NOTE: Certain portions of this document have been omitted based on a request
for confidential treatment. The non-public information has been filed
with the Securities and Exchange Commission. Omitted portions are
designated with asterisks ("*").
PREAMBLE
This Agreement is made this 23rd day of June 1997, (the "Effective
Date") between Xxxxxx X. Xxxxxxx of Ames, Iowa on behalf of himself and as
sole Trustee of the Xxxxxx X. Xxxxxxx Revocable Trust, an Iowa Trust arising
out of a revocable trust agreement dated May 17, 1994 (collectively and
individually referred to hereafter as "Licensor") and Ixion Biotechnology,
Inc., a corporation duly organized under the laws of Delaware, and having its
principal office at 00000 Xxxxxxxx Xxxxx, Xxxxxxx, Xxxxxxx 00000 ("Ixion").
WITNESSETH
WHEREAS, Licensor is the inventor of a discovery disclosed in the United
States Department of Agriculture, Agricultural Research Service ("ARS"),
Invention Disclosure No. 0172.95, dated July 11, 1995, entitled
"Administration of Cells of Oxalobacter Formigenes to the Human Intestinal
Tract to Minimize Absorption of Oxalic Acid," and the associated provisional
patent application entitled "Materials and Methods for Treating or Preventing
Oxalate Related Disease" filed May 23, 1997, and has the right to grant
licenses under his Patent Rights (described below), subject only to a
nonexclusive, nontransferable, irrevocable, paid-up license to practice the
invention or have the invention practiced throughout the world by or on behalf
of the United States Government; and
WHEREAS, on August 16, 1996, Licensor applied to ARS, his former
employer, to retain ownership of patent rights in the subject invention; and
WHEREAS, on November 15, 1996, ARS stated that the record showed no
interest on the part of the Government in applying for patent protection or in
commercializing the subject invention and that, therefore, the Licensor was
entitled to retain ownership of patent rights with regard to human health,
subject to the license to the Government referred to above; and
WHEREAS, on June 23, 1997, Xxxxxx X. Xxxxxxx assigned all his right
title and interest in the above discovery and provisional patent to the Xxxxxx
X. Xxxxxxx Revocable Trust, Xxxxxx X. Xxxxxxx, sole Trustee; and
WHEREAS, Licensor desires to have the Patent Rights utilized and is
willing to grant a license thereunder; and
WHEREAS, Ixion desires to obtain a license under the Patent Rights upon
the terms and conditions of this Agreement;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein the parties agree as follows:
ARTICLE I - DEFINITIONS
The following words and phrases have the following meanings:
1.1 "Inventor" means Xxxxxx X. Xxxxxxx, Ph.D.
1.2 "Ixion" means any of the following:
(a) Ixion or a related company of Ixion, the voting
stock of which is directly or indirectly at least 50% owned
or controlled by Ixion;
(b) an organization which directly or indirectly
controls more than 50% of the voting stock of Ixion; and
(c) an organization, the majority ownership of which
is directly or indirectly common to the ownership of Ixion.
1.3 "Licensed Know-How" means any technical data, information, or
knowledge within the knowledge and possession of the Inventor at any time
which is incorporated in or becomes part of the Patent Rights.
1.4 "Licensed Product" means any product or part thereof which:
(a) is covered in whole or in part by an issued,
unexpired claim or a pending claim contained in the Patent
Rights in the country in which any Licensed Product is made,
used, or sold;
(b) is manufactured by using a process which is
covered in whole or in part by an issued, unexpired claim or
a pending claim contained in the Patent Rights in the
country in which any Licensed Process is used or in which
such product or part thereof is used or sold.
1.5 "Licensed Process" means any process which is covered in whole or
in part by an issued, unexpired claim or a pending claim contained in the
Patent Rights.
1.6 "Net Sales" means Ixion's, and its sublicensees' gross sales from
the sale or lease of Licensed Products and Licensed Processes produced
hereunder less the sum of the following:
(a) discounts allowed and brokers' or agents'
commissions, if any, allowed and paid;
(b) excise, value-added, or sales taxes, tariff
duties or use taxes directly imposed and with reference to
particular sales;
(c) outbound transportation prepaid or allowed;
(d) amounts allowed or credited on returns; and
(e) packing costs and insurance costs if itemized
separately.
