LICENSE AGREEMENT
EXHIBIT 10.8
University
of Michigan Files 1175, 1356, 1442, 1442d1, 1442d3,
1543,
1543d1, 1720, 2044 and 2115
This
Agreement is effective as of
May
24,
2007
(the
"Effective Date"), between Quick-Med Technologies, Inc. ("LICENSEE") having
the
address in Article 13 below, and the Regents of the University of Michigan,
a
constitutional corporation of the State of Michigan ("MICHIGAN"). LICENSEE
and
MICHIGAN agree as follows:
ARTICLE
1 - DEFINITIONS
1.1 “AFFILIATE”
means any company, corporation, association or business entity that is
controlled by, is in control of, or is under common control with a Party. The
term “control” shall mean a greater than fifty percent (50%) ownership of issued
and outstanding voting interests in a corporation, limited liability company,
partnership or other legal entity, or greater than fifty percent (50%)
ownership
interest in a corporation, limited liability company, partnership or other
legal
entity, directly or indirectly.
1.2
“COMBINATION
PRODUCT” means a combination or bundled product that is sold at a single price
by LICENSEE, an AFFILIATE or a SUBLICENSEE and that includes: (a) a LICENSED
PRODUCT or LICENSED PROCESS and (b) another product or process that is not
covered by the PATENT RIGHTS.
1.3 “EXCLUDED
MOLECULES” means molecules
that have ******** as of the Effective Date, with the exception of ********,
as
identified in Schedule 2.
1.4 “FIELD
OF
USE” means
uses of
a product or ingredient other than those that would require,
prior to the production or marketing of such product or ingredient, receipt
of
marketing approval from the U.S. Food and Drug Administration (or, with respect
to activity outside the U.S., any substantially equivalent application from
any
applicable regulatory authority) pursuant to one of the following:
(a)
New
Drug Application,
(b)
Biologics License Application,
(c)
Abbreviated New Drug Application,
(d)
Over-the-Counter (“OTC”) New Drug Application,
(e)
New
Drug Application under Section 505(b)(2) of the U.S. Food, Drug and Cosmetic
Act, and/or
(f)
OTC
drug tentative final or final monograph,
any
of
which (a)-(f) is effective, promulgated, and/or amended after the Effective
Date.
Further,
notwithstanding the foregoing, the use of EXCLUDED MOLECULES is specifically
excluded from the FIELD OF USE hereunder.
1.5 “FIRST
COMMERCIAL SALE” means the first sale, rental, or lease of any LICENSED PRODUCT
or first commercial use of a LICENSED PROCESS by LICENSEE, an AFFILIATE or
a
SUBLICENSEE, other than sale of a LICENSED PRODUCT or use of a LICENSED PROCESS
for use in trials, such as field trials, being conducted to obtain governmental
approvals to market LICENSED PRODUCTS or otherwise commercially use LICENSED
PROCESSES.
1.6 “LICENSED
PROCESS(ES)” means any process or method that, but for this Agreement, comprises
an infringement (including contributory or inducement) of an issued, unexpired
claim or a pending claim contained in the PATENT RIGHTS.
1.7 “LICENSED
PRODUCT(S)” means any product that, but for this Agreement:
(a)
comprises an infringement (including contributory or inducement) of an issued,
unexpired claim or a pending claim contained in the PATENT RIGHTS;
or
(b)
is
manufactured by using a LICENSED PROCESS.
1.8 “NET
SALES” means the gross revenue actually received by LICENSEE or AFFILIATES from
sale,
rental
or lease to a third party of LICENSED PRODUCTS and LICENSED PROCESSES covered
by
a VALID CLAIM of a PATENT RIGHT
in the
jurisdiction in which the sale, rental or lease occurs,
less
the following items (so
long
as such deductions are not obtained in view of other consideration received
by
LICENSEE:
(a)
cash
discounts actually granted to customers in such invoices for sales or lease
of
LICENSED PRODUCTS, but only in amounts customary in the trade;
(b)
sales, tariff duties and/or use taxes separately stated in such bills or
invoices with reference to particular sales and actually paid by LICENSEE or
AFFILLIATES to a governmental unit;
(c)
actual freight expenses between LICENSEE or AFFILIATES and customers, to the
extent such expenses are not charged to or reimbursed by customers;
(d)
amounts actually refunded or credited on returns; and
(e)
price
allowances and trade discounts actually granted to customers.
NET
SALES
shall exclude sales or transfers of LICENSED PRODUCTS and LICENSED PROCESSES
between LICENSEE and an AFFILIATE, where the same are intended for resale to
third parties.
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
-1-
Where
LICENSEE or AFFILIATE receives any consideration other than cash for such
transactions, fair market cash value for such consideration, to be agreed upon
by the parties hereto, shall be included in NET SALES.
1.9 “PATENT
RIGHTS” means:
(a)
the
United States and foreign patents and/or patent applications, and divisionals,
continuations, including
continuations-in-part (but
only
to the extent that claims
in
such continuations-in-part
are entitled to the priority date of
another
patent or application among
the
PATENT RIGHTS),
and
foreign counterparts of the same listed in Appendix A-1 and A-2; and
(b)
United States and foreign patents issued from the applications listed in
Appendix A-1
and
A-2,
including any reissued or reexamined patents based upon the same.
1.10 “ROYALTY
PERIOD(S)” means the six-month periods ending on the last days of June and
December each year.
1.11 “SUBLICENSEE(S)”
means any person or entity sublicensed, or granted an option for a sublicense,
by LICENSEE under this Agreement, however, AFFILIATES and contract manufacturers
are not SUBLICENSEES.
1.12 “SUBLICENSE
INCOME” means the amount actually received by LICENSEE from any and all
SUBLICENSEES arising from the sublicense of the right to make, use, or sell
LICENSED PRODUCTS or LICENSED PROCESSES. SUBLICENSE INCOME shall include
up-front or license fees, milestone payments, royalties on sales, annual
maintenance fees and any other direct payments in respect of the grant to such
SUBLICENSEE of a sublicense of the right to make or sell LICENSED PRODUCTS
or
LICENSED PROCESSES, but only to the extent such amounts are directly
attributable to the PATENT RIGHTS extended hereunder.
1.13 “TERRITORY”
means worldwide.
1.14 “VALID
CLAIM” means:
(a)
a
claim within the PATENT RIGHTS that is in an issued patent and has not expired
or been held invalid, revoked or unenforceable by a court or administrative
agency of competent jurisdiction in a final and non-appealable
judgment
or in a
judgment for which an appeal has not been filed within the time allowed for
appeal, and which has not been disclaimed, denied or admitted to be invalid
or
unenforceable through reissue, reexamination or otherwise; or
(b)
a
claim that is in a patent application within
the PATENT RIGHTS that has not yet issued and that is or will be under active
prosecution and has been pending for less than four years.
