
Wall Street Journal on the last business day of the applicable reporting
period.
(b) Royalty Payments.
(1) Royalties shall accrue when Licensed Products are invoiced, or if
not invoiced, when delivered to a third party or Affiliate.
(2) LICENSEE shall pay earned royalties quarterly on or before
February 28, May 31, August 31 and November 30 of each calendar
year. Each such payment shall be for earned royalties accrued
within LICENSEE's most recently completed calendar quarter.
(3) Royalties earned on sales occurring or under sublicense granted
pursuant to this Agreement in any country outside the United
States shall not be reduced by LICENSEE for any taxes, fees, or
other charges imposed by the government of such country on the
payment of royalty income, except that all payments made by
LICENSEE in fulfillment of UNIVERSITY'S tax liability in any
particular country may be credited against earned royalties or
fees due UNIVERSITY for that country. LICENSEE shall pay all bank
charges resulting from the transfer of such royalty payments.
(4) If at any time legal restrictions prevent the prompt remittance of
part or all royalties by LICENSEE with respect to any country
where a Licensed Product is sold or a sublicense is granted pursuant
to this Agreement, LICENSEE shall convert the amount owed to
UNIVERSITY into US currency and shall pay UNIVERSITY directly from
its US sources of fund for as long as the legal restrictions apply.
(5) LICENSEE shall not collect royalties from, or cause to be paid on
Licensed Products sold to the account of the US Government or any
agency thereof as provided for in the license to the US Government.
(6) In the event that any patent or patent claim within Patent Rights
is held invalid in a final decision by a patent office from which
no appeal or additional patent prosecution has been or can be
taken, or by a court of competent jurisdiction and last resort
and from which no appeal has or can be taken, all obligation to
pay royalties based solely on that patent or claim or any claim
patentably indistinct therefrom shall cease as of the date of such
final decision. LICENSEE shall not, however, be relieved from
paying any royalties that accrued before the date of such final
decision, that are based on another patent or claim not involved
in such final decision, or that are based on the use of Technology.
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(b) LATE PAYMENTS. In the event royalty, reimbursement and/or fee payments
are not received by UNIVERSITY when due, LICENSEE shall pay to
UNIVERSITY interest charges at a rate of ten percent (10%) per year. Such
interest shall be calculated from the date payment was due until actually
received by UNIVERSITY. The payment of such interest shall not foreclose
UNIVERSITY from exercising any other rights it may have as a consequence
of the lateness of any payment. In no event shall this paragraph be
construed as a grant of permission for any payment delays.
ARTICLE 5. PATENT MATTERS
5.1 PATENT PROSECUTION AND MAINTENANCE.
(a) Provided that LICENSEE has reimbursed UNIVERSITY for Patent Costs
pursuant to Paragraph 3.2, UNIVERSITY shall diligently prosecute and
maintain the United States and, if available, foreign patents, and
applications in Patent Rights using counsel of its choice. UNIVERSITY
shall provide LICENSEE with copies of all relevant documentation
relating to such prosecution and LICENSEE shall keep this documentation
confidential. The counsel shall take instructions only from UNIVERSITY,
and all patents and patent applications in Patent Rights shall be
assigned solely to UNIVERSITY.
If UNIVERSITY decides not to file patent applications in any country or
countries in which LICENSEE deems patent protection to be necessary,
LICENSEE may require that such application or applications be made and
prosecuted by UNIVERSITY in such countries. Should the other third party
licensee choose not to participate in that third party's share of such
application, LICENSEE agrees to pay the full expense of such application
or applications, UNIVERSITY will use best efforts to amend that third
party's license to grant LICENSEE an exclusive license in such country
to countries to which such patent application apply.
(b) UNIVERSITY shall consider amending any patent application in Patent
Rights to include claims reasonably requested by LICENSEE to protect the
products contemplated to be sold by LICENSEE under this Agreement.
