This Strategic Alliance is made and effective this 12/13/99 by and between
UTEK CORPORATION (UTEK), offices located at 000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx
Xxxx, Xxxxxxx 00000 and Virginia Tech Intellectual Properties, Inc. (VTIP),
located at 0000 Xxxxx Xxxxx, Xxxxx 0000, Xxxxxxxxxx, Xxxxxxxx 00000. Now,
therefore, both parties agree as follows:
1. VTIP 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 The University's 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 will review VTIP specified existing technologies and new disclosures to
gauge their potential for successful commercialization. If a specific technology
seems promising to UTEK (and the university agrees), the university will apply
for a patent (if it does not already have one), with VTIP as the assignee. If
UTEK converts the Option to a license agreement, UTEK will pay actual past and
future costs incurred by VTIP in preparing, filing, prosecuting and maintaining
all United States and foreign patents and patent applications on optioned
technology. UTEK will 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 VTIP. If UTEK finds a VTIP acceptable licensee, royalties
for the technology will be paid directly by the licensee to VTIP. If UTEK is
unable to find a VTIP acceptable licensee or corporate partner for the
technology by the end of this 12- month period, then all option rights to the
technology will revert back to VTIP, unless both parties agree to extend. The
defined Exclusive Option Agreement is contained in Exhibit A. When the
University 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 thirty days
written notice.
6. During the term of this Agreement, parties shall not disclose to anyone any
of the other party's 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 will be clearly identified.
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 VTIP confidential information to determine
their interest in licensing a specific property, UTEK will have the customer
execute a university approved confidentiality and non-disclosure agreement. A
copy of this signed agreement will be provided to the university.
7. This Agreement shall be governed by and be construed in accordance with the
laws of the Commonwealth of Virginia.
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
VIRGINIA TECH INTELLECTUAL PROPERTIES, INC.
0000 Xxxxx Xxxxx, Xxxxx 0000
Xxxxxxxxxx, Xxxxxxxx 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 VIRGINIA TECH TELLECTUAL PROPERTIES, INC.
--------------------------------- -------------------------------------------
By: Xxx Xxxxxxx, Ph.D., M.D., By: Dr. Xxxxxxx Xxxxxx, President
President