ARTICLE
2 - GRANT OF LICENSE
2.1 Subject
to the terms and conditions of this Agreement and the sole non-exclusive license
entered into prior to the Effective Date for the PATENT RIGHTS listed in
APPENDIX A-2 (UM File #1442), MICHIGAN hereby grants to LICENSEE an
exclusive license under PATENT RIGHTS with
the
right to grant sublicenses, both subject to the terms and conditions of this
Agreement, in the FIELD OF USE and the TERRITORY to make, use, sell, offer
for
sale, import and otherwise exploit LICENSED PRODUCTS and LICENSED PROCESSES,
and
to have any of the foregoing done on its behalf. In
the
event MICHIGAN wishes to grant a license under the PATENT RIGHTS to any party
for the EXCLUDED MOLECULES in the FIELD OF USE, MICHIGAN shall deliver a notice
to LICENSEE stating MICHIGAN’s desire to grant a license, including a statement
of the scope thereof. ********.
2.2 MICHIGAN
reserves the right to practice the PATENT RIGHTS for
research, public service, internal (including clinical) and/or educational
purposes,
and the
right to grant the same limited rights to other non-profit research
institutions
2.3 This
Agreement shall extend until expiration of the last to expire of the licensed
PATENT RIGHTS, unless sooner terminated as provided in another specific article
of this Agreement.
2.4 To
the
extent that the following grant may be required by research funding agreements
between MICHIGAN and the United States Government, MICHIGAN reserves the right
to grant to the United States Government nonexclusive, nontransferable,
irrevocable, paid-up licenses to practice or have practiced for or on behalf
of
the United States PATENT RIGHTS throughout the world.
2.5 LICENSEE
is entitled to extend its licenses under this Article 2 to its AFFILIATES,
consistent with all of the terms and conditions of this Agreement. If LICENSEE
does extend its license and an AFFILIATE assumes obligations under the
Agreement, LICENSEE guarantees performance by the AFFILIATE. If MICHIGAN has
a
claim arising under this Agreement against an AFFILIATE, MICHIGAN may seek
a
remedy directly against LICENSEE and may, but is not is not required to, seek
a
remedy against the AFFILIATE. Any termination of the Agreement under Article
11
as to LICENSEE also constitutes termination as to any AFFILIATES.
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
ARTICLE
3 - CONSIDERATION
3.1
LICENSEE
shall pay
royalties to MICHIGAN until the expiration date of the last to expire of PATENT
RIGHTS or until this Agreement is terminated.
Royalties shall include:
(a)
A
License Issue Fee of ********Such License Issue Fee shall be nonrefundable
and
is due thirty days (30) from the complete execution of this
Agreement;
(b)
Royalties
equal to ******** of NET SALES;
(c)
********
of
SUBLICENSE INCOME;
(d)
LICENSEE shall pay to MICHIGAN an Annual License Maintenance Fee ("Annual Fee").
This Annual Fee is accrued on June 30 of the years specified below, and is
payable with the semi-annual report for the ROYALTY PERIOD in which the Annual
Fee accrues. LICENSEE may credit each Annual Fee in full against all royalties
otherwise due MICHIGAN for the prior July 1 through the June 30 on which the
Annual Fee accrues. The annual license maintenance fees are:
(1) In
2008-2009: ********;
(2) In
2010:
********; and
(3) In
2011
and in each year thereafter during the term of this Agreement: ********..
Should
this Agreement terminate or expire other than on a June 30, the Annual Fee
for
such portion of a year shall be determined by multiplying the amount set forth
above for the given year by a fraction, the numerator of which shall be the
number of days since the prior June 30 during which the Agreement is in effect
and the denominator of which shall be three hundred and sixty-five.
3.2 LICENSEE
shall be responsible for the payment of all taxes, duties, levies, and other
charges imposed by any taxing authority with respect to the royalties payable
to
MICHIGAN under this agreement. Should LICENSEE be required under any law or
regulation of any government entity or authority to withhold or deduct any
portion of the payments on royalties due to MICHIGAN, then the sum payable
to
MICHIGAN shall be increased by the amount necessary to yield to MICHIGAN an
amount equal to the sum it would have received had no withholdings or deductions
been made. MICHIGAN shall cooperate reasonably with LICENSEE in the event
LICENSEE elects to assert, at its own expense, MICHIGAN’s exemption from any
such tax or deduction.
3.2 LICENSEE
is not obligated to pay multiple royalties if any LICENSED PRODUCT or LICENSED
PROCESS is covered by more than one claim of PATENT RIGHTS or the same LICENSED
PRODUCT is covered by claims in two or more countries.
3.3 If
LICENSEE is obligated or reasonably deems it necessary to pay consideration
to
any third party that holds a patent(s) that would, in the reasonable judgment
of
LICENSEE be infringed by the manufacture, importation, use, offer for sale
or
sale of a LICENSED PRODUCT or a LICENSED PROCESS, LICENSEE may reduce the amount
of royalties owed to MICHIGAN by an amount equal to fifty percent (50%) of
the
amount of royalties owed to such THIRD PARTY Licensor by LICENSEE. In no
instance under this subsection may the royalty due to MICHIGAN be reduced below
fifty percent (50%) of the amount that would have otherwise been owed by
LICENSEE, however.
3.4 If
a
LICENSED PRODUCT or LICENSED PROCESS is sold in a COMBINATION PRODUCT, then
NET
SALES for purposes of determining royalty payments on the COMBINATION PRODUCT
or
LICENSED PROCESS will be determined pro rata on a COMBINATION
PRODUCT-by-COMBINATION PRODUCT and country-by-country basis until the date
of
expiration of the last to expire PATENT RIGHT covering the manufacture, use
or
sale of such COMBINATION PRODUCT in such country, calculated using one of the
following methods:
(a) By
multiplying NET SALES of the COMBINATION PRODUCT by the fraction A/(A+B), where
A is the invoice price, during the royalty-paying period in question, of the
LICENSED PRODUCT sold separately, and B is the invoice price during the royalty
period in question, of the other products in the COMBINATION PRODUCT when sold
separately by LICENSEE, its AFFILIATE or SUBLICENSEE or, if not so sold, then
the average invoice price when sold separately by third parties; or
(b) If
no
separate sales are made of the LICENSED PRODUCT or LICENSED PROCESS or any
of
the other products in such COMBINATION PRODUCT during the royalty-paying period
in question, NET SALES for the purposes of determining royalty payments must
be
calculated by multiplying NET SALES of the COMBINATION PRODUCT by the fraction
A/C, where A is as previously defined and C is the invoice price of the
COMBINATION PRODUCT sold by LICENSEE, its AFFILIATE or SUBLICENSEE. If neither
the royalty-bearing nor the non-royalty bearing product(s) included in the
COMBINATION PRODUCT are sold separately, or the COMBINATION PRODUCT itself,
or
both, are not sold separately, NET SALES shall be calculated based on mutual
written agreement as to a reasonable allocation between the LICENSED PRODUCT
or
LICENSED PROCESS and the other products in the COMBINATION PRODUCT, taking
into
account total manufacturing costs, proprietary protection and relative
contribution of the products.
