Exhibit 99.1
PUBLIC HEALTH SERVICE
PATENT LICENSE AGREEMENT-NONEXCLUSIVE
COVER PAGE
Patent License Number: A047-03____________________________________
Serial Number(s) of Licensed Patent(s):
US Patent Application Serial No. 10/086,773entitled "Lighted Line," filed
February 28,2002.
Licensee: Advanced Illumination Technologies, Inc.
000 Xxxxx Xxxxxxx Xxxxxx
Xxxxx Xxxx, Xxxxxxx 00000
CRADA Number (if applicable):
Additional Remarks: ADVANCED ILLUMINATION TECHNOLOGIES, INC. PLANS TO BE
IMMEDIATELY ACQUIRED BY GLOTECH INDUSTRIES INC.
Address:
Glotech Industries, Inc.
0000 X.X. Xxxxxxxxx Xx.
Xxxxx 000
Xxxxxxxxxxx, Xxxxxxx 00000
Public Benefit (s): Enhancement of miner safety as well as
enhanced safety of other work and recreational activities.
This Patent License Agreement, hereinafter referred to as the "Agreement,"
consists of this Cover Page, an attached Agreement, a Signature Page,
Appendix A (List of Patent(s) or Patent
Application(s)), Appendix B (Fields of Use and Territory), Appendix C
(Royalties), Appendix 0
(Modifications), Appendix E (Benchmarks), and Appendix F (Commercial
Development Plan). The Parties to this Agreement are:
1) The National Institutes of Health ("NIH"), the Centers for Disease
Control and Prevention ("CDC"), or the Food and Drug Administration
("FDA"), hereinafter singly or collectively referred to as "PHS," agencies
of the United States Public Health Service within the Department of Health
and Human Services ("DHHS"); and
2) The person, corporation, or institution identified above and/or on the
Signature Page, having offices at the address indicated on the
Signature Page, hereinafter referred to as "Licensee,"
PHS PATENT LICENSE AGREEMENT-NONEXCLUSIVE
PHS and Licensee agree as follows:
BACKGROUND
1.01 In the course of conducting biomedical and behavioral
research, PHS investigators made inventions that may have
commercial applicability.
1.02 By assignment of rights from PHS employees and other
inventors, DHHS, on behalf of the United States Government, owns
intellectual property rights claimed in any United. States and/or
foreign patent applications or patents corresponding to the
assigned inventions. DHHS also owns any tangible embodiments of
these inventions actually reduced to practice by PHS.
1.03 The Secretary of DHHS has delegated to PHS the
authority to enter into this Agreement for the licensing of
rights to these inventions.
1.04 PHS desires to transfer these inventions to the private
sector through commercialization licenses to facilitate the
commercial development of products and processes for public use
and benefit.
1.05 Licensee desires to license these inventions for commercial use.
DEFINITIONS
2.01 "Benchmarks" mean the performance milestones that are set forth
in Appendix E.
2.02 "Commercial Development Plan" means the written
commercialization plan attached as Appendix F.
2.03 "First Commercial Sale" means the initial transfer by
or on behalf of Licensee or its sublicensees of Licensed Products
or the initial practice of a Licensed Process by or on behalf of
Licensee or its sublicensees in exchange for cash or some
equivalent to which value can be assigned for the purpose of
determining Net Sales.
2.04 "Government" means the Government of the United States of
America.
2.05 "Licensed Fields of Use" means the field(s) of use identified in
Appendix B.
2.06 "Licensed Patent Rights" shall mean:
a) Patent applications including provisional patent applications
and PCT patent applications, and/or patents listed in Appendix
A, all divisions and continuations of these applications, all
patents issuing from such applications, divisions, and
continuations, and any reissues, reexaminations, and
extensions of all such patents;
b) to the extent that the following contain one or more
claims directed to the invention or inventions disclosed in a)
above: i) continuations-in-part of a) above; ii) all divisions
and continuations of these continuations-in-part; iii) all
patents issuing from such continuations-in-part, divisions,
and continuations; and iv) any reissues, reexaminations, and
extensions of all such patents;
c) to the extent that the following contain one or more
claims directed to the invention or inventions disclosed in a)
above: all counterpart foreign applications and patents to a)
and b) above, including those listed in Appendix A.
Licensed Patent Rights shall not include b) or c) above to the
extent that they contain one or more claims directed to new matter
which is not the subject matter disclosed in a) above.
