EXHIBIT 10.4
TECHNOLOGY TRANSFER AGREEMENT
THIS AGREEMENT is made by and between InGene,lnc. (INGENE), a Kansas corporation
having an address at 0000 Xxxx 000xx Xxxxxx, Xxxxxxxx Xxxx, Xxxxxx 00000 and
Cryogenic Solutions, Inc. (CYGS), a Nevada corporation having a principal place
of business located at 0000 Xxx Xxxxxx, Xxxxx 000, Xxxxxxx, Xxxxx 00000.
WITNESSETH:
Whereas INGENE and CYGS have executed a license effective on May l, 1997 for
patent and technology rights (LICENSE I) which is attached and hereby
incorporated for reference herein; and
Whereas INGENE owns individually and jointly certain PATENT RIGHTS and
TECHNOLOGY RIGHTS comprising LICENSED SUBJECT MATTER in addition to the patent
and technology rights licensed in LICENSE I; and
Whereas INGENE desires to have the LICENSED SUBJECT MATTER developed and used
for the benefit of CYGS, INGENE and the public; and
Whereas CYGS wishes to obtain a license and to practice the LICENSED SUBJECT
MATTER.
NOW, THEREFORE, in consideration of the mutual covenants and premises herein
contained, the parties hereto agree as follows:
I. EFFECTIVE DATE
This Agreement shall be effective as of June 26, 1998.
II. DEFINITIONS
As used in this Agreement, the following terms shall have the meanings
indicated:
2.1 LICENSED FIELD shall mean use of compositions and methods using
stem-loop vector technology to produce short, single stranded
Deoxyribonucleic Acid (ssDNA) of desired sequence specifications for
anti-sense, triplex formation, and ribozyme production and delivery
applications thereof.
2.2 LICENSED PRODUCT shall mean any product SOLD by CYGS which is covered
by the license granted to CYGS under this Agreement.
2.3 LICENSED SUBJECT MATTER shall mean, TECHNOLOGY RIGHTS, and PATENT
RIGHTS as defined hereinbelow.
2.4 LICENSED TERRITORY shall mean the world.
2.5 NET SUB-LICENSING INCOME shall mean the gross amount received by CYGS
or its Affiliates from sub-licensing TECHNOLOGY RIGHTS or PATENT RIGHTS
granted by this Agreement less federal, or state taxes, bank transfer or
currency conversion fees associated with payment by sub-licensee(s) to CYGS
pursuant to valid and executed sub-licenses or other expenses born by CYGS
incident to transfer of payment or funds from sub-licensee(s) to CYGS for
sub-license of PATENT and/or TECHNOLOGY RIGHTS.
2.6 NET SALES shall mean the gross amount invoiced by CYGS or its
Affiliates from the SALE of LICENSED PRODUCTS less sales, use and/or excise
tax actually paid, import and/or export duties actually paid, outbound
transportation prepaid or allowed, trade and or quantity discounts, cash
discounts allowed and amounts allowed or credited due to returns (not to
exceed the original billing or invoice amount).
2.7 PATENT RIGHTS shall mean INGENE's rights in information or discoveries
covered at any time by patents and/or patent applications, whether domestic
or foreign, and all divisions, continuations, and any letters patent that
issue thereon, which name XXXXXX as inventor and do not name any officer,
employee consultant (other than XXXXXX) or agent of CYGS and which relate
to the manufacture, use or sale of products derived from uses of Stem-Loop
Cloning Vectors and methods for using same including but not limited to the
use of Stem-Loop Vector to produce short, single stranded Deoxyribonucleic
Acid (ssDNA) of desired sequence specification including but not limited to
a specific patent application titled, and the subject of U.S. Serial No.
08/236,504 filed April 29, 1994, titled STEM-LOOP CLONING VECTOR AND
METHOD. PATENT RIGHTS shall also include all of INGENE's rights in
information or discoveries covered by patents and/or patent applications,
whether domestic or foreign, and all divisions, continuations,
continuations-in-part, reissues, reexaminations or extensions thereof, and
any letters patent that issue thereon, which relate to the invention,
design, manufacture, use or SALE of any LICENSED PRODUCTS sponsored by CYGS
pursuant to the Sponsored Research Agreement executed concurrently
herewith.
2.8 SALE or SOLD shall mean the transfer or disposition of a LICENSED
PRODUCT or product made using technology assigned under this Agreement for
value to a party other than CYGS or a SUBSIDIARY.