Licensed Products shall be considered "sold" when payment is received.
1.7 "Patent Rights" means all of the following Licensor intellectual
property:
(a) the United States and foreign patents, patent
applications, or provisional patent applications listed in
Appendices A and B;
(b) United States and foreign patents issued from
the applications listed in Appendices A and B and from
divisionals, continuations, and continuations-in-part of
these applications;
(c) claims of all foreign patent applications, and
of the resulting patents, which are directed to subject
matter specifically described in the United States patents
and/or patent applications described in (a) or (b) above;
and
(d) any reissues of United States patents described
in (a) or (b) above.
1.8 "Territory" means all the countries of the world.
ARTICLE II - GRANT
2.1 Licensor grants to Ixion the exclusive right and license to make,
have made, use, lease, and sell the Licensed Products, and to practice the
Licensed Processes and the Licensed Know-How, in the Territory to the end of
the term for which the Patent Rights are granted or the expiration date of the
last to expire patent hereunder, whichever is later, unless sooner terminated
according to the terms hereof.
2.2 Licensor shall not grant any other license to make, have made,
use, lease, or sell Licensed Products or to utilize Licensed Processes during
the period of time commencing with the Effective Date of this Agreement and
terminating with the expiration or termination of this Agreement.
2.3 Licensor reserves the right to practice under the Patent Rights
for his own noncommercial research purposes.
2.4 Ixion may sublicense others under this Agreement. Each
sublicense
shall be consistent with the terms of this Agreement.
2.5 Any sublicenses granted by Ixion shall provide that the
obligations to Licensor of this Agreement shall be binding upon the
sublicensee as if it were a party to this Agreement. Ixion shall attach
copies of this Agreement to sublicense agreements.
2.6 Ixion shall forward to Licensor a copy of any sublicense
agreement
within 30 days of its execution and further shall forward to Licensor annually
a copy of such reports received by Ixion from its sublicensees during the
preceding twelve-month period under the sublicenses as shall be pertinent to a
royalty accounting under said sublicenses.
2.7 The license granted hereunder shall not be construed to confer
any
rights upon Ixion by implication, estoppel, or otherwise as to any technology
not specifically set forth herein.
ARTICLE III - COMMERCIAL DUE DILIGENCE
3.1 Ixion shall use commercially reasonable efforts to bring one or
more Licensed Products or Licensed Processes to market through a program
intended to attain commercialization of Licensed Products and Licensed
Processes.
ARTICLE IV - ROYALTIES
4.1 For the rights, privileges and, license granted hereunder, Ixion
shall pay royalties to Licensor to the end of the term of the Patent Rights or
the expiration date of the last to expire patent hereunder, whichever is
later, unless sooner terminated according to the terms hereof, as follows:
(a) A License Issue Fee of an amount equal to any
out-of-pocket costs of patenting incurred by Licensor prior
to the Effective Date, such fee to be paid within 30 days of
the receipt of an invoice therefor by Ixion;
(b) An Additional License Issue Fee of ********, due
immediately upon the execution of this Agreement;
(c) A Running Royalty in an amount equal to ***** of
the Net Sales of the Licensed Products or Licensed Processes
used, leased, or sold by or for Ixion or its sublicensees.
4.2 No multiple royalties shall be payable because any Licensed
Product, its manufacture, use, lease, or sale are or shall be covered by more
than one Patent Rights patent application or Patent Rights patent licensed
under this Agreement.
4.3 Royalty payments shall be paid in United States dollars in
Gainesville, Florida or at such other place as Licensor may reasonably
designate in writing consistent with the laws and regulations controlling in
any foreign country. If any currency conversion shall be required in
connection with the payment of royalties hereunder, such conversion shall be
made by using the exchange rate prevailing at the Chase Manhattan Bank (N.A.)
on the last business day of the calendar quarterly reporting period to which
such royalty payments relate.
4.4 In the event the royalties set forth herein are higher than the
maximum royalties permitted by the law or regulations of a particular country,
the royalty payable for sales in such country shall be equal to the maximum
permitted royalty under such law or regulations. Notice of said event shall
be provided to Licensor. Ixion shall notify Licensor, in writing, within 90
days of discovering that such royalties are approaching or have reached the
maximum amount, and shall provide Licensor with written documentation
regarding the laws or regulations establishing such maximum.
