PATENT AND TECHNOLOGY LICENSE AGREEMENT
This AGREEMENT ("AGREEMENT") is made on this 24th day of July, 2003 between U.S.
Global Nanospace, Inc., a Delaware corporation, having a principal place of
business at 0000 Xxxxx Xxxxxx, Xxxxx 0000, Xxxxxx Xxxx, Xxxxxx 00000
("LICENSEE") and TIAX LLC, a Delaware limited liability company having a
principal place of business located at 00 Xxxxx Xxxx, Xxxxxxxxx, Xxxxxxxxxxxxx
00000 ("LICENSOR").
TABLE OF CONTENTS
RECITALS Page 1
I. EFFECTIVE DATE Page 1
II. DEFINITIONS Page 2
III. LICENSE Page 3
IV. CONSIDERATION, PAYMENTS AND REPORTS Page 4
V. SPONSORED RESEARCH Page 5
VI. PATENTS AND INVENTIONS Page 6
VII. INFRINGEMENT BY THIRD PARTIES Page 6
VIII. PATENT MARKING Page 6
IX. INDEMNIFICATION Page 6
X. USE OF LICENSOR AND COMPONENT'S NAME Page 7
XI. CONFIDENTIAL INFORMATION AND PUBLICATION Page 7
XII. ASSIGNMENT Page 8
XIII. TERMS AND TERMINATION Page 8
XIV. REPRESENTATIONS AND WARRANTIES Page 10
XV. GENERAL Page 11
SIGNATURES Page 12
RECITALS
A. LICENSOR owns certain PATENT RIGHTS and TECHNOLOGY RIGHTS related to
LICENSED SUBJECT MATTER developed by LICENSOR.
B. LICENSOR desires to have the LICENSED SUBJECT MATTER developed in the
LICENSED FIELD.
C. LICENSEE wishes to obtain a license from LICENSOR to practice LICENSED
SUBJECT MATTER.
NOW, THEREFORE, in consideration of the mutual covenants and premises herein
contained, the parties agree as follows:
I. EFFECTIVE DATE
1.1 This AGREEMENT is effective as of the date written above ("EFFECTIVE DATE").
II. DEFINITIONS
As used in this AGREEMENT, the following terms have the meanings indicated:
2.1 AFFILIATE means any business entity more than fifty percent (50%) owned by
LICENSEE, any business entity which owns more than fifty percent (50%) of
LICENSEE, or any business entity that is more than fifty percent (50%) owned by
a business entity that owns more than fifty percent (50%) of LICENSEE.
2.2 LICENSED FIELD means non-hazardous bio-decontamination by or through the use
of an aqueous, sprayable foam.
2.3 LICENSED PRODUCTS means any product or service SOLD by LICENSEE comprising
LICENSED SUBJECT MATTER pursuant to this AGREEMENT
2.4 LICENSED SUBJECT MATTER means inventions and discoveries covered by PATENT
RIGHTS or TECHNOLOGY RIGHTS within LICENSED FIELD.
2.5 LICENSED TERRITORY means world-wide, subject to any export control or
similar restrictions.
2.6 NET SALES means the gross revenues received by LICENSEE from the SALE of
LICENSED PRODUCTS less sales discounts actually granted, sales and/or use taxes
actually paid, import and/or export duties actually paid, outbound
transportation actually prepaid or allowed, and amounts actually allowed or
credited due to returns (not exceeding the original billing or invoice amount).
2.7 PATENT RIGHTS means LICENSOR's rights in information or discoveries claimed
in invention disclosures, patents, and/or patent applications, whether domestic
or foreign, and all divisionals, continuations, continuations-in-part, reissues,
reexaminations or extensions thereof, and any letters patent that issue thereon
as defined in Exhibit I attached hereto.
2.8 SALE or SOLD means the transfer or disposition of a LICENSED PRODUCT for
value to a party other than LICENSEE or AFFILIATE.
