EXHIBIT 10.1
LICENSE AGREEMENT DATED SEPTEMBER 13, 2005
LICENSE AGREEMENT
This Agreement is between The Xxxxx Xxxxxxx University, a corporation
of the State of Maryland, acting through its Applied Physics Laboratory having a
place of business at 00000 Xxxxx Xxxxxxx Xxxx, Xxxxxx, XX 00000-0000
(hereinafter "JHU/APL") and Link Plus Corporation, a Delaware corporation,
having a place of business at 0000 Xxxxxxxx Xxxxxxx Xxxxx, Xxxxxxxx, XX 00000
(hereinafter "COMPANY").
RECITALS
JHU/APL, by virtue of its role as a government contractor and
educational institution, carries out scientific and applied research and
development through its staff and is committed to licensing JHU/APL INTELLECTUAL
PROPERTY (hereinafter defined) in a manner that will benefit the public by
bringing the results of that research and development into widespread use
through the distribution of useful products and the utilization of new
processes, but is without capacity to commercially develop, manufacture, and
distribute any such product or processes itself.
JHU/APL has developed certain valuable inventions, copyrighted matter,
proprietary technical information, know-how, show-how and/or trade secrets
comprising the JHU/APL INTELLECTUAL PROPERTY and generally describing a
molecularly imprinted polymer sensor for explosives.
The Xxxxx Xxxxxxx University through JHU/APL has acquired through
assignment or otherwise all right, title and interest in said valuable
inventions, copyrighted matter, proprietary technical information, know-how,
show-how and/or trade secrets.
COMPANY desires to commercially develop, manufacture, use and
distribute products and processes embodying the JHU/APL INTELLECTUAL PROPERTY
throughout the world.
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NOW, THEREFORE, in consideration of the foregoing premises and the
following mutual covenants, and other good and valuable consideration, the
receipt of which is hereby acknowledged, and intending to be legally bound
hereby, the parties agree as follows:
ARTICLE 1 - DEFINITIONS
1.1 "AFFILIATED COMPANY" or "AFFILIATED COMPANIES" shall mean any
corporation, company, partnership, joint venture or other entity which controls,
is controlled by or is under common control with COMPANY. For purposes of this
section 1.1, control shall mean the direct or indirect ownership of at least
fifty percent (50%).
1.2 "COMPANY IMPROVEMENT(S)" shall mean any inventions, copyrighted
matter, technical information, know-how, show-how or trade secrets made by a
COMPANY employee relating to the CORE TECHNOLOGY.
1.3 "CORE TECHNOLOGY" shall mean a molecularly imprinted polymer sensor
for explosives as described in the JHU/APL INTELLECTUAL PROPERTY.
1.4 "EFFECTIVE DATE" of this License Agreement shall mean the date the
last party hereto has executed this Agreement.
1.5 "EXCLUSIVE LICENSE" shall mean a grant by JHU/APL to COMPANY of
exclusive rights in the JHU/APL INTELLECTUAL PROPERTY, subject to any rights
retained by the United States Government in accordance with P.L. 96-517, as
amended by P.L. 98-620, and with the provisions of any U.S. Government contracts
under which the JHU/APL INTELLECTUAL PROPERTY was developed, and further subject
to the retained right of JHU/APL to make, have made, provide, use, copy, modify,
distribute and practice LICENSED PRODUCT(S) and LICENSED PROCESS(ES) for its
non-profit purposes in
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connection with its research, education and public service missions including
the provision of research and development services for federal, state and local
governments.
1.6 "JHU/APL IMPROVEMENT(S)" shall mean improvements in CORE TECHNOLOGY
comprising any inventions, copyrighted matter, technical information, know-how,
show-how and/ or trade secrets comprising JHU/APL PATENT RIGHTS (hereinafter
defined) and JHU/APL UNPATENTED INTELLECTUAL PROPERTY (hereinafter defined) that
result from any R&D AGREEMENTS (hereinafter defined) whether funded by JHU/APL,
COMPANY, or the United States Government and made either solely by a JHU/APL
employee or jointly by a JHU/APL employee and a COMPANY employee in the LICENSED
FIELD.
1.7 "JHU/APL INTELLECTUAL PROPERTY" shall mean, individually and
collectively, JHU/APL PATENT RIGHTS and JHU/APL UNPATENTED INTELLECTUAL
PROPERTY.
1.8 "JHU/APL PATENT RIGHTS" shall mean:
a. previously filed patent application(s) listed in Appendix A, any
future filed patent application(s) relating to invention disclosures
listed in Appendix A, and the inventions disclosed and claimed therein
and patents issuing thereon, and all continuations, divisions, and
reissues based thereon, and any corresponding U.S. and foreign patent
applications, and any patents, patents of addition, or other equivalent
foreign patent rights issuing, granted or registered thereon; and
b. any additional U.S. or foreign patent applications filed on behalf
of JHU/APL (whether invented solely by JHU/APL or jointly by JHU/APL
and COMPANY) and directed to patentable features that may be contained
within the JHU/APL UNPATENTED INTELLECTUAL PROPERTY (including JHU/APL
IMPROVEMENT(S) as provided in and subject to the conditions of Section
2.3 of this Agreement).
