EXHIBIT 10.17
LICENSE AGREEMENT
This Agreement is made effective this first day of September, 2001 by
and between Temple University - Of The Commonwealth System of Higher Education,
a corporation organized and existing under the laws of the Commonwealth of
Pennsylvania, having a principal place of business at Xxxxx Xxxxxx xxx
Xxxxxxxxxx Xxxxxx, Xxxxxxxxxxxx, Xxxxxxxxxxxx and Nutraceutix, Inc., a
corporation organized and existing under the laws of the State of Delaware,
having a principal place of business at 0000 000xx Xxx. X.X., Xxxxxxx,
Xxxxxxxxxx 00000.
WHEREAS, Temple University - Of The Commonwealth System of Higher
Education is the owner of the entire interest in United States Patent
Application 08/958,470; and
WHEREAS, the parties have entered into a License Agreement (the
"Original License") effective December 22, 1998, amended as of June 1, 1999,
pertaining to the aforementioned patent applications, patents and technical
information related thereto, for application thereof to dietary supplements and
pharmaceutical products, including over-the-counter products, prescription
drugs, OTC drugs and generic drugs; and
WHEREAS, the parties agree that the Original License should be further
amended and restated in its entirety;
NOW, THEREFORE, in consideration of the premises and of the covenants
and obligations hereinafter set forth, and intending to be legally bound, the
parties hereby amend and restate the Original License in its entirety to read as
follows:
1. DEFINITIONS
The following definitions shall apply throughout this Agreement:
1.1 "AFFILIATE" shall mean each and every business entity controlling,
controlled by or under common control with COMPANY for the purposes of
manufacture, use or sale of LICENSED PRODUCT. For purposes of this definition
"control" shall mean ownership, directly or indirectly, of at least fifty
percent (50%) of the voting stock.
1.2 "ANNIVERSARY" shall mean an anniversary of the EFFECTIVE DATE.
1.3 "COMPANY" shall mean Nutraceutix, Inc. and its AFFILIATES.
1.4 "CONFIDENTIAL INFORMATION" shall mean all information disclosed or
samples supplied by one party to the other pursuant to this Agreement. However,
CONFIDENTIAL INFORMATION shall not include information which: (i) was known to
the receiving party prior to the date of disclosure by the disclosing party or
is developed independently of information received from the disclosing party by
those who have not had access to this information; or (ii) is lawfully received
in good faith at any time by the receiving
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party from others lawfully in possession of the same and having the right to
disclose the same; or (iii) is, as of the date of receipt, in the public domain
or subsequently enters the public domain other than by reason of acts or
omissions of the receiving party; or (iv) is required to be disclosed by law,
rule of court or regulation.
1.5 "EFFECTIVE DATE" shall mean the date first above written as the
effective date of this Agreement.
1.6 "INVENTOR" shall mean Xxxx Xxxxxxx of the TEMPLE faculty.
1.7 "LICENSED PRODUCT" shall mean any PRODUCT the manufacture, use or
sale of which would infringe, induce infringement of, or contribute to the
infringement of at least one VALID CLAIM contained in a patent application
included in PATENT RIGHTS if that VALID CLAIM were contained, instead, in an
issued patent not included in PATENT RIGHTS.
1.8 "NET SALES" shall mean the gross receipts from the SALE of LICENSED
PRODUCT by COMPANY or by its sublicensees less deductions for: (i)
transportation charges, including insurance, sales and excise taxes and duties
paid; (ii) normal and customary trade, quantity and cash discounts allowed;
(iii) sales commissions; and (iv) allowances on account of rejection or return
by customers.
1.9 "PATENT RIGHTS" shall mean United States Patent Application
08/958,470, and any foreign counterparts thereof, or any continuations,
continuations-in-part, divisions, re-issues, additions, renewals or extensions
thereof, and any patents issuing therefrom.
1.10 "PRODUCT" shall mean: (i) any dietary supplement (as defined in
the 1994 Dietary Supplement and Health Education Act) (referred to herein as a
"SUPPLEMENT"); (ii) any drug which can be purchased by the general public
without a prescription (referred to herein as an "OTC DRUG"); and (iii) any
prescription drug (whether existing at the time of this Agreement or yet to be
discovered). If any item which is classified on the date of this Agreement as a
SUPPLEMENT, an OTC DRUG or a prescription drug, is subsequently reclassified
otherwise, such item shall nevertheless remain a SUPPLEMENT, an OTC DRUG or a
prescription drug (as the case may be) for all purposes under this Agreement.
