Exhibit 10.11
License Agreement
Texas Tech University System
This Agreement is made and entered into this 22nd day of January, 2002 (the
"Effective Date"), by and between Texas Tech University System, an institution
of higher education having its place of business at Xxx 00000, Xxxxxxx, Xxxxx
79409-2007 (hereinafter referred to as "LICENSOR"), and HemoBioTech, Inc., a
corporation duly organized under the laws of the State of Texas and having its
principal office at Suite 2006, 00000 Xxxxxxx Xxxx, Xxxxxx, Xxxxx 00000
(hereinafter referred to as "LICENSEE").
WITNESSETH
----------
WHEREAS, LICENSOR is the owner of certain PATENT RIGHTS (as later defined
herein) relating to LICENSOR Case No. TTU D-0177, "Blood Substitute" by Drs.
Xxxxx Xxxxx, Xxx X. Xxxxxx, and Xxxxx X. Xxxxxxxx, and has the right to grant
licenses under said PATENT RIGHTS, subject only to a possible royalty-free,
nonexclusive license heretofore granted to the United States Government;
WHEREAS, LICENSOR desires to have the PATENT RIGHTS developed and
commercialized to benefit the public and is willing to grant a license
thereunder;
WHEREAS, LICENSEE has represented to LICENSOR, to induce LICENSOR to
enter into this Agreement, that LICENSEE has represented that it will cause the
formation of a start-up company which shall commit itself to a thorough,
vigorous, and diligent program of exploiting the PATENT RIGHTS so that public
utilization shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a license under the PATENT RIGHTS
upon the terms and condition hereinafter set forth;
WHEREAS, LICENSEE acknowledges that if funds obtained from the U.S.
Government are co-mingled with funds obtained from LICENSEE in support of
sponsored research under any future sponsored research agreements, then any
license granted would be subject to rights in the U.S. Government under 37 CFR
part 401, should they exist;
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
1
ARTICLE 1 - DEFINITIONS
For the purposes of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "LICENSEE" shall include HemoBioTech, Inc., and any subsequent
start-up company approved by LICENSOR.
1.2 "PATENT RIGHTS" shall mean all of the following LICENSOR
intellectual property:
(a) the United States and foreign patents and/or patent applications
listed in Appendices A and B; and any patent application filed pursuant
to the terms of this Agreement in the name of the LICENSOR and/or
Biological Material arising out of a Designated Invention;
(b) United States and foreign patents issued from the applications
arising from (a) and from divisional and continuation of these
applications;
(c) Any reissues of United States patents described in (a or (b), above.
1.3 A "LICENSED PRODUCT" shall mean any product or part thereof which:
(a) is covered in whole or in part by an issued, unexpired claim or a
pending claim contained in the PATENT RIGHTS in the country in which any
such product or part thereof is made, used or sold; or
(b) is manufactured by using a process or is employed to practice a
process which is covered in whole or in part by an issued, unexpired
claim or a pending claim contained in the PATENT RIGHTS in the country in
which any LICENSED PROCESS is used or in which such product or part
thereof is used or sold.
1.4 A "LICENSED PROCESS" shall mean any process which is covered in
whole or in part by an issued, unexpired claim or a pending claim contained in
the PATENT RIGHTS.
1.5 "NET SALES" shall mean LICENSEE's (and its sublicensees') xxxxxxxx
for LICENSED PRODUCTS and LICENSED PROCESSES produced hereunder less the sum of
the following:
2
(a) discounts allowed in amounts customary in the trade;
(b) sales, tariff duties and/or use taxes directly imposed and with
reference to particular sales;
(c) outbound transportation prepaid or allowed; and
(d) amounts allowed or credited on returns.
No deductions shall be made for commissions paid to individuals whether
they be with independent sales agencies or regularly employed by LICENSEE and on
its payroll, or for cost of collections. LICENSED PRODUCTS shall be considered
"sold" when billed out or invoiced.
