LICENSE AGREEMENT
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This License Agreement ("Agreement") is entered into as of January 26,
2001 ("Effective Date"), by and among Xxxxx State University, a Michigan
nonprofit corporation ("WSU"), Xxxxxxx Xxx Karmanos Cancer Institute, a Michigan
nonprofit corporation ("KCI") (collectively, the "Licensors"), and SafeScience,
Inc., a Nevada corporation ("Licensee"). For purposes of this Agreement, each of
Licensee, on the one hand, and Licensors, on the other hand, shall be a "party."
RECITALS
WHEREAS, Licensors hold certain patents and technology for which
Licensors are willing to grant Licensee a license to develop and use such
intellectual property for the benefit of Licensors and the public, in accordance
with the provisions of 35 U.S.C. xx.xx. 201-211 and the regulations promulgated
thereunder ("Federal Patent Policy");
WHEREAS, Licensee is willing to acquire the right to use such
intellectual property on the terms and conditions set forth below and subject to
the provisions of the Federal Patent Policy;
WHEREAS, Licensee and Licensors have executed a non-binding letter of
intent dated November 15, 2000 (the "LOI Date") containing the terms of a
license to use certain intellectual property rights (the "Letter of Intent");
and
WHEREAS, Licensee and Licensors desire to formally set forth the terms
of the Letter of Intent and the rights and interests of Licensee in respect of
the license for such intellectual property.
NOW, THEREFORE, in consideration of the premises and mutual promises
and agreements hereinafter set forth, Licensee, WSU and KCI agree as follows:
1. DEFINITIONS
1.1. "Affiliate". "Affiliate" means (i) any Person directly or
indirectly controlling, controlled by or under direct or indirect common control
with Licensee, or (ii) any Person who is a direct or indirect beneficial holder
of at least 30% of any class of the outstanding capital stock of Licensee or a
Person described in clause (i).
1.2. "GBC-590 Material". "GBC-590 Material" means products which
utilize modified citrus pectin in connection with the Galectin 3 receptor,
including, without limitation, those described in the Licensed Patents.
1.3. "Improvements". "Improvements" means materials, and methods for
their use or manufacture, which would, if unlicensed, infringe one or more
claims of the Licensed Patents.
1.4. Intentionally Deleted.
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1.5. "Licensed Patents". "Licensed Patents" means (i) U.S. Patent No.
5,895,784, entitled "Method for Treatment of Cancer by Oral Administration of
Modified Pectin;" (ii) United States ("U.S") Patent No. 5,834,442, entitled
"Method for Inhibiting Cancer Metastasis by Oral Administration of Soluble
Modified Citrus Pectin;" (iii) any U.S. patent application filed as a
continuation, continuation-in-part or division of the patents or patent
applications described in Sections 1.5 (i-ii); (iv) any foreign applications or
patents which are counterparts to the U.S. patents described in Sections 1.5
(i-ii) (including divisions, continuations or continuations-in-part of such
patent applications); (v) any other patent applications or patents that cover
Improvements (defined above); and (vi) any patents which issue from applications
described in Sections 1.5 (i-v). Licensed Patents are set forth in attached
Exhibit A, which shall be amended from time to time to include new Licensed
Patents in accordance with this Agreement.
1.6. "Licensed Product(s)". "Licensed Product(s)" means any product(s)
or process(es) (i) that embody or utilize any aspect of the Licensed Patents or
the Licensed Technology, or (ii) the manufacture, use, license or sale of which
product or process would (a) absent the licenses granted herein, infringe any
proprietary right of Licensors in respect of the Licensed Patents or the
Licensed Technology, or (b) involve utilization of GBC-590 Material.
1.7. "Licensed Technology". "Licensed Technology" means all technical
information, including, without limitation, any specifications, methods,
processes, documentation and other data, information and know-how (i) owned by
Licensors, (ii) in existence as of the Effective Date, and (iii) necessary and
desirable to practice the inventions embodied in the Licensed Patents.
1.8. "Net Revenue". "Net Revenue" means gross revenue received by
Licensee, any Affiliate, or any sublicensee of Licensee from the sale of
Licensed Products less (i) amounts repaid or credited by reason of defects,
returns, rejections or allowances, (ii) sales taxes, excise taxes, value added
taxes and customs duties, paid, absorbed or allowed, (iii) commissions paid or
actually allowed to independent brokers or agents, (iv) shipping charges, and
(v) trade and quantity discounts actually allowed (and taken) as customary in
the trade. Net Revenue shall not include revenue received by Licensee (or any
Affiliate) from transactions with an Affiliate, where the Licensed Product in
question will be resold by the Affiliate paying the revenue; provided, the
revenue received by the Affiliate paying the revenue from resale of the Licensed
Product is included in Net Revenue in accordance with Section 3.2. Revenue
received by Licensee (or any Affiliate) from transactions with an Affiliate,
where the Licensed Product in question is used by the Affiliate paying the
revenue solely for such Affiliate's internal purposes, shall be included in Net
Revenue and the price charged such Affiliate shall be at least the fair market
value of such Licensed Product. Net Revenue shall also not include any
sublicense fees received by Licensee from its sublicensees hereunder; provided
that, the revenue received by Licensee's sublicensees from the sale of Licensed
Products is included in Net Revenue in accordance with Section 3.2.
1.9. "Person". "Person" means any individual, partnership, corporation,
joint venture, association, trust, unincorporated organization or entity.
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1.10. "Territory". "Territory" means the United States or any other
country.
2. TITLE; LICENSE GRANT; RESERVATION OF RIGHTS
2.1. Grant of License.
(a) Subject to the terms and conditions of this Agreement,
Licensors hereby grant to Licensee, and Licensee hereby accepts, an exclusive,
worldwide, royalty-bearing license under the Licensed Patents and Licensed
Technology, including the right to grant sublicenses and the right to make, have
made, use, lease and sell Licensed Products.
(b) Licensors shall be free to undertake additional research
relating to the Licensed Products which is internally funded by Licensors or
funded by government agencies. Licensors will not engage in any research project
relating to Licensed Products funded by a for-profit entity other than an
Affiliate without first offering Licensee the opportunity to fund such project.
Licensee shall also have the right to incorporate into this Agreement any
Improvements of the Licensed Products which result from a project which is
funded by Licensee, internally funded by Licensors or funded by government
agencies.