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
-3-
3.5 Royalty
payments shall be paid to the "Regents of the University of Michigan" in United
States dollars in Ann Arbor, Michigan, sent as provided in Article 13. In
computing royalties, LICENSEE shall convert any revenues it receives in foreign
currency into its equivalent in United States dollars at the most recent
exchange rate published in the Wall Street Journal on the last business day
of
the ROYALTY PERIOD during which such payments are received by LICENSEE, or
at
such other exchange rate as the parties may agree to in writing.
3.6 Royalty
payments shall be made on a semi-annual basis with submission of the reports
required by Article 4. All amounts due under this Agreement, including amounts
due for the payment of patent expenses, shall, if overdue, be subject to a
charge of interest compounded monthly until payment, at a per annum rate of
five
percent (5%) above the prime rate in effect at the XX Xxxxxx Xxxxx & Co. or
its successor bank on the due date (or at the highest allowed rate if a lower
rate is required by law) or $250, whichever is greater. The payment of such
interest shall not foreclose MICHIGAN from exercising any other rights it may
have resulting from any late payment. LICENSEE shall reimburse MICHIGAN for
the
costs, including reasonable attorney fees, for expenses paid in order to collect
any amounts overdue more than 120 days.
ARTICLE
4 - REPORTS
4.1 Until
the
FIRST COMMERCIAL SALE, LICENSEE shall provide to MICHIGAN a written annual
report on or before October
1
of each
year. The annual report shall include: reports of progress on research and
development, regulatory approvals, manufacturing, sublicensing, marketing and
sales during the preceding twelve (12) months, and plans for the coming year.
LICENSEE also shall report to MICHIGAN the date of first sale or lease of
LICENSED PRODUCTS (or results of LICENSED PROCESSES) in each country within
thirty (30) days of occurrence.
4.2 After
the
FIRST COMMERCIAL SALE, LICENSEE shall provide semi-annual reports to MICHIGAN.
By each October
1
and April 1,
LICENSEE
shall report to MICHIGAN for that ROYALTY PERIOD:
(a)
number of LICENSED PRODUCTS sold, leased or distributed by LICENSEE or
AFFILIATE.
(b)
NET
SALES, excluding the deductions provided therefor, of LICENSED PRODUCTS sold
by
LICENSEE or AFFILIATE.
(c)
accounting for all LICENSED PROCESSES used or sold by LICENSEE or AFFILIATE,
including NET SALES, excluding the deductions therefor.
(d)
deductions applicable as provided in the definition for NET SALES
above.
(e)
total
SUBLICENSE INCOME and royalties due under Paragraph 3.1 above, including
supporting figures.
(f)
foreign currency conversion rate and calculations (if applicable) and total
royalties due.
(g)
names, addresses and U.S.P.T.O. Entity Status (as discussed in Paragraph 4.5)
of
all SUBLICENSEES having a sublicense or option therefor any time during the
particular ROYALTY PERIOD.
(h)
for
each sublicense or amendment thereto completed in the particular ROYALTY PERIOD,
the date of each agreement and amendment, the territory of the sublicense,
the
scope of the sublicense, and the nature, timing and amounts of all fees and
royalties to be paid thereunder.
(i)
any
milestone (under Article 5) that has been achieved, and any milestone that
was
due during the ROYALTY PERIOD but not achieved, specifying each milestone and
whether or not it was achieved.
LICENSEE
shall include the amount of all payments due, and the various calculations
used
to arrive at those amounts, including the quantity, description (nomenclature
and type designation as described in Paragraph 4.3 below), country of
manufacture and country of sale of LICENSED PRODUCTS and LICENSED PROCESSES.
LICENSEE shall direct its authorized representative to certify that reports
required hereunder are correct to the best of LICENSEE's knowledge and
information. Failure to provide reports as required under this Article 4 shall
be considered
a
material breach of this Agreement.
If
no
payment is due, LICENSEE shall so report to MICHIGAN that no payment is
due.
4.3 LICENSEE
shall promptly establish and consistently employ a system of specific
nomenclature and type designations for LICENSED PRODUCTS and LICENSED PROCESSES
to permit identification and segregation of various types where necessary.
LICENSEE shall consistently employ, and shall require SUBLICENSEES to
consistently employ, the system when rendering invoices thereon and shall inform
MICHIGAN, or its auditors, when requested, as to the details concerning such
nomenclature system, all additions thereto and changes therein.
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
-4-
4.4 LICENSEE
shall keep, and shall require AFFILIATES and SUBLICENSEES to keep, true and
accurate records containing data reasonably required for the computation and
verification of payments due under this Agreement. LICENSEE shall, and it shall
require all AFFILIATES and SUBLICENSEES to: (a) open such records for inspection
upon reasonable notice during business hours by either MICHIGAN auditor(s)
or an
independent certified accountant selected by MICHIGAN, for the purpose of
verifying the amount of payments due; and (b) retain such records for six (6)
years from date of origination.
The
terms
of this Article shall survive any termination of this Agreement. MICHIGAN is
responsible for all expenses of such inspection, except that if any inspection
reveals an underpayment greater than five percent (5%) of royalties due
MICHIGAN, then LICENSEE shall pay all expenses of that inspection and the amount
of the underpayment and interest to MICHIGAN within twenty-one (21) days of
written notice thereof. LICENSEE shall also reimburse MICHIGAN for reasonable
expenses required to collect the amount underpaid.
4.5 So
that
MICHIGAN may pay the proper U.S. Patent and Trademark Office fees relating
to
the PATENT RIGHTS, if LICENSEE, any company related to LICENSEE or SUBLICENSEE
(including optionees) does not qualify as a “Small Entity” under U.S. patent
laws, LICENSEE shall notify MICHIGAN immediately. The parties understand that
the changes to LICENSEE’s, SUBLICENSEE’s, or optionees’ businesses that might
affect entity status include: acquisitions, mergers, hiring of a total of more
than 500 total employees, sublicense agreements, and sublicense options.
