EX-10.3
OPTIOIN TO EXCLUSIVE LICENSE AGREEMENT
OPTION TO EXCLUSIVE LICENSE AGREEMENT
This Option Agreement (the "Agreement") is entered into as of
June 20, 2005 (the "Effective Date") by and between The Research
Foundation of State University of New York, a New York non-profit
corporation ("Foundation"), for and on behalf of the University at
Buffalo, and Senz-It Inc., a company with a principal address located
at 0000 XxxXxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxxxx Xxxxx, Xxxxxxxxxx
00000 ("Optionee").
RECITALS
A. Foundation owns rights to certain intellectual property and
technology developed by University at Buffalo and disclosed and
described in the IPD dockets referenced in Attachment A to this
Agreement.
B. Foundation desires to grant to Optionee, and Optionee
desire to accept, an option to negotiate an exclusive, royalty-
bearing license to use and otherwise exploit the Technology Rights
(as hereinafter defined) on terms and in fields of use mutually
agreed upon between the parties.
NOW THEREFORE, in consideration of the mutual covenants and
premises herein contained, the parties agree as follows:
1. DEFINITIONS
1.1 "Fields" means the following fields of use: homeland
security; environmental; artificial olfactory sense detection; and
medical.
1.2 "Licensed Method" means any method or process that uses
Technology Rights or any part thereof, or which uses a Licensed
Product.
1.3 "Licensed Product" means any product that cannot be
developed, manufactured, used or sold without utilizing Licensed
Subject Matter.
1.4 "Licensed Subject Matter" means inventions and discoveries
covered by Technology Rights.
1.5 "Option Period" means the period of time commencing on the
Effective Date and ending on the earlier of (a) three months from the
date the Option is exercised pursuant to Paragraph 3.3 of this
Agreement, or (b) the six month anniversary of the Effective Date if
Optionee does not exercise the Option by that date, or (c) the
termination date if this Agreement is terminated pursuant to
Paragraph 5.4, 5.5 or 5.6, or (d) the effective date of a final
license agreement if the parties finalize a license agreement during
the Option Period.
1.6 "Patent Rights" means Foundation's patent rights to any
subject matter claimed in or covered by (a) any pending or issued
United States or foreign patent or any patent application listed on
Attachment A attached hereto, including any reissues or
reexaminations thereof; (b) all divisional or continuation
applications of the patents or patent applications listed on
Attachment A; and (c) any patents issued on continuation or
divisional applications, including reissues and reexaminations, of
the patents and patent applications listed in Attachment A attached
hereto.
1.7 "Technology Rights" means (a) Foundation's intellectual
property rights in know-how or proprietary or confidential
information related to the inventions disclosed in IPD docket nos. R-
5449, R-5516, R-5729, R-5767, R-5821, R-5828, R-5834, R-5843, R-5894,
R-5896, R-R-5898, R-5899, R-5902, and R-5914 which were developed by
the inventors on or before the Effective Date and which Foundation is
free to disclose to Optionee, and (b) the Patent Rights.
2. WARRANTIES
2.1 FOUNDATION MAKES NO REPRESENTATIONS OR WARRANTIES,
EXPRESSED OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE REGARDING OR
WITH RESPECT TO THE LICENSED SUBJECT MATTER OR ANY LICENSED PRODUCT
OR LICENSED METHOD. FOUNDATION MAKES NO WARRANTY OR REPRESENTATION
AS TO THE VALIDITY OR SCOPE OF THE PATENT RIGHTS OR THAT ANY LICENSED
PRODUCT WILL BE FREE FROM AN INFRINGEMENT OF PATENTS OF THIRD
PARTIES, OR THAT NO THIRD PARTIES ARE IN ANY WAY INFRINGING PATENT RIGHTS.
2.2 Optionee understands that the Technology Rights may have
been developed under a funding agreement with the Government of the
United States of America and, if so, that the Government may have
certain rights relative thereto. This Agreement is explicitly made
subject to the Government's rights under any such agreement and any
applicable law or regulation. To the extent that there is a conflict
between any such agreement, applicable law or regulation and this
Agreement, the terms of such Government agreement, applicable law or
regulation will prevail.
