EXCLUSIVE LICENSE AGREEMENT
between
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
and
AMOCO TECHNOLOGY COMPANY
for
DETECTION OF MYCOPLASMA BY DNA HYBRIDIZATION
U.C. Case No. 84-099-2
TABLE OF CONTENTS
Article No. Title Page
----------- ----- ----
RECITALS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
1. DEFINITIONS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
2. LIFE OF PATENT EXCLUSIVE GRANT AND OPTION . . . . . . . . . . . . . . . 4
3. SUBLICENSES. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
4. LICENSE-ISSUE FEE. . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
5. ROYALTIES. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
6. DUE DILIGENCE. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
7. PROGRESS AND ROYALTY REPORTS . . . . . . . . . . . . . . . . . . . . . . 11
8. BOOKS AND RECORDS. . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
9. LIFE OF THE AGREEMENT. . . . . . . . . . . . . . . . . . . . . . . . . . 13
10. TERMINATION BY THE REGENTS . . . . . . . . . . . . . . . . . . . . . . . 14
11. TERMINATION BY LICENSEE. . . . . . . . . . . . . . . . . . . . . . . . . 14
12. DISPOSITION OF LICENSED PRODUCTS
ON HAND UPON TERMINATION. . . . . . . . . . . . . . . . . . . . . . . . 15
13. USE OF NAMES AND TRADEMARKS. . . . . . . . . . . . . . . . . . . . . . . 15
14. LIMITED WARRANTY . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
15. PATENT PROSECUTION AND MAINTENANCE . . . . . . . . . . . . . . . . . . . 17
16. PATENT MARKETING . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
17. PATENT INFRINGEMENT. . . . . . . . . . . . . . . . . . . . . . . . . . . 19
18. INDEMNIFICATION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
19. NOTICES. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21
20. ASSIGNABILITY. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21
21. LATE PAYMENTS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
22. WAIVER . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
23. FAILURE TO PERFORM . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
24. ARBITRATION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
25. GOVERNING LAWS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
26. PREFERENCE FOR UNITED STATES INDUSTRY. . . . . . . . . . . . . . . . . . 25
27. FOREIGN GOVERNMENT APPROVAL
OR REGISTRATION. . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
28. EXPORT CONTROL LAWS. . . . . . . . . . . . . . . . . . . . . . . . . . . 25
29. FORCE MAJEURE. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
30. SECRECY. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
31. INFRINGEMENT UNDER DRUG PRICE COMPETITION ACT. . . . . . . . . . . . . . 27
32. MISCELLANEOUS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28
EXCLUSIVE LICENSE AGREEMENT
for
DETECTION OF MYCOPLASMA BY DNA HYBRIDIZATION
THIS LICENSE AGREEMENT (the "Agreement") is made and is effective
this__________ day of _______, 1992 by and between THE REGENTS OF THE UNIVERSITY
OF CALIFORNIA, a California corporation having its statewide administrative
offices at 000 Xxxxxxxx Xxxxx, 00xx Xxxxx, Xxxxxxx Xxxxxxxxxx 00000-0000,
hereinafter referred to as "The Regents", and AMOCO TECHNOLOGY COMPANY, a
Delaware corporation having a principal place of business at 000 Xxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxx, Xxxxxxxx 00000, hereinafter referred to as the
"Licensee".
RECITALS
WHEREAS, certain inventions, generally characterized as DETECTION OF
MYCOPLASMA BY DNA HYBRIDIZATION, hereinafter collectively referred to as the
"Invention", were made in the course of research at the University of
California, Irvine by Drs. Xxxx Xxxxxxxxxx and Xxx Xxxxx and are covered by
Regents' Patent Rights as defined below;
WHEREAS, the Licensee entered into a Secrecy Agreement (U.C. Control No.
88-20-0280) with The Regents effective October 17, 1988 and terminating on
October 16, 1993 for the purpose of evaluating the Invention;
WHEREAS, the Licensee entered into a letter agreement (U.C. Control No.
88-30-007) with The Regents on October 4, 1988 by which the Licensee paid The
Regents approximately one-half of the then existing direct patent prosecution
costs that had been paid by The Regents to outside counsel in prosecuting
Regents' Patent Rights, and this sum of sixteen-thousand dollars ($16,000.00)
was to be credited against any patent prosecution costs that would in the future
be owed by Licensee if Licensee were to take an option or license to Regents'
Patent Rights, and in return, the Licensee received full access, under the above
cited Secrecy Agreement, to information and records in the possession of The
Regents relating to
Regents' Patent Rights, but Licensee acknowledges that The Regents has made no
express or implied commitment to Licensee prior to the execution of this
Agreement regarding Regents' Other Rights;
WHEREAS, the development of the Invention was sponsored in part by the
Department of Health and Human Services and the Department of Energy and as a
consequence this license is subject to overriding obligations to the Federal
Government as set forth in 35 U.S.C. 200-212 and applicable governmental
implementing regulations;
WHEREAS, the Licensee asserts on Licensee's information and belief that
The Regents may own additional rights other than Regents' Patent Rights in
inventions related to the field of the detection of organisms with a nucleic
acid probe directed to a ribosomal RNA target which is covered by Regents' Other
Rights as defined below;
WHEREAS, both parties recognize and agree that royalties due hereunder
will be paid both on pending patent applications for five years after the
execution of this Agreement and on issued patents for the term of those patents;
WHEREAS, The Regents is desirous that the Invention be developed and
utilized to the fullest extent so that the benefits can be enjoyed by the
general public; and
WHEREAS, the Licensee is desirous of obtaining certain rights from The
Regents for the commercial development, use, and sale of the Invention, and The
Regents is willing to grant such rights;
the parties agree as follows:
1. DEFINITIONS
1.1 "Regents' Patent Rights" means patent rights to any subject matter
claimed in or covered by any of the following: Pending U.S. Patent Application
serial no. 191,852 entitled a "Detection of Mycoplasma by DNA Hybridization"
filed May 6, 1988 as a
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continuation of U.S. Patent Application Serial No. 707,725 filed March 4, 1985
by Drs. Xxxx Xxxxxxxxxx and Xxx Xxxxx and assigned to The Regents; and
continuing applications thereof including divisions, substitutions, and that
part of any continuation-in-part applications that relates to substantially the
same subject matter as defined in the claims as originally filed in Serial No.
