Exhibit 10.56
LICENSE AGREEMENT
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This Agreement is made by and between National Jewish Medical and
Research Center ("LICENSOR"), a nonprofit educational and research organization
organized under the laws of Colorado, and having its principal office at 0000
Xxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxx 00000-0000, and AEOLUS PHARMACEUTICALS, INC.
("LICENSEE"), a corporation organized under the laws of Delaware, and having its
principal place of business in Research Triangle Park, North Carolina.
WHEREAS, LICENSOR and LICENSEE have previously entered a certain
Sponsored Research Agreement, dated July 1, 1997, as amended with respect to
certain anti-oxidant compounds (the "First Agreement"); and
WHEREAS, Article 8(b) of the First Agreement provides that LICENSEE
shall pay a reasonable royalty of approximately [*] percent ([*]%) to [*]
percent ([*]%) on Net Sales of Licensed Products incorporating the valid claims
of any other issued patent (issued in the country giving rise to such Net Sales)
with the Patent Rights licensed thereunder; and
WHEREAS, Xxxxx Xxxxx, M.D. and other parties have invented the
Invention (as hereinafter defined), and LICENSOR owns certain rights, title, and
interest in and to such Invention, including related patents, patent
applications, and unpatented technology; and
WHEREAS, the Invention, falls within the definition of results of
research as defined in Article 8 of the First Agreement and LICENSEE therefore
has an Option to the Invention under certain terms and conditions specified in
Article 8(b) of the First Agreement.
WHEREAS, LICENSOR has the right to grant licenses to under its rights
in the foregoing Invention, and wishes to have the Invention utilized in the
public interest; and
WHEREAS, LICENSOR is willing to grant an exclusive license to LICENSEE
to under its rights in the Invention and related patent rights and technology
subject to the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the terms and conditions set forth
herein, the parties agree as follows:
ARTICLE 1 - DEFINITIONS
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1.01. "Invention" shall mean the substituted porphyrin compounds and methods
of their use invented in part by Xxxxx Xxxxx, M.D. and Xxxxx Xxx, Ph.D., and
designated as National Jewish Technology ID No. 2000-15.
Portions of this exhibit marked [*] have been omitted pursuant to a request for
confidential treatment.
1.02. "Patent Rights" shall mean any and all United States and foreign
applications filed as of the Effective Date or thereafter with respect to the
Invention, and any patent now issued or hereafter issuing on any such patent
applications, together with all substitutes, divisions, continuations,
extensions, continuations-in-part of such applications naming Xxxxx Xxxxx, M.D.
or Xxxxx Xxx, Ph.D. as inventors, or reissues of patents related thereto, to the
extent owned by LICENSEE. As of the Effective Date of this Agreement, the
Patent Rights are include rights in those patent applications set forth in
Exhibit A attached hereto and made a part hereof.
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1.03 "Field" or "Field of Use" shall mean all applications of the Patent
Rights.
1.05. "Licensed Product" shall mean any product which is produced or sold by
LICENSEE that, in the absence of this Agreement, would infringe one or more
valid claims within the Patent Rights, and which is intended for use in, or is
used in, the Field.
1.06. "Net Sales" shall mean the gross sales of Licensed Products sold by
LICENSEE, its Affiliates and its sublicensees pursuant to this Agreement, less
allowances to customers for spoiled, damaged, and returned goods; less quantity,
trade, and cash discounts customary in the trade; and less transportation costs,
use and sales taxes, and value added taxes. Net Sales shall include commissions
paid to sales persons or agents and costs of collections. Licensed Products
used by LICENSEE for its own use in the Field shall be considered to be "Net
Sales" for purposes of computing royalty obligations, except such Licensed
Products used for non-revenue producing activity such as promotional items or
samples, or field, pre-clinical or clinical trials. Net Sales shall not include
sales between or among LICENSEE, its Affiliates or sublicensees. Licensed
Products shall be considered sold when paid.
1.07. "Affiliate" or "Affiliates" shall mean any company which controls,
is controlled by or is under common control with LICENSEE. A company shall be
regarded as in control of another if it owns or controls at least fifty (50)
percent of the stock entitled to vote in election of members of the Board of
Directors of the other company.
1.08. "Major Non - U.S. Country" shall mean any of the following countries:
Canada, France, Germany, Italy, Japan, Spain, United Kingdom
1.09 "Effective Date" shall mean November 17, 2000.
