NORTH CAROLINA A&T STATE UNIVERSITY MATERIALS MONITORING TECHNOLOGIES, INC. LICENSE AGREEMENT
Exhibit 10.13
This
Agreement is made by and between North Carolina A&T State (hereinafter
referred to as “NCAT”), a constituent institution of the University of North
Carolina System and an educational institution organized under the laws of North
Carolina, and having its principal office at 0000 Xxxx Xxxxxx Xxxxxx,
Xxxxxxxxxx, Xxxxx Xxxxxxxx 00000, and Materials Monitoring Technologies, Inc.
(“hereinafter referred to as “LICENSEE”), a corporation having its principal
place of business at 0000 Xxxx Xxxxxx, Xxxxx, Xxxxxxx
00000.
WHEREAS, Xx. Xxxxxx Xxxxxxxxxx, et al have discovered an invention(s) entitled Sensor Array System and System for Damage Location Using a Single Channel Continuous Acoustic Emission Sensor, and NCAT owns all rights, title, and interest in and to the invention and the Patent Rights (as hereinafter defined) pertaining to such invention; and
WHEREAS, NCAT has the right to grant licenses to the foregoing invention, and wishes to have the invention perfected and marketed at the earliest possible time in order that products resulting therefrom may be available for public use and benefit; and
WHEREAS, NCAT is willing to grant a license to LICENSEE to the Patent Rights subject to the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the premises and the mutual covenants set forth herein, and for good and valuable consideration, the receipt and sufficiency of which is acknowledged, the parties hereto, intending to be legally bound, agree as follows:
WHEREAS, Xx. Xxxxxx Xxxxxxxxxx, et al have discovered an invention(s) entitled Sensor Array System and System for Damage Location Using a Single Channel Continuous Acoustic Emission Sensor, and NCAT owns all rights, title, and interest in and to the invention and the Patent Rights (as hereinafter defined) pertaining to such invention; and
WHEREAS, NCAT has the right to grant licenses to the foregoing invention, and wishes to have the invention perfected and marketed at the earliest possible time in order that products resulting therefrom may be available for public use and benefit; and
WHEREAS, NCAT is willing to grant a license to LICENSEE to the Patent Rights subject to the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the premises and the mutual covenants set forth herein, and for good and valuable consideration, the receipt and sufficiency of which is acknowledged, the parties hereto, intending to be legally bound, agree as follows:
ARTICLE
1 - DEFINITIONS
1.01
- “Patent Rights” means the United States patent
applications identified below and any patent now issued or hereafter
issuing on any such patent applications, as well as continuations, divisions,
continuations-in-part to the extent the claims are directed to subject matter
specifically described in US
Patents 6,399,939 and 7,075,424, or reissues thereof.
1.02
- “Field” or “Field of Use” means the structural
health monitoring of bridges and railroads application of the Subject
Technology.
1.03
- “Licensed Product” means any product, process or
use thereof (a) which is dominated by an unexpired claim contained in the Patent
Rights in the country in which the Licensed Product(s) is made, used, sold or
transferred and/or (b) which is manufactured by using a process which is
dominated by an unexpired claim contained
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in the Patent Rights in the country in which the Licensed Product(s) is made, used, sold or transferred.
1.04 - “Net Sales” means LICENSEE’s gross receipts for the sale, use and transfer of Licensed Products, less the sum of the following:
(a) Discounts allowed in amounts customary in the trade;
(b) Sales, tariff duties and/or use taxes directly imposed and with reference to particular sales;
(c) Outbound transportation prepaid or allowed; and
(d) Amounts allowed or credited on returns.
No deductions
may be made for commissions paid to individuals whether they be independent
sales agents or regularly employed by LICENSEE and on its payroll, nor for the
cost of collections. Licensed Products are considered “sold” when
billed out or invoiced. Net Sales in the case of Licensed Products used or
transferred by LICENSEE means the fair market value of Licensed Products as if
they were sold to an unrelated third party in similar quantities.