707,725; any patents issuing on said application including reissues; and any
corresponding foreign applications or patents.
1.2 "Regents' Other Rights" means patent rights owned by The Regents
relating to the detection of one or more organisms with a nucleic acid probe
directed to a ribosomal RNA target (the "Other Invention"). It is limited to
rights owned by The Regents prior to November 1, 1989 in such Other Inventions
as were developed or invented by one or more of the following: Xxxxx X. Xxxxx,
X.X. Xxxxxx, X.X. Xxxxxxxxx, X. Xxxxxxxxx,, X.X. Xxxx, Xxxxxx X. Xxxxxx, Xxxxxx
X. Xxx and Xxxx X. Xxxxxx. Regents' Other Rights shall not include rights in any
work performed by any other person unless that work was done in collaboration
with one or more of the above identified persons. It is understood that the
Other Invention is intended to include the inventions disclosed and claimed in
U.S. Patent No. 4,851,330 issued to Xxxxx X. Xxxxx, as well as directly related
work where The Regents has no conflicting obligations.
1.3 "Licensed Product" means any material that is either produced by
the Licensed Method, or the manufacture, use or sale of which would constitute,
but for the license granted to the Licensee pursuant to this Agreement, an
infringement of any pending or issued claim within Regents' Patent Rights.
1.4 "Licensed Method" means any method, the use or practice of which
would constitute, but for the license granted to the Licensee pursuant to this
Agreement, an infringement of any claim within Regents' Patent Rights.
1.5 "Net Sales" means the total of the gross invoice prices of Licensed
Products sold less the sum of the following actual and customary deductions
where applicable: cash, trade, or quantity discounts; sales, use, tariff,
import/export duties or other excise taxes imposed upon particular sales;
transportation charges and allowances or credits to customers because of
rejections or returns.
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1.6 "Partners" shall mean any third party that has or will enter a
marketing or distribution agreement with Licensee, which marketing or
distribution agreement includes a contingent license and right from Licensee to
manufacture, to have manufactured, use, sell, distribute or lease articles of
manufacture, machines and compositions, or to perform processes and methods, and
to extend to end-users a license to perform methods and processes with respect
to products developed by Licensee.
1.7 "Affiliate" means any corporation or other business entity
controlled by, controlling or under common control with Licensee. For this
purpose, "control" means direct or indirect beneficial ownership of at least
fifty percent (50%) of the voting stock, or at least fifty percent (50%)
interest in the income of such corporation or other business.
2. LIFE OF PATENT EXCLUSIVE GRANT AND OPTION
2.1 Subject to the limitations set forth in this Agreement, The Regents
hereby grants to the Licensee a world-wide license under Regents' Patent Rights
to make have made, use, and sell Licensed Products and to practice Licensed
Method where the Regents' Patent Rights exist.
2.2 Except as otherwise provided herein, the license granted in section
2.1 shall be exclusive from the effective date of this agreement until the date
of expiration of the last to expire of any patents within Regents' Patent
Rights.
2.3 The license granted hereunder shall be subject to all the
applicable provisions of the License to the United States Government executed by
The Regents on August 9, 1986 (U.C. Control No. 85-25-0729).
2.4 The license granted hereunder shall be subject to the overriding
obligations to the U.S. Government set forth in 35 U.S.C. 200-212 and applicable
governmental implementing regulations.
2.5 The Regents expressly reserves the right to use the Invention and
associated technology for noncommercial educational and research purposes.
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2.6 The Regents retains the right to grant a single additional
nonexclusive license to Regents' Patent Rights solely for the purpose of
acquiring Regents' Other Rights. However, Licensee shall have the option for a
period of one year after the grant of such additional license to substitute all
royalty rates of the additional License for all corresponding royalty rates of
this Agreement in the event such additional License is granted.
2.7a Subject to the limitations set forth in this Agreement, The Regents
grants to Licensee an option to obtain a license to Regents' Other
Rights, providing all of the following provisions are met:
(i) such a grant will not violate any law or University policy,
and
(ii) The Regents is able to make such grant, and
(iii) The Regents is under no obligation to bring any suit as a
result of such a grant, and
(iv) Licensee agrees not bring suit against any of The Regents'
present or previous employees with regard to ownership
rights in the Invention or the Other Invention.
2.7b The License to Regents' Other Rights will contain the following
provisions:
(i) a license-issue fee of Fifty Thousand U.S. dollars
($50,000); and
(ii) to the extent The Regents is able to grant such, shall be
worldwide, exclusive, include the right to grant
sublicenses, and be generally comparable in scope to the
terms of this License Agreement as applied to Regents'
Patent Rights; and
(iii) a provision for an earned royalty of 2.5% of the total of
the gross invoice prices of any material or any method whose
manufacture, use or sale would constitute, but for the
license granted to Licensee, an infringement of any claim of
an issued patent within Regents' Other Rights, wherein the
license is
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exclusive; or 2.0% of same wherein the license is
nonexclusive. However, cash trade, or quantity discounts;
sales, use, tariff, import/export duties or other excise
taxes imposed upon particular sales; transportation charges
and allowances or credits to customers because of rejections
or returns, and such other actual or customary costs as are
applicable shall be subtracted from the gross invoice
prices. Moreover, such earned royalties shall be adjusted so
that the total earned royalty obligation for Licensee's
manufacture, use and sale of Licensed Products shall not
exceed three percent (3%) of Net Sales of Licensed Products
to Partners, distributors and end users.
2.7c In the event The Regents chooses to perfect legal title to any part
of Regents' Other Rights, including but not limited to U.S. Patent
No. 4,851,330 to Xxxxx X. Xxxxx, The Regents shall be free to do so
by any means The Regents chooses. However, any agreement or
settlement between The Regents and third parties regarding such
legal title shall provide Licensee with freedom to operate with no
additional financial burden under Regents' Patent Rights and
Regents' Other Rights than are set forth herein. In addition,
Licensee shall have the option for a period of one year after such
agreement or settlement to substitute all royalty rates accepted by
such third parties in such settlement for all corresponding royalty
rates specified in this Agreement
2.7d If The Regents determines that litigation is required in order for
The Regents to secure legal title in Regents' Other Rights, the
license to Regents' Other Rights shall be exclusive provided that
Licensee at its option pays the reasonable costs of such
litigation, and except that The Regents shall retain the right to
grant one additional license in order to settle the litigation.