ARTICLE 2 - LICENSE
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2.01. Subject to the rights of the U.S. government under Title 00 Xxxxxx
Xxxxxx Code Sections 200 through 204, LICENSOR hereby grants to the LICENSEE and
LICENSEE hereby accepts from LICENSOR, upon the terms and conditions herein
specified, an exclusive world-wide license under the Patent Rights in order to
develop, make, have made, use and sell Licensed Products, with the right to sub-
license as provided in Article 2.02 below.
2.02. LICENSEE shall have the right to grant sub-licenses to third parties,
and to extend to its Affiliates any license granted herein to LICENSEE. Any such
sub-licenses or extensions shall be subject to the terms of this Agreement and
shall be no less favorable in any respect to LICENSOR than is this license.
LICENSEE agrees to be responsible for the performance
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hereunder by its Affiliates and sub-licensees, if any. Should LICENSEE cancel
the Agreement, LICENSEE agrees to assign all such sub-licenses directly to
LICENSOR.
2.03. Within thirty (30) days following the execution of this Agreement and
thereafter during the period of this Agreement, LICENSOR agrees to provideand
LICENSEE with each agree to share with the other: (a) copies of all physical
embodiments of information it each may have or later obtain relative to the
Patent Rights; and (b) copies of any and all patents or patent applications
owned or controlled by the LICENSOR or LICENSEE covering the Invention or the
use of the Invention or processes for the manufacture of the Invention,
including all Patent Office (U.S. and worldwide) actions received and amendments
filed, if any, relative thereto.
2.04. LICENSEE shall not disclose any unpublished technology, know-how, and
data included within or Patent Rights and furnished by LICENSOR pursuant to
Article 2.03 above to third parties during the term of this Agreement or at any
time thereafter; provided, however, that such disclosure may be made at any
time: (a) with the prior written consent of LICENSOR, (b) after the same shall
have become public through no fault of LICENSEE, (c) to Affiliates, employees,
consultants or sublicensees of LICENSEE or other persons or entities with whom
LICENSEE proposes to enter into a business relationship, provided that such
sublicensee or third party enters into a confidentiality agreement maintaining
the confidentiality of such confidential information or (d) as required by
applicable law or regulation.
2.05. LICENSEE agrees to use commercially reasonable efforts to diligently
pursue the development of Licensed Products, and to meet with representatives of
LICENSOR upon reasonable request (and no less than annually) to discuss such
development efforts. Such development efforts will include LICENSEE's
commercially reasonable efforts to manufacture or produce a Licensed Product for
testing, development, and sale, and also to seek required governmental approvals
of such Licensed Product. LICENSEE shall have sole discretion as to the timing
of development and commercialization of any Licensed Product on a country by
country basis, including discretion to delay development or commercialization
after beginning any such efforts, provided that such discretion is exercised in
a commercially reasonable manner.
2.06. In the event LICENSEE fails to commence human clinical trials with
Licensed Product within [*] years from the Effective Date, the exclusive right
and license granted in this Agreement shall convert to a non-exclusive right and
license. LICENSEE shall have the right to preserve the exclusive right and
license granted in this Agreement for [*] additional years by paying an annual
extension fee of [*] dollars ($[*]) for each year of extension, due and payable
on the [*] anniversaries of the Effective Date. Subsequently, LICENSEE shall
have the right to one additional [*] extension upon paying [*] dollars ($[*])
upon the [*] anniversary of the Effective Date.
ARTICLE 3 - CONSIDERATION; ROYALTIES; RECORDS; AND REPORTS
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3.01. Upon execution of this Agreement by LICENSOR and LICENSEE, LICENSEE
shall pay LICENSOR a licensing fee of [*] dollars ($[*]).
3.02. For the use of valid outstanding patents contained within the Patent
Rights in all countries where such exist, LICENSEE shall pay a continuing
royalty of [*] percent ([*%]) of the Net
[*] Confidential Treatment Requested; Certain Information Omitted and Filed
Separately with the SEC.
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Sales of Licensed Products incorporating the Invention, covered by a valid claim
under the Patent Rights issued in the country giving rise to such Net Sales.
3.03. LICENSEE shall pay milestone payments to LICENSOR as follows:
3.03.01. [*] dollars ($[*]) due within thirty (30) days of receiving
U.S. Food and Drug Administration ("FDA") marketing approval in the
U.S. or comparable regulatory approval in Major Non - U.S.