2.9 TECHNOLOGY RIGHTS means LICENSOR's rights in any technical information,
know-how, processes, procedures, compositions, devices, methods, formulae,
protocols, techniques, software, designs, drawings or data created by the
inventor(s) listed in Exhibit I by LICENSOR before the EFFECTIVE DATE which are
not claimed in PATENT RIGHTS but which are necessary for practicing PATENT
RIGHTS.
III. LICENSE
3.1 LICENSOR hereby grants to LICENSEE a royalty-bearing, exclusive license
under LICENSED SUBJECT MATTER to manufacture, have manufactured, use, import,
offer to sell and/or sell LICENSED PRODUCTS within LICENSED TERRITORY for use
within LICENSED FIELD and, subject to Section 4.6 herein, will extend to
LICENSOR's undivided interest in any LICENSED SUBJECT MATTER developed during
the term of this AGREEMENT and jointly owned by LICENSOR and LICENSEE. This
grant is subject to Sections 14.2 and 14.3 hereinbelow, the payment by LICENSEE
to LICENSOR of all consideration as provided herein, and is further subject to
the following rights retained by LICENSOR:
(a) The right to publish the general scientific findings from research related
to LICENSED SUBJECT MATTER, subject to the terms of Article XI
(Confidential Information and Publication); and
(b) The right to use LICENSED SUBJECT MATTER for all other purposes.
3.2 LICENSEE may extend the license granted herein to any AFFILIATE provided
that the AFFILIATE consents in writing to be bound by this AGREEMENT to the same
extent as LICENSEE. LICENSEE agrees to deliver such contract to LICENSOR within
thirty (30) days of execution thereof.
3.3 LICENSEE may grant sublicenses under LICENSED SUBJECT MATTER consistent with
the terms of this AGREEMENT provided that LICENSEE obtains the prior written
consent of LICENSOR, which consent shall not be unreasonably withheld, and
further provided that LICENSEE is responsible for its sublicensees relevant to
this AGREEMENT, and for diligently collecting all amounts due LICENSEE from
sublicensees. If a sublicensee pursuant hereto becomes bankrupt, insolvent or is
placed in the hands of a receiver or trustee, LICENSEE, to the extent allowed
under applicable law and in a timely manner, agrees to use its best reasonable
efforts to collect all consideration owed to LICENSEE and to have the sublicense
agreement confirmed or rejected by a court of proper jurisdiction.
3.4 LICENSEE must deliver to LICENSOR a true and correct copy of each sublicense
granted by LICENSEE, and any modification or termination thereof, within thirty
(30) days after execution, modification, or termination.
3.5 When this AGREEMENT is terminated, LICENSOR agree to accept as successors to
LICENSEE, existing sublicensees in good standing at the date of termination
provided that the sublicensees consent in writing to be bound by all of the
terms and conditions of this AGREEMENT.
IV. CONSIDERATION, PAYMENTS AND REPORTS
4.1 In consideration of rights granted by LICENSOR to LICENSEE under this
AGREEMENT, LICENSEE agrees to pay the following:
(a) All reasonable out-of-pocket expenses incurred by LICENSOR in enforcing
and maintaining PATENT RIGHTS, and all such future expenses incurred by
LICENSOR, for so long as, and in such countries as, this AGREEMENT remains
in effect. LICENSOR will invoice LICENSEE within thirty (30) days of the
EFFECTIVE DATE for expenses incurred as of that time and on a quarterly
basis thereafter. The invoiced amounts will be due and payable by LICENSEE
within thirty (30) days of invoice; and
(b) A nonrefundable license fee equal to $120,000, payable in four (4) equal
installments. The first payment will be due and payable on January 31,
2004, and the remaining three (3) payments will be made on a quarterly
basis thereafter (on June 30, 2004, September 30, 2004 and December 31,
2004). LICENSEE will be invoiced for said amounts by LICENSOR; and
(c) A running royalty equal to six percent (6%) of LICENSEE's NET SALES of
LICENSED PRODUCTS will be applicable on NET SALES in excess of the first
One Million Dollars ($1,000,000); and
(d) Minimum annual royalties of Sixty Thousand Dollars ($60,000.00), which
will be payable within thirty (30) days after March 31, June 30, September
30, and December 31 of each year during the term of this AGREEMENT, with
the first payment due within thirty (30) days after March 31, 2005; and
(e) Up to fifty percent (50%) of all consideration received by LICENSEE from
either (i) any sublicensee pursuant to Sections 3.3 and 3.4 herein above,
or (ii) any assignee pursuant to Section 12.1 hereinbelow, including but
not limited to, royalties, upfront payments, marketing, distribution,
franchise, option, license, or documentation fees, bonus and milestone
payments and equity securities. The amount due under this Section 4.1(e)
shall be fixed by mutual agreement of LICENSEE and LICENSOR.
