Exhibit 10.23
LICENSE AGREEMENT
This Agreement is between The Xxxxx Xxxxxxx University, a corporation of
the State of Maryland, having a principal place of business at 000 Xxxxxx
Xxxxx, Xxxxx 000, Xxxxxxxxx, XX 00000 (hereinafter referred to as "JHU") and
Biophan Technologies, Inc, a Nevada corporation (hereinafter the "Company"),
having an address at 000 Xxxxxx Xxxxxx Xxxxx -Xxxxx 000, Xxxx Xxxxxxxxx, Xxx
Xxxx 00000.
WITNESSETH:
WHEREAS, as a center for research and education, JHU is interested in
licensing PATENT RIGHTS (hereinafter defined) in a manner that will benefit
the public by facilitating the distribution of useful products and the
utilization of new methods, but is without capacity to commercially develop,
manufacture, and distribute any such products or methods; and
WHEREAS, a valuable invention entitled "ECG Amplifier and Cardiac
Pacemaker for Use During Magnetic Resonance Imaging" (JHU Ref. DM-9350) was
developed during the course of research conducted by Drs. Xxxxxx X. Xxxxxxx,
Xxxxxx X. Xxxxx, Xxxxx X. Xxxxxxxx and Xxxxx X. Xxxxxxxxx (all hereinafter,
"Inventors"); and
WHEREAS, JHU has acquired through assignment all rights, title and
interest in said valuable invention; and
WHEREAS, Company desires to commercially develop, manufacture, use and
distribute or sublicense such products and processes throughout the world;
NOW, THEREFORE, in consideration of the foregoing premises and the
following mutual covenants, and other good and valuable consideration, the
receipt of which is hereby acknowledged, and intending to be legally bound
hereby, the parties agree as follows:
ARTICLE I -DEFINITIONS
1.1 "PATENT RIGHTS" shall mean the U.S. patent No. 5,217,010, issued June
8, 1993, and assigned to JHU entitled "ECG Amplifier and Cardiac Pacemaker
for Use During Magnetic Resonance Imaging" (hereinafter the "PATENT") and the
invention disclosed and claimed therein, and all continuations, divisions,
and reissues based thereof, and any corresponding foreign patent
applications, and any patents, patents of addition, or other equivalent
foreign patent rights issuing, granted or registered thereon.
1.2 "LICENSED PRODUCT(S)" means any material, compositions, drug, ECG
amplifiers, cardiac pacemakers, or other product, the manufacture, use or
sale of which would constitute, but for the license granted to the Company
pursuant to this Agreement, an infringement of a claim of PATENT RIGHTS
(infringement shall include, but is not limited to, direct, contributory, or
inducement to infringe).
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1.3 "LICENSED SERVICES(S)" means the performance on behalf of a third
party of any method including the design, testing, implantation or the
manufacture of any produce or the use of any product or composition which
would constitute, but for the license granted to the Company pursuant to this
Agreement, an infringement of a claim of the PATENT RIGHTS, (infringement
shall include, but not be limited to, direct, contributory or inducement to
infringe).
1.4 "NET SALES", subject to Paragraph 4.5, below, shall mean gross sales
revenues and fees billed by Company, AFFILIATED COMPANY and Company's
sublicensees from the sale of LICENSED PRODUCT(S) less trade discounts
allowed, refunds, returns and recalls, and sales taxes. In the event that
Company, AFFILIATED COMPANY or Company's sublicensee sells a LICENSED
PRODUCT(S) in combination with other ingredients or substances or as part of
a kit, the NET SALES for the LICENSED PRODUCT(S) so sold shall be calculated
for the purpose of computing royalties due by applying to the total NET SALES
(herein defined) of the combined or kit products for fractional multiplier
having as its denominator the total manufacturing cost of the combined or
composite products (determined in accordance with Company's customary
accounting procedures) and as its numerator the manufacturing cost of the
included LICENSED PRODUCT(S) (similarly determined).
