Exhibit 10.6
STRATEGIC ALLIANCE
This Strategic Alliance is Made and effective this __________________, by and
between UTEK CORPORATION, offices located at 000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx
Xxxx, Xxxxxxx 00000 and Xxxxx Xxxxxxx University offices located at 000 X. Xxxxx
Xxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxx 00000. Now, therefore, both parties agree as
follows:
1. Xxxxx Xxxxxxx University seeks to develop an off-balance sheet vehicle to
bring its intellectual property and technology to the marketplace. The goal
of which is to generate on-going royalties to enhance The Xxxxx Xxxxxxx
University research capabilities and reward faculty whose patents are
licensed, in addition to developing sponsored research activities.
2. UTEK CORPORATION (UTEK) has the mission to build a bridge between
university-based technology and public companies that can rapidly bring new
products to the marketplace.
3. UTEK will review XXXXX XXXXXXX UNIVERSITY specified existing technologies and
new disclosures to gauge their potential for successful commercialization. If
a specific technology seems promising to UTEK (and XXXXX XXXXXXX UNIVERSITY
agreed), XXXXX XXXXXXX UNIVERSITY will apply for a patent (if it does not
already have one), with XXXXX XXXXXXX UNIVERSITY as the assignee. UTEK will
receive a 12-month exclusive, royalty-free license option for the technology
for some or all fields of use. UTEK would then use its best efforts to find a
corporate licensee or otherwise commercialize the technology at terms
acceptable to XXXXX XXXXXXX UNIVERSITY. If UTEK finds a XXXXX XXXXXXX
UNIVERSITY acceptable licensee, royalties for the technology will be paid
directly by the licensee to XXXXX XXXXXXX UNIVERSITY. If UTEK is unable to
find a XXXXX XXXXXXX UNIVERSITY acceptable licensee or corporate partner for
the technology by the end of this 12- month period, then all option rights to
the technology will revert back to XXXXX XXXXXXX UNIVERSITY, unless both
parties agree to extend. The defined Exclusive Option Agreement is contained
in Exhibit A. When XXXXX XXXXXXX UNIVERSITY desires to have UTEK merchandise
a specific technology and UTEK agrees, both parties will execute a copy of
the Exclusive Option Agreement with the appropriate technology, field-of-use
and term descriptions.
4. The term of this strategic alliance is for a period of five years, commencing
on the date above.
5. Either party may terminate this Agreement at any time with sixty days written
notice.
6. During the term of this Agreement, both parties shall not disclose to anyone
any confidential information. "Confidential Information" for the purposes of
this Agreement shall include proprietary and confidential information such
as, but not limited to, technology plans, research and development plans,
designs, models, software, product specifications, Marketing plans, patent
applications, disclosures and new concepts.
Confidential information shall not include any information that:
A. Is disclosed without restriction.
B. Becomes publicly available through no act of the recipient.
C. Is rightfully received by either party from a third party.
D. Is disseminated in publications.
If UTEK customers need to review XXXXX XXXXXXX UNIVERSITY confidential
information to determine their interest in licensing a specific property, UTEK
will have the customer execute a XXXXX XXXXXXX UNIVERSITY approved
confidentiality and non-disclosure agreement. A copy of this signed agreement
will be provided to XXXXX XXXXXXX UNIVERSITY.
7. This Agreement shall be governed by and be construed in accordance with the
laws of the state of Maryland.
8. This Agreement constitutes the final understanding and agreement between the
parties with respect to the subject matter hereof and supersedes all prior
negotiations, understandings and agreements between the parties, whether
written or oral. This Agreement may be amended, supplemented or changed, only
by an Agreement in writing, signed by both of the parties.
9. Any notice to be given or otherwise given pursuant to this Agreement shall be
in writing and shall be hand delivered, mailed by certified mail, return
receipt requested or sent by overnight courier service as follows:
UTEK CORPORATION
000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx Xxxx, Xxxxxxx 00000
XXXXX XXXXXXX UNIVERSITY
000 X. Xxxxx Xxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxx 00000
10. If any term of this Agreement is held by a court of competent jurisdiction
to be invalid or unenforceable, then this Agreement, including all of the
remaining terms, will remain in full force and effect as if such invalid or
unenforceable term had never been included.
IN WITNESS WHEREOF, this Agreement has been executed by the Parties as of the
date first above written.
UTEK CORPORATION XXXXX XXXXXXX UNIVERSITY
--------------------------------- -----------------------------------
By: Xxxxxxxx X. Xxxxx, Ph.D., CEO By: Xxxx X.Xxxxxxx, CFA-Director
Office of Technology Transfer
Exhibit A
Exclusive Option Agreement
This Exclusive Option Agreement is made and effective this ________________, by
and between UTEK CORPORATION (UTEK), offices located at 000 Xxxxx Xxxxxxx
Xxxxxx, Xxxxx Xxxx, Xxxxxxx 00000 and XXXXX XXXXXXX UNIVERSITY offices located
at 000 X. Xxxxx Xxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxx 00000. Now, therefore, both
parties agree as follows:
1. XXXXX XXXXXXX UNIVERSITY hereby grants to UTEK an exclusive option to
license on an exclusive basis the following technology:
Technology Description
Title:
Patent #: Date Applied for:
Date Awarded:
Patent Application #: Date Applied for:
Inventors:
Copyright: [yes or no] If yes than provide description:
Date Applied for:
Field of Use: All [yes or no] If no then describe limited fields of use:
Territory: World-wide [yes or no] If no then describe limited territory:
2. The term for this exclusive option is 12 months unless extended by agreement
of both parties in writing.
3. During the term of this option, UTEK will use its best efforts to
merchandise the above-described technology at terms acceptable to XXXXX
XXXXXXX UNIVERSITY. XXXXX XXXXXXX UNIVERSITY may accept or reject, at its'
discretion, any offer presented by UTEK for the licensing of this
technology.
4. During the term of this option, XXXXX XXXXXXX UNIVERSITY will use its best
efforts to provide UTEK with the information it requires to market the
above-described technology.
5. This Agreement shall be governed by and be construed in accordance with the
laws of the state of Xxxxxxxx 00000.
6. This Agreement constitutes the final understanding and agreement between the
parties with respect to the subject matter hereof and supersedes all prior
negotiations, understandings and agreements between the parties, whether
written or oral. This Agreement may be amended, supplemented or changed,
only by an Agreement in writing, signed by both of the parties.
7. Any notice to be given or otherwise given pursuant to this Agreement shall
be in writing and shall be hand delivered, mailed by certified mail, return
receipt requested or sent by overnight courier service as follows:
UTEK CORPORATION
000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx Xxxx, Xxxxxxx 00000
XXXXX XXXXXXX UNIVERSITY
000 X. Xxxxx Xxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxx 00000
8. If any term of this Agreement is held by a court of competent jurisdiction to
be invalid or unenforceable, then this Agreement, including all of the remaining
terms, will remain in full force and effect as if such invalid or unenforceable
term had never been included.
IN WITNESS WHEREOF, this Agreement has been executed by the Parties as of the
date first above written.
UTEK CORPORATION XXXXX XXXXXXX UNIVERSITY
--------------------------------- ------------------------------------
By: Xxxxxxxx X. Xxxxx, Ph.D., CEO By: Xxxx X. Xxxxxxx, CFA-Director
Office of Technology Transfer