1.10 "SALE" shall mean any transaction for which consideration is
received for the sale, lease, license, transfer or other disposition of LICENSED
PRODUCT by COMPANY or by its sublicensees.
1.11 "TECHNICAL INFORMATION" shall mean any CONFIDENTIAL INFORMATION of
a technical nature relating to LICENSED PRODUCT, which is in the possession of
TEMPLE as of the effective date of this Agreement, and which is necessary or
useful to COMPANY in furtherance of the development, manufacture or marketing of
LICENSED PRODUCT.
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1.12 "TEMPLE" shall mean Temple University - Of The Commonwealth System
of Higher Education.
1.13 "VALID CLAIM" shall mean a claim of a patent application or
patent, which claim has not expired and has not been held unenforceable,
unpatentable or invalid by unappealable decision of a court or other
governmental agency of competent jurisdiction.
2. CONFIDENTIALITY
2.1 CONFIDENTIAL INFORMATION disclosed in documentary form shall be
marked "Confidential." Oral discussions of CONFIDENTIAL INFORMATION shall be
reduced to writing by the disclosing party and a copy marked "Confidential"
provided to the receiving party within thirty (30) days of the disclosure date.
2.2 The receiving party shall hold all CONFIDENTIAL INFORMATION in
strict confidence for a period of five (5) years from the disclosure date; not
use said CONFIDENTIAL INFORMATION except as provided in this Agreement; and not
disclose, directly or indirectly, said CONFIDENTIAL INFORMATION to others except
with the prior written consent of the disclosing party.
2.3 The receiving party shall, upon request by the disclosing party,
promptly return all written materials or samples of tangible property received
hereunder, as well as all summaries thereof and notes pertaining thereto, with
the exception that one copy of said written materials may be retained by the
receiving party solely for archival purposes.
2.4 Notwithstanding any other provision of this Agreement, it is
recognized by COMPANY that TEMPLE, through the INVENTOR, shall have the right to
publish the results of research concerning LICENSED PRODUCT. However, TEMPLE and
the INVENTOR agree to notify COMPANY in writing of any such proposed publication
ninety (90) days before submission. COMPANY may request deletion of sensitive
information from the proposed publication, and TEMPLE agrees to give good faith
consideration to such a request.
2.5 The parties shall keep the financial terms of this Agreement set
forth in Section 4 confidential, except to the extent disclosure thereof may be
required by applicable securities laws or otherwise by law. The parties shall be
free to disclose to third parties the existence of this Agreement and the
nonfinancial terms of this Agreement.
2.6 Promptly after the execution of this Agreement TEMPLE shall deliver
all currently-existing TECHNICAL INFORMATION to COMPANY. Thereafter TEMPLE shall
deliver to COMPANY all additional TECHNICAL INFORMATION promptly after it is
developed or obtained by TEMPLE. In addition, TEMPLE shall deliver to COMPANY
from time to time other data, materials and information relating to the LICENSED
PATENT which it develops or obtains and which is necessary or useful to COMPANY
in furtherance of the development, manufacture or marketing of LICENSED PRODUCT.
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3. GRANT OF LICENSE
3.1 TEMPLE grants to COMPANY a world-wide exclusive license under
PATENT RIGHTS and TECHNICAL INFORMATION, with the right to grant sublicenses, to
make, have made, use, sell, offer for sale, export, import and otherwise deal
with LICENSED PRODUCT. This license shall be perpetual unless and until
terminated, in whole or in part, in accordance with the provisions of this
Agreement.
3.2 Notwithstanding the preceding license grant, TEMPLE shall retain
rights to make, have made, use and import LICENSED PRODUCT royalty-free for
non-commercial educational and research purposes only, and shall be free to
grant these rights to other non-profit educational and research institutions.
3.3 The parties acknowledge that inventions in PATENT RIGHTS may have
resulted from United States Government funding, and agree that their rights and
obligations under this Agreement shall be subject to TEMPLE's obligations to the
United States Government, if any, which arise out of the receipt by TEMPLE of
research funding from the United States Government. In particular, COMPANY
agrees that LICENSED PRODUCT sold in the United States under this Agreement
shall be manufactured substantially in the United States.
