EXHIBIT 10.3
Confidential Treatment Requested. *** indicates material has been omitted
pursuant to a Confidential Treatment Request filed with the Securities and
Exchange Commission. A complete copy of this agreement has been filed
separately with the Securities and Exchange Commission.
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This twenty-three (23) page AGREEMENT ("AGREEMENT") is made on this 1st
day of September, 2003, by and between THE BOARD OF REGENTS ("BOARD") of THE
UNIVERSITY OF TEXAS SYSTEM ("SYSTEM"), an agency of the State of Texas, whose
address is 000 Xxxx 0xx Xxxxxx, Xxxxxx, Xxxxx 00000, on behalf of THE UNIVERSITY
OF TEXAS M. D. XXXXXXXX CANCER CENTER ("UTMDACC"), a component institution of
SYSTEM, and Advanced Biochem, Inc. (dba ProteEx), a corporation organized under
the laws of Nevada and having a principal place of business at 0000 Xxxxxxxx
Xxxxxx Xxxxx, Xxx Xxxxxxxxx, Xxxxx 00000. ("LICENSEE").
TABLE OF CONTENTS
RECITALS Page 2
I. EFFECTIVE DATE Page 2
II. DEFINITIONS Page 2
III. LICENSE Page 4
IV. CONSIDERATION, PAYMENTS AND REPORTS Page 6
V. SPONSORED RESEARCH Page 12
VI. PATENTS AND INVENTIONS Page 12
VII. INFRINGEMENT BY THIRD PARTIES Page 12
VIII. PATENT MARKING Page 13
IX. INDEMNIFICATION Page 13
X. USE OF BOARD AND UTMDACC'S NAME Page 14
XI. CONFIDENTIAL INFORMATION AND PUBLICATION Page 14
XII. ASSIGNMENT Page 16
XIII. TERM AND TERMINATION Page 16
XIV. WARRANTY: SUPERIOR-RIGHTS Page 18
1
EXHIBIT 10.3
XV. GENERAL Page 20
SIGNATURES Page 22
RECITALS
A. BOARD owns certain PATENT RIGHTS and TECHNOLOGY RIGHTS related to LICENSED
SUBJECT MATTER developed at UTMDACC.
B. BOARD, through UTMDACC, desires to have the LICENSED SUBJECT MATTER
developed in the LICENSED FIELD and used for the benefit of LICENSEE,
BOARD, SYSTEM, UTMDACC, the inventor(s), and the public as outlined in
BOARD's Intellectual Property Policy.
C. LICENSEE wishes to obtain a license from BOARD to practice LICENSED
SUBJECT MATTER.
NOW, THEREFORE, in consideration of the mutual covenants and promises
herein contained, the parties agree as follows:
I. EFFECTIVE DATE
1.1 This AGREEMENT is effective as of the date written above ("EFFECTIVE
DATE").
II. DEFINITIONS
As used in this AGREEMENT, the following terms have the meanings
indicated:
2.1 AFFILIATE means any business entity more than fifty percent (50%) owned by
LICENSEE, any business entity which owns more than fifty percent (50%) of
LICENSEE, or any business entity that is more than fifty percent (50%)
owned by a business entity that owns more than fifty percent (50%) of
LICENSEE.
2.2 DERIVED PRODUCT means any service or product, whether or not a LICENSED
PRODUCT, that utilizes or is based on biological markers, proteins or
other proteomic information (including, but not limited to, protein
fractions, protein patterns and protein
2
EXHIBIT 10.3
profiles) identified, discovered, analyzed, developed or otherwise derived
or made possible using LICENSED SUBJECT MATTER, PATENT RIGHTS and/or
TECHNOLOGY RIGHTS
2.3 LICENSED FIELD means all fields of use.
2.4 LICENSED PRODUCTS means any product or service sold by LICENSEE comprising
LICENSED SUBJECT MATTER pursuant to this AGREEMENT.
2.5 LICENSED SUBJECT MATTER means inventions and discoveries covered by PATENT
RIGHTS or TECHNOLOGY RIGHTS within LICENSED FIELD.
