Exhibit 10.1
AMENDED AND RESTATED RESEARCH AND LICENSE AGREEMENT
This Agreement, dated as of October 24, 2002, is by and between: NEW
YORK UNIVERSITY (hereinafter "NYU"), a not for profit corporation organized
and existing under the laws of the State of New York and having a place of
business at 00 Xxxxxxxxxx Xxxxxx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000 and
Nanoscience Technologies, Inc. (hereinafter "CORPORATION"), a corporation
organized and existing under the laws of the State of Nevada having its
principal place of business c/o Xxxxxx X. Xxxxx, 000 Xxxx Xxxxxx, Xxxxx 0000,
Xxx Xxxx, XX 00000.
RECITALS
WHEREAS, Xx. Xxxxxxx X. Xxxxxx of NYU (or any replacement for Xx. Xxxxxx
who the parties hereto agree to in writing, hereinafter referred to as "the
NYU Principal Investigator") has made certain inventions relating to DNA
Nanotechnology, all as more particularly described in pending U.S. patent
applications and issued patents owned by NYU, identified in annexed Appendix
I and forming an integral part hereof (hereinafter "the Pre-Existing
Inventions");
WHEREAS, NYU is willing to perform the NYU Research Project (as
hereinafter defined);
WHEREAS, CORPORATION is prepared to sponsor the NYU Research Project;
WHEREAS, subject to the terms and conditions hereinafter set forth, NYU
is willing to grant to CORPORATION and CORPORATION is willing to accept from
NYU a license to the Pre-Existing Inventions and the intellectual property to
be generated from the Research Project;
WHEREAS, the parties acknowledge that one of the Pre-Existing Inventions
is jointly owned by NYU and the California Institute of Technology
("CalTech") and that, pursuant to an agreement between NYU and CalTech
(attached hereto as Appendix III), NYU has been granted the right to license
such invention in the manner contemplated hereby;
WHEREAS, NYU and CORPORATION have previously entered into a research and
license agreement dated as of October 24, 2002 (the "Research and License
Agreement");
WHEREAS, NYU and CORPORATION desire to amend and restate the Research and
License Agreement in its entirety as of the date hereof;
NOW, THEREFORE, NYU and CORPORATION mutually covenant and agree that the
terms of the Research and License Agreement shall be amended and restated in
their entirety as follows:
1. Definitions.
a. "Affiliate" shall mean any company or other legal entity which
controls, or is controlled by, or is under common control with, CORPORATION;
control means the holding of twenty five and one tenth percent (25.1%) or
more of (i) the capital stock and/or (ii) the voting rights and/or (iii) the
right to elect or appoint directors.
b. "Calendar Year" shall mean any consecutive period of twelve
months commencing on the first day of January of any year.
c. "Field" shall mean nanotechnology, including nano-electronics,
microelectronics, bioanalytics, bio-nanotechnology, chemical analysis,
nanofabrication, molecular manipulation, pharmaceutical, biological, chemical
and materials research and all other engineered, human or animal
applications.
d. "Licensed Products" shall mean any products or services, the
manufacture, use or sale, offer to sell, or importation of which is covered
by a claim of any unexpired NYU Patent which has not been disclaimed or held
invalid by a court of competent jurisdiction from which no appeal can be
taken, or which incorporates or is developed using NYU Know-How or which is
otherwise covered by intellectual property rights licensed pursuant to this
Agreement including, without limitation, the license contained in Section
7(a)(ii).
e. "Net Sales" shall mean the total amount invoiced by CORPORATION
or an Affiliate of CORPORATION in connection with sales of Licensed Products
to any person or entity that is not an Affiliate of CORPORATION, after
deduction of all the following to the extent applicable to such sales;
i) all trade, case and quantity credits, discounts, refunds or
rebates;
ii) allowances or credits for returns;
iii) sales commissions;
iv) sales taxes (including value-added tax); and
v) the cost of freight and insurance on such freight.
f. "NYU Know-How" shall mean the Pre-Existing Inventions and any
information and materials including, but not limited to, pharmaceutical,
chemical, biological and biochemical products, technical and non-technical
data, materials, methods and processes and any drawings, plans, diagrams,
specifications and/or other documents containing such information,
discovered, developed or acquired by, or on behalf of the NYU Researchers
during the term and in the course of the NYU Research Project, or by
employees or consultants of CORPORATION during the term of the NYU Research
Project and which is related to the subject of the work performed in the NYU
Research Project.
g. "NYU" Patents" shall mean all United States and foreign patents
and patent applications, and any divisions, continuations, in whole or in
part, reissues, renewals and extensions thereof, and pending applications
therefore (regardless of when filed):
(1) which claim Pre-Existing Inventions and which are
identified on annexed Appendix I;
(2) which claim inventions that are made, in whole or in
part, by:
i) NYU Researchers during the term and in the course
of the NYU Research Project, and/or
ii) employees or consultants of CORPORATION during the
term of the NYU Research Project and which are
related to the subject of the work performed in
the NYU Research Project; or
(3) which claim improvements made during the term and in the
course of the NYU Research Project to (x) Pre-Existing
Inventions and (y) inventions made during the course of the
NYU Research Project in whole or in part by the NYU
Researchers.
h. "NYU Researchers" shall mean the NYU Principal Investigator and
each NYU student, employee and consultant performing work during the term and
in the course of the NYU Research Project.
i. "NYU Research Project" shall mean the investigations at NYU
during the Research Period (as hereinafter defined) into the Field under the
supervision of the NYU Principal Investigator in accordance with the research
program, described in annexed Appendix II, which forms an integral part
hereof and is incorporated herein. The NYU Research Project may not be
materially amended except in a writing approved by the CORPORATION and NYU.
j. "Research Period" shall mean (i) the 5-year period commencing
on September 15, 2003, (ii) the additional research period referred to in
Section 3.f if CORPORATION elects to extend the research thereunder and (iii)
any extension thereof as to which NYU and CORPORATION shall mutually agree in
writing.
k. "Research Technology" shall mean all NYU Patents and NYU Know-
How.
