Portions of this Exhibit have been omitted pursuant to a request for
confidential treatment. The omitted portions, marked by an * and [ ], have been
separately filed with the Commission.
LICENSE AGREEMENT BETWEEN THE UNIVERSITY OF
KENTUCKY RESEARCH FOUNDATION & ASCALON INC.
THIS AGREEMENT, entered into and made effective May 30, 1996 (the "Effective
Date") by and between the University of Kentucky Research Foundation, a
corporation duly organized and existing under the laws of the Commonwealth of
Kentucky and having its principal office at Lexington, Kentucky, U.S.A.
(hereinafter referred to as "UKRF"), and Ascalon Inc., a corporation duly
organized under the laws of Delaware, and having its principal office in
Scottsdale, Arizona U.S.A. (hereinafter referred to as "Licensee").
W I T N E S S E T H
WHEREAS, UKRF is the owner of certain "Patent Rights" and "Technical Data and
Materials" (as later defined herein) relating to certain inventions involving
the treatment of diseases and conditions, and has the right to grant exclusive
licenses under said Patent Rights and Technical Data and Materials as described
herein.
WHEREAS, UKRF desires to have the Patent Rights and Technical Data and Materials
utilized in the public interest and is willing to grant an exclusive license
thereunder; and
WHEREAS, Licensee has represented to UKRF, to induce UKRF to enter into this
Agreement, that the Licensee will, as needed, retain employees, officers or
consultants who are experienced in the development, production, manufacture,
marketing and sale of products similar to the "Licensed Product(s)" (as later
defined herein) and that it shall commit itself to a thorough, vigorous and
diligent program of exploiting the Patent Rights and Technical Data and
Materials so that public utilization shall result therefrom; and
WHEREAS, Licensee desires to obtain an exclusive license under the Patent Rights
and Technical Data and Materials upon the terms and conditions hereinafter set
forth.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
Article 1 - Definitions
For the purposes of this Agreement, the following words and phrases shall have
the following meanings:
1.1 "Licensee" shall mean Ascalon Inc. and any subsidiary or successor entities
or any permitted assignees under Article 9 hereof. Ascalon Inc. is not
affiliated with or a predecessor or successor in interest to Ascalon
Pharmaceuticals, Inc., an Arizona Corporation.
1.2 "Subsidiary" shall mean any corporation, company or other entity more than
fifty percent (50%) of whose voting stock is owned or controlled directly or
indirectly by Licensee.
1.3 "Patent Rights" shall mean the United States and Foreign pending patent
applications set forth in Appendix A attached hereto and made a part hereof
(hereinafter referred to as the "Patent Rights Patent Application(s)"), and
theUnited States patents and Foreign patents issuing from said pending United
States and Foreign patent applications or later-filed foreign applications based
upon any of said United States patents and applications and any continuations,
continuations-in-part, divisions, reissues, additions, amendments or extensions
or any of the foregoing (hereinafter referred to as the "Patent Rights
Patent(s)").
1.4 "Licensed Product(s)" shall mean any product which:
(a) is covered in whole or in part by (i) a pending claim contained in a
Patent Rights Patent Application in the country in which the Licensed
Product(s) is made, used or sold or (ii) a valid and unexpired claim
contained in a Patent Rights Patent in the country in which the
Licensed Product(s) is made, used or sold.
(b) is manufactured by using a process which is covered in whole or in
part by (i) a pending claim contained in a Patent Rights Patent
Application in the country in which the Licensed Process(es) is used
or (ii) a valid and unexpired claim contained in a Patent Rights
Patent in the country in which the Licensed Process(es) is used.
1.5 "Licensed Process(s)" shall mean a process for making or using
anti-idiotypic antibodies or other compositions of matter and which is covered
in whole or in part by (i) a pending claim contained in a Patent Rights Patent
Application or (ii) a valid and unexpired claim contained in a Patent Rights
Patent.