1.6 "LICENSE YEAR" shall mean each twelve (12) month period beginning
on the effective date of this Agreement first written above and thereafter on
the anniversary date thereof.
1.7 DESIGNATED INVENTION shall mean any patentable invention or
proprietary Biological Material, in each case, created and/or conceived and/or
reduced to practice, by any employees of LICENSOR funded under a future
sponsored research agreement funded by LICENSEE and which LICENSEE, in a written
notice to LICENSOR within 90 days after LICENSEE first receives written
notification of such invention or Biological Material in accordance with the
terms of the sponsored research agreement, shall have designated as an invention
it wishes to license under the terms of this Agreement.
1.8 BIOLOGICAL MATERIAL shall mean any protein, gene, gene vector,
plasmid or other construct, cell line, hybridoma, monoclonal antibody or other
similar biological materials, or derivatives or analogs thereof, created by
employees of the Texas Tech University System and arising out of the sponsored
research, which is or is subject to becoming a Designated Invention.
1.9 TECHNICAL INFORMATION means and includes all technical
information, developments, discoveries, know-how, methods, techniques, formulae,
processes, and other information that are conceived and/or discovered and/or
reduced to practice during the course of the sponsored research. "Technical
Information" shall exclude any of the foregoing that are included in a claim of
the Licensed Patents, or Licensed Applications or that are Biological Materials.
3
ARTICLE 2--GRANT
2.1 LICENSOR hereby grants to LICENSEE the exclusive right and license
to practice under the PATENT RIGHTS and, to the extent not prohibited by other
patents, to make, have made, use, lease, sell, and import LICENSED PRODUCTS and
to practice the LICENSED PROCESSES world-wide, until the end of the term for
which the patent rights are granted unless this Agreement shall be sooner
terminated according to the terms hereof.
2.2 LICENSEE agrees that LICENSED PRODUCTS leased or sold in the
United States shall be manufactured substantially in the United States.
2.3 LICENSOR reserves the right to practice under the PATENT RIGHTS
for its own noncommercial research purposes.
2.4 LICENSEE may sublicense its license hereunder to any third party
provided that LICENSEE finds the sublicensee generally acceptable (such
acceptance is not to be unreasonably withheld), that all sublicensees shall be
obligated to all the terms and conditions of this Agreement protective of
LICENSOR and that LICENSEE shall make all reasonable efforts to ensure
compliance of the sub-licensee on all provisions of this Agreement that are
beneficial to or protective of the LICENSOR. LICENSEE has the right, to the
extent permitted by State and Federal law and to the extent that it pays for
such use, including overhead charges, to use its personnel, labs, facilities and
equipment in the production of LICENSED PRODUCTS until the end of phase two of
clinical testing unless this Agreement shall be sooner terminated according to
the terms hereof.
2.5 LICENSOR recognizes that one of more of its employees may leave
LICENSOR to join LICENSEE full time and that LICENSOR will not prevent or hold
either employee or LICENSEE liable for such act. Furthermore, LICENSOR
recognizes that LICENSEE may ask select employees, directions and affiliates of
LICENSOR to act as advisors, directors and part-time associates and consultants
and that LICENSEE may compensate for such an act, in the form of cash and or
stock options.
2.6 LICENSEE agrees to forward to LICENSOR a copy of any and all
sublicense agreements promptly upon execution by the parties.
2.7 LICENSEE shall not receive from sublicensees anything of value in
lieu of cash payments in consideration for any sublicense under this Agreement,
without the express prior written permission of or sharing agreement with
LICENSOR.
4
2.8 LICENSOR recognizes that LICENSEE may encounter patents held by
third parties which are superior to both LICENSOR's and LICENSEE's patents and
that a cross-license between LICENSEE and such third party may be necessary in
order to enable LICENSEE to exercise the license herein granted. In that event,
LICENSEE shall have the right to enter into cross-licensing agreements with
third parties and to grant cross-licenses under any and all of that PATENTS,
provided that such cross-license does not relieve LICENSEE from any obligation
hereunder.