Such additional license shall be nonexclusive.
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If, however, Licensee declines to pay the reasonable costs
of such litigation, the license to Regents' Other Rights
shall be nonexclusive and Licensee shall not be entitled to
participate in such settlement discussions.
3. SUBLICENSES
3.1 The Regents also grants to the Licensee the right to issue
sublicenses to third parties to make, have made, use, and sell Licensed Products
and to practice Licensed Method, provided the Licensee has current exclusive
rights thereto under this Agreement. To the extent applicable, such sublicenses
shall include all of the rights of and obligations due to The Regents (and, if
applicable, the United States Government) that are contained in this Agreement.
3.2 Licensee shall provide The Regents with a copy of each sublicense
issued hereunder; collect and guarantee payment of all royalties due The Regents
from sublicensees; and summarize and deliver all reports due The Regents from
sublicensees.
3.3 Upon termination of this Agreement for any reason, The Regents, at
its sole discretion, shall determine whether any or all sublicenses shall be
canceled or assigned to The Regents.
4. LICENSE-ISSUE FEE
4.1 The Licensee agrees to pay to The Regents a License-Issue Fee of
Fifty Thousand Dollars ($50,000.00) within fourteen days after the execution of
this Agreement.
4.2 This fee is non-refundable and not an advance against royalties.
5. ROYALTIES
5.1 The Licensee shall also pay to The Regents an earned royalty of two
percent (2%) of the Net Sales of Licensed Products to Partners, distributors or
end users.
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5.2 Paragraphs 1.1, 1.3 and 1.4 define Regents' Patent Rights, Licensed
Products and Licensed Methods so that royalties shall be payable on products and
methods covered by both pending patent applications for a period of five (5)
years from the date of the execution of this Agreement and on issued patents.
Earned royalties shall accrue in each country for the duration of Regents'
Patent Rights in that country and shall be payable to The Regents when Licensed
Products are invoiced, or if not invoiced, when delivered to a third party.
5.3 Royalties accruing to The Regents shall be paid to The Regents
quarterly on or before the following dates of each calendar year
February 28
May 31
August 31
November 30
Each such payment will be for royalties which accrued within the Licensee's most
recently completed calendar quarter.
5.4 The Licensee shall pay to The Regents a minimum annual royalty of
Ten Thousand Dollars ($10,000) for the life of Regents' Patent Rights, beginning
with the calendar year 1994. This minimum annual royalty shall be paid to The
Regents by February 28 of each year and shall be credited against the earned
royalty due and owing for the calendar year in which the minimum payment was
made.
5.5 In the event that Licensee fails to pay the minimum royalty
specified in paragraph 5.4 above for any year during which such is due and
owing, The Regents shall have the right to reduce Licensee's exclusive license
to a non-exclusive license. However, to exercise the right to reduce the license
to a non-exclusive license for failure to pay a minimum royalty specified in
paragraph 5.4,, The Regents must give the Licensee written notice of Licensee's
failure to pay. The Licensee shall thereafter have sixty (60) days to pay the
outstanding minimum royalty. If The Regents has not received satisfactory
tangible evidence that the minimum royalty has been paid by the end of the sixty
(60) day period, then The
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Regents may reduce the Licensee's exclusive license to a nonexclusive license by
giving written notice to the Licensee. These notices shall be subject to Article
19 (Notices).
5.6 All monies due The Regents shall be payable in United States funds
collectible at par in San Francisco, California When Licensed Products are sold
for monies other than United States dollars, the earned royalties will first be
determined in the foreign currency of the country in which such Licensed
Products were sold and then converted into equivalent United States funds. The
exchange rate will be that established by the Bank of America in New York, New
York on the last day of the reporting period and will be quoted in the
Continental terms method of quoting exchange rates (local currency per U.S.
dollar).
5.7 Royalties earned with respect to sales occurring in any country
outside the United States shall not be reduced by any taxes, fees, or other
charges imposed by the government of such country on the remittance of royalty
income. The Licensee shall also be responsible for all bank transfer charges.
5.8 If at any time legal restrictions prevent the prompt remittance of
part or all royalties by the Licensee with respect to any country where a
Licensed Product is sold, the Licensee shall pay such royalties to The Regents
from its U.S. source of funds.
5.9 In the event that any patent or any claim thereof included within
the Regents' Patent Rights shall be held invalid in a final decision by a court
of competent jurisdiction and last resort and from which no appeal has or can be
taken, all obligations to pay royalties based on such patent or claim or any
claim patentably indistinct therefrom shall cease as of the date of such final
decision. The Licensee shall not, however, be relieved from paying any
royalties that accrued before such decision or that are based on another patent
or claim not involved in such decision.
5.10 No royalties shall be collected or paid hereunder on Products sold
to the account of the U.S. Government, any agency thereof, state or domestic
municipal government as provided for in the License to the Government.
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6. DUE DILIGENCE
6.1 The Licensee, upon execution of this Agreement, shall diligently
proceed with the development, manufacture and sale of Licensed Products and
shall earnestly and diligently endeavor to market the same within a reasonable
time after execution of this Agreement and in quantities sufficient to meet the
market demands thereof.
6.2 The Licensee shall be entitled to exercise prudent and reasonable
business judgment in meeting its due diligence obligations hereunder.
6.3 The Licensee shall endeavor to obtain all necessary governmental
approvals for the manufacture, use and sale of Licensed Products.
6.4 If the Licensee is unable to perform any of the following:
(6.4a) submit an INDA or 510K or equivalent, whichever is
appropriate, covering Licensed Products to the United
States Food & Drug Administration within three (3) years
from the effective date of this Agreement if such is
required for the sale of Licensed Product; or
(6.4b) market Licensed Products in the United States within six
(6) months of receiving approval of such Licensed Products
from the United States Food and Drug Administration; or
(6.4c) reasonably fill the market demand for Licensed Products
following commencement of marketing at any time during the
exclusive period of this Agreement;
then The Regents shall have the right and option to reduce the Licensee's
exclusive license to a nonexclusive license. This right, if exercised by The
Regents, supersedes the rights granted in Article 2 (GRANT).
