NOTE: Certain portions of this document have been omitted based on a request
for confidential treatment. The non-public information has been filed
with the Securities and Exchange Commission. Omitted portions are
designated with asterisks ("*").
Interinstitutional Agreement Between The University of Florida
Research Foundation, Inc. and Ixion Biotechnologies Inc.
----------------------------------------------------
This Interinstitutional Agreement ("Agreement"), is effective this 4th
day of February, 1999, between the University of Florida Research Foundation,
Inc. ("UFRF"), a direct support organization of the University of Florida
(AUF@), having an address at 000 Xxxxxxx Xxxx, Xxxxxxxxxxx, Xxxxxxx 00000 and
Ixion Biotechnology, Inc.(AIxion@), a corporation of the State of Delaware
having an address at 00000 Xxxxxxxx Xxxx., Xxxxxxx Xxxxxxx 00000.
RECITALS
Whereas, certain inventions were made by Xx. Xxxxx X. Xxxx of the
University of Florida and Xx. Xxxxxxx Xxxxx of Ixion ("inventors");
Whereas, Xx. Xxxx, in accordance with his employment agreement with the UF,
is required to assign his interest in any Patent Rights (as hereafter defined)
covering inventions made during the course of his employment with UF, and has
assigned such rights in the Inventions to UF;
Whereas, UF, in turn has assigned its Patent Rights in the inventions to
UFRF;
Whereas, Xx. Xxxxx has assigned her interest in any Patent Rights to Ixion;
Whereas, Ixion and UFRF intend that Ixion will assume exclusive
responsibility for administering , commercializing and licensing Patent Rights
in the Diagnostic Field, and that UFRF will not license its interests in Patent
Rights in the Diagnostic Field during the term of this Agreement;
Whereas, UFRF and Ixion want the inventions to be commercialized to the
fullest extent so that commercial products and other benefits from licensing can
be enjoyed by the general public;
AGREEMENT
Now, therefore, the parties agree as follows:
1. Definitions
The terms used in this Agreement shall have the following meaning:
1.1 "Patent Rights" shall mean U.S. patent application No. 60/064,823,
entitled "DNA-based Quantitation of Enteric Bacteria", identified by UFRF as
UF#1797 and by Ixion as UF-210.X.C1, and all patents and patent applications
that claim the priority of this application, including any continuations,
divisionals, foreign patents and/or reissues thereof.
1.2 "License Agreement(s)" shall mean any agreement(s) entered into by
Ixion that grants Licensee(s) the right to make, use, or sell products or use
processes, covered by Patent Rights.
1.3 "Licensee(s)" shall mean any party that enters into a License
Agreement(s) with Ixion.
1.4 "Qualified Payments" shall mean any royalties, license fees,
milestone payments or other payments or consideration except Research Support
Payments and Qualified Equity Investments.
1.5 "Research Support Payments" shall mean any payment other than a
royalty or license fee that is made to Ixion by a Licensee for which either: (i)
Ixion has an obligation to the party paying the funds to apply such funds to the
research and development of a product that is intended to generate Royalty
Income; or (ii) the agreement provides that Ixion is being reimbursed for past
costs incurred in the research and development of a product that is intended to
generate Royalty Income and Ixion has provided a breakdown of the past research
and development costs to the party paying it such funds and to UFRF. For
purposes of this definition, allocable general overhead costs may be included in
the research and development costs covered by the applicable payment, provided
that such costs do not exceed 44% of the specific research and development
costs.
1.6 "Qualified Equity Investments" shall mean amounts paid to Ixion as
consideration for an equity interest in Ixion, but only to the extent that such
consideration does not exceed the fair market value of the shares received by
the other party. Any excess shall be included in Qualified Payments, except to
the extent that the excess is a Research Support Payment as described above.
1.7 "Royalty Income" shall mean any Qualified Payments that are
received by Ixion with respect to any of the following:
(a) any Qualified Payments received pursuant to a license
agreement under which any Patent Rights are licensed;
(b) any Qualified Payments received from any person or
entity that has been granted a license under the
Patent Rights, without regard to whether such
payments or other forms of compensation are made with
respect to the Patent Rights or are made with respect
to any other patents, intellectual property or other
rights or obligations, unless such Qualified Payment
is received solely with respect to products other
than a Licensed Product, or development or milestones
that are not related to a Licensed Product; or
(c) any Qualified Payments received from any person or
entity with respect to or in settlement of any
infringement to the same extent that such payments
would have been considered Royalty Income under
paragraphs (a) or (b) of this definition if the
payments had been received under a license agreement
with the party.