2.07 "Licensed Process(es)" means processes which, in the
course of being practiced would, in the absence of this
Agreement, infringe one or more claims of the Licensed Patent
Rights that have not been held invalid or unenforceable by an
unappealed or unappealable judgment of a court of competent
jurisdiction.
2.08 "Licensed Product(s)" means tangible materials which,
in the course of manufacture, use, offer to sell, sale, or
importation would in the absence of this Agreement, infringe one
or more claims of the Licensed Patent Rights that have not been
held invalid or unenforceable by an unappealed or unappealable
judgment of a court of competent jurisdiction.
2.09 "Licensed Territory" means the geographical area
identified in Appendix B.
2.10 "Net Sales" means the total gross receipts for sales of
Licensed Products or practice of Licensed Processes by or on
behalf of Licensee or its sublicensees, and from leasing,
renting, or otherwise making Licensed Products available to
others without sale or other dispositions, whether invoiced or
not, less returns and allowances, packing costs, insurance costs,
freight out taxes or excise duties imposed on the transaction (if
separately invoiced), and wholesaler and cash discounts in
amounts customary in the trade to the extent actually granted. No
deductions shall be made for commissions paid to individuals,
whether they be with independent sales agencies or regularly
employed by Licensee, or sublicensees, and on its payroll. or for
the cost of collections.
2.11 "Practical Application" means to manufacture in the
case of a composition or product, to practice in the case of a
process or method, or to operate in the case of a machine or
system: and in each case, under such conditions as to establish
that the invention is being utilized and that its benefits are to
the extent permitted by law or Government regulations available
to the public on reasonable terms.
GRANT OF RIGHTS
3.01 PHS hereby grants and Licensee accepts, subject to the
terms and conditions of this Agreement. a nonexclusive license
under the Licensed Patent Rights in the Licensed Territory to
make and have made, to use and have used, and to sell and have
sold, to offer to sell, and to import any Licensed Products in
the Licensed Fields of Use and to practice and have practiced any
Licensed Processes in the Licensed Fields of Use.
3.02 This Agreement confers no license or rights by
implication, estoppel, or otherwise under any patent applications
or patents of PHS other than Licensed Patent Rights regardless of
whether such patents are dominant or subordinate to Licensed
Patent Rights.
SUBLICENSING
4.01 Upon written approval by PHS, which approval will not
be unreasonably withheld, Licensee may enter into sublicensing
agreements under the Licensed Patent Rights.
4.02 Licensee agrees that any sublicenses granted by it
shall provide that the obligations to PHS of Paragraphs 5.01
5.02, 8.01, 10.01, 10.02, 12.05 and 13.07.13.08 of this Agreement
shall be binding upon the sublicensee as if it were a party to
this Agreement. Licensee further agrees to attach copies of these
Paragraphs to all sublicense agreements.
4.03 Any sublicenses granted by Licensee shall provide for
the termination of the sublicense, or the conversion to a license
directly between such sublicensees and PHS, at the option of the
sublicensee, upon termination of this Agreement under Article 13.
Such conversion is subject to PHS approval and contingent upon
acceptance by the sublicensee of the remaining provisions of this
Agreement.
4.04 Licensee agrees to forward to PHS a copy of each fully
executed sublicense agreement postmarked within thirty (30) days
of the execution of such agreement. To the extent permitted by
law, PHS agrees to maintain each such sublicense agreement in
confidence.
STATUTORY AND PHS REOUIREMENTS AND RESERVED GOVERNMENT RIGHTS
5.01 Prior to the First Commercial Sale, Licensee agrees to
provide PHS reasonable quantities of Licensed Products or
materials made through the Licensed Processes for PHS research
use.
5.02 Licensee agrees that products used or sold in the
United States embodying Licensed Products or produced through use
of Licensed Processes shall be manufactured substantially in the
United States, unless a written waiver is obtained in advance
from PHS.
ROYALTIES AND REIMBURSEMENT
6.01 Licensee agrees to pay to PHS a noncredltable,
nonrefundable license issue royalty as set forth in Appendix C
within thirty (30) days from the date that this Agreement becomes
effective.
6.02 Licensee agrees to pay to PHS a nonrefundable minimum
annual royalty as set forth in Appendix C. The minimum annual
royalty is due and payable on January 1 of each calendar year and
may be credited against any earned royalties due for sales made
in that year. The minimum annual royalty due for the first
calendar year of this Agreement may be prorated according to the
fraction of the calendar year remaining between the effective
date of this Agreement and the next subsequent January 1.