4.2 The payments under Sections 4.1(c) are payable within thirty (30) days after
March 31, June 30, September 30, and December 31 of each year during the term of
this AGREEMENT, at which time LICENSEE will also deliver to LICENSOR a true and
accurate report, giving such particulars of the business conducted by LICENSEE
and its sublicensees, if any exist, during the preceding three (3) calendar
months under this AGREEMENT as necessary for LICENSOR to account for LICENSEE's
payments hereunder. This report will include pertinent data, including, but not
limited to:
(a) the total quantities of LICENSED PRODUCTS produced; and
(b) the total SALES; and
(c) the calculation of NET SALES and royalties thereon; and
(d) the total royalties (and/or minimum royalties) so computed and due
LICENSOR; and
(e) all other amounts due LICENSOR herein.
Simultaneously with the delivery of each such report, LICENSEE agrees to pay
LICENSOR the amount due, if any, for the period of such report. These reports
are required even if no payments are due.
4.3 During the term of this AGREEMENT and for three (3) years thereafter,
LICENSEE agrees to keep complete and accurate records of its and its
sublicensees' SALES and NET SALES of LICENSED PRODUCTS in sufficient detail to
enable the royalties payable hereunder to be determined. LICENSEE shall permit
LICENSOR or its representatives, at LICENSOR'S expense, to periodically examine
LICENSEE'S books, ledgers and records during regular business hours for the
purpose of and to the extent necessary to verify any report required under this
AGREEMENT. If the amounts due LICENSOR are determined to have been underpaid in
an amount equal to or greater than five percent (5%) of the total amount due
during the period so examined, then LICENSEE will pay the cost of the
examination plus the accrued interest at the highest allowable rate.
4.4 Within thirty (30) days of each anniversary of the EFFECTIVE DATE, LICENSEE
will deliver to LICENSOR a written progress report as to LICENSEE'S (and any
sublicensee's) efforts and accomplishments during the preceding year in
diligently commercializing LICENSED SUBJECT MATTER in the LICENSED TERRITORY and
LICENSEE's (and sublicensees') commercialization plans for the upcoming year.
4.5 All amounts payable hereunder by LICENSEE will be paid in United States
funds without deductions for taxes, assessments, fees, or charges of any kind.
Checks are to be made payable to TIAX LLC, X.X. Xxx 000000, Xxxxxx, XX
00000-0000, or by wire transfer to Citizens Bank, 0 Xxxxxxxx Xxxxx, Xxxxxxxxx,
XX 00000; Routing Number: 000000000; Account Number: 1135538317; Account Name:
TIAX LLC.
4.6 No payments due or royalty rates owed under this AGREEMENT will be reduced
as the result of co-ownership of LICENSED SUBJECT MATTER by LICENSOR and (i)
U.S. government agencies, and/or (ii) another party, including, but not limited
to, LICENSEE, except to the extent such co-ownership legally or effectively
reduces or limits LICENSEE's ability to derive the full benefit of the rights
granted to it under Section 3.1 of this Agreement.
V. SPONSORED RESEARCH
5.1 If LICENSEE desires to sponsor research for or related to the LICENSED
SUBJECT MATTER, and particularly where LICENSEE receives payments for sponsored
research pursuant to a sublicense under this AGREEMENT, LICENSEE will first
notify LICENSOR in writing of all opportunities to conduct this sponsored
research. LICENSOR shall have the right to approve or disapprove any such
sponsored research, provided that such approval shall not be unreasonably
withheld.
