EXHIBIT 10.14
LICENSE AGREEMENT
THIS AGREEMENT, dated as of May 18, 2000 ("Effective Date"), is between Advanced
Life Sciences, Inc. ("Licensor"), 00000 Xxxxx Xxx Xxxxxx, Xxxxxx, Xxxxxxxx
00000, and MediChem Research, Inc., ("Licensee"), 00000 Xxxxx Xxx Xxxxxx,
Xxxxxx, Xxxxxxxx 00000, and shall modify and amend the previous Agreement dated
October 31, 1999.
WITNESSETH
WHEREAS, Licensor represents that it owns the rights to offer for sale, sell,
make, and use the patent entitled "Biflavanoids and Derivatives Thereof as
Antiviral Agents" (U.S. Patent No.: 5,948,918 granted September 7, 1999), and
owns and controls all rights relating to the Licensed Technical Information
(hereinafter defined); and
WHEREAS, Licensee desires to receive, and Licensor desires to grant to Licensee
exclusive rights under such patent and to such technical information in the
Licensed Territory (hereinafter defined), and Licensee desires to accept such
rights, in accordance with the terms set forth below.
NOW, THEREFORE, intending to be legally bound, the parties hereby agree as
follows:
1. Definitions
1.1 "Licensed Patent" means the patent entitled "Biflavanoids and
Derivatives Thereof as Antiviral Agents." The Licensed Patent shall include
all improvements, divisionals, continuations, continuations-in-part, re-
examinations, and reissues thereof.
1.2 "Licensed Technical Information" means unpublished research and
development information, unpatented inventions, know-how, trade secrets,
and technical information relevant to the Licensed Patent in the possession
of Licensor or any of its Affiliates (hereinafter defined) at the Effective
Date of this Agreement.
1.3 "Exclusive License" means a license granting Licensee the manufacture
the Licensed Products (hereinafter defined), to the exclusion of all other
parties including Licensor.
1.4 "Licensed Products" means any products derived from the use,
development to and/or the improvement of the Licensed Patent.
1.5 "Licensed Territory" means the United States of America.
1.6 "Affiliate" means, with respect to each party, any corporation or other
legal entity that directly or indirectly controls, is controlled by, or is
under common control with, the party, but only for so long as said control
continues. For purposes of this definition, "control" means the power,
whether or not normally exercised, to direct the management and affairs of
another corporation or other legal entity, directly or indirectly, whether
through the ownership of voting securities, by contract or otherwise. In
the case of a corporation, the direct or indirect ownership of fifty
percent (50%) or more of its outstanding voting shares shall in any case be
deemed to confer control, provided that the direct or indirect ownership of
a lower percentage of such securities shall not necessarily preclude the
existence of control.
1.7 "Net Sales" shall mean the total gross receipts for sales of Licensed
Products by or on behalf of Licensee or its sublicensees, and from selling,
leasing, renting or otherwise making Licensed Products available to others
whether invoiced or not, less returns and allowances actually granted in
the normal course of business including but not limited to trading, packing
costs, insurance costs, freight out, taxes or excise duties imposed on the
transaction (if separately invoiced), and wholesale and cash discounts in
amounts customary in the trade. No deductions shall be made for commissions
paid to individuals, whether they be with independent sales agencies or
regularly employed by Licensee, or sublicensee, and on its payroll, or for
the cost of collections.
2. Confidentiality
2.1. Licensee will hold Licensor's Confidential Information in the
strictest confidence using such reasonable measures as it uses to protect
the confidentiality of similar information belonging to it. All written (or
otherwise recorded) originals and copies of confidential information must
be returned to Licensor with the exception of one copy being reserved for
file purposes only. The parties will use Confidential Information solely to
perform the activities under this Agreement and will disclose Confidential
Information only to their employees or contractors with a need to know such
information. Notwithstanding the other provisions of this Agreement,
nothing received by Licensee shall be considered Licensor's Confidential
Information which (a) is now available or becomes available to the public
without breach of this Agreement, (b) is released in writing by Licensor,
(c) is lawfully obtained from a third party or parties, (d) is known to the
Licensee prior to such disclosure, or (e) is at any time developed by
Licensee independent of such disclosure. Licensor further agrees to release
Licensee from any duty of confidentiality after seven (7) years have
expired from the time of termination of the agreement.
3. Warranty of Title
3.1. Licensor represents and warrants it is the sole owner of the Licensed
Patent, and that it has the right to grant the License described in this
Agreement.