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1.9 "JHU/APL UNPATENTED INTELLECTUAL PROPERTY" shall mean and include:
JHU/APL's copyrighted matter, proprietary technical information, know-how,
show-how and/or trade secrets as listed in Appendix B hereto associated with the
CORE TECHNOLOGY. The above includes, but is not limited to, what is:
a. existing as of the EFFECTIVE DATE and delivered to COMPANY prior to
the EFFECTIVE DATE, or under this Agreement; and
b. disclosed in the invention disclosure(s) and in patent
application(s) listed in Appendix A and included in the JHU/APL PATENT
RIGHTS; and
c. representing and included in JHU/APL IMPROVEMENT(S) as provided in
and subject to the conditions of section 2.3 of this Agreement.
1.10 "LICENSED FIELD" shall mean all fields of use.
1.11 "LICENSED PRODUCT(S)" shall mean any device or other product:
a. the manufacture, use or sale of which would constitute, but for the
license granted to COMPANY pursuant to this Agreement, an infringement
of a claim of JHU/APL PATENT RIGHTS (infringement shall include, but is
not limited to, direct, contributory, or inducement to infringe); or
b. embodying, was made using, is derived primarily from or based
substantially on JHU/APL UNPATENTED INTELLECTUAL PROPERTY.
1.12 "LICENSED PROCESS(ES)" shall mean any process or method performed
on behalf of a third party or used in the manufacture or use of a product:
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a. the practice of which would constitute, but for the license granted
to COMPANY pursuant to this Agreement, an infringement of a claim of
JHU/APL PATENT RIGHTS (infringement shall include, but is not limited
to, direct, contributory, or inducement to infringe); or
b. the practice of which uses, is derived primarily from or based
substantially on the JHU/APL UNPATENTED INTELLECTUAL PROPERTY.
1.13 "NET SALES", subject to section 6.8 below, shall mean gross
revenues of any nature including, but not limited to, sales and licensing fees,
maintenance and service fees, access payments and other amounts billed by
COMPANY, AFFILIATED COMPANIES and COMPANY's sublicensees from the sale, lease or
other disposal of LICENSED PRODUCT(S) or the practice or performance of LICENSED
PROCESS(ES) less
a. credits (including credit card charge-backs) or allowances, refunds
or discounts, if any, actually granted on account of price adjustments,
recalls, rejection or return of items previously sold, leased or
otherwise disposed of;
b. excises, sales taxes, value added taxes, consumption taxes, duties,
or other taxes imposed upon and paid with respect to such sales
(excluding income or franchise taxes of any kind); and
c. separately itemized insurance and transportation costs incurred in
shipping the LICENSED PRODUCT(S).
1.14 "R&D AGREEMENTS" shall mean any future agreements relating to
sponsored research, facility use and/or technical assistance negotiated or to be
negotiated between JHU/APL and COMPANY pertaining to research and development
directed to the CORE TECHNOLOGY, whether funded by JHU/APL, COMPANY, or the
United States Government.
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1.15 "SUBLICENSE REVENUES" shall mean consideration of any kind for
sublicensee sales of LICENSED PRODUCT(S) or LICENSED PROCESS(ES), including but
not limited to cash, equity, and other consideration, whether in the form of up
front fees or milestone fees, and including any premium paid by the sublicensee
over Fair Market Value for stock of COMPANY, received by COMPANY from a
sublicensee in consideration for a sublicense to JHU/APL INTELLECTUAL PROPERTY
granted by COMPANY; however, not included in SUBLICENSE REVENUES are amounts
paid to COMPANY by the sublicensee for product development and research work
performed by COMPANY, or third parties on its behalf. The term "Fair Market
Value" as used in this paragraph shall mean the average price at which the stock
in question is publicly trading for sixty (60) days prior to the announcement of
its purchase by the sublicensee or if the stock is not publicly traded, the
value of such stock as determined by the most recent private financing of
COMPANY or if no private financing has occurred, then as reasonably determined
by COMPANY's accountants.
1.16 "TERRITORY" shall mean the world.
1.17 COMPANY TECHNOLOGY shall mean LinkPlus's transceiver hardware and
software.
1.18 "CATEGORY A and CATEGORY B EQUITY" shall mean equity specifically
defined for distribution within JHU/APL between inventors and
JHU/APL and is not related to COMPANY's share designation.
ARTICLE 2 - GRANTS
2.1 Subject to the terms and conditions of this Agreement, JHU/APL
hereby grants to COMPANY an EXCLUSIVE LICENSE to make, use, market, sell, offer
to sell, import, and practice the LICENSED PRODUCT(S) and LICENSED PROCESS(ES)
in the TERRITORY under the JHU/APL INTELLECTUAL PROPERTY in the LICENSED FIELD.
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2.2 COMPANY may sublicense others under this Agreement and amend
existing sublicenses provided that the terms of any such sublicense shall be no
less favorable to COMPANY than this Agreement is to JHU/APL and no broader in
scope and no less restrictive on the sublicensee than this Agreement is on
COMPANY and are otherwise consistent with the terms of this Agreement and
include provisions for the payment of JHU/APL's royalties, indemnification of
JHU/APL and the flow down of the limited warranties contained herein, and
further provided that COMPANY provides a copy of each such sublicense agreement
and amendment to an existing sublicense agreement to JHU/APL within five (5)
business days after its execution. Any sublicense agreement and amendment to an
existing sublicense agreement not consistent with the terms of this Agreement or
not containing royalty, indemnification and warranty provisions as set forth
above or granting the right to the sublicensee to further sublicense the rights
granted herein, must be submitted to JHU/APL prior to its execution for review
and approval, and COMPANY shall provide at least ten (10) business days for
JHU/APL's review.
2.3 Subject to the terms of funding agreements with third parties, all
JHU/APL IMPROVEMENT(S) shall be licensed to COMPANY under this Agreement.