2.9 The license granted hereunder shall not be construed to confer any
rights upon LICENSEE by implication, estoppel or otherwise as to any technology
not specifically set forth in Appendices A and B hereof, or which is a
Designated Invention.
2.10 Further, LICENSOR grants LICENSEE the exclusive right to use
Technical Information to the extent necessary or appropriate to make, use or
sell a Licensed Product, PROVIDED, HOWEVER, that the grant of such a right with
respect to the Technical Information shall not in any way affect the rights of
employees and researchers of LICENSOR to make publications and presentations are
made in compliance of any future sponsored research agreement.
Notwithstanding anything in this Agreement, the employees and researchers
of LICENSOR may make Biological Materials available to other academic
researchers with an appropriate standard Biological Materials Agreement that
prevents further transfer of such Biological Materials and grants no commercial
rights, in order to satisfy the requirements of a journal publisher.
ARTICLE 3--DUE DILIGENCE
3.1 LICENSEE shall use its best efforts to bring one of more LICENSED
PRODUCTS or LICENSED PROCESSES to market through a thorough, vigorous and
diligent program for exploitation of the PATENT RIGHTS and to continue active,
diligent marketing efforts for one or more LICENSED PRODUCTS or LICENSED
PROCESSES throughout the life of this Agreement.
(a) LICENSEE shall deliver to LICENSOR on or before December 31st a
business plan showing the amount of money, number and kind of personnel
and time budgeted and planned for each phase of development of the
LICENSED PRODUCTS and LICENSED PROCESSES and shall provide similar
reports to LICENSOR on or before December 31st of each year.
5
ARTICLE 4--PAYMENTS MADE IN CONSIDERATION
OF THE EXECUTION OF THIS LICENSE AGREEMENT
4.1 LICENSEE agrees to pay The Texas Tech System Research and Economic
Development Foundation (hereinafter referred to as "FOUNDATION") five percent
(5%) of the authorized founding stock in LICENSEE or its successors. This
payment is in exchange for royalties, licensing fees, sublicensing fees and any
and all other payments and considerations associated with this Agreement.
Throughout the initial phase of financing or capital acquisition, The
Foundation's five percent equity share shall be protected against dilution until
LICENSEE has expended fifteen million dollars ($15,000,000.00) in capital.
Thereafter, FOUNDATION's equity interest shall be dilutable.
In addition, LICENSEE agrees to create a special fund in the amount of $1.2
Million dollars dedicated over a period of four years to support efforts in
incubating and commercializing other LICENSOR technologies. LICENSEE reserves
the right of first refusal on licensing and commercializing other technologies
developed by LICENSOR.
ARTICLE 5--INTELLECTUAL PROPERTY
PROTECTION AND PAYMENT OF COSTS
5.1 If future Designated Inventions come into existence, LICENSEE
agrees to pay all direct and documentable prosecution costs for such Designated
Inventions paid by LICENSOR at least through an appeal to the U.S. Patent and
Trademark Office Board of Appeals.
5.2 Upon successful commercialization and where maintenance fees are
due on Patent Rights throughout the world and LICENSEE remains exclusively
licensed, LICENSEE agrees to reimburse LICENSOR for the costs of said
maintenance within thirty (30) days of Notice thereof to LICENSEE by LICENSOR.
5.3 Should the opportunity to file foreign counterpart applications of
Designated Inventions exist, LICENSEE may designate foreign countries where
counterpart foreign applications shall be filed. Title to such foreign patent
applications shall be in LICENSOR. LICENSEE agrees to pay for all expenses
incurred in the preparation, filing, prosecution, renewal and continuation of
patents and patent applications in said designated countries including all
taxes, official fees and attorney's fees.