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6.5 At the request of either party, any controversy or claim arising
out of or relating to the diligence provisions of this Agreement shall be
settled by arbitration according to the procedures of Article 24 (ARBITRATION).
Judgment upon the award rendered by the Arbitrator(s) shall be binding on the
parties and may be entered by either party in the court or forum, state or
federal, having jurisdiction.
6.6 To exercise the right to reduce the license to a nonexclusive
license for lack of diligence, The Regents must give the Licensee written notice
of the deficiency. The Licensee thereafter has sixty (60) days to cure the
deficiency or to request arbitration. If The Regents has not received a written
request for arbitration or satisfactory tangible evidence that the deficiency
has been cured by the end of the sixty (60) day period, then The Regents may, at
its option, reduce the Licensee's exclusive license to a nonexclusive license by
giving written notice to the Licensee. These notices shall be subject to
Article 19 (Notices).
7. PROGRESS AND ROYALTY REPORTS
7.1 On or before February 28 and August 31 of each year during the term
of this Agreement, the Licensee shall submit to The Regents a progress report
covering the Licensee's activities relates to the development and testing of all
Licensed Products and the obtaining of the governmental approvals necessary for
marketing. These progress reports should be of sufficient scope and detail to
allow The Regents to monitor the Licensee's progress in meeting its diligence
obligations set forth in Article 6 (DUE DILIGENCE). These progress reports shall
be mate for each Licensed Product until the first commercial sale of that
Licensed Product occurs in the United States.
7.2 The progress reports submitted under section 7.1 should include,
but not be limited to, the following topics:
(a) summary of work completed
(b) summary of work in progress
(c) current schedule of anticipated events or milestones
(d) market plans for introduction of Licensed Products, and
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(e) a summary of resources (dollar value) spent in the reporting period
7.3 The Regents agrees to keep information obtained from Licensee under
Articles 7 (Progress and Royalty Reports) and 8 (Books and Records) as
confidential with the same degree of care as The Regents keep similar
information of its own, and for a period of five (5) years, except The Regents
shall not be prevented from using or disclosing any of this information:
(a) which The Regents can demonstrate by written records was previously
know to it;
(b) which is now, or becomes in the future, public knowledge other than
through acts or omissions of The Regents; or
(c) which is lawfully obtained by The Regents from sources independent
of Licensee.
In the event The Regents is required by law to disclose information obtained
from Licensee under Articles 7 and 8, The Regents shalt notify Licensee within a
reasonable time before The Regents is legally obligated to disclose such
information.
7.4 The Licensee also agrees to report to The Regents in its
immediately subsequent progress and royalty report the date of first commercial
sale of a Licensed Product in each country.
7.5 After the first commercial sale of a Licensed Product anywhere in
the world, the Licensee will make quarterly royalty reports to The Regents on or
before each February 28, May 31, August 31 and November 30 of each year. Each
such royalty report will cover the Licensee's most recently completed calendar
quarter and will show (a) the gross sales and Net Sales of Licensed Products
sold by the Licensee during the most recently completed calendar quarter, (b)
the number of each type of Licensed Product sold; (c) the royalties, in U.S.
dollars, payable hereunder with respect to such sales; (d) the method used to
calculate the royalty; and (c) the exchange rates used.
7.6 If no sales of Licensed Products has been made during any reporting
period, a statement to this effect shall be required.
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8. BOOKS AND RECORDS
8.1 The Licensee shall keep books and records accurately showing all
Licensed Products manufactured, used, and/or sold under the terms of this
Agreement. Such books and records shall be preserved for at least five (5) years
from the date of the royalty payment to which they pertain and shall be open to
inspection by representatives or agents of The Regents at reasonable times.
8.2 The fees and expenses incurred by The Regents' representatives
performing such an examination shall be borne by The Regents unless the
examination uncovers an error showing royalties of more than five percent (5%)
of the total royalties due and owing to The Regents for any year, then the fees
and expenses of these representatives shall be borne by the Licensee.
9. LIFE OF THE AGREEMENT
9.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this Agreement shall be
in force from the effective date recited on page one and shall remain in effect
for the life of the last-to-expire patent licensed under this Agreement; or
until the last patent application licensed under this Agreement is abandoned and
no patent in Regents' Patent Rights ever issues.
9.2 Any termination of this Agreement shall not affect the rights and
obligations set forth in the following Articles:
Article 8 Books and Records
Article 12 Disposition of Licensed Products on Hand Upon
Termination
Article 13 Use of Names and Trademarks
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Article 18 Indemnification
Article 23 Failure to Perform
Article 30 Secrecy
10. TERMINATION BY THE REGENTS
10.1 If the Licensee should violate or fail to perform any material term
or covenant of this Agreement, then The Regents may give written notice of such
default (Notice of Default) to the Licensee. If the Licensee should fail to
repair such default within sixty (60) days of the effective date of such notice,
The Regents shall have the right to terminate this Agreement and the licenses
herein by a second written notice (Notice of Termination) to the Licensee. If a
Notice of Termination is sent to the Licensee, this Agreement shall
automatically terminate on the effective date of such notice. Such termination
shall not relieve the Licensee of its obligation to pay any royalty or license
fees owing at the time of such termination and shall not impair any accrued
right of The Regents. These notices shall be subject to Article 19 (Notices).
11. TERMINATION BY LICENSEE.
11.1 The Licensee shall have the right at any time to terminate this
Agreement in whole or as to any portion of Regents' Patent Rights by giving
notice in writing to The Regents. Such notice of termination shall be subject
to Article 19 (Notices) and termination of this Agreement shall be effective
ninety (90) days from the effective date of such notice.
11.2 Any termination pursuant to the above paragraph shall not relieve
the Licensee of any obligation or liability accrued hereunder prior to such
termination or rescind anything done by the Licensee or any payments made to The
Regents hereunder prior to the time such termination becomes effective, and such
termination shall not affect in any manner any rights of The Regents arising
under this Agreement prior to such termination.
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11.3 Upon termination of this Agreement the Licensee shall stand.