2.2. Sublicense Agreements. Licensee may grant sublicenses of its right
to make, use and sell Licensed Products; provided, that Licensee shall (a)
obtain Licensors' written consent to each sublicensee and each sublicense
agreement, such consent not to be unreasonably withheld; (b) obtain each
sublicensee's written agreement to be bound by the provisions of this Section
2.2, and Sections 2.3, 2.4(a), 2.4(d), 3.3, 3.4, 3.5, 3.6, 3.7, 7, 8 and 9.2 of
this Agreement; and (c) not be relieved of any of its obligations hereunder as a
consequence of such sublicense(s). Any sublicenses granted by Licensee under
this Agreement shall provide for termination or assignment to Licensors upon
termination of this Agreement. The royalties and fees payable to Licensors in
respect to sublicenses are set forth in Sections 3.2 and 3.3.
2.3. Proprietary Rights Notices. Licensee shall xxxx all Licensed
Products and their containers in accordance with the patent marking laws of the
jurisdiction in which such Licensed Products are manufactured, used or sold. At
a minimum, all Licensed Products shall bear a notice indicating that the product
is the subject of a patent or pending application and identifying same.
2.4. Title; Federal Rights.
(a) This Agreement does not convey to Licensee any ownership
rights in any Licensed Patents or Licensed Technology by implication, estoppel
or otherwise, except for the license rights expressly granted in this Section 2.
Title to the Licensed Patents and Licensed Technology shall at all times remain
vested in Licensors, and Licensors retain the right to use the Licensed Patents
and Licensed Technology for their internal purposes in accordance with Section
2.5. To the extent that any Licensed Patent or Licensed Technology has been
wholly or partially funded by the federal government, Licensee's rights are also
subject to the Federal Patent Policy.
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(b) Licensors hereby covenant that if any of the Licensed
Patents or Licensed Technology is subject to the Federal Patent Policy,
Licensors will (i) disclose such Licensed Patent(s) and Licensed Technology to
the government agency as required by the Federal Patent Policy, (ii) file all
required elections to maintain title to the Licensed Patent(s) and Licensed
Technology, and (iii) otherwise use their reasonable efforts to obtain the
entire right, title and interest in such Licensed Patent(s) and Licensed
Technology and seek maximum exclusive licensing rights and extensions thereof.
(c) Licensors represent to Licensee that, to the best of their
knowledge, they have disclosed to Licensee any funding agency or foundation
(including the federal government) that has provided support of any kind in the
development of the Licensed Patents or Licensed Technology, which such sources
are listed in Exhibit B.
(d) Licensee shall comply, and shall ensure that its
sublicensees comply, in all material respects with all government statutes and
regulations that relate to Licensed Products, including, without limitation, the
Federal Patent Policy; the Food, Drug and Cosmetic Act of 1941, as amended, and
the regulations promulgated thereunder; and the Export Administration Act of
1979, as amended, and the regulations promulgated thereunder.
2.5. Internal Use by Licensors. Licensors shall retain a fully paid-up
and royalty-free right to make, have made and use processes and products that
embody the Licensed Patents and Licensed Technology for its internal research,
teaching and educational purposes.
2.6. Diligence. Licensee has represented to Licensors, to induce
Licensors to issue this license, that it will diligently pursue
commercialization of the Licensed Patents and Licensed Technology, including,
without limitation, its obligations pursuant to Sections 3.1(c) and (d).
Determination of diligence shall be made with reference to objective criteria,
including, without limitation, Licensee's obligation to introduce Licensed
Products to the market within six (6) months following receipt of necessary
marketing approvals from the Food and Drug Administration ("FDA") and other
appropriate regulatory agencies.
3. FEES; ROYALTIES; RECORD KEEPING; REPORTING
3.1. License Fees; Milestone Payments.
(a) On the Effective Date, Licensee shall pay Licensors a
license fee of three hundred thousand dollars ($300,000).
(b) On the Effective Date, Licensee also shall pay Licensors a
check in the amount of two thousand three hundred and one and 65/100 dollars
($2,301.65) to cover patent costs and expenses in respect of the Licensed
Patents that have accrued since the LOI Date.
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(c) Licensee shall pay Licensors an additional license fee of
one million, six hundred thirty five thousand dollars ($1,635,000). Such
additional fee shall be paid in quarterly installments within forty-five (45)
days of the end of each calendar quarter, with each quarterly installment
payment constituting five percent (5%) of cash raised by Licensee from any
source during the immediately preceding calendar quarter until such time as the
$1,635,000 million is paid in full; provided, that in the event Licensee has not
raised sufficient funds to generate one million, six hundred thirty five
thousand ($1,635,000) in payments by December 31, 2001, Licensee shall pay
Licensors the balance of such additional fee on or before February 14, 2002.
(d) Within thirty (30) days following the date on which
Licensee commences Phase III clinical drug investigations relating to any
Licensed Product, Licensee will pay Licensors five hundred thousand dollars
($500,000).
(e) Within thirty (30) days following the date on which
Licensee makes a new drug application ("NDA") submission to the FDA relating to
any Licensed Product, Licensee will pay Licensors one million dollars
($1,000,000).
(f) Within thirty (30) days following the date on which the
FDA approves an NDA of Licensee covering any Licensed Product, Licensee will pay
Licensors one million, five hundred thousand dollars ($1,500,000).
(g) All milestone payments due Licensors under Sections 3.1
(d-f) shall be (i) cumulative, (ii) triggered by either the specified FDA
regulatory milestone or else a comparable foreign regulatory milestone, and
(iii) payable only in respect of the first occurrence of the respective
milestones, regardless of whether multiple products result from Licensee's
programs. In the event that Licensee commences commercial sales of any Licensed
Product prior to FDA or similar regulatory approval in any Territory, it shall
make a supplemental milestone payment to Licensors, in an amount equal to one
million, five hundred thousand dollars ($1,500,000) less the amount of any
milestone payments previously made pursuant to Sections 3.1 (d-f). Such
supplemental milestone payment shall be made within thirty (30) days of the time
Licensee commences such commercial sales.
(h) Total payments under Sections 3.1 (d-g) shall not exceed
three million dollars ($3,000,000).
(i) Each of the payments made under this Section 3.1 shall (i)
not be refundable or credited against royalties or other payments due Licensors
under this Agreement, (ii) be allocated to support research and other needs of
Licensors in accordance with the policies currently in place at WSU and KCI, and
(iii) be made by delivery to Licensors of a certified check or wire transfer
except for the payments under 3.1 (a and b).
(j) The payments due Licensors pursuant to this Section 3.1
shall not be reduced as a result of (i) any inventorship investigation involving
the Licensed Patents, regardless of the outcome of such investigation; and (ii)
any amendment of the Licensed Patents necessary to avoid, overcome, or terminate
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any interference proceeding which is, or may be, declared between the Licensed
Patents and U.S. Patent Application Serial No. 08/024,487 or any divisions,
continuations or continuations-in-part of same.