1.5 "NET SERVICE REVENUES", subject to Paragraph 4.5, below, shall mean
actual xxxxxxxx for the performance of LICENSED SERVICE less sales and/or use
taxes imposed upon and with specific reference to the LICENSED SERVICE.
1.6 "EXCLUSIVE LICENSE FIELD" shall mean all fields other than the CO-
EXCLUSIVE LICENSE FIELD and the EXCLUDED FIELD.
1.7 "CO-EXCLUSIVE LICENSE FIELD" shall mean temporary pacemakers.
1.8 "EXCLUDED FIELD" shall mean MRI-guided temporary catheters that do
not provide a pacemaker function.
1.9 "AFFILIATED COMPANY" or "AFFILIATED COMPANIES" shall mean any
corporation, company, partnership, joint venture or other entity which
controls, is controlled by or is under common control with the Company as
well as its successors, assigns and designees, and any of its present or
future subsidiaries. For the purposes of this Paragraph 1.9, control shall
mean the direct or indirect ownership of at least fifty percent (50%).
1.10 "EFFECTIVE DATE" of this License Agreement shall mean the date the
last party hereto has executed this Agreement.
ARTICLE 2-GRANTS
2.1 Subject to the terms and conditions of this Agreement, JHU hereby
grants to the Company an exclusive license to make, have made, use, and sell
the LICENSED PRODUCT(S) and to provide to LICENSED SERVICE(S) in the United
States and worldwide under the PATENT RIGHTS in the EXCLUSIVE LICENSE FIELD.
Further, JHU hereby grants to the company a co-exclusive license to make,
have made,
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use, and sell the LICENSED PRODUCT(S) and to provide the LICENSED SERVICE(S)
in the United States and worldwide under the PATENT RIGHTS in the CO-
EXCLUSIVE LICENSE FIELD. JHU agrees to grant a co-exclusive license under the
PATENT RIGHTS in the CO-EXCLUSIVE LICENSE FIELD and the EXCLUDED FIELD to
only one other commercial company.
2.2 Company may sublicense others under this Agreement within the
EXCLUSIVE LICENSE FIELD and shall provide a copy of each such sublicense
agreement to JHU promptly after it is executed. Each sublicense shall be
consistent with the terms of this Agreement.
2.3 In the event royalties paid to JHU under this Agreement for any
subsequent year during the life of the Agreement do not equal or exceed the
minimum royalty set forth in Paragraph 4.4, JHU shall have the right, upon
sixty (60) days' notice to Company, to convert the license granted in Article
2 from exclusive to nonexclusive. Company may, however, maintain the
exclusive character of its license, notwithstanding any such notice from JHU'
if it shall, prior to expiration of the sixty (60) day notice period, pay to
LICENSOR a sum that, when added to the royalties payable for the year in
question, equals or exceeds the minimum royalty. Failure of JHU to give the
notice provided in this Paragraph 2.3 in reference to any given year or years
shall not constitute a waiver of the right to give such notice in reference
to any subsequent year.
ARTICLE 3 -PATENT INFRINGEMENT
3.1 Each party will notify the other promptly in writing when any
infringement by another is uncovered or suspected.
3.2 Company shall have the first right to enforce any patent within
PATENT RIGHTS against any infringement or alleged infringement thereof, and
shall at all times keep JHU informed as to the status thereof. Company may,
in its sole judgment and at its own expense, institute suit against any such
infringer or alleged infringer and control, settle, and defend such suit in a
manner consistent with the terms and provisions hereof and recover any
damages, awards or settlements resulting therefrom, subject to Paragraph 3.4.
This right to xxx for infringement shall not be used in an arbitrary or
capricious manner. JHU shall reasonably cooperate in any such litigation at
Company's expense.
