LICENSE AND RESEARCH FUNDING AGREEMENT
This License Agreement is entered into as of this 14th day of December, 2016, by and between BioLabMart Inc., a company formed under the laws of the State of Wyoming, USA, having a place of business at 0000 Xxxxx Xxxxxx, #0000, Xxxxx Xxxxx, Xxxxxxx, 00000, (the “Company”) and Ariel University R&D Co., Ltd., a wholly owned subsidiary of Ariel University of Samaria (”AU”) having a place of business at Ariel University, Xxxxx, Xxxxxx 00000, (“Ariel”). Ariel and the Company shall each be referred to in this Agreement as a "Party" and together as the "Parties".
NOW, THEREFORE, the parties hereto, intending to be legally bound, hereby agree as follows:
Whenever used in this Agreement with an initial capital letter, the terms defined in this Section 1, whether used in the singular or the plural, shall have the meanings specified below.
“Affiliate” shall mean, with respect to either party, any person, organization or entity controlling, controlled by or under common control with, such party. For purposes of this definition only, “control” of another person, organization or entity shall mean the possession, directly or indirectly, of the power to direct or cause the direction of the activities, management or policies of such person, organization or entity, whether through the ownership of voting securities, by contract or otherwise. Without limiting the foregoing, control shall be deemed to exist when a person, organization or entity (i) owns or directly controls more than fifty percent (more than 50%) of the outstanding voting stock or other ownership interest of the other organization or entity, or (ii) possesses, directly or indirectly the power to elect or appoint the majority of the members of the governing body of the other organization or entity.
"Ariel Know-how" shall mean (i) certain Know-how relating to coral based and non-coral based conditioned medium for tissue regeneration and repair, including but not limited to the described know-how in the Ariel Patents, that existed prior to the Effective Date, as identified in Exhibit B, (ii) the Research and Research Results, and (iii) the Consultation Services and Consultation Results.
Exhibit B may be updated from time to time to reflect additional Ariel Know-how transferred to the Company during the term of this Agreement.
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"Ariel Patents" shall mean: (i) the patent applications described in Exhibit A which will be attached within 3 months of the Effective Date, (ii) all current and future patent applications based on the Ariel Know How, (iii) all divisional, continuation and continuation-in-part applications of the foregoing applications, (iv) all patents issuing from any of the foregoing applications, and (v) all reissues, reexaminations, extensions and restorations of any of the foregoing patents. (vi) all patent applications that claim, and only to the extent that they so claim, the Research Results that are filed as a result of the performance of the Research (vii) all patent applications that claim, and only to the extent that they so claim the Consultation Results that are filed as a result of the performance of the Consultation Services
"Ariel Technology" shall mean the Ariel Patents and the Ariel Know-how.
“AU Team” shall mean the Principal Investigator and R&D Manager and those AU researchers, other faculty member, students or employees of AU, performing the Research at AU under the Principal Investigator’s supervision.
“Calendar Quarter” shall mean the respective periods of three (3) consecutive calendar months ending on March 31, June 30, September 30 or December 31, for so long as this Agreement is in effect.
"Calendar Year" shall mean successive one year periods beginning on January 1 and ending on December 31. for so long as this Agreement is in effect.
"Capital Equipment" shall mean any non-disposable equipment.
"Consultation Results" shall mean any and all Know-how relating to the Ariel Technology that is developed or made by the AU Team.
"Consultation Services" shall mean any research activities or services (including consulting services) relating to the Ariel Technology, other than the Research, that are undertaken for the Company, its Affiliates or its Sublicensees by the AU Team during any period that all AU Team members are employed by AU and/or Ariel (including without limitation, part-time employment, Sabbaticals and leave of absence, and Professor Emeritus status) and during a period of one year thereafter, whether such activities or services are undertaken as an independent contractor or as an employee of the Company.
“Development and Commercialization Plan” shall mean the plan for the development and commercialization of the Products for use attached hereto as Exhibit C, as such plan may be amended from time to time pursuant to Section 6.2.
"Development Milestones" shall mean the development milestones specified in the Development and Commercialization Plan attached hereto as Exhibit C.
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"Effective Date” shall mean the date of signing by signees of this Agreement, provided the payment to Ariel of the Research Funds (as defined in section 2.2) is made in full per the terms of section 2.2 below.