(c) LICENSEE shall apply for an extension of the term of any patent in
Patent Rights if appropriate under the Drug Price Competition and Patent
Term Restoration Act of 1984 and/or European, Japanese and other foreign
counterparts of this law. LICENSEE shall prepare all documents for such
application, and UNIVERSITY shall execute such documents and to take any
other additional action as LICENSEE reasonably requests in connection
therewith.
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(d) LICENSEE may elect to terminate its reimbursement obligations with
respect to any patent application or patent in Patent Rights upon three
(3) months' written notice to UNIVERSITY. UNIVERSITY shall use
reasonable efforts to curtail further Patent Costs for such application
or patent when such notice of termination is received from LICENSEE.
UNIVERSITY, in its sole discretion and at its sole expense, may continue
prosecution and maintenance of said application or patent, and LICENSEE
shall then have no further license with respect thereto. Non-payment of
any portion of Patent Costs with respect to any application or patent
may be deemed by UNIVERSITY as an election by LICENSEE to terminate its
reimbursement obligations with respect to such application or patent.
5.2 PATENT INFRINGEMENT.
(a) If LICENSEE learns of any substantial infringement of Patent Rights,
LICENSEE shall so inform UNIVERSITY and provide UNIVERSITY with
reasonable evidence of the infringement. Neither party shall notify a third
party of the infringement of Patent Rights without the consent of the
other party. Both parties shall use reasonable efforts and cooperation
to terminate infringement without litigation.
(b) LICENSEE may request UNIVERSITY to take legal action against such third
party for the infringement of Patent Rights. Such request shall be made
in writing and shall include reasonable evidence of such infringement
and damages to LICENSEE. If the infringing activity has not abated
thirty (30) days following LICENSEE's request, UNIVERSITY shall elect to
or not to commence suit on its own account. UNIVERSITY shall give notice
of its election in writing to LICENSEE by the end of the one hundredth
(100) day after receiving notice of such request from LICENSEE. LICENSEE
may thereafter bring suit for patent infringement at its own expense, if
and only if UNIVERSITY elects not to commence suit and the infringement
occurred in a jurisdiction where LICENSEE has an exclusive license under
this Agreement. If LICENSEE elects to bring suit, UNIVERSITY may join
that suit at its own expense.
(c) Recoveries from actions brought pursuant to Paragraph 5.2(b) shall belong
to the party bringing suit. Legal actions brought jointly by UNIVERSITY
and LICENSEE and fully participated in by both shall be at the joint
expense of the parties and all recoveries shall be shared jointly by
them in proportion to the proof of damages tendered by each in that
action.
(d) Each party shall cooperate with the other in litigation proceedings at
the expense of the party bringing suit. Litigation shall be controlled
by the party bringing the suit, except that UNIVERSITY may be
represented by counsel of its choice in any suit brought by LICENSEE.
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5.3 PATENT MARKING. LICENSEE shall xxxx all Licensed Products made, used or
sold under the terms of this Agreement, or their containers, in accordance
with the applicable patent marking laws.
ARTICLE 6. GOVERNMENTAL MATTERS
6.1 GOVERNMENTAL APPROVAL OR REGISTRATION. If this Agreement or any
associated transaction is required by the law of any nation to be either
approved or registered with any governmental agency, LICENSEE shall assume
all legal obligations to do so. LICENSEE shall notify UNIVERSITY if it
becomes aware that this Agreement is subject to a United States or foreign
government reporting or approval requirement. LICENSEE shall make all
necessary filings and pay all costs including fees, penalties, and all other
out-of-pocket costs associated with such reporting or approval process.
6.2 EXPORT CONTROL LAWS. LICENSEE shall observe all applicable United States
and foreign laws with respect to the transfer of Licensed Products and
related technical data to foreign countries, including, without limitation,
the International Traffic in Arms Regulations and the Export Administration
Regulations.
6.3 PREFERENCE FOR UNITED STATES INDUSTRY. If LICENSEE sells a Licensed
Product or Combination Product in the US, LICENSEE shall manufacture said
product substantially in the US.