2. Effectiveness of Agreement.
This Agreement shall be dated as of the date hereof and shall remain in
full force and effect until it expires or is terminated in accordance with
Section 16 hereof; provided that, as a condition precedent to the
effectiveness of this Agreement, (a) the CORPORATION shall have paid NYU the
payment due on September 15, 2003 pursuant to Section 4 (a) and the payment
owing to NYU under Section 6(a); and (b) the parties shall have entered into
a stock purchase agreement in the form attached hereto as Exhibit A.
3. Performance of the NYU Research Project.
a. In consideration of the sums to be paid to NYU as set forth in
Section 4 below, NYU undertakes to perform the NYU Research Project under the
Budget (set forth in Appendix II), under the supervision of the NYU Principal
Investigator during the Research Period. The NYU Research Project and Budget
may be updated annually by NYU and provided to CORPORATION no later than
sixty (60) days prior to the end of each Research year. Any updated Research
Project and Budget shall be subject to review by CORPORATION. If the
modified Research Project and Budget are approved by CORPORATION, they shall
be attached as an amended Appendix II and incorporated herein.
b. If, during the Research Period, NYU becomes aware that the NYU
Principal Investigator intends to cease to supervise the NYU Research
Project, then NYU shall promptly so notify CORPORATION and CORPORATION shall
have the option to terminate its funding of the NYU Research Project
effective on the date that the NYU Principal Investigator ceases to supervise
the NYU Research Project. CORPORATION shall promptly advise NYU in writing
if CORPORATION so elects. Such termination of funding pursuant to this
Section 3(b) shall not terminate the license granted herein, which shall
continue in force and effect for the term of this Agreement. Nothing herein
contained shall be deemed to impose an obligation on NYU to find a
replacement for the NYU Principal Investigator.
c. Nothing contained in this Agreement shall be construed as a
warranty on the part of NYU that any results or inventions will be achieved
by the NYU Research Project, or that the Research Technology and/or any other
results or inventions achieved by the NYU Research Project, if any, are or
will be commercially exploitable and furthermore, NYU makes no warranties
whatsoever as to the commercial or scientific value of the Research
Technology and/or as to any results which may be achieved in the NYU Research
Project.
d. Within sixty (60) days after the end of each quarter of each
year during the Research Period, NYU shall prepare and submit to the
CORPORATION a written report summarizing the results of the work conducted on
the NYU Research Project during the preceding quarter.
e. NYU will have full authority and responsibility for the NYU
Research Project. All students and employees of NYU who work on the NYU
Research Project will do so as employees or students of NYU, and not as
employees of CORPORATION.
f. NYU hereby grants to CORPORATION an option to extend the
Research Period hereunder for an additional five years upon (i) giving
written notice to NYU at any time but no later than the date that is ninety
(90) days prior to the end of the Research Period, (ii) written agreement to
pay to NYU one million dollars ($1,000,000) per year, with quarterly
installments of two hundred and fifty thousand dollars ($250,000) each
payable in advance ninety (90) days prior to the beginning of each quarter,
(iii) written agreement by the parties following good faith negotiation of a
research project description and budget break-down corresponding to such
additional research funding and (iv) execution of any amendments to this
Agreement which are necessary to reflect such additional terms.
4. Funding of the NYU Research Project.
a. As compensation to NYU for work to be performed on the NYU
Research Project during the Research Period, subject to any earlier
termination of the Research Project pursuant to Sections 3(b) hereof,
CORPORATION will pay NYU an aggregate of $1,657,690 according to the
following schedule:
September 15, 2003 $300,000
May 1, 2004 $315,000
May 1, 2005 $330,750
May1, 2006 $347,288
May 1, 2007 $364,652
b. Nothing in this Agreement shall be interpreted to prohibit NYU
(or the NYU Principal Investigator) from obtaining additional financing or
research grants for the NYU Research Project from government agencies which
grants or financing may render all or part of the NYU Research Project and
the results thereof subject to the patent rights of the U.S. Government and
its agencies, as set forth in Title 35 U.S.C. Section 200 et seq.
c. Upon completion of one or more financing(s) by CORPORATION
totaling at least one million U.S. dollars ($1,000,000), CORPORATION shall
promptly notify NYU and discuss in good faith with NYU an increase in the
amount of research funding that the CORPORATION shall provide for the NYU
Research Project hereunder.
5. Title.
a. Subject to the License granted to CORPORATION hereunder, it is
hereby agreed that all right, title and interest, in and to the Research
Technology, and in and to any drawings, plans, diagrams, specifications, and
other documents containing any of the Research Technology shall vest solely
in NYU. At the request of NYU, CORPORATION shall take all steps as may be
necessary to give full effect to said right, title and interest of NYU
including, but not limited to, the execution of any documents that may be
required to record such right, title and interest with the appropriate agency
or government office.
b. Subject to the License granted to CORPORATION hereunder, for so
long as the NYU Principal Investigator is employed by NYU, any and all
inventions made by the NYU Principal Investigator and relating to the Field
shall be owned solely by NYU.