2.6 LICENSED TERRITORY means the entire world.
2.7 NET SALES means the gross revenues received by LICENSEE or its sublicensee
from a SALE less sales discounts actually granted, sales and/or use taxes
actually paid, import and/or export duties actually paid, outbound
transportation actually prepaid or allowed, and amounts actually allowed
or credited due to returns (not exceeding the original billing or invoice
amount)("DEDUCTIONS"). NET SALES shall also include the gross revenues
less DEDUCTIONS received by LICENSEE or any sublicensee for any DERIVED
PRODUCTS. All gross revenues and DEDUCTIONS shall be recorded by LICENSEE
in LICENSEE's official books and records in accordance with generally
accepted accounting practices and consistent with LICENSEE's published
financial statements and/or regulatory filings with the United States
Securities and Exchange Commission.
2.8 PATENT RIGHTS means BOARD's rights in information or discoveries claimed
in the patents, and/or patent applications and any letters patent that
issue thereon, whether domestic or foreign, listed on Exhibit I attached
hereto.
3
EXHIBIT 10.3
(a) `512 PATENT RIGHTS means BOARD'S rights in information or
discoveries claimed in U.S. Patent Application No. 10/301,512 and
any letters patent that issue thereon.
(b) `027 PATENT RIGHTS means BOARD's rights in information or
discoveries claimed in U.S. Patent Application No. 10/236,027 and
any letters patent that issue thereon.
2.9 SALE OR SOLD means the transfer or disposition of a LICENSED PRODUCT for
value to a party other than LICENSEE or AFFILIATE.
2.10 TECHNOLOGY RIGHTS means BOARD's rights in any technical information,
know-how, processes, procedures, compositions, devices, methods, formulae,
protocols, techniques, software, designs, drawings or data created by the
inventor(s) listed in Exhibit I at UTMDACC before the EFFECTIVE DATE,
which are not claimed in PATENT RIGHTS but that are necessary for
practicing PATENT RIGHTS.
III. LICENSE
3.1 BOARD, through UTMDACC, hereby grants to LICENSEE a royalty-bearing,
exclusive license under LICENSED SUBJECT MATTER to manufacture, have
manufactured, use, import, offer to sell and/or sell LICENSED PRODUCTS
covered by the `512 PATENT RIGHTS within LICENSED TERRITORY for use within
LICENSED FIELD. BOARD, through UTMDACC, hereby grants to LICENSEE a
royalty-bearing, non-exclusive license under LICENSED SUBJECT MATTER to
manufacture, have manufactured, use, import, offer to sell and/or sell
LICENSED PRODUCTS covered by the `027 PATENT RIGHTS within LICENSED
TERRITORY for use within LICENSED FIELD. To the extent a LICENSED PRODUCT
is covered by both the `512 PATENT RIGHTS and the
4
EXHIBIT 10.3
`027 PATENT RIGHTS, the license granted hereunder shall be non-exclusive.
The foregoing grants are subject to Sections 14.2 and 14.3 hereinbelow,
the payment by LICENSEE to UTMDACC of all consideration as provided
herein, the timely payment of all amounts due under any related sponsored
research agreement between UTMDACC and LICENSEE in effect during this
AGREEMENT, and is further subject to the following rights retained by
BOARD and UTMDACC to:
(a) Publish the general scientific findings from research related to
LICENSED SUBJECT MATTER, subject to the terms of Article XI -
Confidential Information and Publication; and
(b) Use LICENSED SUBJECT MATTER relating to the `512 PATENT RIGHTS for
research, teaching, patient care, and other educationally-related
purposes. Nothing herein shall be construed as in any way limiting
UTMDACC's rights under `027 PATENT RIGHTS, including, but not
limited to, the right to use LICENSED SUBJECT MATTER relating to the
`027 PATENT RIGHTS for any purpose whatsoever.
3.2 LICENSEE may extend the license granted herein to any AFFILIATE provided
that the AFFILIATE consents in writing to be bound by this AGREEMENT to
the same extent as LICENSEE. LICENSEE agrees to deliver such contract to
UTMDACC within thirty (30) calendar days following execution thereof.