4.5 In the event that any taxes, withholding or otherwise, are levied
by any taxing authority in connection with accrual or payment of any royalties
payable by Ixion under this Agreement, and Ixion determines in good faith that
it must pay such taxes, Ixion shall have the right to pay such taxes to the
local tax authorities on behalf of Licensor and payment of the net amount due
after reduction by the amount of such taxes, shall fully satisfy Ixion's
royalty obligations under this Agreement. Ixion shall provide Licensor with
appropriate receipts or other documentation supporting such payment. Ixion
shall inform Licensor in writing, within 90 days of notification that taxes
will or have been levied by a taxing authority.
4.6 In the event that a Licensed Product is sold in a combination
package or kit containing other active products, then Net Sales for purposes
of determining royalty payments on the combination package, shall be
calculated using one of the following methods, but in no event shall the
royalties payable to Licensor be reduced to less than 25% of that provided for
in Section 4.1 above:
(a) by multiplying the net selling price of that combination
package by the fraction A/A+B, where A is the gross selling price,
during the royalty-paying period in question, of the Licensed
Product sold separately, and B is the gross selling price during
the royalty period in question, of the other active products sold
separately; or
(b) in the event that no such separate sales are made of the
Licensed Product or any of the active products in such combination
package during the royalty-paying period in question, Net Sales
for the purposes of determining royalty payments, shall be
calculated by dividing the net selling price of the combination
package by the number of functions performed by the combination
package sold where such package contains active agents other than
those licensed under this Agreement. The parties recognize that
this provision will require consultation and that in the event a
combination package or kit circumstance arises, the parties will
negotiate in good faith to determine the calculation of Net Sales
pursuant to this section.
4.7 If it is necessary for Ixion to take any license(s) in any given
country, under third-party patents in order to practice the Licensed Processes
or produce the Licensed Products in that country, then Ixion can deduct up to
50% of the royalties otherwise due under this Agreement for Net Sales in that
country, until such time as Ixion has recovered an amount equal to the
royalties payable to such third parties.
ARTICLE V - REPORTS AND RECORDS
5.1 Ixion shall keep accurate books of account for the purpose of
showing the amounts payable to Licensor hereunder. Said books of account
shall be kept at Ixion's principal place of business or the principal place of
business of the appropriate division of Ixion to which this Agreement relates.
Said books and the supporting data shall be open at all reasonable times for
one year following the end of the calendar year to which they pertain, to the
inspection of Licensor or its agents at Licensor's expense for the purpose of
verifying Ixion's royalty statements.
5.2 Ixion, within 45 days after December 31 of each year, shall
deliver to Licensor accurate reports, giving such particulars of the business
conducted by Ixion and its sublicensees during the preceding twelve-month
period under this Agreement as shall be pertinent to a royalty accounting
hereunder. These shall include at least the following:
(a) number of Licensed Products manufactured and
sold;
(b) total xxxxxxxx for Licensed Products sold;
(c) an accounting for all Licensed Processes used or
sold;
(d) deductions applicable to a determination of Net
Sales;
(e) total royalties due; and
(f) names and addresses of all sublicensees of
Ixion.
5.3 With each such report submitted, Ixion shall pay to Licensor the
royalties due and payable under this Agreement. If no royalties shall be due,
Ixion shall so report.
5.4 On or before the 90th day following the close of Ixion's fiscal
year, Ixion shall provide Licensor with Ixion's year-end balance sheet and an
operating statement for the preceding fiscal year then ended.
5.5 The royalty payments, license fees, and reimbursement for patent-
related expenses set forth in this Agreement shall, if overdue, bear interest
until payment at the monthly rate of 1.0%. The payment of such interest shall
not foreclose Licensor from exercising any other rights it may have as a
consequence of the lateness of any payment.
ARTICLE VI - PATENT PROSECUTION
6.1 Ixion shall apply for, seek issuance of, and maintain during the
term of this Agreement the Patent Rights in the United States and in the
foreign countries listed in Appendix B hereto to the extent, in its sole
discretion, it deems such actions commercially reasonable. Licensor shall have
reasonable opportunities to advise Ixion and shall cooperate with Ixion in
such prosecution, filing, and maintenance.