Country for the first Licensed Product licensed and developed under
this Agreement; and
3.04. After the first commercial sale of a Licensed Product, LICENSEE shall
render to LICENSOR on an annual basis a written account of the Net Sales of
Licensed Products subject to royalties under Article 3.02. LICENSEE and its
Affiliates shall keep full, true, and accurate books of accounts and other
records containing all particulars which may be necessary to ascertain and
verify properly such Net Sales. Upon LICENSOR's request, LICENSEE and its
Affiliates shall permit an independent Certified Public Accountant selected by
LICENSOR (except one to whom LICENSEE has some reasonable objections) at
LICENSOR's expense to have access during ordinary business hours to such of
LICENSEE's or its Affiliates' records as may be necessary to determine, in
respect of any quarter ending not more than three (3) years prior to the date of
such request, the correctness of any report made under this Agreement. Such
Certified Public Accountant shall be obliged to treat as confidential all
relevant matters. If any deficiencies in payments from LICENSEE to LICENSOR are
identified in the audit, LICENSEE shall pay LICENSOR the amount due within 30
days of completion of the audit. If LICENSEE has paid LICENSOR less than
ninety-percent (90%) of the amount determined to be due for a given time period,
then LICENSEE shall remit the amount due to LICENSOR and reimburse LICENSOR for
the reasonable cost of the audit.
3.04.01. All royalties shall be ascertained as of June 30 and December
31 of each calendar year, and shall be due and payable within sixty
(60) days following the end of each such accounting period.
3.05. Interest on Past Due Amounts. LICENSEE shall pay LICENSOR interest on
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all payments and royalties past due, at an annual rate equal to the lesser of
ten eighteen (180) percent, or the highest rate permitted under applicable law.
Any such payments made by LICENSEE under this Section shall not be construed to
cure any breach of this Agreement.
3.06. During the term of this Agreement, representatives of LICENSOR will
meet with representatives of LICENSEE at times and places mutually
agreed upon to discuss the progress and results, as well as ongoing
plans, with respect to the evaluation and development of Inventions
licensed to LICENSEE.
3.07. Payments made to LICENSOR shall be made in Unites States dollars. For
the purpose of calculating royalty payments due on any Net Sales by LICENSEE in
foreign currencies, the value of such Net Sales shall be converted to United
States dollars based on the applicable exchange rate published in the Wall
Street Journal as of June 30 and December 31 for the Net Sales for the prior
six (6) months.
[*] Confidential Treatment Requested; Certain Information Omitted and Filed
Separately with the SEC.
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ARTICLE 4 - PATENTS
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4.01. LICENSEE shall have sole responsibility for the filing, prosecuting
and maintaining of the appropriate United States patent protection for patents
and patent applications included within the Patent Rights, and all of the
expenses of such protection shall be paid by the LICENSEE, including
reimbursement of any reasonable out-of-pocket expenses incurred by LICENSOR for
activities conducted under this Article at the LICENSEE'S request, provided that
such reimbursement shall not exceed $10,000 per year. Such filings, prosecution
and maintenance shall be made at the discretion of LICENSEE by counsel of
LICENSEE's choosing, and shall be in the name of LICENSOR and such other
inventors as are deemed appropriate. LICENSEE shall make all reasonable efforts
to obtain broad patent coverage as is reasonably and practicably obtainable,
taking into account the need for, likelihood of obtaining and enforceability of
such Patent Rights. LICENSEE shall keep LICENSOR advised as of the prosecution
of such applications by forwarding to LICENSOR copies of all official
correspondence relating thereto. LICENSOR shall have the right to advise
LICENSEE as to such prosecution, and shall have the right to make reasonable
requests as to the conduct of such prosecution and to have official
correspondence reviewed by counsel of LICENSOR's choosing. LICENSOR agrees to
cooperate with LICENSEE in the prosecution of such patent applications to insure
that such applications reflect, to the best of LICENSOR's knowledge, all items
of commercial and technical interest and importance. All final decisions with
respect to the prosecution of such application shall be made with the mutual
agreement of both parties.
4.02. LICENSEE shall designate the foreign countries, if any, in which
LICENSEE desires patent protection for patents and patent applications included
within the Patent Rights, and, except as provided below, LICENSEE shall have
sole responsibility for filing, prosecuting and maintaining such foreign patents
and patent applications. LICENSEE agrees to meet with representatives of
LICENSOR to discuss a mutually acceptable foreign patent prosecution strategy.