3.3 LICENSEE may grant sublicenses under LICENSED SUBJECT MATTER for any
lawful purpose except that LICENSEE may not grant sublicenses to any
entity for the identification of biological markers. Sublicenses may be
granted consistent with the terms of this AGREEMENT provided that LICENSEE
is responsible for its sublicensees
5
EXHIBIT 10.3
relevant to this AGREEMENT, and for diligently collecting all amounts due
LICENSEE or UTMDACC from sublicensees. If a sublicensee pursuant hereto
becomes bankrupt, insolvent or is placed in the hands of a receiver or
trustee, LICENSEE, to the extent allowed under applicable law and in a
timely manner, agrees to use its best reasonable efforts to collect all
consideration owed to LICENSEE and to have the sublicense agreement
confirmed or rejected by a court of proper jurisdiction.
3.4 LICENSEE must deliver to UTMDACC a true and correct copy of each
sublicense granted by LICENSEE, and any modification or termination
thereof, within thirty (30) calendar days after execution, modification,
or termination.
3.5 If this AGREEMENT is terminated pursuant to Article XIII - Term and
Termination, BOARD and UTMDACC agree to accept as successors to LICENSEE,
existing sublicensees in good standing at the date of termination provided
that each such sublicensee consents in writing to be bound by all of the
terms and conditions of this AGREEMENT.
IV. CONSIDERATION, PAYMENTS AND REPORTS
4.1 In consideration of rights granted by BOARD to LICENSEE under this
AGREEMENT, LICENSEE agrees to pay UTMDACC each of the following:
(a) All out-of-pocket expenses incurred by UTMDACC in filing,
prosecuting, enforcing and maintaining `512 PATENT RIGHTS, and all
such future expenses incurred by UTMDACC, for so long as, and in
such countries as this AGREEMENT remains in effect. UTMDACC will
invoice LICENSEE within thirty (30) calendar days of the EFFECTIVE
DATE for expenses incurred as of that time and on a quarterly basis
thereafter. The invoiced amount for expenses
6
EXHIBIT 10.3
incurred prior to the EFFECTIVE DATE will be due and payable by
LICENSEE within ninety (90) calendar days of invoice. The invoiced
amounts for expenses incurred after the EFFECTIVE DATE will be due
within thirty (30) calendar days of invoice; and
(b) A non-refundable fee of $*** for ***. UTMDACC will invoice LICENSEE
within thirty (30) calendar days of the EFFECTIVE DATE and payment
is due to UTMDACC within ninety (90) days of the EFFECTIVE DATE; and
(c) A nonrefundable license documentation fee in the amount of $***,
payable in two payments of $***. This fee will not reduce the amount
of any other payments provided for in this ARTICLE IV. UTMDACC will
invoice LICENSEE for the first payment of $*** after the AGREEMENT
is fully executed by all parties. Said first payment shall be due
and payable within ninety (90) days of the EFFECTIVE DATE. The
second payment of $*** shall be due and payable to UTMDACC on
***;and
(d) A nonrefundable annual license maintenance fee of $***. This
maintenance fee is due to UTMDACC beginning on the first anniversary
of the EFFECTIVE DATE and annually thereafter until ***. This fee
will not reduce any other payment provided for in this ARTICLE IV;
and
(e) A running royalty equal to ***. LICENSEE shall be responsible for
diligently collecting and paying UTMDACC any royalties due for any
sublicensee's NET SALES; and
(f) Minimum annual royalties of $***; and
7
EXHIBIT 10.3
(g) A $*** milestone payment upon ***. A first payment of $*** shall be
due and payable *** and a second payment of $*** shall be due and
payable ***; and
(h) An adjusted share of TOTAL SUBLICENSEE CONSIDERATION as defined
below, wherein the adjusted share shall be calculated by taking ***
percent (***%) of the TOTAL SUBLICENSEE CONSIDERATION and
multiplying the result by a fraction comprising the greater of (1)
*** or (2) ***, divided by ***, e.g., as follows:
8
EXHIBIT 10.3
***
Adjusted TOTAL ____________________
share = *** X SUBLICENSEE X
CONSIDERATION ***
As used in this Section, TOTAL SUBLICENSEE CONSIDERATION means all
consideration, other than research and development money and NET SALES,
received by LICENSEE, from either (i) any sublicensee pursuant to Sections
3.3 and 3.4, or (ii) any assignee pursuant to Section 12.1, including, but
not limited to, minimum royalties, up-front payments, bonuses, milestones,
marketing fees, distribution fees, franchise fees, option fees, license
fees, documentation fees, and equity securities.