6.2 Payment of all fees and costs relating to the filing,
prosecution,
and maintenance of the Patent Rights shall be the responsibility of Ixion
after the Effective Date.
ARTICLE VII - INFRINGEMENT
7.1 Licensor shall inform Ixion promptly in writing of any alleged
infringement of the Patent Rights by a third party and of any available
evidence thereof.
7.2 During the term of this Agreement, Ixion shall have the right,
but
shall not be obligated, to prosecute at its own expense any such infringements
of the Patent Rights. If Ixion prosecutes any such infringement, Licensor
agrees that Ixion may include Licensor as a co-plaintiff in any such suit,
without expense to Licensor. The total cost of any such infringement action
commenced or defended solely by Ixion shall be borne by Ixion and Ixion shall
keep any recovery or damages for past infringement derived therefrom.
7.3 If within six months after having been notified of any alleged
infringement or such shorter time proscribed by law, Ixion shall have been
unsuccessful in persuading the alleged infringer to desist or shall not have
brought and shall not be diligently prosecuting an infringement action, or if
Ixion shall notify Licensor at any time prior thereto of its intention not to
bring suit against any alleged infringer, then, and in those events only,
(a) Licensor shall have the right, but shall not be obligated,
to prosecute at its own expense any infringement of the Patent
Rights (keeping any recovery or damages for past infringements
derived therefrom), and Licensor may, for such purposes, use the
name of Ixion as co-plaintiff. No settlement, consent judgment,
or other voluntary final disposition of the suit may be entered
into without the consent of Ixion, which consent shall not
unreasonably be withheld. Licensor shall indemnify Ixion against
any order for costs that may be made against Ixion in such
proceedings.
(b) Payments which are earned under Article IV hereof shall be
waived so long as any such infringement which the parties agree in
good faith is material continues, such waiver not to exceed 75% of
the royalties payable hereunder.
7.4 If Licensor has brought a suit pursuant to section 7.3 above, it
shall have the right for such purpose to join Ixion as a co-plaintiff at
Ixion's expense. Ixion independently shall have the right to join any such
suit or action brought by Licensor, and, in such event, shall pay one-half of
the cost of such suit or action from the date of joining. Any damages
recovered by a suit or action in which Ixion has paid its share of costs shall
be first used to reimburse each party hereto for the cost of such suit or
action (including attorney's fees) actually paid by each party hereto as the
case may be, then to reimburse Licensor for any payments waived under this
Section 7.4, and the residue, if any, shall be divided equally between the
parties hereto.
7.5 In the event that a declaratory judgment action alleging
invalidity or noninfringement of any of the Patent Rights shall be brought
against Ixion, Licensor, at its option, shall have the right, within 30 days
after commencement of such action, to intervene and take over the sole defense
of the action at its own expense.
7.6 In any infringement suit as either party may institute to enforce
the Patent Rights pursuant to this Agreement, the other party hereto shall, at
the request and expense of the party initiating such suit, cooperate in all
respects and, to the extent possible, have its employees testify when
requested and make available relevant records, papers, information, samples,
specimens, and the like.
ARTICLE VIII - PRODUCT LIABILITY
8.1 Ixion shall at all times during the term of this Agreement and
thereafter, indemnify, defend, and hold Licensor harmless against all claims
and expenses, including legal expenses and reasonable attorneys' fees, whether
arising from a third party claim or resulting from Licensor's enforcing this
indemnification clause against Ixion, or arising out of the death of or injury
to any person or persons or out of any damage to property and against any
other claim, proceeding, demand, expense, or liability of any kind whatsoever
resulting from the production, manufacture, sale, use, lease, consumption, or
advertisement of the Licensed Products and/or Licensed Processes or arising
from any right or obligation of Ixion hereunder. This indemnification shall
not apply to any liability, damage, loss, or expense to the extent that it is
attributable to the negligence or intentional wrongdoing of the Licensor.
