EXHIBIT 10.8
TECHNOLOGY TRANSFER AGREEMENT
THIS TECHNOLOGY TRANSFER AGREEMENT (the "Agreement") is made and is
effective as of the last date of signature hereto, (the "Effective Date") by and
between The University of Wyoming, having its statewide office of its Research
Products Center (RPC) at Education Annex Rm. 152 X.X. Xxx 0000 Xxxxxxx, XX
00000-0000, (hereinafter referred to as "UW"), and AspenBio, a Colorado
corporation having a principal place of business at 0000 Xxxxxxxxx Xxx, Xxxxx
X-0, Xxxxxxxxx, XX 00000 (hereinafter referred to as "COMPANY").
RECITALS
WHEREAS, Certain inventions disclosed under UW Technology ID No. 02-008,
generally characterized as "[*]", hereinafter collectively referred to as the
"Invention," were made in the course of research at UW, by Xxxx Xxxxxx X.
Xxxxxx, and Xxxxx Xxxxxx. (hereinafter, "Inventors"); and
WHEREAS, COMPANY entered into a non-disclosure agreement with UW
effective August 27, 2001 and for the purpose of evaluating the Invention and/or
negotiating a technology transfer agreement; and
WHEREAS, COMPANY wishes to fund certain research at UW which is of
interest and benefit to COMPANY and UW, and which will further the instructional
and research objectives of UW and the public interest in a manner consistent
with its status as a non-profit, tax-exempt, public, educational institution,
and may derive benefits for both COMPANY and UW by advancing knowledge through
discovery, and by creating new technologies through invention; and
WHEREAS, COMPANY wishes to obtain certain rights from UW for the
commercial development, manufacture, use, and sale of the Invention or any
Future Invention (defined below), and UW is willing to grant such rights on the
terms and conditions set forth in this Agreement; and
WHEREAS, UW desires that the Invention and Future Inventions be
developed and utilized to the fullest extent so that the general public can
enjoy its benefits.
NOW THEREFORE, the parties agree as follows:
1. DEFINITIONS
1.1 "Affiliate" means any corporation or business entity that directly
or indirectly controls, is controlled by, or is under common control with
COMPANY to the extent of at least 50 percent of the outstanding stock or other
voting rights entitled to elect directors.
* Portions of this marked Exhibit have been omitted pursuant to a request for
confidential treatment and filed separately with the Commission.
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1.2 "Research" means a project funded by COMPANY for further research in
the Licensed Field and which is entered into in accordance with the provisions
of Article 5 of this Agreement.
1.3 "Biological Material(s)" means all (i) hybridomas owned or
controlled by UW and all cell line derivatives, progeny, and material derived
therefrom, (ii) all products containing monoclonal antibodies or fragments
thereof produced by said hybridomas, and iii) recombinant proteins, and (iv)
nucleotide and amino acid sequences, all related to the Invention or Future
Invention.
1.4 "Future Invention(s)" means any inventions, discoveries, biological
materials, software, know-how, trade secrets, data, works and information
created in the course of and within the scope of the Research.
1.5 "UW Patent Rights" means any U.S. Patent Applications and U.S.
Patent(s) issuing thereon, and foreign patent(s) and patent application(s)
corresponding to the foregoing, owned by UW, including any reissues, extensions
(including governmental equivalents thereto), substitutions, continuations, and
divisions thereof for Future Inventions.
1.6 "UW Technology" means all non-patentable, and tangible information,
know-how and physical objects to the extent reasonably necessary or useful to
practice the Invention or Future Invention (including Biological Materials) in
the Licensed Field (other than UW Patent Rights); owned or controlled by UW,
which UW has the right to disclose and license to third parties.
1.7 "Data" means all information owned or controlled by UW and acquired
by COMPANY, its Affiliates directly or indirectly from or through UW, its units,
its employees, the Inventors, or its consultants relating to the Invention,
Licensed Products, or this Agreement, including but not limited to, all patent
prosecution documents and all information received from Inventors as well as all
UW Technology.
1.8 "Licensed Field" or "Field" means the use of the Invention or Future
invention for a Bovine Pregnancy Test.
1.9 "Licensed Method" means any process, method, or use that is covered
by the Invention, Future Invention, UW Technology, Data or UW Patent Rights.
1.10 "Licensed Product(s)" means any material or product or kit, or any
service, process, or procedure that (i) either is covered by the Invention,
Future Invention, or UW Patent Rights or whose discovery, development,
registration, manufacture, use, or sale would constitute, but for the license
granted to COMPANY pursuant to this Agreement, an infringement of any claim
within UW Patent Rights or (ii) is discovered, developed, made, sold,
registered, or practiced using UW Technology, Data, or Licensed Method or which
may be used to practice the Licensed Method, in whole or in part or (iii) is a
kit, reagent, or material which comprises, contains, or makes use of Biological
Material in its manufacture, testing, use or sale.
