LICENSE AGREEMENT NATIONAL AERONAUTICS AND SPACE ADMINISTRATION AND NANOTAILOR, INC. NONEXCLUSIVE LICENSE AGREEMENT DN- LICENSE COMMENCEMENT DATE:
Exhibit
10.1 – Non exclusive license agreement between Materials and NASA
LICENSE
AGREEMENT
NATIONAL
AERONAUTICS AND SPACE ADMINISTRATION
AND
LICENSE
COMMENCEMENT DATE:
TABLE
OF CONTENTS
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ARTICLE
NO.
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PAGE
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|
|
Preamble
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4
|
|
|
I
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Definitions
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5
|
|
II
|
License
Grant
|
7
|
|
III
|
Sublicenses
|
8
|
|
IV
|
Term
of License
|
8
|
|
V
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Practical
Application
|
9
|
|
VI
|
United
States Manufacture
|
9
|
|
VII
|
Royalty
and Payment
|
9
|
|
VIII
|
Reports
|
11
|
|
IX
|
Audit
Rights
|
13
|
|
X
|
Marking
|
14
|
|
XI
|
Use
of the NASA Name
|
14
|
|
XII
|
Disclaimer
of Warranties
|
15
|
|
XIII
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Risk
Allocation and Indemnification
|
16
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|
XIV
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Patent
Validity
|
17
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XV
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Points
of Contact
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18
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XVI
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Notices
|
18
|
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XVII
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Dispute
or Breach
|
19
|
|
XVIII
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Termination
or Modification
|
20
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|
XIX
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Assignment
|
22
|
|
XX
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Governing
Law
|
22
|
|
XXI
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Independent
Entities
|
23
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|
XXII
|
Effect
of Partial Invalidity
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23
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|
XXIII
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Nonwaiver
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24
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|
XXIV
|
Entire
Agreement
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24
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XXV
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Article
Headings
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24
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XXVI
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Counterparts
|
25
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|
XXVII
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Acceptance
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25
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|
Appendix
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27
|
LICENSE
AGREEMENT
PREAMBLE
This
License Agreement (“AGREEMENT”) is entered into between the National Aeronautics
and Space Administration (NASA), an agency of the United States, hereinafter
referred to as LICENSOR, having its headquarters in Washington, D.C., and Nanotailor, Inc., a
corporation of the State of Texas, having its principal place of business at
▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇ hereinafter referred to as LICENSEE, as of the date of execution
of the last PARTY hereto.
WITNESSETH:
WHEREAS, under the authority
of 35 U.S.C. § 200 et seq., the U.S.
Department of Commerce has issued Patent Licensing Regulations (37 CFR Part 404)
specifying the terms and conditions upon which licenses may be granted for
inventions assigned to LICENSOR; and
WHEREAS, LICENSOR is the
assignee of
two United States patents: U.S.
Patent No. 6,740,224 for an invention entitled “METHOD OF MANUFACTURING CARBON
NANOTUBES” which issued on MAY 25, 2004; and
U.S. Patent No. 7,008,605 for
an invention entitled “METHOD
OF MANUFACTURING HIGH QUALITY CARBON NANOTUBES” which issued on MARCH 7, 2006
and,
WHEREAS, LICENSEE, in
consideration of the grant of a license under U.S. Patent Nos. 6,740,224 and
7,008,605, will pay royalties, make all necessary capital investments, and
achieve PRACTICAL APPLICATION of the invention; and,
WHEREAS, LICENSOR has
determined that the granting of a license to LICENSEE under U.S. Patent Nos.
6,740,224 and 7,008,605 will provide the necessary incentive for LICENSEE to
achieve the desired early PRACTICAL APPLICATION of the invention and the
granting of such license to LICENSEE will therefore be in the public
interest;
NOW, THEREFORE, in accordance
with said Patent Licensing Regulations, and in consideration of the foregoing
and of the terms hereinafter contained in this AGREEMENT, the LICENSOR and
LICENSEE agree as set forth below:
4
ARTICLE
I
Definitions
“ACCOUNTING
PERIOD” shall mean the period for which royalties are calculated. For
this AGREEMENT, the period is every 12 months starting January 1 of each year,
except for the first ACCOUNTING PERIOD, which shall begin on the LICENSE
COMMENCEMENT DATE and end December 31, 2007.
“BREACH”
shall mean (a) a violation or nonperformance by a PARTY of a MATERIAL term,
condition, covenant, or warranty herein, or (b) a misrepresentation made
hereunder or (c) a misrepresentation by LICENSEE to induce LICENSOR to enter
into this AGREEMENT (also see “MATERIAL”).
“BREACHING
PARTY” shall mean the PARTY in BREACH, as used in Section 17.2.
“GROSS
SALES” shall mean either the total amount invoiced by or for LICENSEE, and, in
the event that some or all of the amount invoiced by LICENSEE is in the form of
non-monetary remuneration, then the equivalent dollar value sum of such
remuneration, for all disposals i.e., (sales, uses, including uses by LICENSEE,
leases, transfers, etc.) of ROYALTY-BASE PRODUCTS for consideration determined
in, or as if in, an arm’s length transaction.