12. DISPOSITION OF LICENSED PRODUCTS
ON HAND UPON TERMINATION
12.1 Upon termination of this Agreement prematurely under Article 10
(TERMINATION BY REGENTS) or 11 (TERMINATION BY LICENSEE), the Licensee shall
stand unlicensed.
13. USE OF NAMES AND TRADEMARKS
13.1 Nothing contained in this Agreement shall be construed as
conferring any right to use in advertising, publicity, or other promotional
activities any name, trade name, trademark, or other designation of either party
hereto (including contraction, abbreviation or simulation of any of the
foregoing). Unless required by law, the use of the name of "The Regents of the
University of California" or the name of any campus of the University of
California by the licensee is expressly prohibited.
13.2 It is understood that The Regents shall be free to release to the
named inventors of Regents' Patent Rights and senior administrative officials
employed by The Regents the terms and conditions of this Agreement upon their
request. If such release is made, The Regents shall request that such terms and
conditions not be disclosed to others. It is further understood that should a
third party inquire whether a license to Regents' Patent Rights is available,
The Regents may disclose the existence of this Agreement and the extent of the
grant in Article 2 to such third party, but shall not disclose the name of the
Licensee, except where The Regents is required to release such information under
either the California Public Records Act or other applicable law.
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14. LIMITED WARRANTY
14.1 The Regents warrants to the Licensee that it has the lawful right
to grant this license.
14.2 This license and the associated Invention are provided WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
WARRANTY, EXPRESS OR IMPLIED. THE REGENTS MAKES NO REPRESENTATION OR WARRANTY
THAT THE LICENSED PRODUCTS OR LICENSED METHODS WILL NOT INFRINGE ANY PATENT OR
OTHER PROPRIETARY RIGHT.
14.3 IN NO EVENT WILL THE REGENTS BE LIABLE FOR ANY INCIDENTAL, SPECIAL
OR CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE OF
THE INVENTION OR LICENSED PRODUCTS.
14.4 Nothing in this Agreement shall be construed as:
(14.4a) a warranty or representation by The Regents as to the
validity or scope of any Regents' Patent Rights; or
(14.4b) a warranty or representation that anything made, used,
sold or otherwise disposed of under any license granted in
this Agreement is or will be free from infringement of
patents of third parties; or
(14.4c) an obligation to bring or prosecute actions or suits
against third parties for patent infringement except as
provided in Articles 17 and 30; or
(14.4d) conferring by implication, estoppel or otherwise any
license or rights under any patents of The Regents other
than Regents' Patent Rights or Regents' Other Rights as
defined herein, regardless of whether such patents are
dominant or subordinate to Regents' Patent Rights; or
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(14.4e an obligation to furnish any know-how not provided in
Regents' Patent Rights
14.5 IT IS UNDERSTOOD BY BOTH PARTIES THAT REGENTS' OTHER RIGHTS MAY BE
NONE AND THAT REGENTS' PATENT RIGHTS MAY BE THE ONLY REGENTS' RIGHTS RELATING TO
THE DETECTION OF ONE OR MORE ORGANISMS WITH NUCLEIC ACID PROBE DIRECTED TO A
RIBOSOMAL RNA TARGET. THE PURSUIT OF RIGHTS UNDER REGENTS' OTHER RIGHTS WILL BE
AT THE SOLE DISCRETION OF THE REGENTS. THE REGENTS WILL DECIDE IF THE REGENTS
HAS RIGHTS BEFORE ANY SUCH DISCRETIONARY LITIGATION CONCERNING THESE RIGHTS IS
BROUGHT BY THE REGENTS.
15. PATENT PROSECUTION AND MAINTENANCE
15.1 The regents shall diligently prosecute and maintain the United
States and foreign patents and patent applications comprising Regents' Patent
Rights using counsel of its choice. The Regents shall provide the Licensee with
copies of all relevant documentation so that the Licensee may be informed and
apprised of the continuing prosecution and maintenance of Regents' Patent
Rights, and the Licensee agrees to keep this documentation confidential. The
Regents' counsel will take instructions only from The Regents. However, The
Regents shall use all reasonable efforts to amend any patent application to
include claims reasonably requested by the Licensee to protect the products
contemplated to be sold subject to this Agreement
15.2 The regents shall cooperate with the Licensee in applying for an
extension of the term of any patent included within Regents' Patent Rights if
appropriate under the Drug Price Competition and Patent Term Restoration Act
of 1984. The Licensee shall prepare all such documents, and The Regents agrees
to execute such documents and to take such additional action as the Licensee may
reasonably request in connection therewith.
15.3 The past and future costs of preparing, filing, prosecuting and
maintaining all United States patent applications contemplated by this Agreement
shall be borne by Licensee. As of February 14, 1992, these costs were
$52,265.25 of which $16,000 has already been paid by Licensee. Such costs will
be due upon execution of this Agreement and shall be payable at the time that
the License-Issue Fee is due. The Regents will
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provide Licensee with bills for prosecution costs approximately quarterly; such
bills will be accompanied by appropriate invoices showing such costs in detail.
15.4 The regents shall seek patent protection on the Invention in
foreign countries if available and if the Licensee so desires. The Licensee
must notify The Regents within seven (7) months of the filing of the
corresponding United States application of its desire to obtain foreign patents.
This notice concerning foreign filing shall be in writing, must identify the
countries desired, and reaffirm Licensee's obligation to underwrite the costs
thereof. The absence of such a notice from the Licensee to The Regents shall be
considered an election by the Licensee not to secure foreign rights.
15.5 The preparation, filing and prosecuting of all foreign patent
applications filed at the Licensee's request, as well as the maintenance of all
resulting patents, shall be at the sole expense of the Licensee. Such patents
shall be held in the name of The Regents and shall be obtained using counsel of
The Regents' choice.
15.6 The Licensee's obligation to underwrite and to pay patent
prosecution costs shall continue for so long as this Agreement remains in
effect, provided, however, that the Licensee may terminate its obligations with
respect to any given patent application or patent upon three (3) months written
notice to The Regents. The Regents will use its best efforts to curtail patent
costs when such a notice is received from the Licensee. The Regents may
continue prosecution and/or maintenance of such application(s) or patent(s) at
its sole discretion and expense; provided, however, that the Licensee shall have
no further right or licenses thereunder.
