EXHIBIT 10.2
LICENSE AGREEMENT
(as amended through December 3, 2002)
This Agreement, effective upon the EFFECTIVE DATE (as defined herein
below), by and between The Penn State Research Foundation (hereinafter referred
to as "PSRF"), a non-profit corporation duly organized and existing under the
laws of the Commonwealth of Pennsylvania and having an office at 000 Xxx Xxxx,
Xxxxxxxxxx Xxxx, XX 00000, and Chiral Quest, LLC (hereinafter referred to as
"LICENSEE"), having its principal office at 000 Xxxx Xxxxxxxxx Xxxxxx, Xxxxx
Xxxxxxx, XX 00000.
WITNESSETH
WHEREAS, Dr. Xumu Zhang, et al. (the "INVENTORS"), employees of The
Pennsylvania State University (the "UNIVERSITY"), have made a series of
inventions related to asymmetric catalysis technology (collectively referred to
as the "INVENTIONS" and defined in Appendix A);
WHEREAS, PSRF is dedicated to fostering and advancing scientific
research within the Commonwealth of Pennsylvania and, in particular, within the
UNIVERSITY and is responsible for developing inventions, made by employees of
the UNIVERSITY by evaluating invention disclosures, pursuing patents and
licensing patents which are obtained thereon;
WHEREAS, PSRF desires to have the INVENTIONS, together with any patents
that may issue thereon, utilized in the public interest;
WHEREAS, PSRF is the owner of and has the right to license certain
patents and patent applications and technical information relating to the
INVENTIONS;
WHEREAS, LICENSEE is a for profit, private corporation established to
develop the commercial potential of the INVENTIONS;
WHEREAS, Xumu Zhang, a current employee of the UNIVERSITY, and also an
inventor of the LICENSED PATENTS (as defined hereinbelow), now holds or shall
shortly acquire an equity position in LICENSEE and has executed a Conflict
Avoidance Statement, which is attached hereto as Appendix B, and a Waiver of
participation in the UNIVERSITY's institutional equity share, which is attached
hereto as Appendix C;
WHEREAS, PSRF is accepting equity in lieu of royalties and the
UNIVERSITY 's Vice President for Research has granted approval.
NOW, THEREFORE, the parties hereto, in consideration of the mutual
covenants and promises set forth in this License Agreement, and with intent to
be legally bound, agree as follows:
ARTICLE 1 -DEFINITIONS
For purposes of this License Agreement, the following words and phrases
shall have the following meanings:
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1.1. "LICENSEE" shall mean Chiral Quest, LLC.
1.2. "LICENSED PATENTS" shall mean all of the following PSRF
Property:
1.2.1. The following United States patent and/or patent
applications covering INVENTIONS, including:
1.2.1.1. U.S. Patent Application No. 09/377,065,
filed on August 19, 1999;
1.2.1.2. U.S. Provisional Patent Application No.
60/141,795, filed on June 30, 1999;
1.2.1.3. U.S. Provisional Patent Application No
60/150,375, filed on August 23, 1999;
1.2.1.4. U.S. Provisional Patent Application No
60/154,845, filed on September 20, 1999;
1.2.1.5. U.S. Provisional Patent Application No
60/164,508, filed on November 10, 1999;
1.2.1.6. U.S. Provisional Patent Application No
60/165,649, filed on November 15, 1999;
1.2.1.7. Intentionally omitted;
1.2.1.8. U.S. Provisional Patent Application No
60/181,448, filed on February 10, 2000;
1.2.1.9. Intentionally omitted;
1.2.1.10. U.S. Provisional Patent Application No
60/187,851, filed on March 8, 2000;
1.2.1.11. U.S. Provisional Patent Application No
60/214,167, filed on June 23, 2000.
1.2.1.12 U.S. Provisional Patent Application No.
60/249,537, filed on November 17, 2000.
1.2.2. Any conversions, reissues, extensions, divisional
applications, continuations, continuations-in-part
of the patent applications described in 1.2.1
above, and any patents issuing thereon;
1.2.3. Claims of all foreign counterpart applications
described in 1.2.1 and 1.2.2 above, and the
resulting patents thereon, in those foreign
countries from which LICENSEE has elected
exclusive license rights, and for which it has
directly reimbursed PSRF for all reasonable costs
incurred in obtaining, maintaining, and defending
said rights pursuant to Article VI of this
Agreement. Exclusive foreign
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license rights in any particular country or
territory shall be subject to termination pursuant
to Article XII in the event LICENSEE notifies PSRF
that it no longer wishes to pay for the costs of
prosecuting applications or maintaining patents in
particular countries.