“Exit Event” shall mean any of the following (of the Company or of any Affiliate ): (i) a firmly underwritten public offering of the Company’s shares pursuant to a registration statement under the U.S. Securities Act of 1933, as amended, or pursuant to a prospectus under the Israel Securities Law 1968, or equivalent laws of another jurisdiction, including any sale of affiliate shareholders of the Company through such registration or registration of shares that may be tradable in the future, resulting in the receipt of proceeds by the Company or Affiliate or any of their shareholders at a valuation of at least $25 million ; (ii) a consolidation, merger or reorganization of the Company with or into, any other entity or person, other than a merger in which shareholders of the Company immediately prior to the transaction, hold in the aggregate, more than 50% of the securities or assets of the surviving company on a fully diluted basis; (iii) a sale of all or substantially all of the shares of the Company and/or the assets of the Company, to persons who were not shareholders of the Company; (iv) any transaction in which shareholders of the Company entered into a transaction, immediate or future, for the sale of more than 50 % of the outstanding share capital of the Company or (v) any transaction where the Parties shall mutually agree that such transaction shall be declared an Exit Event.
“First Commercial Sale” shall mean the first commercial sale of a Product by the Company, an Affiliate of the Company, or a Sublicensee to an unaffiliated third party. Sales for purposes of testing the Product and samples purposes shall not be deemed First Commercial Sale.
"Know-how" will mean any discoveries, inventions (whether patentable or not), materials, information, data, designs, formulae, ideas, methods, models, assays, research plans, procedures, designs for experiments and tests and results of experimentation and testing (including results of research or development) processes (including manufacturing processes, specifications and techniques), laboratory records, chemical, clinical, analytical and quality control data, trial data, case report forms, data analyses, reports or summaries and information contained in submissions to, and information from, ethical committees and regulatory authorities.
"License" shall mean the license defined in section 5.1 below.
"Major Markets" shall mean the United States.
“Net Sales” shall mean the gross amount invoiced and collected by or on behalf of the Company, its Affiliates and Sublicensees (in each case, the “Invoicing Entity”) on sales of Products (whether made before or after the First Commercial Sale of the Product), less the following: (a) customary trade, quantity, or cash discounts to the extent actually allowed and taken; (b) amounts repaid or credited by reason of rejection or return; (c) to the extent separately stated in the invoices, all taxes or other governmental charges levied on the production, sale, transportation, delivery, or use of a Product which is paid by the Invoicing Entity; (d) 50% of any commissions paid to third parties for generation of sales, provided that the royalty payable to Ariel shall not, in any event, be reduced to less than 50% of the royalty rates specified in Section 7.1 (all agreements and documents relating thereto shall be provided to Ariel); (e) to the extent separately stated in the invoices, reasonable freight, insurance and handling charges, and (f) any government mandated rebates, if any, provided that:
(i) In any transfers of Products between an Invoicing Entity and an Affiliate of such Invoicing Entity not for the purpose of resale by such Affiliate, Net Sales shall be equal to the higher of (i) the fair market value of the Products so transferred, assuming an arm’s length transaction made in the ordinary course of business; and (ii) the actual transfer price; and
(ii) In the event that an Invoicing Entity receives non-monetary consideration for any Products or in the case of transactions not at arm’s length between an Invoicing Entity and a non-Affiliate of the Invoicing Entity, Net Sales shall be calculated based on the fair market value of such consideration or transaction, assuming an arm’s length transaction made in the ordinary course of business as reasonably determined by the Company ; and
(iii) Sales of Products by an Invoicing Entity to an Affiliate of such Invoicing Entity for resale by such Affiliate shall not be deemed Net Sales and Net Sales shall be determined based on Net Sales invoiced by such Affiliate on resale.
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“Patent Challenge” shall mean any action before any patent office, court or other tribunal or agency, challenging the validity, patentability, enforceability and/or scope of any of the Ariel Patents (including without limitation through an interference or reexamination procedures).
“Principal Investigator” shall mean Xxxx. Xxxxx Xxxxxxx or a mutually agreed replacement.