6. Patents and Patent Applications.
a. CORPORATION shall pay to NYU on or before September 15, 2003
$19,162.37 being fifty percent (50%) of all costs and fees incurred by NYU to
date in connection with the patent applications identified in Appendix I
hereto. Upon completion by CORPORATION of one or more financings that total
at least one million dollars ($1,000.000), CORPORATION shall promptly notify
NYU and pay NYU within thirty (30) days the remaining fifty percent (50%) of
any outstanding costs and fees incurred in connection therewith.
b. NYU will promptly disclose to CORPORATION in writing any
inventions which constitute potential NYU Patents. CORPORATION will promptly
disclose to NYU any inventions which constitute potential NYU Patents and
which are conceived by employees or consultants of CORPORATION.
c. At the initiative of CORPORATION or NYU, the parties shall
consult with each other regarding the prosecution of all patent applications
with respect to the Research Technology. Such patent applications shall be
filed, prosecuted and maintained by Xxxxxx and Xxxxxxx or by a law firm
jointly selected by NYU and CORPORATION. Copies of all such patent
applications and all correspondence, including all patent office actions,
shall be forwarded to each of NYU and CORPORATION.
d. NYU and CORPORATION shall each also have the right to have such
patent applications and patent office actions independently reviewed by other
patent counsel separately retained by NYU or CORPORATION, upon prior notice
to and consent of the other party, which consent shall not be unreasonably
withheld.
e. All applications and proceedings with respect to the NYU
Patents shall be filed, prosecuted and maintained by NYU at the expense of
CORPORATION and with CORPORATION's approval of such expenses. Against the
submission of invoices, CORPORATION shall reimburse NYU for fifty percent
(50%) of all costs and fees incurred by NYU until the completion of one or
more financing(s) by CORPORATION totaling at least one million dollars
($1,000,000) and in such case CORPORATION shall then reimburse NYU within
thirty (30) days the remaining fifty percent (50%) of such costs and fees.
Thereafter, CORPORATION shall reimburse NYU one hundred percent (100%) of all
such costs and fees incurred thereafter until termination of this Agreement
within thirty (30) days after receipt of an invoice from NYU. However, NYU
is under no obligation to file maintain or prosecute any patent applications
or patents.
f. NYU and CORPORATION shall assist, and endeavor to cause their
respective employees and consultants to assist each other, in assembling
inventorship information and data for the filing and prosecution of patent
applications on inventions pertaining to the Research Technology.
g. CORPORATION hereby agrees to fund patent applications and
proceedings in the following countries: the United States, the European
Patent Convention Countries, Japan, Canada, Australia, India, Israel, China,
South Korea and Malaysia. In the event that CORPORATION declines to cover
the costs of patent applications and proceedings in any other country or
countries, NYU may, at its expense, pursue such patent applications and
proceedings, and such patents shall not be excluded from the License granted
in Section 7.
h. Nothing herein contained shall be deemed to be a warranty by
NYU that
i) NYU can or will be able to obtain any patent or patents on
any patent application or applications in the NYU Patents
or any portion thereof, or that any of the NYU Patents
will afford adequate or commercially worthwhile
protection, or
ii) that the manufacture, use, or sale of any element of the
Research Technology or any Licensed Product will not
infringe any patent(s) of a third party.
7. Grant of License.
a. Subject to the terms and conditions set forth in this
Agreement, NYU grants to CORPORATION (i) an exclusive worldwide license under
the NYU Patents and NYU Know-How to develop, manufacture, use, sell, offer to
sell, have sold, lease, rent, or import Licensed Products and processes in
the Field, together with the right to grant sublicenses as provided in
Section 7(c) and (ii) a non-exclusive worldwide license under any
improvements to the NYU Patents created by the NYU Principal Investigator
(for so long as the NYU Principal Investigator is employed by NYU) after the
end of the NYU Research Project and prior to the expiration of the term of
this Agreement to develop, manufacture, use, sell, offer to sell, have sold,
lease, rent, or import Licensed Products and processes in the Field, together
with the right to grant sublicenses as provided in Section 7(c)
(collectively, the "License"). Notwithstanding the foregoing exclusive
license contained in Section 7(a)(i), NYU hereby reserves to itself a
license to use the NYU Patents and the NYU Know-How for its own internal
non-profit academic and research purposes.
b. The License granted to CORPORATION in Section 7(a) hereto shall
commence upon the date this Agreement becomes effective in accordance with
Section 2 and shall remain in force on a country-by-country basis, if not
previously terminated under the terms of this Agreement, until the expiration
date of the last to expire of the NYU Patents.
c. CORPORATION shall be entitled to grant sublicenses under the
License on terms and conditions in compliance and not inconsistent with the
terms and condition of this Agreement (except that the rate of royalty may be
at higher rates than those set forth in this Agreement) to Affiliates of
CORPORATION, and to third parties for consideration and in an arms-length
transaction. All sublicenses shall only be granted by CORPORATION under a
written agreement, a copy of which shall be provided by CORPORATION to NYU as
soon as practicable after the signing thereof. Each sublicense granted by
CORPORATION hereunder shall be subject and subordinate to the terms and
conditions of this Agreement and shall contain (inter-alia) the following
provisions:
(1) the sublicense shall expire automatically on the
termination of the License;
(2) the sublicense shall not be assignable, in whole or in
part;
(3) the sublicensee shall not grant further sublicenses;
and
(4) both during the term of the sublicense and thereafter
the sublicensee shall agree to a confidentiality
obligation similar to that imposed on CORPORATION in
Section 11 below, and that the sublicensee shall impose on
its employees, both during the terms of their employment
and thereafter, a similar undertaking of confidentiality;
and
(5) the sublicense agreement shall include the text of
Sections 14 and 15 of this Agreement and shall state that
NYU is an intended third party beneficiary of such
sublicense agreement for the purpose of enforcing such
indemnification and insurance provisions.