3.2 Royalties; Equity.
(a) Commencing January 26, 2001, and no later than forty-five
(45) days following the end of each calendar quarter (i.e., March 31, June 30,
September 30 and December 31), Licensee shall pay to Licensors royalties in
respect of the most recent three-month period then ended equal to (i) two
percent (2%) of Net Revenue in respect of Licensed Products covered by, or the
method of use, manufacture or production of which Licensed Products are covered
by, any issued claim of any Licensed Patents; or U.S. Patent Application Serial
No. 08/024,487, or any divisions, continuations or continuations-in-part
thereof, or any patent issuing therefrom; and (ii) one and one-half percent
(1.5%) of Net Revenue in respect of Licensed Products that are not covered by an
issued claim of any Licensed Patents or U.S. Patent Application Serial No.
08/024,487, or any divisions, continuations or continuations-in-part thereof or
any patent issuing therefrom, but which involve utilization of GBC-590 Material.
Payments under clause (i) shall be due until the expiration of the term of the
last to expire of the Licensed Patents, and payments under clause (ii) shall be
due in each Territory for not more than twelve (12) years following the date of
the first commercial sale of Licensed Products in that Territory.
(b) Except as described in Section 3.2(a)(ii), the royalties
payable under Section 3.2(a) shall not be reduced as a result of (i) any
inventorship investigation involving the Licensed Patents, regardless of the
outcome of such investigation; (ii) any amendment of the Licensed Patents
necessary to avoid, overcome, or terminate any interference proceeding which is,
or may be, declared between the Licensed Patents and U.S. Patent Application
Serial No. 08/024,487 or any divisions, continuations or continuations-in-part
of same; or (iii) any stacking provision (i.e., a provision allowing Licensee to
reduce the royalties due Licensors because of royalties Licensee may be paying a
third party for sales of the Licensed Products) in any agreement between
Licensee and a third party.
(c) Licensee has granted to Licensors the option to jointly
acquire one million, three hundred and seventy five thousand (1,375,000) shares
of common stock in Licensee, which option shall vest ratably, on a quarterly
basis, over a period of two (2) years, in equal portions commencing March 31,
2001. Licensee shall file a registration statement on Licensors' behalf covering
687,500 of the shares issuable upon exercise of such option by March 1, 2001 and
shall use its reasonable efforts to cause such registration statement to be
declared effective by April 30, 2001. License shall file a registration
statement on Licensors' behalf covering the other 687,500 of shares issuable
upon exercise of such option by March 1, 2002 and shall use its reasonable
efforts to cause such registration statement to be declared effective by April
30, 2002. The exercise price of such option shall be $1.15 which is the average
of the closing trade price over the twenty (20) trading days immediately
preceding the Effective Date. Such option shall have a ten (10) year life from
the Effective Date. Such option shall cease vesting upon the date of termination
of this Agreement if the Agreement is terminated by the Licensors or by Licensee
pursuant to Section 6.2(e), provided that such portion of such option already
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vested shall be otherwise exercisable in accordance with the terms of such
option. Licensor agrees that its sales of shares of stock of the Licensee
issuable upon the exercise of the option granted pursuant to Section 3.2(c) (the
"Option Shares") shall be limited in any one trading day to no more than 10% of
the average daily volume of the preceeding 20 trading days, based on the daily
volume as reported in the Wall Street Journal.
(d) Licensors shall have the right to jointly designate one
representative to observe, but not participate, in meetings of the Board of
Directors of Licensee.
3.3. Sublicense Fees. Licensee shall pay Licensors an amount equal to
fifteen percent (15%) of any fees or other consideration Licensee is entitled to
receive from each sublicensee which is not an Affiliate in respect of Licensed
Products (excluding royalties and documented fees paid to Licensee for research
performed by Licensee after the Effective Date that is directly related to the
development of Licensed Products). Such payments shall be due and payable no
later than forty-five (45) days following the end of each calendar quarter in
which such fees are received by Licensee, in accordance with the provisions of
Section 3.4.
3.4. Remittance; Foreign Exchange.
(a) Licensee shall make payments required under Sections 3.2
and 3.3 by certified check or wire transfer of immediately available funds
delivered to Licensors at the address set forth below. All payments shall be
stated and paid in U.S. Dollars. Net Revenue received in currencies other than
U.S. dollars shall be converted into U.S. dollars at the New York Foreign
Exchange Selling Rate as of the last business day of the quarter in which such
Net Revenue is received (as published in The Wall Street Journal).
(b) In the event that any payment due Licensors under this
Agreement is not made when due, the payment shall accrue interest beginning on
the first day following the final date on which such payment was due calculated
at the annual rate equal to two percent (2%) plus the prime interest rate
published in The Wall Street Journal on the date said payment is due, the
interest being compounded on the last day of each calendar quarter; provided,
that in no event shall said annual rate exceed the maximum legal interest rate
under Michigan law. Any such delinquent payment, when made, shall be accompanied
by all interest so accrued. Said interest and the payment and acceptance thereof
shall not negate or waive the right of Licensors to any other remedy, legal or
equitable, to which they may be entitled because of the delinquency of the
payment.
3.5. Records. During the term of this Agreement and for a period of at
least five (5) years following any termination or expiration, Licensee shall
maintain records (prepared in accordance with Generally Accepted Accounting
Principles) sufficient to determine Net Revenue and payments due under Section
3.2 and Section 3.3. Within forty-five (45) days following the end of each
calendar quarter in which payments are due under Section 3.2 or Section 3.3,
Licensee shall provide Licensors with a report showing Net Revenue for the
quarter, certified as accurate by the Chief Financial Officer of Licensee. Such
reports shall be submitted to Licensors whether or not any Net Revenue has been
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received during such period. Such report shall include, at a minimum: (a) the
quantities of Licensed Products that Licensee and its sublicensees (including
Affiliates) have sold in each country in which Licensed Products are sold; (b)
the xxxxxxxx thereon that comprise Net Revenue; (c) the calculation of royalties
thereon; and (d) the total royalties so computed and due Licensors. Upon the
delivery of each such report, Licensee shall pay to Licensors the amount of
royalties and other fees required under this Agreement, if any, due for the
period of such report. Upon delivery of the report due for the period ending
December 31 of each year, Licensee shall also report to Licensors the aggregate
royalties due Licensors for the preceding year.