VI. PATENTS AND INVENTIONS
6.1 If after consultation with LICENSEE both parties agree that a new patent
application should be filed for LICENSED SUBJECT MATTER, LICENSOR will prepare
and file appropriate patent applications, and LICENSEE will pay the cost of
searching, preparing, filing, prosecuting and maintaining same. If LICENSEE
notifies LICENSOR that it does not intend to pay the cost of an application, or
if LICENSEE does not respond or make an effort to agree with LICENSOR on the
disposition of rights of the subject invention, then LICENSOR may file such
application at its own expense and LICENSEE will have no rights to such
invention. LICENSOR will provide LICENSEE with a copy of the application for
which LICENSEE has paid the cost of filing, as well as copies of any documents
received or filed during prosecution thereof.
VII. INFRINGEMENT BY THIRD PARTIES
7.1 LICENSEE, at its expense, shall have the right to enforce any patent
exclusively licensed hereunder against infringement by third parties. LICENSEE
shall be entitled to retain recovery from such enforcement. LICENSEE agrees to
pay LICENSOR a royalty on any monetary recovery if the monetary recovery is for
damages or a reasonable royalty in lieu thereof. LICENSEE must notify LICENSOR
in writing of any potential infringement within thirty (30) days of knowledge
thereof. If LICENSEE does not file suit against a substantial infringer within
six (6) months of knowledge thereof, then LICENSOR may, in its sole discretion
and at its sole expense, enforce any patent licensed hereunder on behalf of
itself and LICENSEE.
7.2 In any suit or dispute involving an infringer, the parties agree to
cooperate fully with each other. At the request and expense of the party
bringing suit, the other party will permit access during regular business hours,
to all relevant personnel, records, papers, information, samples, specimens, and
the like in its possession.
VIII. PATENT MARKING
8.1 LICENSEE agrees that all packaging containing individual LICENSED
PRODUCT(S), documentation therefor, and when possible for actual LICENSED
PRODUCT(S) SOLD by LICENSEE, AFFILIATES, and/or sublicensees of LICENSEE will be
permanently and legibly marked with the number of the applicable patent(s)
licensed hereunder in accordance with each country's patent laws, including
Xxxxx 00, Xxxxxx Xxxxxx Code.
IX. INDEMNIFICATION
9.1 LICENSEE agrees to hold harmless and indemnify LICENSOR, its members,
managers, officers, employees and agents from and against any claims, demands,
or causes of action whatsoever, costs of suit and reasonable attorney's fees,
including without limitation, those costs arising on account of any injury or
death of persons or damage to property caused by, or arising out of, or
resulting from, the exercise or practice of the rights granted hereunder by
LICENSEE, its officers, its AFFILIATES or their officers, employees, agents or
representatives, except in the case of gross negligence or willful misconduct on
the part of LICENSOR.
9.2 LICENSEE shall use its best efforts to require any purchaser an/or
manufacturer of LICENSED PRODUCTS to give evidence of insurance naming LICENSEE
and LICENSOR as an insured parties, including comprehensive general liability
insurance with limits of not less than one million dollars ($1,000,000) per
occurrence for bodily injury and one million dollars ($1,000,000) per occurrence
for property damage. LICENSEE shall immediately notify LICENSOR if any purchaser
and/or manufacturer refuses to provide such evidence of insurance.
X. USE OF LICENSOR AND COMPONENT'S NAME
10.1 LICENSEE will not use the name of (or the name of any employee of) LICENSOR
in any advertising, promotional or sales literature or on its Web site or for
the purpose of raising capital without the advance express written consent of
LICENSOR. Notwithstanding the above, LICENSEE may use the name of (or the name
of any employee of) LICENSOR in routine business correspondence, or as needed in
appropriate regulatory submissions without express written consent.