3.3 If Company elects not to enforce any patent within the PATENT RIGHTS,
then it shall so notify JHU in writing within six (6) months of receiving
notice that an infringement exists, and JHU may, in its sole judgment and at
its own expense, take steps to enforce any patent and control, settle, and
defend such suit in a manner consistent with the terms and provisions hereof,
and recover, for its own account, any damages, awards or settlements
resulting therefrom.
3.4 Any recovery by Company under Paragraph 3.2 shall be deemed to
reflect loss of commercial sales, and Company shall pay to JHU fifteen
percent (15%) of the recovery net of all reasonable costs and expenses
associated with each suit or settlement. If the cost and expenses exceed the
recovery, then one-half (1/2) of the excess shall be credited against
royalties payable
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by Company to JHU hereunder in connection with sales in the country of such
legal proceedings, provided, however, that any such credit under this
Paragraph 3.4 shall not exceed fifty percent (50%) of the royalties otherwise
payable to JHU with regard to sales in the country of such action in anyone
calendar year, with any excess credit being carried forward to future
calendar years.
ARTICLE 4 -PAYMENTS. ROYALTY. RESEARCH SUPPORT AND EQUITY
4.1 The Company shall pay JHU, within thirty (30) days of the EFFECTIVE
DATE of this Agreement, for the reasonable costs of preparing, filing,
maintaining and prosecuting PATENT RIGHTS, a sum of Nine Thousand, One
Hundred and Eighty Six Dollars ($9,186) for past patent preparation and
prosecution expenses. Company shall reimburse JHU for additional patent
prosecution expenses within thirty (30) days of receipt of invoice from JHU,
provided JHU obtains approval for such expenses in advance. Company shall
reimburse JHU for patent maintenance fees within thirty (30) days of
Company's receipt of invoice from JHU. In the event that JHU further licenses
the PATENT RIGHTS, outside of the EXCLUSIVE LICENSE FIELD, then a
proportional share of the fees set forth herein, and any subsequent fees
associated with maintenance of the PATENT RIGHTS, shall be collected from
subsequent licensees and credited to Company as a set-off against payments
due to JHU under this agreement.
4.2 The Company shall pay to JHU within thirty (30) days of the EFFECTIVE
DATE of this Agreement, a nonrefundable initial licensing fee of Ten Thousand
Dollars ($10,000). Although of no impact to Company's payments hereunder, a
Five Thousand Dollars ($5,000) processing fee will be deducted by the Office
of Technology Licensing from any fees received from Company. These payments
are nonrefundable and shall not be credited against royalties or other fees.
4.3 The Company shall pay to JHU, as a running royalty, for each LICENSED
PRODUCT sold, and for each LICENSED SERVICE provided, by the Company, and
AFFILIATED COMPANIES, four percent (4%) of NET SALES and NET SERVICES for the
term of this Agreement. Such payments shall be made quarterly as provided in
Paragraph 4.5. In the event that Company, AFFILIATED COMPANY or Company's
sublicensee sells a LICENSED PRODUCT(S) or provides a LICENSED SERVICE that
incorporates another patented technology licensed or owned by Company or an
AFFILIATED COMPANY, said royalty shall be calculated for the purpose of
computing the running royalty rate by applying to the greater of all the
royalty rates applicable a fractional multiplier having as its denominator
the total royalty rate of all royalties payable on the LICENSED PRODUCT(S)
and LICENSED SERVICES (determined in accordance with Company's customary
accounting procedures) and as its numerator the running royalty rate
specified above. In no event shall the running royalty be reduced to less
than one-half of the running royalty stated above.
In the event Company sublicenses others under this Agreement, the Company
shall pay to JHU, as a sublicense royalty, for each sublicense, twenty-five
percent (25%) of sublicense revenue received by Company for the term of this
Agreement. Such payments shall be made quarterly as provided in Paragraph
4.5. In the event that Company's sublicensee is also a
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sublicensee of other patent or intellectual property owned or controlled by
Company that contributes to such sublicense revenue, said sublicense royalty
shall be calculated for the purpose of computing the sublicense royalty rate
by applying to the sublicense royalty rate (as herein defined) a fractional
multiplier having as its denominator the total sublicense royalty rate of all
sublicenses (determined in accordance with Company's customary accounting
procedures) and as its numerator the sublicense royalty rate specified above.