1.05 - “Affiliate” or “Affiliates” means (i) any corporation, company or other entity in which LICENSEE owns or controls at least ten percent (10%) of the stock entitled to vote in election of members of the Board of Directors; or (ii) any corporation, company or other entity which owns or controls at least ten percent (10%) of the stock of LICENSEE.
1.05 - “Affiliate” or “Affiliates” means (i) any corporation, company or other entity in which LICENSEE owns or controls at least ten percent (10%) of the stock entitled to vote in election of members of the Board of Directors; or (ii) any corporation, company or other entity which owns or controls at least ten percent (10%) of the stock of LICENSEE.
1.06
- “Effective Date” means August
2, 2006.
ARTICLE
2 - LICENSE
2.01
- NCAT grants to LICENSEE and LICENSEE accepts from
NCAT, upon the terms and conditions herein specified, an exclusive license to
make, have made, use and sell Licensed Products, with the right to
sublicense. Such license is worldwide and remains in effect, on a country
by country basis, until the full end of the term or terms for which Patent
Rights are issued, unless sooner terminated as hereinafter provided. The
foregoing notwithstanding, LICENSEE’s rights and license are subject to the
rights of the U.S. Government pursuant to any funding agreement between NCAT and
the Government.
2.02
- LICENSEE may grant sublicenses and extend any
license granted to LICENSEE to its Affiliates. Any such sublicenses or
extensions are subject to the terms of this Agreement and may be no less
favorable to NCAT than is this license. A copy of each sublicense must be
provided to NCAT no later than 45 days after execution date. LICENSEE
agrees to be responsible for the performance hereunder by its Affiliates and
sublicensees, if any. If this Agreement is terminated for any reason, LICENSEE
agrees to assign all such sublicenses directly to NCAT.
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2.03 - NCAT shall have the right to practice the Invention(s) and use the Technology for its own bona fide research, including sponsored research and Small Business Innovative Research (SBIR) collaborations. NCAT shall have the right to publish any information included in under this invention with reasonably notice to LICENSEE.
2.04
- The license granted hereunder does not confer any
rights upon LICENSEE by implication, estoppel or otherwise as to any technology
not part of the Patent Rights licensed hereunder.
2.05
- LICENSEE agrees that any products constituting
Licensed Products or produced through the use of Licensed Products will be
manufactured substantially in the United States to the extent required by 35
U.S.C. Sec. 204, if such statute is applicable.
ARTICLE
3 - DUE DILIGENCE
3.01
- LICENSEE must diligently pursue the development
of Licensed Products. This will include manufacturing or producing a Licensed
Product for testing, development, and sale, and also seeking required
governmental approvals, if applicable, of such Licensed Product. In
addition to this general commitment to diligence, LICENSEE agrees to the
following diligence requirements:
(a) Licensee will support a program of collaborative research under the direction of Xx. Xxxxxx Xxxxxxxxxx. This program shall be governed by a separate Development Agreement between the parties.
(b) Within three (3) months from the Effective Date of this Agreement, LICENSEE shall deliver to NCAT a report showing LICENSEE’s plans for commercializing the Subject Technology.
(c) LICENSEE must commercialize Licensed Products according to the following schedule:(1) days after a working prototype is developed, Licensee will offer the product for commercial sale.
3.02
- LICENSEE will use its best efforts to have the
Subject Technology cleared for marketing in those countries in which LICENSEE
intends to sell Licensed Products by the responsible government agencies
requiring such clearance. To accomplish such clearances at the earliest
possible date, LICENSEE agrees to file, according to the usual practice of
LICENSEE, any necessary data with such government agencies. Should
LICENSEE terminate this Agreement, LICENSEE agrees to assign its full interest
and title in such market clearance application, including all data relating
thereto, to NCAT at no cost to NCAT.
