LICENSE AGREEMENT
This License Agreement, effective upon the date of last signature herein
(the "Effective Date"), by and between The Penn State Research Foundation
(hereinafter referred to as "PSRF"), a non-profit corporation duly organized and
existing under the laws of the Commonwealth of Pennsylvania and having an office
at 000 Xxx Xxxx, Xxxxxxxxxx Xxxx, XX 00000, and DNAPrint Genomics Inc, a
corporation organized under the laws of the State of Florida (hereinafter
referred to as "LICENSEE"), having its principal office at 000 Xxxxxxxx Xxxxxx,
Xxxxxxxx, Xxxxxxx 00000.
WITNESSETH
WHEREAS, Dr. Xxxx Xxxxxxx, employee of The Pennsylvania State University
(the "UNIVERSITY"), in the course of basic research, has collected certain human
DNA samples and certain subjectively measured and self-reported biogeographical
ancestry and ethnicity data, eye color, hair color & skin color pigmentation
data, and sun exposure history information relating to said samples ("SAMPLES &
TECHNICAL INFORMATION", as defined hereinbelow), filed as The Pennsylvania State
University Invention Disclosure No. XXXX-XXXX, and is described in Appendix B
attached herein below;
WHEREAS, PSRF is dedicated to fostering and advancing scientific research
within the Commonwealth of Pennsylvania and, in particular, within the
UNIVERSITY and is responsible for developing discoveries and inventions made by
employees of the UNIVERSITY by evaluating invention disclosures, pursuing
patents, and pursuing licensing arrangements thereon;
WHEREAS, PSRF is the owner of said SAMPLES & TECHNICAL INFORMATION and has
the right to grant licenses;
WHEREAS, LICENSEE wishes to collaborate with the UNIVERSITY and to perform
further internal research and development on the SAMPLES & TECHNICAL
INFORMATION, as part of its effort to develop commercial products in the FIELD
that will be related to, rely on, using, incorporating and/or referencing the
SAMPLES & TECHNICAL INFORMATION;
WHEREAS, LICENSEE wishes to obtain and PSRF is willing to grant a license
to said SAMPLES & TECHNICAL INFORMATION under the terms and conditions as set
forth herein;
NOW THEREFORE, in consideration of the mutual promises and covenants set
forth herein and for good and valuable consideration, the adequacy and
sufficiency of which is hereby acknowledged, the parties hereby agree as
follows:
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ARTICLE I - DEFINITIONS
For purposes of this License Agreement, the following words and phrases
shall have the following meanings:
1.1 "LICENSEE" shall be DNAPrint Genomics Inc..
1.2 "FIELD" shall mean the research, development and commercialization of
genomic informational kits for purposes of identifying eye colors, hair colors,
skin pigmentation, skin response to burn, for uses in forensics and prenatal
diagnostic.
1.3 "TERRITORY" shall mean the countries in which PATENT RIGHTS shall apply.
1.4 "PATENT RIGHTS" shall mean any and all pending and issued U. S. and
foreign counterparts of patent application filed and prosecuted pursuant to
Article 6; and all pending and issued renewals, continuations, divisions, and/or
reissues of such application or foreign counterparts filed and prosecuted
pursuant to Article 6, as a result of LICENSEE's collaboration with the
UNIVERSITY and the LICENSEE's internal research, development and
commercialization of LICENSED PRODUCT(s) relating to, relying on, using,
incorporating and/or referencing SAMPLES & TECHNICAL INFORMATION.
1.5 "SAMPLES & TECHNICAL INFORMATION" shall mean certain human DNA samples
and certain subjectively measured and self-reported biogeographical ancestry and
ethnicity data, eye color, hair color & skin color pigmentation data, and sun
exposure history information relating to said samples, and is described in
Appendix B attached herein below.
1.6 "LICENSED PRODUCT" shall mean any process, product or part thereof, or
use of a product or part thereof, which is researched and developed from,
relating to, relying on, using, incorporating and referencing SAMPLES &
TECHNICAL INFORMATION, and/or which is covered in whole or in part by at least
one unexpired claim of PATENT RIGHTS in the country in which any such process,
product or part thereof is made, used, or sold.
1.7 "NET SALES" for LICENSED PRODUCT shall mean: (1) the revenue derived
from the sale, lease, transfer or consignment of LICENSED PRODUCT by LICENSEE to
independent third parties less the following amounts: (i) all normal and
customary discounts in the trade (i.e. cash discounts, volume discounts and
rebates); and (ii) credits or allowances actually granted upon claims or
returns; each determined in accordance with generally accepted accounting
principles consistently applied.