2.4 COMPANY hereby grants to JHU/APL a nonexclusive, paid up,
nontransferable, worldwide license to make, have made, use, and practice
products and processes under all COMPANY owned intellectual property in COMPANY
IMPROVEMENT(S), such license only for JHU/APL's non-profit purposes in
connection with its research, education and public service missions including
the provision of research and development services for federal, state and local
governments. Notwithstanding the foregoing, upon termination of this Agreement
or termination of exclusivity under this Agreement, JHU/APL shall be entitled to
license COMPANY IMPROVEMENT(S) to third parties on the same terms as it licenses
the JHU/APL INTELLECTUAL PROPERTY.
ARTICLE 3 - DELIVERABLES
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3.1 JHU/APL shall use reasonable efforts to deliver to COMPANY those
deliverables in existence as of the EFFECTIVE DATE directly related to the
JHU/APL INTELLECTUAL PROPERTY and listed in Appendix B.
ARTICLE 4 - RELATED CONTRACTS AND CONFLICT OF INTEREST
4.1 JHU/APL and COMPANY agree that, from time to time, they may
negotiate R&D AGREEMENTS between them but neither party shall be under any
obligation to do so.
4.2 COMPANY understands and agrees that JHU/APL has a technical
direction agent relationship with the United States Government which requires
that JHU/APL avoid any work under any contract or agreement that would
jeopardize its or its employees' ability to act for the United States Government
as an impartial or neutral evaluator. Therefore, JHU/APL shall at all times
under this Agreement retain the right to refuse to accept any subcontract or
other agreement to perform any work under any such subcontract or other
agreement between JHU/APL and COMPANY which in JHU/APL's sole discretion would
create an actual or perceived organizational or individual conflict of interest.
ARTICLE 5 - PATENT INFRINGEMENT
5.1 Each party will notify the other promptly in writing when any
infringement by another is uncovered or suspected.
5.2 COMPANY shall have the first right to enforce any patent or
copyright within JHU/APL INTELLECTUAL PROPERTY against any infringement or
alleged infringement thereof, and shall at all times keep JHU/APL informed as to
the status thereof. COMPANY may, in its sole judgment and at its own expense,
institute suit against any such infringer or alleged infringer and control,
settle, and defend such suit in a manner consistent with the
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terms and provisions hereof and recover, for its account, any damages, awards or
settlements resulting therefrom, subject to section 5.4. This right to xxx for
infringement shall not be used in an arbitrary or capricious manner. JHU/APL
shall reasonably cooperate in any such litigation at COMPANY's expense.
5.3 If COMPANY elects not to enforce any patent within the JHU/APL
INTELLECTUAL PROPERTY, then it shall so notify JHU/APL in writing within six (6)
months of receiving notice that an infringement exists, and JHU/APL may, in its
sole judgment and at its own expense, take steps to enforce any patent or
copyright and control, settle, and defend such suit in a manner consistent with
the terms and provisions hereof, and recover, for its own account, any damages,
awards or settlements resulting therefrom.
5.4 Any recovery by COMPANY under section 5.2 shall be deemed to
reflect loss of commercial sales, and COMPANY shall pay to JHU/APL out of such
recovery the royalties it would have otherwise received in light of the
infringing sales net of all reasonable costs and expenses associated with each
suit or settlement. If the cost and expenses exceed the recovery, then [*] shall
be credited against royalties payable by COMPANY to JHU/APL hereunder in
connection with sales in the country of such legal proceedings, provided,
however, that any such credit under this section 5.4 shall not exceed [*]
otherwise payable to JHU/APL with regard to sales in the country of such action
in any one calendar year, with any excess credit being carried forward to future
calendar years.
ARTICLE 6 - PAYMENTS, ROYALTY AND RESEARCH AND DEVELOPMENT SUPPORT
6.1 Reimbursement of costs and expenses:
COMPANY will reimburse JHU/APL for future reasonable costs of
preparing, filing, prosecuting and maintaining any foreign JHU/APL PATENT
RIGHTS, elected by
[*] CONFIDENTIAL TREATMENT IS REQUESTED
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COMPANY as set forth in paragraph 7.1 of this Agreement. COMPANY shall reimburse
JHU/APL within thirty (30) days of receipt of an invoice from JHU/APL.
6.2 Fees and equity:
6.2.1. LICENSE EXECUTION FEE: COMPANY shall pay to JHU/APL a
License Execution Fee of [*] to JHU/APL, due within thirty (30)
days from the EFFECTIVE DATE;
6.2.2. EQUITY: COMPANY shall issue to JHU/APL [*] shares of
Common Stock within thirty (30) days from the EFFECTIVE DATE.
[*]
6.2.3. COMPANY shall issue to JHU/APL [*] warrants to purchase
shares of Common Stock within thirty (30) days from the
EFFECTIVE DATE. [*]
6.2.4. MILESTONE PAYMENt: COMPANY shall pay to JHU/APL a Proof
of Concept Milestone payment of [*] either 30 days after
demonstration of proof of concept for the integration of the APL
TECHNOLOGY with COMPANY's TECHNOLOGY, or six (6) months from
EXECUTION DATE; whichever comes later.
6.3 COMPANY shall pay to JHU/APL a [*] annual maintenance fee due
within thirty (30) days of each anniversary of the EFFECTIVE DATE of this
Agreement. Such fees are nonrefundable and shall not be credited against
royalties or other fees.