1.8 "Net Royalty Income" shall mean Royalty Income less Permitted
Royalty Payments.
1.9 "Permitted Royalty Payments" shall mean: (a) royalties and other
payments made by Ixion to an unrelated third party pursuant to an arms-length
agreement to the extent such royalties are payable with respect to the use of an
intellectual property right that is required in order to sell a Licensed Product
for which Royalty Income is recognized under the definition of Royalty Income;
(b) any damages or settlement amounts paid by Ixion to an unrelated third party,
or costs of Ixion incurred in connection therewith, with respect to the
infringement of intellectual property rights other than the Patent Rights to the
extent the infringement of such intellectual property right resulted from the
manufacture use or sale of a Licensed Product for which Royalty Income is
recognized under the definition of Royalty Income.
1.10 "Licensed Product" and "Licensed Process" shall mean:
1.10.1 In the case of a Licensed Product, any product or part
thereof developed by or on behalf of Licensee which:
(i) is covered in whole or in part by an issued,
unexpired claim or a pending claim contained
in the Patent Rights in any country in which
any product is made, used or sold; or
(ii) is manufactured by using a process which is
covered in whole or in part by an issued,
unexpired claim or a pending claim contained
in the Patent Rights in any country in which
any such process is used or in which any
such product is used or sold.
1.10.2 In the case of a Licensed Process, any process which is
covered in whole or in part by an issued, unexpired claim or a pending claim
contained in the Patent Rights in any country in which such process is
practiced.
1.11 "Net Sales" shall mean Ixion's gross sales (excluding Royalty
Income) from the sale or lease of Licensed Products and Licensed Processes less
the sum of the following:
1.11.1 discounts allowed in amounts customary in the trade
and brokers' or agents' commissions, if any, allowed
and paid to independent parties in arms-length
transactions;
1.11.2 excise, value-added, or sales taxes, tariff duties or
use taxes directly imposed and with reference to
particular sales;
1.11.3 outbound transportation prepaid or allowed;
1.11.4 amounts allowed or credited on returns; and
1.11.5 packing costs and insurance costs if itemized
separately.
No deductions shall be made for commissions paid to individuals regularly
employed by Ixion and on its payroll, or for cost of collections.
1.12 "Diagnostic Field" shall mean the field of Licensed Products used
for the purpose of diagnosing diseases in animals, including humans.
1.13 "Other Field" shall mean any field of use other than the
Diagnostic Field.
2. Grant of Rights.
2.1 UFRF grants to Ixion the exclusive right to negotiate, execute, and
administer License Agreement(s) in the Diagnostic Field. Unless this Agreement
is terminated and there are no License Agreement(s) in effect or in negotiation,
in accordance with Article 6 (Termination): (a) UFRF will not license Patent
Rights in the Diagnostic Field; and (b) UFRF will, to the extent it is permitted
under applicable agreements with other parties, notify Ixion of applications of
the Patent Rights in Other Fields of which it becomes aware and consult with
Ixion concerning such Other Fields before granting any license under the Patent
Rights in such Other Fields. This Agreement and any License Agreement(s) shall
be subject to the reservation of a right by UFRF, on behalf of the University of
Florida to practice under the Patent Rights for research purposes only,
including research for any sponsors.
2.2 Ixion will use its best efforts to bring one or more Licensed
Products or Licensed Processes to market through a thorough, vigorous, and
diligent program for exploitation of the Patent Rights to attain
commercialization of Licensed Products and Licensed Processes, or at its
election, will actively and diligently seek Licensee(s) for the commercial
development of Patent Rights and will administer all License Agreement(s) for
the mutual benefit of the parties to this Agreement.
2.3 Ixion will have the final authority to enter into negotiations and
execute License Agreement(s) in the Diagnostic Field. Ixion will provide UFRF
with copies of all License Agreements(s) issued. UFRF will keep these documents
and related documentation confidential in accordance with Article 7
(Confidentiality), except that UFRF may disclose the existence of any License
Agreement(s), but only to the extent of the granting clause.