“INSOLVENT”
shall mean that LICENSEE has either ceased to pay its debts (which may include
failure to pay royalty payments under this AGREEMENT) in the ordinary course of
business or cannot pay its debts as they fall due or is insolvent within the
meaning of the Federal Bankruptcy Code (11 U.S.C. § 101 (31)).
“LICENSE
COMMENCEMENT DATE” shall mean the date that the last PARTY has executed this
AGREEMENT.
“LICENSE
EXPIRATION DATE” shall mean the last day that this AGREEMENT is in
effect.
“LICENSE
TERM” shall mean the period of time starting with the LICENSE COMMENCEMENT DATE
and ending with the LICENSE EXPIRATION DATE.
5
“LICENSED
AREA” shall mean the United States.
“LICENSED FIELD OR
EMBODIMENT(S)” shall mean Carbon Nanotube Production.
“LICENSED
INVENTION” shall mean the invention defined by the claims of the LICENSED
PATENTS and as may be further limited by ARTICLE II.
“LICENSED
PATENTS” shall mean United States Patent Nos. 6,740,224 and 7,008,605 and
shall include any corresponding reissue patents and modifications of said
LICENSED PATENTS by means of certificates of correction or reexamination
certificates.
“MATERIAL,”
with respect to a particular matter (e.g., a BREACH), shall mean that the matter
is shown to effect adversely (a) the rights and benefits of the other PARTY
under this AGREEMENT; or (b) the ability of the other PARTY to perform its
obligations hereunder; and, in either case, to such a degree that a reasonable
person in the management of his or her own affairs would be more likely than not
to decline to enter into this AGREEMENT in view of the matter in
question.
“NET
SALES” shall mean GROSS SALES, less allowances for returns and less (to the
extent separately stated, and not charged to the customer or others, on the
invoices): (a) regular trade and quantity discounts; (b) insurance
and shipping charges from the point of origin; (c) duties, tariffs, and other
customs charges; and (d) sales, use, value added, and similar
taxes. In the case of a sale or other disposition of ROYALTY-BASE
PRODUCTS which are transferred to a purchaser who does not deal at arm’s length,
or transferred or otherwise disposed of for other than monetary consideration
(including allocations to LICENSEE’s own beneficial use), NET SALES shall be
calculated in accordance with Section 7.5 of this AGREEMENT.
“NONBREACHING
PARTY” shall mean the PARTY not in BREACH, as used in Section 17.2.
“PARTY”
shall mean a party to this AGREEMENT.
“PERSON”
shall mean a natural person; a corporation (for profit or not-for-profit); an
association; a partnership (general or limited); a joint venture; a trust; a
government or political department, subdivision, or agency; or any other
entity.
6
“PRACTICAL
APPLICATION” shall mean, with respect to the LICENSED INVENTION, to reduce it to
practice and to commercialize it, i.e., to manufacture it in the case of a
composition or product, to practice it in the case of a process or method, or to
operate it in the case of a machine or system; and, in each case, under such
conditions as to establish: (a) that a market for the LICENSED
INVENTION has been created, and to the extent practicable, that a market has
been created in the United States; (b) that it is being utilized; (c) that its
benefits are, to the extent permitted by law or Government regulations,
available to the public on reasonable terms; and (d) that market demand, at
least in the United States, shall be reasonably met.
“ROYALTY-BASE
PRODUCTS” shall include the components of an item sold, used, leased,
transferred, or otherwise disposed of by LICENSEE or its SUBLICENSEES that is
covered by, included within or made by the LICENSED INVENTION. For
purposes of this license, ROYALTY-BASE PRODUCTS include Carbon
Nanotubes.
“SUBLICENSEE”
shall mean any PERSON who has the right, granted by LICENSEE, to make, use, or
sell the LICENSED INVENTION.
“THIRD
PARTY” shall mean any PERSON other than the LICENSOR and the
LICENSEE.
ARTICLE
II
License
Grant
2.1 LICENSOR hereby
grants to LICENSEE a terminable, royalty-bearing, nonexclusive license to
practice, i.e., to make, have made, use, offer to sell, sell, transfer, or
dispose of, the LICENSED INVENTION as limited to the LICENSED AREA and as may be
limited to a LICENSED FIELD OR EMBODIMENT(S), as defined in ARTICLE
I.
2.2 LICENSOR, upon
request, will use reasonable efforts to grant LICENSEE, in accordance with 37
CFR Part 404, a license to practice any inventions assigned to LICENSOR, without
which license or licenses, the practice of the LICENSED INVENTION would result
in infringement. The grant of said license or licenses shall be
limited, however, to the extent necessary to practice the LICENSED
INVENTION. There will be no such grant where said inventions are
licensed exclusively.
7
2.3 Notwithstanding
anything to the contrary in this AGREEMENT, LICENSEE shall take the license
granted in this ARTICLE II subject to any outstanding licenses or other rights
in THIRD PARTIES under agreements executed by LICENSOR before the LICENSE
COMMENCEMENT DATE.
2.4 LICENSOR
reserves an irrevocable, royalty-free right to practice and have practiced the
LICENSED INVENTION, and any other inventions as provided in Section 2.2,
throughout the world by or on behalf of the Government of the United States and
on behalf of any foreign government pursuant to any existing or future treaty or
agreement with the United States.