6.4 For the term of this Agreement, COMPANY shall pay to JHU/APL a
running royalty for each LICENSED PRODUCT(S) sold, leased or otherwise disposed
of or for the practice or performance of LICENSED PROCESS(ES) by COMPANY and
AFFILIATED COMPANIES as follows:
[*] CONFIDENTIAL TREATMENT IS REQUESTED
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a. [*] of NET SALES if the particular LICENSED PRODUCT(S) or LICENSED
PROCESS(ES) includes a feature covered by one or more then pending
claim(s) of a pending patent application included in JHU/APL PATENT
RIGHTS, or directly or contributory infringes any valid and unexpired
claim(s) of a patent included in JHU/APL PATENT RIGHTS, that is pending
or issued in the country where that particular LICENSED PRODUCT(S) or
LICENSED PROCESS(ES) are either produced, sold, otherwise disposed of,
practiced or performed. The royalty rate for each such product and
process shall not exceed the rates above even if the particular product
or process contains features covered by more than one patent or patent
application included in JHU/APL PATENT RIGHTS.
b. [*] of NET SALES if, within one (1) year of the EFFECTIVE DATE,
paragraph 6.4a does not apply to the particular LICENSED PRODUCT(S) and
LICENSED PROCESS(ES) and, thereafter, until such time as paragraph 6.4a
does apply.
c. All such running royalty payments shall be made quarterly as
provided in section 6.6.
d. Sales of LICENSED PRODUCT(S) and LICENSED PROCESS(ES) to the United
States Government by COMPANY, and AFFILIATED COMPANY, or COMPANY's
sublicensees shall be subject to the royalty stated in this section
6.4; however, COMPANY agrees that it shall not xxxx, invoice or charge
the United States Government for any such royalty paid to JHU/APL, if
to do so would violate United States laws or regulations. In any event,
such royalty shall in the case of all such sales to the United States
Government be due to JHU/APL.
e. COMPANY shall pay to JHU/APL [*] of all SUBLICENSE REVENUES received
by COMPANY but, in no event, shall COMPANY pay to JHU/APL less than an
amount equal to [*].
[*] CONFIDENTIAL TREATMENT IS REQUESTED
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6.5 COMPANY shall be obligated to make minimum annual royalty payments
of [*] beginning twelve (12) months after the first sale of LICENSED PRODUCT(S)
or LICENSED PROCESS(ES), said minimum annual royalty payments being fully
creditable against royalties due for the previous twelve (12) month period.
6.6 COMPANY shall provide to JHU/APL within sixty (60) days of the end
of each March, June, September and December after the EFFECTIVE DATE of this
Agreement, a written report to JHU/APL of the amount of LICENSED PRODUCT(S)
sold, leased or otherwise disposed of and LICENSED PROCESS(ES) practiced or
performed, the total NET SALES of such LICENSED PRODUCT(S) and LICENSED
PROCESS(ES), and the running royalties due to JHU/APL as a result of NET SALES
by COMPANY, AFFILIATED COMPANIES and sublicensees thereof. Payment of any such
royalties due shall accompany such report. Until COMPANY, an AFFILIATED COMPANY
or a sublicensee has achieved a first commercial sale of a LICENSED PRODUCT(S)
or LICENSED PROCESS(ES), a report shall be submitted at the end of every June
and December after the EFFECTIVE DATE of this Agreement and will include a full
written report describing COMPANY's, AFFILIATED COMPANIES' or sublicensee's
technical efforts towards meeting the milestones set forth in Article 8.
6.7 COMPANY shall make and retain, for a period of three (3) years
following the period of each report required by section 6.6, true and accurate
records, files and books of account containing all the data reasonably required
for the full computation and verification of sales and other information
required in section 6.6. Such books and records shall be in accordance with
generally accepted accounting principles consistently applied. COMPANY shall
permit the inspection and copying of such records, files and books of account by
JHU/APL, its agents, or the inventors or their assignees during regular business
hours upon ten (10) business days' written notice to COMPANY. Such inspection
shall not be made more than once each calendar year. All costs of such
inspection and copying shall be paid by JHU/APL or the inventors or their
assignees, provided that if any such
[*] CONFIDENTIAL TREATMENT IS REQUESTED
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inspection shall reveal that an error has been made in the amount equal to [*]
of such payment, such costs shall be borne by COMPANY. COMPANY shall include in
any agreement with its AFFILIATED COMPANIES or its sublicensees which permits
such party to make, use or sell the LICENSED PRODUCT(S) or practice or perform
the LICENSED PROCESS(ES), a provision requiring such party to retain records of
sales, leases or other disposals of LICENSED PRODUCT(S) and the practice or
performance of LICENSED PROCESS(ES) and other information as required in section
6.6 and permit JHU/APL to inspect such records as required by this section 6.7.
6.8 In order to insure JHU/APL the full royalty payments contemplated
hereunder, COMPANY agrees that in the event any LICENSED PRODUCT(S) shall be
sold to an AFFILIATED COMPANY or sublicensee or to a corporation, firm or
association with which COMPANY shall have any agreement, understanding or
arrangement with respect to consideration (such as, among other things, an
option to purchase stock or actual stock ownership, or an arrangement involving
division of profits or special rebates or allowances) the royalties to be paid
hereunder for such LICENSED PRODUCT(S) shall be based upon the greater of: [*]
6.9 In the event that COMPANY or an AFFILIATED COMPANY sells LICENSED
PRODUCT(S) in combination with other devices which are not LICENSED PRODUCT(S)
("Other Items") as part of a system ("System"), the NET SALES for purposes of
royalty payments on the System shall be calculated as follows:
a. [*];
b. Otherwise, [*].