3.6. Audits. Licensors shall have the right, not more than twice per
year, to have Licensee's books and records audited by a nationally-recognized,
independent accountant of Licensors' choosing, to ascertain the accuracy of
Licensee's reports. Such audits shall be (a) scheduled within thirty (30) days
following delivery of notice by Licensors to Licensee but not less than fifteen
(15) days after such notice, (b) during Licensee's normal business hours, and
(c) conducted in a manner that does not interfere unreasonably with Licensee's
business. In the event that any audit determines that the reported Net Revenue
was less than ninety-five percent (95%) of actual Net Revenue for the period in
question, the cost of such audit shall be borne by Licensee, provided, the
royalties payable to Licensors on the difference between the actual Net Revenues
and the reported Net Revenues is greater than the cost of such audit, provided,
however, that in the event of two audits within any two year period which
determine that the reported Net Revenue was less than ninety-five percent (95%)
of actual Net Revenue for the period in question, the cost of the second audit
shall be borne by Licensee. In all other events, the cost of such audit shall be
borne by Licensors.
3.7. Taxes. All taxes and charges which may be imposed by any foreign
government taxing authority on the amounts paid by Licensee to Licensors under
this Agreement shall be assumed equally by Licensee and Licensors. In the event
Licensee is required to withhold such taxes or charges from the amounts paid to
Licensors hereunder and to pay the taxes or charges for the account of
Licensors, Licensee shall deliver to Licensors true copies of the receipts or
returns covering each such payment. In the event a waiver is available for the
payment of any such tax imposed by a foreign government as a result of
Licensors' being non-profit organizations, Licensors and Licensee agree to
cooperate in any efforts initiated by Licensee to obtain such a waiver. Licensee
and Licensors shall share equally the costs and expenses incurred in such waiver
process.
4. REPRESENTATIONS AND WARRANTIES
4.1. Licensors Matters. Licensors hereby represent and warrant to
Licensee that: (a) WSU and KCI are corporations duly organized and validly
existing under the laws of The State of Michigan, and have all requisite power
and authority to execute, deliver and perform this Agreement and to consummate
the transactions contemplated hereby; (b) this Agreement has been duly
authorized, executed and delivered by each of WSU and KCI; and (c) this
Agreement constitutes the legal, valid and binding obligation of WSU and KCI and
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is enforceable against WSU and KCI in accordance with its terms, except to the
extent such enforceability may be limited by bankruptcy, reorganization,
insolvency or similar laws of general applicability governing the enforcement of
the rights of creditors or by the general principles of equity (regardless of
whether considered in a proceeding at law or in equity).
4.2. Licensors' Licensed Patents; Licensed Technology. For purposes of
this Section 4.2, "Licensed Patents" shall include only those described in
Sections 1.5 (i-ii) and, to the extent that the patents or applications are
related to those Licensed Patents described in Sections 1.5 (i-ii), Sections 1.5
(iv-vi). "Licensed Technology" means only such technical information related to
such Licensed Patents.
(a) LICENSORS REPRESENT AND WARRANT TO LICENSEE THAT TO THE
BEST OF LICENSORS' KNOWLEDGE AND WITHOUT INDEPENDENT INVESTIGATION, (i)
LICENSORS ARE THE OWNERS OF THE PATENT RIGHTS IN THE LICENSED PATENTS, FREE AND
CLEAR OF ALL MORTGAGES, LIENS, PLEDGES, CHARGES OR OTHER ENCUMBRANCES EXCEPT AS
SET FORTH IN EXHIBIT C, AND HAVE THE LICENSING RIGHTS THEREIN, AND (ii) ANY
PATENTS ISSUED IN RESPECT OF SUCH LICENSED PATENTS AND LICENSED TECHNOLOGY WILL,
WHEN ISSUED, BE FREE OF ANY RESTRICTIONS EXCEPT FOR ANY NONEXCLUSIVE RIGHTS HELD
BY THE U.S. GOVERNMENT UNDER THE FEDERAL PATENT POLICY AS A RESULT OF PREVIOUS
OR PRESENT SPONSORSHIP.
(b) LICENSORS MAKE NO EXPRESS OR IMPLIED WARRANTY, INCLUDING,
WITHOUT LIMITATION, ANY IMPLIED WARRANTY OF MERCHANTABILITY OR ANY IMPLIED
WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE WITH RESPECT TO SUCH LICENSED
PATENTS OR LICENSED TECHNOLOGY AND HEREBY DISCLAIM THE SAME.
(c) LICENSORS MAKE NO EXPRESS OR IMPLIED WARRANTY THAT THE USE
OR SALE OF PRODUCTS EMBODYING SUCH LICENSED PATENTS OR LICENSED TECHNOLOGY WILL
NOT INFRINGE PATENTS OR OTHER INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES AND
HEREBY DISCLAIM THE SAME.
4.3. Licensee Matters. Licensee hereby represents and warrants to
Licensors that: (a) Licensee is a corporation duly organized and validly
existing under the laws of the State of Nevada, and has all requisite power and
authority to execute, deliver and perform this Agreement and to consummate the
transactions contemplated hereby; (b) this Agreement has been duly authorized,
executed and delivered by Licensee, and (c) this Agreement constitutes the
legal, valid and binding obligation of Licensee and is enforceable against
Licensee in accordance with its terms, except to the extent such enforceability
may be limited by bankruptcy, reorganization, insolvency or similar laws of
general applicability governing the enforcement of the rights of creditors or by
the general principles of equity (regardless of whether considered in a
proceeding at law or in equity).
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5. PATENTS AND INFRINGEMENT
5.1. Patent Prosecution; Maintenance.
(a) Licensors shall be responsible for preparing, filing and
prosecuting U.S. and foreign patent applications and maintaining U.S. and
foreign patents included in the Licensed Patents; provided, however, that all
decisions relating to the prosecution of the Licensed Patents shall be made by
Licensee after consultation with, and where appropriate to protect Licensors'
rights and interests, the consent of, Licensors.
(b) Licensors shall extend all cooperation reasonably
necessary for Licensee to perfect its rights in the Licensed Patents and shall
cooperate fully with Licensee, at Licensee's expense, in any interference
proceeding or investigation and correction of inventorship of the Licensed
Patents which Licensee finds to be reasonably necessary. Licensee shall provide
reasonable compensation to Licensors' researchers and personnel for time spent
assisting in interference proceedings or inventorship investigations. Licensee
shall have the right to direct Licensors to amend the Licensed Patents, or take
any further action, as it deems reasonably necessary to avoid, overcome, or
terminate any interference proceeding which is, or may be, declared between the
Licensed Patents and U.S. Patent Application Serial No. 08/024,487 or any
divisions, continuations or continuations-in-part of same, and Licensors shall
extend Licensee all cooperation which is reasonably necessary for Licensee to do
so.