4.4 The following minimum annual royalties shall be due within thirty
(30) days of the anniversary of the EFFECTIVE DATE (said minimum annual
royalties shall be credited against running royalties):
1st -3rd year: Five Thousand Dollars ($5,000).
4th year, etc.: Ten Thousand Dollars ($10,000).
Although of no impact to Company's payments hereunder, a Two Thousand
Dollars ($2,000) maintenance fee will be deducted annually from any royalties
or other fees received from Company.
4.5 The Company shall provide to JHU within ninety (90) days of the end
of each March, June, September and December after the EFFECTIVE DATE of this
Agreement, a written report to JHU of the amount of LICENSED PRODUCTS sold,
and LICENSED SERVICES sold, the total NET SALES and NET SERVICE REVENUES of
such LICENSED PRODUCTS and LICENSED SERVICES, and the running royalties due
to JHU as a result of NET SALES and NET SERVICE REVENUES by Company,
AFFILIATED COMPANIES and sublicensees thereof. Payment of any such royalties
due shall accompany such report. Until the Company, an AFFILIATED COMPANY or
a sublicensee has achieved a first commercial sale of a LICENSED PRODUCT and
received FDA market approval, a report shall be submitted at the end of every
June and December after the EFFECTIVE DATE of this Agreement and will include
a full written report describing the Company's, AFFILIATED COMPANIES or
sublicensee's technical efforts towards meeting the milestones in Article 6.
In the event that any payment due hereunder is not made when due, the
payment shall accrue interest beginning on the tenth day following the due
date thereof, calculated at the annual rate of the sum of (a) two percent
(2%) plus (b) the prime interest rate quoted by The Wall Street Journal on
the date said payment is due, the interest being compounded on the last day
of each calendar quarter, provided, however, that in no event shall said
annual interest rate exceed the maximum legal interest rate for corporations.
Each such royalty 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 JHU to seek any other remedy, legal or
equitable, to which it may be entitled because of the delinquency of any
payment.
4.6 The Company shall make and retain; for a period of three (3) years
following the period of each report required by Paragraph 4.5, true and
accurate records, files and books of account containing all the data
reasonably required for the full computation and verification of
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sales and other information required in Paragraph 4.5. Such books and records
shall be in accordance with generally accepted accounting principles
consistently applied. The Company shall permit the inspection and copying of
such records, files and books of account by JHU or its agents during regular
business hours upon ten (10) business days' written notice to the Company.
Such inspection shall not be made more than once each calendar year. All
costs of such inspection and copying shall be paid by JHU, provided that if
any such inspection shall reveal that an error has been made in the amount
equal to five percent (5%) or more of such payment, such costs shall be borne
by the Company. The Company shall include in any agreement with its
AFFILIATED COMPANIES or its sublicensees which permits such party to make,
use or sell the LICENSED PRODUCT(S) or provide LICENSED SERVICES, a provision
requiring such party to retain records of sales of LICENSED PRODUCT(S) and
records of LICENSED SERVICES and other information as required in Paragraph
4.5 and permit JHU to inspect such records as required by this Paragraph 4.6.
4.7 In order to insure JHU the full royalty payments contemplated
hereunder, the Company agrees that in the event any LICENSED PRODUCT shall be
sold to an AFFILIATED COMPANY or sublicensee or to a corporation, firm or
association with which Company shall have any agreement, understanding or
arrangement with respect to consideration (such as, among other things, an
option to purchase stock or actual stock ownership, or an arrangement
involving division of profits or special rebates or allowances) the royalties
to be paid hereunder for such LICENSED PRODUCTS shall be based upon the
greater of: 1) the net selling price at which the purchaser of LICENSED
PRODUCTS resells such product to the end user, 2) the net service revenue
received from using the LICENSED PRODUCT in providing a service, 3) the fair
market value of the LICENSED PRODUCT or 4) the net selling price of LICENSED
PRODUCTS paid by the purchaser.
