LICENSE AGREEMENT
This Agreement made this tenth (10th) day of March, 1998, (the
"Effective Date"), by and between Northwestern University, an Illinois
corporation having a principal office at 000 Xxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxx
00000 (hereinafter referred to as "Northwestern") and Immtech International
Inc., a Delaware corporation having a principal office at 0000 Xxxxx Xxxxxx,
Xxxxx 000, Xxxxxxxx, XX. 00000 (hereinafter referred to as "Licensee") (each a
"Party" and collectively the "Parties").
WITNESSETH
WHEREAS, Northwestern is the owner of certain patent rights and
know-how relating to Immunoassay Constructs to Quantitate
Glucosylated-Hemoglobin and other Glucosylated Serum Proteins (NU 8403) and has
the right to grant licenses hereunder, subject only to a royalty-free,
nonexclusive license heretofore granted to the United States Government;
WHEREAS, Northwestern desires to have the patent rights and know-how
developed and commercialized to benefit the public and is willing to grant a
license hereunder;
WHEREAS, Licensee has represented to Northwestern that Licensee will
commit itself to a thorough, vigorous and diligent program to develop and
subsequently manufacture, market and sell products utilizing the patent rights
and know-how;
WHEREAS, Licensee desires to obtain a license under the patent
rights and know-how upon the terms and conditions hereafter set forth;
NOW THEREFORE, in consideration of the premises and mutual covenants
contained herein, the Parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS
1.1 "Affiliate" shall mean any corporation, firm, partnership or other
entity which controls, is controlled by or is under common control with a Party.
For the purposes of this definition, "control" shall mean any right or
collection of rights that together allow direction on any vote with respect to
any action by an entity or the direction of management and operations of that
entity. Such right or collection of rights includes without limitation (a) the
authority to act as sole member or shareholder or partner with a majority
interest in an entity; (b) a majority interest in an entity; and (c) the
authority to appoint, elect, or approve at least a majority of the governing
board of that entity.
1.2 "Field" shall mean the use of immunoassays for diagnostic purposes to
quatitate hemoglobin type A1c..
1.3 "Know-How" shall mean any and all technical information existing as of
the Effective Date or generated during the term of this Agreement which is owned
or controlled by Northwestern and directly relates to Licensed Products and
shall include, without limitation, all biological, chemical, pharmaceutical,
pharmacological, toxological, clinical, assay control and manufacturing data and
any other information relating to the Licensed Products and useful for the
development, Regulatory Approval, commercialization or safety and effectiveness
of the Licensed Products.
1.4 "Licensed Products" shall mean diagnostic assays for determining
hemoglobin type A1c.
1.5 "Net Sales" shall mean the gross amount invoiced by Licensee, its
Affiliates or its sublicensees, to third parties for the sale of Licensed
Products, less amounts actually invoiced or allowed with respect to trade
credits, discounts, rebates and allowances actually granted on account of price
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adjustments, rebate programs, billing errors or the rejection or return of
goods, sales taxes, tariffs, and custom duties. If a Licensed Product is sold as
part of a combination, Net Sales for the purposes of determining royalties on
the Licensed Product(s) in the combination shall be calculated by multiplying
Net Sales by the fraction A/A+B, where A is the invoice price of the Licensed
Product(s) sold separately and B is the invoice price of the other active
ingredients in the combination.
1.6 "Patent Rights" shall mean the patents and patent applications listed
on Exhibit A attached hereto and incorporated herein by reference, and any
patents which issue from the patent applications listed on Exhibit A attached
hereto and incorporated herein by reference, and all substitutions, additions,
extensions, reissues, renewals, divisions, continuations and
continuations-in-part thereof and any foreign counterparts thereto.
1.7 "Regulatory Approval" shall mean the approval of either the Food Drug
Administration of the United States or a foreign counterpart thereto required to
commence commercial sale of a Licensed Product in such country in the Territory.
1.8 "Territory" shall mean the entire world.