ARTICLE
III
Sublicenses
3.1 LICENSEE may
not grant any sublicenses under this AGREEMENT.
ARTICLE
IV
Term of
License
4.1 Unless either
PARTY terminates this AGREEMENT in accordance with ARTICLE XVIII at an earlier
date, the license granted in ARTICLE II will be in effect for a LICENSE TERM
that is equal to the unexpired term of the last patent to be in effect of the
patent(s) encompassed under the definition of LICENSED
PATENTS. Except as may be expressly provided otherwise herein or
agreed to in writing by LICENSOR, the license shall expire automatically at the
end of the LICENSE TERM without notice to LICENSEE.
8
ARTICLE
V
Practical
Application
5.1 LICENSEE shall
achieve PRACTICAL APPLICATION of the LICENSED INVENTION within twelve (12) months of the
LICENSE COMMENCEMENT DATE and in accordance with the schedule set forth in the
APPENDIX to this AGREEMENT and incorporated into this
AGREEMENT. LICENSEE shall notify LICENSOR within thirty (30) days of
achieving PRACTICAL APPLICATION that PRACTICAL APPLICATION has been achieved.
LICENSEE shall also provide evidence to verify the achievement.
5.2 LICENSEE, once
PRACTICAL APPLICATION of the LICENSED INVENTION is achieved, shall thereafter
maintain it throughout the LICENSE TERM.
ARTICLE
VI
United States
Manufacture
6.1 In achieving
and maintaining PRACTICAL APPLICATION of the LICENSED INVENTION, LICENSEE agrees
that any products embodying the LICENSED INVENTION or produced through the use
of the LICENSED INVENTION shall be reduced to practice and manufactured
substantially in the United States, in accordance with 35 U.S.C.
209(b).
6.2 LICENSEE shall
make a bona fide attempt to use or sell the LICENSED INVENTION in the United
States.
6.3 LICENSEE shall
promptly report to LICENSOR its discontinuance of making the benefits of the
LICENSED INVENTION available to the public.
ARTICLE
VII
Royalty and
Payment
7.1 In
consideration of the license granted in ARTICLE II, LICENSEE shall remit to
LICENSOR a nonrefundable license fee in the amount of Twenty Thousand Dollars
($20,000.00), which shall be paid upon the execution of this AGREEMENT by
LICENSEE.
7.2 LICENSEE agrees
to pay LICENSOR a running royalty of seven percent (7%) of the NET SALES of
ROYALTY-BASE PRODUCTS for each ACCOUNTING PERIOD.
9
7.3 LICENSEE agrees
to pay LICENSOR a minimum royalty of Fifty
Thousand Dollars($50,000.00) for the ACCOUNTING PERIOD ending on December 31, 2008. LICENSEE
agrees to pay LICENSOR a minimum royalty payment in the amount of Seventy Five
Thousand Dollars ($75,000.00) for the ACCOUNTING PERIOD ending on December 31, 2009. LICENSEE
agrees to pay LICENSOR a minimum royalty payment in the amount of One Hundred
and Twenty Five Thousand Dollars ($125,000.00) for the ACCOUNTING PERIOD ending
on December 31, 2010.
LICENSEE agrees to pay LICENSOR a minimum royalty payment in the amount of One
Hundred and Seventy Five Thousand Dollars ($175,000.00) for the ACCOUNTING
PERIOD ending on December 31,
2011 and for each ACCOUNTING PERIOD thereafter.
7.4 The running
royalties specified in Sections 7.2 shall be credited against the minimum
royalty specified in Section 7.3.
7.5 LICENSEE agrees
that in the event any ROYALTY-BASE PRODUCTS shall be sold, transferred, or
disposed of to a THIRD PARTY in a transaction that does not represent an arm’s
length transaction for purposes of resale by any THIRD PARTY, then the royalties
to be paid under this AGREEMENT for the ROYALTY-BASE PRODUCTS shall be based
upon the NET SALES of the ROYALTY-BASE PRODUCTS by such THIRD PARTY, rather than
upon the NET SALES of the LICENSEE. Examples of transactions that do
not represent an arm’s length transaction includes sales, transfers or disposals
(a) to any type of organization or individual who owns a controlling interest in
LICENSEE by stock ownership or otherwise; (b) to any type of organization in
which LICENSEE shall own, directly or indirectly, a controlling interest by
stock ownership or otherwise; or (c) to any type of organization with which, or
individual with whom, LICENSEE, its stockholders, or associated companies shall
have any agreement, understanding, or arrangement (such as, among other things,
an option to purchase stock, an arrangement involving a division of profits, or
special rebates or allowances) without which agreement, understanding, or
arrangement, prices paid by such organization or individual for the ROYALTY-BASE
PRODUCTS would be higher than the NET SALES reported by LICENSEE, or if such
agreement, understanding, or arrangement results in extending to such
organization or individual lower prices for ROYALTY-BASE PRODUCTS than those
charged to outside concerns buying similar merchandise in similar amounts and
under similar conditions.
10
7.6 Under this
AGREEMENT, ROYALTY-BASE PRODUCTS will be considered sold when invoiced, when
shipped, or upon receipt of payment, whichever occurs first.
