PATENT LICENSE AGREEMENT
This Agreement is made effective the 1st day of July, 1994, between XXXXX
X. XXXXX, a married man (the "Licensor"), and CYTODYN OF NEW MEXICO, INC., a New
Mexico corporation ( the "Licensee").
RECITALS:
WHEREAS, the Licensor represents that he is the sole owner of all right,
title and interest in the inventions, processes and improvements (hereinafter
collectively referred to as "the Technology") described and claimed in United
States Patent Application entitled METHOD FOR INHIBITING DISEASE ASSOCIATED WITH
THE HUMAN IMMUNODEFICIENCY VIRUS THROUGH THE USE OF MONOCLONAL ANTIBODIES
DIRECTED AGAINST ANTI-SELF CYTOTOXIC T-LYMPHOCYTES OR THEIR LYTICS, filed April
15, 1994, the said application being a continuation-in-part application of U.S.
Serial No. 08/ 165, 751, filed December 13, 1993, which application is a
continuation-in-part application of U.S. Serial No. 08/033, 405, filed March 19,
1993 and disclosed in the corresponding international application
PCT/US94/03055, filed March 21, 1994, as well as any corresponding foreign
patent applications later filed thereon, together with any continuations,
divisional or continuation-in-part applications or any letters patent issuing
thereon as well as any reissue and/or re-examined patents issuing thereon (the
"Patent Application") , and that he has the sole authority to enter into this
Agreement and to grant the rights, licenses and privileges herein provided for;
and
WHEREAS, the Licensee desires to obtain the exclusive right, license and
privilege to use the Technology to manufacture, use and sell, throughout the
world, monoclonal antibodies for use in treating or inhibiting diseases
associated with the human immunodeficiency virus ("HIV") and AIDS, and to any
improvements of the Technology which hereafter may be made or acquired by the
Licensor or Licensee, or with respect to which the Licensor may obtain the right
to grant licenses.
AGREEMENT:
NOW, THEREFORE, in consideration of the mutual promises and covenants set
forth herein, the parties agree as follows:
1. License. The Licenser grants to the Licensee the exclusive right,
license and privilege to manufacture or cause to be manufactured, and to use and
sell, throughout the world, monoclonal antibodies for use in treating or
inhibiting diseases associated with the human immunodeficiency virus and AIDS as
disclosed in the Patent Application and any other products, devices or processes
described and claimed in the Patent Application and any letters patent which may
issue pursuant to the Patent Application, and in any applications and patents
for any
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improvements thereto which hereafter may be acquired or made by the Licensor, or
with respect to which the Licensor may obtain the right to grant licenses
(hereinafter referred to as the "Licensed Products"). Except as otherwise
provided herein, this license shall be exclusive even against the Licensor. The
Licensor further grants to the Licensee the right to stamp, designate and
advertise the Licensed Products under such names, designs and/or appellations as
the Licensee may determine in its sole discretion. This license is subject to
the limitation that the Licensee may not manufacture, use or sell the Licensed
Products in any country in which the Licensee has not applied for patent
protection.
2. Representations of the Licensor. The Licensor covenants and
represents as follows:
(a) He is the sole owner of all title and interest in the Technology
and the Patent Application.
(b) He has at no time filed, or caused to be filed, applications for
patents, or obtained in his name or caused to be obtained in the name of others,
any patents in the United States or elsewhere in respect of the Technology or
any technology similar thereto other than the Patent Application.
(c) The Technology does not infringe upon any other letters patent
heretofore issued in the United United States or upon any other applications for
letters patent of which the Licensor has notice.
(d) There is no other person, firm or corporation having any title or
interest in the Technology or the Patent Application.
(e) All of the statements, declarations and claims made in the Patent
Application are true and correct in all respects. The Licensor knows of no prior
art not disclosed in the Patent Application.
(f) There are no outstanding options, licenses or agreements of any
kind relating to the Technology or the Patent Application, or to the
manufacture, use or sale of the Licensed Products.
(g) He has the full power to grant the rights, licenses and privileges
herein given.
3. Patents and Applications.
(a) Following the execution of this Agreement, the Licensor shall
furnish to the Licensee at its request, or to its nominees and patent attorneys,
all information and documents regarding the Technology, including a description
of the processes which the Technology incorporates, in order to enable the
Licensee to operate hereunder.