XI. CONFIDENTIAL INFORMATION AND PUBLICATION
11.1 LICENSOR and LICENSEE each agree that all information contained in
documents marked "confidential" or "proprietary" and forwarded to one by the
other (i) are to be received in strict confidence, (ii) used only for the
purposes of this AGREEMENT, and (iii) not disclosed by the recipient party
(except as required by law or court order), its agents or employees without the
prior written consent of the other party, except to the extent that the
recipient party can establish competent written proof that such information:
(a) was in the public domain at the time of disclosure; or
(b) later became part of the public domain through no act or omission of the
recipient party, its employees, agents, successors or assigns; or
(c) was lawfully disclosed to the recipient party by a third party having the
right to disclose it; or
(d) was already known by the recipient party at the time of disclosure; or
(e) was independently developed by the recipient without use of the other
party's confidential information; or
(f) is required by law or regulation to be disclosed.
11.2 Each party's obligation of confidence hereunder will be fulfilled by using
at least the same degree of care with the other party's confidential information
as it uses to protect its own confidential information, but always at least a
reasonable degree of care. This obligation will exist while this AGREEMENT is in
force and for a period of three years thereafter.
11.3 LICENSOR reserves the right to publish the general scientific findings from
research related to LICENSED SUBJECT MATTER, with due regard to the protection
of LICENSEE's confidential information. LICENSOR will submit the manuscript of
any proposed publication to LICENSEE at least thirty (30) days before
publication, and LICENSEE shall have the right to review and comment upon the
publication in order to protect LICENSEE's confidential information. Upon
LICENSEE's request, publication may be delayed up to sixty (60) additional days
to enable LICENSEE to secure adequate intellectual property protection of
LICENSEE's confidential information that would otherwise be affected by the
publication.
11.4 The foregoing provisions of this Article XI shall be subject to any rights
of, or obligations imposed by any U.S. government agency.
XII. ASSIGNMENT
12.1 Except in connection with the sale of substantially all of LICENSEE's
assets to or merger with a third party, this AGREEMENT may not be assigned by
LICENSEE without the prior written consent of LICENSOR, which will not be
unreasonably withheld.
XIII. TERM AND TERMINATION
13.1 Subject to Sections 13.2, 13.3 and 13.4 hereinbelow, the term of this
AGREEMENT is from the EFFECTIVE DATE to the full end of the term or terms for
which PATENT RIGHTS have not expired, or if only TECHNOLOGY RIGHTS are licensed
and no PATENT RIGHTS are applicable, for a term of fifteen (15) years.
13.2 Any time after five (5) years from the EFFECTIVE DATE, LICENSOR has the
right to terminate this license in any jurisdiction within the LICENSED
TERRITORY if LICENSEE, within ninety (90) days after receiving written notice
from LICENSOR of the intended termination, fails to provide written evidence
satisfactory to LICENSOR that LICENSEE or its sublicensee(s) has commercialized
or is actively and effectively attempting to commercialize a licensed invention
in such jurisdiction(s). The following definitions apply to Section 13.2:
(a) "commercialize" means having SALES of LICENSED PRODUCTS incorporating
PATENT RIGHTS or incorporating TECHNOLOGY RIGHTS in such jurisdiction;
(b) "active attempts to commercialize" means having SALES of LICENSED PRODUCTS
or an effective, ongoing and active research, development, manufacturing,
marketing or sales program as appropriate, directed toward obtaining
regulatory approval, and/or production and/or SALES of LICENSED PRODUCTS
incorporating PATENT RIGHTS or incorporating TECHNOLOGY RIGHTS in any
jurisdiction, and has provided plans acceptable to LICENSOR, in its sole
discretion, to commercialize licensed inventions in the jurisdiction(s)
that LICENSOR intends to terminate.