1.3. "LICENSED PROCESSES" shall mean any process activities utilized
which are covered in whole or in part by a claim of LICENSED PATENTS or involves
TECHNICAL INFORMATION.
1.4. "LICENSED PRODUCTS" shall mean any product or part thereof which
(i) is covered in whole or in part by an issued, unexpired claim or a pending
claim contained in the LICENSED PATENTS in the country in which any such product
or part thereof is made, used or sold, (ii)is manufactured by using a process or
is employed to practice a process which is covered in whole or in part by an
issued, unexpired claim or a pending claim contained in the LICENSED PATENTS in
the country in which any LICENSED PROCESSES are used or in which such product or
part thereof is used or sold, or (iii) is covered by TECHNICAL INFORMATION.
1.5. "TECHNICAL INFORMATION" shall mean all technical information,
know-how, compositions, formulations, specifications, processes, techniques and
data which are not readily available to others through public means and which
are not the subject of an issued or pending patent claim in a country in which
LICENSED PRODUCTS or LICENSED PROCESSES are manufactured, sold or employed
relative to the practice of the INVENTION.
1.6. "TERRITORY" shall mean the entire world.
1.7. "GROSS REVENUES" shall mean the following revenues received by
LICENSEE:
1.7.1. Revenue received for performing commercial research and
development activities related to LICENSED PRODUCTS and/or
LICENSED PROCESSES.
1.7.2. Revenue received for the commercial sale, lease, or
transfer of LICENSED PRODUCTS and LICENSED PROCESSES produced
hereunder. LICENSED PRODUCTS shall be considered "sold" when
invoiced.
1.7.3.Revenue received by LICENSEE as payment under sublicensing
agreements, including, but not limited to, sublicensing fees,
milestone payments, or royalties in consideration of license
rights granted to sublicensees for LICENSED PRODUCT and/or
LICENSED PRODUCTS.
1.8. "IMPROVEMENTS" shall mean new technology, patentable or
unpatentable, which is: (a) conceived and reduced to practice by LICENSEE or by
the UNIVERSITY as a result of LICENSEE having access to the LICENSED PATENTS and
TECHNICAL INFORMATION and (b) directly related to the LICENSED PATENTS and/or
TECHNICAL INFORMATION (including patentable and unpatentable inventions of the
UNIVERSITY) in the sense that practice of the IMPROVEMENTS would be dominated by
the LICENSED PATENTS and/or the TECHNICAL INFORMATION.
1.9. "INTELLECTUAL PROPERTY " shall mean inventions and/or
discoveries made in the field of Asymmetric Catalysis Technology and resulting
in invention disclosures, patents, patent
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applications, divisions, continuations, or substitutions of such applications
and all reissues thereof upon which Xumu Zhang is named as an inventor.
1.10. "EFFECTIVE DATE" shall mean the date upon which the LLC
Buy-Sell Agreement, which is attached hereto as Appendix D, is executed by both
parties.
ARTICLE II -THE LICENSE
2.1. PSRF hereby grants to LICENSEE the exclusive right and license
in the TERRITORY, with the right to sublicense, to LICENSED PATENTS and
TECHNICAL INFORMATION and to make, have made, use, lease, and sell LICENSED
PRODUCTS and to practice the LICENSED PROCESSES and TECHNICAL INFORMATION for
the term set forth herein, unless this License Agreement shall be earlier
terminated according to the terms and conditions contained herein.
2.2. The license granted hereunder shall not be construed to confer
any rights upon LICENSEE by implication, estoppel, or otherwise as to any
technology not specifically set forth herein.
2.3. PSRF reserves the rights for itself and the UNIVERSITY to
practice under the LICENSED PATENTS, LICENSED PRODUCTS, LICENSED PROCESSES,
TECHNICAL INFORMATION, and IMPROVEMENTS for their own noncommercial research
purposes. This right does not include the material transfer of LICENSED PRODUCTS
from PSRF to third parties which may without the prior written consent of
LICENSEE.