(c) Licensee shall reimburse Licensors for all reasonable
expenses associated with preparing, filing, prosecuting and maintaining the
Licensed Patents and for any expenses associated with any interference
proceeding. In addition, Licensee shall reimburse Licensors for any maintenance
fees, costs of prosecution, or other costs which may have been expended in
connection with the Licensed Patents at the direction of Licensee, or as
reasonably necessary to maintain the Licensed Patents, during the period between
the LOI Date and the Effective Date. Licensors will provide Licensee with
invoices for such expenses and Licensee shall pay such invoices within thirty
(30) days following receipt of the same.
(d) In the event Licensee does not intend to reimburse
Licensors in accord with Section 5.1(c) hereinabove, for any future expense
Licensors may incur in connection with the filing, prosecution or maintenance of
any patent or patents licensed hereunder in a specific territory other than the
United States, Licensee shall so inform Licensors, in accord with Section 9.3
hereof, at least 60 days prior to the time Licensors are required to incur such
expense; and in such instance, as of the date said notice is deemed given, said
patent or patents shall cease to be Licensed Patents with respect to such
territory, and this Agreement shall terminate, in accord with Section 6.3, but
only with regard to the patent or patents which are the subject of said notice.
Licensee shall not be relieved of its payment obligations pursuant to Section
3.1(a-c) as a result of its decision not to reimburse Licensors for patent
expenses in accordance with this section.
5.2. Infringement. Each party shall promptly inform the other party in
writing of any infringement of the Licensed Patents by a third party of which
such party has knowledge and shall provide the other party with any available
information relating to such infringement.
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5.3. Enforcement.
(a) Licensee shall, with Licensors' consent (which shall not
be unreasonably withheld), have the first option to pursue any enforcement or
defense of the Licensed Patents; provided, that Licensee shall (i) pay all costs
and expenses related to the same which are incurred by Licensee along with all
reasonable costs Licensors are directed to incur by Licensee; (ii) keep
Licensors informed of the progress of such enforcement or defense; and (iii)
provide Licensors with reasonable notice of all proceedings relating to the
same. At Licensors' request, Licensee shall name Licensors as co-parties in any
such action and shall provide Licensors with a written report of the status of
such proceedings at least every month or more often if circumstances warrant.
Licensee's costs in prosecuting such matters shall be subject to reimbursement
in accordance with Section 5.3(c). Licensee shall notify Licensors of its
decision to exercise its right to enforce the Licensed Patents within thirty
(30) days following its discovery or receipt of notice of the alleged
infringement.
(b) If Licensee (i) does not immediately opt to enforce or
defend any Licensed Patent, or (ii) within ninety (90) days of commencing to
prosecute any enforcement or defense action: (A) has not persuaded the alleged
infringer to desist, (B) is not diligently pursuing an infringement action or
diligently defending the validity or enforceability of the Licensed Patent at
issue as reasonably determined by Licensors, or (C) has not provided Licensors
with evidence of bona fide negotiations of an acceptable sublicense agreement
with the alleged infringer, then Licensors shall have the right to pursue the
alleged infringer or take control of any action initiated by Licensee at
Licensors' expense, and to collect for their own use all damages, profits,
settlements and awards of whatever nature recoverable from such infringement,
and Licensee shall not be entitled to any recovery pursuant to Section 5.3(c).
Licensors may use the name of Licensee as party plaintiff for purposes of
pursuing any alleged infringer.
(c) In the event that Licensee undertakes the enforcement or
defense of the Licensed Patents by litigation or settlement action, Licensee may
withhold from the date of Licensee's filing of a litigation pleading, notice of
appearance or other litigation initiating document, up to fifty percent (50%) of
the royalties otherwise thereafter due Licensors under Section 3.2 and apply the
same toward reimbursement of its expenses, including reasonable attorney's fees
in connection therewith. Any recovery of damages by Licensee in any such suit
shall be applied first in satisfaction of any unreimbursed expenses and legal
fees of Licensee relating to the suit or settlement thereof, and next toward
reimbursement of Licensors for any royalties withheld and applied pursuant to
the first sentence of this Section 5.3(c). Any remaining recoveries shall be
distributed in the following order: (i) to Licensee as reimbursement for lost
sales, (ii) to Licensors for lost royalties on account of such lost sales, and
(iii) divided among Licensors and Licensee with fifty percent (50%) payable to
Licensee and fifty percent (50%) payable to Licensors. No settlement, or consent
judgment or other voluntary final disposition of the suit may be entered into by
Licensee without the consent of Licensors, which consent shall not be
unreasonably withheld.
11
(d) Notwithstanding the provisions of Section 5.3(a), in the
event that a declaratory judgment action alleging invalidity or non-infringement
of any of the Licensed Patents is filed against Licensee or Licensors,
Licensors, at their option, shall have the right, within thirty (30) days after
notification of same, to intervene and assume sole defense of the action at
Licensors' expense. In the event that Licensors exercise their rights under this
Section 5.3(d), Licensors may collect for their own use all damages, profits,
settlements and awards of whatever nature recoverable from such action, and
Licensee shall not be entitled to any recovery pursuant to Section 5.3(c).
(e) In any infringement suit Licensee or Licensors may
institute to enforce the Licensed Patents, or in any declaratory judgment action
alleging invalidity or non-infringement of any Licensed Patent brought against
Licensors or Licensee, the other party shall, at the request and expense of the
party initiating or defending the suit or action, cooperate in all reasonable
respects, have its or their employees testify when requested, and make available
relevant records, papers, information, specimens and the like.
6. TERM; TERMINATION
6.1. Term. Unless sooner terminated in accordance with this Section 6,
this Agreement shall remain in effect until the later of (a) the expiration of
the term of the last to expire of the Licensed Patents, or (b) on a
Territory-by-Territory basis, twelve (12) years following the first commercial
sale of Licensed Products.
6.2. Termination.
(a) Upon any material breach by Licensee, Licensors shall have
the right to terminate this Agreement, and the rights and license granted
hereunder, with thirty (30) days notice to Licensee, unless Licensee cures such
breach prior to the expiration of said thirty (30) day period. Licensee's
"material obligations" under this Agreement shall include, without limitation,
its obligations under Sections 2.2, 2.4(d), 2.6, 3.1, 3.2, 3.3, 3.5, 4.3, 5.1,
7, and 8.