ARTICLE
5 - DILIGENCE
5.1
LICENSEE
shall use commercially reasonable efforts to bring LICENSED PRODUCTS to market
or one or more LICENSED PROCESSES to commercial use. LICENSEE has the
responsibility to do all that is necessary to obtain and retain any governmental
approvals to manufacture and/or sell LICENSED PRODUCTS and/or use LICENSED
PROCESSES for all relevant activities of LICENSEE, AFFILIATES and
SUBLICENSEES.
5.2 As
part
of the diligence required by Paragraph 5.1, LICENSEE agrees to reach the
following commercialization and research and development milestones for the
LICENSED PRODUCTS and LICENSED PROCESSES (together the “MILESTONES”) by the
following dates:
1)
Initiate
communication
with all
Tier 1 (Largest
- see Schedule 2) Cosmetic or Chemical Companies with Category 1 Products
(defined at those which explicitly use ******** within their product or
marketing literature during ********.
2)
Initiate communication with all Tier 2 Companies (Significant size, but not
the
very largest - see Schedule 3) with Category 1 products during
********.
3)
Complete product research on all Category 2 (defined as those products which
are
suspected by LICENSEE of using ******** by virtue of claimed activity or
description of active ingredients) within ********.
4)
Initiate communication
with all
Tier 1 Companies with Category 2 products (to be determined based on research
completed in Milestone #3) within
********.
5)
Within
******** of the effective date of this agreement, LICENSEE will obtain at least
**** new revenue-generating business relationship from among the Companies
currently or prospectively identified as Tier 1 or 2 Companies. Additional
royalties to MICHIGAN from such additional business under Section 3.1 (b) or
(c)
herein shall be at least ******** per year. In the event that such business
relationships do not generate at least ***** per year in additional royalties,
the Annual Fee due MICHIGAN (as defined in Section
3.1
(d)) shall be increased by the difference between ****** and the royalty amount
actually incurred.
5.3 LICENSEE
must achieve the MILESTONES on or before the deadline dates indicated. LICENSEE
shall notify MICHIGAN within ten (10) days after each deadline as to whether
such MILESTONE was met. If LICENSEE fails to meet any MILESTONE under this
Article continues for forty-five (45) days after the date of any MILESTONE
deadline, LICENSEE will be deemed to be in material breach of this Agreement,
and MICHIGAN may terminate the Agreement as provided in section 11.3.
ARTICLE
6 - SUBLICENSING
6.1 LICENSEE
shall notify MICHIGAN in writing of every sublicense agreement and each
amendment thereto within thirty (30) days after their execution, and indicate
the name of the SUBLICENSEE and its number of employees, the territory of the
sublicense, the scope of the sublicense, and the nature, timing and amounts
of
all fees and royalties to be paid thereunder. Upon request, LICENSEE shall
provide MICHIGAN with a copy of sublicense agreements.
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
-5-
6.2 Where
LICENSEE receives any consideration other than cash from SUBLICENSEES,
SUBLICENSE
INCOME for said consideration shall be the
fair
market cash value for such consideration.
6.3 Each
sublicense granted by LICENSEE under this Agreement shall provide for its
termination upon termination of this Agreement. Each sublicense shall terminate
upon termination of this Agreement unless LICENSEE has previously assigned
its
rights under the sublicense to MICHIGAN and MICHIGAN has agreed at its sole
discretion in writing to such assignment.
|
6.4
|
LICENSEE
shall require that all sublicenses:
|
(1)
be
consistent with the terms and conditions of this Agreement;
(2)
contain the SUBLICENSEE'S acknowledgment of the disclaimer of warranty and
limitation on MICHIGAN's liability, as provided by Article 9 below; and
(3)
contain provisions under which the SUBLICENSEE accepts duties at least
equivalent to those accepted by the LICENSEE in the following Paragraphs: 4.4
(duty to keep records); 4.5 (duty regarding Patent Office fees); 9.4 (duty
to
avoid improper representations or responsibilities); 10.1 (duty to defend,
hold
harmless, and indemnify MICHIGAN); 10.3 (duty to maintain insurance); 14.5
(duty
to properly xxxx LICENSED PRODUCTS with patent notices); 14.7 (duty to restrict
the use of MICHIGAN's name); 14.8 (duty to control exports).
ARTICLE
7 - PATENT APPLICATIONS AND MAINTENANCE
7.1 MICHIGAN
has the right to control filing, prosecuting, and maintaining all of the patents
and patent applications
that form the basis for the PATENT RIGHTS, including
interferences
and
disputes regarding
inventorship
(including litigation based solely or primarily upon inventorship
issued),
with
reasonable input from LICENSEE. LICENSEE shall fully cooperate in such
activities.
7.2 MICHIGAN
shall notify LICENSEE of all information received by MICHIGAN relating to the
filing, prosecution and maintenance of the patents and patent applications
which
form the basis of the PATENT RIGHTS, and shall provide LICENSEE reasonable
time
to review, comment, and advise upon such information. MICHIGAN agrees to act
on
recommendations of LICENSEE when it is reasonable to do
so.
LICENSEE
agrees to hold such information confidential and to use the information provided
by MICHIGAN only for the purpose of advancing MICHIGAN’s PATENT
RIGHTS.
MICHIGAN
agrees that claims contained in a continuation-in-part application that are
not
entitled to the priority date of a patent among the PATENT RIGHTS will be
segregated to the extent permitted by law into a separate patent at LICENSEE’S
request and that LICENSEE shall have no financial obligation to MICHIGAN for
such separate patent applications, although such rights shall not be included
in
PATENT RIGHTS.
7.3 LICENSEE
shall reimburse MICHIGAN for fifty percent (50%) of all fees and costs
incurred
after the Effective Date of this Agreement relating
to the activities described in this Article and
shall
reimburse MICHIGAN for
costs
already incurred according to the following schedule: Forty thousand dollars
($40,000) within ten days of the Effective Date, thirteen thousand dollars
($13,000) no later than December 31, 2007, thirteen thousand dollars ($13,000)
no later than December 31, 2008 and thirteen thousand dollars ($13,000) no
later
than December 31, 2009. MICHIGAN shall provide LICENSEE with copies of original
invoices setting forth such costs in detail for all costs incurred after the
Effective Date of this Agreement.
Such
reimbursement shall be made within thirty (30) days of receipt of MICHIGAN’s
invoice and shall be subject to the interest and other requirements specified
in
Paragraph 3.6 above. LICENSEE
may, at its option and sixty (60) days prior to any outstanding action, elect
to
relinquish its license under any patent or application among the PATENT RIGHTS,
in which case LICENSEE’s reimubursement obligations under this Article with
respect to that patent or patent application shall cease.