8. Payments for License.
a. In consideration for the grant and during the term of the
License, CORPORATION shall pay to NYU:
(1) Non-refundable license issue fees of twenty five thousand
dollars ($25,000) on each of July 1, 2005 and July 1,
2006; fifty thousand dollars ($50,000) on each of July 1,
2007 and 2008; seventy five thousand dollars ($75,000) on
each of July 1, 2009 and 2010, one hundred and twenty five
thousand dollars ($125,000) on each of July 1, 2011, 2012,
2013 and 2014; and one hundred and fifty thousand dollars
($150,000) on each of July 1, 2015, 2016, 2017, 2018 and
2019. The license issue fees commencing on July 1, 2010
and extending through the end of the term of this
Agreement shall be credited against royalty payments due
for the relevant year.
(2) With respect to each Licensed Product, a royalty of five
percent (5%) of the Net Sales of Licensed Products for
pharmaceutical, life science, biotechnology and medical
device research, development and applications, and two
percent (2%) of the Net Sales for all other Licensed
Products, in each case of CORPORATION and any Affiliate of
CORPORATION, and
(3) Ten percent (10%) of any consideration, monetary or
otherwise, received by CORPORATION from a sublicensee of
CORPORATION (other than an Affiliate) under the terms of,
or as a consideration for the grant of, a sublicense of
any rights or for the grant of an option to acquire such a
sublicense, not including funding received by the
CORPORATION for future research and development as
specified in a written agreement with a detailed research
plan and budget.
b. For the purpose of computing the royalties due to NYU
hereunder, the year shall be divided into four parts ending on March 31, June
30, September 30, and December 31. Not later than sixty (60) days after each
March 31, June 30, September 30, and December 31 in each Calendar Year during
the term of the License, CORPORATION shall submit to NYU a full and detailed
report of royalties or payments due NYU under the terms of this Agreement for
the preceding quarter year (hereinafter "the Quarter-Year Report"), setting
forth the Net Sales of CORPORATION and any Affiliate and/or lump sum payments
and all other payments or consideration from sublicensees upon which such
royalties are computed and including at least:
i) the quantity of Licensed Products used, sold transferred
or otherwise disposed of;
ii) the selling price of each Licensed Product;
iii) the deductions permitted under subsection 1(e) hereof to
arrive at Net Sales; and
iv) the royalty computations and subject of payment.
If no royalties or other payments are due, a statement shall be sent to
NYU stating such fact. Payment of the full amount of any royalties or other
payments due to NYU for the preceding half quarter shall accompany each
Quarter-Year Report on royalties and payments. CORPORATION shall keep for a
period of at least six (6) years after the date of entry, full, accurate and
complete books and records consistent with sound business and accounting
practices and in such form and in such detail as to enable the determination
of the amounts due to NYU from CORPORATION pursuant to the terms of this
Agreement.
c. On reasonable notice and during regular business hours, NYU or
an authorized representative of NYU shall each have the right to inspect the
books of accounts, records and other relevant documentation of CORPORATION
and the Affiliates and sublicensees of CORPORATION insofar as they relate to
the production, marketing and sale of the Licensed Products, in order to
ascertain or verify the amount of royalties and other payments due to NYU
hereunder, and the accuracy of the information provided to NYU in the
aforementioned reports. The cost of the audit shall be paid by NYU unless
the auditor discovers that NYU has been underpaid by more than five percent
(5%) of the amount that NYU should have been paid, in which case the
CORPORATION shall reimburse NYU for the cost of the audit and shall pay NYU
three times the amount by which NYU was underpaid.
9. Method of Payment.
a. Royalties and other payments due to NYU hereunder shall be paid
to NYU in United States dollars. Any such royalties on or other payments
relating to transactions in a foreign currency shall be converted into United
States dollars based on the closing buying rate of a major money center bank
in New York City chosen by CORPORATION and applicable to transactions under
exchange regulations for the particular currency on the last business day of
the accounting period for which such royalty or other payment is due and
shall be net of foreign tax credits.
b. CORPORATION shall be responsible for payment to NYU of all
royalties due on sale, transfer or disposition of Licensed Products by
Affiliates of CORPORATION.
10. Development and Commercialization.
a. CORPORATION will use its best efforts to develop and
commercialize Licensed Products in the Field.
b. Provided that applicable laws, rules and regulations require
that the performance of the tests, trials, studies and other activities
contemplated in subsection (a) above shall be carried out in accordance with
FDA Good Laboratory Practices and in a manner acceptable to the relevant
health authorities, CORPORATION shall carry out such tests, trials, studies
and other activities in accordance with FDA Good Laboratory Practices and in
a manner acceptable to the relevant health authorities. Furthermore, the
Licensed Products shall be produced in accordance with FDA Good Manufacturing
Practice ("GMP") procedures in a facility which has been certified by the FDA
as complying with GMP, provided that applicable laws, rules and regulations
so require.
c. CORPORATION shall provide NYU with written reports on all
activities and actions undertaken by CORPORATION to develop and commercialize
the Licensed Products; such reports shall be made within sixty (60) days
after each six (6) months of the duration of this Agreement, commencing six
months after the date this Agreement becomes effective pursuant to Section 2.