2.3 Optionee understands and acknowledges that Foundation, by
this Agreement, makes no representation as to the operability or
fitness for any use, safety, efficacy, ability to obtain regulatory
approval, patentability, and/or breadth of the Licensed Subject
Matter. Foundation, by this Agreement, also makes no representation
as to whether there are any patents now held, or which will be held,
by others or by Foundation, nor does Foundation make any
representation that the inventions contained in Patent Rights do not
infringe any other patents now held or that will be held by others or
by Foundation. Foundation shall not be liable for any losses incurred
as the result of an action for infringement brought against Optionee
as the result of Optionee's exercise of any right granted under this
Agreement. The decision to defend or not defend shall be in
Optionee's sole discretion.
2.4 Optionee, by execution hereof, acknowledges, covenants and
agrees that it has not been induced in anyway by Foundation or
University at Buffalo, or any of their employees, to enter into this
Agreement, and further warrants and represents that (i) it has
conducted sufficient due diligence with respect to all items and
issues pertaining to this Article 2 and all other matters pertaining
to this Agreement; and (ii) Optionee has adequate knowledge and
expertise, or has utilized knowledgeable and expert consultants, to
adequately conduct the due diligence, and agrees to accept all risks
inherent herein.
3. OPTION FOR EXCLUSIVE LICENSE
3.1 Subject to the terms of this Agreement (including
Paragraphs 3.3, 3.4 and 3.5), Foundation hereby grants Optionee an
option (the "Option") to enter into an exclusive, royalty bearing,
worldwide license to use and otherwise exploit the Technology Rights
in the Fields agreed to by the parties, including the right to make,
have made, use, sell and offer to sell Licensed Products and practice
Licensed Methods, pursuant to the terms of a definitive license
agreement agreed upon between the parties (a "License Agreement").
3.2 Foundation shall not enter into any license or other option
agreement during the Option Period that grants rights in the
Technology Rights to another party.
3.3 Optionee may exercise the Option at any time by delivering to
Foundation a written notice of its intent to exercise the Option on
or before the six (6) month anniversary of the Effective Date. Such
notice shall (a) describe the products/and processes which would be
based on or utilize the Technology Rights that Optionee wishes to
commercialize; and (b) will also include a preliminary
commercialization plan ("Commercialization Plan") for such products
and/or processes which outlines Optionee's plans and capabilities for
commercializing the identified products and processes. Upon
Foundation's receipt of such notice and the Commercialization Plan
from Optionee, the parties shall enter into good faith negotiations
with respect to the terms of a License Agreement, and shall
diligently continue such negotiations during the remainder of the
Option Period. In order to receive an exclusive license to a Field,
Licensee's Commercialization Plan must (a) demonstrate Optionee's
ability to commercialize Licensed Products and/or Licensed Methods in
a Field, and (b) outline a reasonable plan for commercializing the
Licensed Subject Matter in the Field.
3.4 The terms and conditions of the License Agreement entered into
by the parties shall be based on the terms of Foundation's standard
license agreement and will include: payment of all past and future
patent costs associated with the Patent Rights; a 3% royalty on gross
sales; a $25,000 license issue fee; and a 10% equity interest in
Licensee. The terms of a License Agreement entered into by the
parties may also include, without limitation, (a) other payment and
consideration for the license (i.e., sublicensing fees, annual
minimums); (b) due diligence provisions and milestones; and (c) other
terms that may be reasonable, usual, and customary to similar license
agreements, all in conformity with the United States Constitution and
laws of the State of New York and Foundation's rules and regulations
and policies. If the parties enter into a License Agreement, Optionee
will also provide the following additional funding and development
work to Optionor:
a. Optionee will sponsor research at Foundation for a five
year period after (1) the License Agreement is signed,
and (2) Optionee is funded. Optionee will provide
Foundation with unrestricted research funds in accordance
with the following schedule: $25,000 for the first year,
$50,000 for the second year, $75,000 for the third year,
$100,000 for the fourth year and for $125,000 for the
fifth year. The research funded by these funds does not
need to relate to the Technology Rights, and may be used
by the inventors (see Attachment A) for the research
projects of their choosing.
b. In addition, if it is practical for "engineering
development" work related to the Licensed Subject Matter
to be done in the inventors' lab(s), these costs will be
paid for by Optionee and are in addition to the funding
described above in Section 3.4(a).