4.2 Unless otherwise provided, all such payments are payable within thirty
(30) calendar days after March 31, June 30, September 30, and December 31
of each year during the term of this AGREEMENT, at which time LICENSEE
will also deliver to UTMDACC a true and accurate report, giving such
particulars of the business conducted by LICENSEE and its sublicensees, if
any exist, during the preceding three calendar months under this AGREEMENT
as necessary for UTMDACC to account for LICENSEE's payments hereunder.
This report will include pertinent data, including, but not limited to:
(a) the accounting methodologies used to account for and calculate the
items included in the report and any differences in such accounting
methodologies used by LICENSEE since the previous report; and
9
EXHIBIT 10.3
(b) a list of LICENSED PRODUCTS produced for the three (3) preceding
calendar months categorized by the technology it relates to under
PATENT RIGHTS (including a breakdown of whether the it is covered by
the `512 PATENT RIGHTS, the `027 PATENT RIGHTS, or both); and
(c) the total quantities of LICENSED PRODUCTS produced by the category
listed in Section 4.2(b); and
(d) the total SALES by the category listed in Section 4.2(b); and
(e) the calculation of NET SALES by the category listed in Section
4.2(b); and
(f) the royalties so computed and due UTMDACC by the category listed in
Section 4.2(b) and/or minimum royalties; and
(g) all consideration received by each sublicensee or assignee and
payments due UTMDACC; and
(h) all other amounts due UTMDACC herein.
Simultaneously with the delivery of each such report, LICENSEE agrees to
pay UTMDACC the amount due, if any, for the period of such report. These
reports are required even if no payments are due.
4.3 During the term of this AGREEMENT and for one year thereafter, LICENSEE
agrees to keep complete and accurate records of its and its sublicensees'
SALES and NET SALES in sufficient detail to enable the royalties and other
payments due hereunder to be determined. LICENSEE agrees to permit UTMDACC
or its representatives, at UTMDACC's expense, to periodically examine
LICENSEE's 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. If any amounts due UTMDACC are
10
EXHIBIT 10.3
determined to have been underpaid in an amount equal to or greater than
five percent (5%) of the total amount due during the period so examined,
then LICENSEE will pay the cost of the examination plus accrued interest
at the highest allowable rate.
4.4 Within thirty (30) calendar days following each anniversary of the
EFFECTIVE DATE, LICENSEE will deliver to UTMDACC a written progress report
as to LICENSEE's (and any sublicensee's) efforts and accomplishments
during the preceding year in diligently commercializing LICENSED SUBJECT
MATTER in the LICENSED TERRITORY and LICENSEE's (and sublicensees')
commercialization plans for the upcoming year.
4.5 All amounts payable hereunder by LICENSEE will be paid in United States
funds without deductions for taxes, assessments, fees, or charges of any
kind. Checks are to be made payable to The University of Texas M. D.
Xxxxxxxx Cancer Center, and sent by United States mail to Box 297402,
Xxxxxxx, Xxxxx 00000, Attention: Manager, Sponsored Programs or by wire
transfer to:
BANK ONE TEXAS
000 XXXXXX
XXXXXXX, XXXXX 00000
SWIFT: BONEUS44HOU
ABA ROUTING NO: 000000000
ACCOUNT NAME: UNIV. OF TEXAS M. D. XXXXXXXX CANCER CENTER
ACCOUNT NO: 1586838979
REFERENCE: include title and EFFECTIVE DATE of AGREEMENT and type
of payment (e.g., license documentation fee, milestone payment, royalty
[including applicable patent/application identified by MDA reference
number and patent number or application serial number], or maintenance
fee, etc.).
4.6 No payments due or royalty rates owed under this AGREEMENT will be reduced
as the result of co-ownership of LICENSED SUBJECT MATTER by BOARD and
another party, including, but not limited to, LICENSEE.