4.8 All payments under this Agreement shall be made in U.S. Dollars.
ARTICLE 5 -PATENT RIGHTS AND CONFIDENTIAL INFORMATION
5.1 JHU, at the Company's expense, shall file, prosecute and maintain all
patents and patent applications specified under PATENT RIGHTS upon
authorization of the Company and the Company shall be licensed thereunder.
Title to all such patents and patent applications shall reside in JHU. With
the exception of patent infringement claims under Article 3, JHU shall have
full and complete control over all patent matters in connection therewith
under the PATENT RIGHTS. The Company will provide payment authorization to
JHU at least thirty (30) days before an action is due, provided that the
Company has received timely notice of such action from JHU. Failure to
provide authorization, after timely notice to Company, can be considered by
JHU as a Company decision not to authorize an action. In any country where
the Company elects not to have a patent application filed or to pay expenses
associated with filing, prosecuting, or maintaining a patent application or
patent, JHU may file, prosecute, and/or maintain a patent application or
patent at its own expense and for its own exclusive benefit and the Company
thereafter shall not be licensed under such patent or patent application.
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5.2 Company agrees that, to the extent it is commercially reasonable to
do so, all packaging containing individual LICENSED PRODUCT(S) sold by
Company, AFFILIATED COMPANIES and sublicensees of Company will be marked with
the number of the applicable patent(s) licensed hereunder in accordance with
each country's patent laws.
5.3 If necessary, the parties will exchange information that they
consider to be confidential. The recipient of such information agrees, upon
acceptance of the disclosure of said information which is marked as
confidential at the time it is sent to the recipient, to employ all
reasonable efforts to maintain the information as secret and confidential,
and that such efforts shall be no less than the degree of care employed by
the recipient to preserve and safeguard its own confidential information. The
information shall not be disclosed or revealed to anyone except employees of
the recipient who have a need to know the information and who have entered
into a secrecy agreement with the recipient under which such employees are
required to maintain confidential the proprietary information of the
recipient and such employees shall be advised by the recipient of the
confidential nature of the information and that the information shall be
treated accordingly. The recipient's obligations under this Paragraph 5.3
shall not extend to any part of the information:
a. that can be demonstrated to have been in the public domain or publicly
known and readily available to the trade or the public prior to the date
of the disclosure; or
b. that can be demonstrated, from written records to have been in the
recipient's possession or readily available to the recipient from another
source not under obligation of secrecy to the disclosing party prior to
the disclosure; or
c. that becomes part of the public domain or publicly known by
publication or otherwise, not due to any unauthorized act by the
recipient; or
d. that is demonstrated from written records to have been developed by or
for the receiving party without reference to confidential information
disclosed by the disclosing party.
e. that is required to be disclosed by law, government regulation or
court order.
The obligations of this Paragraph 5.3 shall also apply to AFFILIATED
COMPANIES and/or sublicensees provided such information by Company. JHU's,
the Company's, AFFILIATED COMPANIES, and sublicensees' obligations under this
Paragraph 5.3 shall extend until three (3) years after the termination of
this Agreement.
ARTICLE 6 -TERM. MILESTONES AND TERMINATION
6.1 This Agreement shall expire in each country on the date of expiration
of the last to expire patent included within PATENT RIGHTS in that country.
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6.2 Company shall exercise reasonable efforts to develop and
commercialize the LICENSED PRODUCT(S) and LICENSED SERVICE(S) using good
scientific judgement. Notwithstanding, JHU hereby acknowledges and agrees
that Company's payment of minimum royalties under Article 4 shall be its sole
obligation of performance relative to making, having made, using, selling, or
sublicensing the LICENSED PRODUCT(S) and to provide the LICENSED SERVICE(S).