(b) Licensors may, at their sole discretion, terminate this
Agreement in the event that Licensee has not received FDA or equivalent agency
approval for the sale of a Licensed Product by January 1, 2006.
(c) To the extent permitted by law, if during the term of this
Agreement Licensee shall make an assignment for the benefit of creditors, or if
proceedings in voluntary or involuntary bankruptcy shall be instituted on behalf
of or against Licensee, or if a receiver or trustee shall be appointed for the
property of Licensee, Licensors may, at their option, terminate this Agreement
and revoke the license (and any sublicensees granted pursuant thereto) by
providing thirty (30) days written notice to Licensee.
(d) Licensee shall have the right to terminate this Agreement
and the license granted it hereunder for any reason with one hundred and twenty
(120) days notice to Licensors; provided, that Licensee's right to terminate
this Agreement does not relieve Licensee of its payment obligations pursuant to
Sections 3.1(a-c). If the Agreement is terminated by Licensee for cause pursuant
12
to Section 6.2(e), Licensee shall not be obligated to make any further payments
to Licensors pursuant to Section 3.1 (c).
(e) Upon any material breach by Licensors, Licensee shall have
the right to terminate this Agreement upon thirty (30) days notice to Licensors,
unless Licensors fully cure said breach within said thirty (30) day notice
period. Licensors' "material obligations" under this Agreement shall include,
without limitation, their obligations under sections: 2.1, 2.2, 2.4 (b-c), and
Exhibit C, and any warranties given herein.
(f) Licensors may, at their option, terminate this Agreement
and revoke the license granted in Sections 2.1 and 2.2. in the event Licensee is
involuntarily delisted from the Nasdaq stock exchange for reasons of failure to
comply with the listing requirements under NASD Market Place Rule 4310(c)(2),
(4) or (7), provided, however, that Licensors shall have no right to terminate
this Agreement, except as provided in Sections 6.2 (a-c), once Licensee has
entered into an agreement to sell Licensed Products with a pharmaceutical or
biotechnology company having a net worth of at least $100 million or market
capitalization of at least $200 million; furthermore, Licensors shall have no
right to terminate this Agreement, except as provided in Sections 6.2 (a-c),
during any time period when (i) Licensee has at least a total of $10 million in
cash and cash equivalents on its balance sheet as certified by Licensee's chief
financial officer and Licensee's financial obligations do not exceed such
amount, or (ii) Licensee's closing stock price on the Nasdaq SmallCap Market,
Nasdaq National Market, New York Stock Exchange or American Stock Exchange is at
least $5.00 per share..
6.3. Effect of Termination.
(a) Upon termination of this Agreement for any reason, nothing
herein shall be construed to release either party of any obligation which
matured prior to the effective date of such termination, and Licensee may, after
the effective date of such termination, complete Licensed Products in the
process of manufacture at the time of such termination and sell the same
together with Licensed Products in inventory for a period of twelve (12) months;
provided, that Licensee pays to Licensors royalties as required by Section 3.2
and submits reports as required by Section 3.5.
(b) The provisions of this Section 6, Section 7 (solely with
respect to claims made by third parties) and Section 8 shall survive any
termination of this Agreement.
6.4. Sublicenses. In the event the license granted to Licensee under
Section 2 terminates for any reason, each of Licensee's sublicenses at such time
shall continue to have the rights and license set forth in their sublicense
agreements; provided the terms of such sublicense agreement have been consented
to by Licensor and such sublicensee agrees in writing that Licensor is entitled
to enforce such provisions directly against such sublicensees.
13
7. INDEMNIFICATION
7.1. Indemnification by Licensee. Subject to the provisions of Section
7.3, Licensee hereby agrees to indemnify, defend and hold harmless Licensors and
their affiliates, trustees, officers, employees and agents (collectively, the
"Licensors Indemnitees") from, against and in respect of any and all damages,
deficiencies, actions, suits, proceedings, demands, assessments, judgments,
claims, losses, costs, expenses, obligations and liabilities (including costs of
collection and reasonable attorneys' fees and expenses) (herein called
"Loss(es)") arising from or related to any (a) use by Licensee, or by any party
acting on behalf of or under authorization from Licensee, of the Licensed
Technology or Licensed Patents; (b) use, sale or other disposition by Licensee,
or by any party acting on behalf of or under authorization from Licensee, of
Licensed Products; (c) subject matter of this Agreement; or (d) litigation
involving U.S. Patent Application Serial No. 08/024,487, including any
continuation, continuation-in-part or division thereof or litigation involving
any of the named inventors thereto.
7.2. Sublicensees. Licensee shall require all of its sublicensees
(including Affiliates) to indemnify, defend and hold harmless Licensors
Indemnitees under the same terms as stated in this Section 7.
7.3. Procedures-Indemnification Notice. If any Losses shall be paid or
accrued by any Licensors Indemnitees, any claim shall be asserted against any
Licensors Indemnitees, or any action or proceeding shall be pending which may
give rise to any Losses with respect to which any Licensors Indemnitees would be
entitled to be indemnified hereunder by Licensee, Licensors shall, if a claim
with respect thereto is or may be made against Licensee pursuant to this Section
7, give Licensee (a) written notice (the "Indemnification Notice") reasonably
identifying such claim or the commencement of such action or proceeding and the
amount of Losses paid or accrued by Licensors Indemnitees, and (b) a copy of
such claim or process and all legal pleadings in connection therewith. The
failure to give such notice, or of such notice to identify such claim or
commencement, shall not relieve Licensee (or its sublicensees) of any of its
indemnification obligations contained in this Section 7, except where, and
solely to the extent that, such failure actually and materially prejudices the
rights of Licensee (or any of its sublicensees).
7.4. Procedures-Objections to Claims. If Licensee shall object to the
indemnification of Licensors Indemnitees in respect of any claim or claims
specified in any Indemnification Notice, Licensee shall, within thirty (30) days
after delivery to Licensee of such Indemnification Notice, deliver to Licensors
written notice to such effect, and the Licensee and Licensors shall, within the
forty-five (45) day period beginning on the date of delivery to Licensors of
such written objection, attempt in good faith to agree upon the rights of the
respective parties with respect to each of such claims to which the Licensee
shall have so objected. If Licensors and Licensee succeed in reaching agreement
on their respective rights with respects to any of such claims, Licensors and
Licensee shall promptly prepare and sign a memorandum setting forth such
agreement.