1.6 "Technical Data and Materials" shall mean any information or materials in
the possession of UKRF, the University of Kentucky, or their employees and
scientists, relating to the manufacture, testing, development or use of the
Licensed Products or Licensed Processes, including, but not limited any and all
of the following: data, know-how, testing or manufacture methods, uses, assays,
immunogens, cell lines and characteristics of anti-idiotypic antibodies, and the
hybridomas, cell lines, phages, plants, animals, polynucleotide, polypeptide or
other polymer sequences or other biological or chemical source materials, used
in the production of such anti-idiotypic antibodies or any fragments,
derivatives or analogs thereof (limited to, the cell lines used for the creation
and production of the antibodies known as 3H1, 1A7, and 11D10).
2
1.7. "Anti-idiotypic antibody" shall mean the anti-idiotypic antibodies known by
the parties as 3H1, 1A7 or 11D10, or their fragments, derivatives or analogs.
Article 2 - Grant
2.1 UKRF hereby grants to Licensee an exclusive, sublicenseable, complete and
worldwide license to all rights UKRF has or may have in such Patent Rights and
Technical Data & Materials for all fields of use, including but not limited to
any and all rights to make, have made, use, import, export, lease, sell and
offer to sell the Licensed Product(s) and to utilize the Licensed Process under
the Patent Rights to the full end of the term of the last expiring Patent Rights
Patent for which the Patent Rights are granted unless sooner terminated as
hereinafter provided.
2.2 In order to establish a period of exclusivity for Licensee, UKRF hereby
agrees that it shall not permit, grant, or offer to grant any license or rights
to any other persons, to practice or use the Patent Rights or Technical Data &
Materials during the period of time commencing with the Effective Date of this
Agreement and terminating with the full end of the term of this Agreement,
unless sooner terminated as hereinafter provided. Any such grant or offer to
grant any such third party Licensee shall be void ab initio. University of
Kentucky, UKRF and their employees, may, however, practice the Patent Rights and
use the technical data related thereto, for its own non-commercial research;
provided that the University of Kentucky and its employees take reasonable
measures to prevent the dissemination of the Anti-idiotypic antibodies to any
third person and that the obligations under Article 7 of this Agreement shall
not apply to any such research conducted by the University of Kentucky or its
employees.
2.3 Licensee shall have the exclusive and worldwide right to sublicense,
transfer, or assign any or all of the rights, privileges and license granted
hereunder.
2.4 Licensee agrees it shall incorporate Articles 5, 10, and 12 of this
Agreement into all sublicensing agreements granted by it, and shall expressly
provide for UKRF's right to enforce such Articles.
2.5 Licensee agrees to forward to UKRF a copy of any and all fully executed
sublicense agreements, and further agrees to forward to UKRF annually a copy of
such reports received by Licensee from its Sublicensees during the preceding
twelve (12) month period under the sublicenses as shall be pertinent to a
royalty accounting under said sublicense agreements.
Article 3 - Due Diligence
3.1. Licensee shall use its best efforts to bring the Licensed Product(s) and/or
Licensed Process(es) to market through a thorough, vigorous and diligent program
for exploitation of the Patent Rights. UKRF and Licensee acknowledge and agree
that substantial research, development, clinical and non-clinical testing of the
Licensed Products (collectively
3
The information below marked by * and [ ] has been omitted pursuant to a request
for confidential treatment. The omitted portion has been separately filed with
the Commission.
"Licensed Products Research") are necessary to enable commercial
exploitation of the Patent Rights. Such Licensed Products Research shall include
work conducted at the University of Kentucky, or its affiliates, with funding
obtained from or with the assistance of the Licensee, or its Sublicensees, of at
least $ 350,000 per year for each of the five years following the Effective Date
(measured from the Effective Date), exclusive of Federal grants paid directly to
the University of Kentucky or UKRF; up to an aggregate maximum of $ 1,750,000.
Such funds shall be used exclusively and directly for such Licensed Products
Research which is of good scientific and commercial purpose and design and which
the University of Kentucky, or its affiliates, is able to competently and
diligently perform, and shall be contingent upon execution by the parties of a
commercially reasonable research and option agreement for such Licensed Products
Research negotiated by the parties in good faith.
3.2 Licensee shall be responsible, at its sole expense through patent counsel of
its choice reasonably acceptable to UKRF, to conduct all further prosecution and
maintenance of the Patent Rights Patent Applications and Patent Rights Patents.