15.7 The Regents shall have the right to file patent applications at its
own expense in any country in which the Licensee has not elected to secure
patent rights, and such applications and resultant patents shall not be subject
to this Agreement.
16. PATENT MARKING
16.1 The Licensee agrees to xxxx all Licensed Products made, used or
sold under the terms of this Agreement, or their containers, in accordance with
the applicable patent marking laws.
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17. PATENT INFRINGEMENT
17.1 In the event that the Licensee shall learn that an unlicensed
non-party to this License Agreement is (a) substantially making, using or
selling subject matter within the scope of any claim of any pending patent
application within Regents' Patent Rights, or (b) the substantial infringement
of any issued patent within Regents' Patent Rights, the Licensee shall call The
Regents' attention thereto in writing and shall provide The Regents with
reasonable evidence of such activity by the non-party. The Licensee and The
Regents agree that during the period and in a jurisdiction where the Licensee
has exclusive rights under this Agreement, neither will notify such non-party of
the infringement of any of Regents' Patent Rights without first obtaining the
consent of the other party, which consent shall not be unreasonably denied.
Both parties shall use their best efforts in cooperation with each other to
terminate such infringement without litigation.
17.2 In the event that a non-party continues to substantially make, use
or sell subject matter within the scope of any claim of any pending patent
application within Regents' Patent Rights and that does not otherwise fall
within the scope of any issued patent within Regents' Patent Rights, Licensee
shall be permitted to suspend its royalty obligations for making, using or
selling subject matter within the scope of any claim of such pending patent
application until such activity by such non-party ceases or until a patent
issues from such pending patent application claiming such subject matter.
"Substantially" as used herein means a decrease in sales by Licensee by at
least ten percent (10%) as a result of such infringement.
17.3 The Licensee may request that The Regents take legal action against
the infringement of Regents' Patent Rights. Such request shall be made in
writing and shall include reasonable evidence of such infringement and damages
to the Licensee. If the infringing activity has not been abated within ninety
(90) days following the effective date of such request, The Regents shall have
the right to:
(17.3a) commence suit on its own account; or
(17.3b) refuse to participate in such suit,
and The Regents shall give notice of its election in writing to the Licensee by
the end of the one-hundredth (100th) day after receiving notice of such request
from the Licensee. The Licensee may thereafter bring suit for patent
infringement if and only if The Regents elects not
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to commence suit and if the infringement occurred during the period and in a
jurisdiction where the Licensee had exclusive rights under this Agreement.
However, in the event the Licensee elects to bring Suit in accordance with this
paragraph, The Regents may thereafter join such suit at its own expense.
17.4 Such legal action as is decided upon shall be at the expense of the
party on account of whom suit is brought and all recoveries recovered thereby
shall belong to such party, provided, however, that legal action brought jointly
by The Regents and the Licensee and fully participated in by both shall be at
the joint expense of the parties and all recoveries shall be shared jointly by
them in proportion to the share of expense paid by each party.
17.5 Each party agrees to cooperate with the other in litigation
proceedings instituted hereunder but at the expense of the party on account of
whom suit is brought. Such litigation shall be controlled by the party bringing
the suit, except that The Regents may be represented by counsel of its choice
pursuant to The Regents' determination in any suit brought by the Licensee.
18. INDEMNIFICATION
18.1 The Licensee agrees to indemnify, hold harmless and defend The
Regents, its officers, employees, and agents; the sponsors of the research that
led to the Invention; and the inventors of the patents and patent applications
in Regents' Patent Rights and their employers against any and all claims, suits,
losses, damage, costs, fees, and expenses resulting from or arising out of
exercise of this license or any sublicense. This indemnification will include,
but will not be limited to, any product liability. Licensee agrees not to use
Licensed Product for human consumption.
18.2 The Licensee, at its sole cost and expense, shall insure its
activities in connection with the work under this Agreement.
18.3 The Regents shall promptly notify Licensee in writing of any claim
or suit brought against The Regents in respect of which The Regents intends to
involve the provisions of this Article 18. Licensee will keep The Regents
informed on a current basis of its defense of any claims pursuant to this
Article 18, and The Regents will provide reasonable cooperation to the Licensee
during any litigation proceedings under this Article 18.
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19. NOTICES
19.1 Any notice or payment required to be given to either party shall be
deemed to have been properly given and to be effective (a) on the date of
delivery if delivered in person or (b) five (5) days after mailing by
first-class certified mail, postage paid, to the respective addresses given
below, or to such other address as it shall designate by written notice given to
the other party.
In the case of the Licensee: AMOCO TECHNOLOGY COMPANY
00 Xxxxxx Xxxx.
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Vice President, Technology Division
With a copy to GENE-TRAK SYSTEMS CORPORATION
00 Xxx Xxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxxxxx 00000
Attention: General Manager, Clinical Diagnostics
In the case of The Regents: THE REGENTS OF THE UNIVERSITY OF CALlFORNIA
Office of Technology Transfer
0000 Xxxxxx Xxx Xxxxxxx, xxxxx 000
Xxxxxxx, Xxxxxxxxxx 00000
Attention: DIRECTOR:
Office of Technology Transfer
Referring to: U.C. Case No. 84-099-2
20. ASSIGNABILITY
20.1 This Agreement is binding upon and shall inure to the benefit of
The Regents, its successors and assigns, but shall be personal to the Licensee
and assignable by the Licensee only with the written consent of The Regents,
which consent shall not be unreasonably withheld; except the Licensee may,
without the consent of The Regents, (a) assign or extent this Agreement to its
Affiliates; and (b) assign this Agreement, or that part of this Agreement that
applies to a particular business line, to a bona fide purchaser of substantially
the entirety of Licensee's business relating to the invention on a particular
business line relating thereto, provided that such purchaser agrees to the terms
and conditions of this Agreement.
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21. LATE PAYMENTS
21.1 In the event royalty payments or fees are not received by The
Regents when due, the Licensee shall pay to The Regents interest charges of ten
percent (10%) per annum. Such interest shall be calculated from the date
payment was due until actually received by The Regents.
22. WAIVER
22.1 It is agreed that no waiver by either party hereto of any breach or
default of any of the covenants or agreements herein set forth shall be deemed a
waiver as to any subsequent and/or similar breach or default.