ARTICLE II - GRANT
2.1 Northwestern hereby grants to Licensee and its Affiliates an exclusive
license under Patent Rights and Know-How to make, have made, use, import, offer
for sale and sell Licensed Products in the Territory in the Field.
2.2 The grant under Paragraph 2.1 shall be subject to the obligations of
Northwestern and of Licensee to the United States Government under any and all
applicable laws, regulations, and executive orders including those set forth in
35 U.S.C. ss.200, et seq.
2.3 Northwestern retains the right to utilize Patent Rights and Know-How
for noncommercial research purposes.
2.4 Northwestern hereby grants to Licensee the right to grant sublicenses
consistent with this Agreement provided that Licensee shall be responsible for
the performance of its sublicensees, including the payment of royalties.
ARTICLE III - CONFIDENTIAL INFORMATION
3.1 Northwestern and Licensee each agree that all information contained in
documents marked "Confidential" which are forwarded to one by the other shall be
received in strict confidence, used only for the purposes of this Agreement, and
not disclosed by the recipient (except as required by law or court agency or
administrative order), its agents or employees to any third party without the
prior written consent of an authorized officer of the disclosing Party, unless
such information (a) was in the public domain at the time of disclosure, (b)
later became part of the public domain through no act or omission of the
recipient, its employees, agents, successors or assigns, (c) was lawfully
disclosed to the recipient by a third party having the right to disclose it, (d)
was already known by the recipient at the time of disclosure, (e) was
independently developed, (f) is required by law or court or administrative
agency order, or (g) is required to be submitted to a government agency to
obtain and maintain the approvals and clearances of Licensed Products.
Disclosure may also be made to Affiliates, distributors, customers, and agents,
to nonclinical and clinical investigators, and to consultants, where necessary
or desirable with appropriate safeguards to protect the confidential underlying
disclosure. Northwestern and Licensee also agree that confidential information
may be orally disclosed by one Party to the other Party. Such information shall
be confirmed in writing and designated "Confidential" within thirty (30) days of
disclosure for the provisions of this Article III to apply.
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3.2 Each Party's obligation of confidence hereunder shall be fulfilled by
using at least the same degree of care with the other Party's confidential
information as it uses to protect its own confidential information. This
obligation shall exist while this Agreement is in force and for a period of two
(2) years thereafter except in the event of termination by Northwestern for
breach on the part of Licensee, in which event Licensee's obligation to maintain
the information confidential will exist for a period often (10) years after the
termination for breach.
3.3 This Agreement may be distributed solely (a) to those employees,
agents and independent contractors of Northwestern and Licensee who have a need
to know its contents, (b) to those persons whose knowledge of its contents will
facilitate performance of the obligations of the parties under this Agreement,
(c) to those persons, if any, whose knowledge of its contents is essential in
order to permit Licensee or Northwestern to maintain or secure the benefits
under policies of insurance, or (d) as may be required by law or regulation or
by court or administrative agency order.
ARTICLE IV - DUE DILIGENCE
4.1 Licensee shall, upon execution of this Agreement, submit to
Northwestern a preliminary development and business plan that sets forth an
outline of Licensee's intended efforts to develop and commercialize Licensed
Products. Such plan shall include a summary of personnel, expenditures and
estimated timing for the development of Licensed Products and estimates of the
market potential for Licensed Products.
4.2 Licensee agrees to devote that level of resources to the
commercialization of a Licensed Product as other companies in the industry
customarily devote to products of similar commercial potential.
ARTICLE V - PAYMENT
In consideration of the license granted by Northwestern to Licensee under
this Agreement, Licensee shall pay to Northwestern the following:
5.1 A non-creditable, non-refundable license issue fee of Twenty Thousand
Dollars ($20,000), of which the first ten thousand dollars ($10,000) shall be
paid within thirty (30) days of execution of this Agreement, and ten thousand
dollars ($10,000) shall be paid within three (3) months from the Effective Date,
but no later than August 1, 1998.