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3.03 - Failure by LICENSEE to comply with the provisions of this Article 3 results in NCAT having the right, at its option, to convert any exclusive license to a non-exclusive license, or to cancel the license upon thirty (30) days notice, and to require a reversion of rights to all relevant materials, research information and technology, including Patent Rights, transferred to LICENSEE by NCAT. The LICENSEE will have the opportunity to cure the failure to comply within thirty (30) days of receipt of notice. If the failure to comply is not cured within that time, the termination will be effective as of the thirtieth (30th) day after receipt of notice.
ARTICLE
4 - LICENSE FEE, ROYALTIES, RECORDS, AND
REPORTS
4.01
- In partial consideration for the license granted
in this Agreement, LICENSEE must pay to NCAT a license fee of Seventy-nine
thousand dollars ($79,000.00)
which is due and payable to NCAT at the execution of this agreement. The license
fee is non-refundable and is not creditable against any future payments or
royalties.
4.02 - For as long as this license is in effect, LICENSEE must pay to NCAT a royalty of three and one half percent (3.5%) of Net Sales of Licensed Products by LICENSEE, its Affiliates and/or sublicensees. In the case of sublicenses, LICENSEE must also pay to NCAT twenty-five percent (25%) of any income, revenue or other financial consideration (e.g. advance payments, license issue fees, license maintenance fees, option fees, equity, etc.) received by LICENSEE from its sublicensees, except for income, revenue or other financial consideration which is received directly as a running royalty on actual sales of Licensed Product.
4.03 - LICENSEE must pay to NCAT minimum annual royalties beginning August 2, 2009. The minimum annual royalty payments must be made according to the following schedule:
4.02 - For as long as this license is in effect, LICENSEE must pay to NCAT a royalty of three and one half percent (3.5%) of Net Sales of Licensed Products by LICENSEE, its Affiliates and/or sublicensees. In the case of sublicenses, LICENSEE must also pay to NCAT twenty-five percent (25%) of any income, revenue or other financial consideration (e.g. advance payments, license issue fees, license maintenance fees, option fees, equity, etc.) received by LICENSEE from its sublicensees, except for income, revenue or other financial consideration which is received directly as a running royalty on actual sales of Licensed Product.
4.03 - LICENSEE must pay to NCAT minimum annual royalties beginning August 2, 2009. The minimum annual royalty payments must be made according to the following schedule:
| For the Year Beginning | Amount | ||
| August 2, 2007 | $ 0.00 | ||
| August 2, 2008 | $ 0.00 | ||
| August 2, 2009 | $30,000 | ||
| August 2, 2010 | $30,000 | ||
| August 2, 2011 (and each August 2 thereafter) | $50,000 |
Payment of the specified minimum annual royalty payments shall be made within sixty (60) days following each of the dates above specified, consistent with the reporting and payment requirements set forth in 4.04 hereof.
4.04 - LICENSEE will render to NCAT on a quarterly basis a written account of the Net Sales of Licensed Products as of July 1, October 1, January 1, and April 1 of
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each calendar
year. The reports of Net Sales and the royalty payment due NCAT thereon
shall be due and payable within sixty (60) days following the applicable
date. LICENSEE shall make such reports even if there have been no Net
Sales or if no royalties are due to NCAT for a particular quarter.
LICENSEE’s reports shall include at least the following:
(a) All Licensed Products manufactured and sold.
(b) Gross receipts for Licensed Products sold.
(c) Accounting for all sub-licensing revenues.
(d) Deductions applicable as provided in section 1.05.
(e) Total sales made to U.S. Government Agencies which may require no royalty payment.
(f) Total royalties due to NCAT.
(g) Names and addresses of all sub-licensees of LICENSEE.
4.05
- LICENSEE and its Affiliates will keep full, true,
and accurate books of accounts and other records containing all particulars
which may be necessary to ascertain and verify properly such Net Sales.