1.11 "Bovine Pregnancy Test" means any material or product or kit, or
any service, process, or procedure that COMPANY sells for testing of bovine
pregnancy.
1.12 "Net Sales" means the total of the gross consideration received for
a Bovine Pregnancy Test or Licensed Product made, used, leased, transferred,
distributed, sold or otherwise disposed of by COMPANY or its Affiliates, less
the sum of the following actual and customary deductions (net
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of rebates or allowances of such deductions received) included on the invoice
and actually paid: cash, trade, or quantity discounts; sales or use taxes
imposed upon particular sales; import/export duties; and transportation charges.
In the event COMPANY or any of its Affiliates makes a transfer of a Bovine
Pregnancy Test or Licensed Product to a third party for other than monetary
consideration or for less than fair market value, such transfer shall be
considered a sale hereunder to be calculated at a fair market value for
accounting and royalty purposes. A Bovine Pregnancy Test or Licensed Product
shall be deemed made, used, leased, transferred, sold, or otherwise disposed of
at the time COMPANY bills, invoices, ships, or receives payment for such
Licensed Product, whichever occurs first.
1.13 "Territory" means all countries of the world.
2. GRANT
2.1 Subject to the limitations set forth in this Agreement, UW hereby
grants to COMPANY an exclusive license under the Invention, Future Inventions,
UW Patent Rights, UW Technology, and Data in the Licensed Field to make, have
made, use, distribute and sell Licensed Products and to practice Licensed Method
in the Territory during the term of this Agreement.
2.2 UW expressly reserves the right to have the Invention, Future
Inventions, and all associated intellectual property rights licensed hereunder
used for educational, research and other non-commercial purposes and to publish
the results thereof.
2.3 To the extent UW, principally through the Inventors, has provided or
will provide UW Technology, Biological Materials, or Data to COMPANY, it is
understood that at the time of disclosure to the COMPANY some of the UW
Technology, Biological Materials, or Data may have been made available to the
public without restrictions.
3. CONTRACT ISSUE FEE
3.1 COMPANY agrees to pay to UW a Contract Issue Fee of Ten Thousand
Dollars ($10,000) upon execution of this Agreement. This fee is non-refundable
and is not an advance against royalties.
4. RESEARCH
4.1 COMPANY shall fund Research at UW in the amount of $140,000
(including overhead) for the Research program generally described in Appendix I
to this Agreement. $35,000 of the total amount is payable on January 2, 2002.
The remaining balance is payable in equal installments at six (6) month
intervals thereafter during the period described in Article 4.2 of this
Agreement. Checks should be made payable to University of Wyoming and should
identify the Company and the Principal Investigator and be sent to:
The University of Wyoming Research Office
Old Main Rm. 305
XX Xxx 0000 Xxxxxxx, Xxxxxxx 00000
Attention: Associate Vice President
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UW will not be obligated to expend funds in excess of those provided
under this Agreement to conduct the Research.
4.2 Research under this Agreement will be performed during a two year
period beginning with the Effective Date. UW's Principal Investigator for the
Research program described in Appendix II is Xxxxxxxxx Xxxxxx X. Xxxxxx. The
Principal Investigator shall be responsible for the direction of the Research
and shall conduct the Research in accordance with applicable policies and
procedures of UW.
4.3 COMPANY shall appoint a technical or scientific representative
(hereafter COMPANY's Technical Representative") who initially will be Xx. Xxxx
Xxxxxx, or such other representative as COMPANY may subsequently designate in
writing. During the period of the Research, COMPANY's Technical Representative
may have reasonable access personally or by telephone to discuss the Research
informally with Principal Investigator. Access to work performed in UW
laboratories and at other UW premises in the course of the Research will be
entirely under the control of UW personnel. COMPANY's representatives are
permitted to visit such laboratories and premises only during usual hours of
operation or as is mutually agreeable.
4.4 The Principal Investigator may make up to two (2) oral reports each
year if requested by COMPANY. Within sixty (60) days after the expiration of the
Research, the Principal Investigator shall submit a comprehensive final written
report to COMPANY.
4.5 UW has the right to copyright and publish and otherwise publicly
disclose, through technical presentations or otherwise, the information and
results gained in the course of the Research. In order to permit COMPANY an
opportunity to determine if patentable inventions will thereby be disclosed, the
Principal Investigator will provide COMPANY with copies of articles written by
project personnel reporting on the Research prior to submission for publication.
If COMPANY wishes to request that the article be delayed so that a patent
application may be filed on an invention disclosed in such article, COMPANY
shall so notify Principal Investigator and UW in writing within thirty (30) days
of receipt of the proposed publication from UW.