7.5. Procedures-Submission to Arbitration. Any claim specified in an
Indemnification Notice with respect to which Licensors and Licensee shall fail
to reach an agreement within the forty-five (45) day period specified in Section
7.4 shall be submitted to three (3) arbitrators, one arbitrator to be selected
14
by Licensors, one arbitrator to be selected by Licensee and a third to be
selected by mutual agreement of the two aforementioned arbitrators, to be
settled by arbitration in the City of Detroit, Michigan, in accordance with the
then-existing rules of the American Arbitration Association. The decision of
such arbitrators as to the validity and amount of any such claim shall be
binding and conclusive upon Licensors and Licensee, and judgment upon the award
may be entered in any court having jurisdiction thereof.
7.6. Procedures-Agreed Claims; Payment of Claims. Claims specified in
any Indemnification Notice to which Licensee (or its sublicensee) shall not
object in writing within thirty (30) days after receipt by Licensee of such
Indemnification Notice, claims covered by a memorandum of agreement of the
nature described in Section 7.4, and claims the validity and amount of which
shall have been determined as provided in Section 7.5 are hereinafter referred
to, collectively, as "Agreed Claims." The amount of any Agreed Claim against
Licensee (or its sublicensee) shall be paid, in cash, to Licensors promptly
after the determination thereof.
7.7. Procedures-Third Party Claims.
(a) Promptly after the assertion by any third party of any
claim against any Licensors Indemnitees that, in the judgment of Licensors, may
result in the incurrence by any Licensors Indemnitees of Losses for which such
Licensors Indemnitees would be entitled to indemnification pursuant to this
Agreement, Licensors shall deliver to Licensee an Indemnification Notice with
respect to such claim, and Licensee may, at its option within thirty (30) days
after receipt of the Indemnification Notice, assume the defense (including
settlement negotiations) of Licensors Indemnitees against such claim if it has
not been settled or compromised (including the employment of counsel who shall
be satisfactory to Licensors and the payment of expenses); provided, that
approval of the Licensors shall be required for any settlement, which approval
shall not be unreasonably withheld. Notwithstanding the foregoing, if Licensors
determine that there is a reasonable probability that a claim may materially and
adversely affect them, other than as a result of money payments required to be
reimbursed by Licensee under this Section 7, Licensors shall, at their expense,
have the right to defend, compromise or settle such claim or suit; provided,
further, that such settlement or compromise shall not, unless consented to in
writing by Licensee, be relevant as to the liability of Licensee to Licensors
Indemnitees.
(b) If Licensee participates in or assumes the defense of any
claim asserted by a third party, the Licensors Indemnitees, Licensee and its
counsel shall cooperate in the defense against, or compromise of, such asserted
liability. The Licensors Indemnitees shall have the right to employ separate
counsel in any such action or claim and participate in the defense thereof, but
the fees and expenses of such counsel shall not be an expense of the Licensee
unless (i) the Licensee shall have failed, within thirty (30) days after having
been notified in writing by Licensors of the existence of such claim as provided
in Section 7.3(a), to assume the defense of such claim, (ii) the employment of
such counsel of the Licensors Indemnitees has been specifically authorized by
the Licensee, or (iii) there is a conflict of interest as determined by Licensee
or Licensors' counsel. If there is a final judgment for the plaintiff in any
such action, or if there is a settlement of any such action effected with the
15
consent of Licensee and Licensors, in each case not to be unreasonably withheld,
Licensee shall indemnify and hold harmless the Licensors Indemnitees from and
against any loss or liability by reason of judgment or settlement.
8. INSURANCE
8.1. Insurance Coverage.
(a) Effective as of the time any Licensed Product is being
clinically tested with human subjects or commercially distributed or sold (other
than for the purpose of obtaining regulatory approvals) by Licensee (or by a
sublicensee or agent of Licensee), whichever comes first, Licensee shall, at its
sole cost and expense, procure and maintain insurance under policies that shall
name Licensors as additional insureds.
(b) Such insurance shall provide minimum comprehensive general
liability (including product liability) coverage in amounts not less than three
million dollars ($3,000,000) per incident and five million dollars ($5,000,000)
annual aggregate. Such comprehensive general liability insurance shall provide
(i) product liability coverage, and (ii) broad form contractual liability
coverage for Licensee's indemnification obligations under Section 7 of this
Agreement. The insurance coverage required under this Section 8 shall not be
construed to create a limit of Licensee's liability with respect to its
indemnification under Section 7 of this Agreement.
(c) Licensee shall provide Licensors with written evidence of
such insurance upon request of Licensors. Licensee shall provide Licensors with
written notice by the later of (i) fifteen (15) days prior to the cancellation,
non-renewal or material change in such insurance or (ii) receipt of notice of
intent to terminate or not renew or a material change in such insurance from
Licensee's insurer. If Licensee does not obtain replacement insurance providing
comparable coverage on or prior to such cancellation, non-renewal or material
change in insurance, Licensors shall have the right to terminate this Agreement
immediately.
(d) Licensee shall maintain such insurance beyond the
expiration or termination of this Agreement during the period that any Licensed
Product is being commercially distributed by Licensee or by a sublicensee. If
such insurance is canceled, not renewed or otherwise terminated, the Licensee
shall purchase a retroactive reporting endorsement.
16
9. MISCELLANEOUS
9.1. Relationship of Parties. For the purposes of this Agreement, each
party shall be, and shall be deemed to be, an independent contractor and not an
agent or employee of the other party. Neither party shall have authority to make
any statements, representations or commitments of any kind, or to take any
action which shall be binding on the other party, except as may be explicitly
provided for herein or authorized in writing.
9.2. Publicity. Licensee and Licensors shall consult with each other
before issuing any press release or otherwise making any public statements with
respect to this Agreement and the transactions contemplated hereby, and shall
not issue any such press release or make any such public statement except as
they may mutually agree or except as required under Federal securities laws or
other laws or regulations applicable to Licensee or Licensors or reasonably
required by securities counsel. Each party shall provide the other party's
public relations contact with a written copy of such press release or public
statement for approval. Provided there is written or electronic verification of
communication to the public relations contact reviewing the press release or
public statement, if the reviewing party does not approve or disapprove such
press release or public statement within five (5) business days, then such party
shall be deemed to have consented to such press release or public statement.
Neither party shall use the name of the other party, nor any adaptation thereof
in any advertising, promotional or sales literature, or in any other form of
publicity without prior written consent obtained from the party whose name is to
be used, as applicable in each case, in each case such consent not to be
unreasonably withheld. Nothing in this Section 9.2 shall be deemed to prevent
Licensee from disclosing sublicense arrangements or agreements without
Licensors' consent, provided Licensors' name is not disclosed.