LICENSEE shall pay all expenses with regard to such foreign patent protection,
and such designated foreign patent applications shall be in the name of LICENSOR
and such other inventors as are deemed appropriate. Upon notice to LICENSEE,
LICENSOR may elect to seek patent protection in countries not so designated by
LICENSEE, in which case LICENSOR shall be responsible for all expenses attendant
thereto. In such instances LICENSEE shall forfeit its rights under this
Agreement as to those countries unless LICENSEE shall agree to pursue such
protection (or reimburse LICENSOR's expenses incurred in the filing for
prosecution and maintenance of such patent or patent application) within thirty
(30) days after receiving written notice thereof from LICENSOR. All final
decisions with respect to such foreign prosecutions shall be made with the
mutual agreement of both parties, except that LICENSOR shall have no obligations
to consult with LICENSEE about foreign prosecutions in countries where LICENSEE
has elected not to support further prosecution. LICENSEE shall provide written
notification to LICENSOR of its intent not to file, prosecute, or maintain any
application at least ninety (90) days before any final, irrevocable deadline in
the relevant country. If LICENSEE fails to provide such notification, LICENSEE
shall reimburse LICENSOR for any reasonable costs expended by LICENSOR to
preserve its rights in that country.
4.03. LICENSEE and LICENSOR shall each give the other prompt notice of any
claim or allegation received by it that the manufacture, use, or sale of
Licensed Products constitutes an infringement of a third party patent or
patents. LICENSEE shall have the primary right and responsibility at its own
expense to defend and control the defense of any such claim against LICENSEE, by
counsel of its choosing. The settlement of any such actions must be approved by
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LICENSOR, which approval shall not be unreasonably withheld. LICENSOR agrees to
cooperate with LICENSEE in any reasonable manner deemed by LICENSEE to be
necessary in defending or prosecuting such action. LICENSEE shall reimburse
LICENSOR for all expenses reasonably incurred by LICENSOR in providing such
assistance. Notwithstanding the foregoing, LICENSOR shall, in its sole
discretion, be entitled to participate through counsel of its own choosing in
any such action.
4.04. In the event that any Patent Rights licensed to LICENSEE are infringed
by a third party, LICENSEE shall have the primary right, but not the obligation,
to institute, prosecute and control any action or proceeding with respect to
such infringement, by counsel of its choice, including any declaratory judgment
action arising from such infringement. Any amounts recovered by LICENSEE from
third parties in enforcing such Patent Rights shall be applied first to
reimburse LICENSEE's expenses of the action, and any remaining amount shall be
deemed Net Sales for purposes of this Agreement. Notwithstanding the foregoing,
and in LICENSOR's sole discretion, LICENSOR shall be entitled to participate,
through counsel of its own choosing, in any legal action involving third party
infringement of Patent Rights; provided that control of such action shall remain
with LICENSEE. LICENSEE agrees to reimburse all reasonable expenses incurred by
LICENSOR resulting from actions requested by LICENSEE under this Article.
4.05. In the event LICENSEE decides not to pursue an action against the
alleged infringer under Article 4.04, it shall inform LICENSOR in writing and
LICENSOR may elect to do so at its own expense. LICENSEE shall provide any
reasonable assistance deemed necessary by LICENSOR in prosecuting such actions.
Any amounts received by LICENSOR from third parties in enforcing Patent Rights
under this Article 4.05 shall be retained by LICENSOR.
ARTICLE 5 - OPTION UNDER FIRST AGREEMENT
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5.01. LICENSOR and LICENSEE acknowledge that the Invention is, in part, a
result of research covered under Section 8 of the First Agreement and that
LICENSEE shall continue to have an option to license technologies developed by
Xx. Xxxxx under the terms of the First Agreement, including but not limited to
the option to license technologies developed by Dr. Day in connection with Xx.
Xxxxx under the terms of the First Agreement.
ARTICLE 6 - GOVERNMENT CLEARANCE, PUBLICATION, OTHER USE, EXPORT
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6.01. LICENSEE agrees to use its best efforts to have the Licensed Product
cleared for marketing in those countries in which LICENSEE intends to sell
Licensed Products by the responsible government agencies requiring such
clearance. To accomplish such clearances at the earliest possible date,
LICENSEE agrees to file, according to the usual practice of LICENSEE, any
necessary data with such government agencies. Should LICENSEE cancel this
Agreement, LICENSEE agrees to assign its full interest and title in such market
clearance application, including all data relating thereto, to LICENSOR at no
cost to LICENSOR.