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(b) The Licensor covenants and warrants that a patent application was
filed with the United States Patent Office as specified hereinabove. The
Licensor agrees to assume responsibility for all further prosecution of the
Patent Application and any subsequent patent applications, provided the Licensee
pays all of the costs thereof, including but not limited to, attorneys',
engineering and drafting fees and all other costs of a similar nature, that
accrue after the date of this Agreement.
(c) The Licensor further covenants and warrants that a PCT application
was timely filed with the United States Patent Office. The Licensor grants to
the Licensee the right to file for patent protection for the Technology, in the
name of the Licensor, in all other countries of the world, at the Licensee's
sole cost and expense.
(d) The Licensor shall deliver to the Licensee, immediately upon
execution of this Agreement, all research and development reports and studies
that have been completed or compiled as of the date hereof, and all other data
relating to the Technology, and shall execute all papers, documents and
instruments necessary to enable the Licensee to cause to be prepared, filed and
prosecuted, at the Licensee's expense, applications for letters patent within
such countries of the world as the Licensee shall, in its sole discretion,
determine is advisable.
(e) The Licensee shall xxxx all Licensed Products manufactured and
distributed under this Agreement with patent numbers in accordance with
statutory requirements and, pending the issue of any patents, shall stamp the
Licensed Products "Patent Applied For".
(f) All patents granted with respect to the Technology or any
improvements thereof shall be the exclusive property of the Licensor, subject to
the license hereby granted. For purposes of this Agreement, "improvement," shall
include any method, process, technology, device or products within the scope of
the Technology that improves the performance, reliability, effectiveness, ease
of use , marketability, and/or maintenance of the Licensed Products and their
components. The Licensor shall, upon demand, execute and deliver to the Licensee
such documents as may be reasonably required by the Licensee for filing in the
appropriate patent offices to evidence the granting of the exclusive license
hereby given. The Licensor and Licensee shall each provide copies to the other
of all correspondence and filings with the United States Patent Office and the
patent authorities of all other countries in which the Licensee files for patent
protection.
4. License Fee. As full and complete consideration for the license
granted hereunder, the Licensee shall issue to the Licensor 25,000 shares of the
Class A no par value common stock of the Licensee, which shall be fully paid and
non-assessable upon the
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issuance thereof (the "Stock"). The Licensor acknowledges that the Stock is
being issued to the Licensor pursuant to exemptions from the registration
requirements of federal and state securities laws, and agrees that he may not
sell, assign or transfer any shares of the Stock unless the Stock is registered
or such sale, assignment or transfer is exempt from the registration provisions
of federal and state securities laws. The Licensor further agrees that the
certificates representing the Stock shall bear the following legend and that an
appropriate stop transfer order shall be entered in the Licensee's shareholder
records:
These shares have been acquired pursuant to exemptions from the
securities registration requirements of state and federal law and may not
he sold, assigned, transferred, pledged or hypothecated unless the
transferor shall demonstrate to the Corporation's satisfaction that the
transfer will likewise be exempt from the securities registration
requirements of state and federal law.
5. Books and Records. The Licensee shall keep accurate books and
records which shall contain all information necessary to enable the Licensor to
audit the Licensee's revenues. The Licensee shall make these records available
for copying, inspection and auditing, at the Licensor's expense, by any
representative designated by the Licensor, during normal business hours at the
Licensee's principal office, upon seven days' prior written notice, no more
frequently than annually. No period may be audited more than once unless the
Licensor can demonstrate that material information which would affect the
results of such audit was not available to the Licensor at the time of the
audit. In such event, the period to which the new information relates may be
reaudited upon delivery of sixty days prior written notice which shall describe
the content of such newly discovered material information and the reason such
information was not available to the Licensor at the time of the original audit
of such period. Such records shall be maintained for a period of five years.
6. Assignment. This Agreement may not be assigned by the Licensee
without the prior written consent of the Licensor; provided, however, that the
Licensee may assign this license and its rights under this Agreement to any
entity which shall succeed to substantially a11 of its business and property and
which shall assume all of its obligations hereunder.