“Product(s)” will mean any products based on and/or incorporating coral based conditioned medium for tissue regeneration and/or repair, resulting directly or indirectly from the Research, the Research Financing or the Ariel Technology
“R&D Manager” shall mean Xx. Xxxx Xxxxxx or a mutually agreed replacement.
“Research” shall mean the research actually conducted during the Research Period by the AU Team under the terms of this Agreement in accordance with the Research Plan.
"Research Financing" shall have the meaning ascribed to it in section 2.2.
“Research Funds” shall have the meaning ascribed to it in section 2.2.
“Research Milestone” shall mean certain milestones agreed upon by the parties as specified in the Research Plan.
“Research Plan” shall mean the research plan which will be attached within 14 days of the Effective Date as Exhibit D as may be amended from time to time by the mutual written agreement of the parties, which sets forth the research to be undertaken by the AU Team under the direction of the Principal Investigator and R&D Manager during the Research Period.
“Research Results” shall mean any and all Know-how discovered, generated, or obtained by, or on behalf of, members of the AU Team alone or together with one or more employees or consultants of the Company, in the course of the performance of the Research.
“Research Period” shall mean a period of 12 months commencing upon the Effective Date, provided the payment of the Research Funds to Ariel was effected and such additional periods for which the Company has provided payments of additional funding
"Sublicense” shall mean any right granted, license given, or agreement entered into, by the Company to or with any other person or entity, including an Affiliate of the Company, under or with respect to or permitting any use of the Ariel Technology or any part thereof or otherwise permitting the development, manufacture, marketing, distribution and/or sale of the Products, and any option to obtain or enter into such right, license, agreement or permission (regardless of the title given to such grant of rights), per the terms of this Agreement. For purposes of clarity, an agent or distributor who will be entitled to market, distribute and sell Products without the right of development and/or manufacture will not be considered a Sublicensee.
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"Sublicensee” shall mean any person or entity granted a Sublicense.
"Sublicense Agreement" shall have the meaning set forth in Section 5.2.2.
“Sublicense Receipts” shall mean any payments or other consideration that the Company and its Affiliates receive, with the exception of royalties based on Net Sales, in connection with a Sublicense, including without limitation license fees, license option fees, milestone payments, license maintenance fees, and equity, provided that in the event that the Company receives non-monetary consideration in connection with a Sublicense, or in the case of transactions not at arm’s length, Sublicense Receipts shall be calculated based on the fair market value of such consideration or transaction, assuming an arm’s length transaction made in the ordinary course of business. Notwithstanding the foregoing, "Sublicense Receipts" shall not include equity investments in the Company or its Affiliates to the extent made at fair market value (if the investment exceeds the fair market value, only the excess amount will be treated as “Sublicense Receipts”). For the purpose of the foregoing, the "fair market value" of an entity's equity securities shall be determined as follows: (i) if the shares of the relevant entity are not traded on a stock exchange or over the counter market, the value of such equity securities as determined in good faith by the Company's Board of Directors, having regard to the value most recently paid by a third party for shares of such entity, and (ii) if the shares of the relevant entity are traded on a stock exchange or over the counter, the average closing price of such shares on the fifteen (15) trading days prior to the closing of the equity transaction. The term "Sublicense Receipts" shall not include funds that are designated for research and development of Products in accordance with the Sublicense agreement and that are actually expended on research and development of Products in accordance with a written development plan and budget as evidences in the Company's written records.
"Valid Claim" shall mean a claim of a patent application or unexpired issued patent included in the Ariel Patents so long as such claim shall not have been held permanently revoked, unenforceable or invalid in a final court judgment or patent office decision that has not been appealed within the time allowed by law for an appeal, or from which there is no further appeal.
2.1.1.Ariel shall cause AU, under the direction of the Principal Investigator and R&D Manager, to use reasonable efforts to perform the Research in accordance with the Research Plan; however, Ariel and AU make no warranties regarding the achievement of any particular results including the Research Milestones. Ariel shall cause AU to provide the Principal Investigator adequate resources to conduct the research activity such as lab space, usage in the existing department resources including research equipment, microscopes, software licenses.