6.02. LICENSEE further agrees that the right of publication of the Invention
shall reside in the inventor and other staff of LICENSOR. LICENSOR shall use
its best efforts to provide a copy
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of such publications forty-five (45) days in advance of such submission for
review by LICENSEE, but such review will be in no way construed as a right to
restrict such publication; provided that LICENSEE may request, and LICENSOR
shall agree to, a delay of such proposed publication for an additional period,
not to exceed thirty (30) days, in order to protect the potential patentability
of any invention described therein. provided further that LICENSOR shall not
unreasonably withhold permission for an additional delay of thirty (30) more
days to allow time for patent filing. Subject to the foregoing, LICENSEE shall
also have the right to publish and/or co-author any publication regarding the
application of the Invention, in accordance with traditional standards of
academic authorship.
6.03. It is agreed that, notwithstanding any provisions herein, LICENSOR is
free to practice under Patent Rights for its own educational, teaching and
research purposes without restriction and without payment of royalties or other
fees.
6.04. This Agreement is subject to all of the United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes, and other commodities and technology.
ARTICLE 7 - DURATION AND TERMINATION
------------------------------------
7.01. This Agreement shall become effective upon the Effective Date, and,
unless sooner terminated as hereinafter provided, shall continue until the
expiration of the last to expire issued patent included in the Patent Rights
(or, if no such patent issues, then upon the abandonment of the last patent
application included within the Patent Rights). Upon the expiration, but not
the earlier termination, of this Agreement, the license granted in Article 2.01
shall continue thereafter on a non-exclusive basis.
7.02. LICENSEE may terminate this Agreement (with respect to a given country
or countries, or entirely) at any time by giving LICENSOR written notice at
least ninety (90) days prior to such termination, and thereupon terminate its
development efforts or the manufacture, use, or sale of Licensed Products
covered by such patent application or patent, in each case with respect to a
given country or countries or entirely, subject to the provisions of Article
7.04. If, however, LICENSEE fails to provide such notice at least ninety (90)
days before a final patent office deadline with respect to any patent
application or issued patent, LICENSEE shall reimburse LICENSOR for any
reasonable out-of-pocket expenses required to preserve its rights in such
application past such deadline.
7.03. Except as provided above, if either party fails to fulfill any of its
obligations under this Agreement in any material respect, the non-breaching
party may terminate this Agreement, upon written notice to the breaching party,
as provided below. Such notice must contain a full description of the event or
occurrence constituting a breach of the Agreement. The party receiving such
notice will have the opportunity to cure that breach within forty-five (45) days
of receipt of notice. If the breach is not cured within that time, the
termination will be effective as of the sixtieth (60th) day after receipt of
notice. A party's ability to cure a breach will apply only to the first two
breaches properly noticed under the terms of this Agreement, regardless of the
nature of those breaches. Any subsequent breach by that party will entitle the
other party to terminate this Agreement upon proper notice.
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7.04. Upon the termination of this Agreement, LICENSEE may notify LICENSOR
of the amount of Licensed Products that LICENSEE (including its Affiliates) has
on hand and LICENSEE and its Affiliates shall then have a license to sell that
amount of Licensed Products, but no more, provided LICENSEE shall pay the
royalty thereon at the rate and at the times required herein.
7.05. If during the term of this Agreement, LICENSEE shall become bankrupt
or insolvent or if the business of LICENSEE shall be placed in the hands of a
receiver or trustee, whether by the voluntary act of LICENSEE or otherwise
(which proceeding, in the case of an involuntary act, is not dismissed within
sixty (60) days), or if LICENSEE ceases to actively conduct its business, this
Agreement shall immediately terminate upon notice to LICENSEE.
ARTICLE 8 - GOVERNING LAW
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8.01. This Agreement shall be construed as having been entered into in the
State of Delaware and shall be interpreted in accordance with and its
performance governed by the laws of the State of Delaware.