2.4 For as long as this Agreement is in effect, Ixion shall pay to UFRF
twenty-five percent (**%) of Net Royalty Income.
2.5 During the life of this Agreement, each party will be solely
responsible for calculating and distributing to its respective inventors named
on patents contained in Patent Rights its share of Net Royalty Income in
accordance with its own policy.
2.6 Any respective License Agreement will include provisions, or
substantially similar provisions, as follows:
2.6.1 "Nothing in this Agreement will be construed as: an
obligation to bring or prosecute actions or suits
against third parties for patent infringement;
conferring by implication, estoppel, or otherwise any
license or rights under any patents of University of
Florida Research Foundation, Inc. ("UFRF") other than
Patent Rights, regardless of whether such patents are
dominant or subordinate to Patent Rights; or an
obligation to furnish any know-how not provided in
Patent Rights."
2.6.2. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS
AGREEMENT, UFRF MAKES NO REPRESENTATIONS AND EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
VALIDITY OF PATENT RIGHTS CLAIMS."
2.6.3 "Licensee will (and requires its sublicensees to)
indemnify, hold harmless and defend UFRF, the
University of Florida ("UF"), their officers,
employees, and agents; the sponsors of the research
that led to the Invention; the inventors of any
invention covered by Patent Rights (including the
Licensed Products and methods contemplated thereunder)
and their employers against any and all claims, suits,
losses, damage, costs, fees, and expenses resulting
from or arising out of exercise of this license or any
sublicense. This indemnification will include, but not
be limited to, any product liability."
2.6.4 "Because this Agreement grants the exclusive right to
make, use or sell the Licensed Products in the United
States, Licensee acknowledges that any Licensed
Products embodying the Invention or produced through
the use thereof will be manufactured substantially in
the United States."
2.6.7 "Nothing in this Agreement will be deemed to limit
the right to publish any and all technical data of
UFRF or UF resulting from any research performed by
UFRF relating to the invention, and to make and use
the invention, Licensed Product(s), method(s), and
associated technology solely for educational and
research purposes, and for purposes not covered by
this Agreement."
2.6.8 "Nothing contained in this Agreement will be
construed as conferring any right to use in
advertising, publicity, or other promotional
activities, any name, trade name, trademark, or other
designation of UF or UFRF (including contraction,
abbreviation, or simulation of any of the foregoing).
Unless required by law, the use by Licensee of the
names "UF", "UFRF", AUniversity of Florida@ or
"University of Florida Research Foundation" is
expressly prohibited."
3. Other Consideration and Reports
3.1 Ixion shall deliver to UFRF on or before a date 90 days from the
date hereof a business plan, prospectus, or annual report containing a plan for
further research and development of a product relating to the Patent Rights.
Such document (or extract from such document) shall show generally for the
forthcoming fiscal year the amount of money, number and kind of personnel, and
time budgeted for such product development. Ixion shall provide similar plans or
extracts to UFRF on an annual basis on or before the ninetieth (90th) day
following the close of each fiscal year. All development activities and
strategies and all aspects of product design and decisions to market and the
like are entirely at the discretion of Ixion, and Ixion shall rely entirely on
either its own expertise or on the expertise of its own consultants with respect
thereto. UFRF's review of Licensee's business plan, prospectus, or annual report
is solely to verify the existence of Ixion's commitment to development activity
and to ensure compliance with Ixion's obligations to commercialize the
inventions of the Patent Rights, as set forth above.
3.2 Ixion agrees that the first commercial sale of Licensed Products by
Ixion or its Licensee to the retail customer shall occur on or before ten years
from the date of this Agreement or this Agreement shall terminate pursuant to
Section 6.5 hereto.
3.3. In addition to any other consideration hereunder, Ixion agrees to
pay to UFRF a royalty calculated as a percentage of the Net Sales in accordance
with the terms and conditions of this Agreement. The royalty is deemed earned as
of the earlier of the date the Licensed Product and/or Licensed Process is
actually sold and paid for, the date an invoice is sent by Ixion, or the date a
Licensed Product and/or Licensed Process is transferred by Ixion to a third
party for any promotional reasons. The royalty shall remain fixed while this
Agreement is in effect at a rate of four percent (4%) of the Net Sales.