7.7 Royalties shall
be paid within thirty (30) days of the end of each ACCOUNTING
PERIOD. Royalties shall be paid by check, denominated in United
States dollars, and made payable to the National Aeronautics and Space
Administration. The check shall be mailed to LICENSOR at the address
set forth in ARTICLE XV of this AGREEMENT concurrently with the report required
in ARTICLE VIII of this AGREEMENT. LICENSOR’s acceptance of any
royalty payment does not eliminate LICENSOR’s right to contest the accuracy of
such payment in the future.
7.8 LICENSOR shall
assess interest, penalties, and administrative costs in accordance with the
Federal Claims Collections Standards, 31 C.F.R. §§ 900-904, on all payments due
LICENSOR which are not timely paid by LICENSEE. In addition to these
charges, LICENSOR is authorized to charge to LICENSEE the costs of collection
and any associated reasonable attorney fees.
ARTICLE
VIII
Reports
8.1 LICENSEE shall
submit to LICENSOR written reports within thirty (30) days of the end of each
ACCOUNTING PERIOD whether or not royalties are due. Each report shall
be submitted concurrently with the royalties required by ARTICLE
VII. To ensure that any proprietary information submitted by LICENSEE
is protected to the fullest extent of the law, LICENSEE should ▇▇▇▇ with a
proprietary notice any portions of the report that are considered proprietary to
LICENSEE.
11
8.2 Each report
shall include the following information:
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(a)
|
With
reference to the schedule set forth in the APPENDIX to this AGREEMENT, a
narrative description of the steps being taken to reduce the LICENSED
INVENTION to practice.
|
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(b)
|
With
reference to the schedule set forth in the APPENDIX to this AGREEMENT, a
narrative description of the steps being taken to create a market demand
for the LICENSED INVENTION, to commercialize the LICENSED INVENTION, and
to meet market demand for the LICENSED INVENTION.
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(c)
|
A
narrative description of the ROYALTY-BASE PRODUCTS currently being offered
for sale by LICENSEE and its SUBLICENSEES. Copies of current
sales brochures, promotional materials, and price lists shall be included
with this description.
|
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(d)
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A
list of the geographic locations at which the LICENSED INVENTION is being
manufactured.
|
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|
|
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(e)
|
The
number and type of ROYALTY-BASE PRODUCTS sold or disposed of by
LICENSEE.
|
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(f)
|
The
number and type of ROYALTY-BASE PRODUCTS sold or disposed of by each
SUBLICENSEE (if any).
|
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(g)
|
The
number and type of ROYALTY-BASE PRODUCTS sold or disposed of by each
reseller of ROYALTY-BASE PRODUCTS under Section 7.5.
|
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(h)
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LICENSEE’s
GROSS SALES.
|
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(i)
|
GROSS
SALES for each SUBLICENSEE (if any).
|
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(j)
|
GROSS
SALES for each reseller of ROYALTY-BASE PRODUCTS under Section
7.5.
|
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(k)
|
LICENSEE’s
NET SALES.
|
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(l)
|
NET
SALES for each SUBLICENSEE (if any).
|
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(m)
|
NET
SALES for each reseller of ROYALTY-BASE PRODUCTS under Section
7.5.
|
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(n)
|
The
amount of royalties due LICENSOR.
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8.3 Each report
shall include a certification by an officer of LICENSEE that the LICENSEE is
complying with the terms and conditions of this AGREEMENT and that the responses
to each part of Section 8.2 are accurate and complete.
12
8.4 LICENSEE shall,
on an annual basis, submit to LICENSOR an audited balance sheet and an audited
income statement. Internal audits are permissible, but LICENSOR
reserves the right to require an independent audit and additionally reserves the
right to approve of the auditor.
8.5 A final report
shall be submitted to LICENSOR by LICENSEE within thirty (30) days after the
termination of this AGREEMENT.
ARTICLE
IX
Audit
Rights
9.1 LICENSEE shall
keep full, true, and accurate records for the purpose of LICENSOR verifying
LICENSEE’s reports to LICENSOR under ARTICLE VIII, verifying LICENSEE’s royalty
payments to LICENSOR under ARTICLE VII, and for determining LICENSEE’s
activities in general under the AGREEMENT. These records shall
include, but are not limited to, ledgers and journals of account, customer
orders, invoices, shipping documents, inventory records, computer records,
purchase orders, and tax records. These records, as a whole, shall
include information which will allow, at a minimum, identification of suppliers,
customers, items sold or otherwise transferred, and/or services rendered, as
well as whether the LICENSEE is operating within the scope of its
license.
9.2 The records
described in Section 9.1 shall be available for audit by LICENSOR, or by an
authorized representative of LICENSOR, at all reasonable times for the LICENSE
TERM and for three (3) calendar years thereafter. In addition,
LICENSEE shall permit inspection by LICENSOR, or by an authorized representative
of LICENSOR, of LICENSEE’s assembly facilities and of LICENSEE’s inventory of
ROYALTY-BASE PRODUCTS, including parts, works-in-progress, and finished goods,
during any audit by LICENSOR.
9.3 If LICENSOR, as
a result of an audit, discovers an underpayment of royalties that exceeds Two
Thousand Five Hundred Dollars ($2,500), then LICENSEE shall reimburse LICENSOR
for the cost of the audit, including all related costs of performing the audit
(e.g., travel, food, lodging, cost of professional services, etc.), in addition
to any penalties assessed pursuant to Section 7.8.