4. PAYMENTS
4.1 In consideration of the license granted to COMPANY under the terms
of this Agreement, COMPANY shall pay to TEMPLE royalties as follows:
(a) a royalty of [*] for each one thousand (1,000) tablets of
LICENSED PRODUCT which is a SUPPLEMENT and which is sold by COMPANY or by its
sub-licensees; and
(b) a royalty of [*] for each one thousand (1,000) tablets of
LICENSED PRODUCT which is an OTC DRUG which is sold by COMPANY or by its
sub-licensees; and
(c) a royalty equal to [*] of NET SALES of any LICENSED
PRODUCT which is a prescription drug and which is sold by COMPANY or by its
sub-licensees.
4.2 In further consideration of the license granted to COMPANY under
the terms of this Agreement, COMPANY shall pay to TEMPLE, within thirty (30)
days after the EFFECTIVE DATE, a non-refundable license fee of [*], which
license fee payment shall not be creditable against any other payments due to
TEMPLE under this Agreement, and is in addition to the license fees paid by
COMPANY to TEMPLE pursuant to paragraph 4.2 of the License Agreement executed by
the parties on December 22, 1998 and paragraph 4 of the Amendment to License
Agreement dated as of June 1, 1999.
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
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4.3 In further consideration of the license granted to COMPANY under
the terms of this Agreement, COMPANY shall pay to TEMPLE, on the dates specified
in this Paragraph 4.3, non-refundable license maintenance fees in the amount set
forth in this Paragraph 4.3 regardless of or irrespective of actual NET SALES,
which license maintenance fee payment may be credited against payments due to
TEMPLE under Paragraph 4.1 during the same calendar year, with no carry-over of
unused credit to subsequent calendar years. The amount of the license
maintenance fee payment for SUPPLEMENTS and OTC DRUGS shall be [*], no more than
one half (1/2) of which may be credited against payments due to TEMPLE under
Sub-paragraphs 4.1(a) pertaining to SUPPLEMENTS and no more than one half (1/2)
of which may be credited against payments due to TEMPLE under Sub-paragraphs
4.1(b) pertaining to OTC DRUGS. The amount of the license maintenance fee
payment for prescription drugs shall be [*], which may be credited against
payments due to TEMPLE under Sub-paragraph 4.1(c) pertaining to prescription
drugs. The license maintenance fee for SUPPLEMENTS and OTC DRUGS shall be
payable on January 1, 2002 and annually thereafter; the license maintenance fee
for prescription drugs shall be payable on January 1, 2003 and annually
thereafter.
4.4 In further consideration of the license granted to COMPANY under
the terms of this Agreement, COMPANY shall pay TEMPLE a royalty equal to [*] of
any license fee or similar payment received by COMPANY from any sub-licensee of
any prescription drug PRODUCT under the LICENSE in consideration of entering
into such sub-license, not including (i) any royalty or fee received by COMPANY
on account of SALES of LICENSED PRODUCTS or (ii) any payment received by COMPANY
as reimbursement for research and/or development costs; provided that, after
payment of the first royalty pursuant to this Paragraph 4.4, each subsequent
royalty pursuant to this Paragraph 4.4 shall be reduced by an amount equal to
COMPANY'S reasonable, unreimbursed, out-of-pocket research and/or development
costs incurred in connection with developing Licensed Products, which costs
include, and are not limited to: (i) cost of formulation development, (ii)
purchase price of raw materials, including active ingredients, for formulation
development, (iii) labor costs for research and/or development of a Licensed
Product, (iv) cost of research and development compliance and documentation for
the U.S. Food and Drug Administration or similar governmental agencies, (v) cost
of creating pilot batches for bench testing (i.e., for testing friability,
hardness, blend uniformity, etc.), (vi) cost of dissolution testing, (vii) cost
of pilot stability testing according to ICH guidelines, (viii) cost of
development and validation of analytic methods, (ix) cost of development of
master formulation documentation, (x) cost of development of indented xxxx of
materials, (xi) cost of vendor certification for all raw materials, (xii) cost
of cGMP audits of manufacturing sites, (xiii) cost of bioequivalence and
clinical trials, (xiv) cost of preparing technical files for sale or license to
a pharmaceutical licensee and (xv) costs incurred for subcontractors involved in
developing Licensed Products.