2.1.2. The Research will be directed and supervised by the Principal Investigator and R&D Manager, who shall have primary responsibility for the performance of the Research. If the Principal Investigator ceases to supervise the Research for any reason, and the R&D Manager cannot fulfill the Principal Investigator's responsibilities, Ariel will so notify the Company, and Ariel shall endeavor to find among the scientists at AU, a scientist or scientists acceptable to the Company to continue the supervision of the Research in place of the Principal Investigator. If Ariel is unable to find such a scientist or scientists acceptable to the Company, within sixty (60) business days after such notice to the Company, the Company shall have the option to terminate the funding of the Research. The Company shall promptly advise Ariel in writing if the Company so elects. Such termination of funding shall terminate Ariel’s and AU’s obligations pursuant to Section 2.1.1 above with respect to the Research, but shall not terminate this Agreement or any of the other rights or obligations of the parties under this Agreement. Nothing contained in this Section 2.1.2, shall be deemed to impose an obligation on Ariel or AU to successfully find a replacement for the Principal Investigator, as opposed to the obligation to endeavor to do so. In such termination of funding Ariel will return to the Company the remaining unused and unobligated Research Funds.
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2.7 Ariel will provide car access permit for one Company employee.
Said triggering events shall mean the earliest to occur of any of the following ( a (‘Title transfer”) :
(i)
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an accumulative equity investment of at least US $40M in the Company, as of the Effective date;
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(ii)
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a successful Phase II FDAtrial of a Product;
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(iii)
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an acquisition of the Company by a third party (more than 45% of the outstanding share capital of the Company), in a bona fide transaction and at a valuation that is not less than US$ 100 million and the assumption of this Agreement by the purchasing entity.
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(iv)
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The written consent of Ariel.
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4.3.1 Subject to the provisions of this Section 4.3.1, the Company may elect not to pay for, or to cease paying for the filing, prosecution or maintenance of any of the Ariel Patents (an “Abandoned Patent Right”) in any country other than a Major Market (an “Abandoned Country”). The Company shall provide Ariel with a 60 day prior written notice of such election, specifying the relevant Abandoned Patent Right and Abandoned Country (an "Abandonment Notice"). Upon receipt of such Abandonment Notice by Ariel, and only upon receipt thereof, the Company shall be released from its obligations to reimburse Ariel for the expenses incurred thereafter in such Abandoned Country with respect to such Abandoned Patent Right. In such event Ariel shall be entitled, but not obliged, to continue the preparation, filing, protection, prosecution, and maintenance of any Abandoned Patent Right in the Abandoned Country at its own expense,
4.3.2 The Company may not elect not to pay for, or to cease paying for, the Ariel Patents in a Major Market. In the event that the Company fails to meet its obligations pursuant to Section 4.2 with respect to a Major Market, such failure shall constitute a material breach of the Company's obligations pursuant to this Agreement, and Ariel shall be entitled to terminate this Agreement inaccordance with the provisions of Section 13.3.2.
4.4 No Warranty. Nothing contained herein shall be deemed to be a warranty by Ariel that any patent application included in the Ariel Patent will result in an issued patent, or that any patent application or issued patent that is or may be included in the Ariel Patents will be valid or of any value or will afford adequate or commercially worthwhile protection.
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5.1.
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Subject to the terms and conditions set forth in this Agreement, Ariel hereby grants to the Company and/or its Affiliates an exclusive, worldwide, royalty-bearing license, under Ariel's rights in the Ariel Technology for the sole purpose of developing, manufacturing, using, offering for sale and selling the Products ("the License"). For purposes of this Section 5.1, the term “exclusive” means that Ariel shall not grant any licenses or rights to any third party or to exercise any such rights itself, subject, however, to the right of Ariel, AU, their employees, students and other researchers at AU and at collaborating research institutions to practice the Ariel Technology (i) for purposes of academic research and instruction, and (ii) for the purpose of conducting the Research, and (iii) the terms agreed herein, including section 4.3 above.
