PATENT LICENSE AGREEMENT
TABLE OF CONTENTS
PREAMBLE
ARTICLES:
I DEFINITION
I GRANT
III DUE DILIGENCE
IV ROYALTIES
V REPORTS AND RECORDS
VI PATENT PROSECUTION
VII INFRINGEMENT
VIII PRODUCT LIABILITY
IX EXPORT CONTROLS
X NON-USE OF NAMES
XI ASSIGNMENT
XII TERM AND TERMINATION
XIII PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
XIV ARBITRATION
XV MISCELLANEOUS PROVISIONS
This Agreement is made and entered into this 8th day of September, 1994,
(the Effective Date) by and between THE UNIVERSITY OF FLORIDA RESEARCH
FOUNDATION, INC., a not-for-profit corporation duly organized and existing under
the laws off the State of Florida; and having its principal of five at 000
Xxxxxxx Xxxx, Xxxxxxxxxxx, Xxxxxxx, 00000-0000, X.X.X. (hereinafter referred to
UFRFI), and APOLLO GENETICS, INC., a corporation duly organized under the laws
of the State of Delaware and having its principal office at 000 Xxxxx Xxxxxx,
Xxxxx 0000, Xxxxxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter referred to as
LICENSEE).
WITNESSETH
WHEREAS, UFRFI is the owner of certain "Patent Rights" (as later defined
herein) by assignment from the University of Florida (hereinafter referred to
as University) relating to UFRFI Case No. 1229 entitled "ESTROGEN
RESPONSIVENESS DIAGNOSTIC," invented by Xxxxx X. Xxxxxxxx, PhD, and invented
in-part by Xxxx Xxxxxx, filed in the United States Patent and Trademark
Office on September 8, 1994, and has the right to grant licenses under said
Patent Rights;
WHEREAS, UFRFI desires to have the Patent Rights utilized in the public
interest and is willing to grant a license thereunder, subject only to a
royalty-free, non-exclusive license to be granted to the United States
government, as required by law;
WHEREAS, LICENSEE has represented to UFRFI to induce UFRFI to enter into
this Agreement, that LICENSEE is familiar with the development, production,
manufacture, marketing and sale of products similar to the "Licensed Product(s)"
(as later defined herein) and/or the use of the "Licensed Process(es)" (as later
defined herein) and that it shall commit itself to a thorough, vigorous and
diligent program of exploiting the Patent Rights commercially so that public
utilization and royalty income to UFRFI shall result therefrom;
WHEREAS, LICENSEE desires to obtain a license from UFRFI under the Patent
Rights upon the terms and conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein the parties hereto agree as follows:
ARTICLE I - DEFINITIONS
For the purposes of this Agreement, the following words and phrases shall
have the following meaning:
1.1 "LICENSEE" shall mean all of the following:
(a) a related company of LICENSEE, the voting stock of which is
directly or indirectly at least fifty percent (50%) owned or
controlled by LICENSEE;
(b) an organization which directly or indirectly controls more than
fifty percent (50%) of the voting stock of LICENSEE;
(c) an organization, the majority ownership of which is directly or
indirectly common to the ownership of LICENSEE.
1.2 "Patent Rights" shall mean all of the following UFRFI intellectual
property:
(a) the United States and foreign patents and/or patent applications
listed in Exhibit A;
(b) United States and foreign patents issued from the applications
listed in Exhibit A and from divisionals and continuations of
these applications;
(c) U.S. continuation-in-part applications and foreign
continuation-in-part applications, and the resulting patents,
based on the U.S. and foreign applications listed in Exhibit A;
(d) claims of all foreign patent applications, and of the resulting
patents, which are directed to subject matter specifically
described in the United
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States patents and/or patent applications described in (a), (b),
or (c) above;
(e) any reissues of United States patents described in (a), (b), (c),
or (d) 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 Licensed Products is made, used or sold;
(b) is manufactured by using 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 in which such product or part thereof is
used or sold;
(c) is derived from Patent Rights, Know-How (as later defined
herein), and/or trade secrets related to or described in Patent
Rights;
(d) is sold, manufactured or used in any country under this
Agreement.
1.4 A "Licensed Process" shall mean:
(a) any process which is covered in whole or in part by an issued,
unexpired claim or a pending claim contained in the Patent
Rights;
(b) is derived from Patent Rights, Know-How, and/or trade secrets
related to or described in Patent Rights;
(c) is sold, manufactured or used in any country under this
Agreement.
1.5 "Net Sales" shall mean LICENSEE's xxxxxxxx, for Licensed Products and
Licensed Processes produced hereunder invoiced to independent third
parties less the sum of the following:
[ * ]
Licensed Products shall be considered "sold" when payment is received by
LICENSEE. [ * ]
* Confidential treatment has been requested for marked portion
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1.6 "Know-How" shall mean any and all technical data, information, or
knowledge which relate to the Licensed Product, the Licensed Process
or the manufacture, marketing, registration, purity, quality, potency,
safety, and efficacy of the Licensed Product or Licensed Process.
1.7 "University Inventions" shall mean individually and collectively all
inventions, improvements and/or discoveries patentable or
unpatentable, which are conceived and/or made by one or more employees
of University. For the purposes of this Paragraph, the "making" of
inventions shall be governed by U.S. laws of inventorship.
1.8 "Joint Inventions" shall mean individually and collectively all
inventions, improvements and/or discoveries patentable or
unpatentable, which are conceived and/or made jointly by personnel of
University (including faculty and employees) and of LICENSEE. For the
purposes of this Paragraph, the "making" of inventions shall be
governed by U.S. laws of inventorship.
1.9 "University Patents" shall mean collectively and individually any and
all United States and foreign patent applications and any and all
issued United States Letters Patents and foreign patents owned by
University which pertain to University Inventions under this
Agreement.
1.10 "Joint Patents" shall mean collectively and individually any and all
United States and foreign patent applications and any and all issued
United States Letter Patents and foreign patents jointly owned by
LICENSEE and University under this Agreement.
1.11 "Non-Affiliated Third Party Sublicensee" shall mean any sublicensee
company or organization not related to or controlled by LICENSEE.
1.12 "Sublicense Income" shall mean the net royalties (including advanced
royalties or "lump-sum" payments) actually received by LICENSEE from
Non Affiliated Third Party Sublicensee under the license herein
granted, after the deduction of all reasonable legal costs, documented
by credible written evidence provided to UFRFI, actually incurred by
LICENSEE in connection with the negotiation and procurement of the
pertinent sublicenses.
ARTICLE II- GRANT
2.1 UFRFI hereby grants to LICENSEE the right and license to make, have
made, use, lease and sell the Licensed Products, and to practice the
Licensed Processes throughout the world in any and all fields of use
to the end of the term for which the Patent Rights are granted unless
sooner terminated according to the terms
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hereof, subject to the non-exclusive licensed granted to the United
States Government.
2.2 In order to establish exclusivity for LICENSEE, UFRFI hereby agrees
that it shall not grant any other license to make, have made, use,
lease and sell Licensed Products or to utilize Licensed Processes
throughout the world in any and all fields of use during the period of
time commencing with the Effective Date of this Agreement and
terminating with the expiration of this Agreement.
2.3 UFRFI reserves the right to practice under the Patent Rights for its
own noncommercial research purposes.
2.4 LICENSEE shall have the right to enter into sublicensing agreements
for the rights, privileges and licenses granted hereunder. However,
Licensee shall notify UFRFI in writing of the initiation of license
negotiations with all potential Non-Affiliated Third Party
Sublicensees.
2.5 LICENSEE hereby agrees that every Non-Affiliated Third Party
Sublicensee agreement to which it shall be a party and which shall
relate to the rights, privileges and license granted hereunder shall
contain a statement setting forth the date upon which LICENSEE's
exclusive rights, privileges and license hereunder shall terminate.
LICENSEE agrees that any sublicense granted hereunder shall provide
that the obligations to UFRFI under Article I (Definitions), II
(Grants), V (Reports and Records), VII (Infringement), VIII (Product
Liability), IX (Export Controls), X (Non-Use of Names), XII (Term and
Termination), XIV (Arbitration), and XV (Miscellaneous Provisions) of
this Agreement shall be binding on upon the sublicensee as if it were
a party to this Agreement. LICENSEE further agrees to attach copies of
such Articles to each sublicense agreement.
2.6 LICENSEE agrees to forward to UFRFI a copy of any and all
Non-Affiliated Third Party Sublicensee agreements within thirty (30)
days of the execution of such sublicensee agreements and further
agrees to forward to UFRFI annually a copy of such reports received by
LICENSEE from its sublicensees during the preceding twelve (12) month
period under the sublicenses as shall be pertinent to a royalty
accounting under said sublicense agreements.
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 UFRFI.
2.8 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 herein; provided, however, that
LICENSEE shall have the exclusive right to negotiate with any
Non-Affiliated Third Party Sublicensee in connection with Know-How
resulting from any Licensed Product sublicensed by LICENSEE hereunder.
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2.10 Any patent applications made or patents issued from Joint Inventions
shall be filed in University's and LICENSEE's names, and the portion
thereof not made by University personnel shall belong to LICENSEE and
shall not be subject to the provisions of this Agreement. In
determining royalty rates in licenses to such patent applications or
patents resulting from the joint effort of LICENSEE and University,
there shall be taken into consideration the relative contributions of
the respective joint inventors of the invention.
2.11 Any controversy, dispute or claim arising out of, or relating to, any
provisions of this Paragraph 2 which cannot otherwise be resolved by
good faith negotiations between the parties shall be resolved by
arbitration in accordance with the provisions of Article XIV of this
Agreement.
2.12 LICENSEE agrees that for Licensed Products covered by Patent Rights
that are subject to the non-exclusive royalty-free license to the
United States government, such Licensed Products will be manufactured
substantially in the United States, in accordance with applicable
federal law.
2.13 LICENSEE further agrees that it shall abide by all rights and
limitations of U.S. Code Title 35, Chapter 38, and implementing
regulations thereof, for all patent applications and patents invented
in whole or in part with federal money.
ARTICLE III - DUE DILIGENCE
3.1 LICENSEE shall use diligent efforts to bring one or more Licensed
Products or Licensed Processes to market through a thorough, vigorous
and diligent program for exploitation of the Patent Rights to attain
maximum commercialization of Licensed Products and Licensed Processes.
3.2 LICENSEE's failure to perform in accordance with Paragraph 3.1 above
shall be grounds for UFRFI to terminate this Agreement pursuant to
Paragraph 12.4 hereof.
ARTICLE IV - ROYALTIES
4.1 For the rights, privileges and license granted hereunder, LICENSEE
shall pay royalties to UFRFI in the manner hereinafter provided to the
end of the term of the Patent Rights or until this Agreement shall be
terminated as hereinafter provided:
(a) An annual License Maintenance Fee payable commencing on January
1, 1999 and on January 1 of each year thereafter; provided,
however, that such fee shall be waived for each year in which
LICENSEE milestones for such year have been achieved. The
LICENSEE milestones shall be the subject of mutual agreement and
are attached hereto and incorporated herein by reference as
Exhibit B. The first License Maintenance Fee shall be the sum of
[ * ] Dollars ($[ * ]), and each successive License
Maintenance Fee payable hereunder shall be increased by [ *
* Confidential treatment has been requested for marked portion
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* ] Dollars ($[ * ]) until the License Maintenance Fee is
[ * ] Dollars ($[ * ]). Thereafter, the License
Maintenance Fee shall be [ * ] Dollars ($[ * ]) per
year during the remainder of the term of this Agreement. The
License Maintenance Fee for a given year shall be creditable
against any Running Royalties subsequently due during said year
under subparagraph 4.1(b) below.
(b) Running Royalty in an amount equal to [ * ] ([ * ]%) of the Net
Sales of the Licensed Products of Licensed Processes used,
leased or sold by or for LICENSEE.