4.5 Royalty payments pursuant to paragraph 4.1 for SALES in each
country will commence with the first unit of LICENSED PRODUCT sold by COMPANY or
by its sublicensees in such country and will end coincident with the expiration
date of the last-to-expire issued patent within PATENT RIGHTS in such country
covering such LICENSED PRODUCT.
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
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5. STATEMENTS AND REMITTANCES
5.1 COMPANY shall keep and shall require its sublicensees to keep
complete and adequate records relating to the manufacture and SALE of LICENSED
PRODUCT.
5.2 Within sixty (60) days after the close of each calendar quarter,
COMPANY shall remit to TEMPLE a statement of NET SALES by COMPANY and by its
sublicensees on account for such quarter, which statement shall be accompanied
by the payment due to TEMPLE pursuant to paragraph 4.1 on account of NET SALES
for such quarter.
5.3 COMPANY shall use commercially reasonable efforts to obtain from
each of its sublicensees verified, and if available audited, financial
statements setting forth the amount of sales of LICENSED PRODUCT by each such
sublicensee ("Sublicensee Reports"). The financial statements of COMPANY and the
Sublicensee Reports will be audited annually by an independent certified public
accountant. TEMPLE shall have the right to employ, at its own expense, a
qualified accountant of its own selection to whom COMPANY shall make no
unreasonable objection, to examine the Sublicensee Reports and the books and
records of COMPANY relating to sales of LICENSED PRODUCT by COMPANY for the
purpose of verifying the amount of royalty payments due. Such examination of the
Sublicensee Reports and the books and records of COMPANY shall take place during
regular business hours during the term of this Agreement and for two (2) years
after its termination, provided however, that such an examination shall not take
place more than once a year and shall not cover records for more than the
preceding three (3) years, and provided that such accountant shall report to
TEMPLE only as to the accuracy of the royalty statements and payments. If such
accountant shall find an underpayment to TEMPLE, presentation of a written
statement substantiating the underpayment will be provided to COMPANY. If the
discrepancy relates to information contained in a Sublicensee Report, COMPANY
shall use commercially reasonable efforts to arrange for an audit of the subject
sublicensee by TEMPLE. If COMPANY is not in agreement with the findings of the
qualified accountant selected by TEMPLE, then COMPANY shall so notify TEMPLE in
writing within thirty (30) days of receipt by COMPANY of said findings (or in
the case of an audit of a sublicensee, within thirty (30) days of receipt by
COMPANY of the findings regarding the audit of the sublicensee), in which case
the parties will jointly appoint, within a further period of thirty (30) days,
an independent qualified accountant to validate, at COMPANY's expense, TEMPLE's
accountant's findings, and the decision of said independent accountant shall be
final. If said independent accountant verifies that an underpayment has
occurred, the amount due and interest (accruing at the prevailing Prime Rate
from the date payment was due through the date of actual payment to TEMPLE)
shall be paid to TEMPLE within thirty (30) days. Should such underpayment
represent more than five percent (5%) of the royalties due TEMPLE, COMPANY shall
reimburse TEMPLE for the cost of the examination by TEMPLE's accountant which
disclosed such underpayment.
5.4 All payments due to TEMPLE under this Agreement shall be made in
United States dollars and shall be sent by COMPANY to TEMPLE to the attention of
"Business Manager" at the address shown in Paragraph 13.5. However, TEMPLE shall
have the right, upon giving
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written notice to COMPANY, to receive royalty payments within a particular
country in the local currency if permitted by law.
5.5 If COMPANY fails to make any payment due to TEMPLE within the time
prescribed by the terms of this Agreement, a penalty equal to one percent (1%)
of the amount due and unpaid on the first day of each calendar month shall added
to the amount due. However, the provisions of this Paragraph 5.5 shall not apply
to any underpayment of royalties which is uncovered by an audit of the books of
COMPANY or of its sublicensees pursuant to paragraph 5.2.
6. REPRESENTATIONS
6.1 TEMPLE represents that it has the right to enter into this
Agreement and to make the herein grant of license under PATENT RIGHTS and
TECHNICAL INFORMATION. TEMPLE further represents that it is the sole and
exclusive owner of PATENT RIGHTS and TECHNICAL INFORMATION, all of which are
free and clear of any lien, charges and encumbrances.