5.2.2.1. All provisions necessary to ensure the Company’s ability to perform its obligations under this Agreement, including without limitation its obligations under Sections 4.3, 6.1, 8.4, 8.5, 12 and 13.;
5.2.2.2. In the event of termination of the License when a Title Transfer according to Section 3.2 was not executed, any existing Sublicense shall terminate; provided, however, that, Ariel shall be entitled, but not obliged, at the request of the Sublicensee, to enter into a new license agreement with such Sublicensee on substantially the same terms as those contained in a Sublicense Agreement, provided that such terms shall be amended, if necessary, to the extent required to ensure that such Sublicense Agreement does not impose any obligations or liabilities on Ariel which are not included in this Agreement;
5.2.2.3. The Sublicensee shall not be entitled to sublicense its rights under such Sublicense Agreement , provided that a Sublicensee that is an Affiliate of the Company may grant one further Sublicense of its rights; and
5.2.2.4. The Sublicense Agreement may not be assigned by Sublicensee to any party other than an Affiliate of the Sublicensee or the Company without the prior written consent of Ariel; and
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5.2.2.5 Ariel shall have the right to receive all documents and information required by it to assure the Sublicense Agreement is in compliance to the terms of this Agreement, including any relevant correspondence between sublicensor and Company.
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In consideration for the rights and licenses granted to the Company pursuant to this Agreement, the Company shall pay to Ariel the following consideration:
7.1.1. The Company will pay Ariel a royalty of 4% on worldwide Net Sales of Products by the Company, its Affiliates and Sublicensees.
7.1.2.Royalty Reduction. In the event that a Product is not covered by at least one Valid Claim in a country in which such Product is sold by the Company and/or its Affiliate and Sublicensees during the Royalty Period (as defined in Section 7.1.6 below), then the royalty payable to Ariel for sales of such Product in such country shall be reduced to 75% of the royalty set forth in Section 7.1.1, provided however, that (a) in the event that a particular Product is or was covered by a Valid Claim in the country in which such Product was manufactured at the time of such manufacture, the full royalty rate set forth in Section 7.1.1 shall be payable for Net Sales of such Product wherever it is subsequently sold by the Company or its Affiliates and Sublicensees; and (b) for so long as such Product is covered by a Valid Claim in the United States, the full royalty rate set forth in Section 7.1.1, shall be payable for Net Sales of such Product by the Company and/or its Affiliates and/or Sublicensees throughout the world, without any reduction.
7.1.5.1. In the event that the Company, and/or any Affiliate brings a Patent Challenge or assists a third party in any Patent Challenge, the Royalty Rates payable to Ariel under Section 7.1.1 shall be doubled during the pendency period of the Patent Challenge. Moreover, should such Patent Challenge be rejected or dismissed, the Royalty Rates payable to Ariel by the Company and/or its Affiliates and/or its Sublicenses shall be tripled.
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7.1.5.2. In the event that the Company, and/or an Affiliate brings a Patent Challenge or assists a third party in bringing a Patent Challenge, the Company agrees to pay directly to Ariel all royalties due under this Agreement during the pendency period of the Patent Challenge. For the sake of clarity, the Company shall not pay such amounts into any escrow or other account.
7.2.1 Sublicense Receipts. The Company shall pay Ariel 15% of all Sublicense Receipts
Upon the first Exit Event (of the Company or of any Affiliate commercializing the Products) the Company will issue a warrant which may be immediately exercisable. The number of shares that the warrant is exercisable into would be 4% of (a) the issued and outstanding shares of the Company when the warrant is issued or (b) in the event the warrant may not be exercised immediately, when the warrant becomes exercisable (and then based on the issued and outstanding shares at such time as the warrant may be exercised).
The warrant or the shares exercised pursuant to it, shall be dilutable after the occurrence of an Exit Event or the issuance of the warrants, the later of the two. The warrant shall not be limited in time. In the event the Company shall register its shares in any recognized stock exchange, it shall be replaced with a warrant that is compatible to the requirements of such stock exchange. The Company undertakes to register all shares received by Ariel per the exercise of the warrant, upon request of Ariel and at no cost to Ariel, as part of any company registration statement or as a demand registration of Ariel. Ariel shall only be entitled to one (1) demand registration. The Company shall have up to six (6) months to comply with the demand registration so as to allow it to include other selling shareholders or to deal with market conditions prevailing. The warrant and the rights therein may be freely transferable and/or assigned by Ariel.
In addition to the other payments, the Company will pay Ariel upon the occurrence of the following milestone events, additional payments:
(i) Upon successful clinical FDA Phase II completion - $130,000, and
(ii) Upon successful clinical FDA Phase III completion $390,000
The milestone payments will be due within 6 months of completion of the milestone.