6.3 After clinical or other evidence, provided in writing by JHU or by
another party, to Company, demonstrates the practicality of a particular
therapeutic technique which is not being developed or commercialized by
Company, Company shall either provide JHU with a reasonable development plan
and start development or attempt to reasonably sublicense the particular
technology to a third party. If within six (6) months of such notification by
JHU, Company has not initiated such development efforts or sublicensed that
particular therapeutic technique, including a sublicense in a limited
exclusive field that necessarily includes such particular therapeutic
technique, JHU may terminate this license for such particular therapeutic
technique. This Paragraph 6.3 shall not be applicable if Company reasonably
demonstrates to JHU that commercializing such LICENSED PRODUCT(S) or granting
such a sublicense would have a potentially adverse commercial effect upon
marketing or sales of the LICENSED PRODUCTS developed and being sold by
Company.
6.4 Upon breach or default of any of the terms and conditions of this
Agreement, the defaulting party shall be given written notice of such default
in writing and a period of thirty (30) days after receipt of such notice to
correct the default or breach. If the default or breach is not corrected
within said thirty (30) day period, the party not in default shall have the
right to terminate this Agreement.
6.5 Company may terminate this Agreement and the license granted herein,
for any reason, upon giving JHU sixty (60) days written notice.
6.6 Termination shall not affect JHU's right to recover unpaid royalties
or fees or reimbursement for patent expenses incurred pursuant to Article 4
prior to termination. Upon termination all rights in and to the licensed
technology shall revert to JHU at no cost to JHU. Termination under any of
the provisions of this Agreement shall terminate all sublicenses that may
have been granted by Company, provided that any sublicensee may elect to
continue its sublicense by advising JHU in writing, within sixty (60) days of
the sublicensee's receipt of written notice of such termination, of its
election, and of its agreement to assume in respect to JHU all the
obligations (including obligations for payment) contained in its sublicensing
agreement with Company. Any sublicense granted by Company shall contain
provisions corresponding to those of this paragraph respecting termination
and the conditions of continuance of sublicenses.
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ARTICLE 7 -MISCELLANEOUS
7.1 All notices pertaining to this Agreement shall be in writing and sent
certified mail, return receipt requested, to the parties at the following
addresses or such other address as such party shall have furnished in writing
to the other party in accordance with this Paragraph 7.1:
FOR JHU: Director
Office of Technology Licensing
The Xxxxx Xxxxxxx University School of Medicine
000 Xxxxxx Xxxxx, Xxxxx 000 Xxxxxxxxx, XX 00000
FOR Company: Xxxxxxx Xxxxxx, CEO
Biophan Technologies, Inc.
000 Xxxxxx Xxxxxx Xxxxx -Suite 000
Xxxx Xxxxxxxxx, Xxx Xxxx 00000
7.2 All written progress reports, royalty and other payments, and any
other related correspondence shall be in writing and sent to:
FOR JHU: Director
Office of Technology Licensing
The Xxxxx Xxxxxxx University
School of Medicine
000 Xxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxx, XX 00000
or such other addressee which JHU may designate in writing from time to time.
Checks are to be made payable to "The Xxxxx Xxxxxxx University". Wire
transfers may be made through:
Allfirst Bank
XX Xxx 0000
Xxxxxxxxx, XX 00000 XXX
JHU Acct. # 9000522
ABA # 000000000
JHU Ref. DM-9350
Attn: JHU SOM Office of Technology Licensing,
Xxxxxx Xxxxxxxxxx
Company shall be responsible for any costs associated with wire transfers.