4.6 All rights in Future Inventions shall be the property of UW in
accordance with the applicable policies and procedures of UW, and subject to the
licenses granted in this agreement. UW shall promptly report any such Future
Inventions to COMPANY upon receipt by its Research Products Center of a
completed written disclosure (hereinafter "Disclosure") thereof from the
Principal Investigator.
4.7 In the event UW's Principal Investigator is unavailable or unable to
continue direction of the Research for a period in excess of ninety (90) days,
UW shall notify COMPANY and may nominate a replacement; if UW does not nominate
a replacement or if that replacement is unsatisfactory to COMPANY, COMPANY may
terminate the Research upon thirty (30) days written notice and such right to
terminate shall be COMPANY's sole remedy at law or in equity.
4.8 UW shall retain title to all equipment purchased and/or fabricated
by it with funds provided by COMPANY under the Research.
4.9 UW will be excused from performance of the Research if a delay is
caused by inclement weather, fire, flood, strike or other labor dispute, acts of
God, acts of governmental officials or
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agencies, or any other cause beyond the control of UW. The excusable delay is
allowed for the period of time affected by the delay. If a delay occurs, the
parties will revise the performance period of the Research or other provisions
of the Research, as appropriate.
5. PATENT PROSECUTION AND MAINTENANCE FOR FUTURE INVENTIONS
5.1 If, within sixty (60) days of Disclosure of a Future Invention to
COMPANY by UW, COMPANY notifies UW that it elects to include the Future
Invention into this agreement, then UW shall diligently prosecute and maintain
United States patent applications and patents for the Future Invention using
counsel agreed to by UW and COMPANY. Counsel shall take instructions only from
UW. UW shall provide COMPANY with copies of all relevant documentation so that
COMPANY may be informed and apprised of the continuing prosecution. COMPANY
agrees to keep this documentation confidential. All costs of preparing, filing,
prosecuting, defending, and maintaining all United States patent applications
and/or patents, including interferences and oppositions, and all corresponding
foreign patent applications and patents for Future Inventions covered by UW
Patent Rights shall be borne by COMPANY. If COMPANY for any reason elects not to
include the Future Invention in this Agreement, then COMPANY shall no longer
thereafter have any rights with respect to the Future Invention.
5.2 UW shall give due consideration to amending any patent application
to include claims reasonably requested by COMPANY to protect the Licensed
Products contemplated to be sold under this Agreement.
5.3 UW shall, at the request of COMPANY, file, prosecute, and maintain
patent applications and patents covered by UW Patent Rights in foreign countries
if available. COMPANY shall notify UW within three (3) months of the filing of
the corresponding United States application of its decision to obtain all other
foreign patents. This notice shall be in writing and shall identify the
countries desired. The absence of such a notice from COMPANY shall be considered
by UW to be an election not to request foreign rights.
5.4 COMPANY's obligation to underwrite and to pay U.S. and foreign
patent prosecution and maintenance costs shall continue for so long as this
Agreement remains in effect, provided, however, that COMPANY may terminate its
obligations with respect to any given patent application or patent upon three
(3) months' prior written notice to UW. UW shall use reasonable efforts to
curtail future patent costs when such a notice is received from COMPANY. COMPANY
shall promptly pay patent costs which cannot be so curtailed. Commencing on the
effective date of such notice, UW may continue prosecution and/or maintenance of
such application(s) or patent(s) at its sole discretion and expense, and COMPANY
shall have no further right or licenses thereunder.
5.5 UW shall have the right to file patent applications at its own
expense in any country or countries in which COMPANY has not elected to secure
patent rights or in which COMPANY's patent rights hereunder have terminated, and
such applications and resultant patents shall not be subject to this Agreement
and may be freely licensed by UW to third parties together with UW Technology.
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6. ROYALTIES
6.1 COMPANY shall pay to UW a running royalty of two and one-half
percent (2.5%) of Net Sales for as long as a Bovine Pregnancy Test is sold by
COMPANY. Sales among COMPANY and Affiliates for ultimate third party use shall
be disregarded for purposes of computing royalties; royalties shall be payable
only upon sales or transfers between unrelated parties and shall be based on
arms length consideration.
6.2 Royalties payable to UW shall be paid to UW quarterly on or before
the following dates of each calendar year:
February 28 May 31
August 31 November 30
Each such payment will be for unpaid royalties on collected funds that accrued
within COMPANY's most recently completed calendar quarter.
6.3 If COMPANY notifies UW that it elects to include a Future Invention
into this agreement, COMPANY shall pay to UW annual minimum royalties equal to
the amounts set forth on the following schedule:
A payment in the amount of $25,000 in the first year of commercial
sales;
A payment in the amount of $50,000 in the second year of commercial
sales;
A payment in the amount of $125,000 in the third year of commercial
sales;
A payment in the amount of $250,000 in the fourth year of commercial
sales; and annually thereafter, for the term of this Agreement beginning
with the date of first commercial sale of Licensed Product.