ARTICLE II - THE LICENSE
2.1 Subject to any preexisting rights, if any, of the Government of the
United States created by the use of Government funding, PSRF hereby grants to
LICENSEE an exclusive right and license in the TERRITORY for the FIELD, without
right to sublicense, to SAMPLES & TECHNICAL INFORMATION and PATENTS RIGHTS and
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to the extent not prohibited by other patents, to collaborate with the
UNIVERSITY and to research, develop, make, have made, use, lease, and sell
LICENSED PRODUCTs for the term set forth herein, unless this License Agreement
shall be earlier terminated according to the terms and conditions contained
herein. Said SAMPLES & TECHNICAL INFORMATION shall be made available to LICENSEE
within XXXXX days from the Effective Date of this Agreement.
2.2 PSRF reserves the rights for itself and the UNIVERSITY to use SAMPLES &
TECHNICAL INFORMATION and to practice under the PATENT RIGHTS for their own
research and educational purposes, including, without limitation, any new
information, methods and compositions developed, whether patentable or not, as a
result of the use of SAMPLES & TECHNICAL INFORMATION by the collaborative
efforts and LICENSEE's internal research efforts contemplated under this
Agreement.
2.3 LICENSEE agrees that LICENSED PRODUCTs leased or sold in the United
States will be manufactured substantially in the United States. Certain PATENT
RIGHTS resulted from federally-supported research, and their assignment is
governed by the applicable provisions of the Federal funding agreements,
including the 35 USC Chapter 00 (xxx "Xxxx-Xxxx Xxx"), 00 XXX Part 401.
2.4 The license rights granted hereunder shall not be construed to confer
any rights upon LICENSEE by implication, estoppel or otherwise to any technology
owned or controlled by PSRF which is not specifically set forth herein.
2.5 Except as set forth in Paragraph 2.2 above, the LICENSEE by acceptance
of granted said license rights hereunder shall not be construed to confer any
rights to PSRF, the UNIVERSITY or any of either's agents, employees or other
collaborators by implication, estoppel or otherwise to any technology owned,
controlled, licensed or otherwise obtained by LICENSEE and it's affiliates,
successors, sub-licensees, joint venture partners or other business partners yet
to be defined or controlled in part or in whole by LICENSEE which is not
specifically set forth herein.
ARTICLE III - PAYMENTS
3.1 In partial consideration of the rights granted by this License
Agreement, LICENSEE shall pay to PSRF a non-refundable, License Issue Fee of ten
thousand one hundred and fifty dollars ($10,150.00 USD) upon execution of this
License Agreement. Said License Issue Fee shall be paid upon the Effective Date
of this License Agreement.
3.2 In addition to the foregoing License Issue Fee, LICENSEE shall pay PSRF
a running royalty of twenty-five percent (25%) of NET SALES of LICENSED PRODUCTS
within the field of skin pigmentation. Such running royalties shall be payable
as provided in Paragraph 3.6.
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3.3 In the event that the running royalties paid on NET SALES in any
calendar year do not reach the minimum amount set out below for such year,
LICENSEE shall pay an additional amount with the payment due for the period
ending December 31 of such year, so that the total amount paid for such year
shall reach such minimum amount:
Year One (2003) $2,500
Year Two (2004) $5,000
Year Three (2005) $10,000
Year Four (2006) $20,000
Year Five and after (2007-) $40,000
3.4 In addition to the foregoing License Issue Fee, Running Royalties and
Annual Minimum Royalties as set forth above in Paragraphs 3.1, 3.2 and 3.3,
LICENSEE shall pay PSRF Additional Running Royalties of three and a half percent
(3.5%) of NET SALES as defined herein for LICENSED PRODUCTS sold within the
field of eye and hair pigmentation
3.5 Payment of the royalties specified in Paragraphs 3.2 and 3.4 shall be
made by LICENSEE to PSRF within thirty (30) days after June 30 and December 31
of each year during the term of this License Agreement covering the quantity of
LICENSED PRODUCTs sold by LICENSEE during the preceding calendar quarter. After
termination or expiration of this License Agreement, a final payment shall be
made by LICENSEE covering the whole or partial semi-annual period. Each
semi-annual payment shall be accompanied by a written statement of NET SALES as
described in Paragraph 5.2 hereunder.
3.6 All payments due hereunder are expressed in and shall be paid by check
payable in United States of America currency, without deduction of exchange,
collection or other charges, to PSRF in University Park, PA or at such other
place as PSRF may reasonably designate.
3.7 For converting into United States dollars any payment accrued hereunder
in the currency of any other country, the rate of exchange for the purchase of
United States dollars with such currency quoted by The Chase Manhattan Bank, New
York, New York, on the last business day of the payment period in question shall
be used.