5.2 Beginning the first full calendar year after the Regulatory Approval
of a Licensed Product in a major market country, or the year 2003, whichever
comes first, Licensee shall pay to Northwestern minimum royalty payments of
$10,000 per year. Any such minimum royalty payments shall be fully creditable
against any payments required under Paragraph 5.4.
5.4 A running royalty of (a) six percent (6%) of Net Sales of Licensed
Products for the first Ten Million Dollars ($10,000,000) in sales anywhere in
the world, and (b) four percent (4%) of Net Sales of Licensed Products on sales
exceeding Ten Million Dollars anywhere in the world.
5.5 For all sublicenses granted by Licensee, a royalty at the rate of
thirty five percent (35%) of all royalties earned by Licensee under such
sublicenses.
5.5 In addition to the running royalties under Paragraph 5.4, ten percent
(10%) of any payments, including, but not limited to, sublicense issue fees or
milestones received from sublicensees as consideration for Patent Rights,
Know-How or Licensed Products.
5.6 In the event of a permitted assignment of this Agreement, five percent
(5%) of any payments received from such assignee as consideration for Patent
Rights, Know-How or Licensed Products, as defined herein.
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ARTICLE VI - PAYMENT, REPORTS AND RECORDS
6.1 Payment Dates and Reports
Within sixty (60) days after the end of each calendar quarter of
each year during the term of this Agreement (including the last day of any
calendar quarter following the expiration of this Agreement), Licensee shall pay
to Northwestern, all royalties accruing during such calendar quarter. Such
payments shall be accompanied by a statement showing the Net Sales of each
Licensed Product by Licensee and its sublicensees in each country, the
applicable royalty rate and the calculation of the amount of royalty due.
6.2 Accounting
a. Payments in U.S. Dollars
All dollar sums referred to in this Agreement are expressed in
U.S. dollars and the Net Sales used for calculating the royalties and other sums
payable to Northwestern by Licensee pursuant to Paragraph 6.1 shall be computed
in U.S. dollars. All payments of such sums and royalties shall be made in U.S.
dollars. For purposes of determining the amount of royalties due, the amount of
Net Sales in any foreign currency shall be computed by converting such amount
into U.S. dollars at the prevailing commercial rate of exchange for purchasing
U.S. dollars with such foreign currency in question as quoted by Citibank in New
York on the last business day of the calendar quarter for which the relevant
royalty payment is to be made by Licensee.
b. Blocked Royalties
Notwithstanding the foregoing, if by reason of any restrictive
exchange laws or regulations Licensee or any Affiliate or sublicensee hereunder
shall be unable to convert to U.S. dollars an amount equivalent to the royalty
payable by Licensee hereunder in respect of Licensed Product sold for funds
other than U.S. dollars, Licensee shall notify Northwestern promptly with an
explanation of the circumstances. In such event, all royalties due hereunder in
respect of the transaction so restricted (or the balance thereof due hereunder
and not paid in funds other than U.S. dollars as hereinafter provided) shall be
deferred and paid in U.S. dollars as soon as reasonably possible after, and to
the extent that such restrictive exchange laws or regulations are lifted so as
to permit such conversion to United States dollars, of which lifting Licensee
shall promptly notify Northwestern. At its option, Northwestern shall meanwhile
have the right to request the payment (to it or to a nominee), and upon such
request Licensee shall pay, or cause to be paid, all such amounts (or such
portions thereof as are specified by Northwestern) in funds, other than U.S.
dollars, designated by Northwestern and legally available to Licensee under such
then existing restrictive exchange laws or regulations.