This annual minimum royalty shall be paid to UW by February 28 of each year and
shall be credited against the earned royalty due and owing for the calendar year
in which the minimum annual royalty is paid. The first year's annual minimum
royalty shall be prorated by the fractional number of full months remaining in
that calendar year and shall be paid within forty-five days (45) of the date of
first commercial sale of a Licensed Product.
6.4 All amounts due VW shall be payable in United States Dollars in
Laramie, WY. When Bovine Pregnancy Tests or Licensed Products are sold for
monies other than United States Dollars, the earned royalties will first be
determined in the foreign currency of the country in which such Bovine Pregnancy
Tests or Licensed Products were sold and then converted into equivalent United
States Dollars. Royalties will be paid on funds received by COMPANY,
post-conversion.
6.5 COMPANY shall be responsible for any and all taxes, fees, or other
charges imposed by the government of any country outside the United States on
the remittance of royalty income for sales occurring in any such country.
COMPANY shall also be responsible for all bank transfer charges.
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7. DILIGENCE
7.1 COMPANY, upon execution of this Agreement, shall use its best
efforts to develop, test, obtain any required governmental approvals,
manufacture, market and sell Bovine Pregnancy Test or Licensed Products in all
countries of the Territory and shall earnestly and diligently endeavor to market
the same within a reasonable time after execution of this Agreement and in
quantities sufficient to meet the market demands therefor.
8. PROGRESS AND ROYALTY REPORTS
8.1 Beginning six (6) months after the Effective Date, and semi-annually
thereafter, COMPANY shall submit to UW a progress report covering COMPANY's
activities related to the development and testing of a Bovine Pregnancy Test and
Licensed Products and the obtaining of the governmental approvals necessary for
marketing. These progress reports shall be made for each Bovine Pregnancy Test
and Licensed Product in each country of the Territory.
8.2 The progress reports submitted under section 9.1 shall include
sufficient information to enable UW to determine COMPANY's progress in
fulfilling its obligations under Article 7, including, but not limited to, the
following topics:
- summary of work completed
- summary of work in progress, including product development and
testing and progress in obtaining government approvals
- current schedule of anticipated events or milestones market
plans for introduction of Bovine Pregnancy Test and Licensed
Products in countries of the Territory in which Licensed Product
has not been introduced
- summary of resources (dollar value) spent in the reporting
period for research, development, and marketing of Licensed
Products
- financial statements as of the end of the previous calendar
quarter
8.3 COMPANY shall have a continuing responsibility to keep UW informed
of the large/small entity status (as defined by the United States Patent and
Trademark Office) of itself.
8.4 COMPANY shall report to UW in its immediately subsequent progress
and royalty report the date of first commercial sale of each Bovine Pregnancy
Test or Licensed Product in each country.
8.5 After the first commercial sale of a Bovine Pregnancy Test or
Licensed Product anywhere in the world, COMPANY will make quarterly royalty
reports to UW on or before each February 28, May 31, August 31 and November 30
of each year. Each such royalty report will cover COMPANY's most recently
completed calendar quarter and will show (a) the units and gross sales and Net
Sales of each type of Bovine Pregnancy Test and Licensed Product sold by COMPANY
on which royalties have not been paid, including a clear indication of how Net
Sales were calculated; (b) the royalties and fees, in U.S. dollars, payable
hereunder, (c) the method used to calculate the royalty; (d) the exchange rates
used, if any; and (d) any other information relating to the foregoing reasonably
requested by UW.
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8.6 If no sales of Bovine Pregnancy Test or Licensed Products have been
made during any reporting period, a statement to this effect shall be made by
COMPANY.
9.1 COMPANY shall keep and cause its Affiliates to keep books and
records in accordance with generally acceptable accounting principles accurately
showing all transactions and information relating to this Agreement. Such books
and records shall be preserved for at least five (5) years from the date of the
entry to which they pertain and shall be open to inspection by representatives
or agents of UW at reasonable times upon reasonable notice.
9.2 The fees and expenses of UW's representatives performing such an
examination shall be borne by UW. However, if an error in royalties of more than
five percent (5%) of the total royalties due for any year is discovered, or if
as a result of the examination it is determined that COMPANY is in material
breach of its other obligations under this Agreement, then the fees and expenses
of these representatives shall be borne by COMPANY, and COMPANY shall promptly
reimburse UW for reasonably documented audit expenses as well as all overdue
royalty and late interest payments.
10. TERM OF THE AGREEMENT
10.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the provisions of this Agreement, this Agreement
shall be in force from the Effective Date and shall remain in effect in each
country of the Territory until the expiration of the last-to-expire patent of
the UW Patent Rights in such country or 10 years from the date of first
commercial sale of a Bovine Pregnancy Test or Licensed Product in such country,
whichever is later.