13.3 Subject to any rights herein which survive termination, this AGREEMENT will
earlier terminate in its entirety:
(a) automatically if LICENSEE becomes bankrupt or insolvent and/or if the
business of LICENSEE shall be placed in the hands of a receiver, assignee,
or trustee, whether by voluntary act of LICENSEE or otherwise; or
(b) upon thirty (30) days written notice from LICENSOR if LICENSEE breaches or
defaults on the payment or report obligations of ARTICLE IV, or use of
name obligations of ARTICLE X, unless, before the end of the thirty (30)
day period, LICENSEE has cured the default or breach to LICENSOR's
satisfaction and so notifies LICENSOR, stating the manner of the cure; or
(c) upon ninety (90) days written notice from LICENSOR if LICENSEE breaches or
defaults on any other obligation under this AGREEMENT, unless, before the
end of the ninety (90) day period, LICENSEE has cured the default or
breach to LICENSOR's satisfaction and so notifies LICENSOR, stating the
manner of the cure; or
(d) at any time by mutual written agreement between LICENSEE and LICENSOR,
upon one hundred eighty (180) days written notice to all parties and
subject to any terms herein which survive termination; or
(e) at LICENSOR's option, if LICENSEE fails to enforce any patent exclusively
licensed hereunder against infringement by third parties pursuant to
Article VII hereof.
(f) if Section 13.2 is invoked.
13.4 Upon termination of this AGREEMENT:
(a) nothing herein will be construed to release either party of any obligation
matured prior to the effective date of the termination; and
(b) LICENSEE and LICENSOR covenant and agree to be bound by the provisions of
Articles IX (Indemnification), X (Use of LICENSOR and Component's Name)
and XI (Confidential Information and Publication) of this AGREEMENT; and
(c) LICENSEE may, after the effective date of the termination, sell all
LICENSED PRODUCTS and parts therefor that it has on hand at the date of
termination, if LICENSEE pays the earned royalty thereon and any other
amounts due pursuant to Article IV of this AGREEMENT; and
(d) LICENSEE grants to LICENSOR a nonexclusive royalty bearing license with
the right to sublicense others with respect to improvements made by
LICENSEE (including improvements licensed by LICENSEE from third parties)
in the LICENSED SUBJECT MATTER. LICENSEE and LICENSOR agree to negotiate
in good faith the royalty rate for the nonexclusive license. LICENSOR's
right to sublicense others hereunder is solely for the purpose of
permitting others to develop and commercialize the entire technology
package.
XIV. REPRESENTATIONS AND WARRANTIES
14.1 Except for the rights, if any, of the Government of the United States of
America as set forth below, LICENSOR represents and warrants its belief that (a)
it is the owner of the entire right, title, and interest in and to LICENSED
SUBJECT MATTER, (b) it has the sole right to grant licenses thereunder, (c) it
has not knowingly granted licenses thereunder to any other entity that would
restrict rights granted hereunder except as stated herein, (d) to the best of
its knowledge, the LICENSED SUBJECT MATTER is free of the rightful claim of any
third party by way of infringement or the like, (e) it has the requisite
corporate power and authority to enter into this AGREEMENT and to carry out the
transactions contemplated by this AGREEMENT, (f) the execution, delivery and
performance of this AGREEMENT and the consummation of the transactions
contemplated by this AGREEMENT have been duly authorized by the requisite
corporate action on the part of LICENSOR, and (g) that the execution and
delivery of this AGREEMENT and the consummation of the transactions contemplated
hereby are not prohibited by, do not violate or conflict with any provision of,
and do not constitute a default under or a breach of: (i) any contract,
agreement or other instrument to which it is a party or by which any of the
assets that are the subject hereof are bound; or (ii) to LICENSOR's knowledge,
any order, writ, injunction decree or judgment of any court or governmental
agency; and
14.2 LICENSEE understands that the LICENSED SUBJECT MATTER 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 shall prevail.
14.3 LICENSEE understands and agrees that LICENSOR, by this AGREEMENT, makes no
representation as to the operability or fitness for any use, safety, efficacy,
approvablity by regulatory authorities, time and cost of development,
patentability, and/or breadth of the LICENSED SUBJECT MATTER. LICENSOR, by this
AGREEMENT, also makes no representation as to whether any patent covered by
PATENT RIGHTS is valid or as to whether there are any patents now held, or which
will be held, by others or by LICENSOR in the LICENSED FIELD, nor does LICENSOR
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
LICENSOR.