Licensee shall however, provide UKRF with a copy of any filing, for its review
and approval, prior to its submission to the designated patent office.
Article 4 - Royalties
4.1. For the rights, privileges and license granted hereunder, Licensee shall
pay to UKRF in the manner hereinafter provided to the end of the term of the
Patent Rights or until this Agreement shall be terminated as hereinafter
provided:
(a) License fees in the following amounts:
(i) [*] Dollars, which shall be due upon the Effective Date.
(ii) [*] Dollars, which shall be due twelve (12) months from the
Effective Date.
(iii) [*] Dollars, which shall be due upon Licensee obtaining clear
title to all rights under the Patents Rights Patents, including
resolution of any claims that are or may be asserted by the
Scripps Institute or Roswell Park Institute.
(iv) The following amount, upon Licensee completing an Initial Public
Offering
o [*] Dollars if the IPO raises no more than $5,000,000;
o [*] Dollars if the IPO raises $5,000,001 to $10,000,000;
o [*] Dollars if the IPO raises $10,000,001 to 15,000,000;
o [*] Dollars if the IPO raises over $15,000,000.
4
The information below marked by * and [ ] has been omitted pursuant to a request
for confidential treatment. The omitted portion has been separately filed with
the Commission.
(v) [*] Dollars, which shall be due upon each FDA approval of an
initial Product Marketing Application for a Licensed Product,
which is not designated as an Orphan Drug or Orphan Biologic
Product under 21 U.S.C. 360bb, for which a full and
non-refundable "Human Drug Application Fee" is paid under the
Prescription Drug User Fee Act of 1992.
(b) A royalty in the amount of [*] of the Net Sales Price of the Licensed
Product(s) used, leased or sold by or for Licensee or its
Sublicensees.
(i) Beginning with the calendar year starting the January 1 following
two (2) years after the first FDA approval of a Licensed Product
which obligates Licensee to Pay UKRF the fee due under Article
4.1(a)(v) of this Agreement, Licensee and its Sublicensees shall
together pay UKRF an aggregate annual minimum royalty on the
sales of all Licensed Products sold or leased by them of no less
than [*] per year.
(ii) No royalty shall be due for the use, lease or sale of any
Licensed Products manufactured, used or sold for conducting
studies related to obtaining marketing approvals from U.S. or
foreign regulatory agencies, nor for payments to any party
contracted by Licensee or another Sublicensee to manufacture
Licensed Products.
4.2. As used herein, the phrase "Net Sales Price" shall mean Licensee's xxxxxxxx
for the Licensed Product(s) produced hereunder less the sum of the following:
(a) Discounts, and commissions incurred in connection with non-U.S.
sales, allowed or paid in amounts customary in the trade;
(b) Sales, tariff duties and/or use taxes directly imposed and with
reference to particular sales;
(c) Transportation costs or expenses, incurred, paid or allowed; and
(d) Amounts allowed or credited on returns or rejects.
Licensed Product(s) shall be considered "sold" when billed out or invoiced, in
accordance with generally accepted accounting practices.
4.3. No multiple royalties or fees shall be payable because the Licensed
Product(s), its manufacture, lease or sale are or shall be covered by more than
one patent application or patent licensed under this Agreement.
5
The information below marked by * and [ ] has been omitted pursuant to a request
for confidential treatment. The omitted portion has been separately filed with
the Commission.
(a) Only a single royalty shall be due on any specific lot(s) of
Licensed Products made, used or sold by Licensee and its
Sublicensees, and which shall not exceed the royalty that would
be due based on the highest Net Sales Price for which such lot(s)
of Licensed Products is(are) sold by Licensee or its
Sublicensees.
(b) The royalties and fees due UKRF under this Agreement shall be
reduced to the extent that Licensee, or its Sublicensees, are
required to pay any amounts of royalty, fees, or settlements, to
any third party in order to make, have made, use, sell, offer to
sell, import, Licensed Products or products made with Licensed
Processes, or otherwise practice the Patent Rights granted
herein, provided that the royalty rate due UKRF shall not be less
than [*].