ARTICLE 7. TERMINATION OF THE AGREEMENT
7.1 TERMINATION BY THE REGENTS. If LICENSEE fails to perform or violates any
term of this Agreement, then UNIVERSITY may give written notice of default
("Notice of Default") to LICENSEE. If LICENSEE fails to cure the default
within sixty (60) days of the Notice of Default, or if a complete cure is
impractical under the circumstances within that time, then reasonably
commenced an effective plan of rectification within that time, UNIVERSITY may
terminate this Agreement and the license granted herein or exercised
UNIVERSITY'S alternative option under paragraph 3.3(b) by a second written
notice ("Notice of Termination") to LICENSEE. If a Notice of Termination is
sent to LICENSEE, this Agreement shall automatically terminate on the
effective date of that notice. Termination shall not relieve LICENSEE of its
obligation to pay any fees or royalties owed at the time of termination and
shall not impair any accrued right of UNIVERSITY.
7.2 TERMINATION BY LICENSEE.
(a) LICENSEE shall have the right at any time and for any reason to terminate
this Agreement upon a ninety (90) day written notice to UNIVERSITY. Said
notice shall state LICENSEE's reason for terminating this Agreement.
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(b) Any termination under Paragraph 7.2(a) shall not relieve LICENSEE of
any obligation or liability accrued under this Agreement prior to
termination or rescind any payment made to UNIVERSITY or action by
LICENSEE prior to the time termination becomes effective. Termination
shall not affect in any manner any rights of UNIVERSITY arising under
this Agreement prior to termination.
7.3 SURVIVAL ON TERMINATION. The following Paragraphs and Articles shall
survive the termination of this Agreement:
(a) Article 4 (REPORTS, RECORDS AND PAYMENTS);
(b) Paragraph 7.4 (Disposition of Licensed Products on Hand);
(c) Paragraph 8.2 (Indemnification);
(d) Article 9 (USE OF NAMES AND TRADEMARKS);
(e) Paragraph 10.2 hereof (Secrecy); and
(f) Paragraph 10.5 (Failure to Perform).
7.4 DISPOSITION OF LICENSED PRODUCTS ON HAND. Upon termination of this
Agreement, LICENSEE may dispose of all previously made or partially
made Licensed Product within a period of one hundred and twenty (120)
days of the effective date of such termination provided that the sale
of such Licensed Product by LICENSEE, its Sublicensees, or Affiliates
shall be subject to the terms of this Agreement, including but not
limited to the rendering of reports and payment of royalties required
under this Agreement.
ARTICLE 8. LIMITED WARRANTY AND INDEMNIFICATION
8.1 LIMITED WARRANTY.
(a) UNIVERSITY warrants that it has the lawful right to grant this license.
(b) THE LICENSE GRANTED HEREIN AND THE ASSOCIATED TECHNOLOGY AND
INVENTION ARE PROVIDED "AS IS" AND WITHOUT WARRANTY OF
MERCHANTABILITY OR WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE OR
ANY OTHER WARRANTY, EXPRESS OR IMPLIED. UNIVERSITY MAKES NO
REPRESENTATION OR WARRANTY THAT THE LICENSED PRODUCT, LICENSED
METHOD OR THE USE OF PATENT RIGHTS OR TECHNOLOGY WILL NOT INFRINGE ANY
OTHER PATENT OR OTHER PROPRIETARY RIGHTS.
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(c) IN NO EVENT SHALL UNIVERSITY BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THE LICENSE GRANTED
HEREIN OR THE USE OF THE INVENTION, LICENSED PRODUCT, LICENSED METHOD
OR TECHNOLOGY.
(d) Nothing in this Agreement shall be construed as:
(1) a warranty or representation by UNIVERSITY as to the validity
or scope of any Patent Rights;
(2) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this
Agreement is or shall be free from infringement of patents of
third parties;
(3) an obligation to bring or prosecute actions or suits against
third parties for patent infringement except as provided in
Paragraph 5.2 hereof;
(4) conferring by implication, estoppel or otherwise any license
or rights under any patents of UNIVERSITY other than Patent
Rights as defined in this Agreement, regardless of whether
those patents are dominant or subordinate to Patent Rights;
(5) an obligation to furnish any know-how not provided in Patent
Rights and Technology; or
(6) an obligation to update Technology.