3.8 No multiple royalties shall be payable because any LICENSED PRODUCTs,
their manufacture, use, lease or sale are or shall be covered by more than one
patent application, patent or certificate of registration licensed under this
License Agreement.
3.9 All payments set forth in this Agreement shall, if overdue, bear
interest until payment at a per annum rate of 2% above the prime rate in effect
at the Chase Manhattan Bank on the due date. The payment of such interest shall
not foreclose PSRF from exercising any other rights it may have as a consequence
of the lateness of any payment.
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3.10 LICENSEE's failure to make payments in accordance with this Article
III shall constitute a material breach or default and shall be grounds for
termination of this License Agreement pursuant to Paragraph 14.3 hereof.
ARTICLE IV - MARKETING EFFORTS
4.1 LICENSEE shall use reasonable efforts to diligently collaborate with
the UNIVERSITY, perform further research and development on SAMPLES & TECHNICAL
INFORMATION, and bring one or more LICENSED PRODUCTS into the commercial market
as soon as practicable, and to continue active, diligent marketing efforts for
one or more LICENSED PRODUCTS throughout the term of this License Agreement.
Such efforts shall include, but not be limited to the following actions:
(a) LICENSEE shall promptly genotype the speciments for genetic loci
as part of LICENSEE's pigmentation battery;
(b) within one (1) year from the Effective Date of this License
Agreement, LICENSEE shall have screened the SAMPLES & TECHNICAL INFORMATION
against at least 200 single nucleotide polymorphism (SNP) loci and
identified any statistical associations that may exist;
(c) within two (2) years from the Effective Date of this License
Agreement, LICENSEE shall have shall have developed at least one (1)
prototype of LICENSED PRODUCT, given that significant statistical
associations are found under 4.1 (b) above;
(d) within three (3) years from the Effective Date of this License
Agreement, LICENSEE shall have optimized the prototype LICENSED PRODUCT and
brought at least one (1) LICENSED PRODUCT to the commercial market;
(e) publish and distribute a product circular for one or more LICENSED
PRODUCTs;
(f) advertise in at least on major journal during the first year of
the introduction of one or more LICENSED PRODUCTs and twice annually for
five (5) years thereafter; and
(g) market the LICENSED PRODUCTs with the same diligence as LICENSEE
employs for comparable products marketed by LICENSEE.
4.2 LICENSEE's failure to perform in accordance with Paragraphs 4.1 shall
constitute a material breach or default and shall be grounds for termination of
this License Agreement pursuant to Paragraph 14.4 hereof.
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4.3 In the event that LICENSEE in its sole discretion decides to market one
or more LICENSED PRODUCTs in any country, then LICENSEE shall exert reasonable
efforts to have such LICENSED PRODUCTs cleared for marketing by the responsible
government agencies of that country requiring such clearance. Should LICENSEE
terminate this License Agreement, LICENSEE agrees to assign its full right,
title, and interest in and to such market clearance application, including all
data relating thereto, to PSRF at no cost to PSRF.
ARTICLE V - REPORTS AND RECORDS
5.1 LICENSEE shall keep and preserve, in accordance with generally accepted
accounting principles and procedures, complete and accurate books, records and
accounts containing all particulars that may be necessary for the purpose of
showing the amounts payable to PSRF hereunder. Said books, records and accounts
shall be kept at LICENSEE's principle place of business or the principle place
of business of the appropriate division of LICENSEE to which this License
Agreement relates. Said books and supporting data shall be open, upon reasonable
notice at all reasonable times and places during business hours for five (5)
years following the end of the calendar year to which they pertain, to the
inspection of PSRF or its agents for the purpose of verifying LICENSEE's royalty
statement or compliance in other respects with this License Agreement. Should
such inspection lead to the discovery of a greater than ten (10%) discrepancy in
reporting to PSRF's detriment, LICENSEE agrees to reimburse PSRF for the full
cost of such inspection.
5.2 LICENSEE shall, within thirty (30) days of June 30 and December 31, of
each year, deliver to PSRF true and accurate reports, giving such particulars of
the business conducted by LICENSEE during the preceding calendar quarter under
this License Agreement as shall be pertinent to a royalty accounting hereunder.
These reports shall be duly signed by an authorized signatory of LICENSEE on
behalf of LICENSEE and shall include at least the following:
(a) number and type of LICENSED PRODUCTs manufactured and sold by LICENSEE;
(b) total xxxxxxxx for LICENSED PRODUCTs sold by LICENSEE;
(c) listing of applicable deduction as provided in paragraph 1.6 hereinabove; and
(d) total royalties due.