6.10 All payments under this Agreement shall be made in U.S. Dollars.
[*] CONFIDENTIAL TREATMENT IS REQUESTED
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6.11 Where royalties are due hereunder for sales of LICENSED PRODUCT(S)
in a country where, by reason of currency regulations or taxes of any kind, it
is impossible or illegal for COMPANY, an AFFILIATED COMPANY, or COMPANY's
sublicensee to transfer royalty payments to JHU/APL for NET SALES in that
country, such royalties shall be deposited by COMPANY, an AFFILIATED COMPANY, or
COMPANY's sublicensee in JHU/APL's name in whatever currency is allowable in an
accredited bank in that country that is reasonably acceptable to JHU/APL.
6.12 Any and all income or similar taxes imposed or levied on account
of the receipt of royalties payable under this Agreement which are required to
be withheld by COMPANY, an AFFILIATED COMPANY, or COMPANY's sublicensee shall be
paid by COMPANY, such AFFILIATED COMPANY, or COMPANY's sublicensee on behalf of
JHU/APL and shall be paid to the proper taxing authority. Proof of payment shall
be secured and sent to JHU/APL by COMPANY, such AFFILIATED COMPANY, or COMPANY's
sublicensee as evidence of such payment in such form as required by the tax
authorities having jurisdiction over COMPANY, such AFFILIATED COMPANY, or
COMPANY's sublicensee. Such taxes shall be deducted from the royalty that would
otherwise be remittable by COMPANY, such AFFILIATED COMPANY or COMPANY's
sublicensee.
ARTICLE 7 - PATENT RIGHTS AND CONFIDENTIAL INFORMATION
7.1 JHU/APL shall file, prosecute and maintain all patents and patent
applications specified under JHU/APL PATENT RIGHTS. COMPANY shall, within thirty
(30) days of receipt of an invoice from JHU/APL, reimburse JHU/APL for all
future expenses associated with any foreign JHU/APL PATENT RIGHTS, elected by
COMPANY, including reasonable costs of preparing, filing, prosecuting and
maintaining JHU/APL PATENT RIGHTS. Title to all such patents and patent
applications shall reside in The Xxxxx Xxxxxxx University. JHU/APL shall have
full and complete control over all patent matters in connection therewith under
the JHU/APL PATENT RIGHTS. In any country where the COMPANY elects not to have a
patent application filed or to pay expenses associated with filing,
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prosecuting, or maintaining a patent application or patent, JHU/APL may file,
prosecute, and/or maintain a patent application or patent at its own expense
and for its own exclusive benefit and the COMPANY thereafter shall not be
licensed under such patent or patent application.
7.2 COMPANY agrees that all packaging containing individual LICENSED
PRODUCT(S) sold by COMPANY, AFFILIATED COMPANIES and sublicensees of COMPANY
will be marked with the number of the applicable patent(s) licensed hereunder in
accordance with each country's patent laws.
7.3 If necessary, the parties will exchange information which they
consider to be confidential. The recipient of such information agrees to accept
the disclosure of said information which is marked as confidential or
proprietary at the time it is sent to the recipient, and to employ all
reasonable efforts to maintain the information secret and confidential, such
efforts to be no less than the degree of care employed by the recipient to
preserve and safeguard its own confidential information. The information shall
not be disclosed or revealed to anyone except employees of the recipient who
have a need to know the information and who have agreed in writing to maintain
confidential the proprietary information of the recipient and such employees
shall be advised by the recipient of the confidential nature of the information
and that the information shall be treated accordingly. The recipient's
obligations under this Paragraph 7.3 shall not extend to any part of the
information:
a. that can be demonstrated to have been in the public domain or
publicly known and readily available to the trade or the public prior
to the date of the disclosure; or
b. that can be demonstrated, from written records to have been in the
recipient's possession or readily available to the recipient from
another source not under obligation of secrecy to the disclosing party
prior to the disclosure; or
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c. that becomes part of the public domain or publicly known by
publication or otherwise, not due to any unauthorized act by the
recipient; or
d. that is demonstrated from written records to have been developed by
or for the receiving party without reference to confidential
information disclosed by the disclosing party.
The obligations of this section 7.3 shall also apply to AFFILIATED COMPANIES
and/or sublicensees provided such information by COMPANY. JHU/APL's, COMPANY's,
AFFILIATED COMPANIES', and sublicensees' obligations under this section 7.3
shall extend until five (5) years after the termination of this Agreement. Any
prior non-disclosure agreements between JHU/APL and COMPANY are hereby
terminated and superceded by this section 7.3.
ARTICLE 8 - TERM, MILESTONES, AND TERMINATION
8.1 TERM: This Agreement shall expire in each country on the date of
expiration of the last to expire patent included within JHU/APL PATENT RIGHTS in
that country or if no patents issue twenty (20) years from the EFFECTIVE DATE.
8.2 MILESTONES: COMPANY shall exercise best efforts to develop and
commercialize the LICENSED PRODUCT(S) and LICENSED PROCESS(ES) using good
scientific judgment. To this end, COMPANY shall meet the following milestones in
the years noted:
8.2.1. First commercial product sale that incorporates the JHU/APL MIPs
technology within [*] from completion of a successful proof of concept.
8.2.2. Achieve annual sales of LICENSED PRODUCT of [*] that
incorporates the JHU/APL MIPs technology within [*] from completion of
a successful proof of concept.