Upon NCAT’s request, LICENSEE and its Affiliates will permit an independent
Certified Public Accountant selected by NCAT (except one to whom LICENSEE has
some reasonable objection) to have access during ordinary business hours to
such of LICENSEE’s or its Affiliates’ records as may be necessary to determine,
in respect of any three (3) month period ending not more than five (5) years
prior to the date of such request, the correctness of any report made under this
Agreement. Nothing herein limits the authority of the State Auditor of
North Carolina.
4.06 - All payments made as a result of this Agreement will be paid in United States dollars in Greensboro, North Carolina, or at such other place as NCAT may reasonably designate consistent with the laws and regulations controlling in any foreign country. If any currency conversion shall be required in connection with the payment of royalties hereunder, such conversion shall be made by using the exchange rate prevailing at the Chase Manhattan Bank (N.A.) on the last business day of the calendar quarterly reporting period to which such royalty payments relate.
4.06 - All payments made as a result of this Agreement will be paid in United States dollars in Greensboro, North Carolina, or at such other place as NCAT may reasonably designate consistent with the laws and regulations controlling in any foreign country. If any currency conversion shall be required in connection with the payment of royalties hereunder, such conversion shall be made by using the exchange rate prevailing at the Chase Manhattan Bank (N.A.) on the last business day of the calendar quarterly reporting period to which such royalty payments relate.
4.07
- The royalty payments set forth in this Agreement,
if overdue, will bear interest until payment at a per annum rate of four percent
(4%) above the prime rate in effect at the Chase Manhattan Bank (N.A.) on the
due date. However, in no event shall any penalties hereunder exceed
eighteen percent (18%) per annum (or 1.5 % per
month).
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ARTICLE
5 - PATENTS
5.01
- NCAT may select patent counsel and have sole
responsibility for filing, prosecuting and maintaining appropriate U.S. and
foreign patent application(s) on the Subject Technology in the name of NCAT, and
all expenses of such protection shall be paid by LICENSEE. LICENSEE also
agrees to reimburse NCAT for unreimbursed out-of-pocket patent costs incurred
through the Effective Date. NCAT will keep Licensee advised as to the
prosecution of such applications by forwarding to LICENSEE copies of all
official correspondence relating thereto. LICENSEE agrees to cooperate
with NCAT in the prosecution of patent application(s) to insure that such
applications reflect, to the best of NCAT’s and LICENSEE’s knowledge, all items
of commercial, scientific and technical interest and importance. All final
decisions with respect to the prosecution of said patent application(s) are
reserved to NCAT.
5.02
- LICENSEE may designate the foreign countries, if
any, in which LICENSEE desires patent protection, and NCAT agrees to file,
prosecute and maintain appropriate applications in such countries.
LICENSEE shall pay all expenses with regard to such foreign patent
protection. NCAT may elect to seek patent protection in countries not so
designated by LICENSEE, in which case NCAT shall be responsible for all expenses
attendant thereto; however, in such instances, LICENSEE shall forfeit its rights
under this license agreement as to such countries.
5.03
- For each country in which Licensed Products will
be sold, LICENSEE agrees to xxxx all Licensed Products it commercializes with
the applicable patent number.
ARTICLE
6 - GOVERNMENT CLEARANCE, PUBLICATION, OTHER USE,
EXPORT, DUTIES
EXPORT, DUTIES
6.01
- LICENSEE agrees that the right of publication of
the Patent Rights resides in the inventor and other staff of NCAT. NCAT
will use its reasonable best efforts to provide a copy of each publication at
the time of submission for pre-publication review, or in any event not less than
thirty (30) days prior to the expected date of publication. Such review
will be in no way construed as a right to restrict such
publication.
6.02
- It is agreed that, notwithstanding any provisions
herein, NCAT is free to use the Patent Rights for its educational, teaching, and
research purposes without restriction and without payment of royalties or other
fees.
6.03
- This Agreement is subject to, and LICENSEE will
comply with, all of the United States laws and regulations controlling the
export of technical data, computer software, laboratory prototypes, and other
commodities and technology which may be applicable.