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7.3 This Agreement is binding upon and shall inure to the benefit of JHU,
its successors and assignees and shall not be assignable to another party
without the written consent of JHU, which consent shall not be unreasonably
withheld, except that the Company shall have the right to assign this
Agreement to another party without the consent of JHU in the case of the sale
or transfer by the Company of all, or substantially all, of its assets
relating to the LICENSED PRODUCT or LICENSED SERVICE, to that party.
7.4 In the event that anyone or more of the provisions of this Agreement
should for any reason be held by any court or authority having jurisdiction
over this Agreement, or over any of the parties hereto to be invalid, illegal
or unenforceable, such provision or provisions shall be reformed to
approximate as nearly as possible the intent of the parties, and if
unreformable, shall be divisible and deleted in such jurisdictions;
elsewhere, this Agreement shall not be affected.
7.5 The construction, performance, and execution of this Agreement shall
be governed by the laws of the State of Maryland.
7.6 The Company shall not use the name of THE XXXXX XXXXXXX UNIVERSITY or
THE XXXXX XXXXXXX HEALTH SYSTEM or any of its constituent parts, such as the
Xxxxx Xxxxxxx Hospital or any contraction thereof or the name of Inventors of
PATENT RIGHTS in any advertising, promotional, sales literature or
fundraising documents without prior written consent from an officer of JHU'
Company shall allow at least seven (7) business days notice of any proposed
public disclosure for JHU's review and comment or to provide written consent.
7.7 JHU warrants that it has good and marketable title to its interest in
the inventions claimed under PATENT RIGHTS, and to the best of its knowledge
there are no rights retained by the United States government. JHU does not
warrant the validity of any patents or that practice under such patents shall
be free of infringement. EXCEPT AS EXPRESSLY SET FORTH IN THIS PARAGRAPH 7.7,
COMPANY, AFFILIATED COMPANIES AND SUBLICENSEES AGREE THAT THE PATENT RIGHTS
ARE PROVIDED "AS IS", AND THAT JHU MAKES NO REPRESENTATION OR WARRANTY WITH
RESPECT TO THE PERFORMANCE OF LICENSED PRODUCT(S) AND LICENSED SERVICES
INCLUDING THEIR SAFETY, EFFECTIVENESS, OR COMMERCIAL VIABILITY. JHU DISCLAIMS
ALL WARRANTIES WITH REGARD TO PRODUCT(S) AND SERVICES LICENSED UNDER THIS
AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESS OR IMPLIED,
OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE. NOTWITHSTANDING
ANY OTHER PROVISION OF THIS AGREEMENT, JHU ADDITIONALLY DISCLAIMS ALL
OBLIGATIONS AND LIABILITIES ON THE PART OF JHU AND INVENTORS, FOR DAMAGES,
INCLUDING, BUT NOT LIMITED TO, DIRECT, INDIRECT, SPECIAL, AND CONSEQUENTIAL
DAMAGES, ATTORNEYS' AND EXPERTS' FEES, AND COURT COSTS (EVEN IF JHU HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES OR COSTS), ARISING OUT OF OR
IN CONNECTION WITH THE MANUFACTURE, USE, OR SALE OF THE PRODUCT(S) AND
SERVICES LICENSED UNDER THIS AGREEMENT. COMPANY, AFFILIATED COMPANIES AND
SUBLICENSEES ASSUME ALL RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE
CAUSED BY A PRODUCT
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AND SERVICE MANUFACTURED, USED, OR SOLD BY COMPANY, ITS SUBLICENSEES AND
AFFILIATED COMPANIES WHICH IS A LICENSED PRODUCT OR LICENSED SERVICE AS
DEFINED IN THIS AGREEMENT.