3.5 If the parties fail to enter into a License Agreement during
the Option Period, then Foundation shall be free to market and
license the Licensed Subject Matter to third parties with no further
obligation to Optionee.
4. RESERVED
5. TERM AND TERMINATION
5.1 This Agreement shall terminate or expire on the last day of
the Option Period.
5.2 If Optionee does not exercise the Option by providing
written notice as required by Paragraph 3.3, this Agreement shall
terminate on the six (6) month anniversary of the Effective Date.
5.3 If Optionee exercises the Option by providing written
notice as required by Paragraph 3.3, this Agreement shall expire upon
the effective date of the License Agreement; provided, however, that
if the parties have not entered into a License Agreement prior to
three months from the date the Option is exercised pursuant to
Paragraph 3.3 of this Agreement, this Agreement shall expire on the
three month anniversary of the date the Option is exercised.
5.4 Optionee may terminate this Agreement at any time by giving
thirty (30) days written notice to Foundation.
5.5 This Agreement shall terminate automatically (a) if
Optionee shall commence any case, proceeding or other action under
any existing or future law of any jurisdiction relating to bankruptcy
seeking to have an order for relief entered with respect to it, (b)
if there shall be commenced against the Optionee any case, proceeding
or other action of a nature referred to in clause (a) above, (c) upon
the appointment of a receiver, trustee, custodian, conservator or
other similar official for Optionee or all or a substantial part of
Optionee's assets, (d) if Optionee ceases to attempt to carry on its
business or (e) if Optionee shall make a general assignment for the
benefit of its creditors.
5.6 In the event of a default or failure by Optionee to perform
any of the terms, covenants or provisions of this Agreement, the
Optionee shall have thirty (30) days after the giving of written
notice of such default by Foundation to correct such default. If such
default is not corrected within the thirty (30) day cure period,
Foundation shall have the right, at its option, to cancel and
terminate this Agreement.
5.7 If the Agreement is terminated prior to its scheduled
expiration, the Option Period shall also terminate as of the
Agreement termination date.
6. PAYMENT
6.1 In consideration of the grant of the Option hereunder,
Optionee agrees to pay to Foundation a nonrefundable option fee of
Four Thousand U.S. Dollars ($4,000) within five (5) business days of
the Effective Date.
6.2 All payments under this Agreement are to be paid in U.S.
dollars, checks payable to the order of The Research Foundation of
State University of New York and mailed to the attention of the
Foundation's Licensing Specialist at the address in Paragraph 10.6 below.
7. INFORMATION AND CONFIDENTIALITY
7.1 The parties may disclose Confidential Information (as
hereinafter defined) to each other, from time to time, in connection
with work contemplated under this Agreement. "Confidential
Information" means all confidential and/or proprietary information
provided by one party to the other hereunder which relates to the
Technology Rights or the development or commercialization thereof.
Each party will only disclose the other party's Confidential
Information to those of its employees as is reasonably necessary to
effectuate the purposes set forth in this Agreement. Each party will
use reasonable efforts to prevent the disclosure of any of the
disclosing party's Confidential Information to third parties for a
period of five (5) years from receipt thereof, and will only use the
disclosing party's Confidential Information for evaluating a
potential license arrangement between the parties, provided that the
recipient party's obligations will not apply to information that:
a. is already in the recipient party's possession at the
time of disclosure thereof and not obtained directly or
indirectly from the other;
b. is or later becomes available to the public through no
fault of the recipient party;
c. is lawfully acquired from a third party having no
obligations of confidentiality to the disclosing party;
d. is independently developed by the recipient party; or
e. is required by law or regulation to be disclosed.
7.2 In the event that information is required to be disclosed
under Paragraph 7.1(e) above, the party required to make disclosure
will promptly notify the other to allow that party to assert whatever
exclusions or exemptions may be available to it under such law or
regulation.