6.03 Licensee agrees to pay PHS earned royalties as set
forth in Appendix C.
6.04 Licensee agrees to pay PHS benchmark royalties as set
forth in Appendix C and Appendix E.
6.05 A patent or patent application licensed under this
Agreement shall cease to fall within the Licensed Patent Rights
for the purpose of computing the earned royalty and payments in
any given country on the earliest of the dates that a) the
application has been abandoned and not continued, b) the patent
expires or irrevocably lapses, or c) the claim has been held to
be invalid or unenforceable by an unappealed or unappealable
decision of a court of competent jurisdiction or administrative
agency.
6.06 No multiple royalties shall be payable because any
Licensed Products or Licensed Processes are covered by more than
one of the Licensed Patent Rights.
6.07 On sales of Licensed Products by Licensee to
sublicensees or affiliated parties or on sales made in other than
an arm's. length transaction, the value of the Net Sales
attributed under this Article 6 to such a transaction shall be
that which would have been received in an arm's-length
transaction, based on sales of like quantity and quality products
on or about the time of such transaction.
6.08 With regard to expenses associated with the
preparation, filing, prosecution, and maintenance of all patent
applications and patents included within the Licensed Patent
Rights incurred by PHS prior to the effective date of this
Agreement, Licensee shall pay to PHS, as an additional royalty,
within sixty (60) days of PHS's submission of a statement and
request for payment to Licensee, an amount equivalent to such
patent expenses previously incurred by PHS.
6.09 With regard to expenses associated with the
preparation, filing, prosecution, and maintenance of all patent
applications and patents included within the Licensed Patent
Rights incurred by PHS on or after the effective date of this
Agreement, PHS, at its sole option, may require Licensee:
A. To pay PHS on an annual basis, within sixty (60)
days of PHS's submission of a statement and request for
payment, a royalty amount equivalent to a prorated share of
all such patent expenses incurred during the previous
calendar year(s); or
B. To pay such expenses directly to the law firm employed by PHS
to handle such functions. However, in such event, PHS and not
Licensee shall be the client of such law firm.
Licensee's prorated share of patent expenses shall be determined
by dividing the patent expenses by the number of licensees of the
patent at the time the expenses were incurred.
In limited circumstances, Licensee may be given the right to
assume responsibility for the preparation, filing, prosecution,
or maintenance of any patent application or patent included with
the Licensed Patent Rights. In that event, licensee shall
directly pay the attorneys or agents engaged to prepare, file,
prosecute or maintain such patent applications or patents and
shall provide to PHS copies of each invoice associated with such
services as well as documentation that such invoices have been
paid.
6.10 Licensee may elect to surrender its rights in any
country of the Licensed Territory under any Licensed Patent
Rights upon ninety (90) days written notice to PHS and owe no
payment obligation under Article 6.10 for patent-related expenses
incurred in that country after the effective date of such written
notice.
PAIENT FILING. PROSECUTION. AND MAINTENANQE.
7.01 PHS agrees to take responsibility for the preparation,
filing, prosecution, and maintenance of any and all patent
applications or patents included in the Licensed Patent Rights.
RECORD KEEPING
8.01 Licensee agrees to keep accurate and correct records of
Licensed Products made, used, sold, or imported and Licensed
Processes practiced under this Agreement appropriate to determine
the amount of royalties due PHS. Such records shall be retained
for at least five (5) years following a given reporting period,
and shall be available during normal business hours for
inspection at the expense of PHS by an accountant or other
designated auditor selected by PHS for the sole purpose of
verifying reports and payments hereunder. The accountant or
auditor shall only disclose to PHS information relating to the
accuracy of reports and payments made under this Agreement. If an
inspection shows an underreporting or underpayment in 5 excess of
five percent (5%) for any twelve (12) month period, then Licensee
shall reimburse PHS for the cost of the inspection at the time
Licensee pays the unreported royalties. including any late
charges as required by Paragraph 9.07 of this Agreement. All
payments required under this Paragraph shall be due within thirty
(30) days of the date PHS provides Licensee notice of the payment
due.