2.9 SUBSIDIARY shall mean any business entity more than 50% owned by CYGS,
any business entity which owns more than 50% of CYGS, or any business
entity that is more than 50% owned by a business entity that owns more than
50% of CYGS.
2.10 TECHNOLOGY RIGHTS shall mean INGENE's rights in any technical
information, know-how, process, procedure, composition, device, method,
formula, protocol, technique, software, design, drawing or data relating to
Stem-Loop Cloning Vectors and methods for using same including but not
limited to the use of p-ANTI-T vector to produce short, single stranded
Deoxyribonucleic Acid (ssDNA) of desired sequence specification and use of
ssDNA in anti-sense, triplex formation, and ribozyme production and
delivery applications which are not covered by PATENT RIGHTS but which are
necessary for practicing the invention at any time covered by PATENT RIGHTS
and/or which are necessary to develop materials, devices and/or processes
in the FIELD OF USE.
III. WARRANTY: SUPERIOR-RIGHTS
3.1 INGENE represents and warrants that it is the owner of the entire
right, title, and interest in and to LICENSED SUBJECT MATTER, and that
INGENE has the sole right to grant licenses thereunder, and that it has not
granted licenses thereunder to any other entity that would restrict rights
granted hereunder except as stated herein.
IV. LICENSE
4.1 INGENE hereby grants to CYGS an exclusive, world-wide, royalty-bearing
license under LICENSED SUBJECT MATTER to manufacture, have manufactured,
and/or sell LICENSED PRODUCTS for use within LICENSED FIELD. This grant
shall be subject to the payment by CYGS to INGENE of all consideration as
provided in this Agreement, and shall be further subject to rights retained
by INGENE to:
(a) Publish the general scientific finding from research related to
LICENSED SUBJECT MATTER; however, in order to avoid loss of
intellectual property rights as a result of public disclosure of
patentable or proprietary information, INGENE will submit any material
to CYGS for review at least ninety (90) days prior to planned
submission. CYGS will notify INGENE within thirty (30) days of receipt
of such materials: (1) whether it desires INGENE to file patent
applications on any inventions contained in the materials or (2)
whether such materials contain information whose publication would be
commercially prejudicial to CYGS. CYGS shall have the right to request
that any commercially prejudicial information be deleted from the
materials or that indicated portions of the materials be rewritten to
be less prejudicial; provided, however, that faculty author(s) of the
material shall have the final authority to determine the scope and
content of any publication; and
(b) Use any information contained in LICENSED SUBJECT MATTER for
research, teaching and other educationally-related purposes which is
not prejudicial to the commercial interests of CYGS.
4.2 CYGS shall have the right to extend the license granted herein to any
SUBSIDIARY provided that such SUBSIDIARY consents to be bound by this
Agreement to the same extent as CYGS.
4.3 CYGS shall have the right to grant sub-licenses consistent with this
Agreement provided that CYGS shall be responsible for the operations of
each sub-CYGS relevant to this Agreement as if such operations were carried
out by CYGS, including the payment of royalties, if any, whether or not
paid to CYGS by the sub-CYGS. CYGS further agrees to deliver to INGENE a
true and correct copy of each sub-license granted by CYGS, and any
modification or termination thereof, within thirty (30) days after
execution, modification, or termination
V. CONSIDERATION AND REPORTS
5.1 In consideration for an exclusive, world-wide license to develop,
promote commercialize and sub-license TECHNOLOGY in the LICENSED FIELD,
CYGS agrees to:
(a) Transfer Two Hundred Thousand (200,000) CYGS unrestricted shares
to INGENE;
(b) Transfer Three Hundred Thousand (300,000) CYGS restricted shares
to INGENE;
(c) Provide INGENE options to purchase up to Three Hundred Thousand
(300,000) CYGS restricted Shares at Par Value ($.001 )
(d) Provide INGENE options to purchase up to Three Hundred Thousand
(300,000) CYGS restricted Shares at Ten percent (10%) of Market Value
of said shares on the date indicated on INGENE's notarized notice of
exercising this option as received by CYGS;
(e) Provide INGENE options, on the second and third year anniversaries
of the EFFECTIVE DATE of the License Agreement, to purchase CYGS
restricted Shares in the amount necessary to bring INGENE's Share
holdings to a total equivalent to four and one-half percent of issued
Shares at a price of Ten percent (10%) of market value on the date
indicated on INGENE's notarized notice of exercising this option as
received by CYGS;
(f) Pay INGENE a royalty of Eight percent (8%) of NET SALES of
LICENSED PRODUCTS and/or NET SUBLICENSING INCOME to CYGS.