2.4. In the event UNIVERSITY makes any IMPROVEMENTS during the this
License Agreement, PSRF warrants that the license granted to LICENSEE herein
shall extend to such IMPROVEMENTS. In the event LICENSEE during the term of this
License Agreement develops IMPROVEMENTS, LICENSEE shall make a full disclosure
thereof to PSRF. All IMPROVEMENTS All made by LICENSEE shall be licensed to PSRF
on a royalty free basis. Such license to PSRF shall be non-exclusive and only
for non-commercial research purposes no rights to sublicense.
ARTICLE III -FUTURE INTELLECTUAL I PROPERTY
3.1. PSRF also grants to LICENSEE the right of first refusal to add
to the license granted herein to LICENSED PATENTS TECHNICAL INFORMATION any
INTELLECTUAL PROPERTY developed within two (2) years of the Effective Date of
this Agreement. It is understood that this right of first refusal is superceded
by rights, if any, that may be granted by UNIVERSITY discretion to any
INTELLECTUAL PROPERTY arising from sponsored research. PSRF also grants to
LICENSEE the right of first refusal add to the license granted herein to
LICENSED PATENTS and TECHNICAL INFORMATION any INTELLECTUAL PROPERTY that
becomes licensing by PSRF during the term of this License Agreement due to
termination of any License Agreement in effect as of the Effective Date of this
Agreement with any third party. LICENSEE may exercise this right without any
additional consideration other than that provided for herein.
3.2. PSRF will promptly disclose to LICENSEE in writing any
INTELLECTUAL PROPERTY subject to LICENSEE's right of first refusal in Paragraph
3.1 in sufficient detail for LICENSEE to assess its interest in licensing the
technology. In the event LICENSEE exercises this
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right, Paragraph 1.2.1 and Appendix A shall be amended to include such
INTELLECTUAL PROPERTY. LICENSEE shall advise PSRF as to its election of
additional LICENSED PATENTS and TECHNICAL INFORMATION available for licensing
within sixty (60) days of notice from PSRF. The period during which PSRF grants
to LICENSEE the right of first refusal to add INTELLECTUAL PROPERTY to LICENSED
PATENTS and TECHNICAL INFORMATION may be extended beyond two (2) years from the
Effective Date of this Agreement by mutual written agreement.
3.2.1. In the event that INTELLECTUAL PROPERTY elected by
LICENSEE has not been the subject of a U.S. patent or patent
application:
3.2.1.1. PSRF shall promptly file and prosecute
patent applications, using counsel of PSRF's choice
after due consultation with LICENSEE. PSRF shall keep
LICENSEE advised as to all developments with respect
to application(s) and shall promptly supply copies of
all patent application documentation produced,
received or filed in connection with the prosecution
in sufficient time for LICENSEE to comment.
LICENSEE's comments shall be taken into
consideration. LICENSEE shall reimburse PSRF for all
out-of-pocket costs incurred in connection with such
preparation, filing, and prosecution of patent(s).
3.2.1.2. Within nine (9) months of the filing date of
a U. S. patent application, LICENSEE shall provide to
PSRF a written list of foreign countries in which
applications should be filed. If LICENSEE elects to
discontinue financial support of any patent
prosecution, in any country, PSRF shall be free to
continue prosecution at PSRF's expense. In such
event, PSRF shall have no further obligation to
LICENSEE in regard to such patent applications or
patents.
3.2.2. In the event that INTELLECTUAL PROPERTY elected by
LICENSEE is the subject of a U.S. patent or patent
application, including any reissues, extensions, divisionals,
continuations, continuations-in-part, and foreign
counterparts, PSRF shall continue the prosecution and
maintenance of said patents and/or patent applications.
LICENSEE shall reimburse PSRF for all out-of-pocket costs
incurred in connection with such prosecution and maintenance
from the date of election by LICENSEE.
3.3. In the event that LICENSEE does not exercise its option to
license INTELLECTUAL PROPERTY under the conditions contained in this Article,
PSRF shall have the right to negotiate in good faith with one or more third
parties a license to such INTELLECTUAL PROPERTY.