11. Confidential Information.
a. Except as otherwise provided in Section 11(b) and 11(c) and 12
below CORPORATION and NYU shall each maintain any and all of the Research
Technology in confidence and shall not release or disclose any tangible or
intangible component thereof to any third party without first receiving the
prior written consent of the other party to said release or disclosure.
b. The obligations of confidentiality set forth in Section 11(a)
shall not apply to any component of the Research Technology which was part of
the public domain prior to the date that this Agreement becomes effective
pursuant to Section 2 or which becomes a part of the public domain not due to
some unauthorized act by or omission of the receiving party after the
effective date of this Agreement determined pursuant to Section 2 or which is
disclosed to the receiving party by a third party who has the right to make
such disclosure.
c. The provisions of Section 11(a) notwithstanding, CORPORATION
may disclose the Research Technology to third parties who need to know the
same in order to secure regulatory approval for the sale of Licensed
Products.
12. Publication.
a. Prior to submission for publication of a manuscript describing
the results of any aspect of the NYU Research Project, NYU shall send
CORPORATION a copy of the manuscript to be submitted, and shall allow
CORPORATION sixty (60) days from the date of such mailing to determine
whether the manuscript contains such subject matter for which patent
protection should be sought prior to publication of such manuscript, for the
purpose of protecting an invention made by the NYU Principal Investigator
during the course and within the term of the NYU Research Project. Should
CORPORATION believe the subject matter of the manuscript contains a
patentable invention, then, prior to the expiration of such 60-day period
from the mailing date of such manuscript to CORPORATION by NYU, CORPORATION
shall give written notification to NYU of:
i) its determination that such manuscript contains patentable
subject matter for which patent protection should be
sought; and
ii) the countries in which such patent protection should be
sought.
b. After the expiration of such 60-day period from the date of
mailing such manuscript to CORPORATION, unless NYU has received the written
notice specified above from CORPORATION, NYU shall be free to submit such
manuscript for publication and to publish the disclosed research results in
any manner consistent with academic standards.
c. Upon receipt of such written notice from CORPORATION, NYU will
thereafter delay submission of the manuscript for an additional period of up
to sixty (60) days to permit the preparation and filing in accordance with
Section 6 hereof of a U.S. patent application by NYU on the subject matter to
be disclosed in such manuscript. After expiration of such 60-day period, or
the filing of a patent application on each such invention, whichever shall
occur first, NYU shall be free to submit the manuscript and to publish the
disclosed results.
13. Infringement of NYU Patent.
a. In the event a party to this Agreement acquires information
that a third party is infringing one or more of the NYU Patents, the party
acquiring such information shall promptly notify the other party to the
Agreement in writing of such infringement.
b. In the event of an infringement of an NYU Patent, CORPORATION
shall be privileged but not required to bring suit against the infringer.
Should CORPORATION elect to bring suit against an infringer and NYU is joined
as a party plaintiff in any such suit, NYU shall have the right to approve
the counsel selected by CORPORATION to represent CORPORATION and NYU, such
approval not to be unreasonably withheld. NYU agrees to join such suit as a
party plaintiff, upon request of CORPORATION, if it is necessary to grant
standing to CORPORATION to bring such a suit. The expense of such suit or
suits that CORPORATION elects to bring, including any expenses of NYU
incurred in conjunction with the prosecution of such suit or the settlement
thereof, shall be paid for entirely by CORPORATION and CORPORATION shall hold
NYU free, clear and harmless from and against any and all costs of such
litigation, including attorneys' fees. CORPORATION shall not compromise or
settle such litigation without the prior written consent of NYU, which shall
not be unreasonably withheld.
c. In the event CORPORATION exercises the right to xxx herein
conferred, it shall have the right to first reimburse itself out of any sums
recovered in such suit or in settlement thereof for all costs and expenses of
every kind and character, including reasonable attorneys' fees, necessarily
involved in the prosecution of any such suit, and if after such
reimbursement, any funds shall remain from said recovery, CORPORATION shall
promptly pay to NYU an amount equal to twenty five percent (25%) of such
remainder and CORPORATION shall be entitled to receive and retain the balance
of the remainder of such recovery.
d. If CORPORATION does not bring suit against said infringer
pursuant to Section 13(b) herein, or has not commenced negotiations with said
infringer for discontinuance of said infringement, within ninety (90) days
after receipt of such notice, NYU shall have the right, but shall not be
obligated, to bring suit for such infringement. Should NYU elect to bring
suit against such infringer and CORPORATION is joined as a party plaintiff in
any such suit, CORPORATION shall have the right to approve the counsel
selected by NYU to represent NYU and CORPORATION, such approval not to be
unreasonably withheld, and NYU shall hold CORPORATION free, clear and
harmless from and against any and all costs and expenses of such litigation,
including attorneys' fees. If requested by NYU, CORPORATION will use
reasonable efforts to join such suit as a party plaintiff; provided that (i)
if CORPORATION does not join such suit following a request from NYU,
CORPORATION shall not be entitled to the 25% share of any recovery in such
suit provided below, and (ii) if CORPORATION's joinder as a party plaintiff
is necessary in order to grant standing to NYU to bring such suit,
CORPORATION shall, upon request, join such suit as a party plaintiff. If
CORPORATION has commenced negotiations with an alleged infringer of the NYU
Patent for discontinuance of such infringement within such 90-day period,
CORPORATION shall have an additional ninety (90) days from the termination of
such initial 90-day period to conclude its negotiations before NYU may bring
suit for such infringement. In the event NYU brings suit for infringement
of any NYU Patent, NYU may, following consultation with CORPORATION, settle
such suit by licensing the alleged infringer to continue to make, use and
sell the allegedly infringing product or process in its then-present form.