8.2 INDEMNIFICATION.
(a) LICENSEE shall indemnify, hold harmless, and defend UNIVERSITY, its
officers, employees, and agents; the sponsors of the research that
led to the Invention; and the Inventors of the patents and patent
applications in Patent Rights and their employers against any and all
claims, suits, losses, damage, costs, fees, and expenses resulting
from or arising out of exercise of this license or any sublicense.
This indemnification shall include, but not be limited to, any
product liability.
(b) LICENSEE, at its sole cost and expense, shall insure its activities
in connection with the work under this Agreement and obtain, keep in
force and maintain insurance or an equivalent program of self
insurance as follows:
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(1) comprehensive or commercial general liability insurance
(contractual liability included) with limits of at least: (i)
each occurrence, $1,000,000; (ii) products/completed
operations aggregate, $5,000,000; (iii) personal and
advertising injury, $1,000,000; and (iv) general aggregate
(commercial form only), $5,000,000; and
(2) the coverage and limits referred to above shall not in any way
limit the liability of LICENSEE.
(c) LICENSEE shall furnish UNIVERSITY with certificates of insurance
showing compliance with all requirements. Such certificates shall:
(i) provide for thirty (30) day advance written notice to UNIVERSITY
of any modification; (ii) indicate that UNIVERSITY has been endorsed
as an additional insured under the coverage referred to above; and
(iii) include a provision that the coverage shall be primary and
shall not participate with nor shall be excess over any valid and
collectable insurance or program of self-insurance carried or
maintained by UNIVERSITY.
(d) UNIVERSITY shall notify LICENSEE in writing of any claim or suit
brought against UNIVERSITY in respect of which UNIVERSITY intends to
invoke the provisions of this Article. LICENSEE shall keep UNIVERSITY
informed on a current basis of its defense of any claims under this
Article.
ARTICLE 9. USE OF NAMES AND TRADEMARKS
9.1 Nothing contained in this Agreement confers any right to use in
advertising, publicity, or other promotional activities any name, trade name,
trademark, or other designation of either party hereto (including
contraction, abbreviation or simulation of any of the foregoing). Unless
required by law, the use by LICENSEE of the name, "The Regents Of The
University Of California" or the name of any campus of the University Of
California is prohibited, without the express written consent of UNIVERSITY.
9.2 UNIVERSITY may disclose to the Inventors the terms and conditions of
this Agreement upon their request. If such disclosure is made, UNIVERSITY
shall request the Inventors not disclose such terms and conditions to others.
9.3 UNIVERSITY may acknowledge the existence of this Agreement and the
extent of the grant in Article 2 to third parties, but UNIVERSITY shall not
disclose the financial terms of this Agreement to third parties, except where
UNIVERSITY is required by law to do so, such as under the California Public
Records Act.
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ARTICLE 10. MISCELLANEOUS PROVISIONS
10.1 CORRESPONDENCE. Any notice or payment required to be given to either
party under this Agreement shall be deemed to have been properly given and
effective:
(a) on the date of delivery if delivered in person, or
(b) five (5) days after mailing if mailed by first-class or certified
mail, postage paid, to the respective addresses given below, or to such
other address as is designated by written notice given to the other
party.
If sent to LICENSEE:
-------------------
Composite Solutions, Inc.