ARTICLE IV -PAYMENT
4.1 In partial consideration for the rights granted by this
License Agreement, LICENSEE shall issue to UNIVERSITY non-voting member units of
LICENSEE equivalent to a ten percent (10%) economic interest in LICENSEE upon
the EFFECTIVE DATE of this License Agreement, pursuant to the LLC Buy-Sell
Agreement and LLC Operating Agreement for LICENSEE, which are attached as
Appendix D and Appendix E respectively. Said economic interest shall be
protected against dilution through the acquisition of unrestricted capital
pursuant to paragraph 5.3.1 and until such point as LICENSEE must acquire more
capital.
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ARTICLE V -DUE DILIGENCE
5.1 LICENSEE shall use reasonable efforts to bring one or more
LICENSED PRODUCTS and/or LICENSED PROCESSES to market through a thorough and
diligent program for exploitation of the LICENSED PATENTS. The scope of said
efforts shall be set forth in the executive summary of a business plan referred
to in Paragraph 5.2.
5.2. LICENSEE shall deliver to PSRF within ninety (90) days from
the Effective of this License Agreement an executive summary of a business plan
setting forth the amount of money, number and qualifications of personnel, and
time, and planned for each phase of the development of the LICENSED PATENTS and
the LICENSED PRODUCTS, and a final business plan ninety (90) days thereafter,
said final business plan summary to be revised and updated as determined by
LICENSEE. Upon request from PSRF, LICENSEE shall provide a brief executive
summary of LICENSEE's efforts hereunder. LICENSEE agrees to consider, but is not
obligated to accept, any comments or suggestions provided by PSRF.
5.3. In addition to the obligations of Paragraphs 5.1 and 5.2,
LICENSEE shall best efforts to achieve to the following milestones:
5.3.1. In calendar year 2004, LICENSEE shall have annual GROSS
REVENUE of at least two hundred fifty thousand dollars
($250,000);
5.3.2. In calendar year 2005, LICENSEE shall have annual GROSS
REVENUE of at least three hundred fifty thousand dollars
($350,000); and
5.3.3. In calendar year 2006, LICENSEE shall have annual GROSS
REVENUE of at least five hundred thousand dollars ($500,000).
5.4. LICENSEE's failure to perform in accordance with Paragraph 5.3
above shall be grounds for PSRF to terminate pursuant to Article X II hereof.
5.5. In the event LICENSEE in its sole discretion decides to market
a LICENSED PRODUCTS in any country, then LICENSEE shall exert reasonable efforts
to have such LICENSED PRODUCTS cleared for marketing by the responsible
government agencies of that country requiring such clearance. Should LICENSEE
terminate this License Agreement, LICENSEE agrees to assign its full right,
title, and interest in and to such market clearance application, including all
data relating thereto, to PSRF at no cost to PSRF.
ARTICLE VI -PATENTS
6.1. PSRF shall apply for, seek prompt issuance of, and maintain
the LICENSED PATENTS during the term of this Agreement. The prosecution, filing
and maintenance of U.S. patent applications and patents which issue therefrom
shall be the primary responsibility of PSRF, or its designee, but wherever
LICENSEE shall be given the opportunity to review and comment upon the breadth
and coverage of said patent applications. LICENSEE shall be to reimburse PSRF
for all reasonable and ordinary fees and external costs relating to the filing,
prosecution, maintenance and defense of said LICENSED PATENTS pursuant to the
conditions set forth herein. PSRF shall promptly provide copies of invoices for
all such expenses and LICENSEE shall make payment
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thereof within thirty (30) days of its receipt, provided LICENSEE is kept
reasonably informed and given advance estimates where practical. PSRF shall make
all reasonable efforts to ensure that said patent application(s) adequately
addresses the commercial and business needs of LICENSEE, as communicated by
LICENSEE hereunder. After appropriate consultation with LICENSEE, PSRF shall
choose appropriately qualified patent counsel.
6.2. LICENSEE understands and agrees that the primary
responsibility for the costs of all foreign patent filings shall be LICENSEE's,
and that LICENSEE's failure to timely communicate its decision regarding foreign
filing and payment will result in a loss or rights to LICENSEE. LICENSEE shall
notify PSRF later than three (3) months before applicable bar dates, as to the
foreign countries in which it wishes PSRF to continue to seek patent protection.