6.04
- LICENSEE is solely responsible for the payment
and discharge of any taxes or duties relating to any transaction of LICENSEE,
its
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employees,
contractors, agents, or sub-licensees, in connection with the manufacture, use,
or sale in any country of Licensed Product(s).
ARTICLE
7 - DURATION AND TERMINATION
7.01
- This Agreement becomes effective upon the
Effective Date and, unless sooner terminated in accordance with any of the
provisions herein, remains in full force and effect for the life of the
last-to-expire of the patents included in the Patent Rights.
7.02
- In the event an order for relief is entered
against LICENSEE under the Federal Bankruptcy Code, or an order appointing a
receiver for substantially all of LICENSEE’s assets is entered by a court of
competent jurisdiction, or LICENSEE makes an assignment for the benefit of
creditors, or a levy of execution is made upon substantially all of the assets
of LICENSEE and such levy is not quashed or dismissed within thirty (30) days,
this Agreement automatically terminates effective on the date of such order or
assignment or, in the case of such levy, the expiration of such thirty day
period; provided, however, that such termination will not impair or prejudice
any right of remedy that NCAT might have under this Agreement.
7.03
- LICENSEE may terminate this Agreement by giving
NCAT written notice at least ninety (90) days prior to such termination, and
thereupon terminate the manufacture, use, or sale of Licensed
Products.
7.04
- Should LICENSEE fail to pay NCAT royalties and/or
fees, due and payable hereunder, NCAT may terminate this Agreement on thirty
(30) days’ notice, unless LICENSEE pays NCAT, within the thirty (30) day period,
all such royalties, fees, and interest due and payable. Upon the
expiration of the thirty (30) day period, if LICENSEE has not paid all such
royalties and interest due and payable, the rights, privileges and license
granted hereunder shall terminate.
7.05
- Either party may immediately terminate this
Agreement for fraud, willful misconduct, or illegal conduct of the other
party upon written notice of same to that other party. Except as provided
above, if either party fails to fulfill any of its obligations under this
Agreement, the non-breaching party may terminate this Agreement by providing
written notice to the breaching party, as provided below. Such notice must
contain a full description of the event or occurrence constituting a breach of
the Agreement. The party receiving notice of the breach will have the
opportunity to cure that breach within thirty (30) days of receipt of
notice. If the breach is not cured within that time, the termination will
be effective as of the thirtieth (30th) day after receipt of notice. A
party’s ability to cure a breach will apply only to the first two (2) breaches
properly noticed under the terms of this Agreement, regardless of the nature of
those breaches. Any subsequent breach by that party will entitle the other
party to terminate this Agreement upon proper notice, with no opportunity to
cure.
7.06
- If at any time prior to the first commercial sale
of a Licensed Product under this Agreement LICENSEE ceases to pursue commercial
development of Licensed Products or ceases practicing under the Patent Rights as
contemplated
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herein,
LICENSEE must notify NCAT, and this Agreement automatically terminates without
obligation on the part of NCAT to refund any of the fees or royalties which may
have been paid by LICENSEE prior to such termination.
7.07
- Upon the termination of this Agreement pursuant
to Article 7.03, LICENSEE may notify NCAT of the amount of Licensed Products
that LICENSEE has on hand and LICENSEE may then sell that amount of Licensed
Products, but no more; provided, however, that LICENSEE pay NCAT any fees,
royalties or other financial consideration as provided for in this
Agreement.