8. PATENTS AND INTELLECTUAL PROPERTY
Foundation will maintain management of patent prosecution for
applications and patents associated with the Licensed Subject Matter
during the term of the Option Period, and will consult with Optionee
on decisions relating to such patent prosecution. Optionee will
reimburse Optionor for any patent expenses incurred by Optionor in
connection with the Technology Rights during the Option Period.
9. INDEMNIFICATION
Optionee shall hold harmless and indemnify Foundation, the
University at Buffalo, their regents, officers, employees, and agents
from and against any claims, demands, damages, liabilities, causes of
action and expenses (including reasonable attorneys' fees) whatsoever
to the extent caused by or resulting from the exercise or practice of
the Option by Optionee, its subsidiaries, or their officers,
employees, agents or representatives.
10. RESERVED
11. GENERAL PROVISIONS
11.1 This Agreement may not be assigned by either party without
the prior written consent of the other party.
11.2 This Agreement constitutes the entire and only agreement
between the parties relating to the Option, and all prior
negotiations, representations, agreements and understandings are
superseded hereby. No agreements altering or supplementing the terms
hereof may be made except by written mutual agreement by the parties.
11.3 The relationship between Foundation and Optionee is that of
independent contractors. Foundation and Optionee are not joint
ventures, partners, principal and agent, master and servant, employer
or employee, and have no other relationship other than independent
contracting parties. Foundation will have no power to bind or
obligate Optionee in any manner, other than as is expressly set forth
in this Agreement. Likewise Optionee will have no power to bind or
obligate Foundation in any manner, other than as is expressly set
forth in this Agreement.
11.4 If any provision of this Agreement is ultimately held
to be invalid, illegal or unenforceable, the validity, legality and
enforceability of the remaining provisions will not in any way be
affected or impaired thereby.
11.5 Any delay in enforcing a party's right under this Agreement
or any waiver as to a particular default or other matter will not
constitute a waiver of such party's rights to the future enforcement
of its rights under this Agreement, except only as to an express
written and signed waiver to a specific matter for a specific period
of time.
11.6 Any notice required by this Agreement will be given by
personal delivery (including delivery by reputable messenger services
such as Federal Express) or by prepaid, first class, certified mail,
return receipt requested, addressed in the case of Foundation to:
UB Office of Science, Technology Transfer and Economic Outreach
Intellectual Property Division
University at Buffalo Technology Incubator
Xxxxx Research Park
0000 Xxxxx Xxxx Xxxx
Xxxxxxx, XX 00000
Attn: Intellectual Property Division Director
or in the case of Optionee to:
Senz-It, Inc.
0000 XxxXxxxxx Xxxxxxxxx, Xxxxx 000
Xxxxxxx Xxxxx, XX 00000
Attn: Xxxx Xxxxxx
or at such other addresses as may be given from time to time in
accordance with the terms of this notice provision.
11.7 This Agreement will be governed by, construed, and enforced
in accordance with the internal laws of the State of New York. The
parties hereby consent to the jurisdiction of the courts of the State
of New York over any dispute concerning this Agreement or the
relationship between the parties.
11.8 This Agreement may be executed in two or more
counterparts, each of which shall be deemed to be an original, but
all of which together shall constitute one agreement binding on the
parties, notwithstanding that both parties are not signatories to the
original or the same counterpart.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
THE RESEARCH FOUNDATION OF STATE
UNIVERSITY OF NEW YORK, FOR AND
ON BEHALF OF UNIVERSITY AT BUFFALO SENZ-IT INC.