Payment of all fees and costs relating to the filing, prosecution, maintenance
and defense of said foreign patent rights shall be the direct responsibility of
LICENSEE, LICENSEE is kept reasonably informed and given advance estimates
practical. If LICENSEE does not within thirty (30) days of receipt of estimated
costs related to the filing and prosecution of said foreign patent rights
provide advanced payment thereof, LICENSEE agrees therein that said non-payment
shall constitute a binding waiver of any right to obtain said foreign protection
and LICENSEE holds PSRF harmless from any claim based thereon.
LICENSEE and PSRF agree that any discrepancy between the payments made by
LICENSEE and the actual out-of-pocket expenses incurred by PSRF will be
addressed as follows:
i.) In the event that the advanced payment made by LICENSEE is
than the total actual out-of-pocket expenses incurred by PSRF,
PSRF will, within thirty (30) days of receipt of actual
expenses, provide LICENSEE with an accounting of said actual
expenses and will reimburse LICENSEE in the amount of the
discrepancy;
ii) In the event that the advanced payment made by LICENSEE is
less than the total actual out-of-pocket expenses incurred by
PSRF, PSRF will provide LICENSEE with an accounting of said
actual expenses and LICENSEE shall make payment in the amount
of the discrepancy within thirty (30) days of receipt of said
actual expenses.
6.3. In the event LICENSEE elects not to pursue patent protection
in any specific country or region of the world, PSRF may seek such protection
on its own behalf and cost in that specific country and/or region of the world.
At such time, agrees to notify LICENSEE in writing of those countries, which
PSRF seeks to protect. LICENSEE shall have thirty (30) days to respond in
writing whether it wishes to license said patent rights under the terms and
conditions contained herein. If LICENSEE declines, PSRF lines, shall be free and
clear to license said patent rights to third parties.
6.4. LICENSEE's failure to make payments in accordance with
Paragraph 6.1 and 6.2 shall constitute a material breach or default and shall be
grounds for termination of this License Agreement pursuant to Article XII
hereof.
ARTICLE VII -EXPORT CONTROLS
7.1. It is understood that PSRF is subject to United States laws
and regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities, and that its obligations hereunder
are contingent on compliance with applicable United States export and laws
regulations. The transfer of certain technical data and commodities may require
a license from
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the cognizant agency of the United States Government and written assurances by
LICENSEE that LICENSEE shall not export data or commodities to certain foreign
countries without prior approval of such agency. PSRF neither represents that a
license shall not be required nor that, if required, it shall be issued.
LICENSEE shall be responsible for payment of all reasonable cost attendant to
securing said licenses.
ARTICLE VIII -REPORTS AND RECORDS
8.1. LICENSEE shall keep and preserve complete and accurate books,
records and accounts relating to the manufacture, use and sale of LICENSED
PRODUCTS accordance with generally accepted accounting principles and
procedures. PSRF including, its designated accountants, attorneys, agents and
other representatives, shall have the right to examine, inspect and audit the
books, and records and accounts kept and preserved by LICENSEE, for a period of
five (5) years following the end of the calendar year to which they pertain, to
verify the business activity with respect to the due diligence requirements of
Paragraph 5.3 hereof. All such examinations, inspections and audits shall be
made by PSRF, or its designated accountants, attorneys, agents or other
representatives at reasonable times and places during business hours.
8.2. LICENSEE, within sixty (60) days after December 31, of each
year, shall deliver to PSRF true and accurate reports, giving such particulars
of the business conducted under LICENSEE during the preceding twelve (12) month
period under this License Agreement. These shall include a detailed accounting
of GROSS REVENUES received by LICENSEE for all LICENSED PRODUCTS and LICENSED
PROCESSES.
ARTICLE IX -WARRANTY
9.1. PSRF warrants and represents that it has the full right and
power to grant the License set forth in Article II hereof, and shall take no
action to negate such right and power, and further warrants and represents that
there are no outstanding agreements, assignments, or encumbrances inconsistent
with the provisions of this License Agreement. EXCEPT AS OTHERWISE EXPRESSLY SET
FORTH IN THIS AGREEMENT, PSRF 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 OR
NON-INFRINGEMENT OF PATENT RIGHT CLAIMS WHICH ARE ISSUED OR PENDING RELATIVE TO
LICENSE D PATENTS/INVENTION.
9.2. PSRF further represents that, as of the Effective Date of this
License Agreement, it has no knowledge that the LICENSED PRODUCTS and TECHNICAL
INFORMATION would infringe upon any issued patent.