5.3 With each such report submitted, LICENSEE shall pay to PSRF the
royalties due and payable under this License Agreement. If no royalties shall be
due, LICENSEE shall so report.
5.4 LICENSEE shall use the royalty reporting sheet attached hereto as
Appendix A, or a substantial equivalent, to fulfill the royalty and reporting
requirements of this Article V.
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ARTICLE VI - PATENT RIGHTS OWNERSHIP,
PROSECUTION AND MAINTENANCE
6.1 Ownership of PATENT RIGHTS. PSRF and LICENSEE shall be joint owners and
joint named assignees of all PATENT RIGHTS filed, prosecuted and maintained as a
result of LICENSEE's collaboration with the UNIVERSITY and LICENSEE's research
and development work relating to, relying on, using, incorporating and
referencing SAMPLES & TECHNICAL INFORMATION.
6.2 Responsibility for Patent Prosecution. LICENSEE shall apply for, seek
prompt issuance of, and maintain the PATENT RIGHTS during the term of this
Agreement. The prosecution, filing and maintenance of patent applications and
patents which issue therefrom shall be the primary responsibility of LICENSEE,
or its designee, but PSRF shall be given the opportunity and reasonable time,
but not to exceed thirty (30) days from receipt of said patent applications, to
review and comment upon the breadth and coverage of said patent applications.
During the patent preparation, prosecution and maintenance process, PSRF shall
have reasonable opportunities to advise LICENSEE to ensure that said PATENT
RIGHTS adequately address the needs and desires of PSRF. LICENSEE shall provide
to PSRF copies of all correspondences to and from the law firm designated by
LICENSEE and all communications to and from patent offices relevant to the
filing, prosecution and maintenance of PATENT RIGHTS.
6.3 U.S. Patent Filings. LICENSEE shall be responsible for all reasonable
and ordinary fees and external costs relating to the filing, prosecution,
maintenance and defense of U.S. provisional and non provisional applications and
resulting patents, pursuant to the conditions set forth herein. LICENSEE shall
promptly provide to PSRF copies of invoices for all such expenses.
6.4 International Patent Filings. LICENSEE understands and agrees that the
primary responsibility for the filing, prosecution, maintenance and costs of all
foreign patent filings shall be LICENSEE's. LICENSEE shall consult PSRF no later
than three (3) months before applicable bar dates, as to the foreign countries
in which it wishes to continue to seek patent protection. Payment of all fees
and costs relating to the filing, prosecution, maintenance and defense of said
foreign patent rights shall be the direct responsibility of LICENSEE, provided
PSRF is kept reasonably informed and given advance estimates where practical.
LICENSEE shall promptly provide to PSRF copies of invoices for all such
expenses.
6.5 Patent Expense Reimbursement. LICENSEE may retain up to fifty percent
(50%) of NET SALES as defined in Paragraph 1.7 to reimburse for patent expenses
as outlined in Paragraphs 6.3 and 6.4 above.
6.6 Abandonment. In the event LICENSEE decides not to financially support,
or to continue prosecution of a patent application to issuance, or to maintain
any United States or foreign patent application within the PATENT RIGHTS,
LICENSEE shall timely notify PSRF in writing in order that PSRF may continue
said prosecution or maintenance of such intellectual property at its own
expense. LICENSEE's right under this License Agreement to any claims contained
within the PATENT RIGHTS for any country in which LICENSEE does not continue
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prosecution or maintenance in accordance with Paragraph 6.3 or 6.4 above shall
immediately terminate upon failure of LICENSEE to pay costs hereunder, but only
for the applicable country or countries.
6.7 Grounds for Material Breach. LICENSEE's failure to make payments in
accordance with Paragraph 6.3 and 6.4, together with its failure to notify PSRF
of its intention to abandon PATENT RIGHTS under Paragraph 6.6, shall constitute
a material breach or default and shall be grounds for termination of this
License Agreement pursuant to Article XII hereof.
ARTICLE VII - INFRINGEMENT AND OTHER ACTIONS
7.1 LICENSEE and PSRF shall promptly provide written notice, to the other
party, of any alleged infringement by a third party of any patent licensed
hereunder under PATENT RIGHTS and provide such other party with any available
evidence of such infringement.