8.02 Licensee agrees to conduct an audit of sales and
royalties conducted by an independent auditor at least every two
(2) years if annual sales of the Licensed Product or Licensed
Processes are over two (2) million dollars. The audit shall
address, at a minimum, the amount of gross sales by or on behalf
of Licensee during the audit period, terms of the license as to
percentage or fixed royalty to be remitted to the Government, the
amount of royalty funds owed to the Government under this
Agreement, and whether the royalty amount owed has been paid to
the Government and is reflected in the records of the Licensee.
The audit shall also indicate the PHS license number, product,
and time period being audited. A report certified by the auditor
shall be submitted promptly by the auditor directly to PHS on
completion Licensee shall pay for the entire cost of the audit.
REPORTS ON PROGRESS, BENCHMARKS, SALES, AND PAYMENTS
9.01 Prior to signing this Agreement, Licensee has provided
to PHS the Commercial Development Plan at Appendix F, under which
Licensee intends to bring the subject matter of the Licensed
Patent Rights to the point of Practical Application. This
Commercial Development Plan is hereby incorporated by reference
into this Agreement. Based on this plan, performance Benchmarks
are determined as specified in Appendix E.
9.02 Licensee shall provide written annual reports on its
product development progress or efforts to commercialize under
the Commercial Development Plan for each of the Licensed Fields
of Use within sixty (60) days after December 31 of each calendar
year. These progress reports shall include, but not be limited to
progress on research and development, status of applications for
regulatory approvals, manufacturing, marketing, importing, and
sales during the preceding calendar year, as well as plans for
the present calendar year. PHS also encourages these reports to
include information on any of Licensee's public service
activities that relate to the Licensed Patent Rights. If reported
progress differs from that projected in the Commercial
Development Plan and Benchmarks, Licensee shall explain the
reasons for such difference. In any such annual report, Licensee
may propose amendments to the Commercial Development Plan,
acceptance of which by PHS may not be denied unreasonably.
Licensee agrees to provide any additional information reasonably
required by PHS to evaluate Licensee's performance under this
Agreement. Licensee may amend the Benchmarks at any time upon
written consent by PHS. PHS shall not unreasonably withhold
approval of any request of Licensee to extend the time periods of
this schedule if such request is supported by a reasonable
showing by Licensee of diligence in its performance under the
Commercial Development Plan and toward bringing the Licensed
Products to the point of practical application as defined in 37
CFR 404.3(d). Licensee shall amend the Commercial Development
Plan and Benchmarks at the request of PHS to address any Licensed
Fields of Use not specifically addressed in the plan originally
submitted.
9.03 Licensee shall report to PHS the dates for achieving
Benchmarks specified in Appendix C and/or Appendix E and the
First Commercial Sale in each country in the Licensed Territory
within thirty (30) days of such occurrence.
9.04 Licensee shall submit to PHS within sixty (60) days
after each calendar half-year ending June 30 and December 31 a
royalty report setting forth for the preceding half-year period
the amount of the Licensed Products sold or Licensed Processes
practiced by or on behalf of Licensee in each country within the
Licensed Territory, the Net Sales, and the amount of royalty
accordingly due. With each such royalty report, Licensee shall
submit payment of the earned royalties due. If no earned
royalties are due to PHS for any reporting period, the written
report shall so state. The royalty report shall be certified as
correct by an authorized officer of Licensee and, shall include a
detailed listing of all deductions made under Paragraph 2.10 to
determine Net Sales made under Article 6 to determine royalties
due.
9.05 Royalties due under Article 6 shall be paid in U.S.
dollars. For conversion of foreign currency to U.S. dollars, the
conversion rate shall be the New York foreign exchange rate
quoted in The Wall Street Journal on the day that the payment is
due. All checks and bank drafts shall be drawn on United States
banks and shall be payable, as appropriate, to "CDC/ Technology
Transfer" and shall reference the licensing agreement number
assigned by the Centers for Disease Control and Prevention (CDC).
All payments required by the Agreement shall be sent to the
following address: Centers for Disease Control and Prevention,
Technology Transfer Office, 0000 Xxxxxxx Xxxx, X.X., (XX-X00),
Xxxxxxx, Xxxxxxx 00000. Any loss of exchange, value, taxes or
other expenses Incurred In the transfer or conversion to U.S.
dollars shall be paid entirely by Licensee. The royalty report
required by Paragraph 9.04 of this Agreement shall accompany each
such payment and a copy of such report shall also be mailed to
PHS at its address for notices indicated on the Signature Page of
this Agreement.