ARTICLE X -INFRINGEMENT
10.1. LICENSEE and PSRF shall promptly provide written notice, to
the other party, of any alleged infringement by a third party of any patent
licensed hereunder under LICENSED PATENTS and provide such other party with any
available evidence of such infringement.
10.2. During the term of the License Agreement, PSRF shall have the
initial right, but not the obligation, to prosecute and/or defend, at its own
expense and utilizing counsel of its choice, any
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infringement of, and/or challenge to, the LICENSED PATENTS. In furtherance of
such right, LICENSEE hereby agrees that PSRF may join LICENSEE as a party in any
such suit, without expense to LICENSEE. The total cost of any such action,
commenced or defended solely by PSRF, shall be borne by PSRF. Any recovery or
damages derived therefrom shall be divided equally between PSRF and LICENSEE
after subtracting PSRF's expenses and legal fees relating to such action.
10.3. If within three (3)months after having been notified of any
alleged infringement, PSRF shall have been unsuccessful in persuading the
alleged infringer to desist and shall not have brought and shall not be
diligently prosecuting an infringement action, or if PSRF shall notify LICENSEE
at any time prior thereto of its intention not to bring suit against any alleged
infringer in the TERRITORY, and in those events only, LICENSEE shall have the
right, but not the obligation, at its own expense and utilizing counsel of its
choice, to prosecute any infringement of, and/or defend any challenge to, the
LICENSED PATENTS, and LICENSEE may, for such purposes, join PSRF as a party
plaintiff; provided, however, that such right to bring such an infringement
action shall remain in effect only for so long as the license granted herein
remains exclusive. No settlement, consent judgment or other voluntary, final
disposition of the suit may be entered into without the, consent of PSRF, which
consent shall be timely and not unreasonably withheld. LICENSEE agrees to keep
PSRF reasonably informed as to the status of any such action and to provide
copies to PSRF, upon request by PSRF, of any papers or information relevant to
the prosecution of any such action. LICENSEE shall timely inform PSRF of any
offer for settlement presented by a third party for any such action and LICENSEE
shall consider PSRF's input in deciding whether or not to accept any such
settlement offer. The total cost of any such action commenced or defended solely
by LICENSEE shall be borne by LICENSEE.
10.4. In the event that LICENSEE shall undertake the enforcement
and/or defense of the LICENSED PATENTS, as provided in Paragraph 10.2 and 10.3,
any recovery of damages by LICENSEE for each such suit shall be applied first in
satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to
such suit. The balance remaining from any such recovery shall be divided equally
between LICENSEE and PSRF.
10.5. In the event that a declaratory judgment action alleging
invalidity or noninfringement of any of the LICENSED PATENTS shall be brought
against LICENSEE, PSRF, 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.
10.6. In any infringement suit as either party may institute to
enforce the LICENSED PATENTS pursuant to this License 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.
10.7. LICENSEE, during the exclusive period of this License Agree
shall have the sole rights in accordance with the terms and conditions
sublicense herein to any alleged infringer in the TERRITORY for future use of
the LICENSED PATENTS. Any upfront fees as part of such sublicense shall be
shared equally between LICENSEE and PSRF.
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ARTICLE XI -INDEMNIFICATION
11.1. LICENSEE shall indemnify and hold harmless PSRF and
UNIVERSITY, its officers and employees from and against any liability or cost
which may arise be asserted, based directly or indirectly, upon death or injury
or damage of kind to any person or property, including product liability claims,
arising out the sale of the LICENSED PRODUCTS by LICENSEE, its sub-licensees or
other assigns, including reasonable attorneys' fees and other costs of defense,
except that this indemnification shall not apply to claims, losses and
liabilities arising out of what is determined by a court of competent
jurisdiction to be gross negligence or willful misconduct of PSRF or UNIVERSITY,
its officers or employees. As a condition of any obligation hereunder, PSRF and
UNIVERSITY shall give prompt written notice to LICENSEE of any claim of which it
is or shall become aware that may be subject to indemnification hereunder, and
LICENSEE shall assume the defense thereof, including the employment of counsel
reasonably satisfactory to PSRF and UNIVERSITY. PSRF and UNIVERSITY shall have
the right to employ separate counsel in any such action and to participate in
the defense thereof, but the fees and expenses thereof shall be at PSRF 's
and/or UNIVERSITY 's expense.