3.4. Accounting; Payments.
3.4.1 Amounts owing to UFRF under this Agreement shall be
paid on a quarterly basis, with such amounts due and
received by UFRF on or before the thirtieth day
following the end of the calendar quarter ending on
March 31, June 30, September 30 or December 31 in which
such amounts were earned. The balance of any amounts
which remain unpaid more than thirty (30) days after
they are due to UFRF shall accrue interest until paid
at the rate of the lesser of one and one-half percent
(1.5%) per month or the maximum amount allowed under
applicable law. However, in no event shall this
interest provision be construed as a grant of
permission for any payment delays.
3.4.2 Except as otherwise directed, all amounts owing to
UFRF under this Agreement shall be paid in U.S.
dollars to UFRF at the address provided in Section
8.1. All royalties owing with respect to Net Sales
stated in currencies other than U.S. dollars shall be
converted at the rate shown in the Federal Reserve
Noon Valuation - Value of Foreign Currencies on the
day preceding the payment.
3.4.3 A full accounting showing how any amounts payable to
UFRF under this Agreement have been calculated shall be
submitted to UFRF on the date of each such payment.
With respect to payments under Section 3.3, such
accounting shall be on a per-country and product line,
model or trade name basis and shall be summarized on
the form shown in Appendix A of this Agreement. With
respect to payments made under Section 2.4, such
accounting shall be on a per Licensee, per-country
basis. In the event no payment is owed to UFRF for any
reason, an accounting demonstrating that fact shall be
supplied to UFRF.
3.4.4 UFRF is exempt from paying income taxes under U.S.
law. Therefore, all payments due under Section 3.3 of
this Agreement shall be made without deduction for
taxes, assessments, or other charges of any kind
which may be imposed on UFRF by any government
outside of the United States or any political
subdivision of such government with respect to any
amounts payable to UFRF pursuant to this Agreement.
All such taxes, assessments, or other charges shall
be assumed by Ixion.
3.4.5 Ixion will keep accurate accounts of all Royalty
Income received by it from each Licensee(s) and all
Permitted Royalties deducted to derive the Net Royalty
Income. Ixion shall also keep books and records
sufficient to verify the accuracy and completeness of
Ixion's accounting with respect to Net Sales, including
without limitation inventory, purchase and invoice
records, manufacturing records, sales analysis, general
ledgers, financial statements, and tax returns relating
to the Licensed Products and/or Licensed Processes. All
such books and records shall be preserved for a period
not less than six years after they are created, both
during and after the term of this Agreement. Ixion will
permit UFRF to employ a certified public accounting
firm, reasonably acceptable to Ixion, to examine its
books and records at reasonable time, but not more than
once a year, in order to verify the payments due or
owing under this Agreement. Said books and records of a
given fiscal year may be examined only once. The fees
and expenses of the certified public accounting firm
will be borne by UFRF. If a payment deficiency under
this Agreement for a calendar year exceeds five percent
(5%) of the amounts paid for that year, then Ixion
shall be responsible for paying UFRF's out-of-pocket
expenses incurred with respect to such review.
4. Patent Prosecution and Protection
4.1 Ixion shall have the exclusive right to maintain Patent Rights,
subject to UFRF's rights in Section 4.4. Ixion shall be responsible for all
costs and expenses with respect to prosecuting and maintaining Patent Rights and
with respect to any re-examinations, interferences, oppositions or invalidity
litigation.
4.2 Ixion and UFRF will use all reasonable efforts to cooperate with
each other with respect to patent maintenance, licensing, and execution of
assignments of Patent Rights contemplated under this Agreement.
4.3 Ixion will reimburse UFRF for any past and future costs and charges
it may have incurred or may in the future incur with respect to any filing,
prosecuting and maintaining Patent Rights or the pursuit of any reexamination,
interference, opposition or invalidity litigation proceedings related to Patent
Rights, provided that for future costs Ixion shall have approved the incurrence
of such cost in advance. Ixion will reimburse UFRF for all of these costs and
charges within 30 days following receipt of an itemized invoice from UFRF.