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Ariel will be entitled to appoint one non-voting observer to all board meetings of the Company, to observe matters that relate to this Agreement, during the term of this Agreement or until a Title Transfer occurs, whichever occurs earliest.
7.5.2 Ariel Employees Ariel represents that it has no objection to allowing the Principal Investigator and R&D Manager to hold formal positions in the Company and receive financial and/or equity options compensation.
8.1 Regulatory Approval and First Commercial Sale.
8.1.1 Regulatory Approval. The Company shall notify Ariel in writing immediately upon the receipt of Regulatory Approval for a Product, specifying its date, the country in which such Regulatory Approval was obtained and the type of Product in respect of which such Regulatory Approval was obtained.
8.1.2 First Commercial Sale. The Company shall inform Ariel in writing of the date of First Commercial Sale with respect to each Product in each country, as soon as practicable after the making of each such First Commercial Sale and shall describe such Product.
8.2.1 Reports on Net Sales. Within thirty (30) business days after the conclusion of each Calendar Quarter commencing with the first Calendar Quarter in which Net Sales are generated, the Company shall deliver to Ariel separate reports on Net Sales by the Company and its Affiliates on the one hand, and Sublicensees other than Affiliates, on the other hand, containing the following information:
8.2.1.1. For Net Sales by the Company, its Affiliates and Sublicensees, the Company shall provide the following information for each Invoicing Entity:
(a) the number of units of Products sold by the Company and each of its Affiliates and Sublicensees for the applicable Calendar Quarter, separately itemized according to the Product, the Invoicing Entity and country of sale;
(b) the gross amount invoiced for Products sold by the Company, its Affiliates and Sublicensees during the applicable Calendar Quarter, separately itemized according to the Product, the Invoicing Entity and indicating the currency of payment;
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(c) a calculation of Net Sales of the Company, its Affiliates and Sublicensees for the applicable Calendar Quarter, separately itemized according to the Product, the Invoicing Entity, and including an itemized listing of applicable deductions;
(d) the total royalty payable to Ariel in accordance with Section 7.1 on Net Sales of the Company, its Affiliates and Sublicensees for the applicable Calendar Quarter, together with the exchange rates used for conversion. If no amounts are due to Ariel for Net Sales by the Company, its Affiliates and Sublicensees in any Calendar Quarter, the report shall so state.
8.2.2 Other Reports. In addition to the reports delivered pursuant to Section 8.2.1, the Company shall notify Ariel in writing within seven (7) days of the occurrence of any of the following events:
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(i)
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Receipt of any Sublicense Receipts; such notice shall include an explanation for the basis of such Sublicense Receipts;
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8.2.3.Payment of Royalty for Net Sales by the Company, its Affiliates and Sublicensees. Within thirty (30) business days of the end of each Calendar Quarter, the Company shall remit to Ariel all royalties due pursuant to Section 7.1 for the applicable Calendar Quarter.
8.2.4. Payment for Sublicense Receipts. The Company shall remit to Ariel all amounts due with respect to Sublicense Receipts within thirty (30) of the receipt of such Sublicense Receipts by the Company or its Affiliates.
8.3.1 Currency Transfer Restrictions. If in any country the payment of transfer of Royalties on Net Sales is prohibited by law or regulation, the Company shall pay such payment and Ariel shall assign the Company the rights to receive the payment so blocked, if lawfully allowed
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9.1.1. Ariel Confidential Information. The Company agrees that, unless a Title Transfer under Section 3.2 was executed, without the prior written consent of Ariel for the longer of: (a) the term of this Agreement; and (b) a period of seven (7) years from date of disclosure, it will keep confidential, and not disclose or use Ariel Confidential Information (as defined below) other than for the purposes of this Agreement. The Company shall treat such Ariel Confidential Information with the same degree of confidentiality as it keeps its own confidential information, but in all events no less than a reasonable degree of confidentiality. The Company may disclose Ariel Confidential Information only to employees and consultants of the Company, Affiliates and/or of its Sublicensees who have a “need to know” such information in order to enable the Company to exercise its rights or fulfill its obligations under this Agreement and are legally bound by agreements which impose confidentiality and non-use obligations comparable to those set forth in this Agreement. For purposes of this Agreement, “Ariel Confidential Information” means any scientific, technical, trade or business information relating to the subject matter of this Agreement designated as confidential or which otherwise should reasonably be construed under the circumstances as being confidential disclosed by or on behalf of Ariel, AU or any of their employees, researchers or students to the Company, whether in oral, written, graphic or machine-readable form, except to the extent such information: (i) was known to the Company at the time it was disclosed, other than by previous disclosure by or on behalf of Ariel, AU or any of their employees, researchers or students, as evidenced by the Company’s written records at the time of disclosure; (ii) is at the time of disclosure or later becomes publicly known under circumstances involving no breach of this Agreement; (iii) is lawfully and in good faith made available to the Company by a third party who is not subject to obligations of confidentiality to Ariel, or AU with respect to such information; (iv) is independently developed by the Company without the use of or reference to Ariel Confidential Information, as demonstrated by documentary evidence; or (v) is required to be disclosed pursuant to applicable securities laws and regulations . For the avoidance of doubt Ariel Confidential Information shall also include the Ariel Technology.