10.2 Any expiration or termination of this Agreement shall not affect
the rights and obligations set forth in the following Articles:
Article 6 Royalties
Article 9 Books and Records
Article 12 Disposition of Licensed Products
On Hand Upon Termination
Article 13 Use of Names, Trademarks and
Article 17 Indemnification
Article 22 Failure to Perform
Article 26 Confidentiality
11. TERMINATION FOR CAUSE BY EITHER PARTY
11.1 If one party should breach or fail to perform any provision of this
Agreement, then the other party may give written notice of such default (Notice
of Default) to the breaching party. If the breaching party should fail to cure
such default within sixty (60) days of notice thereof, the nonbreaching party
shall have the right to terminate this Agreement and the licenses herein by a
second written notice (Notice of Termination) to the breaching party. If a
Notice of Termination is sent to breaching party, this Agreement shall
automatically terminate on the effective date of such notice. Termination shall
not relieve breaching party of its obligation to pay all amounts due to the
nonbreaching party as of the effective date of termination and shall not impair
any accrued rights of the non-breaching party.
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12. DISPOSITION OF LICENSED PRODUCTS AND INFORMATION
ON HAND UPON TERMINATION
12.1 Upon termination this Agreement for breach or cause by either party
(i) COMPANY shall have the privilege of disposing of all previously made or
partially made Licensed Products (COMPANY may complete partially made Licensed
Products), but no more, within a period of one hundred and eighty (180) days
after the initial notice of termination, provided, however, that the disposition
of such Licensed Products shall be subject to the terms of this Agreement
including, but not limited to, the payment of royalties at the rate and at the
time provided herein and the rendering of reports thereon; (ii) COMPANY shall
promptly return, and shall cause its Affiliates to return, to UW all property
belonging to UW including without limitation UW Technology and Data, if any,
that has been provided to COMPANY or its Affiliates hereunder, and all copies
and facsimiles thereof and derivatives therefrom (except that COMPANY may retain
one copy of written material for record purposes only, provided such material is
not used by COMPANY for any other purpose and is not disclosed to others).
13. USE OF NAMES, TRADEMARKS AND CONFIDENTIAL INFORMATION
13.1 Nothing contained in this Agreement shall be construed as granting
any right to COMPANY or its Affiliates to use in advertising, publicity, or
other promotional activities or otherwise any name, trade name, trademark, or
other designation of UW or any of its units (including contraction, abbreviation
or simulation of any of the foregoing). Unless required by law or consented to
in advance in writing by an authorized representative of UW, the use by COMPANY
of the name, "University of Wyoming" or any campus or unit of UW is expressly
prohibited.
14. LIMITED WARRANTY
14.1 UW warrants to COMPANY that it has the lawful right to enter into
this agreement.
14.2 The licenses contained herein and associated Inventions and Future
Invention are provided WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. UW MAKES NO
REPRESENTATION OR WARRANTY THAT THE LICENSED PRODUCTS OR LICENSED METHODS WILL
NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT.
14.3 IN NO EVENT WILL UW BE LIABLE FOR ANY INCIDENTAL, INDIRECT, SPECIAL
OR CONSEQUENTIAL DAMAGES, INCLUDING WITHOUT LIMITATION, LOST PROFITS, RESULTING
FROM EXERCISE OF THIS LICENSE OR MANUFACTURE. SALE, OR USE OF THE INVENTION OR
LICENSED PRODUCTS OR UW INTELLECTUAL PROPERTY LICENSED HEREUNDER.
14.4 Nothing in this Agreement shall be construed as:
(14.4a) a warranty or representation by UW as to the validity or
scope of any UW Patent Rights; or
(14.4b) a warranty or representation that anything made, used,
sold or otherwise disposed of under any license granted
in this Agreement is or will be free
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from infringement of patents or other intellectual
property rights of third parties; or
(14.4c) an obligation to bring or prosecute actions or suits
against third parties except as provided in Article 16;
or
(14.4d) conferring by implication, estoppel or otherwise any
license or rights under any patents or other
intellectual property of UW other than UW Patent Rights
and UW Technology, regardless of whether such patents
are dominant or subordinate to UW Patent Rights; or
(14.4e) an obligation to furnish any know-how not provided in UW
intellectual property licensed hereunder.
15. PATENT MARKING
15.1 COMPANY shall xxxx all Licensed Products made, used, sold or
otherwise disposed of under the terms of this Agreement, and/or their
containers, in accordance with the applicable patent marking laws.