ARTICLE
8 - INFRINGEMENT OF THIRD-PARTY RIGHTS
8.01
- In the event that NCAT or LICENSEE is charged
with infringement of a patent by a third party or is made a party in a civil
action as a result of LICENSEE’s or a sub-licensee’s practice of the Patent
Rights under this Agreement, LICENSEE:
(a) must defend and/or settle any such claim of infringement or civil action;
(b) must assume all costs, expenses, damages, and other obligations for payments incurred as a consequence of such charges of infringement and/or civil action;
(c) must indemnify and hold NCAT harmless from any and all damages, losses, liability, and costs resulting from a charge of infringement or civil action which shall be brought against NCAT and attributable to technology added to, incorporated into or sold with a Licensed Product by LICENSEE or a sub-licensee or to manufacturing processes utilized by LICENSEE or a sub-licensee; and
(d) may, if such claim of infringement or civil action shall be based on patent claims contained in any pending or issued patent included in the Patent Rights, terminate this Agreement effective immediately upon NCAT’s receipt of written notice of termination, and LICENSEE shall have no further liability for claims and/or damages arising subsequent to said date of termination unless LICENSEE is exercising its license under Section 7.07, in which case LICENSEE's liability and obligations under this Article shall continue as long as license granted in Section 7.07 is in effect.
8.02
- NCAT will give LICENSEE assistance, at LICENSEE’s
expense, in the defense of any such infringement charge or lawsuit, as may be
reasonably required.
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ARTICLE
9 - INFRINGEMENT OF NCAT’s PATENT RIGHTS
BY THIRD PARTIES
BY THIRD PARTIES
9.01
- Each Party to this Agreement is obligated to
inform the other promptly in writing of any alleged infringement of which it
becomes aware and of any available evidence of infringement by a third party of
any patents within the Patent Rights.
9.02
- If during the term of this Agreement LICENSEE
becomes aware of any alleged infringement by a third party, LICENSEE shall have
the right, but not the obligation, to either:
(a) settle the infringement suit by sub-licensing the alleged infringer or by other means; or
(b) prosecute at its own expense any infringement of the Patent Rights. In the event LICENSEE prosecutes such infringement, LICENSEE may, for such purposes, request to use the name of NCAT as party plaintiff. Subject to the approval of the Board of Governors of the University of North Carolina, NCAT may agree to become a party plaintiff, and costs associated therewith shall be borne by LICENSEE.
9.03
- In the event that LICENSEE undertakes the
enforcement and/or defense of the Patent Rights by litigation, including any
declaratory judgment action, the total cost of any such action commenced or
defended solely by LICENSEE shall be borne by LICENSEE. Any recovery of
damages by LICENSEE as a result of such action shall be applied first in
satisfaction of any unreimbursed expenses and attorneys’ fees of LICENSEE
relating to the action, and second in satisfaction of unreimbursed legal
expenses and attorneys’ fees of NCAT, if any, relating to the action. The
balance remaining from any such recovery will be distributed to LICENSEE,
provided that LICENSEE must pay to NCAT such royalties and fees, and any
directly associated damages, as would otherwise be applicable under
Article 4 hereof for that portion of LICENSEE’s recovery attributable to lost
sales or revenues. LICENSEE is entitled to settle any such litigation by
agreement, consent, judgment, voluntary dismissal, or otherwise, with the
consent of NCAT, which consent shall not be withheld unreasonably.
9.04 - In the event LICENSEE does not undertake action to prevent the infringing activity within three (3) months of having been made aware and notified thereof, NCAT shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such right, NCAT may use the name of LICENSEE as a party plaintiff in any such suit without expense to LICENSEE. The total cost of any such infringement action commenced or defended solely by NCAT shall be borne by NCAT. Any recovery of damages by NCAT for any infringement shall be applied first in satisfaction of any unreimbursed expenses and attorneys’ fees of NCAT relating to the suit, and second toward reimbursement of LICENSEE’s reasonable expenses, including reasonable attorneys’ fees, relating to the suit. The balance remaining from any such recovery shall be distributed to NCAT.
9.04 - In the event LICENSEE does not undertake action to prevent the infringing activity within three (3) months of having been made aware and notified thereof, NCAT shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such right, NCAT may use the name of LICENSEE as a party plaintiff in any such suit without expense to LICENSEE. The total cost of any such infringement action commenced or defended solely by NCAT shall be borne by NCAT. Any recovery of damages by NCAT for any infringement shall be applied first in satisfaction of any unreimbursed expenses and attorneys’ fees of NCAT relating to the suit, and second toward reimbursement of LICENSEE’s reasonable expenses, including reasonable attorneys’ fees, relating to the suit. The balance remaining from any such recovery shall be distributed to NCAT.