7.2 During the term of the License Agreement, LICENSEE shall have the
initial right, but not the obligation, to prosecute and/or defend, at its own
expense and utilizing counsel of its choice, any infringement of, and/or
challenge to, the PATENT RIGHTS. In furtherance of such right, LICENSEE hereby
agrees that PSRF may join LICENSEE as a party in any such suit, without expense
to PSRF. Such right to bring such an infringement action shall remain in effect
only for so long as the license granted herein remains exclusive. No settlement,
consent judgment or other voluntary, final disposition of the suit may be
entered into without the consent of PSRF, which consent shall be timely given
and not unreasonably be withheld. LICENSEE agrees to keep PSRF reasonably
informed as to the status of any such action and to provide copies to PSRF, upon
request by PSRF, of any papers or information relevant to the prosecution of any
such action. LICENSEE shall timely inform PSRF of any offer for settlement
presented by a third party for any such action and LICENSEE shall consider
PSRF's input in deciding whether or not to accept any such settlement offer. The
total cost of any such action, commenced or defended solely by LICENSEE, shall
be borne by LICENSEE, which shall keep any recovery or damages derived
therefrom.
7.3 If within six (6) months after having been notified of any alleged
infringement, LICENSEE shall have been unsuccessful in persuading the alleged
infringer to desist and shall not have brought and shall not be diligently
prosecuting an infringement action, or if LICENSEE shall notify PSRF at any time
prior thereto of its intention not to bring suit against any alleged infringer
in the TERRITORY for the FIELD, then, and in those events only, PSRF shall have
the right, but not the obligation, at its own expense and utilizing counsel of
its choice, to prosecute any infringement of, and/or defend any challenge to,
the PATENT RIGHTS, and LICENSEE may, for such purposes, join PSRF as a party
plaintiff; provided, however, that such right to bring such an infringement
action shall remain in effect only for so long as the license granted herein
remains exclusive. No settlement, consent judgment or other voluntary, final
disposition of the suit may be entered into without the consent of LICENSEE,
which consent shall be timely given and not unreasonably be withheld. PSRF
agrees to keep LICENSEE reasonable informed as to the status of any such action
and to provide copies to LICENSEE, upon request by LICENSEE, of any papers or
information relevant to the prosecution of any such action. PSRF shall timely
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inform LICENSEE of any offer for settlement presented by a third party for any
such action and PSRF shall consider LICENSEE's input in deciding whether or not
to accept any such settlement offer. The total cost of any such action commenced
or defended solely by PSRF shall be borne by PSRF, which shall keep any recovery
or damages derived therefrom.
7.4 In the event that a declaratory judgment action alleging invalidity or
noninfringement of any of the PATENT RIGHTS shall be brought against LICENSEE,
PSRF, at its option, shall have the right, within (30) days after commencement
of such action, to intervene and take over the sole defense of the action at its
own expense.
7.5 In any infringement suit as either party may institute to enforce the
PATENT RIGHTS pursuant to this License 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.
7.6 With the written express consent of PSRF, LICENSEE, during the
exclusive period of this License Agreement, shall have the right in accordance
with the terms and conditions herein to sublicense any alleged infringer in the
TERRITORY for the FIELD for future use of the PATENT RIGHTS. Any upfront fees as
part of such a sublicense shall be shared equally between LICENSEE and PSRF;
other royalties shall be treated per Article III.
ARTICLE VIII - INDEMNIFICATION
8.1 LICENSEE shall at all times during the term of this License Agreement
and thereafter, indemnify, defend and hold PSRF, its trustees, directors,
officers, employees and affiliates, harmless against all claims, proceedings,
demands and liabilities of any kind whatsoever, including legal expenses and
reasonable attorneys' fees, arising out of the death of or injury to any person
or persons or out of any damage to property, or resulting from the use or
reliance on SAMPLES & TECHNICAL INFORMATION, or the production, manufacture,
sale, use, lease, consumption or advertisement of the LICENSED PRODUCTs or
arising from any obligation of LICENSEE hereunder.
8.2 Prior to the first commercial sale of a LICENSED PRODUCT, LICENSEE
shall obtain and carry in full force and effect commercial, general liability
insurance which shall protect LICENSEE and PSRF with respect to events covered
by Paragraph 8.1 above. Such insurance shall be written by a reputable insurance
company authorized to do business in the Commonwealth of Pennsylvania, shall
list PSRF as an additional named insured thereunder, shall be endorsed to
include product liability coverage and shall require thirty (30) days written
notice to be given to PSRF prior to any cancellation or material change thereof.
The limits of such insurance shall not be less than One Million Dollars
($1,000,000) per occurrence with an aggregate of Three Million Dollars
($3,000,000) for personal injury or death, and One Million Dollars ($1,000,000)
per occurrence with an aggregate of Three Million Dollars ($3,000,000) for
property damage. LICENSEE shall provide PSRF with Certificates of Insurance
evidencing the same.
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8.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS LICENSE AGREEMENT,
PSRF, ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES MAKE NO
REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE
ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS
LICENSE AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN
BY PSRF THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT
INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL PSRF, ITS
TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND AFFILIATES BE LIABLE FOR INCIDENTAL
OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO
PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER PSRF SHALL BE ADVISED, SHALL
HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY.