4.4. Licensee shall have the right, but not the obligation, to defend and
enforce the Patent Rights, and Licensee's rights in said Patent Rights and in
the Technical Data and Materials. In the event that Licensee shall undertake, or
be financially responsible for the enforcement and/or defense of the Patent
Rights or Technical Data (including, but not limited to, resolving, settling or
litigating any claims or actions related to any third party opposition, patent
interferences, infringement, or patent validity), Licensee may withhold up to
fifty percent (50%) of the payments otherwise due UKRF under Article 4 hereunder
and apply the same toward reimbursement of Licensee's actual expenses, including
reasonable attorneys' fees and expert witnesses' fees, in connection with the
conduct, investigation, settlement or resolution of such enforcement or defense.
Any recovery of damages by Licensee for enforcement of Licensee's rights shall
be applied first in satisfaction of any unreimbursed expenses and legal fees of
Licensee relating its enforcement and defense of its rights, and next toward
reimbursement of UKRF for any payments under Article 4 past due or withheld and
applied pursuant to this Article 4.4. The balance remaining from any such
recovery shall be shared by UKRF and Licensee. No settlement, consent judgment
or other voluntary final disposition of the suit may be entered into without the
consent of UKRF, which shall not be unreasonably withheld. Licensor hereby
consents to entry or joinder by Licensee, as Licensee determines to be necessary
or desirable, as a named party in any action Licensee brings or defends with
respect to the Patent Rights Patents or any other rights or actions related to
this Agreement; provided, that such joinder shall not affect Licensee's right to
bring, defend and control such actions.
4.5. Royalty payments shall be paid in United States dollars in Lexington,
Kentucky, or at such other place as UKRF may reasonably designate consistent
with the laws and regulations controlling in any foreign country. Any
withholding taxes which Licensee or any Sublicensee shall be required by law to
withhold on remittance of the royalty payments shall be deducted from royalty
paid to UKRF. Licensee shall furnish UKRF the original copies of all official
receipts for such taxes. If any currency conversion shall be required in
connection with the payment of royalties hereunder, such conversion shall be
made by using the exchange rate
6
actually paid, or the rate stated in the Wall Street Journal, plus customary
exchange fees or premiums, on the last business day of the calendar quarterly
reporting period to which such royalty payments relate.
Article 5 - Reports and Records
5.1. Licensee shall keep full, true and accurate books of account containing all
particulars that may be necessary for the purpose of showing the amount payable
to UKRF by way of royalty as aforesaid. Said books of account shall be kept at
Licensee's principal place of business or the principal place of business of the
appropriate Division of Licensee to which this Agreement relates. Said books and
the supporting data shall be open at all reasonable times, for five (5) years
following the end of the calendar year to which they pertain, to the reasonable
inspection of the UKRF Internal Audit Division and/or an independent certified
public accountant retained by UKRF and/or a certified public accountant employed
by UKRF, for the purpose of verifying Licensee's royalty statement or compliance
in other respects with this Agreement. Provided, however, that any such persons
conducting the audit or inspection shall have executed confidentiality
agreements reasonably acceptable to Licensee or Sublicensee, respectively, and
that the purpose for and the information or evaluation obtained from such
inspection or audit is strictly limited to use by UKRF for verifying Licensee's
compliance with the terms of this Agreement.
5.2. Licensee, within thirty (30) days after June 30 and December 31, of each
year, shall deliver to UKRF true and accurate reports, giving such particulars
of the business conducted by Licensee during the preceding six-month period
under this Agreement as shall be pertinent to a royalty accounting hereunder.
These shall include at least the following:
(a) All Licensed Products manufactured and sold;
(b) Total xxxxxxxx for Licensed Product sold;
(c) Deductions applicable as provided in Article 4;
(d) Total royalties due;
(e) Names and addresses of all Sublicensees of Licensee; and
(f) Annually, the Licensee's certified financial statements for the
preceding twelve (12) months including, at a minimum, a Balance Sheet
and an Operating Statement.
5.3. With each such report submitted, Licensee shall pay to UKRF the royalties
due and payable under this Agreement. If no royalties shall be due, Licensee
shall so report.