9.3. Notices. Unless otherwise provided herein, any notice, report or
document to be given by one party to the other shall be in writing and shall be
deemed given when delivered personally or mailed by certified or registered
mail, postage prepaid (such mailed notice to be effective on the date which is
three (3) business days after the date of mailing), or sent by facsimile (such
notice sent by facsimile to be effective when sent, if confirmed by certified or
registered mail as aforesaid) as follows:
If to Licensors, addressed to:
Xxxxx State University
4032 FAB, 000 Xxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
Attention: Director, Technology Transfer
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
WSU Reference # 94-313
17
Karmanos Cancer Institute
0000 Xxxx X
Xxxxxxx, Xxxxxxxx 00000
Attention: Chief Financial Officer
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
KCI Reference # __________
If to Licensee, addressed to:
SafeScience, Inc.
00 Xx. Xxxxx Xxx., 0xx Xxxxx
Xxxxxx, XX00000
Attention: Xxxxxxx X. Xxxxxx, President and CEO
Telephone No.: (000) 000-0000
Facsimile No.: (000) 000-0000
or to such other place as any party may designate as to itself by written notice
to the other party.
9.4. Entire Agreement; Amendments. This Agreement constitutes the
entire agreement among Licensee, WSU and KCI pertaining to the subject matter
hereof and supersedes all prior agreements, understandings, negotiations and
discussions, whether oral or written, of the parties, including, without
limitation, the Letter of Intent. No supplement, modification, amendment or
waiver of this Agreement shall be binding unless executed in writing by the
party to be bound thereby.
9.5. Waivers. The waiver by Licensee or Licensors of a breach of any
provision of this Agreement shall not operate or be construed as a waiver of any
subsequent breach. No waiver of any of the provisions of this Agreement shall be
deemed or shall constitute a waiver of any other provision hereof (whether or
not similar), nor shall such waiver constitute a continuing waiver, unless
otherwise expressly provided.
9.6. Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
9.7. Transfer, etc. Neither party may assign this Agreement or any of
such party's rights and obligations hereunder to any third party without the
prior written consent of the other party; provided, in the event of bankruptcy,
Licensee may assign this Agreement only to a company with a net worth of at
least thirty million dollars ($30,000,000) and which has a purpose similar to
that of Licensee. Either party may assign this Agreement, and such party's
rights and obligations hereunder, to an affiliate so long as the assigning party
remains primarily liable for its obligations hereunder. Any attempted
assignment, delegation or transfer in contravention of this Agreement shall be
null and void.
9.8. Binding Effect, Benefits. This Agreement shall inure to the
benefit of and be binding upon, Licensee, WSU and KCI and their respective
successors and permitted assigns; nothing in this Agreement, expressed or
18
implied, is intended to confer on any person other than Licensee, WSU and KCI
or, as applicable, their respective successors and permitted assigns, any
rights, remedies, obligations or liabilities under or by reason of this
Agreement.
9.9. Headings. The Section headings 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.
9.10. Rules of Construction. The following rules of construction shall
be applicable for all purposes of this Agreement, unless the context otherwise
requires: (a) the terms "hereby," "herein," "hereof," "hereto," "hereunder" and
any similar terms shall refer to this Agreement, and the term "hereafter" shall
mean after the Effective Date; (b) words importing the singular number shall
mean and include the plural number and vice versa; (c) to the extent they are
not, the terms "include," "including" and similar terms shall be construed as if
followed by the phrase "without limitation;" and (d) the term "or" shall be
construed in the inclusive sense.
9.11. Choice of Law. This Agreement shall be governed by and construed
in accordance with domestic substantive laws of The State of Michigan, without
regard for any choice or conflict of laws rule or principle that would result in
the application of the domestic substantive law of any other jurisdiction.
IN WITNESS WHEREOF, Licensee and Licensors have caused this Agreement to be duly
executed on their behalf by their respective representatives as of the Effective
Date.
XXXXX STATE UNIVERSITY SAFESCIENCE, INC.
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ Xxxxxxx X. Xxxxxx
--------------------------- ---------------------------
Name: Xxxxxx X. Xxxxxxx, Ph.D. Name: Xxxxxxx X. Xxxxxx
Title: Vice President, Research Title: President
XXXXXXX XXX KARMANOS
CANCER INSTITUTE
By: /s/ X. X. Xxxxxxxxxxxx
---------------------------
Name: X. X. Xxxxxxxxxxxx, M.D., FACP
Title: Chief Executive Officer
19
EXHIBIT A
Licensed Patents
U.S. Patents and National Stage Applications based on International
Application No. PCT/US95/07547 entitled "Method for Inhibiting Cancer
Metastasis by Oral Administration of Soluble Modified Citrus Pectin"; and
Continuation of U.S. Patent Application No. 08/271,821
1. European National Phase PCT Application No. 95 925 253.7
(Based on International Application No. PCT/US95/07547
filed June 14, 1995)
2. Norwegian Patent Application No. 19970039 (based on
International Application No. PCT/US95/07547)
3. Australian Patent No. 695677 in the names of Xxxxxxx Xxx
Karmanos Institute and Xxxxx State University
4. Brazilian Patent Application No. PI 9508245 (based on
International Application No. PCT/US95/07547) 5.
Singapore Patent No. 36374 (based on International
Application No. PCT/US95/07547)
6. Japanese National Phase PCT Application No. 8-504302
(Based on PCT/US95/07547)
7. Mexican Xxxxxxxx Xxxxx Xxxxxxxxxxx Xx. 000000 (Based on
International Application No. PCT/US95/07547)
8. Canadian Patent Application No. 2,194,586 (based on
International Application No. PCT/US95/07547)
9. Chinese National Stage Application No. 95194958.6 (based
on International Application No. PCT/US95/ 07547)
10. Finnish Patent Application No. 965269 (based on
International Application No. PCT/US95/07547)
11. U.S. Patent No. 5,834,442
12. U.S. Patent No. 5,895,784
20
Exhibit b
Funding Sources
National Institutes of Health Xxxxxxxx XX0 XX 00000
CaPCURE Foundation Investigator Award-Xxx Xxxxxx (gift/discretionary funds)
XxXxxx-Xxxxxxxxx Foundation Endowed Chair Award- Xxxxxxx Xxx
21
EXHIBIT C
Mortgages, Liens, Pledges, Charges or other Encumbrances
Possible interference proceedings or inventorship disputes involving Licensed
Patents and U.S. Patent Application Serial No. 08/024,487
22