4.4 Ixion agrees that UFRF shall have the right to contact Ixion's
patent counsel with respect to any matters relating to the Patent Rights and
Ixion shall direct such counsel to provide any information concerning the
filing, prosecution or maintenance of any Patent Rights at the same time such
information is provided to Ixion. At least 30 days before Ixion abandons any
Patent Right (including any application), Ixion will first notify UFRF of such
intention. UFRF shall have the right to assume the prosecution or maintenance of
such Patent right at its own expense. In such event, with regard to any Patent
Rights issuing out of such application, the rights and obligations of the
parties under this Agreement with respect to the use and licensing of such
rights shall be reversed unless the parties agree in writing otherwise. By way
of example but not limitation, UFRF shall then have the right to license such
rights to others and Ixion shall have agreed not to license such rights to
others in the Diagnostic Field and UFRF will pay Ixion 25% of the Net Royalty
Income received by UFRF.
5. Legal Actions.
5.1. Ixion shall have the sole and exclusive right to determine whether
or not the parties hereto shall engage in and prosecute any legal actions
involving Patent Rights, including without limitation interferences,
oppositions, reissues, reexaminations, or infringement or validity actions
including appeal proceedings in any of them. Such actions shall be at Ixion's
cost and shall be under the exclusive control of Ixion. Upon request by Ixion,
UFRF shall join in an action and otherwise provide Ixion with such assistance
and information as may be useful to Ixion in connection with Ixion's taking such
action. Ixion shall reimburse UFRF for UFRF's reasonable out-of-pocket expenses
incurred in providing such assistance. Ixion shall have the right to assign its
rights under this Section 5 to any of Ixion's licensees under Patent Rights.
5.2. Any monetary recoveries actually received and retained by Ixion
from actions referred to in Section 5.1 shall be treated as Royalty Income.
6. Termination
6.1. The term of this Agreement shall begin on the Effective Date of
this Agreement and continue until such time as no patent comprising the Patent
Rights remains an enforceable patent.
6.2 If Ixion at any time defaults in the timely payment of any monies
due to UFRF or commits any breach of any other covenant herein contained, and
Ixion fails to remedy any such breach or default within ninety (90) days after
written notice thereof by UFRF, UFRF may, at its option, terminate this
Agreement by giving thirty (30) days notice of termination to Ixion.
6.4 UFRF may terminate this Agreement upon the occurrence of the third
separate default by Ixion within any consecutive three-year period for failure
to pay any amounts under this Agreement when due.
6.5 UFRF may terminate this Agreement by giving Ixion at least ninety
(90) days written notice if the date of first commercial sale does not occur on
or before the date specified in Section 3.2.
6.6 If this Agreement has been in effect for at least five (5) years
and if a License Agreement(s) is not in effect or in negotiation, then either
party may terminate this Agreement for any reason upon at least 60 day=s written
notice (ANotice of Termination@) to the remaining party, but in any event not
less than 60 days before the date that responses to any pending Patent Office
actions need to be taken to preserve Patent Rights.
6.7 If UFRF terminates this Agreement, then Ixion's obligation to pay
all costs related to Patent Rights and incurred in accordance with Article 4
(Patent Prosecution and Protection) will terminate, but shall not relieve Ixion
of any obligation to pay expenses which accrued prior to the date of
termination.
6.8 Termination of this Agreement will not relieve either party of any
obligation or liability accrued under this Agreement before termination or
rescind any payments made or due before termination. In addition, termination
will not relieve Ixion of paying royalties to UFRF for Net Royalty Income
received by Ixion under License Agreements entered into prior to the date of the
termination.
6.9 Any termination of this Agreement will not affect the rights and
obligations set further in the following Articles:
Article 6 Termination
Article 7 Confidentiality
7. Confidentiality
7.1 Ixion and UFRF respectively will treat and maintain the proprietary
business, patent prosecution, software, engineering drawings, process and
technical information, and other proprietary information (AProprietary
Information@) of the other party in confidence using at least the same degree of
care as that party uses to protect its own Proprietary Information of a like
nature for a period from the date of disclosure until three (3) years after the
date of termination of this Agreement.