9.06 Licensee shall be solely responsible for determining if
any tax on royalty income is owed outside the United States and
shall pay any such tax and be responsible for all filings with
appropriate agencies of foreign governments.
9.07 Interest and penalties may be assessed by PHS on any
overdue payments in accordance with the Federal Debt Collection
Act. The payment of such late charges shall not prevent PHS from
exercising any other rights it may have as a consequence of the
lateness of any payment.
9.08 All plans and reports required by this Article 9 and
marked "confidential" by Licensee shall, to the extent permitted
by law, be treated by PHS as commercial and financial information
obtained from a person and as privileged and confidential, and
any proposed disclosure of such records by the PHS under the
Freedom of Information Act, 5 U.S.C. 552 shall be subject to
the pre-disclosure notification requirements of 45 CFR 5.65(d).
PERFORMANCE
10.01 Licensee shall use its reasonable best efforts to bring
the License Products and Licensed Processes to Practical
Application. "Reasonable best efforts" for the purposes of this
provision shall include adherence to the Commercial Development
Plan at Appendix F and performance of the Benchmarks at Appendix
E. The efforts of a sublicensee shall be considered the efforts
of Licensee.
10.02 Upon the First Commercial Sale, until the expiration of
this Agreement, Licensee shall use its reasonable best efforts to
make Licensed Products and Licensed Processes reasonably
accessible to the United States public.
INFRINGEMENT AND PATENT ENFORCEMET
11.01 PHS and Licensee agree to notify each other promptly of
each infringement or possible infringement of the Licensed Patent
Rights, as well as any facts which may affect the validity,
scope, or enforceability of the Licensed Patent Rights of which
either Party becomes aware.
11.02 In the event that a declaratory judgment action
alleging invalidity of any of the Licensed Patent Rights shall be
brought against PHS, PHS agrees to notify Licensee that an action
alleging invalidity has been brought. PHS does not represent that
it will commence legal action to defend against a declaratory
action alleging invalidity. Licensee shall take no action to
compel the Government either to initiate or to join in any such
declaratory judgment action. Should the Government be made a
party to any such suit by motion or any other action of Licensee,
Licensee shall reimburse the Government for any costs, expenses,
or fees which the Government incurs as a result of such motion or
other action. Upon Licensee's payment of all costs incurred by
the Government as a result of Licensee's joinder motion or other
action, these actions by Licensee will not be considered a
default in the performance of any material obligation under this
Agreement.
NEGATION OF WARRANTIES AND INDEMNIFICATION
12.01 PHS offers no warranties other than those specified in
Article 1.
12.02 PHS does not warrant the validity of the Licensed
Patent Rights and makes no representations whatsoever with regard
to the scope of the Licensed Patent Rights, or that the Licensed
Patent Rights may be exploited without infringing other patents
or other intellectual property rights of third parties.
12.03 PHS MAKES NO WARRANTIES, EXPRESSED OR IMPLIED, OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OF ANY
SUBJECT MATTER DEFINED BY THE CLAIMS OF THE LICENSED PATENT
RIGHTS OR TANGIBLE MATERIALS RELATED THERETO.
12.04 PHS does not represent that it will commence legal
actions against third parties infringing the Licensed Patent
Rights.
12.05 Licensee shall indemnify and hold PHS, its employees,
students, fellows, agents, and consultants harmless from and
against all liability, demands, damages, expenses, and losses,
including but not limited to death, personal injury, illness, or
property damage in connection with or arising out of a) the use
by or on behalf of Licensee, its sublicensees, directors,
employees, or third parties of any Licensed Patent Rights, or b)
the design, manufacture, distribution, or use of any Licensed
Products, Licensed Processes or materials by Licensee, or other
products or processes developed in connection with or arising out
of the Licensed Patent Rights. Licensee agrees to maintain a
liability insurance program consistent with sound business
practice.
TERM AND MODIFICATION OF RIGHT
13.01 This Agreement is effective when signed by all parties
and shall extend to the expiration of the last to expire of the
Licensed Patent Rights unless sooner terminated as provided in
this Article 13.
13.02 In the event that Licensee is in default in the
performance of any material obligations under this Agreement,
including but not limited to the obligations listed in Article
13.05, and if the default has not been remedied within ninety
(90) days after the date of notice in writing of such default,
PHS may terminate this Agreement by written notice, and pursue
outstanding amounts owed through procedures provided by the
Federal Debt Collection Act.