13
ARTICLE
X
Marking
10.1 LICENSEE and
all SUBLICENSEES shall ▇▇▇▇ all ROYALTY-BASE PRODUCTS, or products incorporating
ROYALTY-BASE PRODUCTS, in accordance with the statutes of the United States
relating to the marking of patented articles (see 35 U.S.C. §
287). Such marking shall be accomplished by fixing on the article or
when, from the character of the article, this cannot be done, by fixing to it,
or to the package wherein one or more of the articles is contained, a label
including the notation “Licensed from the National Aeronautics and Space
Administration under (insert patent number).” Such marking shall also
be included in all literature and/or advertising materials describing the
LICENSED INVENTION.
ARTICLE
XI
Use of the NASA
Name
11.1 Except as
required by ARTICLE X, LICENSEE may use the name of LICENSOR, or the acronym
“NASA,” only in truthful statements concerning its relationship with
LICENSOR. The letters ‘NASA’ may be used in such truthful statements
only if they are:
|
(a)
|
used
in their normal typed or printed form;
|
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(b)
|
the
same size, color, and intensity as the rest of the words in a
sentence;
|
|
(c)
|
not
used in their stylized version as they appear in the NASA logotype or NASA
insignia; and
|
|
(d)
|
not
used to indicate that NASA endorses the LICENSEE's products, processes,
etc.
|
14
11.2 Uses of the
letters ‘NASA’, other than those required by ARTICLE X or specified in Section
11.1, shall require the express written approval of
LICENSOR. Approval by LICENSOR shall be based on applicable law
(i.e., 42 U.S.C. §§ 2459b, 2472(a), and 2473(c)(1); and 14 CFR § 1221.100 et seq.) and NASA policy
governing the use of the letters ‘NASA’ and the words ‘National Aeronautics and
Space Administration’ and shall not be unreasonably withheld.
11.3 LICENSEE agrees to make
copies of its marketing literature available to LICENSOR so that LICENSOR can
determine that such use is in accordance with the terms of this
ARTICLE.
ARTICLE
XII
Disclaimer of
Warranties
12.1 LICENSOR MAKES NO REPRESENTATIONS OR
WARRANTIES, EXPRESS, IMPLIED, OR STATUTORY, AS TO ANY MATTER
WHATSOEVER.
12.2 ALL
REPRESENTATIONS AND WARRANTIES, EXPRESS, IMPLIED, OR STATUTORY, INCLUDING BUT
NOT LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE ARE EXCLUDED HEREUNDER.
12.3 In particular,
nothing in this AGREEMENT shall be construed as:
|
(a)
|
A
warranty or representation by LICENSOR as to the validity or scope of any
LICENSED PATENT; or
|
|
(b)
|
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 any type, including patent infringement, copyright
infringement, and trademark infringement; or
|
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(c)
|
A
requirement that LICENSOR shall file any patent application, secure any
patent, or maintain any patent in force, other than the LICENSED PATENT;
or
|
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(d)
|
An
obligation to bring or prosecute actions or suits against THIRD PARTIES
for infringement; or
|
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(e)
|
An
obligation to furnish any manufacturing or technical information; or, if
any such information is supplied, a warranty or representation that such
information is accurate; or
|
|
(f)
|
Conferring
a right to use in advertising, publicity or otherwise the name of any
inventor of the LICENSED INVENTION or the NASA name, seal, insignia,
logotype or any other adaptation without the prior written consent of
LICENSOR (except as otherwise provided in ARTICLE XI);
or
|
|
(g)
|
Precluding
the export from the United States of ROYALTY-BASE PRODUCTS on which
royalties shall have been paid as provided in ARTICLE VII, provided that
the item can be exported under the export control laws of the United
States; or
|
|
(h)
|
Granting
by implication or estoppel, any licenses or other rights under any patent
of LICENSOR or any other PERSON in the United States or any foreign
country; or
|
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(i)
|
Granting
by implication, estoppel, or otherwise, any licenses or rights under
patents or patent applications of LICENSOR other than the LICENSED
INVENTION, regardless of whether such other patents or patent applications
are dominant, subordinate, or an improvement to the invention or
inventions as claimed, of the LICENSED PATENT or LICENSED PATENT
APPLICATION, nor to other applications that did not claim the
invention.
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(j)
|
Conferring
upon any PERSON (1) any immunity from or defenses under the antitrust
laws, (2) any immunity from a charge of patent misuse, or (3) any immunity
from the operation of Federal, State, or other
law.
|
15
ARTICLE
XIII
Risk Allocation and
Indemnification
13.1 LICENSOR makes
no representation, extends no warranties of any kind, either express or implied,
and assumes no responsibility whatsoever with respect to use, sales, or other
disposition by LICENSEE or its vendees or other transferees of products
incorporating or made by the use of (a) the LICENSED INVENTION or (b)
information, if any, furnished under this AGREEMENT.
13.2 LICENSEE shall
indemnify LICENSOR, its officers and employees, and hold them harmless against
all liabilities, demands, damages, expenses, or losses including, but not
limited to, attorney’s fees, court costs, and the like, arising (a) out of the
use by LICENSEE or its transferees of the LICENSED INVENTION or information
furnished under this AGREEMENT, or (b) out of any sale, use, or other
disposition by LICENSEE or its transferees of products, processes, or
compositions, made by use of such inventions or information.