[*] CONFIDENTIAL TREATMENT IS REQUESTED
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8.3 TERMINATION:
a. Upon material breach or material default of any of the terms and
conditions of this Agreement, except for sections 6.2 and 6.3 and, as
set forth below, for the milestones in section 8.2, the defaulting
party shall be given written notice of such default in writing and a
period of sixty (60) days after receipt of such notice to cure the
default or breach. If the default or breach is not corrected within
said sixty (60) day period, the party not in default shall have the
right to terminate this Agreement. Failure to meet any of the
milestones in paragraph 8.2 shall be considered a breach; however, in
lieu of JHU/APL terminating this Agreement for COMPANY's failure to
meet its milestones, JHU/APL, in its sole discretion and without
providing the written notice and 60-day cure period set forth above,
may convert the license granted herein to a non-exclusive license.
Furthermore, if COMPANY fails to make a commercial sale within five (5)
years of the EFFECTIVE DATE, then JHU/APL, in its sole discretion and
without providing the written notice and 60-day cure period set forth
above, may terminate this Agreement.
b. COMPANY may terminate this Agreement and the license granted herein,
for any reason, upon giving JHU/APL sixty (60) days written notice.
c. Termination shall not affect JHU/APL's right to recover accrued and
unpaid royalties or fees as provided in paragraph 6.3 or reimbursement
for patent expenses incurred pursuant to paragraph 7.1 prior to
termination or to recover the unpaid balance of the License Execution
Fee payments as provided in section 6.2. Upon termination, all rights
in and to the licensed JHU/APL INTELLECTUAL PROPERTY shall revert to
JHU/APL at no cost to JHU/APL.
ARTICLE 9 - MISCELLANEOUS
9.1 NOTICES AND CORRESPONDENCE:
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a. All notices required or permitted to be given under this Agreement
shall be in writing and shall be deemed to have been sufficiently given
for all purposes thereof when mailed by certified mail to the party to
be notified or sent by overnight courier service. All notices shall be
deemed to have been given when mailed as evidenced by the postmark at
the point of mailing or by other package pickup receipt.
b. All notices and any correspondence, including written progress
reports and royalty and other payments, respecting this Agreement shall
be addressed as follows:
To JHU/APL: Director of Technology Transfer
The Xxxxx Xxxxxxx University
Applied Physics Laboratory
00000 Xxxxx Xxxxxxx Xxxx
Xxxxxx, XX 00000-0000
To COMPANY: Xxxxxx X. Xxxxx, Xx.
Chairman and Chief Executive Officer
LinkPlus Corporation
0000 Xxxxxxxx Xxxxxxx Xxxxx
Xxxxxxxx, Xxxxxxxx 00000
c. Either party may change its address for the purpose of this
Agreement by notice in writing to the other party. Checks are to be
made payable to "The Xxxxx Xxxxxxx University Applied Physics
Laboratory".
9.2 NONASSIGNABILITY: This Agreement is binding upon and shall inure to
the benefit of JHU/APL, its successors and assignees and shall not be assignable
to another party without the written consent of JHU/APL.
9.3 PROVISIONS HELD INVALID, ILLEGAL OR UNENFORCEABLE: In the event
that any one or more of the provisions of this Agreement should for any reason
be held by any court or authority having jurisdiction over this Agreement, or
over any of the parties hereto to be invalid, illegal or unenforceable, such
provision or provisions shall be reformed to approximate as nearly as possible
the intent of the parties, and if
18
unreformable, shall be divisible and deleted in such jurisdictions; elsewhere,
this Agreement shall not be affected.
9.4 APPLICABLE LAW: The construction, performance, and execution
of this Agreement shall be governed by the laws of the State of Maryland.
9.5 NON-USE OF UNIVERSITY's NAME: COMPANY shall not use the name of THE
XXXXX XXXXXXX UNIVERSITY or any of its constituent parts, such as JHU/APL, or
any contraction thereof in any advertising, promotional, sales literature or
fundraising documents without prior written approval from JHU/APL. COMPANY shall
allow at least ten (10) business days notice of any proposed public disclosure
for JHU/APL's review and comment or to provide written approval. JHU/APL shall
consider preapproving standard language which, once approved, may be used by
COMPANY thereafter without the need for further approval from JHU/APL.