7
Article 6 - Termination
6.1. If Licensee shall become bankrupt, or shall file a petition in bankruptcy,
or if the business of Licensee shall be placed in the hands of a receiver,
assignee or trustee for the benefit of creditors, whether by the voluntary act
of Licensee or otherwise, this Agreement shall automatically terminate.
6.2. Should Licensee fail in its payment to UKRF of royalties or license fees
due under Article 4 of this Agreement, UKRF shall have the right to serve notice
upon Licensee by certified mail at the address designated in Article 12, hereof,
of its intention to terminate this Agreement within thirty (30) days after
receipt of said notice of termination unless Licensee shall pay to UKRF, within
the thirty (30) day period, all such royalties and license fees due and payable.
Upon the expiration of the thirty (30) day period, if Licensee shall not have
made a payment of such royalties and license fees due and payable, the rights,
privileges and license granted hereunder shall thereupon immediately terminate.
6.3. Upon any material breach or default of this Agreement by Licensee, other
than those occurrences set out in Articles 6.1, 6.2 and 6.4 herein, which shall
always take precedence in that order over any other material breach or default
of this Agreement, UKRF shall have the right to terminate this Agreement and the
rights, privileges and license granted hereunder by ninety (90) days' notice by
certified mail to Licensee. Such termination shall become effective unless
Licensee shall have made a good faith effort to cure any such breach or default
prior to the expiration of the ninety (90) day period from receipt of UKRF's
notice of termination.
6.4. In the event that Licensee fails, for a continuous period of at least six
months, to cause payment for Licensed Products Research required under Article 3
and is not using due diligence to pursue a vigorous program to develop a
Licensed Product based on a use of 3H1, 1A7 and 11D10, then UKRF shall have the
right to request reasonable assurances from Licensee that it, or its
Sublicensees will provide such funding and use due diligence to pursue such
program.
(a) If Licensee, or its Sublicensees, do not provide such assurances
within 90 days of receiving such request from UKRF ("Licensee's Cure
Period"), then the rights granted by Article 2.1 to the Patent Rights
solely and specifically with respect to the antibody that is not
subject to a vigorous program to develop a Licensed Product may be
forfeited upon seasonable notice by UKRF. Provided, however, that UKRF
shall provide Licensee and all Sublicensees of record, of its intent
to exercise such partial license forfeit, under this Article 6.4, of
the licensed Patent Rights within 90 days after the expiration of the
Licensee's Cure Period, and allow such Sublicensees, or other
reasonably acceptable party, 45 days after receipt of such notice of
forfeiture to provide the such requested assurances.
(b) Upon forfeiture, if any, Licensee shall have no obligation to
prosecute, maintain, enforce or defend any Patent Rights Patent
Application or Patent Rights Patent, or any claim therein, with may
pertain to such forfeited rights.
8
6.5. Licensee shall have the right to terminate this Agreement at any time on
six (6) months' notice by certified mail to UKRF.
6.6. Upon termination of this Agreement for any reason, nothing herein shall be
construed to release either party from any obligation that matured prior to the
effective date of such termination. Licensee and/or any Sublicensee thereof may,
however, after the effective date of such termination, sell all Licensed
Products, and complete Licensed Products ordered or in the process of
manufacture at the time of such termination and sell the same, provided that
Licensee shall pay to UKRF the royalties thereon as required by Article 4 of
this Agreement and shall submit the reports required by Article V hereof on the
sales of Licensed Products.
Article 7 - Product Liability
7.1. Licensee shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold UKRF, its trustees, officers, and
employees (collectively "Indemnified Parties") harmless against all claims and
expenses, including legal expenses and reasonable attorneys' fees, arising out
of the death of or injury to any person or persons or out of any damage to
property and against any other claim, proceeding, demand, expense and liability
of any kind whatsoever resulting from Licensee's production, manufacture, sales,
use, consumption or advertisement of the Licensed Product(s), and/or Licensed
Process(es), manufactured by Licensee after the Effective Date, or arising from
any obligation of Licensee hereunder, and that would otherwise be imposed on
such indemnified parties solely because of the UKRF status as a licensor of the
rights granted under this Agreement. All such obligations to defend, indemnify,
and hold harmless shall fully exclude any claim, proceeding, demand, expense and
liability of any kind whatsoever resulting from or arising out of any fraud or
criminal act by any Indemnified Party.
