AMENDMENT NO.1 TO THE LICENSE AGREEMENT EFFECTIVE MARCH 12, 2003 BETWEEN OCUSENSE INC. AND THE REGENTS OF THE UNIVERSITY OF CALIFORNIA FOR INVENTION DOCKET NO. SD2002-180
UCSD
Case
No. SD2002-180
AMENDMENT
NO.1 TO THE
EFFECTIVE
MARCH 12, 2003
BETWEEN
OCUSENSE INC.
AND
THE
REGENTS OF THE UNIVERSITY OF CALIFORNIA
FOR
INVENTION
DOCKET NO. SD2002-180
"VOLUME
INDEPENDENT TEAR FILM OSMOMETER"
This
amendment to the agreement (this "Amendment") is made by and between OcuSense
Inc. located at 0000 Xxxxxx Xxxxxx #0, Xxx Xxxxxxx, Xxxxxxxxxx 00000
("OCUSENSE") and The Regents Of The University Of California, a California
corporation having its statewide administrative offices at 0000 Xxxxxxxx Xxxxxx,
Xxxxxxx, Xxxxxxxxxx 00000-0000 ("University"), as represented by its San Diego
campus having an address at University of California, San Diego, Technology
Transfer &
Intellectual
Property Services, Mail-code 0910, 0000 Xxxxxx Xxxxx, Xx Xxxxx, Xxxxxxxxxx
00000-0000 ("UCSD").
When
signed by both parties, this Amendment is effective as of the date of the last
signature below ("Effective Date").
Whereas,
OCUSENSE
and University entered into a license agreement for the UCSD Case cited above,
UC Control No. 0000-00-0000, effective March 12, 2003
("Agreement");
Whereas,
OCUSENSE
and University wish to amend the Agreement to include certain corrections and
modifications.
NOW
THEREFORE, in consideration of the mutual covenants and premises contained
herein, the receipt and sufficiency of which is hereby acknowledged, the parties
amend the Agreement as follows:
1.
Section 1.5 of the Agreement is hereby amended in its entirety to read as
follows:
1.5
"Patent
Rights" means
any
of the following: the US provisional patent application
(Serial
No. 60/401,432 titled "Volume Independent Tear Film Osmometer") disclosing
and
claiming the Invention, filed by Inventor on or about August 6, 2002 and
assigned to UNIVERSITY; and any conversions or utility patent applications
claiming priority to the provisional patent application, including U.S. patent
application Serial No. 10/400,617 filed on or about March 25, 2003, and any
continuing applications of such conversion or utility patent applications
including reissues, extensions, substitutions, continuations, divisions, and
continuation-in-part applications (only to the extent, however, that claims
in
the continuation-in-part applications are entirely supported in the
specification and entitled to the priority date of the parent application);
and
any corresponding foreign applications or patents, including PCT Application
No.
PCT/US03/09553PCT filed on or about March 25, 2003; and all patents filed by
UNIVERSITY having claims which are supported by specifications of such
provisional and utility applications.
2.
Section 5.2 of the Agreement is hereby amended in its entirety to read as
follows:
5.2
Patent Infringement.
|
(a)
|
If
LICENSEE learns of any substantial infringement of Patent Rights,
LICENSEE
shall so inform UNIVERSITY and provide UNIVERSITY with reasonable
evidence
of the infringement, and UNIVERSITY hereby agrees to take no action
for at
least ninety (90) days thereafter. If UNIVERSITY, to the extent of
the
actual knowledge of the Licensing Officer responsible for administration
of the Agreement, learns of any substantial infringement of Patent
Rights,
UNIVERSITY shall so inform LICENSEE and provide LICENSEE with reasonable
evidence of the infringement, and LICENSEE hereby agrees to take
no action
for at least ninety (90) days thereafter. Neither party shall notify
a
third party of the infringement of Patent Rights without the consent
of
the other party. Both parties shall use reasonable efforts and cooperation
to terminate infringement without
litigation.
|
| (b) |
If
infringing activity of potential commercial significance by the infringer
has not been abated within ninety (90) days following the date notice
of
such infringing activity is given to the other party pursuant to
5.2(a)
above, the LICENSEE shall have the first right to institute suit
for
patent infringement against the infringer. UNIVERSITY may voluntarily
join
such suit at its own expense, but may not thereafter commence suit
against
the infringer for the acts of infringement that are the subject of
the
Licensee's suit or any judgment rendered in that suit. The LICENSEE
may
not join UNIVERSITY in a suit initiated by the LICENSEE without
UNIVERSITY's prior written consent, provided, however, that if UNIVERSITY
is determined by a court to be a necessary or required party in any
such
suit, then no consent shall be required. If, in a suit initiated
by the
LICENSEE, UNIVERSITY is involuntarily joined other than by the LICENSEE,
or if UNIVERSITY is joined because it is deemed to be a necessary
or
required party, the LICENSEE will pay any costs incurred by UNIVERSITY
arising out of such suit, including but not limited to, any reasonable
legal fees of counsel that UNIVERSITY selects and retains to represent
it
in the suit.