23. FAILURE TO PERFORM
23.1 In the event of a failure of performance due under the terms of
this Agreement and if it becomes necessary for either party to undertake legal
action against the other on account thereof, then the prevailing party shall be
entitled to reasonable attorney's fees in addition to costs and necessary
disbursements.
24. ARBITRATION
24.1 Either party to this Agreement may refer a dispute arising under
the diligence provisions of this Agreement (Article 6) to arbitration. Such
referral to arbitration shall be made by so notifying the other party in writing
in accordance with the provisions of Article 19 hereto (NOTlCES), stating the
nature of the dispute to be resolved. Any such arbitration shall be controlled
by the provisions of this Article 24.
24.2 Within fifteen (15) business days following such notice three
arbitrators shall be selected by the following process:
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(24.2a) Each Party shall designate one individual, not an
employee, director, or shareholder of the Party or
sublicensee of the Party to serve as an arbitrator.
(24.2b) These arbitrators shall select a third individual, who
shall be an attorney experienced in arbitration
proceedings, to serve as the third arbitrator and to
preside in resolution of the dispute. The third
arbitrator shall not be an employee, director or
shareholder of either Party or sublicensee of either
Party.
24.3 Within five (5) business days after selection the arbitrators shall
meet with the Parties at which time the Parties shall each present in writing
the issue to be resolved and a proposed ruling on it. Such writing shall be
served on the other Party in advance and be limited to no more than twenty (20)
pages.
24.4 The following general provisions shall apply to the arbitration
proceeding:
(24.4a) No later than thirty (30) days after the appointment of
the third arbitrator, the arbitrators shall set a date for
a hearing to resolve the issue identified by the Parties.
The hearing shall take place no later than one hundred
twenty (120) days from the original notice to arbitrate.
(24.4b) The arbitrator shall permit the taking of not more than
one (1) deposition by each Party, and shall permit,
subject to the provisions of a mutually agreeable
protective order, the production of only those documents
immediately and directly bearing on the issue or issues
subject to arbitration and only to the extent necessary
for the convenience and use of the arbitrators, and shall
not require or permit any other discovery by any means,
including, but not limited to, depositions,
interrogatories or production of documents.
(24.4c) Not later than ten (10) business days prior to the
hearing, each party may submit a single written brief or
memorandum
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in support of its position which may be no more than
twenty (20) pages. Each Party shall be entitled to no
more than three (3) hours of hearing to present testimony
or documentary evidence. Such time limitation shall
include any direct, cross or rebuttal testimony, but such
time limitation shall only be charged against the Party
conducting such direct, cross or rebuttal testimony. It
shall be the responsibility of the arbitrators to
determine whether each Party has had the three (3) hours
to which it is entitled or may, upon good cause shown,
have additional time to present its case.
(24.4d) Each Party shall have the right to be represented by
counsel. The arbitrators shall have sole discretion with
regard to the admissibility of evidence. Admissibility
will be decided by two-thirds vote.
(24.4e) Within Fifteen (15) days of the conclusion of the hearing,
each Party must submit a proposed finding to the
arbitrators.
24.5 The arbitrators shall rule on the disputed issue within thirty (30)
days following the completion of the testimony of both Parties. Such ruling
shall encompass in its entirety the proposed findings of one of the Parties on
the disputed issue. The issue shall be resolved upon two-thirds vote of the
arbitrators.
24.6 Arbitration shall take place in the location of choice of the party
who has not requested arbitration. All hearing costs for a hearing shall be
shared equally between the Parties.
24.7 The arbitrators shall be paid reasonable fees plus expenses, which
fees and expenses shall be shared equally by the Parties.
24.8 The decision of the arbitrators shall be enforceable, but not
appealable, in any court of competent jurisdiction.
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25. GOVERNING LAWS
25.1 THIS AGREEMENT SHALL BE INTERPRETED AND CONSTRUED [N ACCORDANCE
WITH THE LAWS OF THE STATE OF CALIFORNIA, but the scope and validity of any
patent or patent application shall be governed by the applicable laws of the
country of such patent or patent application.
26. PREFERENCE FOR UNITED STATES INDUSTRY
26.1 Because this Agreement grants the exclusive right to use or sell
Licensed Products and to practice Licensed Methods in the United States, the
Licensee agrees that any Licensed Products which are intended for sale in the
United States will be manufactured substantially in the United States.
27. FOREIGN GOVERNMENT APPROVAL
OR REGISTRATION
27.1 If this Agreement or any associated transaction is required by the
law of any nation to be either approved or registered with any governmental
agency, the Licensee shall assume all legal obligations to do so.
28. EXPORT CONTROL LAWS
28.1 The Licensee shall observe all applicable United States and foreign
laws with respect to the transfer of Licensed Products and related technical
data to foreign countries, including, without limitation, the International
Traffic in Arms Regulations (ITAR) and the Export Administration Regulations.
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29. FORCE MAJEURE
29.1 The parties to this Agreement shall be excused from any performance
required hereunder if such performance is rendered impossible or unfeasible due
to any catastrophes or other major events beyond their reasonable control,
including, without limitation, war, riot, and insurrection; laws, proclamations,
edicts, ordinances or regulations; strikes, lock-outs or other serious labor
disputes; and floods, fires, explosions, or other natural disasters. When such
events have abated, the parties' respective obligations hereunder shall resume.
30. SECRECY
30.1 With regard to confidential information ("Data"), which can be oral
or written or both, received from The Regents regarding this Invention, the
Licensee agrees:
(1) not to use the Data except for the sole purpose of
performing under the terms of this Agreement;
(2) to safeguard Data against disclosure to others with the
same degree of care as it exercises with its own data of a
similar nature;
(3) not to disclose Data to others (except to its employees,
agents or consultants who are bound to Licensee by a like
obligation of confidentiality) without the express written
permission of The Regents, except that Licensee shall not
be prevented from using or disclosing any of the Data:
(a) which Licensee can demonstrate by written records
was previously known to it;
(b) which is now, or becomes in the future, public
knowledge other than through acts or omissions of
Licensee; or
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(c) which is lawfully obtained by Licensee from
sources independent of The Regents; and
(4) that the secrecy obligations of Licensee with respect to
Data shall continue for a period ending five (5) years
from the termination date of this Agreement.