6
5.4 LICENSEE may designate by notice to LICENSOR countries where
applications with respect to Designated Inventions shall be filed, which may
include the United States or any other country. Title to inventions made solely
by inventive contributions of employees of the LICENSOR shall be in LICENSOR;
title to inventions made solely by inventive contributions of employees of
LICENSEE shall be in LICENSEE; and title to inventions made by joint inventive
contributions of employees of both the LICENSOR AND LICENSEE shall be jointly
owned by the LICENSOR and LICENSEE. LICENSEE agrees to pay for all reasonable
and necessary out-of-pocket expenses incurred in the preparation, filing,
prosecution, maintenance, renewal and continuation of said patents and
applications in said designated countries, including all taxes, official fees
and attorney's fees. The patent law firm selected shall be mutually acceptable
to LICENSOR and LICENSEE. LICENSOR shall be the client in the attorney-client
relationship with such law firm and may provide instructions to such law firm
regarding the scope and content of applications to be filed and prosecuted,
subject to the right of LICENSEE to request LICENSOR to instruct such law firm
to cover any additional matters as LICENSEE may desire to assure that such
application covers all items of commercial interest and importance. LICENSOR
will honor such requests of LICENSEE. LICENSOR and LICENSEE each shall receive
copies of all correspondence with respect to such preparation, filing,
prosecution, renewal and continuation of Licensed Patents and Licensed
Applications. LICENSOR AND LICENSEE shall consult with each other regarding all
such patent application matters and the costs associated therewith.
Notwithstanding the foregoing, LICENSEE may elect in writing to be released from
its license in any of the patents and applications in a particular country at
any time after initial filing costs have been paid, in which event it shall
thereafter, upon notice of such election being given to LICENSOR, have no
obligation to reimburse LICENSOR for any future expenses relating to such
patent, or application therefore in such country.
ARTICLE 6--REPORTS AND RECORDS
6.1 LICENSEE shall keep full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to LICENSOR hereunder. Said books of account shall be kept at
LICENSEE's principal place of business or the principal place of business of the
appropriate division of LICENSEE to which this Agreement relates. Said books and
the supporting data shall be open at all reasonable times for five (5) years
following the end of the license year to which they pertain, to the inspection
of LICENSOR or its agents for the purpose of verifying LICENSEE's royalty
statement or compliance in other respects with this Agreement. Should such
inspection lead to the discovery of a greater than ten percent (10%) discrepancy
in re-
7
porting to LICENSOR's detriment, LICENSEE agrees to pay the full cost of such
inspection.
6.2 Before the first commercial sales of a LICENSED PRODUCT or
LICENSED PROCESS, LICENSEE shall submit the reports due under Paragraph 3.1(a)
on December 31st of each year. After the first commercial sales of a LICENSED
PRODUCT or LICENSED PROCESS, LICENSEE, within sixty (60) days after March 31,
June 30, September 30 and December 31, of each license year, shall deliver to
LICENSOR true and accurate reports, giving such particulars of the business
conducted by LICENSEE and its sublicensees during the preceding three-month
period under this Agreement as shall be pertinent to a royalty accounting
hereunder. These shall include at least the following:
(a) number of LICENSED PRODUCTS manufactured and sold by
LICENSEE and all sublicensees; and if multiple patents or patent
applications are contained in Patent rights, which of the patents
or patent applications apply to each LICENSED PRODUCT;
(b) total xxxxxxxx for LICENSED PRODUCTS sold by LICENSEE and
all sublicensees; each distinct product or model number separately
accounted for
(c) accounting for all LICENSED PROCESSES used or sold by
LICENSEE and all sublicensees:
(d) deductions applicable as provided in Paragraph 1.5;
(e) names and addresses of all sublicensees of LICENSEE.
6.3 On or before the ninetieth (90th) day following the close of
LICENSEE's fiscal year, LICENSEE shall provide LICENSOR with LICENSEE's
certified financial statements for the preceding fiscal year including, at a
minimum, a Balance Sheet and an Operating Statement.
