FIFTH AMENDMENT
TO THE
PATENT LICENSE AGREEMENT WITH RESEARCH COMPONENT
BETWEEN
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
AND
SUNPHARM CORPORATION
THIS FIFTH AMENDMENT TO THE PATENT LICENSE AGREEMENT WITH RESEARCH COMPONENT
(hereinafter "Fifth Amendment") is entered into this __26__ day of December,
1997 (the "Effective date") between the University of Florida Research
Foundation, Inc., a not-for-profit corporation duly organized and existing under
the laws of the State of Florida (hereinafter "UFRFI") and SunPharm Corporation,
a Delaware corporation (hereinafter "LICENSEE").
RECITALS
Whereas, LICENSEE and UFRFI are parties to that certain Patent License
Agreement with Research Component dated December 9, 1991 (hereinafter
"Agreement") providing LICENSEE the exclusive worldwide rights to commercialize
certain Licensed Products and Licensed Processes (as defined in the Agreement);
Whereas, LICENSEE and UFRFI are also parties that certain First Amendment
to Patent License Agreement with Research Component dated December 30, 1992,
Second Amendment to Patent License Agreement with Research Component dated March
26, 1993, Third Amendment to Patent License Agreement with Research Component
dated November 15, 1994 , and Fourth Amendment to Patent License Agreement with
Research Component dated September 9, 1996;
Whereas, UFRFI and LICENSEE desire to make certain other changes to the
Agreement, as provided herein'
NOW, THEREFORE, in consideration of the premises and other good and
valuation consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereto agree as follows;
1. Section 6 and Section 7 of the Agreement shall be amended and restated
as follows:
ARTICLE VI - PATENT PROSECUTION
6.1 ALLOCATION OF RESPONSIBILITIES. During the term of this Agreement,
LICENSEE shall be responsible for filing, prosecuting and maintaining the
Patent Rights in the name of UFRFI in the United States and at least in the
foreign countries listed in Appendix B hereto. LICENSEE shall retain patent
counsel of its choosing but reasonably acceptable to UFRFI. UFRFI shall be
given reasonable opportunity to discuss and advise LICENSEE with regard to
LICENSEE's selection of patent counsel and the patenting activities. UFRFI
shall cooperate with LICENSEE by providing all information and executing
all documents reasonably necessary for LICENSEE to perform its obligations.
6.2 ABANDONMENT OF PATENT RIGHTS. If LICENSE intends to abandon all
claims under a patent application contained in Patent Rights in a
particular jurisdiction, it will provide UFRFI with a written notice
("Notice of Abandonment") thereof. Upon receipt of the Notice of
Abandonment, UFRFI may, by written notice to LICENSEE, elect to continue
the prosecution of such application. LICENSEE may assume that UFRFI
approves of any proposed abandonment if it does not receive a written
response within ten (10) business days from delivery of a Notice of
Abandonment.
6.3 PATENTING COSTS. Payment of all fees and costs relating to the
filing, prosecution, and maintenance of the Patent Rights shall be the
responsibility of LICENSEE. If UFRFI elects not to abandon Patent Rights as
provided in Section 6.2 above, the future costs relating to the prosecution
and maintenance of such Patent Rights shall be borne by UFRFI; provided,
however, that LICENSEE shall reimburse UFRFI for any such costs upon
issuance of a patent containing claims which were contained in the Notice
of Abandonment.
6.4 REPORTING AND COORDINATION. LICENSEE shall keep UFRFI advised as
to all developments with respect to its patenting activities (such as
invention disclosures, actions before patent offices, status of patent
applications, etc.) At meetings or telephone conferences to be held
quarterly with representatives of LICENSEE, patent counsel of LICENSEE, and
UFRFI. In addition, LICENSEE shall provide UFRFI with copies of all
relevant documents filed with or received from the U.S. Patent and
Trademark Office and its foreign equivalents relating to the prosecution
and maintenance of the Patent Rights.
6.5 REINTERVENTION BY UFRFI. If LICENSEE fails to take actions in the
prosecution or maintenance of Patent Rights which are necessary to preserve
substantial Patent Rights, UFRFI shall have the right to provide written
notice to LICENSEE requesting that such action be taken. If LICENSEE does
not take such action within thirty (30) days from receipt of such notice
(or such shorter period as necessary to meet the applicable statutory of
procedural deadline). UFRFI shall have the right to take such action in
place of LICENSEE.
ARTICLE VII - INFRINGEMENT
7.1 INFORMATION. A party shall inform the other party in writing of
any alleged infringement of the Patent Rights by a third party and of any
available evidence promptly after receiving notice of such infringement.
7.2 DEFENSE AGAINST INFRINGEMENT BY LICENSEE. LICENSEE shall have the
right, but shall not be obligated, to bring an action against any infringer
of the Patent Rights. UFRFI may join LICENSEE as a party plaintiff in any
such suit, and LICENSEE may have UFRFI joined as a party-plaintiff, if the
law of the country or state where such suit is brought so requires. Any
voluntary joinder by UFRFI is at its own expense. If prior to the
initiation of an infringement action UFRFI agrees to share the costs and
expenses associated with the infringement action (including LICENSEE's
attorneys' fees), any recovery or damages for past infringement awarded in
such action shall be shared equally. If UFRFI decides not to share such
costs and expenses, LICENSEE may retain any recovery or damages awarded in
such action.
7.3 DEFENSE AGAINST INFRINGEMENT BY UFRFI. If within six (6) months
after having been notified of any alleged infringement or such shorter time
proscribed by law, LICENSEE has been unsuccessful in persuading the alleged
infringer to desist, and LICENSEE has not brought an infringement action,
or if LICENSEE notifies UFRFI at any time prior thereto of its intention
not to bring suit against any alleged infringer, UFRFI may bring an
infringement action at its own cost and risk. The terms regarding joinder
and sharing in awards and damages set forth in Section 7.2 above apply
mutatis mutandis.
7.4 SETTLEMENTS. No settlement, consent judgment or other voluntary
final disposition of the infringement suit may be entered into without the
consent of the other party, which consent shall not unreasonably be
withheld.
7.5 COOPERATION. In any infringement suit brought by a party pursuant
to this Agreement, the other party 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.
7.6 LOSS OF PATENT RIGHTS. In the event that the alleged infringer or
a third party bringing a patent infringement action against UFRFI or
LICENSEE prevails, LICENSEE shall be entitled to deduct damages or
royalties payable to third parties from any payments due to UFRFI under
this Agreement, provided, however, that such payments hall not be reduced
by more than fifty percent (50%).
THE UNIVERSITY OF FLORIDA
RESEARCH FOUNDATION, INC.
Date: 12/26/97 By: /s/ XX Xxxxxxxxx
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Name: XX Xxxxxxxxx, PhD
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Title: Executive Director
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SUNPHARM CORPORATION
Date: December 23, 1997 By: /s/ Xxxxxx Xxxx
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Name: Xxxxxx Xxxx
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Title: President
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