In the event NYU brings suit for infringement of any NYU Patent, NYU shall
have the right to first reimburse itself out of any sums recovered in such
suit or settlement thereof for all costs and expenses of every kind and
character, including reasonable attorneys' fees necessarily involved in
the prosecution of such suit, and if after such reimbursement, any funds
shall remain from said recovery, NYU shall promptly pay to CORPORATION
an amount equal to twenty five percent (25%) of such remainder and NYU
shall be entitled to receive and retain the balance of the remainder of
such recovery.
e. Each party shall always have the right to be represented by
counsel of its own selection in any suit for infringement of the NYU Patents
instituted by the other party to this Agreement under the terms hereof. The
expense of such counsel shall be borne by the party retaining such additional
counsel.
f. CORPORATION agrees to cooperate fully with NYU at the request
of NYU, including, by giving testimony and producing documents lawfully
requested in the prosecution of any suit by NYU for infringement of the NYU
Patents; provided, NYU shall pay all reasonable expenses (including
attorneys' fees) incurred by CORPORATION in connection with such cooperation.
NYU shall cooperate and shall endeavor to cause the NYU Principal
Investigator to cooperate with CORPORATION at the request of CORPORATION,
including by giving testimony and producing documents lawfully requested, in
the prosecution of any suit by CORPORATION for infringement of the NYU
Patents; provided, that CORPORATION shall pay all reasonable expenses
(including attorneys' fees) incurred by NYU in connection with such
cooperation.
14. Liability and Indemnification.
a. CORPORATION shall indemnify, defend and hold harmless NYU,
CalTech and their respective trustees, officers, medical and professional
staff, employees, students and agents and their respective successors, heirs
and assigns (the "Indemnitees"), against any liability, damage, loss or
expense (including reasonable attorneys' fees and expenses of litigation)
incurred by or imposed upon the Indemnitees or any one of them in connection
with any claims, suits, actions, demands or judgments (i) arising out of the
design, production, manufacture, sale, use in commerce or in human clinical
trials, lease, or promotion by CORPORATION or by an Affiliate, licensee or
agent of CORPORATION of any Licensed Product, process or service relating to,
or developed pursuant to, this Agreement or (ii) arising out of any other
activities to be carried out pursuant to this Agreement.
b. With respect to an Indemnitee, CORPORATION's indemnification
under subsection a(i) of this Section 14 shall apply to any liability,
damage, loss or expense whether or not it is attributable to the negligent
activities of such Indemnitee. CORPORATION's indemnification obligation
under subsection a(ii) of this Section 14 shall not apply to any liability,
damage, loss or expense to the extent that it is attributable to the
negligent activities of any such Indemnitee.
c. CORPORATION agrees, at its own expense, to provide attorneys
reasonably acceptable to NYU to defend against any actions brought to filed
against any Indemnitee with respect to the subject of indemnity to which such
Indemnitee is entitled hereunder, whether or not such actions are rightfully
brought.
15. Security for Indemnification.
a. At such time as any Licensed Product, process or service
relating to, or developed pursuant to, this Agreement is being commercially
distributed or sold (other than for the purpose of obtaining regulatory
approvals) by CORPORATION or by an Affiliate, licensee or agent of
CORPORATION, CORPORATION shall at its sole cost and expense, procure and
maintain policies of comprehensive general liability insurance in amounts not
less than $10,000,000.00 per incident and $20,000,000.00 annual aggregate and
naming the Indemnitees as additional insureds. Such comprehensive general
liability insurance shall provide (i) product liability coverage and (ii)
broad form contractual liability coverage for CORPORATION's indemnification
under Section 14 of this Agreement. If CORPORATION elects to self-insure all
or part of the limits described above (including deductibles or retentions
which are in excess of $250,000 annual aggregate) such self-insurance program
must be acceptable to NYU. If CORPORATION is unable to obtain such
insurance, NYU shall discuss in good faith with Corporation whether such
amounts may be modified. In the event CORPORATION is unable to obtain
insurance in the above-specified amounts in the available insurance market,
CORPORATION and NYU shall agree upon alternative amounts which can be
obtained in the available insurance market.
The minimum amounts of insurance coverage required under this Section 15
shall not be construed to create a limit of CORPORATION's liability with
respect to its indemnification under Section 14 of this Agreement.
b. CORPORATION shall provide NYU with written evidence of such
insurance upon request of NYU. CORPORATION shall provide NYU with written
notice at least sixty (60) days prior to the cancellation, non-renewal or
material change in such insurance; if CORPORATION does not obtain replacement
insurance providing comparable coverage within such sixty (60) day period,
NYU shall have the right to terminate this Agreement effective at the end of
such sixty (60) day period without notice or any additional waiting periods.
c. CORPORATION shall maintain such comprehensive general liability
beyond the expiration of termination of this Agreement during (i) the period
that any product, process or service relating to, or developed pursuant to,
this Agreement is being commercially distributed or sold (other than for the
purpose of obtaining regulatory approvals) by CORPORATION or by a sublicensee
or agent of CORPORATION and (ii) a reasonable period after the period
referred to in (c)(i) above which in no event shall be less than fifteen (15)
years.