16. PATENT INFRINGEMENT
16.1 In the event that COMPANY shall learn of the substantial
infringement of UW Patent Rights, COMPANY shall notify UW in writing and shall
provide UW with reasonable evidence of such infringement. Both parties to this
Agreement agree that during the period and in a jurisdiction where COMPANY has
exclusive rights under this Agreement, neither will notify a third party of the
infringement of any of UW Patent Rights without first obtaining consent of the
other Party, which consent shall not be unreasonably denied. Both parties shall
use their best efforts in cooperation with each other to terminate such
infringement without litigation.
16.2 COMPANY may request that UW take legal action against the
infringement of UW Patent Rights. Such request shall be made in writing and
shall include reasonable evidence of such infringement and damages to COMPANY.
If the infringing activity has not been abated within ninety (90) days following
the effective date of such request, UW shall have the right to commence suit on
its own account or refuse to commence such suit. UW shall give notice of its
election in writing to COMPANY by the end of the one-hundredth (100th) day after
receiving notice of such request from COMPANY. COMPANY may thereafter bring suit
for patent infringement if and only if UW refuses to commence suit and if the
infringement occurred during the period and in a jurisdiction where COMPANY had
exclusive rights under this Agreement. However, in the event COMPANY elects to
bring suit in accordance with this paragraph, UW may thereafter join such suit
at its own expense.
16.3 Such legal action as is decided upon shall be at the expense of the
party on account of whom suit is brought and all recoveries recovered thereby
shall belong to such party, provided, however, that recoveries from legal
actions brought jointly by UW and COMPANY shall be shared equally by them, after
paying the reasonable legal expenses of both parties.
16.4 Each party agrees to cooperate with the other in litigation
proceedings instituted hereunder but at the expense of the party on account of
whom suit is brought for out-of-pocket expenses. Such litigation shall be
controlled by the party bringing the suit. Each party may be represented by
counsel of its choice at its own expense.
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17. INDEMNIFICATION AND INSURANCE
17.1 COMPANY shall indemnify, hold harmless and defend the State of
Wyoming, UW, its trustees, officers, employees, students, agents and the
Inventors against any and all claims, suits, losses, liabilities, damages,
costs, fees and expenses (including reasonable attorneys' fees) resulting from
or arising out of the exercise of the rights granted under this license. This
indemnification shall include, but is not limited to, any and all claims
alleging products liability.
17.2 Throughout the term of this Agreement, and to the extent applicable
from and after the date of first commercial sale of a Licensed Product, COMPANY
shall maintain commercially issued policies of insurance, or programs of
self-insurance with financial reserves sufficient to support its obligations
under this Agreement, which provide coverage and limits as required by statute
or as necessary to prudently insure the activities and operations of COMPANY.
The commercial general liability insurance policy, or liability self-insurance
program, shall include the interests of UW as an additional insured and provide
coverage limits of not less than $1,000,000 combined single limits as respects
premises, operations, contractual liability and, if applicable, liability
arising out of products and/or completed operations. COMPANY shall provide UW
with certificates of insurance for commercially insured policies, or a letter
from COMPANY's independent auditors stating its opinion as to the adequacy of
any self-insurance program.
It is expressly agreed that the insurance or self-insurance are minimum
requirements which shall not in any way limit the liability of COMPANY and shall
be primary coverage. Any insurance or selfinsurance program maintained by UW
shall be excess and noncontributory.
17.3 UW shall promptly notify COMPANY in writing of any claim or suit
brought against UW in respect of which UW intends to invoke the provisions of
Article 17. COMPANY shall keep UW informed on a current basis of its defense of
any claims pursuant to Article 17.
18. NOTICES
18.1 Any notice or payment required to be given to either party shall be
deemed to have been properly given and to be effective (a) on the date of
delivery if delivered in person, (b) five (5) days after mailing if mailed by
first-class certified mail, postage paid and deposited in the United States
mail, to the respective addresses given below, or to such other address as it
shall designate by written notice given to the other party or (c) on the date of
delivery if delivered by express delivery service such as Federal Express or
DHL.
In the case of COMPANY: AspenBio, Inc.
0000 Xxxxxxxxx Xxx, Xxxxx X-0
Xxxxxxxxx, XX 00000
Attention: President
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In the case of UW: Wyoming Research Products Center
University of Wyoming
Education Annex Rm. 152
P.O. Box 3672
Laramie, WY 82071-3672
Attention: Director
19. ASSIGNABILITY
19.1 This Agreement is binding upon and shall inure to the benefit of
UW, its successors and assigns, but shall be personal to COMPANY and assignable
by , COMPANY only with the written consent of UW, which consent shall not be
unreasonably withheld.
20. LATE PAYMENTS
20.1 In the event any amounts due UW hereunder, including but not
limited to royalty payments, fees and patent cost reimbursements, are not
received when due, COMPANY shall pay to UW interest charges at a rate of
eighteen (18) percent per annum or the highest rate permitted by law, if less
than eighteen percent. Such interest shall be calculated from the date payment
was due until actually received by UW.