14.4 LICENSEE, by execution hereof, acknowledges, covenants and agrees that
LICENSEE has not been induced in any way by LICENSOR or employees thereof to
enter into this AGREEMENT, and further warrants and represents that (a) LICENSEE
has conducted sufficient due diligence with respect to all items and issues
pertaining to this AGREEMENT; and (b) LICENSEE has adequate knowledge and
expertise, or has used knowledgeable and expert consultants, to adequately
conduct such due diligence, and agrees to accept all risks inherent herein,
provided, however, that nothing in this Section 14.4 shall be deemed to limit or
negate LICENSOR's representations and warranties in Section 14.1.
14.5 The representations and warranties provided in this Section XIV shall
survive the termination of this Agreement until their applicable statute of
limitations.
XV. GENERAL
15.1 This AGREEMENT constitutes the entire and only agreement between the
parties for LICENSED SUBJECT MATTER and all other prior negotiations,
representations, agreements and understandings are superseded hereby. No
agreements altering or supplementing the terms hereof will be made except by a
written document signed by both parties.
15.2 Any notice required by this AGREEMENT must be given by prepaid, first
class, certified mail, return receipt requested, and addressed in the case of
LICENSOR to:
TIAX LLC
00 Xxxxx Xxxx
Xxxxxxxxx, XX 00000
ATTENTION: Xxxx X. Xxxxxxx, Executive Vice President
or in the case of LICENSEE to:
US Global Nanospace, Inc.
0000 Xxxxx Xxxxxx , Xxxxx 0000
Xxxxxx Xxxx, XX 00000
ATTENTION: Xxxxxxx X. Xxxxxxx
or other addresses as may be given from time to time under the terms of this
notice provision.
15.3 LICENSEE must comply with all applicable federal, state and local laws and
regulations in connection with its activities pursuant to this AGREEMENT.
15.4 This AGREEMENT will be construed and enforced in accordance with the laws
of the United States of America and of the Commonwealth of Massachusetts. The
Massachusetts State Courts of Middlesex County (or, if there is exclusive
federal jurisdiction, the United States District Court for the District of
Massachusetts) shall have exclusive jurisdiction and venue over any dispute
arising out of this AGREEMENT, and LICENSEE consents to the jurisdiction of such
courts.
15.5 Failure of LICENSOR to enforce a right under this AGREEMENT will not act as
a waiver of right or the ability to later assert that right relative to the
particular situation involved.
15.6 Headings included herein are for convenience only and will not be used to
construe this AGREEMENT.
15.7 If any part of this AGREEMENT is for any reason found to be unenforceable,
all other parts nevertheless will remain enforceable.
IN WITNESS WHEREOF, the parties hereto have caused their duly authorized
representatives to execute this AGREEMENT.
U.S. GLOBAL NANOSPACE, INC. TIAX LLC
By /s/ Xxxx X. Xxxxxxxx By /s/ Xxxx X. Xxxxxxx
-------------------- -------------------
Name: Xxxx X. Xxxxxxxx Name: Xxxx X. Xxxxxxx
Title: Chairman Title: Executive Vice President
Date: _______________, 2003 Date: _______________, 2003
EXHIBIT I
"Development of A Non-hazardous Peptide and Protein-Based Chemical/ Biological
Decontamination System", by Xxxxxx X. Xxxxxx, Xxx., Xxxxx Xxxx, Xxxxxxxxx, XX
00000, Contract No.: DAAD05-98-C-0005, Final Report to: Office of Special
Technology, 00000 Xxxxxxxxx Xx., Xxxx. Xxxx Xxxxxxxxxx, XX 00000 ATTN: Xxxxxxx
X. Xxxxx September 29, 1999
"CHEMICAL AND/OR BIOLOGICAL DECONTAMINATION SYSTEM", Xxxx X. Xxxxxxx; Xxxxxx X.
Xxxxxxxx; Xxxx X. Xxxxx; Xxxxxxx X. Xxxxxx, Provisional Application
(60/179,499); U. S. application; U. S. Application Serial No. 10/182,821, filed
7/31/02 PCT/US 01/4001 - priority date = 2/1/00; international filing date =
2/1/01
National Phase: (EPO/01 918 985.1) - filed 7/31/02
Canada (Serial No 2397075) and Israel - filed 7/31/02