9.6 WARRANTY: JHU/APL warrants that to the best of its knowledge,
information and belief, it owns the JHU/APL INTELLECTUAL PROPERTY and has the
right to grant the licenses granted herein. JHU/APL does not warrant the
validity of any JHU/APL INTELLECTUAL PROPERTY or that practice under such
JHU/APL INTELLECTUAL PROPERTY shall be free of infringement. EXCEPT AS EXPRESSLY
SET FORTH IN THIS SECTION 9.6, COMPANY, AFFILIATED COMPANIES AND SUBLICENSEES
AGREE THAT THE JHU/APL INTELLECTUAL PROPERTY IS PROVIDED "AS IS", AND THAT
JHU/APL MAKES NO REPRESENTATION OR WARRANTY WITH RESPECT TO THE PERFORMANCE OF
LICENSED PRODUCT(S) AND LICENSED PROCESS(ES) INCLUDING THEIR SAFETY,
EFFECTIVENESS, OR COMMERCIAL VIABILITY. JHU/APL DISCLAIMS ALL WARRANTIES WITH
REGARD TO PRODUCT(S) AND PROCESS(ES) LICENSED UNDER THIS AGREEMENT, INCLUDING,
BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESS OR IMPLIED, OF MERCHANTABILITY AND
FITNESS FOR ANY PARTICULAR PURPOSE. FURTHERMORE, JHU/APL MAKES NO REPRESENTATION
OR WARRANTY THAT THE USE OF LICENSED PRODUCT(S) AND LICENSED PROCESS(ES) WILL
NOT
19
INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT OF A THIRD PARTY. NOTWITHSTANDING
ANY OTHER PROVISION OF THIS AGREEMENT, JHU/APL ADDITIONALLY DISCLAIMS ALL
OBLIGATIONS AND LIABILITIES ON THE PART OF JHU/APL AND INVENTORS, FOR DAMAGES,
INCLUDING, BUT NOT LIMITED TO, DIRECT, INDIRECT, SPECIAL, AND CONSEQUENTIAL
DAMAGES, ATTORNEYS' AND EXPERTS' FEES, AND COURT COSTS (EVEN IF JHU/APL HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES OR COSTS), ARISING OUT OF OR IN
CONNECTION WITH THE MANUFACTURE, USE, SALE OR PRACTICE OF THE PRODUCT(S) AND
PROCESS(ES) LICENSED UNDER THIS AGREEMENT. COMPANY, AFFILIATED COMPANIES AND
SUBLICENSEES ASSUME ALL RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE CAUSED
BY A PRODUCT MANUFACTURED, USED, OR SOLD, OR A PROCESS PRACTICED, BY COMPANY,
ITS SUBLICENSEES AND AFFILIATED COMPANIES WHICH IS A LICENSED PRODUCT(S) OR A
LICENSED PROCESS(ES) AS DEFINED IN THIS AGREEMENT.
9.7 INDEMNIFICATION: JHU/APL and the inventors/creators/developers of
LICENSED PRODUCT(S) and LICENSED PROCESS(ES) will not, under the provisions of
this Agreement or otherwise, have control over the manner in which COMPANY or
its AFFILIATED COMPANIES or its sublicensees or those operating for its account
or third parties who practice LICENSED PROCESS(ES) or purchase LICENSED
PRODUCT(S) from any of the foregoing entities, practice the inventions,
copyrighted matter, proprietary technical information, know-how, show-how or
trade secrets of LICENSED PRODUCT(S) and LICENSED PROCESS(ES). COMPANY shall
defend and hold JHU/APL, The Xxxxx Xxxxxxx University, their present and former
regents, trustees, officers, inventors/creators/developers of JHU/APL PATENT
RIGHTS and JHU/APL UNPATENTED INTELLECTUAL PROPERTY, agents, faculty, employees
and students harmless as against any judgments, fees, expenses, or other costs
arising from or incidental to any product liability or other lawsuit, claim,
demand or other action brought as a consequence of the practice of said
inventions, copyrighted matter, proprietary technical information, know-how,
show-how or trade secrets by any of the foregoing entities, whether or not
JHU/APL or said inventors/creators/developers, either jointly or severally, is
named as a
20
party defendant in any such lawsuit provided, however, that JHU/APL notifies
COMPANY promptly of any such lawsuit, claim, demand or other action. Practice of
the inventions, copyrighted matter, proprietary technical information, know-how,
show-how or trade secrets covered by LICENSED PRODUCT(S) or LICENSED
PROCESS(ES), by an AFFILIATED COMPANY or an agent or a sublicensee or a third
party on behalf of or for the account of COMPANY or by a third party who
practices LICENSED PROCESS(ES) or purchases LICENSED PRODUCT(S) from COMPANY,
shall be considered COMPANY's practice of said inventions, copyrighted matter,
proprietary technical information, know-how, show-how or trade secrets for
purposes of this section 9.7. The obligation of COMPANY to defend and indemnify
as set out in this section 9.7 shall survive the termination of this Agreement.
9.8 INSURANCE: Prior to first commercial sale of any LICENSED
PRODUCT(S) or the practice of any LICENSE PROCESS(ES) in any particular country,
COMPANY shall establish and maintain, in each country in which COMPANY, an
AFFILIATED COMPANY or sublicensee shall test or sell LICENSED PRODUCT(S) or
practice LICENSED PROCESS(ES), product liability or other appropriate insurance
coverage appropriate to the risks involved in marketing LICENSED PRODUCT(S) and
practicing LICENSED PROCESS(ES), and will annually present evidence to JHU/APL
that such coverage is being maintained. Upon JHU/APL's request, COMPANY will
furnish JHU/APL with a Certificate of Insurance of each product liability or
other insurance policy obtained and agrees to increase or change the kind of
insurance pertaining to the LICENSED PRODUCT(S) and LICENSED PROCESS(ES) at the
request of JHU/APL. JHU/APL shall be listed as an additional insured in
COMPANY's said insurance policies. Once such insurance coverage is established,
COMPANY shall effect changes to such insurance coverage only if reasonable and
customary.
9.9 PUBLICATION: JHU/APL may publish manuscripts, abstracts or the like
describing the JHU/APL INTELLECTUAL PROPERTY and inventions and copyrighted
matter, but not trade secrets, contained therein provided confidential
information of COMPANY as defined in section 7.3, is not included or without
first obtaining approval from COMPANY to include such confidential information.
JHU/APL shall provide thirty (30) days
21
written notice to COMPANY of each proposed publication for COMPANY's review and
comments. Thereafter, JHU/APL shall be free to publish manuscripts and abstracts
or the like directed to the work done at JHU/APL related to the licensed
technology without prior approval.