ARTICLE IX - EXPORT CONTROLS
9.1 It is understood that PSRF is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. PSRF neither represents that a license shall not be required nor that,
if required, it shall be issued.
ARTICLE X - NON-USE OF NAMES
10.1 LICENSEE shall not use the names or trademarks of Penn State, PSRF, or
any of their employees, or any adaptation thereof, in any advertising,
promotional or sales literature without prior written consent obtained from
PSRF, in each case, except that LICENSEE may, without prior written consent,
state that it is licensed by PSRF, under one or more of the patents and/or
applications comprising the PATENT RIGHTS.
ARTICLE XI- PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
11.1 Any payment, notice or other communication pursuant to this License
Agreement shall be sufficiently made or given on the date of mailing if sent to
such party by certified or registered first class mail, postage prepaid,
addressed to it at its address below or as it shall designate by written notice
given to the other party as follows:
In the case of THE PENN STATE RESEARCH FOUNDATION:
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President
The Penn State Research Foundation
c/o Intellectual Property Xxxxxx
000 Xxxxxxxxxx Xxxxxx
Xxxxxxxxxx Xxxx, XX 00000-0000
Phone: 000-000-0000
Fax: 000-000-0000
In the case of LICENSEE:
DNAPrint Genomics Inc.
000 Xxxxxxxx Xxxxxx
Xxxxxxxx, Xxxxxxx 00000
Phone: 000-000-0000
Fax: 000-000-0000
ARTICLE XII - ASSIGNMENT
12.1 This License Agreement shall not be assignable by either party without
the prior written consent of the other party except to a successor in ownership
of all or substantially all of the business assets of a party hereto, and which
successor shall expressly assume in writing the performance of all the terms and
conditions of this License Agreement to be performed by the assigning party.
ARTICLE XIII - DISPUTE RESOLUTION
13.1 Except for the right of either party to apply to a court of competent
jurisdiction for a temporary restraining order, a preliminary injunction, or
other equitable relief to preserve the status quo or prevent irreparable harm,
any and all claims, disputes or controversies arising under, out of, or in
connection with this License Agreement, including any dispute relating to patent
validity or infringement, which the parties shall be unable to resolve within
sixty (60) days, shall be mediated in good faith. The party raising such dispute
shall promptly advise the other party of such claim, dispute or controversy in a
writing which describes in reasonable detail the nature of such dispute. By not
later than five (5) business days after the recipient has received such notice
of dispute, each party shall have selected for itself a representative who shall
have the authority to bind such party, and shall additionally have advised the
other party in writing of the name and title of such representative. By not
later than ten (10) business days after the date of such notice of dispute, the
party against whom the dispute shall be raised shall select a mediation firm in
Pennsylvania and such representatives shall schedule a date with such firm for a
mediation hearing. The parties shall enter into good faith mediation and shall
share the costs equally. If the representatives of the parties have not been
able to resolve the dispute within fifteen (15) business days after such
mediation hearing, the parties shall have the right to pursue any other remedies
legally available to resolve such dispute in either either the Centre County
Court of Common Pleas or in the United States District Court for the Middle
District of Pennsylvania, to whose jurisdiction for such purposes PSRF and
LICENSEE each hereby irrevocably consents and submits.
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13.2 Notwithstanding the foregoing, nothing in this Article XIII shall be
construed to waive any rights or timely performance of any obligations existing
under this License Agreement.
ARTICLE XIV - TERM AND TERMINATION
14.1 LICENSEE shall have the right to terminate this Agreement at any time
on six (6) months' notice to PSRF, and upon payment of all amounts due PSRF
through the effective date of the termination.
14.2 Financial Solvency of LICENSEE. LICENSEE agrees that as a part of its
material inducement to PSRF to enter this License Agreement, it shall provide
PSRF with at least ninety (90) days written notice hereunder of its intent to
file a petition in Bankruptcy, whether it be for a Chapter 7, 11, 13 or any
other such petition. LICENSEE agrees and understands that PSRF has an obligation
to University, a land grant institution under the Xxxxxxx Act, to license the
PATENT RIGHTS pursuant to terms and conditions which maximize the public
benefit. PSRF shall have the right to immediately terminate this License
Agreement by giving written notice to LICENSEE, in the event LICENSEE does any
of the following: a) provides notice hereunder of its intent to file (or does
actually file without providing said notice) a petition in bankruptcy, b)
attempts to make an assignment hereof for the benefit of creditors, c)
discontinues or dissolves its business, or d) if a receiver is appointed for
LICENSEE.