16. Expiry and Termination.
a. Unless earlier terminated pursuant to this Section 16, hereof,
this Agreement shall expire upon the expiration of the period of the License
in each country as set forth in Section 7(b) above.
b. At any time prior to expiration of this Agreement, either party
may terminate this Agreement forthwith for cause, as "cause" is described
below, by giving written notice to the other party. Cause for termination by
one party of this Agreement shall be deemed to exist if the other party
materially breaches or defaults in the performance or observance of any of
the provisions of this Agreement and such breach or default is not cured
within sixty (60) days or in the case of failure to pay any amounts due
hereunder, thirty (30) days (unless otherwise specified herein) after the
giving of notice by the other party specifying such breach or default, or if
either NYU or CORPORATION discontinues its business or becomes insolvent or
bankrupt. Notwithstanding the foregoing, in the event of a material breach
of Section 3 of this Agreement by NYU with respect to which notice has been
given to NYU and NYU has failed to cure during the relevant cure period, and
which thereafter (i) has been finally adjudicated and confirmed to be a
material breach in a court of competent jurisdiction in an action involving
the parties or (ii) has been agreed to be a breach by NYU and CORPORATION in
writing, including without limitation a situation where the Principal
Investigator is not performing the NYU Research Project, CORPORATION asserts
this is the case and NYU agrees, then CORPORATION may elect to terminate the
research portion of this Agreement but continue the license portion of this
Agreement on the terms provided herein; provided that CORPORATION shall
continue making all payments to NYU provided by this Agreement throughout any
period during which a dispute or litigation is pending.
c. Any amount payable hereunder by one of the parties to the
other, which has not been paid by the date on which such payment is due,
shall bear interest from such date until the date on which such payment is
made, at the rate of two percent (2%) per annum in excess of the prime rate
prevailing at the Citibank, N.A., in New York, during the period of arrears
and such amount and the interest thereon may be set off against any amount
due, whether in terms of this Agreement or otherwise, to the party in default
by any non-defaulting party.
d. In the event that this Agreement expires or is terminated under
Section 16(b), all rights in and to the Research Technology shall revert to
NYU, and CORPORATION shall not be entitled to make any further use whatsoever
of the Research Technology.
e. Termination of this Agreement shall not relieve either party of
any obligation to the other party incurred prior to such termination.
f. Section 5, 11, 14, 15, 16, 20 and 21 hereof shall survive and
remain in full force and effect after any termination, cancellation or
expiration of this Agreement.
g. In the event that the CORPORATION does not pay the First
Payments (as defined in the Stock Purchase Agreement of even date herewith
between the CORPORATION and NYU (the "Stock Agreement")) to NYU by the FP Due
Date (as defined in the Stock Agreement), then this Agreement shall
automatically terminate.
17. Representation and Warranties by CORPORATION.
CORPORATION hereby represents and warrants to NYU as follows:
(1) CORPORATION is a corporation duly organized, validly existing
and in good standing under the laws of the State of Nevada. CORPORATION has
been granted all requisite power and authority to carry on its business and
to own and operate its properties and assets. The execution, delivery and
performance of this Agreement have been duly authorized by the Board of
Directors of CORPORATION.
(2) There is no pending or, to CORPORATION's knowledge, threatened
litigation involving CORPORATION which would have any effect on this
Agreement or on CORPORATION's ability to perform its obligations hereunder;
and
(3) There is no indenture, contract, or agreement to which
CORPORATION is a party or by which CORPORATION is bound which prohibits or
would prohibit the execution and delivery by CORPORATION of this Agreement or
the performance or observance by CORPORATION of any term or condition of this
Agreement.
18. Representations and Warranties by NYU.
NYU hereby represents and warrants to CORPORATION as follows:
(1) NYU is a corporation duly organized, validly existing and in
good standing under the laws of the State of New York. NYU has been granted
all requisite power and authority to carry on its business and to own and
operate its properties and assets. The execution, delivery and performance
of this Agreement have been duly authorized by the Board of Trustees of NYU.
(2) There is no pending or, to NYU's knowledge, threatened
litigation involving NYU which would have any effect on this Agreement or on
NYU's ability to perform its obligations hereunder; and
(3) There is no indenture, contract, agreement or legal obligation
to which NYU is a party or by which NYU is bound which prohibits or would
prohibit the execution and delivery by NYU of this Agreement or the
performance or observance by NYU of any term or condition of this Agreement.
(4) NYU has been granted the right by CalTech to grant the license
hereunder to the Pre-Existing Invention which is jointly owned by NYU and
CalTech in the manner contemplated by this Agreement.
19. No Assignment.
Neither CORPORATION nor NYU shall have any right to assign, delegate
or transfer at any time to any party, in whole or in part, any or all of the
rights, duties and interest herein granted without first obtaining the
written consent of the other to such assignment; provided that CORPORATION
may assign all of its rights and obligations hereunder to a third party to
whom CORPORATION is selling all or substantially all of its assets or with
whom CORPORATION's Board of Directors approves an acquisition of the stock of
CORPORATION if the following requirements are met: (i) the third party is
actively engaged in the same business as CORPORATION or a commercially
similar business and is knowledgeable and experienced in dealing with
technology of the type licensed pursuant to this Agreement, (ii) the third
party has the financial capacity to acquire the assets or stock of
CORPORATION and carry out the business of CORPORATION as contemplated by this
Agreement, (iii) CORPORATION shall provide NYU with reasonable notice that it
has entered into good faith negotiations with a third party with respect to
such a transaction, but in any event within five (5) business days after
entering into any such negotiations, shall provide NYU with reasonable and
periodic updates with respect to such negotiations and shall provide notice
of CORPORATION'S intent to actually enter into any such transaction as soon
as is practicable, and (iv) the third party executes an agreement accepting
the assignment of this agreement and assuming all of the obligations of
CORPORATION hereunder, which agreement shall be delivered to NYU concurrently
with the consummation of the transaction.