Attention: Xxx Xxxxx
0000 Xxx Xxx, Xxxxx 000
Xx Xxxxx, XX 00000
If sent to UNIVERSITY:
---------------------
Technology Transfer Office, Mail-code 0910
Attention: Director
University of California, San Diego
0000 Xxxxxx Xxxxx
Xx Xxxxx, XX 00000-0000
10.2 SECRECY.
(a) "Confidential Information" shall mean information, including Technology,
relating to the Invention and disclosed by UNIVERSITY to LICENSEE during
the term of this Agreement, which if disclosed in writing shall be
marked "Confidential", or if first disclosed otherwise, shall within
thirty (30) days of such disclosure be reduced to writing by UNIVERSITY
and sent to LICENSEE:
(b) Licensee shall:
(1) use the Confidential Information for the sole purpose of
performing under the terms of this Agreement;
(2) safeguard Confidential Information against disclosure to others
with the same degree of care as it exercises with its own data of
a similar nature;
(3) not disclose Confidential Information to others (except to its
employees, agents or consultants who are bound to LICENSEE by a
like obligation of confidentiality) without the express written
permission of UNIVERSITY,
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except that LICENSEE shall not be prevented from using or
disclosing any of the Confidential Information that:
(i) LICENSEE can demonstrate by written records was
previously known to it;
(ii) is now, or becomes in the future, public knowledge other
than through acts or omissions of LICENSEE; or
(iii) is lawfully obtained by LICENSEE from sources
independent of UNIVERSITY; and
(b) The secrecy obligations of LICENSEE with respect to Confidential
Information shall continue for a period ending five (5) years from the
termination date of this Agreement.
10.3 ASSIGNABILITY. This Agreement may be assigned by UNIVERSITY, but is
personal to LICENSEE and assignable by LICENSEE only with the written consent
of UNIVERSITY.
10.4 NO WAIVER. No waiver by either party of any breach or default of any
covenant or agreement set forth in this Agreement shall be deemed a waiver as
to any subsequent and/or similar breach or default.
10.5 FAILURE TO PERFORM. In the event of a failure of performance due under
this Agreement and if it becomes necessary for either party to undertake legal
action against the other on account thereof, then the prevailing party shall be
entitled to reasonable attorney's fees in addition to costs and necessary
disbursements.
10.6 GOVERNING LAWS. THIS AGREEMENT SHALL BE INTERPRETED AND CONSTRUED IN
ACCORDANCE WITH THE LAWS OF THE STATE OF CALIFORNIA, but the scope and validity
of any patent or patent application shall be governed by the applicable laws of
the country of the patent or patent application.
10.7 FORCE MAJEURE. A party to this Agreement may be excused from any
performance required herein if such performance is rendered impossible or
unfeasible due to any catastrophe or other major event beyond its reasonable
control, including, without limitation, war, riot, and insurrection; laws,
proclamations, edicts, ordinances, or regulations; strikes, lockouts, or other
serious labor disputes; and floods, fires, explosions, or other natural
disasters. When such events have abated, the non-performing party's
obligations herein shall resume.
10.8 HEADINGS. The headings of the several sections are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
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10.9 ENTIRE AGREEMENT. This Agreement embodies the entire understanding of
the parties and supersedes all previous communications, representations or
understandings, either oral or written, between the parties relating to the
subject matter hereof.
10.10 XXXXXXXXXX.Xx amendment or modification of this Agreement shall be valid
or binding on the parties unless made in writing and signed on behalf of each
party.
10.11 SEVERABILITY. In the event that any of the provisions contained in this
Agreement is held to be invalid, illegal, or unenforceable in any respect, such
invalidity, illegality or unenforceability shall not affect any other provisions
of this Agreement, and this Agreement shall be construed as if the invalid,
illegal, or unenforceable provisions had never been contained in it.
IN WITNESS WHEREOF, both UNIVERSITY and LICENSEE have executed this Agreement,
in duplicate originals, by their respective and duly authorized officers on the
day and year written.
COMPOSITE SOLUTIONS, THE REGENTS OF THE
INC.: UNIVERSITY OF CALIFORNIA:
By: /s/ Xxx Xxxxx By: /s/ Xxxx X. Xxxx
----------------------- ------------------------------
(Signature) (Signature)
Name: Xxx Xxxxx Xxxx X. Xxxx
---------------------
Title President/CEO Director, Technology Transfer Office
--------------------
Date 20 April 99 Date April 19, 1999
--------------------- -----------------------------
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