7.8 JHU and the Inventors of LICENSED PRODUCT(S) and LICENSED SERVICES
will not, under the provisions of this Agreement or otherwise, have control
over the manner in which Company or its AFFILIATED COMPANIES or its
sublicensees or those operating for its account or third parties who purchase
LICENSED PRODUCT(S) or LICENSED SERVICES from any of the foregoing entities,
practice the inventions of LICENSED PRODUCT(S) and LICENSED SERVICES. The
Company shall defend and hold JHU, The Xxxxx Xxxxxxx Health Systems, their
present and former trustees, officers, Inventors of PATENT RIGHTS, agents,
faculty, employees and students harmless as against any judgments, fees,
expenses, or other costs arising from or incidental to any product liability
or other lawsuit, claim, demand or other action brought as a consequence of
the practice of said inventions by any of the foregoing entities, whether or
not JHU or said Inventors, either jointly or severally, is named as a party
defendant in any such lawsuit. Practice of the inventions covered by LICENSED
PRODUCT{S) and LICENSED SERVICES, by an AFFILIATED COMPANY or an agent or a
sublicensee or a third party on behalf of or for the account of the Company
or by a third party who purchases LICENSED PRODUCT(S) and LICENSED SERVICES
from the Company, shall be considered the Company's practice of said
inventions for purposes of this Paragraph 7.8. The obligation of the Company
to defend and indemnify as set out in this Paragraph 7.8 shall survive the
termination of this Agreement.
7.9 Prior to initial human testing or first commercial sale of any
LICENSED PRODUCT or LICENSED SERVICE as the case may be in any particular
country, the Company shall establish and maintain, in each country in which
Company, an AFFILIATED COMPANY or sublicensee shall test or sell LICENSED
PRODUCT(S) and LICENSED SERVICES, product liability or other appropriate
insurance coverage appropriate to the risks involved in marketing LICENSED
PRODUCT(S) and LICENSED SERVICES and will annually present evidence to JHU
that such coverage is being maintained. Upon JHU's request, the Company will
furnish JHU with a Certificate of Insurance of each product liability
insurance policy obtained and agrees to increase or change the kind of
insurance pertaining to the LICENSED PRODUCT(S) and LICENSED SERVICES at the
request of JHU. JHU shall be listed as an additional insured in Company's
said insurance policies.
7.10 JHU may publish manuscripts, abstracts or the like describing the
PATENT RIGHTS and inventions contained therein provided confidential
information of Company as defined in Paragraph 5.3, is not included or
without first obtaining approval from the Company to include such
confidential information. Otherwise, JHU and the Inventors shall be free to
publish manuscripts and abstracts or the like directed to the work done at
JHU related to the licensed technology without prior approval.
7.11 This Agreement constitutes the entire understanding between the
parties with respect to the obligations of the parties with respect to the
subject matter hereof, and supersedes
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and replaces all prior agreements, understandings, writings, and discussions
between the parties relating to said subject matter.
7.12 This Agreement may be amended and any of its terms or conditions may
be waived only by a written instrument executed by the authorized officials
of the parties or, in the case of a waiver, by the party waiving compliance.
The failure of either party at any time or times to require performance of
any provision hereof shall in no manner affect its right at a later time to
enforce the same. No waiver by either party of any condition or term in
anyone or more instances shall be construed as a further or continuing waiver
of such condition or term or of any other condition or term.
7.13 This Agreement shall be binding upon and inure to the benefit of and
be enforceable by the parties hereto and their respective successors and
permitted assigns. .
7.14 Upon termination of this Agreement for any reason, Paragraphs 5.3,
6.6, 7.6, 7.7 and 7.8 and 7.9 shall survive termination of this Agreement.
IN WITNESS WHEREOF the respective parties hereto have executed this
Agreement by their duly authorized officers on the date appearing below their
signatures.
THE XXXXX XXXXXXX UNIVERSITY BIOPHAN TECHNOLOGIES, Inc.
By By
Xxxxxxx X. Xxx, Ph.D. Xxxxxxx Xxxxxx, CEO
Assistant Xxxx and Executive Director
Licensing and Business Development
School of Medicine
Date: May 17, 2002 Date 4/24/2002
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