Exhibit 10.8
STRATEGIC ALLIANCE
This Strategic Alliance is made and effective this __________________, by and
between UTEK CORPORATION, offices located at 000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx
Xxxx, Xxxxxxx 00000 and UNIVERSITY OF FLORIDA offices located at 0000 X.
Xxxxxxxxxx Xxxxxx, Xxxxxxxxxxx, XX 00000. Now, therefore, both parties agree as
follows:
1. UNIVERSITY OF FLORIDA seeks to develop an off-balance sheet vehicle to
bring its intellectual property and technology to the marketplace. The goal
of which is to generate on-going royalties to enhance its research
capabilities and reward faculty whose patents are licensed, in addition to
developing sponsored research activities.
2. UTEK CORPORATION (UTEK) has the mission to build a bridge between
university-based technology and public companies that can rapidly bring new
products to the marketplace.
3. UTEK would review UNIVERSITY OF FLORIDA specified existing technologies
and new disclosures to gauge their potential for successful
commercialization. If a specific technology seemed promising to UTEK (and
UNIVERSITY OF FLORIDA agreed), UNIVERSITY OF FLORIDA would apply for a patent
(if it does not already have one), with UNIVERSITY OF FLORIDA as the
assignee. UTEK would receive a 12-month exclusive, royalty-free license
option for the technology for some or all fields of use. UTEK would then use
its best efforts to find a corporate licensee or otherwise commercialize the
technology at terms acceptable to UNIVERSITY OF FLORIDA. If UTEK finds a
UNIVERSITY OF FLORIDA acceptable licensee, royalties for the technology would
be paid directly by the licensee to UNIVERSITY OF FLORIDA. If UTEK is unable
to find a UNIVERSITY OF FLORIDA acceptable licensee or corporate partner for
the technology by the end of this 12-month period, then all option rights to
the technology would revert back to UNIVERSITY OF FLORIDA, unless both
parties agreed to extend. The defined Exclusive Option Agreement is contained
in Exhibit A. When UNIVERSITY OF FLORIDA desires to have UTEK merchandise a
specific technology and UTEK agrees, both parties will execute a copy of the
Exclusive Option Agreement with the appropriate technology, field-of-use and
term descriptions.
4. The term of this strategic alliance is for a period of five years, commencing
on the date above.
5. Either party may terminate this Agreement at any time with sixty days written
notice.
6. During the term of this Agreement, both parties shall not disclose to anyone
any confidential information. "Confidential Information" for the purposes of
this Agreement shall include proprietary and confidential information such as,
but not limited to, technology plans, research and development plans, designs,
models, software, product specifications, marketing plans, patent applications,
disclosures and new concepts.
Confidential information shall not include any information that:
A. Is disclosed without restriction.
B. Becomes publicly available through no act of the recipient.
C. Is rightfully received by either party from a third party.
D. Is disseminated in publications.
If UTEK customers need to review UNIVERSITY OF FLORIDA confidential information
to determine their interest in licensing a specific property, UTEK will have the
customer execute an UNIVERSITY OF FLORIDA approved confidentiality and
non-disclosure agreement. A copy of this signed agreement will be provided to
UNIVERSITY OF FLORIDA.
7. This Agreement shall be governed by and be construed in accordance with the
laws of the state of Florida.
8. This Agreement constitutes the final understanding and agreement between the
parties with respect to the subject matter hereof and supersedes all prior
negotiations, understandings and agreements between the parties, whether written
or oral. This Agreement may be amended, supplemented or changed, only by
an Agreement in writing, signed by both of the parties.
9. Any notice to be given or otherwise given pursuant to this Agreement shall be
in writing and shall be hand delivered, mailed by certified mail, return receipt
requested or sent by overnight courier service as follows:
UTEK CORPORATION
000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx Xxxx, Xxxxxxx 00000
UNIVERSITY OF FLORIDA
0000 X. Xxxxxxxxxx Xxxxxx, Xxxxxxxxxxx, XX 00000
10. If any term of this Agreement is held by a court of competent jurisdiction
to be invalid or unenforceable, then this Agreement, including all of the
remaining terms, will remain in full force and effect as if such invalid or
unenforceable term had never been included.
IN WITNESS WHEREOF, this Agreement has been executed by the Parties as of the
date first above written.
UTEK CORPORATION UNIVERSITY OF FLORIDA
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By: Xxxxxxxx X. Xxxxx, Ph.D., CEO By:
Exhibit A
Exclusive Option Agreement
This Exclusive Option Agreement is made and effective this ________________, by
and between UTEK CORPORATION (UTEK), offices located at 000 Xxxxx Xxxxxxx
Xxxxxx, Xxxxx Xxxx, Xxxxxxx 00000 and UNIVERSITY OF FLORIDA offices located at
0000 X. Xxxxxxxxxx Xxxxxx, Xxxxxxxxxxx, XX 00000. Now, therefore, both parties
agree as follows:
1. UNIVERSITY OF FLORIDA hereby grants to UTEK an exclusive option to license
on an exclusive basis the following technology:
Technology Description
----------------------
Title:
Patent #: Date Applied for: Date Awarded:
Patent Application #: Date Applied for:
Inventors:
Copyright: [yes or no ] If yes than provide description:
Date Applied for:
Field of Use: All [yes or no ] If no then describe limited fields of use:
Territory: World-wide [yes or no ] If no then describe limited territory:
2. The term for this exclusive option is 12 months unless extended by agreement
of both parties in writing.
3. During the term of this option, UTEK will use its best efforts to
merchandise the above-described technology at terms acceptable to UNIVERSITY
OF FLORIDA. UNIVERSITY OF FLORIDA may accept or reject, at its' discretion,
any offer presented by UTEK for the licensing of this technology.
4. During the term of this option, UNIVERSITY OF FLORIDA will use its best
efforts to provide UTEK with the information it requires to market the
above-described technology.
5. This Agreement shall be governed by and be construed in accordance with the
laws of the state of Florida.
6. This Agreement constitutes the final understanding and agreement between the
parties with respect to the subject matter hereof and supersedes all prior
negotiations, understandings and agreements between the parties, whether
written or oral. This Agreement may be amended, supplemented or changed, only
by an Agreement in writing, signed by both of the parties.
7. Any notice to be given or otherwise given pursuant to this Agreement shall
be in writing and shall be hand delivered, mailed by certified mail, return
receipt requested or sent by overnight courier service as follows:
UTEK CORPORATION
000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx Xxxx, Xxxxxxx 00000
UNIVERSITY OF FLORIDA
0000 X. Xxxxxxxxxx Xxxxxx, Xxxxxxxxxxx, XX 00000
8. If any term of this Agreement is held by a court of competent jurisdiction to
be invalid or unenforceable, then this Agreement, including all of the remaining
terms, will remain in full force and effect as if such invalid or unenforceable
term had never been included.
IN WITNESS WHEREOF, this Agreement has been executed by the Parties as of the
date first above written.
UTEK CORPORATION UNIVERSITY OF FLORIDA
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By: Xxxxxxxx X. Xxxxx, Ph.D., CEO By:
