EXHIBIT 10.12
UNIVERSITY OF MIAMI
April 10, 1998
Xx. Xxxx XxXxxx, Jr.
Genetic Vectors, Inc.
0000 X.X. 00 Xxxxxx, Xxxxx 000
Xxxxx, Xxxxxxx 00000
Re: License Agreement Effective September 7, 1990 (hereinafter
"License Agreement") between the University of Miami and its School of
Medicine (hereinafter "Licensor") and ProVec, Inc. which was
subsequently assigned to Epi DNA, Inc., Genetic Vectors, Inc.
(hereinafter "Licensee"), is a successor to ProVec, Inc. Institution
file No. UM90-16, Chemical Method for Specifically Coupling Biotin to
Guanosine in Nucleic Acids (hereinafter "Technology and Product").
Dear Xxxx:
As we previously discussed, the University understands your company's
position, and is willing to make a brief accommodation to allow further product
development. The University recognizes that, according to Article 9.3 of the
above Agreement, the Licensee has an obligation to continue sales, and that if
the Licensee discontinues sales for more than three months that the Licensor may
terminate the Agreement. The University, as Licensor, has decided not to
terminate the License Agreement for breach of this obligation, and is waiving it
right to enforce this provision until August 31, 1998. The University reserves
its right to enforce this provision after August 31, 1998 and throughout the
remaining term of the License Agreement. The University expects the Licensee to
notify it of the date of first sale within thirty (30) days following August 31,
1998 as consideration for the University's waiving its right to terminate before
August 31, 1998.
In addition, according to Provision 4.1 of the above Agreement, the
"Licensee agrees to take all action necessary" to enable Licensor to satisfy its
obligations under Public Law 96-517 as amended. The University, in order to
comply with federal law must submit a hard copy of each patent application as
filed showing the "federal support clause" and a hard copy of each issued patent
so that the information may be recorded and filed with the Department of Health
and Human Services. Please submit such information to my office by April 15th.
If you have any questions or concerns please contact me as soon as
possible. Thank you for your assistance.
Sincerely,
/s/ Xxxxxx Xxxxx
--------------------------------
Xxxxxx Xxxxx
Assistant Director
Enclosure
cc: Xx. Xxxx X. Xxxxxxxx
Xx. Xxxx Xxxx, Esq.
Xx. Xxxx XxXxxx, Sr.
OFFICE OF TECHNOLOGY TRANSFER
P.O. BOX 016960 (M811)
XXXXX, XXXXXXX 00000
TEL. (000) 000-0000
FAX: (000) 000-0000