13.03 In the event that Licensee becomes insolvent, files a
petition in bankruptcy, has such a petition filed against it,
determines to file a petition in bankruptcy, or receives notice
of a third party's intention to file an involuntary petition in
bankruptcy, Licensee shall immediately notify PHS in writing.
Furthermore, PHS shall have the right to terminate this Agreement
immediately upon Licensee's receipt of written notice.
13.04 Licensee shall have a unilateral right to terminate
this Agreement and/or any licenses in any country by giving PHS
sixty (60) days written notice to that effect.
13.05 PHS shall specifically have the right to terminate or
modify, at its option, this Agreement, if PHS determines that the
Licensee: 1) is not executing the Commercial Development Plan
submitted with its request for a license and the Licensee cannot
otherwise demonstrate to PHS's satisfaction that the Licensee has
taken, or can be expected to take within a reasonable time,
effective steps to achieve practical application of the Licensed
Products or Licensed Processes; 2) has not achieved the
Benchmarks as may be modified under Paragraph 9.02; 3) has
willfully made a false statement of, or willfully omitted, a
material fact in the license application or in any report
required by the license agreement; 4) has committed a material
breach of a covenant or agreement contained in the license; 5) is
not keeping Licensed Products or Licensed Processes reasonably
available to the public after commercial use commences; 6) cannot
reasonably satisfy unmet health and safety needs; or 7) cannot
reasonably justify a failure to comply with the domestic
production requirement of Paragraph 5.02 unless waived. In making
this determination, PHS will take into account the normal course
of such commercial development programs conducted with sound and
reasonable business practices and judgment and the annual reports
submitted by Licensee under Paragraph 9.02. Prior to invoking
this right, PHS shall give written notice to Licensee
providing Licensee specific notice of, and a ninety (90) day
opportunity to respond to, PHS's concerns as to the previous
items 1) to 7). If Licensee fails to alleviate PHS's concerns as
to the previous items 1) to 7) or fails to initiate corrective
action to PHS's satisfaction, PHS may terminate this Agreement.
13.06 PHS reserves the right according to 35 U.S.C.
209(f)(4) to terminate or modify this Agreement if it is
determined that such action is necessary to meet requirements for
public use specified by federal regulations issued after the date
of the license and such requirements are not reasonably satisfied
by Licensee.
13.07 Within thirty (30) days of receipt of written notice of
PHS's unilateral decision to modify or terminate this Agreement,
Licensee may, consistent with the provisions of 37 CFR 404.11,
appeal the decision by written submission to the designated PHS
official. The decision of the designated PHS official shall be
the final agency decision. Licensee may thereafter exercise any
and all administrative or judicial remedies that may be
available.
13.08 Within ninety (90) days of termination of this
Agreement under this Article 13, a final report shall be
submitted by Licensee. Any royalty payments, including those
incurred but yet paid (e.g., full minimum annual royalty), and
those related to patent expense, due to PHS shall become
immediately due and payable upon termination or expiration. If
terminated under this Article 13, sublicensees may elect to
convert their sublicenses to direct licenses with PHS pursuant to
Paragraph 4.03. Unless otherwise specifically provided for under
this Agreement, upon termination or expiration of this Agreement,
Licensee shall return all Licensed Products or materials included
within the Licensed Patent Rights to PHS or provide PHS with
certification of the destruction thereof.
GENERAL PROVISIONS
14.01 Neither Party may waive or release any of its rights or
interests in this Agreement except in writing. The failure of the
Government to assert a right hereunder or to insist upon
compliance with any term or condition of this Agreement shall not
constitute a waiver of that right by the Government or excuse a
similar subsequent failure to perform any such term or condition
by Licensee.
14.02 This Agreement constitutes the entire agreement between
the Parties relating to the subject matter of the Licensed Patent
Rights, and all prior negotiations, representations, agreements,
and understandings are merged into, extinguished by, and
completely expressed by this Agreement.
14.03 The provisions of this Agreement are severable, and in
the event that any provision of this Agreement shall be
determined to be invalid or unenforceable under any controlling
body of law, such determination shall not in any way affect the
validity or enforceability of the remaining provisions of this
Agreement.