7. Sublicenses.
(a) The Licensee may sublicense the Invention with the prior consent
of the Licensor. If the Licensor does not object to a sublicense agreement
presented to it by the Licensee for its approval within sixty days after
delivery thereof to the Licensor, the Licensor shall be deemed to consent to the
sublicense.
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(b) Within ten days following the execution of any such sublicense
agreement, the Licensee will furnish to the Licensor a signed photocopy of such
agreement.
(c) The Licensor acknowledges that the Licensee intends to contract
with one or more manufacturers to produce the Licensed Products, and agrees that
such action shall not be deemed to be a "sublicense" requiring the prior consent
of the Licensor. Until a patent covering the Technology is issued, the Licensee
shall require all such manufacturers to execute an agreement pursuant to which
they covenant not to disclose any proprietary information relating to the
Technology.
8. Improvements.
(a) The Licensee shall have the right to improve the Technology
through its own research and development, provided that all Licensed Products
produced as a result thereof shall be subject to this Agreement.
(b) If, during the continuance of this license, the Licensor makes any
further improvements in the Technology or in the mode of using the Technology,
or becomes the owner of any such improvements, either through patents or
otherwise, then the Licensor shall communicate any such improvements to the
Licensee and give the Licensee full information regarding the mode of using
them, and the Licensee shall be entitled to use the same with all rights which
are- hereby granted to- the Licensee- in respect of the Technology without
paying additional consideration therefor. In its discretion, the Licensee may
apply for and prosecute patents on such improvements in the name of the Licensor
or require the Licensor to apply for and prosecute such patents on improvements
in Licensee's cost.
9. Infringement.
(a) If the Licensor or the Licensee becomes aware of any infringement
of any patent issued with respect to the Technology, such party shall
immediately notify the other party, in writing, of the details of such
infringement. If any such patent is infringed within the United States, the
Licensee may, at its own expense, prosecute any action necessary to protect the-
rights of each of the parties to this Agreement. If the Licensee elects not to
prosecute such action, this license shall terminate unless this requirement is
waived by the Licensor in writing. If the patent licensed hereunder is infringed
in a foreign country, and such infringement is "substantial," the Licensee may,
at its own expense, prosecute any action necessary to proteet the rights of each
of the parties to this Agreement. If the Licensee elects not to prosecute such
action, the Licensee's exclusive license to manufacture, use, sell and
sublicense in such country shall terminate. For purposes of this paragraph, an
infrinqement within a foreign country will be
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deemed to be "substantial" if the Licensee, or its sublicensee, experiences more
than a 25% reduction in sales in such country after introduction in the market
in such country of the infringing product. If the Licensee elects to prosecute
an infringement upon any patent covering the Technology and its improvements,
the Licensee shall be responsible for all costs, expenses and judgments
associated therewith, and shall be solely entitled to any monetary award or
judgment resulting therefrom.
(b) Should any action be commenced against the Licensor or the
Licensee, by the filing of a Complaint which alleges that the Technology, or any
of its improvements included within the scope of the license granted hereunder,
infringes the claims of any letters patent, the Licensee shall have the option
of defending such action at its own cost and expense, and the Licensor shall
cooperate fully with such defense.
(c) If the Licensor is compelled in any suit which the Licensee may
institute or defend to join the Licensor as a party plaintiff or party
defendant, then the Licensor shall not be chargeable for any costs or expenses,
except its attorneys' fees should he elect separate representation, except as
otherwise specifically provided herein. In connection with such suits, the
Licensor shall execute all documents necessary or desirable, and the Licensor
shall testify in any suit when requested to do so by the Licensee.
(d) Product Liability Indemnification. The Licensee shall indemnify
and hold harmless the Licensor from and against all product liability claims by
persons purchasing the Licensed Products from the Licensee. The Licensee shall
require any sublicensee to agree to indemnify and hold harmless the Licensor
front and against all product liability claims by persons purchasing the
Licensed Products from such sublicensee and/or its agents or distributors.
11. Term.
(a) The terms of this Agreement shall end with the expiration of the
last patent covering the Technology or improvements thereto, subject to the
following:
(i) Upon receivership or bankruptcy of the Licensee, or if the
Licensee shal1 make an assignment for the benefit of creditors, this
Agreement shall terminate.