******** This material has been omitted pursuant to a request for confidential treatment and filed separately with the Securities and Exchange Commission.
-6-
ARTICLE
8 - ENFORCEMENT
8.1 Each
party shall promptly advise the other in writing of any known acts of potential
infringement of the PATENT RIGHTS by another party in the FIELD OF USE. LICENSEE
has the first option to police the PATENT RIGHTS against infringement by other
parties within the TERRITORY and the FIELD OF USE, but LICENSEE shall notify
MICHIGAN in writing thirty (30) days before filing any suit. LICENSEE shall
not
file any suit without a diligent investigation of the merits of such suit by
counsel, including with respect to PATENT RIGHTS. This right to police includes
defending any action for declaratory judgment of noninfringement or invalidity;
and prosecuting, defending or settling all infringement and declaratory judgment
actions at its expense and through counsel of its selection, except that
LICENSEE shall make any such settlement only with the advice and consent of
MICHIGAN. If LICENSEE has a reasonable basis for policing the patents, MICHIGAN
shall provide reasonable assistance to LICENSEE with respect to such actions,
but only if LICENSEE reimburses MICHIGAN for out-of-pocket expenses incurred
in
connection with any such assistance rendered at LICENSEE'S request or reasonably
required by MICHIGAN and if LICENSEE notifies MICHIGAN in writing fourteen
(14)
days
before filing any suit,
unless
MICHIGAN waives such notice requirement in writing.
MICHIGAN
retains the right to participate, with counsel of its own choosing and at its
own expense, in any action under this Paragraph. LICENSEE shall defend,
indemnify and hold harmless MICHIGAN with respect to any counterclaims asserted
by an alleged infringer reasonably related to the enforcement of the PATENT
RIGHTS under this Paragraph, including but not limited to antitrust
counterclaims and claims for recovery of attorney fees.
If
a
declaratory judgment action alleging invalidity or unenforceability of any
of
the PATENT RIGHTS is brought against LICENSEE or MICHIGAN and the action is
not
brought in reaction to an assertion of or action for patent infringement brought
by LICENSEE, then MICHIGAN, at its sole option, has the right to intervene
and
assume control over the defense of such action, and LICENSEE shall provide
reasonable cooperation in the defense of such action. If a third party files
such action as the result of acts of LICENSEE, then LICENSEE shall reimburse
the
reasonable costs and fees of MICHIGAN in defending such action.
8.2
If
LICENSEE demonstrates to MICHIGAN that it has a reasonable basis to believe
that
a third party infringes the PATENT RIGHTS and undertakes to enforce and/or
defend the PATENT RIGHTS by litigation anywhere
in
the
world,
LICENSEE may withhold
up to fifty percent (50%) of the payments otherwise thereafter due
in the
jurisdiction in which said PATENT RIGHTS are being enforced
during
the course of such litigation to MICHIGAN under Article 3 under the following
terms. LICENSEE may apply the amounts withheld to pay up to half of LICENSEE's
out-of-pocket litigation expenses, including reasonable attorneys’ fees, but not
including salaries of LICENSEE’s employees. If LICENSEE recovers damages in
patent litigation or settlement thereof, the award shall be applied first to
satisfy LICENSEE’S unreimbursed expenses and legal fees for the litigation, next
to reimburse MICHIGAN for any payments under Article
3
which are past due or were withheld pursuant to this Article 8, and then to
reimburse MICHIGAN for any other reasonable unreimbursed expenses and legal
fees
for the litigation. The
remaining balance shall be divided with 80% received by LICENSEE and 20%
received by MICHIGAN. This provision shall control the division of revenues
where a license is granted as part of a settlement of such litigation.
8.3 If
LICENSEE fails to take action to xxxxx any alleged infringement of patents
which
form the basis for the PATENT RIGHTS within one-hundred-and-eighty (180) days
of
a request by MICHIGAN to do so (or within a shorter period if required to
preserve the legal rights of MICHIGAN under any applicable laws) then MICHIGAN
has the right to take such action (including prosecution of a suit) at its
expense and LICENSEE shall use reasonable efforts to cooperate in such action,
at LICENSEE's expense. Such abatement may include compensating MICHIGAN for
some
part of any alleged damages, as negotiated by the Parties. MICHIGAN has full
authority to settle on such terms as MICHIGAN determines, except that MICHIGAN
shall not reach any settlement whereby it provides a license for future
activities to a third party under the PATENT RIGHTS in the TERRITORY and the
FIELD OF USE without the consent of LICENSEE. If MICHIGAN recovers damages
in
patent litigation or settlement thereof, the award shall be applied first to
satisfy MICHIGAN’S unreimbursed expenses and legal fees for the litigation, next
to reimburse MICHIGAN for any payments overdue under this Agreement, and then
to
reimburse LICENSEE for any reasonable unreimbursed expenses and legal fees
for
the litigation (such payment not to exceed the recovery or settlement amounts
MICHIGAN actually receives). The remaining balance shall be divided with 80%
received by MICHIGAN and 20% by LICENSEE. This
provision shall control the division of revenues where a license is granted
as
part of a settlement of such litigation.
******** This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
-7-
ARTICLE
9 - NO WARRANTIES; LIMITATION ON MICHIGAN'S LIABILITY
9.1 MICHIGAN,
including its Regents, fellows, officers, employees and agents, makes no
representations or warranties that PATENT RIGHTS are or will be held valid,
or
that the manufacture, importation, use, offer for sale, sale or other
distribution of any LICENSED PRODUCTS or use of LICENSED PROCESSES will not
infringe upon any patent or other rights.
9.2 MICHIGAN,
INCLUDING ITS REGENTS, FELLOWS, OFFICERS, EMPLOYEES AND AGENTS, MAKES NO
REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, AND ASSUMES NO RESPONSIBILITIES WHATEVER
WITH
RESPECT TO DESIGN, DEVELOPMENT, MANUFACTURE, USE, SALE OR OTHER DISPOSITION
BY
LICENSEE
OR
SUBLICENSEES
OF
LICENSED
PRODUCTS OR
LICENSED PROCESSES.
9.3 LICENSEE
AND
SUBLICENSEES
ASSUME
THE ENTIRE RISK AS TO PERFORMANCE OF LICENSED
PRODUCTS AND
LICENSED PROCESSES.
In no
event shall MICHIGAN, including its Regents, fellows, officers, employees and
agents, be responsible or liable for any direct, indirect, special, incidental,
or consequential damages or lost profits or other economic loss or damage with
respect to LICENSED PRODUCTS or LICENSED PROCESSES, to LICENSEE, SUBLICENSEES
or
any other individual or entity regardless of legal or equitable theory. The
above limitations on liability apply even though MICHIGAN, its Regents, fellows,
officers, employees or agents may have been advised of the possibility of such
damage.