14.04 If either Party desires a modification to this
Agreement, the Parties shall, upon reasonable notice of the
proposed modification by the Party desiring the change, confer in
good faith to determine the desirability of such modification. No
modification will be effective until a written amendment is
signed by the signatories to this Agreement or their designees.
14.05 The construction, validity, performance, and effect of
this Agreement shall be governed by Federal law as applied by the
Federal courts in the District of Columbia.
14.06 All notices required or permitted by this Agreement
shall be given by prepaid, first class, registered or certified
mail properly addressed to the other Party at the address
designated on the following Signature Page, or to such other
address as may be designated in writing by such other Party.
Notices shall be considered timely if such notices are received
on or before the established deadline date or sent on or before
the deadline date as verifiable by U.S. Postal Service postmark
or dated receipt from a commercial carrier. Parties should
request a legibly dated U.S. Postal Service postmark or obtain a
dated receipt from a commercial carrier or the U.S. Postal
Service. Private metered postmarks shall not be acceptable as
proof of timely mailing.
14.07 This Agreement shall not be assigned by Licensee except
a) with the prior written consent of PHS, such consent not to be
withheld unreasonably; or b) as part of a sale or transfer of
substantially the entire business of Licensee relating to
operations which concern this Agreement. Licensee shall notify
PHS within ten (10) days of any assignment of this Agreement by
Licensee, and Licensee shall pay PHS, as an additional royalty,
one percent (1 %) of the fair market value of any consideration
received for any assignment of this Agreement within thirty (30)
days of such assignment.
14.08 Licensee agrees in its use of any PHS-supplied
materials to comply with all applicable statutes, regulations,
and guidelines, Including PHS and DHHS regulations and
guidelines. Licensee agrees not to use the materials for research
involving human subjects or clinical trials in the United States
without complying with 21 CFR Part 50 and 45 CFR Part 46.
Licensee agrees not to use the materials for research involving
human subjects or clinical trials outside of the United States
without notifying PHS, in writing, of such research or trials and
complying with the applicable regulations of the appropriate
national control authorities. Written notification to PHS of
research involving human subjects or clinical trials outside of
the United States shall be given .I no later than sixty (60) days
prior to commencement of such research or trials.
14.09 Licensee acknowledges that it is subject to and agrees
to abide by the United States laws and regulations (including the
Export Administration Act of 1979 and Arms Export Control Act)
controlling the export of technical data, computer software,
laboratory prototypes, biological material, and other
commodities. The transfer of such items may require a license
from the cognizant Agency of the U.S. Government or written
assurances by Licensee that it shall not export such items to
certain foreign countries without prior approval of such agency.
PHS neither represents that a license is or is not required or
that, if required, it shall be issued.
14.10 Licensee agrees to xxxx the Licensed Products or their
packaging sold in the United States with all applicable U.S.
patent numbers and similarly to indicate "Patent Pending" status.
14.11 By entering into this Agreement, PHS does not directly
or indirectly endorse any product or service provided, or to be
provided, by Licensee whether directly or indirectly related to
this Agreement. Licensee shall not state or imply that this
Agreement is an endorsement by the Government, PHS, any other
Government organizational unit, or any Government employee.
Additionally, Licensee shall not use the names of NIH, COG, PHS,
or DHHS or the Government or their employees in any advertising,
promotional, or sales literature without the prior written
consent of PHS.
14.12 The Parties agree to attempt to settle amicably any
controversy or claim arising under this Agreement or a breach of
this Agreement, except for appeals of modifications or
termination decisions provided for in Article 13. Licensee agrees
first to appeal any such unsettled claims or controversies to the
designated PHS official, or designee, whose decision shall be
considered the final agency decision. Thereafter, Licensee may
exercise any administrative or judicial remedies that may be
available.
14.13 Nothing relating to the grant of a license, nor the
grant itself, shall be construed to confer upon any person any
immunity from or defenses under the antitrust laws or from a
charge of patent misuse, and the acquisition and use of rights
pursuant to 37 CFR Part 404 shall not be immunized from the
operation of state or Federal law by reason of the source of the
grant.
14.14 Paragraphs 4.03, 8.01, 9.06-9.08, 12.01-12.05, 13.08,
13.09, and 14.12 of this Agreement shall survive termination of
this Agreement.