ARTICLE 9 - NON-ASSIGNABILITY
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9.01. This Agreement shall be binding upon and inure to the benefit of the
respective successors and assigns of the parties hereto. However, except as
specifically provided herein, LICENSEE may not assign its rights in this
Agreement (except to an Affiliate in which case no consent is required) without
approval of LICENSOR, such approval not to be unreasonably withheld.
ARTICLE 10 - NOTICES
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10.01. It shall be a sufficient giving of any notice, request, report,
statement, disclosure or other communication hereunder, if the party giving the
same shall deposit a copy thereof in the Post Office in certified mail, postage
prepaid, addressed to the other party at its address hereinafter set forth or at
such other address as the other party shall have theretofore in writing
designated:
LICENSOR
Xxxx Xxxxxxxxx
Manager of Intellectual Property and
Technology Commercialization
National Jewish Medical and Research Center
0000 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxx 00000-0000, XXX
Fax: 000-000-0000
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LICENSEE
AEOLUS PHARMACEUTICALS, INC.
0000 Xxxx Xxxxxxx 54
Cape Fear Building, Suite 300
X.X. Xxx 00000
XXX, XX 00000
10.02. The date of giving any such notice, request, report, statement,
disclosure or other communications, and the date of making any payment hereunder
required (provided such payment is received), shall be the earlier of (i) three
(3) days following the date of the U.S. postmark of such envelope if marked or
(ii) the actual date of receipt.
ARTICLE 11 - INDEMNITY, INSURANCE, REPRESENTATIONS, STATUS
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11.01. LICENSEE agrees to indemnify, hold harmless, and defend LICENSOR, its
trustees, officers, employees, and agents, against any and all claims, suits,
losses, damages, costs, fees, and expenses, including reasonable attorneys fees,
resulting from or arising out of the exercise of this license. LICENSEE shall
not be responsible for the negligence or intentional wrongdoing of LICENSOR, nor
shall LICENSEE be responsible for amounts paid in settlement of any claim
without its approval.
11.02. LICENSEE shall maintain in force at its sole cost and expense with
reputable insurance companies, general liability insurance and products
liability insurance coverage in an amount LICENSEE deems to be reasonably
sufficient, to protect against liability under Article 11.01 above. LICENSEE
shall provide evidence of such coverage to LICENSOR upon request. LICENSOR
shall have the right to ascertain from time to time that such coverage exists,
such right to be exercised in a reasonable manner.
11.03. Nothing in this Agreement shall be deemed to be a representation or
warranty by LICENSOR of the validity of any of the patents or the accuracy,
safety, efficacy, or usefulness for any purpose of Patent Rights. LICENSOR
shall have no obligation, express or implied, to supervise, monitor, review, or
otherwise assume responsibility for the production, manufacture, testing,
marketing, or sale of any Licensed Product, and LICENSOR shall have no liability
whatsoever to LICENSEE or any third parties for or on account of any injury,
loss, or damage, of any kind or nature, sustained by, or any damage assessed or
asserted against, or any other liability incurred by or imposed upon LICENSEE or
any other person or entity, arising out of or in connection with or resulting
from this Agreement, including:
11.03.02. the production, use, or sale of any Licensed Product;
11.03.02. the use of Patent Rights; or
11.03.03. any advertising or other promotional activities with
respect to any of the foregoing.
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11.04. LICENSOR represents and warrants to LICENSEE as follows:
11.04.01. LICENSOR has the lawful right to grant the license
provided in this Agreement and that it has not granted rights or
licenses in derogation of this Agreement. LICENSOR agrees that, during
the term of this Agreement, it shall not enter into any other
agreements that conflict with rights or obligations provided
hereunder, including any rights and obligations that survive
termination hereof.
11.04.02. To the best of LICENSOR's knowledge, except for rights
owned by LICENSEE, LICENSOR owns all right, title and interest in and
to the Invention, and the Patent Rights, free and clear of all liens,
claims and encumbrances of any inventor other than Drs. Xxxxx and Day,
or any third party other than the federal government.
11.05. Neither party hereto is an agent of the other party for any purpose
whatsoever.
ARTICLE 12 - USE OF A PARTY'S NAME
----------------------------------
12.01. Neither party will, without the prior written consent of the other
party:
12.01.01. use in advertising or publicity any trade-name, trademark,
trade device, service xxxx, symbol, or any abbreviation contraction,
or simulation thereof owned by the other party;
12.01.02. use the name of any employee or agent of the other party
in any publication, publicity or advertising; or
12.01.03. represent, either directly or indirectly, that any product
or service of the other party is a product or service of the
representing party or that it is made in accordance with or utilizes
the information or documents of the other party.