7.2. If Licensee produces, manufactures or sells any Licensed Product(s) and/or
licensed process(es), Licensee will maintain product liability insurance, with
an endorsement naming this Agreement the University of Kentucky Research
Foundation, officers and employees as additional insureds covering liabilities
for the production, manufacture and/or sale of the Licensed Product(s) and
Licensed Process(es), which are imposed on the such parties solely because of
this Agreement. The policy of insurance shall contain a provision of
non-cancellation except upon the provision of sixty (60) days notice to the
University. Policy limits shall be not less than $ 1,000,000 per person per
occurrence until an approval for commercial distribution of therapeutic products
in the U.S. has been obtained from the United States Food & Drug Administration,
and $ 5,000,000 per person per occurrence thereafter.
7.3. If Licensee, sublicenses any of the rights, privileges and licenses granted
hereunder, Licensee shall ensure that the aggregate amount of product liability
insurance coverage held by Licensee and Sublicensee together are at least equal
to amounts required under Article 7.2.
9
7.4. UKRF shall use its best efforts to obtain the full cooperation of all
Indemnified Parties or other persons under its control with the Licensee's
investigation, defense and settlement of such claim, proceeding, or demand for
which indemnification or defense is sought.
7.5 In addition, Licensee shall hold Health Research Inc., Roswell Park
Division, ("Roswell") harmless from any claims resulting from an "Additional
Interest" in the "Inventions" (as those terms are defined in the agreement
between UKRF and Roswell signed by those entities May 10 and 15, respectively),
and from any damages directly resulting from the use of any "Invention" or
"Patent," (as that term is defined in said agreement) by Licensee.
Article 8 - Warranties
8.1. Licensee AGREES THAT EXCEPT AS STATED IN article 8.3 THE RIGHTS GRANTED ARE
MADE AVAILABLE WITHOUT WARRANTY OF ANY KIND EXPRESSED OR IMPLIED INCLUDING, BUT
NOT LIMITED TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE.
8.2. Licensee further agrees that UKRF has not conducted nor had conducted a
patentability or infringement study and thus except as stated in Article 8.3 it
makes no claims that the licensed rights will not infringe any third parties
valid patent rights.
8.3. Notwithstanding anything to the contrary herein UKRF warrants that it has
lawfully and validly secured and conveys as described herein all rights which
are or may be asserted or claimed by UKRF, University of Kentucky, or any of
their respective trustees, officers, employees, affiliates, including, but not
limited to Xxxxxxx X. Xxxx, Malaya Chatterjee, Xxxxx Xxxxxxxxxx and Xxxxx Xxxxxx
Article 9 - Assignment
Licensee may assign or otherwise transfer this Agreement and the license granted
hereby and any or all of the rights acquired by it hereunder so long as such
assignment or transfer shall be accompanied by a sale or other transfer of
Licensee's entire business or of that part of Licensee's business to which the
license granted hereby relates, or such assignment or transfer is made to an
entity controlling Licensee. Licensee shall give UKRF thirty (30) days prior
notice of such assignment and transfer and if UKRF raises no substantial and
reasonable objection to such assignment or transfer, in writing within thirty
(30) days after the giving of such notice and stating the reasons for such
objection, then UKRF shall be deemed to have approved such assignment or
transfer; provided, however, UKRF shall not be deemed to have approved such
assignment and transfer unless such assignee or transferee shall have agreed in
writing to be bound by the terms and conditions of this Agreement. Upon such
assignment or transfer and agreement by such assignee or transferee, the term
Licensee as used herein shall include such
10
assignee or transferee. If Licensee shall sell or otherwise transfer its entire
business or that part of its business to which the license granted hereby
relates and the transferee shall not have agreed in writing to be bound by the
terms and conditions of this Agreement, or new terms and conditions shall not
have been agreed upon within sixty (60) days of such sale or transfer, UKRF
shall have the right to terminate this Agreement.