6.2 TEMPLE makes no warranty that exercise by COMPANY or its
sublicensees of the rights granted herein will not infringe any patents owned by
a third party, or that any patent application within PATENT RIGHTS will issue as
a patent.
6.3 COMPANY warrants that, prior to the execution of this Agreement, it
has not negotiated or in any manner discussed, whether formally or informally,
with any third party any agreement or other arrangement, including but not
limited to research or consulting agreements, which provides for any portion of
the amounts payable to TEMPLE pursuant to Section 4 of this Agreement, or any
consideration which would reduce the amounts payable to TEMPLE pursuant to
Section 4 of this Agreement, to be paid in any form, including but not limited
to amounts of money or shares of stock, to any INVENTOR, any INVENTOR's spouse
or other relative, or any entity in which any of them has a financial interest.
7. PATENT PROSECUTION AND LITIGATION
7.1 TEMPLE, in consultation with COMPANY but in TEMPLE's sole
discretion, shall diligently prosecute all patent applications and maintain all
patents within PATENT RIGHTS, to the extent permitted by law, in all countries
designated in writing by COMPANY during the term of this Agreement. Except as
provided in paragraph 7.3, COMPANY shall be responsible for all costs and
expenses incurred by TEMPLE, both prior to and during the term of this
Agreement, in the preparation, filing and prosecution of all patent applications
within PATENT RIGHTS, and in the maintenance of all patents within PATENT
RIGHTS. Such costs and expenses shall not be creditable against any other
payments due to TEMPLE under this Agreement.
7.2 COMPANY shall make all payments due to TEMPLE pursuant to Paragraph
7.1 within thirty (30) days of receipt of detailed invoices therefore supported
by copies of the subject receipts and invoices or such other supporting
documentation as COMPANY may reasonably request. TEMPLE, in its sole discretion,
may elect to have its patent counsel submit such
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invoices directly to COMPANY, in which case COMPANY shall pay TEMPLE's patent
counsel directly.
7.3 In the event COMPANY notifies TEMPLE in writing that it will stop
paying the costs and expenses with respect to any patent application or patent
in any country, TEMPLE, at its option, may assume the obligation of supporting
such patent application or patent in such country, and COMPANY's rights and
obligations thereto under this Agreement shall terminate in such country.
Termination of COMPANY's rights and obligations with respect to any patent
application or patent in any country shall in no way affect the rights and
obligations of COMPANY to the same patent application or patent in any other
country.
7.4 TEMPLE may file patent applications in countries other than those
designated by COMPANY provided, however that TEMPLE shall notify COMPANY in
writing of any such filing within thirty (30) days of the filing date. If within
thirty (30) days of its receipt of such notification COMPANY fails to inform
TEMPLE in writing that it wishes to support such applications in such countries,
TEMPLE shall bear all the costs associated with such additional patent
application filings, and such applications in such countries and any patents
granting therefrom shall not be included within PATENT RIGHTS. TEMPLE shall then
be free to license such patents and patent applications in such countries to
others.
7.5 COMPANY, at its option, may defend any claim, made by others, of
patent infringement resulting from the manufacture, use, sale or other
disposition of LICENSED PRODUCT, whether such claim shall be made against TEMPLE
or COMPANY, and if COMPANY defends such claim, COMPANY shall bear all costs and
expenses, including reasonable attorneys' fees, incurred in connection with any
such claim. These costs and expenses will be a credit against fifty percent
(50%) of royalty payments due to TEMPLE on account of NET SALES of said LICENSED
PRODUCT, pursuant to Paragraph 4.1, in each year during the term of this
Agreement until fully offset. Each party to this Agreement agrees that it shall
notify the other party in writing in the event any claim of infringement is made
against that party.
7.6 In the event either party becomes aware of any actual or threatened
infringement of PATENT RIGHTS in any country, that party shall promptly notify
the other party in writing. COMPANY shall have the first right to bring an
infringement action against the infringer and to use TEMPLE's name if legally
required in connection therewith. If COMPANY does not proceed with a particular
patent infringement action or attempt to sublicense the infringer within ninety
(90) days of notification, TEMPLE, after notifying COMPANY in writing, shall be
entitled to proceed against such infringement at its own expense, through
counsel of its choice. The party conducting such suit shall have full control
over its conduct. In any event, TEMPLE and COMPANY shall assist one another and
cooperate in any such litigation. TEMPLE and COMPANY may also jointly
participate in any infringement action if both parties agree to do so in writing
in advance, and set forth the basis for sharing of expenses.