14.3 Financial Breach. In the event LICENSEE has breached its obligations
to pay royalties or fees under Article III of this License Agreement, and/or
fails to file royalty reports in accordance with Article V of this License
Agreement, (hereafter "Financial Breach") PSRF shall provide LICENSEE with
written notice of said breach, and LICENSEE shall have a period of thirty (30)
days to cure said breach. In the event LICENSEE does not fully cure the breach
within that thirty (30) day period, and fails within that thirty (30) days to
commence mediation pursuant to Article XIII of this License Agreement alleging
grounds for its non-payment thereof, this License Agreement shall be
automatically terminated without further notice or action by PSRF.
Notwithstanding LICENSEE's rights to cure herein, in the event LICENSEE commits
a Financial Breach more than two times within any calendar year within the term
of this License, PSRF shall be entitled to give notice of breach which shall
become effective immediately upon LICENSEE's receipt of said Notice, and for
which LICENSEE shall not have any further right of "cure."
14.4 Failure of Other Performance. Upon any material breach of performance
under this License Agreement, by LICENSEE, other than those occurrences set out
in Paragraphs 14.2 or 14.3 hereinabove, which shall always take precedence in
that order over any material breach or default referred to in this Paragraph
14.4, PSRF shall have the right to terminate this License Agreement and the
rights, privileges and license granted hereunder effective sixty (60) days after
PSRF first notifies LICENSEE of the alleged breach under the notice provisions
contained in Article XIV of this License Agreement. As used in this License
Agreement, the term "Material Breach of Performance" shall include, but not be
limited to the following: breach of due diligence provisions in Article IV,
repeated inaccuracies of royalty reports, failure to notify PSRF of
12
infringement, failure to assume duty to indemnify and defend, failure to provide
adequate levels of insurance, and attempt to assign rights hereunder. Such
termination shall become effective upon final notification by PSRF after the
sixty (60) days, unless LICENSEE shall have fully cured any such material breach
or default prior to the expiration of the sixty (60) day period. In the event of
a dispute as to whether LICENSEE has cured the alleged breach, the matter shall
be resolved pursuant to Article XIII of this License Agreement.
14.5 Upon termination of this License Agreement for any reason, nothing
herein shall be construed to release either party from any obligation that
matured prior to the effective date of such termination; and Articles I, VIII,
IX, X, XV and paragraphs 14.5 and 14.6 shall survive any such termination.
LICENSEE may, however, after the effective date of such termination, sell all
LICENSED PRODUCTs, and complete LICENSED PRODUCTs in the process of manufacture
at the time of such termination and sell the same, provided that LICENSEE submit
the reports required by Article V hereof.
ARTICLE XV - MISCELLANEOUS PROVISIONS
15.1 Entire Agreement. This License Agreement embodies the entire
understanding of the parties and shall supersede all previous communications,
representations, or undertakings, either verbal or written, between the parties
relating to the subject matter hereof.
15.2 Amendment. This License Agreement may be amended only by a written
agreement embodying the full terms of the amendment signed by authorized
representatives of both parties.
15.3 Severability. Should any provision of this License Agreement be held
to be illegal, invalid or unenforceable, by any court of competent jurisdiction,
such provision shall be modified by such court in compliance with the law and,
as modified, enforced. The remaining provisions of this License Agreement shall
be construed in accordance with the modified provision and as if such illegal,
invalid or unenforceable provision had not been contained herein.
15.4 No Strict Construction. The language used in this License Agreement
shall be deemed to be the language chosen by both parties hereto to express
their mutual intent and no rule of strict construction against either party
shall apply to any term or condition of this License Agreement.
15.5 Relationship of Parties. Nothing contained in this License Agreement
shall be construed as creating a partnership, joint venture, agency or an
association of any kind.
15.6 No Waiver. The failure of one party hereto to enforce at any time any
of the provisions of this License Agreement, or any rights in respect thereto,
or to exercise any election herein provided, shall in no way be considered to be
a waiver of such provision, rights or elections or in any way to affect the
validity of this License Agreement, or excuse a similar subsequent failure to
13
perform any such term or condition by the other party. Any waiver must be in
writing.
15.7 Interpretation. The headings of several sections contained herein 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 License Agreement.
15.8 Governing Law. This License Agreement shall be governed by and
construed in accordance with the laws of the Commonwealth of Pennsylvania
without giving effect to any choice of law or conflict of law provision or rule
that would cause the application of the laws of any jurisdiction other than the
Commonwealth of Pennsylvania, except that questions affecting the construction
and effect of any patent shall be determined by the law of the country in which
the patent was granted.