11
EXHIBIT 10.3
V. SPONSORED RESEARCH
5.1 If LICENSEE desires to sponsor research for or related to the LICENSED
SUBJECT MATTER, and particularly where LICENSEE receives payments for
sponsored research pursuant to a sublicense under this AGREEMENT, LICENSEE
(a) will notify UTMDACC in writing of all opportunities to conduct this
sponsored research (including clinical trials, if applicable), (b) solicit
research and/or clinical proposals from UTMDACC for this purpose, and (c)
will give good faith consideration to funding the proposals at UTMDACC.
VI. PATENTS AND INVENTIONS
6.1 All decisions regarding prosecution, maintenance and enforcement of PATENT
RIGHTS shall be within the sole discretion of UTMDACC.
VII. INFRINGEMENT BY THIRD PARTIES
7.1 LICENSEE, at its expense, must enforce any patent exclusively licensed
hereunder against infringement by third parties and is entitled to retain
recovery from such enforcement. After reimbursement of LICENSEE's
reasonable legal costs and expenses related to such recovery, LICENSEE
agrees to pay UTMDACC either: (a) the royalty detailed in Section 4.1(d)
for any monetary recovery that is for sales of LICENSED PRODUCTS lost due
to the infringement and related punitive damages; or (b) *** in any
recovery in which the award is for reasonable royalties. LICENSEE must
notify UTMDACC in writing of any potential infringement within thirty (30)
calendar days of knowledge thereof. If LICENSEE does not file suit against
a substantial infringer within six (6) months of knowledge thereof, then
BOARD or UTMDACC may, at its sole discretion, enforce any patent licensed
hereunder on behalf of itself and LICENSEE, with
12
EXHIBIT 10.3
UTMDACC 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 of any PATENT RIGHTS, the
parties agree to cooperate fully with each other. At the request and
expense of the party bringing suit, the other party will permit access
during regular business hours, to all relevant personnel, records, papers,
information, samples, specimens, and the like in its possession.
VIII. PATENT MARKING
8.1 LICENSEE agrees that all packaging containing individual LICENSED
PRODUCT(S), documentation therefor, and when possible for actual LICENSED
PRODUCT(S) SOLD by LICENSEE, AFFILIATES, and/or sublicensees of LICENSEE
will be permanently and legibly marked with the number of any applicable
patent(s) licensed hereunder in accordance with each country's patent
laws, including Xxxxx 00, Xxxxxx Xxxxxx Code.
IX. INDEMNIFICATION
9.1 LICENSEE agrees to hold harmless and indemnify BOARD, SYSTEM, UTMDACC, its
Regents, officers, employees, students, and agents from and against any
claims, demands, or causes of action whatsoever, costs of suit and
reasonable attorney's fees, including without limitation, those costs
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 rights granted hereunder by LICENSEE, its officers, its AFFILIATES
or their officers, employees, agents or representatives.
X. USE OF BOARD AND UTMDACC'S NAME
10.1 LICENSEE will not use the name of (or the name of any employee of)
UTMDACC, SYSTEM or BOARD in any advertising, promotional or sales
literature, on its Web site,
13
EXHIBIT 10.3
or for the purpose of raising capital without the advance express written
consent of BOARD secured through:
M. D. Xxxxxxxx Services Corporation
0000 X. Xxxx, Xxxxx 000, Xxxx 0000
Xxxxxxx, XX 00000
ATTENTION: Xxxxxxx Xxxxxx
Email: xxxxxxx@xxxxxxxxxx.xxx
Notwithstanding the above, LICENSEE may use the name of (or name of
employee of) UTMDACC, SYSTEM or BOARD in routine business correspondence,
or as needed in appropriate regulatory submissions without express written
consent.