9.4 LICENSEE
shall not, and shall require that its SUBLICENSEES do not, make any statements,
representations or warranties whatsoever to any person or entity, or accept
any
liabilities or responsibilities whatsoever from any person or entity that are
inconsistent with any disclaimer or limitation included in this Article
9.
ARTICLE
10 - INDEMNITY; INSURANCE
10.1 LICENSEE
shall defend, indemnify and hold harmless and shall require SUBLICENSEES to
defend, indemnify and hold harmless MICHIGAN, including its Regents, fellows,
officers, employees, students, and agents, for and against any and all claims,
demands, damages, losses, and expenses of any nature (including attorneys'
fees
and other litigation expenses), resulting from, but not limited to, death,
personal injury, illness, property damage, economic loss or products liability
arising from or in connection with, any of the following: (1) Any manufacture,
use, sale or other disposition by LICENSEE, SUBLICENSEES or transferees of
LICENSED PRODUCTS or LICENSED PROCESSES and
(2) The
direct or indirect use by any person of LICENSED PRODUCTS made, used, sold
or
otherwise distributed by LICENSEE or SUBLICENSEES
10.2 MICHIGAN
is entitled to participate at its option and expense through counsel of its
own
selection, and may join in any legal actions related to any such claims,
demands, damages, losses and expenses under Paragraph 10.1 above. LICENSEE
shall
not settle any such legal action with an admission of liability of MICHIGAN
without MICHIGAN’s written approval.
10.3 Prior
to
any distribution or commercial use of any LICENSED PRODUCT or use of any
LICENSED PROCESS by LICENSEE, LICENSEE shall purchase and maintain in effect
commercial general liability insurance, including product liability insurance
and errors and omissions insurance which shall protect LICENSEE and MICHIGAN
with respect the events covered by Paragraph 10.1. Prior to any distribution
or
use of any LICENSED PRODUCT or use of any LICENSED PROCESS by a SUBLICENSEE,
LICENSEE shall require that the SUBLICENSEE purchase and maintain in effect
commercial general liability insurance, including product liability insurance
and errors and omissions insurance which shall protect LICENSEE, SUBLICENSEE,
and MICHIGAN with respect to the events covered by Paragraph 10.1. Each such
insurance policy must provide reasonable coverage for all claims with respect
to
any LICENSED PROCESS used and any LICENSED PRODUCTS manufactured, used, sold,
licensed or otherwise distributed by LICENSEE -- or, in the case of a
SUBLICENSEE's policy, by said SUBLICENSEE -- and must specify MICHIGAN,
including its Regents, fellows, officers and employees, as an additional
insured. LICENSEE shall furnish certificate(s) of such insurance to MICHIGAN,
upon request.
10.4 In
no
event shall either party hereunder be liable to the other for any special,
indirect, or consequential damages of any kind whatsoever resulting from any
breach or default of this Agreement.
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
-8-
ARTICLE
11 - TERM AND TERMINATION
11.1 If
LICENSEE ceases to carry on its business, this Agreement shall terminate upon
written notice by MICHIGAN attempted to be delivered to the address for notices
provided in Article 13.
11.2 Failure
by
LICENSEE
to (a)
make any Annual License Maintenance Fee due to MICHIGAN, under Section 3.1
(d)
or (b) submit any report under Article 4 shall
be
considered a material breach of this
Agreement. If LICENSEE fails to cure such breach within thirty (30) days of
receiving written notice of said breach by MICHIGAN, MICHIGAN
may terminate the Agreement. LICENSEE shall be entitled to a thirty (30)
business day extension of such period if it represents to MICHIGAN in writing
the failure to provide any such report was due to a good faith error or
circumstances beyond LICENSEE’s control. Such
termination shall not foreclose MICHIGAN from collection of any amounts
remaining unpaid or seeking other legal relief.
11.3 Other
than as provided for in Sections 11.1 and 11.2 above, in the event of any
dispute arising from or relating to this Agreement or the breach thereof, the
parties hereto shall use diligent efforts to settle the dispute. MICHIGAN shall
not terminate the Agreement for breach until a dispute resolution process,
as
follows, is complete and LICENSEE is adjudicated to be in material breach of
the
Agreement.
Dispute
Resolution Process:
| (a) |
Negotiation:
Senior individuals with responsibility for patent and licensing activities
of the disputing Parties, with advice of counsel if necessary, shall
consult and negotiate with each other in good faith and, recognizing
their
mutual interests, attempt to reach a just and equitable solution
satisfactory to both parties. The parties shall diligently attempt
to
resolve such issue amicably with a sufficiently authorized member
of each
Party's management over a period of 60 days after request by either
Party,
which attempt shall include at least one in-person meeting of the
parties
involved in the discussions in Washtenaw County,
Michigan.
|
| (b) |
Mediation:
If
such dispute or controversy cannot be settled through the above
activities, the Parties agree to attempt in good faith to settle
the
controversy with mediation which shall be completed 45 days after
completion of the negotiation period provided for in Section 11.3(a).
The
Parties shall equally share the fees and the costs of a mutually
agreeable
mediator, with each Party also being responsible for its own expenses.
The
Parties shall agree upon the terms of such mediation, which shall
include
at least one in-person meeting in Washtenaw County, Michigan, involving
senior individuals with responsibility for patent and licensing activities
of the disputing Parties, such meeting taking place at least 21 days
prior
to the completion of the mediation.
|
| (c) |
If
the parties do not reach such solution through formal mediation,
then,
upon written notice by one Party to the other Party, disputes shall
be
finally settled by binding
arbitration.
|
| (1) |
The
arbitration shall be administered by the American Arbitration Association
in accordance with the provisions of its Commercial Arbitration rules,
and/or its Patent Arbitration rules, whichever is reasonably applicable,
and Federal Arbitration Act, except where those rules conflict with
this
provision, in which case this provision controls. The written notice
must
contain a statement of the dispute in sufficiently clear detail for
the
arbitrators and the other party to understand it. Prior to commencement
of
arbitration, emergency relief is available from any court only to
avoid
irreparable harm.
|
| (2) |
The
arbitration shall take place before a single arbitrator in Washtenaw
County, Michigan USA, unless in-person meetings or hearing are not
necessary or required. Unless the Parties agree otherwise, the Parties
shall agree upon the arbitrator within twenty business days from
the date
of the written notice referenced in Section 11.3 (c) above from the
AAA’s
National Roster of Arbitrators or through selection procedures
administered by the AAA. The arbitrator shall not be employed by
or
affiliated in any way with either Party (including, for example,
as an
independent consultant or as a customer or vendor to either party,
or an
employee of a customer or vendor). LICENSEE shall pay the fees and
the
costs of the arbitrator, with each Party also being responsible for
its
own expenses.