By: /s/ Xxxxxx X. Xxxxx By: /s/ Xxxxxxxxx X. Xxxxxx
Xxxxxx X. Xxxxx D.D.S., Ph.D. Xxxxxxxxx X. Xxxxxx
Title: Vice Xxxxxxx Title: President
Director of the UB Office of Science,
Technology Transfer & Economic Outreach
Date: June 20, 2005 Date: June 20, 2005
Attachment A
Patents and Patent Applications
Patent or
Application Title (RF Docket Faculty
Number Location Number) Filed Assignee Inventors Sponsor
6,241,948 US patent Low Power Solid- Issued Research Bright, Office of
State Sensor 6/5/2001 Foundation Jordan, Naval
Device (R 5449) Xxxxxxx, Research
Xxxxxx
6,492,182 US patent Micromachined Issued Research Bright, Office of
Microsensor 12/10/2002 Foundation Xxxxx, Naval
Arrays for Xxxxx, Research
Chemical Sensing Xxxxxx
Applications
(R 5516)
6,582,966 US patent Micromachined Issued Research Bright, Office of
(divisional) Microsensor 6/24/2003 Foundation Xxxxx, Naval
Arrays for Xxxxx, Research
Chemical Sensing Xxxxxx
Applications
(R 5516)
6,589,438 US patent Micromachined Issued Research Bright, Office of
(divisional) Microsensor 7/8/2003 Foundation Xxxxx, Naval
Arrays for Xxxxx, Research
Chemical Sensing Xxxxxx
Applications
(R 5516)
60/351,592 US Pin Printed Filed Research Bright, Cho National
provisional Chemical Sensor 1/25/2002 Foundation Science
Array for Foundation
Simultaneous Multi-
Analyte
Detection
(R 5729)
10/351,109 US Pin Printed Filed Research Bright, Cho National
provisional Chemical Sensor 1/24/2003 Foundation Science
continuation- Array for Foundation
in-part Simultaneous
Multi-Analyte
Detection
(R 5729)
10/948,062 US non- CMOS Optical Filed Research Bright, Titus National
provisional Detectors 9/23/2004 Foundation Science
and Lock-In Foundation
Amplifiers Used
for Detection of
Emission from
Sensor Array
Platforms
(R5767)
Applied; US non- Site Selectively Filed Research Bright National
serial provisional Tagged and 12/8/2004 Foundation Science
number Templated Foundation
pending Xerogels
for Sensor
Applications
(R 5821)
PCT/US04/ US PCT Site Selectively Filed Research Bright National
Tagged and 12/8/2004 Foundation Science
Templated Foundation
Xerogels
for Sensor
Applications
(R 5821)
Applied; US non- Protein Imprinted Filed Research Bright National
serial provisional Xerogels with 1/7/2005 Foundation Science
number Integrated Foundation
pending Emission Sites
(PIXIES)
(R 5828)
PCT/US04/ US PCT Protein Imprinted Filed Research Bright National
Xerogels with 1/7/2005 Foundation Science
Integrated Foundation
Emission Sites
(PIXIES)
(R 5828)
10/945,344 US non- Temporally Filed Research Bright, None
provisional Addressable 9/20/2004 Foundation Xxxxxxxxxx,
Biochemical Xxxxx
Sensor Arrays
(R 5834)
10/957,254 US non- Sensor Elements Filed Research Bright, None
provisional for Aqueous 10/1/2004 Foundation Xxxxxxxxxx,
Samples (SEAS) Xxxxx
(R 5843)
60/551,818 US Photonic Sensor Filed Research Bright, National
provisional Arrays 3/10/2004 Foundation Xxxxxxxx Science
Based on a Foundation
Non-Electrical
Light Source
(R 5894)
60/551,818 US High Stability Filed Research Bright Office of
provisional Xerogel-Based 3/10/2004 Foundation Naval Research
Sensors with
Linear Calibration
Curves (R 5896)
60/551,818 US Diversified Xerogel- Filed Research Bright National
provisional Based Sensors to 3/10/2004 Foundation Science
Improved Analyte Foundation
Detection and
Quantification
(R 5898)
60/551,818 US Tailored Pins for Filed Research Bright, Xxxxx National
provisional High Density 3/10/2004 Foundation Science
Microarray Foundation
Production (R 5899)
60/551,818 US Chemically Filed Research Bright, National
provisional Responsive 3/10/2004 Foundation Xxxxxxxx Science
Nanosensors with Foundation
Integrated Light
Sources (R 5902)
Data from US non- Diversified To be filed Research Bright National
R-5914 provisional Chemical Foundation Science
will be Responses from a Foundation
included Single Chemical
when Sensor (R 5914)
converting
provisional
filed
for R-5894,
5896, 5898,
5899, &
5902 to
non-
provisional