ARTICLE 7 - INFRINGEMENT
7.1 LICENSEE shall inform LICENSOR promptly in writing of any alleged
infringement of the PATENT RIGHTS by a third party and of any available evidence
thereof.
7.2 During the term of this Agreement, LICENSOR 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
8
that LICENSOR may include LICENSEE as a party plaintiff in any such suit,
without expense to LICENSEE. The total cost of any such infringement action
commenced or defended solely by LICENSOR shall be borne by LICENSOR and LICENSOR
shall keep any recovery or damages for past infringement derived therefrom.
7.3 If within six (6) months after having been notified of any alleged
infringement, LICENSOR 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 LICENSOR 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 LICENSOR as
party plaintiff; provided, however, that such right to bring such an
infringement action shall remain in effect only for so long as the license
granted herein remains exclusive. No settlement, consent judgment or other
voluntary final disposition of the suit may be entered into without the consent
of LICENSOR, which consent shall not unreasonably be withheld. LICENSEE shall
indemnify LICENSOR against any order for costs that may be made against LICENSOR
in such proceedings.
7.4 In the event that a declaratory judgment action alleging
invalidity or noninfringement of any of the PATENT RIGHTS shall be brought
against LICENSEE, LICENSOR, at its option, shall have the right, within thirty
(30) days after commencement of such action, to intervene and take over the sole
defense of the action at its own expense.
7.5 In any infringement suit as either party may institute to enforce
the PATENT RIGHTS pursuant to this Agreement, the other party hereto shall, at
the request and expense of the party initiating such suit, cooperate in all
respects and, to the extent possible, have its employees testify when requested
and make available relevant records, papers, information, samples, specimens,
and the like.
7.6 LICENSEE, during the exclusive period 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 LICENSOR; other royalties shall be treated per Article 4.
9
ARTICLE 8 - PRODUCT LIABILITY
8.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold LICENSOR, 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) and/or LICENSED PROCESS(es) or arising from any obligation of
LICENSEE hereunder, excepting only claims that the PATENT RIGHTS infringe third
party intellectual property.
8.2 No other action on the part of LICENSOR is or will be necessary to
authorize the execution, delivery or performance of this Agreement. This
Agreement has been duly executed and delivered by LICENSOR, and this Agreement
constitutes the valid and legally binding obligation of LICENSOR, enforceable
against it according to its terms.
8.3 Insofar as LICENSOR is aware, the execution and delivery of this
Agreement by LICENSOR and the performance of its obligations hereunder will not
conflict with or violate any of the terms, conditions or provisions of or
constitute a default under any contract, instrument, agreement, law, order,
regulation, judgment or license to which LICENSOR is a party or may be bound.
LICENSOR represents and warrants that, to its present best knowledge and belief,
the PATENT RIGHTS and the LICENSED PRODUCT and/or LICENSED PROCESS(es) made,
used, sold, or otherwise disposed of under any license granted herein are or
will be free from liability, infringement of patents or property rights owned by
third parties.
8.4 LICENSEE, upon successful commercialization, shall obtain and
carry in full force and effect commercial, general liability insurance which
shall protect LICENSEE and LICENSOR with respect to events covered by Paragraph
8.1 above. Such insurance shall be written by a reputable insurance company
authorized to do business in the State of Texas, shall list LICENSOR 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 LICENSOR prior to any cancellation or material change thereof. The limits of
such insurance shall not be less than One Million Dollars ($1,000,000) per
occurence with an aggregate of Three Million Dollars ($3,000,000) for personal
injury or death, and One Million Dollars ($1,000,000) per occurence with an
aggregate of Three Million Dollars ($3,000,000) for property damage. LICENSEE
shall provide LICENSOR with Certificates of Insurance evidencing the same.
10
8.5 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT,
LICENSOR, 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
LICENSOR THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL
NOT INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL LICENSOR,
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 LICENSOR SHALL BE
ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE
POSSIBILITY.