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Ariel agrees that, without the prior written consent of the Company for the longer of: (a) the term of this Agreement; and (b) a period of seven (7) years from date of disclosure, it will keep confidential, and not disclose or use the Company Confidential Information (as defined below) other than for the purposes of this Agreement. Ariel shall treat the Company Confidential Information with the same degree of confidentiality as it keeps its own confidential information, but in all events no less than a reasonable degree of confidentiality. Ariel may disclose the Company Confidential Information only to employees and consultants of Ariel or of its Affiliates who have a “need to know” such information in order to enable Ariel to exercise its rights or fulfill its obligations under this Agreement and are legally bound by agreements which impose confidentiality and non-use obligations comparable to those set forth in this Agreement. For purposes of this Agreement, “Company Confidential Information” means any scientific, technical, trade or business information relating to the subject matter of this Agreement designated as confidential or which otherwise should reasonably be construed under the circumstances as being confidential that is disclosed to Ariel by or on behalf of Licensee in writing , or in the case of a Title Transfer pursuant to Section 3.2 any scientific, technical, trade or business information relating the Ariel technology that was transferred, except to the extent such information: (i) was known to Ariel or AU at the time it was disclosed, other than by previous disclosure by or on behalf of the Company as evidenced by Ariel or AU written records at the time of disclosure; (ii) is at the time of disclosure or later becomes publicly known under circumstances involving no breach of this Agreement; (iii) is lawfully and in good faith made available to Ariel or AU by a third party who is not subject to obligations of confidentiality to the Company with respect to such information; or (iv) is independently developed by Ariel or AU without the use of or reference to the Company Confidential Information, as demonstrated by documentary evidence. In order to avoid doubt, Ariel shall have the right to disclose Company Confidential Information to the extent required to enforce its rights herein.
The Company may disclose the terms of this Agreement to its advisors and/or potential and/or current investors, under terms of a written confidentiality agreement substantially similar to the terms of Section 9.1.2 above.
9.2. Academic Publications. The Principal Investigator and R&D Manager and other members of the AU Team shall have the right to publish the Ariel Technology in scientific publications or to present such results at scientific symposia, provided that the following procedure is followed:
9.2.1. No later than thirty (30) business days prior to submission for publication of any scientific articles, abstracts or papers concerning the Ariel Technology and prior to the presentation of the same at any scientific symposia, the Principal Investigator shall send the Company a written copy of the material to be so submitted or presented, and shall allow the Company to review such submission to determine whether the publication or presentation contains subject matter for which patent protection should be sought and whether such publication includes Company Confidential Information. ]
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9.2.2. The Company shall provide its written comments with respect to such publication or presentation within thirty (30) business days following its receipt of such written material. If the Company does not provide written comments within the thirty (30) days set forth above, it shall be deemed to have approved such proposed publication or presentation.
9.2.3. If the Company, in its written comments, identifies material for which patent protection should be sought or wishes to delay the publication for specific business reasons , then the Principal Investigator shall delay the submission of such publication or presentation for a further period of up to ninety (90) business days from the receipt of such written comments to enable Ariel to make the necessary patent filings in accordance with Section 4.