ARTICLE XII -TERM AND TERMINATION
12.1. The License Agreement shall commence on the Effective Date and
shall continue until the end of the life of the last of LICENSED PATENTS. In the
case of TECHNICAL INFORMATION, the term of this License Agreement shall be for
a period of fifteen (15) years from the Effective Date.
12.2. If LICENSEE shall cease to carry on its business, this License
Agreement terminate upon notice by PSRF.
12.3. Should LICENSEE fail to make any payment due and payable to
PSRF hereunder, PSRF shall have the right to terminate the License Agreement on
a three (3) month written notice, unless LICENSEE shall pay PSRF within said
three (3) month period all such payments together in with any interest due. Upon
the expiration of the three (3) month period, if LICENSEE shall not have paid
all such payments to PSRF, the rights, privileges and license granted hereunder
shall automatically terminate.
12.4. Upon any material breach or default of this License Agreement
by LICENSEE, PSRF shall have the right to terminate this License Agreement and
the rights, privileges and license granted hereunder by a three (3) months
written notice to LICENSEE. Such termination shall become immediately effective
upon the expiration of said three (3) month notice unless LICENSEE shall have
cured, to the satisfaction of PSRF, any such breach or default prior thereto, or
has demanded resolution under Article XV prior thereto.
12.5. LICENSEE shall have the right to terminate the License
Agreement at any time by three (3) month notice to PSRF, and upon payment of all
amounts due PSRF through the effective date of the termination.
12.6. Upon termination of the License Agreement for any reason,
nothing herein shall be construed to release LICENSEE from any obligation that
matured prior to the effective date of such termination; and the respective
articles I, __, VII, this clause, XIV, XVI, XVIII shall survive any such
termination. LICENSEE and any sublicensees 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.
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ARTICLE XIII -PAYMENT, NOTICES AND OTHER COMMUNICATIONS
13.1 Any payment, notice, or other communication required or
permitted to be made or given to either party hereto pursuant to this License
Agreement shall be sufficiently made or given on the date of mailing if sent to
such party by certified or registered first class mail, postage prepaid,
addressed to it at its address set forth below, or to such other address as it
shall designate by written notice to the other party as follows:
If to LICENSEE: President
Chiral Quest, LLC
000 Xxxx Xxxxxxxxx Xxxxxx
Xxxxx Xxxxxxx, XX 00000
If to PSRF: President
The Penn State Research Foundation
c/o Intellectual Property Xxxxxx
000 Xxxxxxxxxx Xxxxxx
Xxxxxxxxxx Xxxx, XX 00000
ARTICLE XIV -INSURANCE
14.1. Prior to first Commercial Sale, LICENSEE shall obtain and
maintain products liability insurance covering the risk of claims, liabilities,
expenses and judgments for which it has agreed in Article XI of this Agreement
to indemnify PSRF and UNIVERSITY. Coverage shall be in an amount which is not
less than $1,000,000 (One Million Dollars) per occurrence. Both parties agree
that adequate evidence of the required coverage has or will be provided by
LICENSEE to Penn State's Intellectual Property Office, 000 Xxxxxxxxxx Xxxxxx,
Xxxxxxxxxx Xxxx, XX 00000-0000, and LICENSEE agrees to keep said office informed
of any changes in coverage or carriers.
ARTICLE XV -DISPUTE RESOLUTION
15.1. Except for the right of either party to apply to a court of
competent jurisdiction for a temporary restraining order, a preliminary
injunction, or other equitable relief to preserve the status quo or prevent
irreparable harm, any and all claims, disputes or controversies arising under,
out of, or in connection with this License Agreement, including any dispute
relating to patent validity or infringement, which the parties shall be unable
to resolve within sixty (60) days, shall be mediated in good faith. The party
raising such dispute shall promptly advise the other party of such claim,
dispute or controversy in a writing which describes in reasonable detail the
nature of such dispute. By not later than five (5) business days after the
recipient has received such notice of dispute, each party shall have selected
for itself a representative who shall have the authority to bind such party, and
shall additionally have advised the other party in writing of the name and title
of such representative. By not later than ten (10) business days after the date
of such notice of dispute, the party against whom the dispute shall be raised
shall select a mediation firm in Pennsylvania and such representatives shall
schedule a date with such firm for a mediation hearing. The parties shall enter
into good faith mediation and shall share the costs equally. If the
representatives of the parties have not been able to resolve the dispute within
thirty (30) business days after such mediation hearing, the parties shall have
the right to pursue any other remedies legally available to resolve such dispute
in either the Court of Common Pleas of Centre County or in the United States
District Court for the
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Xxxxxx Xxxxxxxx xx Xxxxxxxxxxxx, to whose jurisdiction for such purposes PSRF
and LICENSEE each hereby irrevocably consents and submits.
