EXHIBIT 10.12
LICENSE AGREEMENT
This Agreement is made effective this 22nd day of December, 1998 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 filed October 27, 1997; and
WHEREAS, Nutraceutix, Inc. desires to obtain an exclusive worldwide
license under the aforementioned patent application, patents and technical
information related thereto, for application thereof to health supplement
products;
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 agree 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 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.
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1.6 "INVENTOR" shall mean Xxxx Xxxxxxx of the TEMPLE faculty.
1.7 "LICENSED PRODUCT" shall mean any dietary supplement (as
defined in the 1994 Dietary Supplement and Health Education Act), 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. If any item which is
classified on the date of this Agreement as a dietary supplement is subsequently
reclassified otherwise, such item shall nevertheless remain a LICENSED PRODUCT
for all purposes under this Agreement.
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 filed October 27, 1997, 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 "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.
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
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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.
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 and import 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.
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4. PAYMENTS
4.1 In consideration of the license granted to COMPANY under the
terms of this Agreement, COMPANY shall pay to TEMPLE a royalty of [*] for each
one thousand (1,000) tablets of LICENSED PRODUCT 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.
4.3 In further consideration of the license granted to COMPANY
under the terms of this Agreement, COMPANY shall pay to TEMPLE, within thirty
(30) days of the first ANNIVERSARY and annually thereafter, a non-refundable
license maintenance fee 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 shall be [*].
4.4 Royalty payments 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.
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 The financial statements of COMPANY and of its sublicensees
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 books and records of COMPANY and its sublicensees relating to sales
of LICENSED PRODUCT for the purpose of verifying the amount of royalty payments
due. Such examination of books and records of COMPANY and its sublicensees 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 COMPANY is not in agreement with the findings of the
qualified accountant selected by
*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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TEMPLE, then COMPANY shall so notify TEMPLE in writing within thirty (30) days
of receipt by COMPANY of said findings, 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 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
consideration 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
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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 a detailed invoice therefor.
TEMPLE, in its sole discretion, may elect to have its patent counsel submit such
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 of 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.
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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 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.
7.8 In the event TEMPLE licenses any PATENT RIGHTS or TECHNICAL
INFORMATION to anyone other than COMPANY (i.e., for pharmaceutical
applications), COMPANY shall be entitled to receive, and TEMPLE shall remit to
COMPANY immediately upon TEMPLE's receipt thereof one half (1/2) of all revenues
received by TEMPLE from such other licensee(s), whether in the form of license
fees, royalty payments or otherwise ("Licensee Payments"), to a maximum of one
half (1/2) of the full amount expended by COMPANY to prosecute patent
applications and patents for the PATENT RIGHTS, maintain and protect such patent
applications and patents, defend any claim of patent infringement with respect
to the PATENT RIGHTS, or otherwise incurred by COMPANY in connection with
perfecting the PATENT RIGHTS pursuant to this Agreement ("Patent Costs"),
provided such costs have not been previously credited against royalties or other
payments otherwise due to TEMPLE. COMPANY shall have the right to review, copy
and audit TEMPLE's agreements, books and records relating to Licensee Payments
from time to time upon reasonable advanced notice to TEMPLE in order to verify
the amount and timing of TEMPLE's receipt of Licensee Payments. TEMPLE shall
have the right to review, copy and audit COMPANY's books and records relating to
Patent Costs from time to time upon reasonable advanced notice to COMPANY in
order to verify the amount of COMPANY's Patent Costs.
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
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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, Comprehensive 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 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.
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
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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 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.
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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
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 __________________
Xxxxxxx X. St. Xxxx
President
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AMENDMENT TO LICENSE AGREEMENT
This Amendment Agreement is made and entered into as of June l, 1999,
by and between Temple University - Of The Commonwealth System of Higher
Education ("Temple") and Nutraceutix, Inc. ("Nutraceutix").
RECITALS
A. Temple and Nutraceutix are parties to that certain License
Agreement dated and effective December 22, 1998 (the "License").
B. The parties have reached an agreement to add certain
additional licensed products to the License, and wish to memorialize that
agreement.
AGREEMENT
Temple and Nutraceutix therefore agree as follows:
1. Paragraph 1.7 of the License, containing the definition of
"Licensed Product," is hereby deleted and replaced with the
following:
1.7 "LICENSED PRODUCT" shall mean (i) any dietary
supplement (as defined in the 1994 Dietary Supplement and Health
Education Act) (referred to herein as a "SUPPLEMENT") and (ii) any drug
which can be purchased by the general public without a prescription
(referred to herein as an "OTC DRUG"), the manufacture, use or sale of
which SUPPLEMENT or OTC DRUG 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.
If any item which is classified on the date of this Agreement as a
dietary supplement is subsequently reclassified otherwise, such item
shall nevertheless remain a SUPPLEMENT for all purposes under this
Agreement. If any item which is classified on the date of this
Agreement as a drug which can be purchased by the general public
without a prescription is subsequently reclassified otherwise, such
item shall nevertheless remain an OTC DRUG for all purposes under this
Agreement.
2. Paragraph 4.1 of the License, which governs royalty payments
by Nutraceutix to Temple, is hereby deleted and replaced with the following:
4.1 In consideration of the license granted to COMPANY
under the terms of this Agreement, COMPANY shall pay to TEMPLE a
royalty of (i) [*] for each one thousand (1,000) tablets of LICENSED
PRODUCT which are SUPPLEMENTS sold by COMPANY or by its sub-licensees,
and (ii) [*] for each one thousand (1,000) tablets of LICENSED PRODUCT
which are OTC DRUGS sold by COMPANY or by its sub-licensees.
*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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3. Paragraph 4.3 of the License, which governs license
maintenance fee payments by Nutraceutix to Temple, is hereby amended by deleting
the second sentence of that paragraph and replacing it with the following:
The amount of the license maintenance fee payment shall be [*], no more
than one half (1/2) of which may be credited against payments due to
TEMPLE under paragraph 4.1 pertaining to SUPPLEMENTS and no more than
one half (1/2) of which may be credited against payments due to TEMPLE
under paragraph 4.1 pertaining to OTC DRUGS.
4. In consideration of the amendment to the License set forth in
this Amendment Agreement, Nutraceutix shall pay to Temple, on or before July 31,
1999, a non-refundable license fee of [*], which license fee payment shall not
be creditable against any other payments due to Temple under the License.
5. This Amendment Agreement shall constitute an amendment of the
License. Other than to the extent explicitly amended by this Agreement, the
License shall remain in full force and effect.
For Temple University - Of The Commonwealth System of Higher Education:
BY /s/ Xxxxxx X. Xxxxx DATE
------------------------------------------ ------------------
Xxxxxx X. Xxxxx
Vice President, Chief Financial Officer and
Treasurer
For Nutraceutix, Inc.:
BY /s/ Xxxxxxx X. St. Xxxx DATE
------------------------------------------ ------------------
Xxxxxxx X. St. Xxxx
President
*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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