13.3 It shall be
the sole responsibility of the LICENSEE to ensure that any and all embodiments
of the LICENSED INVENTION are safe under all circumstances.
13.4 Independent
of, severable from, and to be enforced independently of any other enforceable or
unenforceable provision of this AGREEMENT, other than as provided in Sections
13.1 and 13.2, or other than for infringement of one PARTY’s intellectual
property rights by another PARTY, (including any engagement in licensable
activities by licenses beyond the scope of the license provided by this
AGREEMENT), neither PARTY will be liable to the other PARTY (nor to any THIRD
PARTY claiming rights derived from the other PARTY’s rights) for incidental,
consequential, special, punitive, or exemplary damages of any kind, including
lost profits, loss of business, or other economic damage, and further including
injury to property, as a result of breach of any warranty or other term of this
AGREEMENT, regardless of whether the PARTY liable or allegedly liable was
advised, had reason to know, or in fact knew of the possibility
thereof.
16
ARTICLE
XIV
Patent
Validity
14.1 If, in any
proceeding in which the validity, infringement, or priority of invention of any
claim of the LICENSED PATENT to LICENSEE is in issue, a judgement or decree is
entered which becomes final (below referred to as an “final judgement”), the
construction placed upon any such claim by such final judgement shall thereafter
be followed, not only as to such claim but as to all claims to which such
construction applies, with respect to subsequently occurring acts. If
such final judgement holds any claim invalid, LICENSEE shall be relieved
prospectively (a) from including in its reports ROYALTY-BASE PRODUCTS sold or
otherwise disposed of covered only by such claim or any broader claim to which
such final judgement is applicable, and (b) from the performance of those other
acts which may be required by this AGREEMENT only because of any such
claim. However, if there are two or more conflicting final judgements
with respect to the same claim based on the same grounds or where the same
issues were raised, the decision of the higher tribunal shall be followed, but
if the tribunals be of equal dignity, then the decision more favorable to the
claim shall be followed.
14.2 In the event
evidentiary material comes to the attention of the LICENSEE that, in the
judgement of the LICENSEE, bears on the validity or scope of any LICENSED
PATENT, the LICENSOR will in good faith discuss with the LICENSEE whether such
evidentiary material so affects the validity or scope of the LICENSED PATENT to
which it is asserted to apply that the terms of the license in respect to such
LICENSED PATENT should be modified.
14.3 The LICENSEE,
after the LICENSE COMMENCEMENT DATE, may assert the invalidity of any claim in
any LICENSED PATENT, if coupled with or followed by:
|
(a)
|
Withholding,
or notice of intention to withhold, or denial of obligation to pay,
royalties otherwise payable under this AGREEMENT in respect to the
LICENSEE’s operations under such claim; or
|
|
(b)
|
Initiation
or participation in a suit challenging or denying the validity of such
claim in reference to LICENSEE’s operations under this AGREEMENT, that
may, at the option of the LICENSOR, be conclusively presumed to constitute
LICENSEE’s termination, as of the earliest provable date of such
withholding, notice, denial, initiation, or participation, of its
AGREEMENT including its obligation for payment of royalties due from the
date of the termination.
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17
ARTICLE
XV
Points of
Contact
15.1 The following
PERSONS are designated as the points of contact for their respective PARTY and
are responsible for keeping this information current by providing updated
information as warranted. These points of contact are the principal
representatives of the PARTIES involved in the performance of this
AGREEMENT.
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LICENSOR
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LICENSEE
|
|
Name:
▇▇▇▇▇
▇▇▇▇▇▇
|
Name:
_________________________________
|
|
Title:
Chief Patent
Counsel
|
Title:
_________________________________
|
|
Address:
NASA ▇▇▇▇▇▇▇
Space
|
Address:
_______________________________
|
|
Flight Center, Mail Code
140.1
|
______________________________________ |
|
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇
▇▇▇▇▇
|
______________________________________ |
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Telephone
No.: ▇▇▇-▇▇▇-▇▇▇▇
|
Telephone
No.: ___________________________
|
|
Facsimile
No.: ▇▇▇-▇▇▇-▇▇▇▇
|
Facsimile
No.:
____________________________
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ARTICLE
XVI
Notices
16.1 All notices
hereunder will be in writing and will be delivered and effective as
follows:
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(a)
|
Every
notice required or contemplated by this AGREEMENT to be given either PARTY
may be delivered in person or may be sent by commercial courier or U.S.
mail, addressed to the PARTY for whom it is intended, at the address
specified in ARTICLE XV.
|
|
(b)
|
Any
notice will be effective on the date that it is hand delivered or on the
fifth business day after it was deposited with the commercial courier or
the U.S. mail.
|
|
(c)
|
As
used in this ARTICLE, a reference to a particular date means the date
itself, if a business day, otherwise the first business day after the
date.
|
18
ARTICLE
XVII
Dispute or
Breach
17.1 All disputes
concerning the interpretation or application of this AGREEMENT shall be
discussed mutually between the PARTIES. Any disputes that are not
disposed of by mutual agreement shall be decided by the NASA Lead Counsel
Intellectual Property, or designee, who shall reduce the decision to writing and
mail or otherwise deliver a copy thereof to LICENSEE. LICENSEE may
respond to such notice of a decision in accordance with the procedures set forth
in Section 18.8.