6.3 Records
Licensee shall keep, and shall cause its Affiliates and sublicensees
to keep, for three (3) years from the date of payment of royalties, complete and
accurate records of sales of each Licensed Product by Licensee; its Affiliates
and its sublicensees in sufficient detail to enable the accruing royalties to be
determined accurately. Northwestern shall have the right during this period of
three (3) years after receiving any report with respect to royalties due and
payable to appoint, at its expense, an independent certified public accountant
to inspect the relevant records of Licensee, its Affiliates and its sublicensees
to verify such report. Northwestern shall submit the name of said accountant to
Licensee for approval; said approval shall not be unreasonably withheld.
Licensee shall make its records and those of its Affiliates and sublicensees
available for inspection by such independent certified public accountant during
regular business hours at such place or places where such records are
customarily kept, upon reasonable notice from Northwestern, to the extent
necessary to verify the accuracy of the reports and
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payments with not more than one (1) inspection per calendar year. Northwestern
agrees to hold in strict confidence all information concerning royalty payments
and reports, and all information learned in the course of any audit or
inspection, except to the extent necessary for Northwestern to reveal such
information in order to enforce its rights under this Agreement or as may be
required by law. If royalties are understated by ten percent (10%) or more in
LICENSEE's favor, the LICENSEE shall, within ten (10) days of receipt of the
audit report, pay the balance due Northwestern plus all reasonable costs of the
audit or inspection and interest at the prime rate as quoted by Citibank in New
York from the date at which such balance would have otherwise been due and
payable. If royalties are understated by less than ten percent (10%), Licensee
shall include such understated amount with the next scheduled payment pursuant
to Paragraph 6.1.
ARTICLE VII - PUBLICATION
Northwestern will be free to publish the results of any research related
to Patent Rights, Know-How or Licensed Products and use any information for
purposes of research, teaching, and other educationally-related matters.
ARTICLE VIII - PATENT PROSECUTION
8.1 Northwestern has granted Licensee the right to apply for, seek prompt
issuance of, and maintain during the term of this Agreement the Patent Rights in
the United States and in the foreign countries listed in Exhibit A hereto. The
prosecution, filing and maintenance of all Patent Rights shall be the primary
responsibility of Licensee; provided, however, Northwestern shall have
reasonable opportunities to advise Licensee and shall cooperate with Licensee in
such prosecution, filing and maintenance.
8.2 Payment of all fees and costs relating to the filing, prosecution, and
maintenance of Patent Rights shall be the responsibility of Licensee, whether
such fees and costs were incurred before or after the Effective Date.
ARTICLE IX - INFRINGEMENT
9.1 Licensee shall inform Northwestern promptly in writing of any alleged
infringement of the Patent Rights by a third party and of any available evidence
thereof.
9.2 During the term of this Agreement, Northwestern shall have the right,
but shall not be obligated, to prosecute at its own expense all infringements of
the Patent Rights and, in furtherance of such right, Licensee hereby agrees that
Northwestern may include Licensee as a party plaintiff in such suit, without
expense to Licensee. The total cost of any such infringement action commenced or
defended solely by Northwestern shall be borne by Northwestern and Northwestern
shall keep any recovery or damages for past infringement derived therefrom.
9.3 If within six (6) months after having been notified of any alleged
infringement, Northwestern 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 Northwestern shall notify
Licensee at any time prior thereto of its intention not to bring suit against
any alleged infringer, then, and in those events only, Licensee shall have the
right, but shall not be obligated, to prosecute at its own expense any
infringement of the Patent Rights, and Licensee may, for such purposes, use the
name of Northwestern as party plaintiff; provided, however, that such right to
bring such 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
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of Northwestern, which consent shall not unreasonably be withheld. Licensee
shall indemnify Northwestern against any order for costs that may be made
against Northwestern in such proceedings. Licensee shall keep any recovery or
damages for past infringement derived therefrom; provided, however, that such
recovery, less expenses, including reasonable attorneys' fees, shall be treated
as Net Sales for the purpose of calculating running royalties under Paragraph
5.4
9.4 In the event that a declaratory judgment action alleging invalidity or
noninfringement of any of the Patent Rights shall be brought against Licensee,
Northwestern, at its option, shall have the right, within thirty (30) days after
it receives notice of the commencement of such action, to intervene and take
over the sole defense of the action at its own expense.