12.02 Notwithstanding Article 12.01, above, it is the intent of the parties
that LICENSEE may, without the prior approval of LICENSOR, use the names of Drs.
Xxxxx and Day in materials related to LICENSEE and its products that are
intended for the purpose of seeking investors, sublicensees, or development
partners for Licensed Products, or that are required to be submitted by any
authoritative governmental agency.
ARTICLE 13 - SEVERANCE
----------------------
13.01. This Agreement, including any schedules or other attachments which are
incorporated herein by reference, contain the entire agreement between the
parties as to its subject matter. This Agreement merges all prior discussions
between the parties and neither party shall be bound by conditions, definitions,
warranties, understandings, or representations concerning such subject matter
except as provided in this Agreement or as may be specified later in writing and
signed by the properly authorized representatives of the parties. This
Agreement can be modified or amended only by written agreement duly signed by
persons authorized to sign agreements on behalf of the parties.
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ARTICLE 14 - WAIVER
-------------------
14.01. The failure of a party in any instance to insist upon the strict
performance of the terms of this Agreement shall not be construed to be a waiver
or relinquishment of any of the terms of this Agreement, either at the time of
the party's failure to insist upon strict performance or at any time in the
future, and such term or terms shall continue in full force and effect.
ARTICLE 15 - ENTIRE AGREEMENT
-----------------------------
15.01 This Agreement, including any schedules or other attachments which are
incorporated herein by reference, contain the entire agreement between the
parties as to its subject matter. This Agreement merges all prior discussions
between the parties and neither party shall be bound by conditions, definitions,
warranties, understandings, or representations concerning such subject matter
except as provided in this Agreement or as may be specified later in writing and
signed by the properly authorized representatives of the parties. This
Agreement can be modified or amended only by written agreement duly signed by
persons authorized to sign agreements on behalf of the parties.
ARTICLE 16 - TITLES
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16.01 All titles and article headings contained in this Agreement are
inserted only as a matter of convenience and reference. They do not define,
limit, extend, or describe the scope of this Agreement or the intent of any of
its provisions.
ARTICLE 17 - CONFIDENTIALITY
----------------------------
17.01. This Agreement and the terms and conditions thereof are confidential
and may not be released or published by either party without the express written
consent of the other party; provided, however, that such disclosure may be made
at any time: (a) to Affiliates or sub-licensees of LICENSEE or potential
investors or other persons or entities with whom LICENSEE proposes to enter into
a business relationship, provided that such sublicensee or third party enters
into a confidentiality agreement maintaining the confidentiality of such
confidential information or (b) as required by applicable law or regulation or
(c) either party, including any Affiliate, may make reasonable disclosure of
this Agreement, at its own discretion, and the financial and other terms hereof
in any filings required by the Securities and Exchange Commision (the "SEC"), or
(d) in connection with and subsequent to any offering of LICENSEE's securities
to the public, on Form S-1 (or other applicable registration form), Form 10-K,
Form 10-Q, Form 8-K or other applicable SEC form, and in the footnotes to any
financial statement or (d) LICENSEE may file this Agreement as an exhibit to any
Form S-1, Form 10-K, Form 10-Q, Form 8-K or other applicable SEC form or (e)
either party may describe this Agreement in the "Management's Discussion and
Analysis of Financial Conditions and Results of Operations" section or any other
applicable section of any filing with the SEC or other governing bodies.
- EXECUTION PAGE FOLLOWING -
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement on the
dates set forth below.
LICENSOR: NATIONAL JEWISH MEDICAL AND RESEARCH CENTER
--------
By: /s/ [ILLEGIBLE]
------------------------------------
Title: Executive Vice President and CAO
[SEAL] ---------------------------------
Date: 11/9/00
----------------------------------
ATTEST:
By: /s/ Xxxxx X. Xxxxxxxxxx
------------------------
Notary Public
LICENSEE: AEOLUS PHARMACEUTICALS, INC.
--------
By: /s/ Xxxxxxx X. Xxxxxx
----------------------
Title: President and CEO
-------------------
[SEAL] Date: 11/17/00
--------------------
ATTEST:
By: /s/ Xxxxxx Xxxxxx Xxxxxxx
--------------------------
Notary Public
12