17.2 In the event
of a BREACH of any provision of this AGREEMENT, the NONBREACHING PARTY shall
give the BREACHING PARTY notice describing the BREACH and stating that the
BREACHING PARTY has thirty (30) days after notice of the BREACH to cure the
BREACH or show cause why the AGREEMENT should not be terminated.
17.3 If a provision
of this AGREEMENT sets forth a cure period for the BREACH in question other than
thirty (30) days, then that provision shall take precedence over the cure period
set forth in Section 17.2.
17.4 No cure period
is required, except as may be otherwise provided in this AGREEMENT,
if:
|
(a)
|
this
AGREEMENT sets forth specific deadline dates for the obligation allegedly
breached; or
|
|
(b)
|
this
AGREEMENT otherwise states that no cure period is required in connection
with the termination in question.
|
17.5 The BREACHING
PARTY will be deemed to have cured such BREACH if within the cure period it
takes steps reasonably adequate to alleviate any damage to the NONBREACHING
PARTY resulting from the BREACH and to prevent a similar future
BREACH.
19
ARTICLE
XVIII
Termination or
Modification
18.1 The PARTIES
may terminate or modify this AGREEMENT by mutual consent upon such terms as they
may agree in writing.
18.2 Either PARTY
may terminate this AGREEMENT by failing to extend the LICENSE TERM, if an
extension is provided for in ARTICLE IV.
18.3 Either PARTY
may terminate this AGREEMENT upon the discovery by one PARTY of any intentional
MATERIAL false statement or misrepresentation made or submitted by the other
PARTY which BREACHES any obligation under the terms of this AGREEMENT or upon
the discovery by one PARTY that the other PARTY has committed a MATERIAL breach
of a provision of the AGREEMENT.
18.4 LICENSEE may
prospectively terminate this AGREEMENT upon ninety (90) days written notice to
LICENSOR.
18.5 This AGREEMENT
may be terminated by LICENSOR if:
|
(a)
|
LICENSOR
determines that LICENSEE has failed or will fail to achieve or maintain
PRACTICAL APPLICATION of the LICENSED INVENTION as provided by ARTICLE
V.
|
|
(b)
|
LICENSOR
determines that LICENSEE has failed or will fail to reduce to practice or
substantially manufacture the LICENSED INVENTION in the United States as
provided by Section 6.1.
|
|
(c)
|
LICENSOR
determines that LICENSEE has failed or will fail to meet market demand for
the LICENSED INVENTION.
|
|
(d)
|
LICENSEE
fails to pay royalties or submit reports as provided by ARTICLES VII and
VIII.
|
|
(e)
|
LICENSOR
determines that such action is necessary to meet the requirements for
public use specified by Federal regulations issued after the date of the
license and such requirements are not reasonably satisfied by
LICENSEE.
|
|
(f)
|
LICENSEE
commits a BREACH of a covenant contained in this
AGREEMENT.
|
20
18.6 LICENSOR may
terminate this AGREEMENT if LICENSEE becomes INSOLVENT. LICENSEE must
notify LICENSOR within thirty (30) days after becoming
INSOLVENT. LICENSEE’s failure to conform to this requirement shall be
deemed a MATERIAL, incurable BREACH.
18.7 LICENSEE must
promptly inform LICENSOR of its intention to file a voluntary petition in
bankruptcy or of another’s communicated intention to file an involuntary
petition in bankruptcy. LICENSOR may terminate this AGREEMENT upon
receiving notice of intention to file. LICENSEE’s filing without
conforming to this requirement shall be deemed a MATERIAL, pre-petition
incurable BREACH.
18.8 Before
LICENSOR unilaterally modifies or terminates this AGREEMENT for any cause,
LICENSOR will deliver to LICENSEE and all SUBLICENSEES of record a written
notice stating LICENSOR’s intention to modify or terminate the AGREEMENT and the
reasons therefor. LICENSEE and SUBLICENSEES of record will be allowed
thirty (30) days after: (a) such notice to remedy any BREACH of the AGREEMENT or
show cause why the AGREEMENT should not be unilaterally modified or terminated;
or, (b) such notice of a decision regarding a dispute, rendered in accordance
with Section 17.1, to rebut such decision. A response to a notice of
modification or termination or to a notice of a dispute decision should be
addressed to the General Counsel, National Aeronautics and Space Administration,
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇. The General Counsel will render a
determination based on the LICENSEE’s response within a reasonable
time. Absent any response from LICENSEE to the notice regarding the
modification, termination, and/or dispute decision, the decision by the Lead
Counsel Intellectual Property will be final and/or the AGREEMENT will be
unilaterally modified or will terminate, effective thirty-one (31) days from the
notice of modification, termination, or dispute decision, with no right to
appeal under Section 18.9.