XI. CONFIDENTIAL INFORMATION AND PUBLICATION
11.1 UTMDACC and LICENSEE each agree that all information contained in
documents marked "confidential" and forwarded to one by the other (i) are
to be received in strict confidence, (ii) used only for the purposes of
this AGREEMENT, and (iii) 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, except to the extent that the
recipient party can establish competent written proof that such
information:
(a) was in the public domain at the time of disclosure; or
(b) later became part of the public domain through no act or omission of
the recipient party, its employees, agents, successors or assigns;
or
(c) was lawfully disclosed to the recipient party by a third party
having the right to disclose it; or
(d) was already known by the recipient party at the time of disclosure;
or
(e) was independently developed by the recipient without use of the
other party's confidential information; or
14
EXHIBIT 10.3
(f) is required by law or regulation to be disclosed.
11.2 Each party's obligation of confidence hereunder will be fulfilled by using
at least the same degree of care with the other party's confidential
information as it uses to protect its own confidential information, but
always at least a reasonable degree of care. This obligation will exist
while this AGREEMENT is in force and for a period of three (3) years
thereafter.
11.3 UTMDACC reserves the right to publish the general scientific findings from
research related to LICENSED SUBJECT MATTER, with due regard to the
protection of LICENSEE's confidential information. UTMDACC will submit the
manuscript of any proposed publication to LICENSEE at least thirty (30)
calendar days before publication, and LICENSEE shall have the right to
review and comment upon the publication in order to protect LICENSEE's
confidential information. Upon LICENSEE's request, publication may be
delayed up to sixty (60) additional calendar days to enable LICENSEE to
secure adequate intellectual property protection of LICENSEE's
confidential information that would otherwise be affected by the
publication.
XII. ASSIGNMENT
12.1 Except in connection with the sale of all of LICENSEE's assets to a third
party, this AGREEMENT may not be assigned by LICENSEE without the prior
written consent of UTMDACC, which will not be unreasonably withheld.
XIII. TERM AND TERMINATION
13.1 Subject to Sections 13.3, 13.4 hereinbelow, the term of this AGREEMENT is
from the EFFECTIVE DATE to the full end of the term or terms for which
PATENT RIGHTS
15
EXHIBIT 10.3
have not expired, or if only TECHNOLOGY RIGHTS are licensed and no PATENT
RIGHTS are applicable, for a term of fifteen (15) years.
13.2 Any time after one (1) year from the EFFECTIVE DATE, BOARD or UTMDACC have
the right to terminate this license in any national political jurisdiction
within the LICENSED TERRITORY if LICENSEE, within ninety (90) calendar
days after receiving written notice from UTMDACC of the intended
termination, fails to provide written evidence satisfactory to UTMDACC
that LICENSEE or its sublicensee(s) has commercialized or is actively and
effectively attempting to commercialize a licensed invention in such
jurisdiction(s). The following definitions apply to Section 13.2: (a)
"commercialize" means having SALES in such jurisdiction; (b) "active
attempts to commercialize" means having an effective, ongoing and active
research, development, manufacturing, marketing or sales program as
appropriate, directed toward obtaining regulatory approval, and/or
production and/or SALES in any jurisdiction, and has provided plans
acceptable to UTMDACC, in its sole discretion, to commercialize licensed
inventions in the jurisdiction(s) that UTMDACC intends to terminate.
13.3 Subject to any rights herein which survive termination, this AGREEMENT
will earlier terminate in its entirety:
(a) automatically, if LICENSEE becomes bankrupt or insolvent and/or if
the business of LICENSEE shall be placed in the hands of a receiver,
assignee, or trustee, whether by voluntary act of LICENSEE or
otherwise; or
(b) upon thirty (30) calendar days written notice from UTMDACC, if
LICENSEE breaches or defaults on the payment or report obligations
of ARTICLE IV, or use of name obligations of ARTICLE X, unless,
before the end of the such thirty (30)-
16
EXHIBIT 10.3
calendar day notice period, LICENSEE has cured the default or breach
to UTMDACC's satisfaction, and so notifies UTMDACC, stating the
manner of the cure; or
(c) upon ninety (90) calendar days written notice from UTMDACC if
LICENSEE breaches or defaults on any other obligation under this
AGREEMENT, unless, before the end of the such ninety (90)
calendar-day notice period, LICENSEE has cured the default or breach
to UTMDACC's satisfaction and so notifies UTMDACC, stating the
manner of the cure; or
(d) at any time by mutual written agreement between LICENSEE, UTMDACC or
BOARD, upon one hundred eighty (180) calendar days written notice to
all parties and subject to any terms herein which survive
termination; or
(e) if Section 13.2 is invoked; or
(f) if LICENSEE has defaulted or been late on its payment obligations
pursuant to the terms of this AGREEMENT on any two (2) occasions in
a twelve (12) month period.