9.2.4 If the Company, in its written comments, identifies Company Confidential Information in the material to be published, such Company Confidential Information shall be removed by the Principal Investigator or such other member of the AU Team prior to publication.
9.2.5 After compliance with the foregoing procedures with respect to an academic, scientific or medical publication and/or public presentation, the Principal Investigator shall not have to resubmit any such information for re-approval- of the publication in accordance to 9.2.1, should it be republished or publicly disclosed in another form.
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11.3 Ariel warrants that it has full and unrestricted right to enter into the Agreement and grant the Licenses granted hereunder.
11.4 Disclaimer. ARIEL MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE ARIEL TECHNOLOGY. AMONG OTHER THINGS, ARIEL DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTY:
(A) AS TO THE NOVELTY OR THE COMMERCIAL VALUE OF THE ARIEL TECHNOLOGY (OR ANY PART THEREOF);
(B) AS TO THE VALIDITY OR SCOPE OF THE ARIEL PATENTS;
(C) OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
(D) THAT THE ARIEL TECHNOLOGY MAY BE EXPLOITED OR USED WITHOUT INFRINGING OTHER PATENTS OR INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES.
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12.3. The Company shall maintain or cause to be maintained insurance that is reasonably adequate to fulfill any potential obligation to the Ariel Indemnitees under this Section 12, taking into consideration, among other things, the nature of the products or services commercialized. Such insurance shall be obtained from a reputable insurance company. Ariel and AU shall be added as co-insured parties under such insurance policy. The Company hereby undertakes to comply punctually with all obligations imposed upon it under such policy(ies), including without limitation the obligation to pay in full and punctually all premiums and other payments due under such policy(ies). The Company shall provide Ariel, upon request, with written evidence of such insurance. The Company shall continue to maintain such insurance after the expiration or termination of this Agreement during any period in which the Company or any Sublicensee continues to make, use, or sell Products, and thereafter for a period of seven (7) years or a later period if the statute of limitations in any country Company operated in, is longer.
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(i) By the Company or its Affiliates. In addition to the above, Ariel shall be entitled to terminate this Agreement immediately by providing written notice to the Company upon a claim by the Company or its Affiliate, made in any forum, claiming that one or more of the Ariel Patents are invalid or unenforceable
(ii) By Sublicensees. A claim by a Sublicensee, made in any forum, claiming that one or more of the Ariel Patents are invalid or unenforceable shall constitute a breach of this Agreement and the Company shall be obligated to take all action available to it to cause such Sublicensee to withdraw its challenge, or else terminate the Sublicense with such Sublicensee. In the event that the Sublicensee does not withdraw its challenge within thirty (30) business days of the date the Company first received notice of such claim, the Company shall be obligated to terminate the Sublicense agreement with such Sublicensee immediately. In addition the Company shall bear all costs incurred by the Company or by Ariel in defending the Ariel Patents against such claims.
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If to the Company:
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C/O Xxxxx Xxxx
00 Xxxxxxx Xx, #0X
Xxx Xxxx, XX 00000
With copy to:
Xxx Xxxxxxx
Gilboa 153, Nirit
Israel
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If to Ariel:
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Ariel University R&D Co. Ltd..
Ariel University
Ariel 00000
Xxxxxx
Attn: CEO
|
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Any notice shall be deemed to have been received as follows: (i) by personal delivery, upon receipt; (ii) by facsimile, one business day after transmission or dispatch; (iii) on the business day after delivery, if sent by overnight recognized courier providing proof of delivery. If notice is sent by facsimile, a confirming copy of the same shall be sent by mail to the same address.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by their duly authorized representatives as of the date first written above.
Ariel University R&D Co., Ltd.
By: /s/Xxxxx Xxxx
Name:Xxxxx Xxxx
Title: CEO
By:/s/Xxxxxxx Xxxxxxx
Name: Xxxxxxx Xxxxxxx
Title: Director Business Development
|
By:/s/ Xxxxx Xxxx
Name: Xxxxx Xxxx
Title: CEO
|
I have read this agreement and agree to its contents | |
/s/Xxxxx Xxxxxxx
|
/s/Xxxx Xxxxxx
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Xxxx. Xxxxx Xxxxxxx | Xx. Xxxx Xxxxxx |
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