4. License Grant
4.1 Licensor grants to the Licensee an exclusive license to offer for sale,
make, use, and sell the Licensed Patent in the Licensed Territory. Licensee
shall have the right to assign and/or sublicense, in part or in whole, the
Licensed Patent and/or the Licensed Technical Information, and shall have
the right to procure manufacturing from third party contractors who are
bound by confidentiality terms at least as strong as in this Agreement.
Licensor shall, within thirty (30) days of the effective date of this
Agreement make available to Licensee for its use the Licensed Technical
Information in Licensor's possession needed to make the Licensed Products.
4.2 Licensor agrees to keep Licensee fully and promptly informed of the
status of the prosecution of the Licensed Patent and (c) consult with
Licensee on all aspects of the prosecution of this application.
5. Patent Infringement
5.1 In the event of third party infringement of the Licensed Patent in the
Licensed Territory, the parties will develop a mutually acceptable plan for
abatement of the infringement and shall contribute toward attorney's fees
and costs in proportion to the loss of royalties or profits being caused by
the infringement. In any lawsuit for infringement, both parties shall be
named as plaintiffs,
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Licensor shall control all aspects of the lawsuit, and any award or
settlement shall be divided in proportion to each party's loss of royalties
or profits.
6. Indemnification
6.1 Licensee agrees to defend, indemnify, and hold Licensor harmless
against all claims and actions as a result of any sales, property damage,
or personal injury sustained by Licensee, its employees, or other third
parties, as a result of misuse of the Licensed Patent or the Licensed
Technical Information. Licensee will carry adequate product liability
insurance.
7. Royalties & Milestones
7.1 Licensee will pay Licensor a royalty of eight percent (8%) of all Net
Sales of any of the Licensed Products.
7.2 Licensor agrees to pay Licensee a milestone payment of $400,000.00 upon
demonstrated Commercial Use.
7.3 Licensor agrees to pay Licensee a milestone payment of $400,000.000
upon successful issuance of the Licensed Patent from the United States
Patent and Trademark Office.
7.4 Licensor agrees to pay Licensee a milestone payment of $100,000.000 for
each publication in a Peer Reviewed Journal.
8. Intellectual Property
8.1 Licensee agrees that Licensor will own all of the intellectual property
rights that arise from Licensee inventions including developments to or
improvements on the Licensed Patent.
9. Promotions and Marketing
9.1 Both parties agree that, in promotions and marketing of the technology,
Licensee and Licensor will use their names in conjunction with one another.
10. Term and Termination
10.1. This Agreement may be terminated earlier by one or more of the
following events:
1. The mutual, written agreement of the Parties to terminate the
Agreement;
2. If a party to this Agreement makes a material breach of any provision
herein, the non-breaching party will, in writing, provide the breaching
party thirty days (30) to cure the breach.
If not cured within the thirty-day period, the non-breaching party can,
in writing, terminate this Agreement;
3. The filing for bankruptcy, the acquisition, or the sale of a party to
this Agreement will result in the termination of this Agreement; or
5. The Licensed Patent expires.
11. Best Efforts
11.1 Licensee agrees to use its best efforts to sell any of the Licensed
Products in the Licensed Territory.
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12. Applicable Law
12.1 The applicable law governing any cause of action arising out of this
Agreement, or the performance by a party hereto, shall be governed by the
laws of the United States of America and the State of Illinois.
13. Severability
13.1 If any one or more of the provisions of this Agreement shall be held
to be invalid, illegal or unenforceable, the validity, legality or
enforceability of the remaining provisions of this agreement shall not in
any way be affected or impaired thereby.
14. Miscellaneous
14.1 Nothing contained herein, or done in pursuance of this Agreement,
shall constitute the parties as entering into a legal partnership, joint
venture, or any other business entity or business relationship other than
that expressly described in this Agreement, or shall constitute a party
hereto the agent for the other party for any purpose or in any sense
whatsoever. This Agreement embodies the entire understanding of the parties
with respect to the subject matter contained herein and shall supersede all
previous communications, representations or understandings, either oral or
written, between the parties relating to the subject matter hereof. No
amendment or modification of this Agreement shall be valid or binding upon
the parties unless signed by their respective duly authorized officers.
IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be
executed by its duly authorized officer or representative as of the date set
forth below.
Advanced Life Sciences, Inc. MediChem Research, Inc.
___________________________ ____________________________
Xxxxxxx X. Xxxxxx, Ph.D. Xxxx X.Xxxxxx
President and CEO Executive Vice President
___________________________ ____________________________
Date Date
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