8.2 At such time as any product, process, or service relating to, or
developed pursuant to, this Agreement is being commercially distributed or
sold (other than for the purpose of obtaining regulatory approvals) by Ixion
or by a licensee, affiliate, or agent of Ixion, Ixion shall, at its sole cost
and expense, procure and maintain policies of comprehensive general liability
insurance naming Licensor as additional insureds. Such comprehensive general
liability insurance shall provide (a) product liability coverage, and (b)
broad form contractual liability coverage for Ixion's indemnification under
sections 8.1 and 8.2 above. Ixion may elect to self-insure.
8.3 Ixion shall provide Licensor with written evidence of such
insurance upon request, and shall provide Licensor with written notice at
least 45 days prior to the cancellation, non-renewal, or material change in
such comprehensive general liability insurance; if Ixion does not obtain
replacement insurance providing comparable coverage within such 45 day period,
Licensor shall have the right to terminate this Agreement.
8.4 Ixion shall maintain such comprehensive general liability
insurance beyond the expiration or termination of this Agreement during (a)
the period that any product, process, or service, relating to, or developed
pursuant to, this Agreement is being commercially distributed or sold (other
than for the purpose of obtaining regulatory approvals) by Ixion or by a
licensee, affiliate, or agent of Ixion, and (b) a reasonable period after the
period referred to in section 8.5 (a) above, which in no event shall be less
than 15 years.
8.5 In the event any such action is commenced or claim made or
threatened against Licensor or other Indemnitees as to which Ixion is
obligated to indemnify it or them or hold it or them harmless, Licensor or the
other Indemnitees shall promptly notify Ixion of such event. Ixion shall
assume the defense of, and may settle, that part of any such claim or action
or made against Licensor (or other Indemnitee) which relates to Ixion's
indemnification and Ixion may take such other steps as may be necessary to
protect itself. Ixion shall not be liable to Licensor or other Indemnitees on
account of any settlement of any such claim or litigation affected without
Ixion's consent. The right of Ixion to assume the defense of any action shall
be limited to that part of the action commenced against Licensor or other
Indemnitees which relates to Ixion's obligation of indemnification.
ARTICLE IX - DISCLAIMER OF WARRANTIES
9.1 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, LICENSOR
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, AND VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED
OR PENDING.
9.2 LICENSOR DOES NOT WARRANT THE VALIDITY OF THE PATENT RIGHTS LICENSED
HEREUNDER AND MAKES NO REPRESENTATION WHATSOEVER WITH REGARD TO THE SCOPE OF
THE LICENSED PATENT RIGHTS OR THAT SUCH PATENT RIGHTS MAY BE EXPLOITED BY
IXION OR ANY AFFILIATE OR SUBLICENSEE WITHOUT INFRINGING OTHER PATENTS.
ARTICLE X - ASSIGNMENT
10.1 This Agreement is not assignable; provided, however, that in the
event that the Xxxxxx X. Xxxxxxx Revocable Trust is revoked or terminated and
the corpus thereof, including this Agreement reverts to Xxxxxx X. Xxxxxxx,
this Agreement shall be assumed by Xxxxxx X. Xxxxxxx.
ARTICLE XI - TERMINATION
11.1 If Ixion shall cease to carry on its business, this Agreement
shall terminate upon notice by Licensor.
11.2 Should Ixion fail to pay Licensor royalties due and payable
hereunder, Licensor shall have the right to terminate this Agreement on 90
days' notice, unless Ixion shall pay Licensor within the 90-day period, all
such royalties and interest due and payable. Upon the expiration of the 90-
day period, if Ixion shall not have paid all such royalties and interest due
and payable, the rights, privileges, and license granted hereunder shall
terminate.
11.3 Upon any material breach or default of this Agreement by Ixion,
other than those occurrences set out in sections 11.1 and 11.2 above, which
shall always take precedence in that order over any material breach or default
referred to in this section 11.3, Licensor shall have the right to terminate
this Agreement and the rights, privileges, and license granted hereunder by 90
days' notice to Ixion. Such termination shall become effective unless Ixion
shall have cured any such breach or default prior to the expiration of the 90-
day period.
11.4 Ixion shall have the right to terminate this Agreement at any
time
on 90 days' written notice to Licensor, and upon payment of all amounts due
Licensor through the effective date of the termination.