15.9 Product Marking. LICENSEE agrees to xxxx the LICENSED PRODUCTs sold in
the United States with all applicable United States patent numbers. All LICENSED
PRODUCTs shipped to or sold in other countries shall be marked in such a manner
as to conform with the patent laws and practices of the country of manufacture
or sale.
14
IN WITNESS WHEREOF, the parties hereto, intending to be legally bound hereby,
have each caused a duly authorized representative to execute this License
Agreement on the day and year set forth below.
DNAPRINT GENOMICS INC.
(LICENSEE)
By: _____________________________________
Name: __________________________________
Title: ____________________________________
Date: ___________________________________
THE PENN STATE RESEARCH FOUNDATION
(PSRF)
By: _____________________________________
Name: __________________________________
Title: ____________________________________
Date: ___________________________________
Read and understood:
By: _____________________________________
Name: ______Dr. Xxxx Shriver_____________
Title: ____________________________________
Date: ___________________________________
15
Appendix A
[COMPANY]/PSRF License Agreement Royalty Report for the Period ____________through__________
Instructions: Please fill in all boxes (write "none" if not applicable), and
sign and date at bottom. All section numbers refer to the License Agreement.
Answer questions 1 and 2 (AND SIGN AND DATE AT BOTTOM) EVEN IF THERE HAS BEEN NO
ACTIVITY in reporting period.
1. Number of transactions: by [COMPANY]
Answer this section only if there has been Licensed Product/Process activity in
reporting period.
Product or Process Deductions
Date of Type of Transaction By ______ Type (name and id Total per __ Royalties Customer Name and Address
Transaction number) Xxxxxxxx (specify type) Due
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
Number of Royalty Report continuation sheets attached________
Total amount enclosed $_______________
[COMPANY]
By:________________________________________________ Date:_______________________________________
Name and Title:______________________________________________________________________________________
16
Appendix A
Continuation sheet number _____to [COMPANY]/PSRF License Agreement Royalty
Report for the Period _____________ through ________________
Use this sheet if there are additional transactions to report.
Product or Process Deductions
Date of Type of Transaction By ______ Type (name and id Total per __ Royalties Customer Name and Address
Transaction number) Xxxxxxxx (specify type) Due
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
_____________________________________________________________________________________________________________________________________________
00
Xxxxxxxx X
Samples to be transferred to DNAPrint Genomics from the Laboratory for
Anthropological Genomics, at PSU for the purposes of Pigmentary Trait Gene
Identification
Population Samples for the Proposed Research
Geographic Location Biogeographical Current # of
PI(s) Ancestry/Ethnicity Subjects
Centre County, PA 73% European-American, 27% 397
assorted
Xxxxxx, and Sonora Mexico Three isolated groups; low 203
levels of admixture
TOTAL 600
We have also collected pigmentation data and DNA on a total of 203 subjects from
Mexico. These subjects have been measured using the DermaSpectrometer at the
inner arm, forehead, and hair. Questionnaire information includes self reported
eye color, hair color and sun exposure history. Additionally, photographs of
each subject are available for the objective estimation of eye color. DNA has
been extracted from each subject and is available for transfer to DNAPrint. Each
individual in this study gave informed consent prior to beginning the procedure,
and this research was performed under the approval of the Pennsylvania State
University IRB (IRB #00M0525-A0) and Penn State General Clinical Research Center
General Advisory Committee.
We have also evaluated 397 individuals living in State College, Pennsylvania for
constitutive skin color and a subset of these (n = 250) have been evaluated for
solar response. All of the volunteers were adults (i.e. at least 18 years of
age), with the average age of 24.5 years and a range of ages between 18 and 78
years. The sample included 244 females and 153 males. The majority of this
sample can be divided into three groups, European-American (n = 289), Hispanic
(n = 45), and East Asian (n = 29), based on self reported ancestry. A subset of
individuals from the larger sample were measured for responses to UVR;
European-American (n = 190), Hispanic (n = 45), and East Asian (n = 15). The
Hispanic group includes persons whose ancestry can be traced to Puerto Rico,
Colombia, Mexico, Honduras, Panama, and Guatemala. Each individual in this study
gave informed consent prior to beginning the procedure, and this research was
performed under the approval of the Pennsylvania State University IRB (IRB
#00M0558-A4) and Penn State General Clinical Research Center General Advisory
Committee.
The subjects in the State College sample have been assayed for a number of
phenotypes including skin and hair pigmentation with both the DermaSpectrometer
and the Microflash. Questionnaire information includes self reported eye color,
hair color and sun exposure history. Digital facial photographs were taken and
hair samples collected on most subjects. As noted above 250 of these subject
participated in the skin response phase of the study.
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