21. WAIVER
21.1 It is agreed that failure to enforce any provisions of this
Agreement by a party shall not be deemed a waiver of any breach or default
hereunder by the other party. It is further agreed that no express waiver by
either party hereto of any breach or default of any of the covenants or
agreements herein set forth shall be deemed a waiver as to any subsequent and/or
similar breach or default.
22. FAILURE TO PERFORM
22.1 In the event of a failure of performance due under the terms of
this Agreement and if it becomes necessary for either party to undertake legal
action against the other on account thereof, then the prevailing party shall be
entitled to reasonable attorney's fees in addition to costs and necessary
disbursements.
23. GOVERNING LAWS
23.1 The laws of the State of Wyoming shall govern all legal matters
relating to this agreement, but the scope and validity of any patent or patent
application shall be governed by the applicable laws of the country of such
patent or patent application. The University of Wyoming does not waive its
sovereign immunity or its governmental immunity by entering into this Agreement.
Any actions or claims against UW under this Agreement must be in accordance with
and are controlled by the Wyoming governmental Claims Act, W.S. 1-39-101 et.
seq. - (1977) as amended.
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24. FOREIGN GOVERNMENT APPROVAL OR REGISTRATION
24.1 If this Agreement or any associated transaction is required by the
law of any nation to be either approved or registered with any governmental
agency, COMPANY shall assume all legal obligations to do so and the costs in
connection therewith.
25. EXPORT CONTROL LAWS
25.1 COMPANY shall observe all applicable United States and foreign laws
with respect to the transfer of Licensed Products and related technical data to
foreign countries, including, without limitation, the International Traffic in
Arms Regulations (ITAR) and the Export Administration Regulations.
26. CONFIDENTIALITY
26.1 COMPANY (i) shall not use any Biological Material, UW Technology,
Data or unpublished UW Patent Rights, except for the sole purpose of performing
this Agreement, (ii) shall safeguard the same against disclosure to others with
the same degree of care as it exercises with its own data of a similar nature,
and (iii) shall not disclose or permit the disclosure of Data or unpublished UW
Patent Rights to others (except to its employees, agents or consultants who are
bound to COMPANY and UW by a like obligation of confidentiality) without the
express written permission of UW, except that COMPANY shall not be prevented
from using or disclosing any Data:
(26.1a) which COMPANY can demonstrate by written records was previously
known to it; or
(26.1b) which is now, or becomes in the future, information generally
available to the public in the form supplied, other than through
acts or omissions of COMPANY; or
(26.1c) which is lawfully obtained by COMPANY from sources independent
of UW who were entitled to provide such information to COMPANY;
or
(26.1d) which is required by law to be disclosed.
26.2 UW and COMPANY each agree that all information contained in
documents marked "Confidential" and forwarded to one by the other (i) be
received in strict confidence, (ii) be used only for the purposes of this
Agreement, and (iii) not be disclosed by the recipient party, its agents or
employees without the prior written consent of the other party, except to the
extent that the recipient party can establish competent written proof that such
information:
a. was in the public domain at the time of disclosure;
b. later became part of the public domain through no act or omission of
the recipient party, its employees, agents, successors or assigns;
c. was lawfully disclosed to the recipient party by a third party having
the right to disclose it;
d. was already known by the recipient party at the time of disclosure;
e. was independently developed by the recipient; or
f. is required by law or regulation to be disclosed.
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26.3 Each party's obligation of confidence hereunder shall be fulfilled
by using at least the same degree of care with the other party's confidential
information as it uses to protect its own confidential information.
27. MISCELLANEOUS
27.1 The headings of the several articles are inserted for convenience
of reference only and are not intended to be a part of or to affect the meaning
or interpretation of this Agreement.
27.2 This Agreement will not be binding upon the parties until it has
been signed below on behalf of each party by a duly authorized representative.
27.3 No amendment or modification hereof shall be valid or binding upon
the parties unless made in writing and signed on behalf of each party by a duly
authorized representative.
27.4 This Agreement embodies the entire understanding of the parties and
shall supersede all previous and contemporaneous communications, representations
or understandings, either oral or written, between the parties relating to the
subject matter hereof, except that the confidentiality agreement executed on
8/27/01 between the parties shall remain in effect.
27.5 COMPANY shall not enter into any agreements relating to this
Agreement with Inventors or other UW employees or students in contravention of
the legal rights or policies of UW.
27.6 In case any of the provisions contained in this Agreement shall be
held to be invalid, illegal or unenforceable in any respect, (i)such invalidity,
illegality or unenforceability shall not affect any other provisions hereof,
(ii) the particular provision, to the extent permitted by law, shall be
reasonably construed and equitably reformed to be valid and enforceable and
(iii) this Agreement shall be construed as if such invalid or illegal or
unenforceable provisions had never been contained herein.