13.4 Upon termination of this AGREEMENT:
(a) nothing herein will be construed to release either party of any
obligation maturing prior to the effective date of the termination;
and
(b) LICENSEE covenants and agrees to be bound by the provisions of
Articles IX (Indemnification), X (Use of Board and UTMDACC's Name)
and XI (Confidential Information and Publication) of this AGREEMENT;
and
(c) LICENSEE may, after the effective date of the termination, sell all
LICENSED PRODUCTS and parts therefor that it has on hand at the date
of termination, if
17
EXHIBIT 10.3
LICENSEE pays the earned royalty thereon and any other amounts due
pursuant to Article IV of this AGREEMENT; and
(d) LICENSEE grants to BOARD and UTMDACC a nonexclusive royalty bearing
license with the right to sublicense others with respect to
improvements made by LICENSEE in the LICENSED SUBJECT MATTER.
LICENSEE and UTMDACC agree to negotiate in good faith the royalty
rate for the nonexclusive license. BOARD's and UTMDACC's right to
sublicense others hereunder is solely for the purpose of permitting
others to develop and commercialize the entire technology package.
XIV. WARRANTY: SUPERIOR-RIGHTS
14.1 Except for the rights, if any, of the Government of the United States of
America as set forth below, BOARD represents and warrants its belief that
(a) it is the owner of the entire right, title, and interest in and to
LICENSED SUBJECT MATTER, (b) it has the sole right to grant licenses
thereunder, and (c) it has not knowingly granted licenses thereunder to
any other entity that would restrict rights granted hereunder except as
stated herein.
14.2 LICENSEE understands that the LICENSED SUBJECT MATTER may have been
developed under a funding agreement with the Government of the United
States of America and, if so, that the Government may have certain rights
relative thereto. This AGREEMENT is explicitly made subject to the
Government's rights under any such agreement and any applicable law or
regulation, including P.L. 96-517 as amended by P.L. 98-620. To the extent
that there is a conflict between any such agreement,
18
EXHIBIT 10.3
applicable law or regulation and this AGREEMENT, the terms of such
Government agreement, applicable law or regulation shall prevail.
14.3 LICENSEE understands and agrees that BOARD and UTMDACC, by this AGREEMENT,
make no representation as to the operability or fitness for any use,
safety, efficacy, approvablity by regulatory authorities, time and cost of
development, patentability, and/or breadth of the LICENSED SUBJECT MATTER.
BOARD and UTMDACC, by this AGREEMENT, also make no representation as to
whether any patent covered by PATENT RIGHTS is valid or as to whether
there are any patents now held, or which will be held, by others or by
BOARD or UTMDACC in the LICENSED FIELD, nor does BOARD and UTMDACC make
any representation that the inventions contained in PATENT RIGHTS do not
infringe any other patents now held or that will be held by others or by
BOARD.
14.4 LICENSEE, by execution hereof, acknowledges, covenants and agrees that
LICENSEE has not been induced in any way by BOARD, SYSTEM, UTMDACC or
employees thereof to enter into this AGREEMENT, and further warrants and
represents that (a) LICENSEE has conducted sufficient due diligence with
respect to all items and issues pertaining to this AGREEMENT; and (b)
LICENSEE has adequate knowledge and expertise, or has used knowledgeable
and expert consultants, to adequately conduct such due diligence, and
agrees to accept all risks inherent herein.
XV. GENERAL
15.1 This AGREEMENT constitutes the entire and only agreement between the
parties for LICENSED SUBJECT MATTER and all other prior negotiations,
representations, agreements and understandings are superseded hereby. No
agreements altering or
19
EXHIBIT 10.3
supplementing the terms hereof will be made except by a written document
signed by both parties.