8.6 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT,
LICENSEE, ITS DIRECTORS, OFFICERS, EMPLOYEES AND AFFILIATES MAKE NO
REPRESENTATIONS AND EXTEND NO GUARANTEES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES AND OR GUARANTEES OF CLINICAL TESTING,
COMMUNICABILITY AND MERCHANTABILITY OF PATENT RIGHTS. IN NO EVENT SHALL
LICENSEE, ITS 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 LICENSEE SHALL BE
ADVISED, SHALL HAVE OTHER REASONS TO KNOW, OR IN FACT SHALL KNOW OF THE
POSSIBILITY.
11
ARTICLE 9 - EXPORT CONTROLS
It is understood that LICENSOR is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE and LICENSEE shall not export
data of commodities to certain foreign countries without prior approval of such
agency. LICENSOR neither represents that a license shall not be required nor
that, if required, it shall be issued.
ARTICLE 10 - NON-USE OF NAMES
LICENSEE shall not use the names or trademarks of the Texas Tech
University, nor any adaptation thereof, nor the names of any of its employees,
in any advertising, promotional or sales literature without prior written
consent obtained from LICENSOR, or said employee, in each case, except that
LICENSEE may state that it is licensed by LICENSOR under one or more of the
patents and/or applications comprising the PATENT RIGHTS.
ARTICLE 11 - ASSIGNMENT
This Agreement is not assignable and any attempt to do so shall be void,
unless permitted in writing by LICENSOR, which permission will be unreasonably
withheld provided the economic interests of LICENSOR are protected.
ARTICLE 12 - DISPUTE RESOLUTION
12.1 Except for the right of either party to apply to a court of
competent jurisdiction for a temporary restraining order, a preliminary
injunction, or other equitable relief to preserve the status quo or prevent
irreparable harm, any and all claims, disputes or controversies arising under,
out of, or in connection with the Agreement, including any dispute relating to
patent validity or infringement, which the parties shall be unable to resolve
within sixty (60) days shall be mediated in good faith. The party raising such
dispute shall promptly advise the other party of such claim, dispute or
controversy in a writing which describes in rea-
12
sonable detail the nature of such dispute. By not later than five (5) business
days after the recipient has received such notice of dispute, each party shall
have selected for itself a representative who shall have the authority to bind
such party, and shall additionally have advised the other party in writing of
the name and title of such representative. By not later than ten (10) business
days after the date of such notice of dispute, the party against whom the
dispute shall be raised shall select a mediation firm in the - area and such
representatives shall schedule a date with such firm for a mediation hearing.
The parties shall enter into good faith mediation and shall share the costs
equally. If the representatives of the parties have not been able to resolve the
dispute within fifteen (15) business days after such mediation hearing, the
parties shall have the right to pursue any other remedies legally available to
resolve such dispute in either the Courts of the State of Texas or in the United
States District Court for the District of Texas, to whose jurisdiction for such
purposes LICENSOR and LICENSEE each hereby irrevocably consents and submits.
12.2 Notwithstanding the foregoing, nothing in this Article shall be
construed to waive any rights or timely performance of any obligations existing
under this Agreement.
ARTICLE 13 - TERMINATION
13.1 If LICENSEE shall cease to carry on its business, this Agreement
shall terminate upon notice by LICENSOR.
13.2 Should LICENSEE fail to make any payment whatsoever due and
payable to LICENSOR hereunder, LICENSOR shall have the right to terminate this
Agreement effective on ninety (90) days' notice, unless LICENSEE shall make all
such payments to LICENSOR within said ninety (90) day period. Upon the
expiration of the ninety (90) days period, if LICENSEE shall not have made all
such payments to LICENSOR, the rights, privileges and license granted hereunder
shall automatically terminate.