9.5 In any infringement suit that either Party may institute to enforce
the Patent Rights pursuant to this Agreement, the other party hereto shall, at
the request and expense of the Party initiating such suit, cooperate in all
respects and, to the extent possible, have its employees testify when requested
and make available relevant records, papers, information, samples, specimens,
and the like.
9.6 Licensee, during the term of this Agreement, shall have the sole right
in accordance with the terms and conditions herein to sublicense any alleged
infringer for future use of the Patent Rights. Any upfront fees as part of such
a sublicense shall be shared equally between Licensee and Northwestern; other
royalties shall be treated pursuant to Paragraph 5.4.
ARTICLE X - PRODUCT LIABILITY
10.1 Licensee shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold Northwestern, 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 production,
manufacture, sale, use, lease, consumption or advertisement of the Licensed
Product(s) or arising from any obligation of Licensee hereunder.
10.2 Licensee and sublicensees involved in activities described in section
10.1 shall obtain and carry in full force and effect commercial, general
liability insurance which shall protect Licensee and Northwestern with respect
to events covered by paragraph 10.1 above. Such insurance shall be written by a
reputable insurance company authorized to do business in the State of Illinois,
shall list Northwestern 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 Northwestern prior to any cancellation or
material change thereof. The limits of such insurance shall not be less than
Five Million Dollars ($5,000,000) per occurrence with an aggregate of Fifteen
Million Dollars ($15,000,000) 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 Northwestern with
Certificates of Insurance evidencing the same.
10.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT,
NORTHWESTERN, 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 AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY
NORTHWESTERN THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER
SHALL NOT
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INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL NORTHWESTERN,
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 NORTHWESTERN SHALL BE
ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE
POSSIBILITY.
ARTICLE XI- TERM AND TERMINATION
11.1 This Agreement shall become effective on the Effective Date. Unless
sooner terminated as provided for below, this Agreement shall continue in
effect, on a country-by-country basis, until (a) the expiration of the last to
expire of any Patent Rights, or (b) ten (10) years from the date of the first
commercial sale in countries where no Patent Rights exist.
11.2 Licensee shall have the right to terminate this Agreement in whole or
in part anytime after three (3) years from the Effective Date by giving
Northwestern ninety (90) days written notice.
11.3 Northwestern shall have the right to terminate or render this license
non-exclusive at any time after three (3) years from the Effective Date if, in
Northwestern's reasonable judgement, Licensee a) has not put the Licensed
Product into commercial use in the Territory in the Field, directly or through a
sublicensee, thereby not making the Licensed Product available to the public, or
b) is not demonstrably engaged in research, development, manufacturing,
marketing, as appropriate, directed towards this end.
11.4 The provisions of Article III (Confidentiality), Article VI
(Payments, Reports and Records), Article X (Product Liability) and Article XIII
(Dispute Resolution) shall survive termination or expiration of this Agreement
in accordance with their terms.
11.5 If (1) either Party breaches any material obligation imposed by this
Agreement; (2) either Party makes any general assignment for the benefit of its
creditors; (3) a petition is filed by or against either Party, or any proceeding
is initiated against either Party as a debtor, under any bankruptcy or
insolvency law, unless the laws then in effect void the effectiveness of this
provision; or (4) a receiver, trustee, or any similar officer is appointed to
take possession, custody, or control of all or any part of either Party's assets
or property, then the other Party may, at its option, send a written notice that
it intends to terminate the license granted by this Agreement.
11.6 If the Party in breach does not cure the breach, negate the
assignment, obtain a dismissal of the proceeding, or have the appointment
vacated and regaining its assets within ninety (90) days from the notice date,
then the other Party shall have the right to terminate the license granted
immediately upon the date of mailing of a written notice of termination to the
Party in breach.