|
| (3) |
Within
15 business days after the selection of the arbitrator, the parties
shall
reach agreement upon and thereafter follow procedures, including
limits on
discovery, assuring
that the arbitration will be concluded and the award rendered within
no
more than six (6) months from selection of the arbitrator(s). In
the
absence of an agreement to the contrary or except as provided herein,
procedures meeting such time limits will be designed by the AAA and
adhered to by the parties.
|
| (4) |
The
Federal Rules of Civil Procedure shall apply where the rules of the
American Arbitration Association are silent, but the parties shall
use
their best efforts to come to agreement on limits on discovery. To
the
extent that depositions are permitted, unless the parties agree to
further
limits, each deposition of a person shall be limited to 6 hours of
testimony, and depositions of parties shall
be
limited to 10 hours of testimony and each party shall be limited
to 5
depositions. Unresolved discovery disputes shall be resolved by the
arbitrator(s).
|
| (5) |
The
decision of the arbitrator(s) must be in writing and must generally
describe the basis on which the decision was made, but a detailed
written
opinion shall not be required of the arbitrator(s). Judgment on the
award
rendered by the arbitrator(s) may be entered in any court having
competent
jurisdiction thereof. Each party shall bear its own costs and expenses
and
an equal share of the arbitrator and administrative fees of the
arbitration. THE ARBITRATOR(S) SHALL NOT AWARD EITHER PARTY PUNITIVE,
EXEMPLARY, MULTIPLIED OR CONSEQUENTIAL DAMAGES, OR ATTORNEYS FEES
OR
COSTS.
|
| (6) |
This
agreement to arbitrate is intended to be binding upon the signatories
hereto, their principals, successors, assigns, subsidiaries, and
affiliates. This agreement to arbitrate is also intended to include
any
disputes, controversy or claims against any party's employees, agents,
representatives, or outside legal counsel arising out of or relating
to
matters covered by this Agreement or any agreement in which this
Agreement
is incorporated.
|
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
-9-
11.4 LICENSEE
has the right to terminate this Agreement at any time on ninety (90) days’
written notice to MICHIGAN if LICENSEE:
(a)
pays
all amounts due MICHIGAN through the effective date of the
termination;
(b)
submits a final report of the type described in Paragraph 4.2;
(c)
returns any patent documentation (including that exchanged under Article 7)
and
any other confidential or trade-secret materials provided to LICENSEE by
MICHIGAN in connection with this Agreement, or, with prior approval by MICHIGAN,
destroys such materials, and certifies in writing that such materials have
all
been returned or destroyed; and
(d)
suspends its manufacture, use and sale of the LICENSED PROCESS(ES) AND LICENSED
PRODUCT(S) (subject to Paragraphs
11.5
and
11.7
below).
Upon
written
notice
of intent to terminate, MICHIGAN may elect
to
immediately terminate this Agreement upon written notice. The
effective date of such termination shall be the earlier of: (a) the date
indicated
by
LICENSEE
in
its
written
notice of termination, and (b) the date on which MICHIGAN provides LICENSEE
with
written notice
of
immediate termination. During the period between notice and termination MICHIGAN
shall not initiate any new litigation or prosecution under the PATENT RIGHTS
or
otherwise obligate LICENSEE by incurring expenses which need not necessarily
be
incurred before the date
of
termination. However, nothing in this Paragraph shall limit LICENSEE’s
obligations under Article 7 with respect to: (a) patent applications filed
as of
the date of such notice and/or (b) fees due during the notice period that were
foreseeable at the time of such notice, including but not limited to patent
maintenance fees.
11.5 Upon
any
termination of this Agreement, and except as provided herein to the contrary,
all rights and obligations of the parties hereunder shall cease, except any
previously accrued rights and obligations and further as follows:
(1)
obligations to pay (this
needs to stay in) consideration
accruing
hereunder up to the day of such termination, whether or not this Agreement
provides for a number of days before which actual payment is due and such date
is after the day of termination;
(2)
MICHIGAN's rights to inspect books and records as described in Article 4, and
LICENSEE's obligations to keep such records for the required time;
(3)
any
cause of action or claim of LICENSEE or MICHIGAN accrued or to accrue because
of
any breach or default by the other party hereunder;
(4)
the
provisions of Articles 1, 9, 10, and 14.
11.6
After
the license(s) granted herein terminate, if LICENSEE has filed patent
applications or obtained patents to any modification or improvement to LICENSED
PRODUCTS or LICENSED PROCESSES within the scope of the PATENT RIGHTS, LICENSEE
agrees upon request to enter into good faith negotiations with MICHIGAN or
MICHIGAN’s future licensee (s) for
the
purpose of granting licensing rights to said modifications or improvements
in a
timely fashion and under commercially reasonable terms.
11.7 After
the
license(s) granted herein terminate, LICENSEE shall have the right to sell
or
otherwise dispose of any inventory of LICENSED PRODUCTS, and shall pay MICHIGAN
any royalties due thereon pursuant to the provisions of Article 3 herein.
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
-10-
ARTICLE
12 - REGISTRATION AND RECORDATION
12.1 If
the
terms of this Agreement, or any assignment or license under this Agreement
are
or become such as to require that the Agreement or license or any part thereof
be registered with or reported to a national or supranational agency, LICENSEE
will, at its expense, undertake such registration or report. Prompt notice
and
appropriate verification of the act of registration or report or any agency
ruling resulting from it will be supplied by LICENSEE to MICHIGAN upon
request.
12.2 LICENSEE
shall also carry out, at its expense, any formal recordation of this Agreement
or any license herein granted that the law of any country requires as a
prerequisite to enforceability of the Agreement or license in the courts of
any
such country or for other reasons, and shall promptly furnish to MICHIGAN
appropriately verified proof of recordation.
ARTICLE
13 - NOTICES
13.1 Any
notice, request, report or payment required or permitted to be given or made
under this Agreement by either party is effective when mailed if sent by
recognized overnight carrier or certified mail, electronic mail followed by
confirmation by regular U.S. mail, or registered mail (return receipt requested)
to the address set forth below or such other address as such party specifies
by
written notice given in conformity herewith. Any notice, request, report or
payment not so given is not effective until actually received by the other
party.
To
MICHIGAN: To
LICENSEE:
The
University of Michigan Quick-Med
Technologies, Inc
Office
of
Technology Transfer 0000
XX
00xx
Xxx
Xxxxxxxxx
Tower, Room 2071 Xxxxxxxxxxx,
Xxxxxxx 00000
0000
X.