9.10 INTEGRATION: This Agreement constitutes the entire understanding
between the parties with respect to the obligations of the parties with respect
to the subject matter hereof, and supersedes and replaces all prior agreements,
understandings, writings, and discussions between the parties relating to said
subject matter. Neither of the parties shall be bound by any warranties,
understandings or representations with respect to such subject matter other than
as expressly provided herein or in a writing signed with or subsequent to
execution hereof by an authorized official of the party to be bound thereby.
9.11 AMENDMENT/WAIVER: This Agreement may be amended and any of its
terms or conditions may be waived only by a written instrument executed by the
authorized officials of the parties or, in the case of a waiver, by the party
waiving compliance. The failure of either party at any time or times to require
performance of any provision hereof shall in no manner affect its right at a
later time to enforce the same. No waiver by either party of any condition or
term in any one or more instances shall be construed as a further or continuing
waiver of such condition or term or of any other condition or term.
9.12 PARTIES BOUND/BENEFITED: This Agreement shall be binding upon and
inure to the benefit of and be enforceable by the parties hereto and their
respective successors and permitted assigns.
9.13 MEDIATION: Except for the right of either party to apply to a
court of competent jurisdiction for a temporary restraining order, a preliminary
injunction, or other equitable relief to preserve the status quo or prevent
irreparable harm, any and all disputes arising under or out of this Agreement
which the parties themselves are unable to resolve within 60 days after such
dispute arises shall, at the option of either party, be mediated in good faith.
22
The party seeking mediation of such dispute shall promptly advise the
other party of such dispute in a writing which describes in reasonable detail
the nature of such dispute and which shall state that party's desire to initiate
mediation thereof. By not later than 10 business days after the recipient has
received such written notice of dispute, each party shall have selected for
itself a representative who shall participate in such mediation, and shall
additionally have advised the other party in writing of the name of such
representative. By not later than 15 business days after the written notice of
dispute has been received, such representatives shall schedule a date for a
mediation hearing with a mutually agreeable mediator. The parties shall enter
into good faith mediation and shall share the costs equally.
If the representatives of the parties have not been able to schedule a
date for a mediation hearing with a mutually agreeable mediator within fifteen
days after receipt of a written notice of the dispute, or if the representatives
of the parties have not been able to resolve the dispute within 15 business days
after such mediation hearing, the parties shall have the right to pursue any
other remedies legally available to resolve such dispute in a court of competent
jurisdiction. This provision shall not be construed to waive any rights or
timely performance of any obligations existing under this Agreement.
The option to mediate provided for in this mediation clause shall
terminate upon the expiration or termination of this Agreement.
9.14 EXPORT CONTROL: The export regulations of the United States
Government may prohibit, except under a special validated license, the
exportation from the United States of certain commodities and/or related
technical data. In order to facilitate the exchange of technical information
under this Agreement, COMPANY therefore hereby gives its assurance to JHU/APL
that COMPANY will not knowingly, unless prior authorization is obtained from the
appropriate United States Government agency or agencies, export any apparatus or
technical data received from JHU/APL under this Agreement or LICENSED PRODUCT(S)
to any restricted country specified in such regulations. JHU/APL neither
represents that a license is not required nor that, if required, it will be
issued by the United States Government.
23
9.15 Upon termination of this Agreement for any reason, sections 7.3,
8.3c, 9.5, 9.6, 9.7 and 9.8 shall survive termination of this Agreement.
9.16 FORCE MAJEURE: In the event that either Party is prevented from
performing or is unable to perform any of its obligations under this Agreement
(other than the payment of money) due to any act of God; fire; casualty; flood;
war; strike; lockout; failure of public utilities; injunction or any act,
exercise, assertion or requirement of governmental authority, including any
governmental law, order of regulation permanently or temporarily prohibiting or
reducing the manufacture, use or sale of LICENSED PRODUCT(S) or LICENSED
PROCESS(ES); epidemic; destruction of production facilities; riots;
insurrection; inability to procure or use materials, labor, equipment,
transportation or energy sufficient to meet development or manufacturing needs;
or any other cause beyond the reasonable control of the Party invoking this
section 9.16 if such Party shall have used its best efforts to avoid such
occurrence, such Party shall give notice to the other Party in writing promptly,
and thereupon the affected Party's performance shall be excused and the time for
performance shall be extended for the period of delay or inability to perform
due to such occurrence.
IN WITNESS WHEREOF the parties hereto have executed this Agreement in
duplicate by their duly authorized officers on the date appearing below their
signatures.
THE XXXXX XXXXXXX UNIVERSITY LINK PLUS CORPORATION
Applied Physics Laboratory
By /s/ XXXXX X. XXXXX By /s/ XXXXXX X. XXXXX, XX.
------------------------------- -------------------------------
Xxxxx X. Xxxxx Xxxxxx X. Xxxxx, Xx.
Director of Technology Transfer CEO
Date: 9-13-05 Date SEPTEMBER 13, 2005
---------------------------- -----------------------------
24
APPENDIX A
Schedule of JHU/APL PATENT RIGHTS
=================================================================================================
DOCKET TITLE OF INV. TITLE OF SERIAL NO. ISSUE
NO. DISCLOSURE AS APPLICATION AS DATE
SUBMITTED FILED
-------------------------------------------------------------------------------------------------
1410 Molecularly Imprinted Molecularly imprinted 6,872,786 March 29,
Polymer Sensor for polymeric sensor for the 2005
Explosives detection of explosives
=================================================================================================
25
APPENDIX B
Schedule of JHU/APL
UNPATENTED INTELLECTUAL PROPERTY
The Information contained in this Appendix B is trade secret and proprietary
information relating to the CORE TECHNOLOGY.
Technical Results and future related reports
26