7.7 The amount of any recovery resulting from any litigation to enforce
the PATENT RIGHTS or settlement thereof ("Recovery") shall first satisfy the
attorney's fees and costs incurred by the enforcing party in such litigation
("Fees and Costs") provided, however, that if
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COMPANY is the enforcing party and a royalty reduction was applied pursuant to
Paragraph 7.5 ("Royalty Reduction"), then TEMPLE shall receive from the Recovery
an amount calculated by dividing the Royalty Reduction by the Fees and Costs and
multiplying the result by the Recovery. Any Recovery in excess of Fees and Costs
shall first satisfy royalty payments due to TEMPLE, with any remaining balance
to the enforcing party. Each party shall always have the right to be represented
by counsel of its choice and at its own expense in any suit instituted by
another for infringement. If the parties have agreed to participate jointly in
an infringement action, any recovery in excess of satisfying the parties'
attorney fees, costs of the litigation and payment of the royalty due to TEMPLE
on account of the infringement, shall be allocated to the parties in the same
proportion as the sharing of the litigation expenses.
8. INDEMNIFICATION
8.1 COMPANY agrees to indemnify, hold harmless, and defend TEMPLE, its
trustees, officers, employees and agents against any and all claims, excluding
claims stemming from TEMPLE's use of LICENSED PRODUCT as outlined in Paragraph
3.2, including fees and costs arising out of the exercise of any rights granted
under this Agreement, without limiting the generality of the foregoing, against
any damages, losses or liabilities whatsoever including but not limited to death
or injury to person or damage to property arising from the commercial sale and
clinical research of LICENSED PRODUCT by COMPANY, its sub-licensees or any
customers of any of them in any manner whatsoever. TEMPLE shall give COMPANY
written notice of any claim(s) related to LICENSED PRODUCT within thirty (30)
days, and TEMPLE shall reasonably cooperate with COMPANY and its insurance
carrier in the defense of any such claim(s).
8.2 In addition to the foregoing, COMPANY shall maintain, during the
period that any LICENSED PRODUCT is sold or otherwise made available to others
pursuant to this Agreement, Commercial Liability Insurance, including Product
Liability Insurance, with a reputable and financially secure insurance
carrier(s) to cover the activities of COMPANY and its sub-licensees, if any,
contemplated by this Agreement for minimum limits of two million dollars
($2,000,000.00) per occurrence. Such insurance shall name TEMPLE, its trustees,
officers, employees, and agents as additional insureds. COMPANY shall furnish a
Certificate of Insurance, upon request, evidencing coverage of two million
dollars ($2,000,000.00) with thirty (30) days of written notice of cancellation
or material change to TEMPLE. COMPANY's insurance shall be written to cover
claims incurred, discovered, manifested, or made during the term, or after the
expiration, of this Agreement. COMPANY shall at all times comply, through
insurance or self-insurance, with all statutory workers' compensation and
employers' liability requirements covering any and all employees with respect to
activities performed under this Agreement.
9. SUBLICENSES
9.1 COMPANY shall have the right to enter into sublicense agreements,
provided that all applicable material terms of this Agreement are incorporated
into such sublicense agreements to provide for the protection of TEMPLE and its
trustees, officers, employees and agents, and
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provided further that each sublicensee is required to carry appropriate
insurance and indemnify TEMPLE and COMPANY for claims arising from breach of the
sublicense or such sublicensee's products, and provided further that COMPANY
remains primarily liable for its obligations under this Agreement. A copy of any
sublicense agreement shall be provided to TEMPLE for its review and approval
prior to execution, which approval shall not be unreasonably withheld or
delayed. In the event Temple fails to deliver to COMPANY a written response to a
request for approval of a sublicense under this Agreement within thirty (30)
days of the date of the request, the subject sublicense shall be automatically
approved for all purposes under this Agreement.
10. ASSIGNMENT
10.1 Neither party may assign this Agreement, in whole or in part,
without the written consent of the other, except if such assignment occurs in
connection with the sale of all or substantially all of the business and assets
of the assigning party.