7.2 Proprietary Information will be labeled or marked confidential or
as otherwise similarly appropriate by the disclosing party, or if the
Proprietary Information is orally disclosed, it will be reduced to writing or
some other physically tangible form, marked and labeled as specified above by
the disclosing party, and delivered to the receiving party within 30 days after
the oral disclosure as a record of the confidential nature.
7.3 Nothing contained herein will in any way restrict or impair the
right of Ixion or UFRF to use, disclose, or otherwise deal with any Proprietary
Information:
7.3.1 that recipient can prove by written records was
previously known to it;
7.3.2 that is now, or becomes in the future, public knowledge
other than through acts or omissions of recipient;
7.3.3 that is lawfully obtained without restrictions by
recipient from sources independent of the disclosing faculty;
7.3.4 that is required to be disclosed to a governmental entity or agency in
connection with seeking any governmental or regulatory approval, or in
accordance with the lawful requirement or request of a governmental entity or
agency;
7.3.5 that Ixion or UFRF is required to disclose in accordance
with applicable laws of their respective states.
7.4 Nothing under this Agreement or any other agreement between Ixion
and UFRF shall be construed to restrict the rights of the Inventors to publish
in scientific journals, make presentations at public meetings, symposia, or at
regional or national meetings documents that may contain Proprietary
Information.
7.5 Upon termination of this Agreement by either party, Ixion and UFRF
will destroy or return to the disclosing party Proprietary Information received
from the other in its possession within 15 days following the effective date of
termination. If the Proprietary Information is destroyed, then the parties will
provide to the disclosing party, within 30 days following termination, a written
notice that the Proprietary Information has been destroyed. Ixion and UFRF may,
however, retain one copy of the Proprietary Information of the other party
(solely for archival purposes in non-working confidential files for the sole
purpose of verifying the ownership of the Proprietary Information), except that
this Proprietary Information will be subject to the confidentiality provisions
in Section 7.1 above.
8. Notices
8.1 Any notice or payment required to be given to either party will be
deemed to have been properly given and to be effective (a) on the date of
delivery if delivered in person or (b) five days after mailing if mailed by
first-class certified mail, postage paid, to the respective addresses given
below, or to another address as may be designated by written notice given to the
other party.
To Ixion: Ixion Biotechnology, Inc.
Attn.: General Counsel
00000 Xxxxxxxx Xxxx., Xxx 00
Xxxxxxx, Xxxxxxx 00000
Tel.: 000-000-0000
Fax.: 000-000-0000
To UFRF: University of Florida Research Foundation, Inc.
Attn: Managing Director
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, XX 00000
With a copy to:
Xx. Xxx Xxxxx
Director, Office of Technology Licensing
University of Florida Research Foundation, Inc.
0000 Xxxx Xxxxxxxxxx Xxx.
Xxxxxxxxxxx, Xxxxxxx 00000
Tel: (000) 000-0000
Fax: (000) 000-0000
9. Warranties and Representations.
9.1 UFRF and Ixion each warrant and represent that the policy of their
respective institutions requires the inventor of the Patent Rights to assign to
that institution all of his right, title and interest in and to any and all
Patent Rights. UFRF and Ixion further warrants that it has not granted any
licenses or other rights to any other party under any of Patent Rights.
9.2 In the event either party now or in the future holds or acquires an
interest in technology that can compete in the marketplace or otherwise with all
or any part of any inventions or patents held by either of the parties, whether
as a consequence of this Agreement or otherwise, the parties hereto agree that
each of them may so proceed in its efforts to commercialize its technology
(other than the Patent Rights) as, in its sole and best judgment, each deems
appropriate. Furthermore, this Agreement in no way restricts either party from
cooperating with or receiving cooperation from other public and private
agencies, organizations, and individuals with respect to any of the normal
activities of either of the parties.
9.3 Neither party to this Agreement makes any other warranties or
representation of any kind unless expressly stated in writing in this agreement
or in an amendment thereto signed by both parties.
10. Use of Names.
Neither party may use the name of the other party in any way for
advertising or publicity without the express written consent of the other party,
provided, however, that Ixion has the right to use the name of UFRF within the
context of a License Agreement and in filings and other disclosures required to
be made under the law.