15.2. Notwithstanding the foregoing, nothing in this Article shall
be construed to waive any rights or timely performance of any obligations
existing under this License Agreement.
ARTICLE XVI -NON-USE OF NAMES
16.l. LICENSEE shall not use the names of Penn State or PSRF nor of
any of their employees nor of any adaptation thereof, in any advertising,
promotional or sales literature without prior written consent obtained from Penn
State and/or PSRF in each case, except that LICENSEE may state that it is
licensed by PSRF under one or more of the patents and/or applications comprising
the LICENSED PATENTS and/or TECHNICAL INFORMATION and that said LICENSED PATENTS
and TECHNICAL INFORMATION were "Developed by Penn State".
16.2. PSRF shall not use the names of LICENSEE nor of any of their
employees nor of any adaptation thereof, in any advertising, promotional or
sales literature without prior written consent obtained from LICENSEE.
ARTICLE XVII -ASSIGNMENT
17.1. The rights and obligations of the Parties under this License
Agreement shall not be assignable by either Party without the prior written
consent of the other Party except that LICENSEE may assign upon written notice
to PSRF to any purchaser, transferee, or successor in interest to all of
LICENSEE's business assets to which this License Agreement relates.
ARTICLE XVIII -MISCELLANEOUS PROVISIONS
18.1. Entire Agreement. This License Agreement embodies the entire
understanding of the parties and shall supersede all previous communications,
representations, or undertakings, either verbal or written, between the parties
relating to the subject matter hereof.
18.2. Amendment. This License Agreement may be amended only by a
written agreement embodying the full terms of the amendment signed by authorized
representatives of both parties.
18.3. Severability. Should any provision of this License Agreement
be held to be illegal, invalid or unenforceable, by any court of competent
jurisdiction, such provision shall be modified by such court in compliance with
the law and, as modified, enforced. The remaining provisions of this License
Agreement shall be construed in accordance with the modified provision and as if
such illegal, invalid or unenforceable provision had not been contained herein.
18.4. No Strict Construction. The language used in this License
Agreement shall be deemed to be the language chosen by both parties hereto to
express their mutual intent and no rule of strict construction against either
party shall apply to any term or condition of this License Agreement.
18.5. Relationship of Parties. Nothing contained in this License
Agreement shall be construed as creating a partnership, joint venture, agency or
an association of any kind with the
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exception that PSRF will receive non-voting member units of LICENSEE, equal to
ten percent (10%) of the total equity at the time of organization in accordance
with Article IV.
18.6. No Waiver. The failure of one party hereto to enforce at any
time any of the provisions of this License Agreement, or any rights in respect
thereto, or to exercise any election herein provided, shall in no way be
considered to be a waiver of such provision, rights or elections or in any way
to affect the validity of this License Agreement. Any waiver must be in writing.
18.7. Interpretation. The headings of several sections contained
herein 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 License
Agreement.
18.8. Governing Law. This License Agreement shall be governed by and
construed in accordance with the laws of the Commonwealth of Pennsylvania
without giving effect to any choice of law or conflict of law provision or rule
that would cause the application of the laws of any jurisdiction other than the
Commonwealth of Pennsylvania.
18.9. Counterparts. This License Agreement may be executed in one or
more counterparts, each of which shall be deemed an original, but all of which
together will constitute one and the same instrument.
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IN WITNESS WHEREOF, the parties have each caused their duly authorized
representative to execute this License Agreement as of the Effective Date.
LICENSEE
By: /s/ Xxxxxxx X. Xxxxxx
------------------------
Name: Xxxxxxx X. Xxxxxx
Title: President
Date: October 4, 2000
THE PENN STATE RESEARCH FOUNDATION
By: /s/ Xxxxx X. Xxxxxxxx
------------------------
Name: Xxxxx X. Xxxxxxxx
Title: Treasurer
Date: October 27, 2000
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