11.5 Upon termination of this Agreement for any reason, nothing
herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination. Ixion and any sublicensee
thereof may, however, after the effective date of such termination, sell all
Licensed Products, and complete Licensed Products in the process of
manufacture at the time of such termination and sell the same, provided that
Ixion shall pay to Licensor the royalties thereon as required by Article IV of
this Agreement and shall submit the reports required by Article V hereof on
the sales of Licensed Products.
11.6 Upon termination of this Agreement for any reason, any
sublicense
not then in default shall continue in full force and effect except that
Licensor shall be substituted in place of the sublicensor; provided, however,
that the extent of Licensor's obligations under such sublicense shall be
consistent with (and not exceeding) its obligations under this Agreement.
11.7 Bankruptcy.
(a) Notice of Assumption or Rejection.
(i) In the event that either party files or has filed
against it a petition under the Federal Bankruptcy Code (11 U.S.C. 1, et
seq.) (the "Bankruptcy Code"), is adjudged bankrupt, or files or has filed
against it a petition for reorganization or arrangement under any law relating
to bankruptcy or similar laws for the protection of debtors, whether under the
laws of the United States and its political subdivisions or otherwise, such
party shall (1) notify the other party thereof within ten days
after the filing of such petition or such adjudication, and (2), within 30
days after the filing of such petition, shall notify the other party of the
party's assumption or rejection of this Agreement, and shall file a petition
with the appropriate court for approval of all other action as may be
necessary to obtain the approval of such petition and of such assumption or
rejection.
(ii) If such party does not: (1) within
thirty (30) days after the occurrence of any of the
foregoing events, notify the other party of its
assumption or rejection of this Agreement or file the
petition, or (2) thereafter diligently take all other
action necessary for the approval of the foregoing
petition or of such assumption or rejection, such
party shall be deemed to have rejected this Agreement.
Each party acknowledges that, for purposes of Section
365 of the Bankruptcy Code and similar provisions of
any other or future similar laws relating to any
party's assumption or rejection of any executory
contract, a period of 30 days after the date of any
filing or adjudication described above shall
constitute a reasonable time in which such party shall
assume or reject this Agreement and a party shall be
deemed to have not diligently taken all action
necessary for the approval of the foregoing petition
or of such assumption or rejection if such petition,
assumption or rejection is not approved by the
appropriate court within 60 days after the filing of
the petition for such assumption or rejection.
(b) Conditions to Assumption.
No election by any party, or any successor-in-
interest to such party, to assume this Agreement as
contemplated by Section (a) above shall be effective unless
each of the following conditions, each of which each party
acknowledges is commercially reasonable in the context of a
bankruptcy or similar proceeding, has been satisfied by such
party and each of the other parties has acknowledged such
satisfaction in writing:
(1) Cure. Such party has cured, or has
provided the other party adequate assurances that:
(A) Monetary Defaults.
Within ten days from the date of such assumption
such party will cure all monetary defaults under
this Agreement; and
(B) Non-Monetary Defaults.
Within 30 days from the date of such assumption
such party will cure all non-monetary defaults
under this Agreement.
(2) Pecuniary Loss. Such party has
compensated or has provided to the other party
adequate assurances that within ten days from the date
of assumption the other party will be compensated for
any pecuniary loss incurred by the party arising from
any default of such party under this Agreement prior
to the assumption.
(3) Future Performance. Such party has
provided the other party with adequate assurances of
the future performance of such party's obligations
under this Agreement.
(c) Termination. This Agreement shall terminate
upon the rejection of this Agreement as contemplated by this
Section by any party or successor-in-interest thereto.
(d) No Transfer. Neither any party's interest in
this Agreement nor any portion thereof shall pass to any
trustee, receiver, or assignee for the benefit of creditors,
or any other person or entity or otherwise by operation of
law under the Bankruptcy Code or the insolvency laws of any
state having jurisdiction of the person or property of such
party unless the other party shall consent to such transfer
in writing.
ARTICLE XII - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
12.1 Any payment, notice or other communication pursuant to this
Agreement shall be sufficiently made or given on the date of mailing if sent
to such party by first class mail, postage prepaid, addressed to it at its
address below or as it shall designate by written notice given to the other
party:
In the case of Licensor:
Xxxxxx X. Xxxxxxx, Ph.D.