11.7 Upon termination of this Agreement for any cause, nothing herein
shall be construed to release either Party of any obligation that has matured
prior to the effective date of such termination. Licensee may, after the date of
such termination, sell all Licensed Products that it may have on hand at the
date of termination, provided that it pays the earned royalty thereon as
provided in this Agreement.
11.8 In the event of termination for breach by Licensee, Licensee agrees
to no longer use any of the Patent Rights or Know-How under which it has been
granted a license and will turn over and assign to Northwestern its Regulatory
Approvals and data and material related to price and Regulatory Approvals at no
charge with the right to sublicense.
11.9 Upon termination of this Agreement, any and all existing sublicense
agreements shall be immediately assigned to Northwestern and Northwestern agrees
to keep them in force to the extent that Northwestern is capable of performing
as a licensor in place of Licensee.
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ARTICLE XII - ASSIGNMENT
This Agreement shall not be assignable by either Party without the prior
written consent of the other, except that any Party may assign this Agreement to
any Affiliate, to a successor in interest (including the surviving company in
any consolidation or merger), or to an assignee of substantially all the
business and assets of such Party, or with respect to Licensee, to an assignee
of all or substantially all of the business to which this Agreement relates.
ARTICLE XIII - DISPUTE RESOLUTION
13.1 The Parties agree to effect all reasonable efforts to resolve any and
all disputes between them in connection with this Agreement in an amicable
manner.
13.2 The Parties agree that any dispute that arises in connection with
this Agreement and which cannot be amicably resolved by the parties shall be
resolved by binding Alternative Dispute Resolution (ADR) in the manner set forth
in Paragraph 13.3 through Paragraph 13.5.
13.3 If a Party intends to begin ADR to resolve a dispute, such Party
shall provide written notice to the other Party informing the other Party of
such intention and the issues to be resolved. Within ten (10) business days
after its receipt of such notice, the other Party may, by written notice to the
Party initiating ADR, add additional issues to be resolved. If the Parties
cannot agree upon the selection of a neutral within twenty (20) business days
following receipt of the original ADR notice, a neutral shall be selected by the
then President of the Center for Public Resources (CPR), 000 Xxxxx Xxxxxx, Xxx
Xxxx, Xxx Xxxx 00000. The neutral shall be a single individual having experience
in the biotechnology industry who shall preside in resolution of any disputes
between the Parties. The neutral selected shall not be an employee, director or
shareholder of either Party or an Affiliate or sublicensee.
13.4 Each Party shall have ten (10) business days from the date the
neutral is selected to object in good faith to the selection of that person. If
either Party makes such an objection, the then President of the CPR shall, as
soon as possible thereafter, select another neutral under the same conditions as
set forth above. This second selection shall be final.
13.5 The ADR shall be conducted in the following manner:
(a) No later than forty-five (45) business days after selection, the
neutral shall hold a hearing to resolve each of the issues identified by the
Parties.
(b) At least five (5) days prior to the hearing, each Party must
submit to the neutral and serve on the other Party a proposed ruling on each
issue to be resolved. Such proposed ruling shall contain no argument on or
analysis of the facts or issues, and shall be limited to not more than fifty
(50) pages.
(c) The neutral shall not require or permit any discovery by any
means, including depositions, interrogatories or production of documents.
(d) Each Party shall be entitled to no more than eight (8) hours of
hearing to present testimony or documentary evidence. The testimony of both
Parties shall be presented during consecutive calendar days. Such time
limitation shall apply to any direct, cross or rebuttal testimony, but such time
limitation shall only be charged against the Party conducting such direct, cross
or rebuttal testimony. It shall be the responsibility of the neutral to
determine whether the parties have had the eight (8) hours to which each is
entitled.
(e) Each Party shall have the right to be represented by counsel.
The neutral shall have the sole discretion with regard to the admissibility of
any evidence.