27.7 UW shall have the right to terminate this Agreement forthwith by
giving written notice of termination to COMPANY at any time upon or after the
filing by COMPANY of a petition in bankruptcy or insolvency, or upon or after
any adjudication that COMPANY is bankrupt or insolvent, or upon or after the
filing by COMPANY of any petition or answer seeking judicial reorganization,
readjustment or arrangement of the business of COMPANY under any law relating to
bankruptcy or insolvency, or upon or after the appointment of a receiver for all
or substantially all of the property of COMPANY, or upon or after the making of
any assignment or attempted assignment for the benefit of creditors, or upon or
after the institution of any proceeding or passage of any resolution for the
liquidation or winding up of COMPANY's business or for termination of its
corporate life.
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Appendix II
Research Plan
SUMMARY
Currently we have limited evidence that detection of [*] mRNA or protein
can be used as an early pregnancy test in cows. Limitations of this approach are
that peripheral blood mononuclear cells need to be purified and this is
technically difficult to accomplish. We generated polyclonal and monoclonal
antibodies against recombinant [*]. An ELISA was developed with a sensitivity of
-50 ng/ml. Our challenge now is to develop a more sensitive test using either
antibody and/or RNA approaches so that detection of [*] in the blood is a
reliable and sensitive indicator for early pregnancy in the cow. These
experiments will continue over the next two years.
We also are initiating a new series of experiments designed to identify
other pregnancy- specific antigens in white blood cells using modern molecular
biology approaches. The approaches of differential display and, possibly,
subtractive libraries will be used during the first year to identify gene
products that are either enhanced or suppressed in white blood cells in response
to pregnancy on day 18 and 22.
SPECIFIC AIMS
The purpose of the following experiments is to develop an early
pregnancy test in cows. The first aim tests the hypothesis that detection of [*]
in the blood can be used as an effective early pregnancy test in cows. The
second and third aims are to screen blood cells from pregnant and non-pregnant
cows so that additional proteins/antigens can be identified and tested for
efficacy of use as an early pregnancy test. Aims are listed below for clarity:
Aim 1. Continue work in developing a pregnancy test based on detection
of [*] mRNA and protein in blood cells (Years 1-2).
Aim 2. Identify additional genes that are induced or up-regulated in
blood cells in response to pregnancy (Year 1).
Aim 3. Develop additional antibody and/or RNA detection approaches based
on identification of gene products identified in Aim 1 (Year 2).
CONCLUDING REMARKS
We propose to complete the experiments over two years. The costs
associated with these experiments are $140,000. I believe that we can accomplish
what is described in the proposed time frame. If one additional year is required
to complete experiments, we will continue under current budgetary guidelines
(i.e., simply roll over funds into the third year). It will become difficult to
generate antibodies against all antigens that will be discovered following
completion of differential display or subtractive library approaches. The number
of antigens that we identify could be limiting. Also, the inherent properties or
soluability of the antigen might make purification a difficult chore. In
consultation with scientists at AspenBio we would select/prioritize a few
antigens (if there are many) to be generated as recombinant proteins for the
purposes of making antibodies. The ultimate goal of the experiments would be to
identify a single antigen/antibody that could be used to develop an accurate
early pregnancy test in cows. It is assumed that AspenBio will make separate
* Portions of this marked Exhibit have been omitted pursuant to a request for
confidential treatment and filed separately with the Commission.
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arrangements for future mass-production of antibodies required for the final
marketed pregnancy test. We look forward to working closely with scientists at
AspenBio and hope to maintain flexibility so that additional approaches in
developing an early bovine pregnancy test may be implemented as needed.
27.8 Neither COMPANY nor its Affiliates shall originate any publicity,
news release or other public announcement, written or oral, relating to this
Agreement or the existence of an arrangement between the parties, except as
required by law, without the prior written approval of UW, which approval shall
not be unreasonably withheld.
27.9 This Agreement may be executed in any number of counterparts, each
of which shall be deemed an original, but all of which together shall constitute
one and the same instrument.
27.10 Nothing herein shall be deemed to constitute one party as the
agent or representative of the other party or both parties as joint venturers or
partners. Each party is an independent contractor.
IN WITNESS WHEREOF, both UW and COMPANY have executed this Agreement, in
duplicate originals, by their duly authorized representatives on the day and
year hereinafter written.
AspenBio University of Wyoming
By:/s/ Xxxxx Xxxxx By: /s/Xxxxxx Xxxxxxx
--------------------------------- ----------------------------------------
Name:Xxxxx Xxxxx Name: Xxxxxx Xxxxxxx
------------------------------- --------------------------------------
Title:President Title: Vice President
------------------------------ -------------------------------------
Date:10/29/01 Date: 10/25/01
------------------------------- --------------------------------------
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