(ii) If, following two years after the date of this Agreement,
the Licensee fails to earn revenues from sales of the Licensed Products
aggregating $100,000 in any year of the term of this Agreement, the
Licensor shall have the right, at any time during the succeeding license
year, to declare the Licensee's exclusive license to be a non-exclusive
license
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upon delivery of sixty days' prior written notice to the Licensee. In
such event, the Licensor may grant non-exclusive licenses to any other
persons. For purposes of this paragraph, a year shall consist of the
twelve-month period following the anniversary date of the execution of
this Agreement.
(b) Upon termination of this Agreement, the Licensee shall transfer to
the Licensor all rights which it may have to the Technology, together with all
of its trade names and trademarks in respect thereof, and all rights to any
sublicenses which may have been granted pursuant to the terms hereof.
12. Commencement of License. The grant of the license given hereunder
shall commence when this Agreement has been executed by the parties and the
Stock has been issued to the Licensor.
13. No Partnership, Joint Venture or Agency. Nothing in this Agreement
shall he deemed or construed to constitute or create between the parties hereto
a partnership, joint venture or agency.
14. Binding Arbitration.
(a) All disputes arising out of or relating to this Agreement or the
relationship of the parties, including the termination thereof and all tort and
contract actions, shall be resolved by binding arbitration in the City of Santa
Fe, State of New Mexico, under the Commercial Arbitration Rules of the American
Arbitration Association (the "Rules"), subject to the following limitations.
(b) The arbitration panel shall consist of three members, all of whom
shall be attorneys with experience in resolving contractual disputes and who
shall be neutral parties. The arbitrators shall be empowered to award actual
compensatory money damages and punitive damages, and shall be empowered to award
specific performance, injunctive relief or other equitable relief. The award of
the arbitrators shall be in writing and shall specify the factual and legal
bases for the award. Each party shall be responsible for its own legal fees;
however, the fees and expenses of the arbitrators shall be paid by the party
which does not substantially prevail.
(c) The arbitrators will decide if any inconsistency exists between
the Rules, as applicable, and the arbitration provisions contained in this
Agreement. If any such inconsistency exists, the arbitration provisions
contained herein will control and supersede the Rules. In rendering the award,
the arbitrators shall determine the rights and obligations of the parties
strictly in accordance with the terms of this Agreement and upon no other basis,
interpreting such Agreement by applying the substantive laws of the State of New
Mexico. The failure of the arbitrators to abide by
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this requirement shall be grounds for vacatur of the arbitration award.
(d) All arbitration proceedings, including testimony or evidence at
hearings, will be kept confidential, although any award or order rendered by the
arbitrators or director of arbitration pursuant to the terms of this Agreement
may be entered as a judgment or order.
(e) Any arbitration proceeding must be instituted within two years
after the date the incident giving rise thereto occurred, whether or not any
damage was sustained or capable of ascertainment or either party knew of such
incident. Failure to institute arbitration proceedings within such period will
constitute an absolute bar and waiver to the institution of any proceedings with
respect to such dispute. No arbitration hereunder will include, by
consolidation, joinder or otherwise, any third party, unless such third party
agrees to arbitrate pursuant to the arbitration provisions contained herein and
the Rules, as applicable.
(f) The parties further agree that neither shall commence any
litigation against the other arising out of this Agreement with respect to any
arbitration proceeding or award, except in a court located in the State of New
Mexico. Each party consents to jurisdiction over it by, and exclusive venue in,
such a court by a judge without a jury. If either party brings any action for
judicial relief with respect to any dispute which is required to be arbitrated
hereunder, the party bringing such action will be liable for and shall
immediately pay all of the other party's costs and expenses (including
reasonable attorneys' fees) incurred to stay or dismiss such action and remove
or refer such dispute to arbitration. If either party brings or appeals an
action to vacate or modify an arbitration award and such party does not prevail,
such party will pay all costs and expenses, including attorneys' fees, incurred
by the other party in defending such action.
(g) Any award rendered will be final and binding upon the parties. Any
judgment of the award may be entered in and enforced by any court having
jurisdiction.
15. Notice. Any notice, payment or statement required by this
Agreement shall be sent by certified mail and addressed as follows or to such
other address as either party may designate by delivery of written notice to the
other party as provided in this paragraph.