13.3 Upon any material breach or default of this Agreement by LICENSEE
(including, but not limited to, breach or default under Paragraph 3.1), other
than those occurrences set out in Paragraphs 12.1 hereinabove, which shall
always take precedence in that order over any material breach or default
referred to in this Paragraph 12.1, LICENSOR shall have the right to terminate
this Agreement and the rights, privileges and license granted hereunder
effective in ninety (90) days' notice to LICENSEE. Such termination shall become
automatically effective unless LICENSEE shall have cured any such material
breach or default prior to the expiration of the ninety (90) day period.
13
13.4 LICENSEE shall have the right to terminate this Agreement at any
time on a ninety (90) days notice to LICENSOR, and upon payment of all amounts
due LICENSOR through the effective date of the termination.
13.5 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination; and Articles 1, 7, 8, 9, 12.1.
No such articles shall survive any such termination. LICENSEE and any
sublicensee thereof may, however, after the effective date of such termination,
sell all LICENSED PRODUCTS, and complete LICENSED PRODUCTS in the process of
manufacture at the time of such termination and sell the same, provided that
LICENSEE shall make the payments to LICENSOR as required by Article 4 of this
Agreement and shall submit the reports required by Article 6 hereof.
13.6 The termination of this Agreement for any reason shall not affect
the validity of the sublicenses then in effect, in accordance with and subject
to their terms; provided however, that such sublicenses shall at all times
remain subject to the terms hereof.
13.7 This Agreement shall constitute the entire agreement of the
parties on the subject matter hereof superceding any prior oral or written
representations or agreements. No amendment or modification hereof shall be
valid or binding upon the parties unless made in writing and signed as
aforesaid.
ARTICLE 14 - PAYMENTS, NOTICES
AND OTHER COMMUNICATIONS
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 LICENSOR:
Director
Technology Transfer and Intellectual Property
Box 42007
Texas Tech University Systems
Xxxxxxx, XX 00000-0000
14
In the case of LICENSEE: CEO
HemoBioTech, Inc.
Suite 2006
00000 Xxxxxxx Xxxx
Xxxxxx, Xxxxx 00000
ARTICLE 15 - MISCELLANEOUS PROVISIONS
15.1 This Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the State of Texas, U.S.A., except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
15.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
15.3 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
15.4 LICENSEE agrees to make 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.
15.5 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition o this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
15
IN WITNESS WHEREOF, the parties have duly executed this Agreement the day
and year set forth below.
Texas Tech University Systems
By /s/ H. Xxxxxx Xxxxxxxxx
---------------------------------
Name H. Xxxxxx Xxxxxxxxx
----------------------------
Title Dir. Tech. Transfer & I.P.
----------------------------
Date Feb. 12, 2002
----------------------------
HemoBioTech, Inc.
By /s/ Xxxxxxx Xxxx
---------------------------------
Name: Xxxxxxx Xxxx
----------------------------
Title: Interim President
----------------------------
Date: January 27, 2002
----------------------------
16
APPENDIX A
----------
UNITED STATES PATENT RIGHTS
LICENSOR Case No. TTU D-0177
U.S. Patent No. 5,439,882
Issued 8-8-95
17
APPENDIX B
----------
1. FOREIGN PATENT APPLICATIONS AND PATENTS WITHIN THE PATENT RIGHTS AS OF
EFFECTIVE DATE:
For LICENSOR Xxxx Xx. X-0000:
Xxxxxxxxx 650439
565763
Austria 0507870
Belgium 0507870
Canada 2,103,680
2,072,081
Denmark 0507870
Europe 0586381
Finland 922937
933550
000000
Xxxxxx 0507870
0586381
Germany 0507870
0586381
Great Britain 0000000
Xxxxxx 3019775
Ireland 00000
Xxxxx 0000000
Xxxxx 2954347
18
Korea 168866
227453
Luxembourg 0507870
0586381
Netherlands 0507870
Norway 19922551=309799
308934
932857
Xxxxxxxx 00000 (xxxxxxx)
Xxxxx 91902885.2
Sweden 91902885.2
Switzerland 0507870
19