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(f) The neutral shall rule on each disputed issue within thirty (30)
days following the completion of the testimony of both Parties. Such ruling
shall adopt in its entirety the proposed ruling of one of the parties on each
disputed issue.
(g) ADR shall take place in Chicago, Illinois. All costs incurred
for a hearing room shall be shared equally between the Parties.
(h) The neutral shall be paid a reasonable fee plus expenses, which
fees and expenses shall be shared equally by the Parties.
(i) The ruling shall be binding on the Parties and may be entered as
an enforceable judgment by a state or federal court having jurisdiction of the
Parties.
13.6 This Section XIII shall survive any termination of this Agreement.
ARTICLE XIV - NOTICES AND PAYMENTS
Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such Party
by certified 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:
In the case of Northwestern: Director
Technology Transfer Program
Northwestern University
0000 Xxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxx 00000
In the case of Licensee: Mr. Xxxxxxx Xxxxxxxx
President & CEO
Immtech International Inc.
0000 Xxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxx 6~)201
ARTICLE XV - GENERAL
15.1 Force Majeure. Neither party shall be liable to the other for its
failure to perform any of its obligations under this Agreement, except for
payment obligations, during any period in which such performance is delayed
because rendered impracticable or impossible due to circumstances beyond its
reasonable control, including without limitation earthquakes, governmental
regulation, fire, flood, labor difficulties, interruption of supply of key raw
materials, civil disorder, and acts of God, provided that the Party experiencing
the delay promptly notifies the other Party of the delay.
15.2 Severability. In the event any provision of this Agreement is held to
be invalid or unenforceable, the valid or enforceable portion thereof and the
remaining provisions of this Agreement will remain in full force and effect.
15.3 Applicable Law. This Agreement is made in accordance with and shall
be governed and construed under the laws of the State of Illinois, excluding its
choice of law rules.
15.4 Entire Agreement. This Agreement and the exhibits attached hereto
constitute the entire, final, complete and exclusive agreement between the
Parties and supersede all previous agreements or representations, written or
oral, with respect to the subject matter of this Agreement. This Agreement may
not be modified or amended except in a writing signed by a duly authorized
representative of each Party.
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15.5 Headings. The headings for each article and section in this Agreement
have been inserted for convenience or reference only and are not intended to
limit or expand on the meaning of the language contained in the particular
article or section.
15.6 Independent Contractors. The Parties are not employees or legal
representatives of the other party for any purpose. Neither Party shall have the
authority to enter into any contracts in the name of or on behalf of the other
Party.
15.7 Advertising. Licensee shall not use the name of any inventor of
Northwestern University, of any institution with which the inventor has been or
is connected, nor the name of Northwestern in any advertising, promotional or
sales literature, without prior written consent obtained from Northwestern in
each case.
15.8 Waiver. Any waiver (express or implied) by either Party of any breach
of this Agreement shall not constitute a waiver of any other or subsequent
breach.
15.9 Counterparts. This Agreement may be executed in counterparts with the
same force and effect as if each of the signatories had executed the same
instrument.
15.10 Patent 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 practice of the country of
manufacture or sale.
In Witness Whereof, the Parties have executed this Agreement effective on
the date first set forth above.
LICENSEE NORTHWESTERN
By: /s/ T. Xxxxxxx Xxxxxxxx By: /s/ Xxxxx Xxxxx-Xxxxxxxx
--------------------------- -------------------------------
Name: T. Xxxxxxx Xxxxxxxx Name: XXXXX XXXXX-XXXXXXXX
-------------------------- ------------------------------
Title: President & CEO Title: VICE PRESIDENT FOR RESEARCH
------------------------- AND GRADUATE STUDIES
----------------------------
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EXHIBIT A
Immunoassay of Glycosylated Proteins Employing Antibody
Directed to Reductively Glycosylated N-Terminal Amino Acids
Xxxxx X. Xxxxx, Xxxxx Xxxxxxxx
U. S. Patent No. 5,484,735 - Issued: January 16, 1996