SIGNATURES BEGIN ON NEXT PAGE
PHS PATENT LICENSE AGREEMENT-NONEXCLUSIVE
SIGNATURE PAGE
For PHS:
/s/Xxxxxx Xxxxxxx 06/19/03
______________________________________ __________
Signature of Authorized PHS Official Date
Xxxxxx Xxxxxxx, X.X., Ph.D.
Director
Technology Transfer Office
Centers for Disease Control and Prevention
Mailing Address for Notices: Technology Transfer Office
Centers for Disease Control and Prevention
0000 Xxxxxxx Xxxx, X.X.
Mailstop E-67
Xxxxxxx, Xxxxxxx 00000 XXX
For Licensee (Upon, information and belief, the undersigned expressly
certifies or affirms that the contents of any statements of Licensee made
or referred to in this document are truthful and accurate.):
by:
/s/ Xxx Xxxxxx 06/10/2003
_______________________________ ______________
Signature of Authorized Official Date
Xxx Xxxxxx
__________
Printed Name
Title: President/ Advanced Illumination Technologies. Inc.
Official and Mailing Address for Notices: 000 Xxxxx Xxxxxxx Xxxxxx
Xxxxx Xxxx, Xxxxxxx 00000
Any false or misleading statements made, presented, or submitted to the
Government, including any relevant omissions, under this Agreement and
during the course of negotiation of this Agreement are subject to all
applicable civil and criminal statutes including Federal statutes 31
U.S.C. 3801.3812 (civil liability) and 18 U.S.C. 1001 (criminal
liability including fine(s) and/or imprisonment).
APPENDIX A--Patent(s) or Patent Application(s)
Patent(s) or Patent Application(s):
US Patent Application Serial No.10/086,773entitled "Lighted Line,"
filed February 28, 2002.
APPENDIX B--Licensed Field(s) of Use and Territory
Licensed Field(s) of Use:
All fields of use encompassed by Licensed Patent Rights.
Licensed Territory:
Worldwide
APPENDIX C--Royalties
Royalties:
Licensee agrees to pay to PHS a noncreditable, nonrefundable license issue
royalty in the amount of five thousand dollars ($5,000.00 USD) payable
within thirty (30) days from the date of this Agreement becomes effective.
Licensee agrees to pay to PHS a nonrefundable minimum annual royalty as
follows:
Two Thousand Five Hundred dollars ($2,500) due and payable on January 1, 2004;
Seven Thousand Five Hundred dollars ($7,500) due and payable on January 1,
2005; Ten Thousand dollars ($10,000) on January 1, 2006; and
Fifteen Thousand dollars ($15,000) due and payable on January 1 of 2007
and each succeeding year during the term of this Agreement.
Licensee agrees to pay PHS earned royalties on Net Sales by or on behalf
of Licensee as follows:
Royalty of three percent (3%) of Net Sales on Licensed Products for
Licensed Field of Use
Licensee agrees to pay PHS sublicensing royalties as follows:
Fifty percent (50%) of all royalties, payments, fees, and income received
from sublicensees, but no less than one and one-half percent (1.5%).
Licensee agrees to pay PHS benchmark royalties as follows:
None
APPENDIX D--Modifications
PHS and Licensee agree to the following modifications to the Articles and
Paragraphs of this Agreement:
6.08 Delete
6.10 Delete.
13.01 Replace with the following:
This Agreement is effective when signed by all parties and shall
extend for the shorter twenty (20) years or to the expiration of
the last to expire of the Licensed Patent Rights unless sooner
terminated as provided in this Article 13.
APPENDIX E--Benchmarks and Performance
Licensee agrees to the following Benchmarks for its performance under this
Agreement and, within thirty (30) days of achieving a Benchmark, shall
notify PHS that the Benchmark has been achieved.
None
APPENDIX F--Commercial Development Plan
Licensee shall expend reasonable efforts and resources to carry out the
development and marketing plan submitted with Licensee's application for a
license and to bring the Licensed Patent Rights to the point of practical
application as defIDed in Title 37 of the Code of Federal Regulations,
Section 404.3(d). Licensee shall offer Licensed Products for sale within
eighteen (18) months of the Effective Date of this Agreement unless this
period is extended by mutual agreement of the parties. PHS shall not
unreasonably withhold approval of any request by Licensee to extend this
period if such request is supported by evidence of reasonable efforts by
Licensee to bring the Licensed Patent Rights to practical application,
including any reasonable and diligent application for regulatory approvals
required by any Government agency.