11. TERMINATION
11.1 This Agreement may be terminated with respect to any patent
application or patent in any country at any time by mutual written consent of
the parties.
11.2 COMPANY may, in COMPANY's sole discretion and for any reason
whatsoever, terminate this Agreement in its entirety or only with respect to any
patent application or patent within PATENT RIGHTS in any country by giving
TEMPLE ninety (90) days prior written notification thereof. In addition, COMPANY
may terminate this Agreement by giving TEMPLE sixty (60) days prior written
notice upon material breach by TEMPLE of any material provision of this
Agreement, unless such breach is cured within the period of such notice.
11.3 TEMPLE may terminate this Agreement by giving COMPANY three (3)
months prior written notice upon material breach of any material provision of
this Agreement by COMPANY, unless such breach is cured within the period of such
notice. However, the notice period shall be only thirty (30) days for any breach
by COMPANY for non-payment of moneys due TEMPLE under this Agreement.
11.4 This Agreement shall immediately terminate, without notice, if
COMPANY breaches the same material provision of this Agreement three (3) times
in the same calendar year, without regard to whether a cure was effected.
11.5 This Agreement shall immediately terminate if either party is
adjudicated bankrupt, files a voluntary petition in bankruptcy, makes or
executes an assignment for the benefit of creditors, is liquidated or dissolved,
or a receiver, trustee, liquidator, sequestrator or other judicial
representative is appointed for either party or its property. In such event,
that party shall execute any documents that are necessary to assign or transfer
all interests granted hereunder.
11.6 Upon termination of this Agreement, TEMPLE shall have the right to
retain any amounts already paid by COMPANY under this Agreement, and COMPANY
shall pay to
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TEMPLE all amounts accrued which are then due or which become due based on the
SALE of LICENSED PRODUCT, manufactured or produced prior to the effective date
of termination.
11.7 The provisions of Article 2 (entitled CONFIDENTIALITY) and Article
8 (entitled INDEMNIFICATION) shall survive the termination of this Agreement.
12. PATENT MARKING
12.1 COMPANY agrees to xxxx or have marked all LICENSED PRODUCT sold by
COMPANY or by its sub-licensees under this Agreement in accordance with the
statutes of the United States and countries and territories relating to the
marketing of patented articles in which any LICENSED PRODUCT covered by a
granted patent is marketed.
13. MISCELLANEOUS
13.1 This Agreement shall be construed and the respective rights of the
parties hereto determined according to the substantive laws of the Commonwealth
of Pennsylvania, notwithstanding the provisions governing conflict of laws under
such Pennsylvania law to the contrary. The parties agree that any dispute
arising out of this Agreement may be resolved by recourse to the courts of the
Commonwealth of Pennsylvania or the United States District Court for the Eastern
District of Pennsylvania.
13.2 If any provision of this Agreement is held to be invalid or
unenforceable under the laws of any jurisdiction of the parties, all other
provisions shall, nevertheless continue in full force and effect.
13.3 This Agreement constitutes the entire agreement among the parties
pertaining to LICENSED PATENT and supersedes all previous arrangements, whether
written or oral. Any amendment or modification to this Agreement shall be made
in writing signed by both parties.
13.4 Time is of the essence under this Agreement.
13.5 Notices and payments to the parties shall be addressed as follows:
To TEMPLE: Office of Technology Transfer
Temple University (083-45)
0000 Xxxxx Xxxxx Xxxxxx, Xxxx 000
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000-0000
To COMPANY: Nutraceutix, Inc.
Attention: President
0000 000xx Xxx. X.X.
Xxxxxxx, XX 00000
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Either party may change its address for notice by giving notice to the other in
the manner herein provided. Any notice required or provided for by the terms of
this Agreement shall be in writing and sent by registered or certified mail,
return receipt requested, postage prepaid and properly addressed in accordance
with the paragraph above. The effective date of notice shall be the actual date
of receipt.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the date first above
written.
For Temple University - Of The Commonwealth System of Higher Education:
BY /s/______________________________________ DATE_________________
Xxxxxx X. Xxxxx
Vice President, Chief Financial Officer
and Treasurer
For Nutraceutix, Inc.:
BY /s/_____________________________________ DATE_________________
Xxxxx X. Xxxxxx
President
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