(g) Purchase patent insurance for all issued patents subject of the
License Agreements;
(h) provide INGENE quarterly reports of sub-licensing and Sub-Licensee
activity; level of detail of said reports to be determined; and
(i) Renew and continue the Sponsored Research Agreement now in force
between CYGS and INGENE at a level appropriate to continue necessary
and mutually agreed upon research.
5.2 During the Term of this Agreement and for one (1) year thereafter, CYGS
shall keep complete and accurate records of its and its sub-licensees
SALES, NET SALES of LICENSED PRODUCTS and NET SUB-LICENSING INCOME under
the license granted in this Agreement in sufficient detail to enable the
royalties payable hereunder to be determined. CYGS shall permit INGENE or
its representatives, at INGENE'S expense, to periodically examine its
books, ledgers, and records during regular business hours for the purpose
of and to the extent necessary to verify any report required under this
Agreement. In the event that the amounts due to INGENE are determined to
have been underpaid, CYGS shall pay the cost of such examination, and
accrued interest at the highest allowable rate on the amounts underpaid.
5.3 Within sixty (60) days after March 31, June 30, September 30 and
December 31 CYGS shall deliver to INGENE a true and accurate report,
giving such particulars of the business conducted by CYGS and its
sub-licensees, if any exist, during the preceding three (3) calendar months
under this Agreement as are pertinent to an account for payments hereunder.
Such report shall include at least (a) the quantities of LICENSED SUBJECT
MATTER that it has produced; (b) the total SALES, the calculation of
royalties thereon and (d) the total royalties so computed and due INGENE.
Simultaneously with the delivery of each such report, CYGS shall pay to the
INGENE the amount, if any, due for the period of such report. If no
payments are due, it shall be so reported.
5.4 Upon the request of INGENE but not more often than once per calendar
year, CYGS shall deliver to INGENE a written report as to CYGS'S efforts
and accomplishments during the preceding year in commercializing LICENSED
SUBJECT MATTER and its commercialization plans for the upcoming year.
5.5 All amounts payable hereunder by CYGS shall be payable in United States
funds. Checks shall be made payable to INGENE and sent to INGENE.
5.6 With the right of prior approval, CYGS shall reimburse INGENE for all
future expenses incurred by INGENE in searching, preparing, filing,
prosecuting and maintaining patent applications and patents including any
reissue and/or re-examination, relating to PATENT RIGHTS so long as and in
such countries as its license remains exclusive.
VI. TERM AND TERMINATION
6.1 The Term of this Agreement shall extend from the Effective Date set
forth hereinabove to the full end of the term or terms for which PATENT
RIGHTS have not expired and if only TECHNOLOGY RIGHTS are licensed and no
PATENT RIGHTS are applicable, for a term of fifteen (15) years.
6.2 This Agreement will earlier terminate:
(a) automatically if CYGS shall become bankrupt or insolvent and/or if
the business of CYGS shall be placed in the hands of a receiver or
trustee, whether by voluntary act of CYGS or otherwise; and the
receiver or trustee does not elect to accept this agreement with
approval of an appropriate court or by law.
(b) upon ninety (90) days written notice if CYGS shall breach or
default on any obligation under this License Agreement; provided,
however, CYGS may avoid such termination if before the end of such
period CYGS notifies INGENE that such breach has been cured and states
the manner of such cure.
6.3 Upon termination of this Agreement for any cause, nothing herein shall
be construed to release either party of any obligation matured prior to the
effective date of such termination, CYGS may, after the effective date of
such termination, sell all LICENSED PRODUCT and parts therefore that it may
have on hand at the date of termination, provided that it pays earned
royalty thereon as provided in this Agreement.
VII. INFRINGEMENT BY THIRD PARTIES
7.1 CYGS shall have the obligation of enforcing at its expense any patent
exclusively licensed hereunder against infringement by third parties and
shall be entitled to retain recovery from such enforcement. After payment
of its direct legal expenses, CYGS shall pay INGENE royalty on any monetary
recovery according to the provisions of Paragraph 5.1(b) to the extent that
such monetary recovery by CYGS is held to be reasonable damages or a
royalty in lieu thereof. In the event that CYGS does not file suit against
or grants a sub-license to a substantial infringer of such patents within
six (6) months of knowledge thereof, then INGENE shall have the right to
enforce any patent licensed hereunder on behalf of itself and CYGS with
INGENE retaining all recoveries from such enforcement and/or reduce the
license granted hereunder to non-exclusive.