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9.05
- In any infringement suit instituted by either
party to enforce the Patent Rights pursuant to this Agreement, the other party
hereto shall, at the request and expense of the party initiating such suit,
cooperate in all respects and, to the extent possible, have its employees
testify when requested and make available relevant records, papers, information,
samples, specimens, and the like.
9.06
- LICENSEE has the sole right in accordance with
the terms and conditions herein to sub-license any alleged infringer under the
Patent Rights for future infringements.
9.07
- Any of the foregoing notwithstanding, if at any
time during the term of this Agreement any of the Patent Rights are held invalid
or unenforceable in a decision which is not appealable or is not appealed within
the time allowed, LICENSEE shall have no further obligations to NCAT with
respect to its future use or sale of any product or process covered solely by
such Patent Rights, including the obligation of paying royalties.
Nevertheless, LICENSEE shall not have a damage claim or a claim for refund or
reimbursement against NCAT.
ARTICLE
10 - INDEMNITY, INSURANCE, REPRESENTATIONS
10.01
- LICENSEE must indemnify, defend and hold NCAT,
its trustees, officers, employees and affiliates, harmless against all claims
and expenses, including legal expenses and reasonable attorneys’ fees, arising
out of the death or injury to any person or persons or out of any damage to
property and against any other claim, proceeding, demand, expense and
liability of any kind whatsoever resulting from utilization of the Patent Rights
in the production, manufacture, sales, use, lease, consumption or advertisement
of the Licensed Products by LICENSEE, its Affiliates and its sub-licensees
or arising from any obligations of LICENSEE hereunder, except for any claims or
expenses arising out of the negligence or willful misconduct of NCAT or its
officers, agents or employees. The parties acknowledge that NCAT’s
liability under this paragraph shall be subject to the limitations of the North
Carolina Tort Claims Act (N.C. General Statutes Section 143-291 et.
seq.).
10.02
- LICENSEE must maintain reasonable levels of
product liability insurance as soon as it has commercialized Licensed
Products. NCAT shall have the right to require such insurance policies or
certificates of insurance, at NCAT's discretion, to be made available for NCAT’s
inspection.
10.03
- NCAT MAKES NO REPRESENTATIONS AND EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED
TO, WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND
VALIDITY OF PATENT RIGHTS CLAIMS ISSUED OR PENDING. FURTHER, NCAT MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, THAT THE USE OF INVENTION WILL NOT INFRINGE ANY PATENT OR OTHER
PROPRIETARY RIGHT OF A THIRD PARTY.
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ARTICLE
11 - GOVERNING LAW
11.01
- This Agreement is entered into in the State of
North Carolina and is interpreted in accordance with and its performance
governed by the laws of the State of North Carolina.
ARTICLE
12 - NON-ASSIGNABILITY
12.01
- This Agreement may not be assigned by LICENSEE
except in connection with the sale or other transfer of LICENSEE’s entire
business or that part of LICENSEE’s business to which this license
relates. LICENSEE shall give NCAT thirty (30) days prior written notice of
such assignment or transfer. Any other assignment of this Agreement
without the prior written consent of NCAT shall be void.