11. Miscellaneous.
Waiver by either party of any breach or default of any of the covenants
or provisions of this Agreement will not be deemed a waiver of any other or
similar breach or default. Nothing in this Agreement confers by implication,
estoppel, or otherwise any license or rights under any patents of either party
other than Patent Rights, regardless of whether such patents are dominant or
subordinate to Patent Rights. This Agreement shall be governed by and
interpreted--and its performance enforced--in accordance with Florida law,
except that the scope and validity of any patent application or patent will be
governed and enforced by the laws of the applicable country of the patent
application or patent. If any part of this Agreement is for any reason found to
be unenforceable, all other parts nevertheless remain enforceable. The parties
hereto are independent contractors and not joint venturers or partners.
12. Contract Formation and Authority.
A. No agreement between the parties shall exist unless the duly
authorized representative of Ixion and the Director of the Office of Technology
Licensing of UFRF have signed this document within thirty (30) days of the
effective date written on the first page of this Agreement.
B. The persons signing on behalf of UFRF and Ixion hereby warrant and
represent that they have authority to execute this Agreement on behalf of the
party for whom they have signed.
13. Assignability
This Agreement binds and inures to the benefit of the parties, their
successors or assigns, but may not be assigned by either party without the prior
written consent of the other party, which consent will not be unreasonably
withheld.
14. Implied License
NOTHING IN THIS AGREEMENT CONFERS BY IMPLICATION, ESTOPPEL, OR
OTHERWISE ANY LICENSE OR RIGHTS UNDER ANY PATENTS OF EITHER PARTY OTHER THAN
PATENT RIGHTS, REGARDLESS OF WHETHER THESE PATENTS ARE DOMINANT OR SUBORDINATE
TO PATENT RIGHTS.
15. Complete Agreement
15.1 It is understood between Ixion and UFRF that this Agreement
constitutes their entire agreement, both written and oral, and that all prior
agreements respecting the subject matter of this Agreement, either written or
oral, expressed or implied, are canceled.
15.2 No amendment or modification of this Agreement will be binding
upon the parties unless made in writing and signed on behalf of each party.
15.3 If any part of this Agreement is for any reason found to be
unenforceable, all other parts nevertheless remain enforceable.
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement on the dates indicated below.
UNIVERSITY OF FLORIDA IXION BIOTECHNOLOGY, INC.
RESEARCH FOUNDATION, INC.
/s/ Xxxxxx X. Xxxxx /s/ Xxxxxx X. Xxxxxx
Xxxxxx X. Xxxxx, Ph.D., MBA Xxxxxx X. Xxxxxx
Director Chairman and Chief Executive Officer
Office of Technology Licensing
Date: 3/2/99 Date: 3/4/99
APPENDIX A
UFRF ROYALTY REPORT
Licensee: Agreement No.:
Inventor: P# : P
---------------------------------------- ---
Period Covered: From: / / 199 Through: / / 199
----------------------------- -----
Prepared By: Date:
Approved By: Date:
If license covers several major product lines, please
prepare a separate report for each line. Then combine
all product lines into a summary report.
Report Type: |_| Single Product Line Report:
|_| Multiproduct Summary Report. Page 1 of ______ Pages
|_| Product Line Detail. Line: Tradename:
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Page:
Report Currency:|_| U. S. Dollars |_| Other
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Gross * Less: Net Royalty Period Royalty Amount
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Country Sales Allowances Sales Rate This Year Last Year
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U.S.A.
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Canada
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Europe:
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Japan
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Other:
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TOTAL:
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Total Royalty: _____ Conversion Rate: ______ Royalty in U.S. Dollars: $
The following royalty forecast is non-binding and for UFRF's internal
planning purposes only:
Royalty Forecast Under This Agreement: Next Quarter:__________ Q2:__________
Q3:__________ Q4:__________
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* On a separate page, please indicate the reasons for returns or other
adjustments if significant.
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Also note any unusual occurrences that affected royalty amounts
during this period. To assist UFRF's forecasting, please comment on any
significant expected trends in sales volume.
--------------------------------------------------------------------------------
* On a separate page, please indicate the reasons for returns or other
adjustments if significant.
--------------------------------------------------------------------------------
Also note any unusual occurrences that affected royalty amounts
during this period. To assist UFRF's forecasting, please comment on any
significant expected trends in sales volume.