7.2 In any suit or dispute involving an infringer, the parties shall
cooperate fully, and upon the request and at the expense of the party
bringing suit, the other party shall make available to the party bringing
suit at reasonable times and under appropriate conditions all relevant
personnel, records, papers, information, samples, specimens, and the like
which are in its possession.
VIII. ASSIGNMENT
The license conveyed by this Agreement may not be assigned by CYGS without the
prior written consent of INGENE.
IX. PATENT MARKING
CYGS agrees to xxxx permanently and legibly all products and documentation
manufactured or sold by it under this Agreement with such patent notice as may
be permitted or required under Xxxxx 00, Xxxxxx Xxxxxx Code.
X. INDEMNIFICATION
CYGS shall hold harmless and indemnify INGENE, its officers, employees and
agents from and against any claims, demands, or causes of action whatsoever,
including without limitation those arising on account of any injury or death of
persons or damage to property caused by, or arising out of, or resulting from,
the exercise or practice of the license granted hereunder by CYGS or its
officers, employees, agents or representatives.
XI. USE OF INGENE's OR CYGS' NAME
Neither party shall use the name of the other without express written consent.
XII. CONFIDENTIAL INFORMATION
12.1 INGENE and CYGS each agree that all information contained in documents
marked "confidential" which are forwarded to one by the other shall be
received in strict confidence, used only for the purposes of this
Agreement, and not disclosed by the recipient party (except as required by
law or court order), its agents or employees without the prior written
consent of the other party, unless such information (a) was in the public
domain at the time of disclosure; (b) later became part of the public
domain through no act or omission of the recipient party, its employees,
agents, successors or assigns; (c) was lawfully disclosed to the recipient
party by a third party having the right to disclose it; (d) was already
known by the recipient party at the time of disclosure; (e) was
independently developed; or (f) is required to be submitted to a government
agency pursuant to any pre-existing obligation.
12.2 Each party's obligation of confidence hereunder shall be fulfilled by
using at least the same degree of care with the other party's confidential
information it uses to protect its own confidential information. This
obligation shall exist while this agreement is in force and for a period of
five (5) years thereafter.
XIII. GENERAL
13.1 This Agreement and the existing License between the parties
(appended) constitute the entire and only agreement between the parties for
LICENSED SUBJECT MATTER and all other prior negotiations, representations,
agreement, and understandings are superseded hereby. No agreements altering
or supplementing the terms hereof may be made except by means of a written
document signed by the duly authorized representatives of the parties.
13.2 Any notice required by this License Agreement shall be given by
prepaid, first class, certified mail, return receipt requested, addressed
in the case of INGENE to:
Xxxxxxx Xxxxxx, MD, President
InGene, Inc.
0000 Xxxx 000xx Xxxxxx
Xxxxxxxx Xxxx, Xxxxxx 00000
or in the case of CYGS to:
Xxxxxxx Xxxxxxxx, President
Cryogenic Solutions, Inc.
0000 Xxx Xxxxxx, Xxxxx 000,
Xxxxxxx, Xxxxx 00000.
or such other addresses as may be given from time to time under the terms
of this notice provision.
13.3 CYGS and INGENE shall comply with all applicable federal, state and
local laws and regulations in connection with the activities pursuant to
this Agreement.
13.4 This License Agreement shall be construed and enforced in accordance
with the laws of the State of Texas.
13.5 Failure of INGENE or CYGS to enforce a right under this Agreement
shall not act as a waiver of that right or the ability to later assert that
right relative to the particular situation involved.
13.6 Headings included herein are for convenience only and shall not be
used to construe this Agreement.
13.7 If any provision of this Agreement shall be found by a court to be
void, invalid or unenforceable, the same shall be reformed to comply with
applicable law or stricken if not so conformable, so as not to affect the
validity or enforceability of this Agreement.
IN WITNESS WHEREOF, parties hereto have caused their duly authorized
representatives to execute this AGREEMENT.
INGENE (Xxxxxxx Xxxxxx, MD) CYGS (Xxxxxxx Xxxxxxxx)
By XXXXXXX XXXXXX By XXXXXXX XXXXXXXX
President President