21
18.9 LICENSEE may
appeal in writing to the NASA Administrator, any determination rendered by the
General Counsel in accordance with Section 18.8, within thirty (30) days of
notice of such determination. The notice of appeal and all supporting
documentation should be addressed to the Administrator, National Aeronautics and
Space Administration, ▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇. LICENSEE shall
be afforded an opportunity to be heard and to offer evidence in support of its
appeal. The decision on the appeal shall be made by the NASA
Administrator or designee, which shall be the final agency decision from which
there will be no further right of administrative appeal. Nothing in
this Article shall be interpreted as precluding actions at law.
18.10 If no action
is taken under Section 18.9, then the determination rendered by the General
Counsel shall become final within thirty-one (31) days after delivery of the
notice of such determination.
18.11 All royalties
and reports due up to and including the date of termination of this AGREEMENT
are due within thirty (30) days of the date of termination.
ARTICLE
XIX
Assignment
19.1 Upon written
approval by LICENSOR, LICENSEE may assign this AGREEMENT provided that LICENSEE
submits to LICENSOR, in advance, a written request for permission to grant the
assignment, information that NASA considers necessary to evaluate the proposed
assignment, and a copy of the proposed assignment. If LICENSOR
approves the assignment as being consistent with the Government’s interests, the
PARTIES and the assignee will be required to execute a novation
agreement. At a minimum, the novation agreement will provide that
LICENSEE waives all rights under the license, the assignee assumes all
obligations under the AGREEMENT, and that LICENSOR recognizes the assignee as
the successor in interest to the AGREEMENT.
ARTICLE
XX
Governing
Law
20.1 This AGREEMENT
will be interpreted and enforced in accordance with United States federal
law.
22
ARTICLE
XXI
Independent
Entities
21.1 The Parties
are separate and independent entities. Except as may be expressly and
unambiguously provided in this AGREEMENT, no partnership or joint venture is
intended to be created by this AGREEMENT, nor any principal-agent or
employer-employee relationship.
21.2 Except to the
extent expressly provided in this AGREEMENT, neither PARTY has, and neither
PARTY shall attempt to assert, the authority to make commitments for or to bind
the other PARTY to any obligation.
ARTICLE
XXII
Effect of Partial
Invalidity
22.1 If any one or
more of the provisions of this AGREEMENT should be ruled wholly or partly
invalid or unenforceable by a court or other government body of competent
jurisdiction, and as long as the fundamental objectives of the AGREEMENT can be
carried out, then:
|
(a)
|
the
validity and enforceability of all provisions of this AGREEMENT not ruled
to be invalid or unenforceable will be unaffected;
|
|
(b)
|
the
provision(s) held wholly or partly invalid or unenforceable will be deemed
to be amended, and the court or other government body is authorized to
reform the provision(s), to the minimum extent necessary to render them
valid and enforceable in conformity with the PARTIES’ intent as manifested
herein; and
|
|
(c)
|
if
the ruling, and/or the controlling principle of law or equity leading to
the ruling, is subsequently overruled, modified, or amended by
legislative, judicial, or administrative action, then the provision(s) in
question, as originally set forth in this AGREEMENT, will be deemed to be
valid and enforceable to the maximum extent permitted by the new
controlling principle of law or
equity.
|
23
ARTICLE
XXIII
Nonwaiver
23.1 The failure of
either PARTY at any time to require performance by the other PARTY of any
provisions of this AGREEMENT shall in no way affect the right of such PARTY to
require future performance of that provision. Any waiver by either
PARTY of any BREACH of any provision of this AGREEMENT shall not be construed as
a waiver of any continuing or succeeding BREACH of such provision, a waiver of
the provision itself, or a waiver of any right under this
AGREEMENT.
ARTICLE
XXIV
Entire
Agreement
24.1 Except as may
be expressly provided otherwise herein, this AGREEMENT constitutes the entire
agreement between the PARTIES concerning the subject matter
thereof. No prior or contemporaneous representations, inducements,
promises, or agreements, oral or otherwise, between the PARTIES with reference
thereto will be of any force or effect. This AGREEMENT may only be
modified by written agreement of the PARTIES.
ARTICLE
XXV
Article
Headings
25.1 The Article
Headings contained in this AGREEMENT are for reference purposes only and shall
not in any way control the meaning or interpretation of this
AGREEMENT.
24
ARTICLE
XXVI
Counterparts
26.1 This AGREEMENT
may be executed in separate counterparts, each of which so executed and
delivered shall constitute an original, but all such counterparts shall together
constitute one and the same instrument. Any such counterpart may
comprise one or more duplicates or duplicate signature pages, any of which may
be executed by less than all of the PARTIES, provided that each PARTY executes
at least one such duplicate or duplicate signature page. The PARTIES
stipulate that a photostatic copy of an executed original will be admissible in
evidence for all purposes in any proceeding as between the PARTIES.
ARTICLE
XXVII
Acceptance
27.1 In witness
whereof, each PARTY has caused this AGREEMENT to be executed by its duly
authorized representatives:
|
LICENSOR:
|
LICENSEE:
|
|
National
Aeronautics and
|
|
|
Space
Administration
|
|
|
By:
▇▇▇▇▇▇▇ ▇.
▇▇▇▇▇▇▇
|
By:
_______________________________
|
|
NASA
General Counsel
|
CEO
|
| ________________________________ | ___________________________________ |
|
Date
|
Date
|
25