Article 10 - Non-Use of Names
Licensee shall not use the names of the University of Kentucky, UKRF, their
employees, Xxxxxxx X. Xxxx or Malaya Chatterjee, or any adaptation thereof in
any advertising, promotional or sales literature for Licensed Products without
prior written consent obtained from UKRF, in each case, except that Licensee may
state that it is licensed by UKRF under one or more of the patents and/or
applications comprising the Patent Rights, or other statements reasonably made
in connection with disclosures required under applicable laws and regulations,
including those laws and regulations pertaining to Securities and the
development, manufacture and sale of biological pharmaceuticals.
Article 11 - Export Controls
It is understood that UKRF is subject to United States laws and regulations
controlling the export of technical data, computer software, laboratory
prototypes and other commodities (including the Arms Export Control Act, as
amended, and the Export Administration Act of 1979), and that its obligations
hereunder are contingent on compliance with applicable United States export laws
and regulations. The transfer of certain technical data and commodities may
require a license from the cognizant agency of the United States Government
and/or written assurances by Licensee that Licensee shall not export data or
commodities to certain foreign countries without prior approval of such agency.
UKRF neither represents that a license shall not be required nor that, if
required, it shall be issued.
Article 12 - Payments, Notices and Other Communications
Any payment, notice or other communication pursuant to this Agreement shall be
sufficiently made or given on the date of mailing if sent to such party by
certified first class mail, postage prepaid, addressed to it at its address
below or as it shall designate by written notice given to the other party:
11
In the case of UKRF:
University of Kentucky, Research Foundation
000 Xxxxxxxxxxxxxx Xxxxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
With a copy to:
University Legal Counsel
0 Xxxxxxxxxxxxxx Xxxxxxxx
Xxxxxxxxx, Xxxxxxxx 00000
In the case of Licensee:
Ascalon Inc.
0000 Xxxx Xxxxxxxxx Xxxxx
Xxxxxxxxxx, XX 00000
Acct: President
Article 13 - Miscellaneous Provisions
13.1. This Agreement shall be construed, governed, interpreted and applied in
accordance with the laws of the Commonwealth of Kentucky, U.S.A., except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
13.2. The parties hereto acknowledge that this Agreement sets forth the entire
Agreement and understanding of the parties hereto as to the subject matter
hereof, and shall not be subject to any change or modification except by the
execution of a written instrument subscribed to by the parties hereto.
13.3. UKRF shall take all actions necessary to implement this Agreement,
including but not limited to, obtaining or executing any affidavits or
approvals, and transfer of the Technical Data and Materials to Licensee.
13.4. The provisions of this Agreement are severable, and in the event that any
provision of this Agreement shall be determined to be invalid or unenforceable
under any controlling body of law, such invalidity or unenforceability shall not
in any way affect the validity or enforceability of the remaining provisions
hereof, which shall be interpreted and enforced consistently with the intent of
the parties at the Effective Date. To the extent that any provision is deemed
invalid or unenforceable such that economic value of this Agreement is
materially altered, the parties shall negotiate in good faith a valid
replacement provision that best implements the parties' intent at Effective
Date.
12
13.5. The failure of either party to assert a right hereunder or to insist upon
compliance with any term or condition of this Agreement shall not constitute a
waiver of that right or excuse a similar subsequent failure to perform any such
term or condition by the other party.
IN WITNESS WHEREOF, the parties hereto have hereunto set their hands and
seals and duly executed this License Agreement the day and year first set forth
below.
For University of Kentucky Research Foundation Ascalon, Inc.
By: _________________________________ By: ________________________
Xx. Xxxxxxxxxx X. Xxxxxxxx, Xxxxx X. Xxxxxx
Executive Director Chairman
Date: Date:
By execution of this Agreement, the undersigned acknowledge receiving a
copy of this Agreement prior to its execution, having read and reviewed same,
and having agreed to the terms and conditions, specifically including but not
limited to Article 8.3.
_____________________________ Date:
Xxx Xxxx
_____________________________ Date:
Malaya Chatterjee
_____________________________ Date:
Xxxxx Xxxxxxxxxx
_____________________________ Date:
Xxxxx Xxxxxx
13