15.2 Any notice required by this AGREEMENT must be given by prepaid, first
class, certified mail, return receipt requested, and addressed in the case
of UTMDACC to:
The University of Texas M. D. Xxxxxxxx Cancer Center
Office of Technology Commercialization
0000 X. Xxxx, Xxxxx 000, Xxxx 0000
Xxxxxxx, Xxxxx 00000
ATTENTION: Xxxxxxx X. Xxxx
with copy to BOARD:
BOARD OF REGENTS
The University of Texas System
000 Xxxx Xxxxxxx Xxxxxx
Xxxxxx, Xxxxx 00000
ATTENTION: Office of General Counsel
or in the case of LICENSEE to:
ProteEx
0000 Xxxxxxxx Xxxxxx Xxxxx
Xxx Xxxxxxxxx, Xxxxx 00000
ATTENTION: Xxxxxx Skip Marks
or other addresses as may be given from time to time under the terms of
this notice provision.
15.3 LICENSEE must comply with all applicable federal, state and local laws and
regulations in connection with its activities pursuant to this AGREEMENT.
15.4 LICENSEE covenants and agrees that it will not file any patent
applications which claim priority, directly or indirectly, to any patent
or patent application included in PATENT RIGHTS, without the advance
express written consent of UTMDACC.
15.5 This AGREEMENT will be construed and enforced in accordance with the laws
of the United States of America and of the State of Texas, without regard
to its conflict of law
20
EXHIBIT 10.3
provisions. Xxx Xxxxx Xxxxx Xxxxxx xx Xxxxxx Xxxxxx, Xxxxx (or, if there
is exclusive federal jurisdiction, the United States District Court for
the Southern District of Texas) shall have exclusive jurisdiction and
venue over any dispute arising out of this AGREEMENT, and LICENSEE
consents to the jurisdiction of such courts; however, nothing herein shall
be deemed as a waiver by BOARD, SYSTEM or UTMDACC of its sovereign
immunity.
15.6 Failure of BOARD or UTMDACC to enforce a right under this AGREEMENT will
not act as a waiver of right or the ability to later assert that right
relative to the particular situation involved.
15.7 Headings included herein are for convenience only and will not be used to
construe this AGREEMENT.
15.8 If any part of this AGREEMENT is for any reason found to be unenforceable,
all other parts nevertheless will remain enforceable.
21
EXHIBIT 10.3
IN WITNESS WHEREOF, the parties hereto have caused their duly authorized
representatives to execute this AGREEMENT.
BOARD OF REGENTS OF THE PROTEEX, INC.
UNIVERSITY OF TEXAS SYSTEM
By /s/ Xxxx Xxxxxxxxxx, M.D. By /s/ Xxxxxx Skip Marks
--------------------------------- -------------------------------
Xxxx Xxxxxxxxxx, M.D. Xxxxxx Skip Marks
President President
The University of Texas
M. D. Xxxxxxxx Cancer Center
Date: 10/8/03 Date: 9/15/03
THE UNIVERSITY OF TEXAS
M. D. XXXXXXXX CANCER CENTER
By /s/ Xxxx Xxxxx
---------------------------------
Xxxx Xxxxx
Executive Vice President
The University of Texas
M. D. Xxxxxxxx Cancer Center
Date: 10/8/03
Approved as to Content:
By /s/ Xxxxxxx X. Xxxx
---------------------------------
Xxxxxxx X. Xxxx
Managing Director, Technology
Commercialization
M. D. Xxxxxxxx Cancer Center
Date: 9/16/03
22
EXHIBIT 10.3
EXHIBIT I
MDA02-085 (UTSC:764) entitled "Methods and Compositions for Detection of Breast
Cancer".
Inventors: Xxxxxxx X. Xxxxxxxx and Xxxxx X. Xxxxxx
Serial No.: 10/236,027
Filing Date: September 5, 2002
MDA03-098 (UTSC:828US) entitled Proteomic Methods for Diagnosis and Monitoring
of Breast Cancer". Inventors: Xxxxxxx X. Xxxxxxxx, Xxxxx X. Xxxxxx, Xxx X.
Xxxxxxxxx and Xxxxx X. Xxxx.
Serial No.: 10/301,512
Filing Date: November 20, 2002
23