31. INFRINGEMENT UNDER DRUG PRICE COMPETITION ACT
31.1 In the event either party receives notice pertaining to any patent
included within Regents' Patent Rights pursuant to the DRUG PRICE COMPETITION
AND PATENT TERM RESTORATION ACT OF 1984, (Public Law 98-417, hereinafter, "the
Act") including but not necessarily limited to notices pursuant to Sections 101
and 103 of the Act from persons who have filed an abbreviated NDA ("ANDA") or a
"paper" NDA, or in the case of an infringement of Regents' Patent Rights as
defined in Section 271(e) of Title 35 of the United States Code, such party
shall notify the other party promptly but in no event later than ten (10) days
after receipt of such notice.
31.2 If the Licensee wishes action to be taken against such
infringement, as provided in the Act, the Licensee shall request such action by
written notice to The Regents. Within thirty (30) days of receiving said
request, The Regents will give written notice to the Licensee of its election
to:
(31.2a) commence suit on its own account; or
(31.2b) refuse to participate in such suit.
The Licensee may thereafter bring suit for patent infringement as provided by
the Act if and only if The Regents elects not to commence suit and if the
infringement occurred during the period that the Licensee had exclusive rights
in the United States under this Agreement. However, in the event the Licensee
elects to bring suit in accordance with this paragraph, The Regents may
thereafter join such suit at its own expense.
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31.3 The provisions of paragraphs 17.4 and 17.5 shall likewise apply to
any legal action brought under this Article 30.
31.4 The Regents hereby authorized the Licensee to include in any NDA
for a Licensed Product, a list of patents included within Regents' Patent Rights
identifying The Regents as patent owner.
32. MISCELLANEOUS
32.1 The headings of the several sections are inserted for convenience
of reference only and are not intended to be a part of or to affect the meaning
or interpretation of this Agreement.
32.2 This Agreement will not be binding upon the parties until it has
been signed below on behalf of each party, in which event, it shall be effective
as of the date recited on page one.
32.3 No amendment or modification hereof shall be valid or binding upon
the parties unless made in writing and signed on behalf of each party.
32.4 This Agreement embodies the entire understanding of the parties and
shall supersede all previous communications, representations or understandings,
either oral or written, between the parties relating to the subject matter
hereof. The Secrecy Agreement (U.C. Control No. 88-20-0280) effective October
17, 1988 is hereby terminated, and The Regents and Licensee reaffirm that the
letter agreement (U.C. Control No. 88-30-0007) has expired and all its
provisions and intent are incorporated into this Agreement.
32.5 In case any of the provisions contained in this Agreement shall be
held to be valid, illegal or unenforceable in any respect, such invalidity,
illegality or unenforceability shall not affect any other provisions hereof, but
this Agreement shall be construed as if such invalid or illegal or unenforceable
provisions had never been contained herein.
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IN WITNESS WHEREOF, both The Regents and the Licensee have executed this
Agreement, in duplicate originals, by their respective officers hereunto duly
authorized, on the day and year hereinafter written.
AMOCO TECHNOLOGY COMPANY THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA
By: /s/ X. X. XXXXXXXXX By: /s/ X. X. XXXXX
-------------------------- ---------------------------
(Signature) (Signature)
Name: X. X. XXXXXXXXX Name: Xxxxxxx X. Xxxxx
------------------------
(Please Print)
Title: President Title: Associate Director;
----------------------- Office of Technology Transfer
Date: July 1, 1992 Date: 7/30/92
------------------------ -------------------------
[STAMP]
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EXHIBIT 10.8a
AMENDMENT TO EXCLUSIVE LICENSE
AGREEMENT BETWEEN THE REGENTS OF
THE UNIVERSITY OF CALIFORNIA
AND AMOCO TECHNOLOGY COMPANY
Dated December 7, 1994
To facilitate resolution of issues and litigation regarding U.S. Patents No.
4,851,330 and No. 5,288,611 to X. X. Xxxxx and presently held by Gen-Probe
Incorporated and to clarify rights and obligations provided in the Exclusive
License Agreement Between The Regents Of The University of California and
Amoco Technology Company for Detection of Mycoplasma By DNA Hybridization (UC
Case No. 84-099-2), The Regents and Amoco Technology Company agree to amend
the Exclusive License Agreement as follows:
1) Subparagraph 2.7b(iii) of the Exclusive License Agreement shall be deleted
from the Agreement in its entirety and replaced with the following:
(iii) a provision for an earned royalty of 2.0% of the total of the
gross invoice prices of any material or any method whose
manufacture, use or sale would constitute, but for the license
granted to Licensee, an infringement of any claim of an issued
patent within Regents' Other Rights. However, cash, trade, or
quantity discounts; sales, use, tariff, import/export duties or
other excise taxes imposed upon particular sales; transportation
charges and allowances or credits to customers because of
rejections or returns, and such other actual or customary costs
as are applicable shall be subtracted from the gross invoice
prices. Moreover, such earned royalties shall be adjusted so
that the total earned royalty obligation for Licensee's
manufacture, use and sale of licensed products shall not exceed
three percent (3%) of Net Sales of Licensed Products to Partners,
distributors and end users.
1
2) Subparagraph 2.7c of the Exclusive License Agreement shall be deleted from
the Agreement in its entirety and replaced with the following:
2.7c In the event the Regents chooses to perfect legal title to any
part of Regents' Other Rights, including but not limited to
U.S. Patent No. 4,851,330 to Xxxxx X. Xxxxx, The Regents shall be
free to do so by any means The Regents chooses. However, any
agreement or settlement between the Regents and third parties
regarding such legal title shall provide Licensee with freedom to
operate with no additional financial burden under Regents' Patent
Rights and Regents' Other Rights than are set forth therein.
Agreed By and On Behalf Of:
THE REGENTS OF THE UNIVERSITY
OF CALIFORNIA
By: Xxxx X. Xxxxxxxx
-------------------------------
Title: Deputy General Counsel
----------------------------
Date: 12/7/94
-----------------------------
AMOCO TECHNOLOGY COMPANY
By: R Clan
-------------------------------
Title: President
----------------------------
Date: Dec 7, 1994
-----------------------------
2