ARTICLE
13 - NOTICES
13.01
- It shall be a sufficient giving of any notice,
payment, request, report, statement, disclosure or other communication
hereunder, if the party giving the same shall deposit a copy thereof in the Post
Office in certified mail, postage prepaid, addressed to the other party at its
address hereinafter set forth or at such other address as the other party shall
have theretofore in writing designated:
| NCAT | LICENSEE | ||
| M. Xxxxxxx Xxxxxxx | _________________________________ | ||
| Director | _________________________________ | ||
| Office of Technology Transfer | _________________________________ | ||
| North Carolina A&T State University | _________________________________ | ||
| 0000 Xxxx Xxxxxx Xxxxxx | _________________________________ | ||
| Xxxxx 000, Xxxx XXX | _________________________________ | ||
| Xxxxxxxxxx, XX 00000 | _________________________________ |
The date of
giving any such notice, request, report, statement, disclosure or other
communication, and the date of making any payment hereunder required (provided
such payment is received), shall be the date of the U.S. postmark of such
envelope if marked or actual date of receipt if delivered
otherwise.
ARTICLE
14 - NON-USE OF NAMES
14.01
- LICENSEE may not use the name of NCAT, or any
trademark, trade device, service xxxx, symbol, or any abbreviation, contraction,
or simulation thereof, owned by NCAT, nor the names of any of its employees, or
any adaptation thereof, in any advertising, promotional, or sales literature
without prior written consent obtained from an authorized officer of NCAT in
each case, except that LICENSEE may state that
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it is licensed
by NCAT under one or more of the patents and/or patent applications comprising
the Patent Rights. Failure by LICENSEE to comply with this restriction
shall be deemed a material breach of this Agreement pursuant to section
7.05. Such material breach shall be deemed cured if the offending use is
terminated within ninety (90) days of LICENSEE’s receipt of a written notice
from NCAT.
ARTICLE
15 - SEVERANCE
15.01
- Each clause of this Agreement is a distinct and
severable clause and if any clause is deemed illegal, void, or unenforceable,
the validity, legality, or enforceability of any other clause or portion of this
Agreement will not be affected thereby.
ARTICLE
16 - ENTIRE AGREEMENT
16.01
- This Agreement, including any schedules or other
attachments that are incorporated herein by reference, contain the entire
agreement between the parties as to its subject matter. This Agreement
merges all prior discussions between the parties and neither party shall be
bound by conditions, definitions, warranties, understanding, or representations
concerning such subject matter except as provided in this Agreement or as may be
specified later in writing and signed by the properly authorized representatives
of the parties. This Agreement can be modified or amended only by written
agreement duly signed by persons authorized to sign agreements on behalf of the
parties.
ARTICLE
17 - WAIVER
17.01
- The failure of a party in any instance to insist
upon the strict performance of the terms of this Agreement shall not be
construed to be a waiver or relinquishment of any of the terms of this
Agreement, either at the time of the party’s failure to insist upon strict
performance or at any time in the future, and such term or terms shall continue
in full force and effect.
ARTICLE
18 - TITLES
18.01
- All titles and article headings contained in this
Agreement are inserted only as a matter of convenience and reference. They
do not define, limit, extend, or describe the scope of this Agreement or the
intent of any of its provisions.
ARTICLE
19 - SURVIVAL OF TERMS
19.01
- The provisions of Articles 1, 4, 8, 10, 11, 13,
14 and 19 shall survive the expiration or termination of this
Agreement.
- Page 12
-
IN
WITNESS WHEREOF, the parties hereto have executed this Agreement on the
dates set forth below.
NORTH CAROLINA A&T STATE UNIVERSITY
By: /s/ X. Xxxxxxxxxxxxx
X. Xxxxxxxxxxxxx
Title: Vice Chancellor for Research and Economic Development
Date: August 18, 2006
MATERIALS MONITORING TECHNOLOGIES INC.
By: /s/ Xxxxxxxx Xxxxxx
Title: Vice President
Date: August 18, 2006
NORTH CAROLINA A&T STATE UNIVERSITY
By: /s/ X. Xxxxxxxxxxxxx
X. Xxxxxxxxxxxxx
Title: Vice Chancellor for Research and Economic Development
Date: August 18, 2006
MATERIALS MONITORING TECHNOLOGIES INC.
By: /s/ Xxxxxxxx Xxxxxx
Title: Vice President
Date: August 18, 2006
- Page 13
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