|
| (c) |
Subject
to the immediately following sentence, recoveries from actions brought
by
LICENSEE pursuant to Paragraph 5.2(b) shall belong to the LICENSEE,
provided, however, that the amount such recoveries exceed LICENSEE's
expenses (and UNIVERSITY's expenses if it voluntarily joins such
suit, in
which case UNIVERSITY shall be reimbursed its expenses if such expenses
are not otherwise awarded to UNIVERSITY) for such actions (the "Net
Award") shall be (i) subject to the royalty in Paragraph 3.1(g) above
if
the Net Award of any such recovery is considered to be the recovery
of
LICENSEE's "Net Profits" that were lost due to the infringing activity
or
if the court does not specify how the amount of recovery was calculated,
and such recovery includes the royalties that would have been paid
to
UNIVERSITY, for cases in which the UNIVERSITY is not a party, or
(ii)
subject to the sublicensing royalties in Paragraph 3.l(e) or 3.l(f)
above
as may be appropriate if the Net Award is considered to be "royalties"
payable to LICENSEE as if in a LICENSEE-Sublicensee relationship,
for all
cases whether or not UNIVERSITY is a party, or (iii) to the extent
the
immediately preceding subparagraph (ii) does not apply, shared
proportionately according to costs borne by each party if the UNIVERSITY
voluntarily joins or is involuntarily joined as a party, provided,
however, that in this scenario, UNIVERSITY shall receive a minimum
of 5%
of the Net Award if the UNIVERSITY is not otherwise awarded the royalties
that would have been paid to UNIVERSITY. In a LICENSEE initiated
suit to
which the UNIVERSITY is a party (whether voluntarily or involuntarily),
enhanced damages, i.e. damages assessed against the infringer(s)
as a
penalty, such as trebling of damages for willful infringement should
be
shared 50/50 between the LICENSEE and the UNIVERSITY after all expenses
for each party have been paid or reimbursed. If LICENSEE has not
initiated
any action to xxxxx the infringing activity within ninety (90) days
after
the expiration of the ninety (90) days after notice of such infringing
activity is given to the other party pursuant to 5.2(a) above, then
UNIVERSITY shall have the right to bring such suit, and recoveries
from
such actions brought by UNIVERSITY shall belong entirely to
UNIVERSITY.
|
| (d) |
Each
party shall cooperate with the other in litigation proceedings at
the
expense of the party bringing suit. Litigation shall be controlled
by the
party bringing the suit, except that UNIVERSITY may be represented
by
counsel of its choice in any suit brought by
LICENSEE.
|
Except
as
amended and set forth above, the Agreement shall continue in full force and
effect.
This
Amendment may be executed in any number of counterparts, each of which will
be
deemed an original, and all of which together shall constitute one
instrument.
1
If
one or
more provisions of this Amendment are held to be unenforceable under applicable
law, such provision shall be excluded from this Amendment and the balance of
the
Amendment shall be interpreted as if such provision was so excluded and shall
be
enforceable in accordance with its terms.
This
Amendment, together with the Agreement, constitutes the full and entire
understanding and agreement between the parties with regard to the subjects
hereof and thereof.
This
Amendment shall be governed by and construed under the laws of the State of
California as applied to agreements among California residents entered into
and
to be performed entirely within California.
[REMAINDER
OF PAGE INTENTIONALLY LEFT BLANK]
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IN
WITNESS WHEREOF, the parties hereto have executed this Amendment No. 1 to the
License Agreement.
OCUSENSE
INC. THE REGENTS OF THE
UNIVERSITY
OF CALIFORNIA:
BY:
/s/
Xxxx
Xxxxxx BY: /s/ Xxxx X. Xxxx
__________________
____________________
(Signature)
(Signature)
Name:
Xxxx
Xxxxxx Name: Xxxx X. Xxxx
Title:
CEO Title:
Assistant Vice Chancellor
Technology
Transfer & Intellectual
Property
Services
Date
6/9/03 Date
6/2/03
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