20. Use of Name.
Without the prior written consent of the other party, neither CORPORATION
nor NYU shall use the name of the other party or any adaptation thereof or of
any staff member, employee or student of the other party:
i) in any product labeling, advertising, promotional or sales
literature;
ii) in connection with any public or private offering or in
conjunction with any application for regulatory approval,
unless disclosure is otherwise required by law, in which
case either party may make factual statements concerning
the Agreement or file copies of the Agreement after
providing the other party with an opportunity to comment
and reasonable time within which to do so on such
statement in draft.
Except as provided herein, neither NYU nor CORPORATION will issue public
announcements about this Agreement or the status or existence of the NYU
Research Project without prior written approval of the other party. NYU
acknowledges that CORPORATION is a public company and has certain obligations
to make disclosures under applicable law; NYU agrees to use all reasonable
efforts to promptly consider any request for approval made by CORPORATION
hereunder to enable CORPORATION to comply with such obligations.
21. Miscellaneous.
a. In carrying out this Agreement the parties shall comply with
all local, state and federal laws and regulations including but not limited
to, the provisions of Title 35 United States Code Sec. 200 et seq. and 15 CFR
Sec. 368 et seq.
b. If any provision of this Agreement is determined to be invalid
or void, the remaining provisions shall remain in effect.
c. This Agreement shall be deemed to have been made in the State
of New York and shall be governed and interpreted in all respects under the
laws of the State of New York.
d. The parties agree that any dispute arising under this Agreement
shall be resolved in an action in the courts of New York State or the federal
courts located in New York State, and each party agrees not to initiate an
action in any other jurisdiction. Each party hereby consents to submit to
personal jurisdiction in such New York State or federal courts in any such
action and to not raise any objection to such jurisdiction.
e. All payments or notices required or permitted to be given under
this Agreement shall be given in writing and shall be effective when either
personally delivered or deposited, postage prepaid, in the United States
registered or certified mail, addressed as follows:
To NYU:
New York University
Office of Industrial Liaison
000 Xxxxx Xxxxxx, 0xx Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxx X. Xxxxxxxxxx
Executive Director
Industrial Liaison/Technology Transfer
and
Office of Legal Counsel
New York University
Xxxxx Library
00 Xxxxxxxxxx Xxxxxx Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxx Xxxxxx
Associate General Counsel
To CORPORATION:
Nanoscience Technologies, Inc.
000 Xxxx Xxxxxx
Xxxxx 0000
Xxx Xxxx, XX 00000
Attention: Xxxxxx X. Xxxxx
and
Attention: Xxxxxxx X. Xxxxxxx, P.C.
Attorney at Law
0000 Xxxxx Xxxxxxxx Xxxxx, Xxxxx 000
Xxxxx, Xxxx 00000
or such other address or addresses as either party may hereafter specify by
written notice to the other. Such notices and communications shall be deemed
effective on the date of delivery or fourteen (14) days after having been
sent by registered or certified mail, whichever is earlier. Each party shall
promptly give notice to the other if it changes its address.
f. This Agreement (and the annexed Appendices) constitute the
entire Agreement between the parties and no variation, modification or waiver
of any of the terms or conditions hereof shall be deemed valid unless made in
writing and signed by both parties hereto. This Agreement supersedes any and
all prior agreements or understandings, whether oral or written between
CORPORATION and NYU.
g. No waiver by either party of any non-performance or violation
by the other party of any of the covenants, obligations or agreements of such
other party hereunder shall be deemed to be a waiver of any subsequent
violation or non-performance of the same or any other covenant, agreement or
obligation, nor shall forbearance by any party be deemed to be a waiver by
such party of its rights or remedies with respect to such violation or non-
performance.
h. The descriptive headings contained in this Agreement are
included for convenience and reference only and shall not be held to expand,
modify or aid in the interpretation, construction or meaning of this
Agreement.
i. It is not the intent of the parties to create a partnership or
joint venture or to assume partnership responsibility or liability. The
obligations of the parties shall be limited to those set out herein and such
obligations shall be several and not joint.
[Signatures on following page]
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
effective as of the date and year first above written.
NEW YORK UNIVERSITY
By: ________________________
Xxxxx X. Xxxxxxxxxx
Executive Director
Industrial Liaison/Technology Transfer
Date: _________________
CORPORATION
By: _________________
Name: _________________
Title: _________________
Date: _________________
Appendix I
US Patent 5,278,051 - "SOLID SUPPORT METHODOLOGY FOR CONSTRUCTION OF
GEOMETRICAL OBJECTS FROM DNA"
US Patent 5,386,020 - "MULTIPLY CONNECTED THREE-DIMENSIONAL NUCLEIC ACID
STRUCTURES
US Patent 5,468,851 - "SOLID SUPPORT METHODOLOGY FOR CONSTRUCTION OF
GEOMETRICAL OBJECTS FROM DNA"
US Patent 6,072,044 - "NANOCONSTRUCTIONS OF GEOMETRICAL OBJECTS AND
ANTIPARALLEL NUCLEIC ACID DOUBLE CROSSOVER MOLECULES"
US Patents - 6,255,469 "PERIODIC TWO AND THREE DIMENSIONAL NUCLEIC ACID
STRUCTURES"
Application No. 60/358,365 - "POLYNUCLEIC ACID NANOMECHANICAL DEVICE
CONTROLLED BY HYBRIDIZATION TOPOLOGY"
Application No. 60/473,915 - "NUCLEIC ACID NYLON LADDER COPOLYMERS"
Application No. not yet assigned - "A SEQUENCE SPECIFIC BIPEDAL DNA
NANOMOTOR"