To the Licensor:
Xx Xxxxx X. Xxxxx
6027 Weat Xxxxx Xxxxxx
Xxx Xxxxxxx, Xxxxxxxxxx 00000
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To the Licensee:
Cytodyn of New Mexico, Inc.
000 Xxxxxxx Xxxxxx
Xxxxx Xx, Xxx Xxxxxx 00000
16. Construction.
(a) Any waiver by the Licensor or Licensee of any rights arising from
any breach of any term of this Agreement shall not be construed as a continuing
waiver of other breaches of the same or other terms of this Agreement by the
Licensee or Licensor, respectively.
(b) This Agreement constitutes the entire Agreement between the
parties and replaces any prior agreements between them. No alteration of, or
amendment to, this Agreement shall be effective unless given in writing and
signed by the party or parties sought to be charged or bound by the alteration
or amendment.
(c) Neither party shall be deemed to have waived any rights under this
Agreement unless such waiver is given in writing and signed by such party. No
delay or omission on the part of either party in exercising any right shall
operate as a waiver of such right or any other right. A waiver by a party of a
provision of this Agreement shall not prejudice or constitute a waiver of such
party's right otherwise to demand strict compliance with that provision or any
other provision of this Agreement. No prior waiver by a party, nor any course of
dealing between the parties, shall constitute a waiver of any of such party's
rights or of any of the other party's obligations as to any future transactions.
Whenever the consent of a party is required under this Agreement, the granting
of such consent by such party in any instance shall not constitute continuing
consent to subsequent instances where such consent is required and in all cases
such consent may be granted or withheld in the sole discretion of such party.
(d) This Agreement shall be binding upon and inure to the benefit of
the legal representatives and assigns of the Licensor and to the successors and
assigns of the Licensee.
(e) If any provision of this Agreement, to any extent, is held invalid
or unenforceable, the remainder of this Agreement other than those provisions as
to which it shall have been held invalid or unenforceable, shall not be affected
thereby and shall continue valid and enforceable to the fullest extent permitted
by law.
(f) This Agreement shall be construed and interpreted in accordance
with the laws of the State of New Mexico.
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(g) Any provision of this Agreement which imposes an obligation after
termination or expiration of this Agreement shall survive the termination or
expiration of this Agreement and be binding on the parties hereto.
IN WITNESS WHEREOF, the parties have executed this Agreement.
Licensor:
/s/ Xxxxx X. Xxxxx
--------------------------------
Xxxxx X. Xxxxx
Licensee:
CYTODYN OF NEW MEXICO, INC.
/s/ Xxxxx X. Xxxxx
--------------------------------
By: Xxxxx X. Xxxxx, President
XXXXX\PATENT
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Amendment Number 1
To
Patent License Agreement
CytoDyn, Inc., a Colorado corporation, ("CytoDyn") and Xxxxx X. Xxxxx, an
individual, ("Xxxxx") agree as of August 23, 2004, as follows:
1. Recital. CytoDyn of New Mexico, Inc., a New Mexico corporation, and Xxxxx
are parties to a Patent License Agreement dated July 1, 1994. This
Agreement was assigned to CytoDyn pursuant to an Acquisition Agreement
between CytoDyn of New Mexico and CytoDyn (then called RexRay Corporation)
dated October 28, 2003.
2. Consent. In accordance with paragraph 6, Assignment, of the Agreement,
Xxxxx consents to the assignment of the Agreement to CytoDyn and waives,
absolutely, forever, and completely, any failure of CytoDyn of New Mexico
to obtain his prior consent to the assignment.
3. Amendment. The Agreement is amended by deleting in its entirety Paragraph
11(a)(ii), effective as of the original date of the Agreement, and Xxxxx
agrees that any breach by CytoDyn of New Mexico or CytoDyn of that
paragraph is waived, absolutely, forever, and completely.
4. Notices. The name and address for notice to the Licensee set forth in
Paragraph 15 of the Agreement are amended to read:
CytoDyn, Inc.
000 Xxxx XxXxxxxx Xxxxxx, Xxxxx 0
Xxxxx Xx, Xxx Xxxxxx 00000
5. Confirmation. The Agreement is confirmed in all respects except as
specifically amended by this Amendment Number 1.
CytoDyn, Inc. Xxxxx X. Xxxxx
By: ________________________ ____________________________
Its:________________________
