MODIFICATION NUMBER 3 TO THE
EXCLUSIVE FIELD-OF-USE LICENSE AGREEMENT NO. 00-00-00000
THIS MODIFICATION, hereinafter referred to as"Modification Number 3," is entered
into by and between THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, a nonprofit
educational institution and a public corporation of the State of California,
hereinafter referred to as the "University," and CENTREX, INC., an Oklahoma
corporation having a principal place of business at 0000 Xxxxx Xxxx Xxxxxx,
Xxxxx 000, in Tulsa, Oklahoma, hereinafter referred to as the "Licensee," the
parties to this License Agreement being referred to individually as a "Party"
and collectively as "Parties."
BACKGROUND
The Parties have entered into License Agreement 00-00-00000 for technology
related to ultrasensitive detection of specific nucleic acid sequences, said
license being limited to the field of "detection of microbial contamination in
food."
Licensee has proposed certain improvements to the technology that will expand
its area of application, and the Licensee and University have entered into
Funds-In Agreement FIA-98-053-A001 to develop these improvements.
In order to commercially exploit the improved technology, Licensee has requested
that its license grant be made exclusive.
THEREFORE, the Parties agree to modify the License Agreement as follows:
MODIFICATIONS
(1) Delete Paragraph 1.9, FIELD OF USE definition.
(2) Replace Paragraph 2.1 with the following:
2.1 The University grants to the Licensee, subject to Paragraphs 2.2
and 2.3, an exclusive license to make, use, import, sell and offer to sell
LICENSED INVENTIONS under the PATENT RIGHTS, with the right to sublicense others
under the terms of Article 3.
(3) Replace Article 11 "PATENT PROSECUTION AND MAINTENANCE" with the
following:
11 PATENT PROSECUTION AND MAINTENANCE
11.1 The University will file, prosecute, and maintain the U.S. and
international patent applications and patents listed in Appendix A. The costs
associated with U.S. and PCT cases will be borne by the University. The costs
associated with international cases
will be borne by the Licensee for each national case. The University will
provide the Licensee, upon the Licensee's request, copies of relevant
documentation relating to any such patent prosecution. The Licensee will hold
such documentation in confidence in the same manner as if it were the Licensee's
financial or business information or trade secrets.
11.2 Licensee acknowledges that the University has kept Licensee
fully informed of the prosecution actions related to U.S. Patent Application No.
09/454,385.
11.3 The University will use its best efforts to amend any U.S. or
international patent applications identified in Appendix A to include reasonable
claims requested by the Licensee if such claims are required to protect
commercial applications of the LICENSED INVENTION. Requested amendments will be
introduced into the patent applications at the sole discretion of the
University.
11.4 The Licensee understands and agrees that the prosecution of patent
applications is uncertain and that certain claims therein may not be allowed or
may be more limited in scope than when originally filed and that patent
applications may not issue as a U.S. and/or international patent. Therefore, the
University provides no representation or warranty that any of the patent
applications identified in Appendix A will issue as a U.S. and/or international
patent or that the scope of claims coverage of any resulting patent issuing
thereon will have the same scope of claims coverage as when filed by the
University or when reviewed by the Licensee.
11.5 The University agrees to provide written notification to the
Licensee if any of the patent applications identified in Appendix A receive a
final rejection, and further agrees to review recommendations from the Licensee
and/or the Licensee's patent attorneys as to how to further the University's
prosecution efforts. However, it will be at the University's sole discretion
whether the University implements the prosecution advice of the Licensee and/or
the Licensee's patent attorneys.
11.6 The University agrees to provide written notification to the
Licensee if the University intends to terminate prosecution of any of the patent
applications identified in Appendix A. Acceptance by the University of allowed
claims in any of the patent applications and allowing the patent applications to
proceed to issuance with these claims, or abandonment of any of the patent
applications will be at the sole discretion of the University. If the University
elects to terminate prosecution of a patent application for a reason other than
to accept allowed claims, the Licensee may elect in writing to assume
responsibility for such prosecution in the name of the University at its own
expense.
11.7 The University will invoice the Licensee for costs under Paragraph
11.1 as expenses are incurred or estimated by the University and the Licensee
must pay such invoices within thirty (30) days of the invoice date. The
Licensee's obligations to pay costs incurred by the University for foreign
patents and patent applications continues until this License Agreement expires
or is terminated by either Party or until such time as
Appendix A is amended to delete one or more national cases, irrespective of when
the University actually pays the expenses.
11.8 Notwithstanding any of the foregoing, the Licensee may at any time
notify the University that it is no longer interested in any particular foreign
patent or patent application listed in Appendix A and, effective upon the
University's receipt of such notice, the Licensee shall have no obligation to
pay any costs incurred by the University associated with such patent or patent
application after receipt of such notice, and the Licensee shall have no license
rights under such patent or patent issuing on such patent application.
11.9 The Licensee may request amendments to Appendix A, Foreign Patent
Rights, in writing to the University, provided such requests are made at least
ninety (90) days before any action on the cases affected by the requested
amendment is due. The failure of the Licensee to include countries in Appendix A
for international patent rights will be considered an election by the Licensee
not to secure such rights. The University has the right to seek patent rights in
any country for which a patent application has not been filed as of the
effective date of this Agreement or for which the Licensee has not elected to
secure such international rights and may seek additional licensees of such
rights.
(4) Replace Appendix A with the following:
1. U.S. Patent Rights
filed December 3, 1999; "Method or the detection of specific nucleic
acid sequences by polymerase nucleotide incorporation" by X. Xxxxxx
(Case S-89,696).
2. Foreign Patent Rights
For U.S. Patent Application No. 09/454,385; filed December 3,
1999; "Method for the detection of specific nucleic acid
sequences by polymerase nucleotide incorporation" by X. Xxxxxx
(Case S-89,696). The Licensee elects foreign patent
prosecution in the following countries:
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Country Application No. Filing Date
-------------------------- ------------------- ---------------
-------------------------- ------------------- ---------------
Canada 2,354,682 12/3/99
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-------------------------- ------------------- ---------------
European Patent Office 99964072.5 12/3/99
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Japan 12/3/99
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(3) Replace Appendix C, Part 1, Paragraph b with the following:
b. Annual License Fee of Five Thousand Dollars ($5000)
payable in advance on January 31 for each year this
License Agreement is in effect.
MODIFICATION FEES
In consideration for the rights, privileges and license granted under this
Modification Number 3, Licensee shall pay the following fees:
(1) Fifteen Thousand Dollars ($15,000) within fifteen (15) days of execution of
this Modification Number 3.
(2) Ten Thousand Dollars ($10,000) within thirty (30) days of being notified
that the University received a notice of allowability from the U.S. Patent
and Trademark Office for U.S. Patent Application No. 09/454,385.
IN WITNESS WHEREOF, both the University and the Licensee have executed this
Modification Number 3, in duplicate originals, by their respective officers on
the day and date hereinafter written. This Modification Number 3 is effective as
of the later of the dates of execution.
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA:
By: / s / Xxxxx X. Xxxxx
---------------------
Xxxxx X. Xxxxx, Ph.D.
Director, Industrial Business Development Office
Los Alamos National Laboratory
Date: 2-25-02
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CENTREX, INC.
By: / s / X. X. Xxxxxxxx, Xx.
--------------------------
Name: X. X. Xxxxxxxx, Xx., M.D., CEO
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Date: 2/26/02
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