Xxxxx Xxxxxx
Xxx
Xxxxx, XX 00000-0000
Attn:
File No. 1175, 1356, 1442,
Attn: Xxxxxxx
Xxxxxxx
1442d1,
1442d3, 1543, 1543d1,
1720,
2044 and 2115
ARTICLE
14 - MISCELLANEOUS PROVISIONS
14.1
This
Agreement shall be construed, governed, interpreted and applied according to
United States and State of Michigan law, except that questions affecting the
construction and effect of any patent shall be determined by the law of the
country in which the patent was granted.
14.2 The
parties hereby consent to the jurisdiction of the courts in the State of
Michigan over any dispute concerning this Agreement or the relationship between
the parties. Should LICENSEE bring any claim, demand or other action against
MICHIGAN, its Regents, fellows, officers, employees or agents, arising out
of
this Agreement or the relationship between the parties, LICENSEE agrees to
bring
said action only in the Michigan Court of Claims.
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
-11-
14.3 MICHIGAN
and LICENSEE agree that this Agreement sets forth their entire understanding
concerning the subject matter of this Agreement. The parties may amend this
Agreement from time to time, but no modification will be effective unless both
MICHIGAN and LICENSEE agree to it in writing.
14.4
If
a
court of competent jurisdiction finds any term of this Agreement invalid,
illegal or unenforceable, that term will be curtailed, limited or deleted,
but
only to the extent necessary to remove the invalidity, illegality or
unenforceability, and without in any way affecting or impairing the remaining
terms.
14.5 LICENSEE
agrees to xxxx the LICENSED PRODUCTS sold in the United States with all
applicable United States patent numbers. All LICENSED PRODUCTS shipped to or
sold in other countries shall be marked to comply with the patent laws and
practices of the countries of manufacture, use and sale.
14.6 No
waiver
by either party of any breach of this Agreement, no matter how long continuing
or how often repeated, is a waiver of any subsequent breach thereof, nor is
any
delay or omission on the part of either party to exercise or insist on any
right, power, or privilege hereunder a waiver of such right, power or
privilege.
14.7 LICENSEE
agrees to refrain from using and to require SUBLICENSEES to refrain from using
the name of MICHIGAN in publicity or advertising without the prior written
approval of MICHIGAN. Reports in scientific literature and presentations of
joint research and development work are not publicity. Notwithstanding this
provision, without prior written approval of MICHIGAN, LICENSEE and SUBLICENSEES
may state publicly that LICENSED PRODUCTS and PROCESSES were developed by
LICENSEE based upon an invention(s) developed at the University of Michigan
and/or that the PATENT RIGHTS were licensed from the University of Michigan.
14.8 LICENSEE
agrees to comply with all applicable laws and regulations. In particular,
LICENSEE understands and acknowledges that the transfer of certain commodities
and technical data is subject to United States laws and regulations controlling
the export of such commodities and technical data, including all Export
Administration Regulations of the United States Department of Commerce. These
laws and regulations prohibit or require a license for the export of certain
types of technical data to certain specified countries. LICENSEE agrees to
comply with all United States laws and regulations controlling the export of
commodities and technical data, to be solely responsible for any violation
of
such laws and regulations by LICENSEE or its SUBLICENSEES, and to defend,
indemnify and hold harmless MICHIGAN and its Regents, fellows, officers,
employees and agents if any legal action of any nature results from the
violation.
14.9 The
relationship between the parties is that of independent contractor and
contractee. Neither party is an agent of the other in connection with the
exercise of any rights hereunder, and neither has any right or authority to
assume or create any obligation or responsibility on behalf of the
other.
14.10 LICENSEE
may, without MICHIGAN’s consent, assign its rights under this Agreement to a
purchaser of all or substantially all of LICENSEE’s business relating to the
subject matter of this Agreement, so long as such assignee provides a statement
in writing to MICHIGAN that it agrees to accept all the terms and conditions
of
this Agreement in the place of LICENSEE. LICENSEE may not assign this Agreement
otherwise without the prior written consent of MICHIGAN,
such
permission not to be unreasonably withheld or delayed. No
assignment by LICENSEE will be effective until the intended assignee agrees
in
writing to accept all of the terms and conditions of this Agreement, and such
writing is provided to MICHIGAN.
14.11 MICHIGAN
represents that it has, and will in the future, disclose to LICENSEE all
licenses it has granted or may grant to third parties under PATENT RIGHTS and
the scope of rights granted thereunder.
14.12 This
Agreement supercedes all other previous agreements between MICHIGAN and LICENSEE
concerning the PATENT RIGHTS.
********
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
IN
WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
FOR
LICENSEE FOR
THE
REGENTS OF THE
UNIVERSITY
OF MICHIGAN
By /s/
Xxxxx Xxxxxx
By /s/
Xxxxxxx X. Xxxxxx
(authorized
representative)
Xxxxxxx X. Xxxxxx
Executive
Director, UM Technology Transfer
Typed
Name: Xxxxx Xxxxxx
Title:
President
Date June
1, 2007 Date May
23,2007
*******
This
material has been omitted pursuant to a request for confidential treatment
and
filed separately with the Securities and Exchange Commission.
APPENDIX
A-1
Page
1
|
XXX
File 1543
US
6,683,069
CA
2326507
JP2000-541991
MX
009651
KR
7011003
US
7,141,238
|
XXX
File 2115
US
7,078,048
US
11/290,109
CA
2446356
MX
2003/009995
|
|
XXX
File 1720
US
10/167,040 (2003/0021816)
US
11/168,017 (2006/0009494)
US
11/169,072 (2005/0277695)
EP
1284721
|
XXX
File 1175
US
5,837,224
JP
3705820
AU
701132
CA
2241981
MX
208066
NZ
330860
EP
97903847.8
|
|
XXX
File 1967
US
11/208,947 (2005/0281764)
AU
2001272028
MX
000089
JP
2002-504965
HK
03106899.6
|
XXX
File 1356
US
6,630,516
AU
737376
EP
1 005 333
US
6,919,072
MX
997883
IL
131543
JP
537021/98
CA
2281944
CN
98803970.2
FR/DE/GB
1005333
|
|
XXX
File 2044
US
09/740,242(2002/0119107)
EP
01985574.1
AU
2002235215
CA
2432265
JP
2002-550947
MX
005421
|
APPENDIX
A-2
XXX
File 1442
US
6,130,254
IL
133194MX 9911052
JP
3554339
CA
2292600
NZ
501634
XX
000000
XX
2002301116
IN
1184/MAS/98
ZA
98/4791
TW
1234467
US
6,365,630
US
6,942,870
US
10/948,002 (2005/0058709)