0000 Xxxxxx Xxxxx
Xxxx, XX 00000
In the case of Ixion:
President
Ixion Biotechnology, Inc.
00000 Xxxxxxxx Xxxxx
Xxxxxxx, XX 00000
ARTICLE XIII - MISCELLANEOUS PROVISIONS
13.1 This Agreement shall be construed, governed, interpreted, and
applied in accordance with the laws of the State of Florida, except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
13.2 This Agreement sets forth the entire agreement and understanding
of the parties hereto as to the subject matter hereof, and shall not be
subject to any change or modification except by the execution of a written
instrument subscribed to by the parties hereto.
13.3 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
13.4 Ixion agrees to xxxx the Licensed Products sold in the United
States with all applicable United States patent numbers. All Licensed
Products shipped to or sold in other countries shall be marked in such a
manner as to conform with the patent laws and practice of the country of
manufacture or sale.
13.5 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
13.6 (a) Anything in this Agreement to the contrary notwithstanding,
any and all knowledge, know-how, practices, process or other information of
any kind and in any form (hereinafter referred to as "Confidential
Information") disclosed or submitted, either orally, in writing or in other
tangible or intangible form which is designated as Confidential Information,
to either party by the other shall be received and maintained by the receiving
party in strict confidence and shall not be disclosed to any third party,
except that Ixion may disclose Confidential Information (pursuant to written
confidentiality agreements) to its lawyers, accountants, advisors, investors,
and potential investors. Furthermore, neither party shall use the said
Confidential Information for any purpose other than those purposes specified
in this Agreement. The parties may disclose Confidential Information to the
minimum number of its employees reasonably requiring access thereto for the
purposes of this Agreement provided, however, that prior to making any such
disclosures each such employee shall be apprised of the duty and obligation to
maintain Confidential Information in confidence and not to use such
information for any purpose other than in accordance with the terms and
conditions of this Agreement.
(b) Nothing contained herein will in any way restrict or impair
either parties right to use, disclose, or otherwise deal with any Confidential
Information which at the time of its receipt:
(i) Is generally available in the public domain, or thereafter
becomes available to the public through no act of the receiving party; or
(ii) Was independently known prior to receipt thereof, or made
available to such receiving party as a matter of lawful right by a third
party.
13.7 Licensor will use his best efforts to assist Ixion in the
transfer
of the technology represented by the Patent Rights through consultation,
making available experimental data, or otherwise.
13.8 Xxxxxx X. Xxxxxxx, in his capacity as Trustee and as an
individual, agrees that in the event of the revocation of the Xxxxxx X.
Xxxxxxx Revocable Trust, or the return of the corpus of such Trust to the said
Xxxxxx X. Xxxxxxx, this Agreement shall remain in full force and effect and
shall be binding on the said Xxxxxx X. Xxxxxxx as though he and Ixion were the
sole parties hereto.
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
and duly executed this Agreement as of the day set forth first above.
Xxxxxx X. Xxxxxxx, Ph.D. Ixion Biotechnology, Inc
By
Xxxxxx X. Xxxxxx
Chairman and Chief Executive Officer
Xxxxxx X. Xxxxxxx Revocable Trust
By
Xxxxxx X. Xxxxxxx, Trustee
APPENDIX A
Invention Disclosure No. 0172.95
"Administration of Cells of Oxalobacter Formigenes to the Human Intestinal
Tract to Minimize Absorption of Oxalic Acid"
Provisional Patent Docket No. IXN-100P
"Materials and Methods for Treating or Preventing Oxalate Related Disease."
By Xxxxxx X. Xxxxxxx, Ph. D.
Filed on May 23, 1997
Any Patent Application arising out of or related to the Provisional Patent
Docket No. IXN-100) or Invention Disclosure No. 0172.95
APPENDIX B
Foreign countries in which Patent Rights shall be filed, prosecuted and
maintained in accordance with Article VI:
Patent application arising out of the Provisional Patent Application (or
series of Provisional Patent Applications) shall be filed under the Patent
Cooperation Treaty and such national filings thereafter as Ixion shall
determine.