4.2 In the event LICENSEE grants any sublicenses to Non-Affiliated Third
Party Sublicensees during the term of this Agreement, then for each
such sublicense, LICENSEE shall pay UFRFI an additional royalty at the
rate of [ * ] percent ([ * ]%) of the Sublicense Income collected
by LICENSEE under such sublicense.
4.3 No multiple royalties shall be payable because any Licensed Product,
its manufacture, use, lease or sale are or shall be covered by more
than one Patent Rights patent application or Patent Rights patent
licensed under this Agreement.
4.4 Royalty payments shall be paid in United States dollars in
Gainesville, Florida or at such other place as UFRFI may reasonably
designate consistent with the laws and regulations controlling in any
foreign country. If any currency conversion shall be required in
connection with the payment of royalties hereunder, such conversion
shall be made by using the exchange rate prevailing at the Chase
Manhattan Bank (N.A.) on the last business day of the calendar
quarterly reporting period to which such royalty payments relate.
4.5 In the event the royalties set forth herein are higher than the
maximum royalties permitted by the law or regulations of a particular
country, the royalty payable for sales in such country shall equal to
the maximum permitted royalty under such law or regulations. Notice of
said event shall be provided to UFRFI. An authorized representative of
LICENSEE shall notify UFRFI, in writing, within thirty (30) days of
discovering that such royalties are approaching or have reached the
maximum amount, and shall provide UFRFI with written documentation
regarding the laws or regulations establishing such maximum.
4.6 In the event that any taxes, withholding or otherwise, are levied by
any taxing authority in connection with accrual or payment of any
royalties payable by LICENSEE under this Agreement, and LICENSEE
determines in good faith that it must pay such taxes, LICENSEE shall
have the right to pay such taxes to the local tax authorities on
behalf of UFRFI and payment of the net amount due after reduction by
the amount of such taxes, shall fully satisfy LICENSEE's royalty
obligations under this Agreement. LICENSEE shall provide UFRFI with
appropriate receipts or other documentation supporting such payment.
LICENSEE
* Confidential treatment has been requested for marked portion
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shall inform UFRFI in writing, within thirty (30) days of notification
that taxes will or have been levied by a taxing authority.
ARTICLE V - REPORTS AND RECORDS
5.1 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 UFRFI 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 to inspection on behalf of UFRFI upon reasonable notice during
reasonable business hours to the extent necessary for the purpose of
verifying LICENSEE's royalty statement or compliance in other respects
with this Agreement. Such inspection shall be made not more than often
than once each calendar year at the expense of UFRFI by a Certified
Public Accountant appointed by UFRFI and to whom LICENSEE has no
reasonable objection. LICENSEE shall not be required to retain such
records for more than five (5) years after the close of any calendar
half-year.
5.2 LICENSEE, within forty-five (45) days after June 30 and December 31,
of each year, shall deliver to UFRFI true and accurate reports, giving
such particulars of the business conducted by LICENSEE and its
sublicensees during the preceding six-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.
(b) total xxxxxxxx for Licensed Products sold.
(c) accounting for all Licensed Processes used or sold.
(d) deductions applicable as provided in Paragraphs 1.5 and 1.13.
(e) total royalty due.
(f) names and addresses of all sublicensees of LICENSEE.
(g) A progress report on patent filings in each country, including
the serial number, name of patent application, name of inventors
and status of each patent application covering Licensed Products
or Licensed Processes.
5.3 With each such report submitted, LICENSEE shall pay to UFRFI the
royalties due and payable under this Agreement. If no royalties shall
be due, LICENSEE shall so report.
5.4 The royalty payments, license fees, and reimbursement for
patent-related expenses set forth in this Agreement shall, if overdue,
bear interest until payment at the
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monthly rate of one percent (1%). The payment of such interest shall
not foreclose UFRFI from exercising any other rights it may have as a
consequence of the lateness of any payment.
5.5 On or before the sixtieth (60th) day following the close of LICENSEE's
fiscal year, LICENSEE shall provide UFRFI with an audited financial
statement for the preceding fiscal year.
ARTICLE VI - PATENT PROSECUTION
6.1 LICENSEE shall, in the name of the University of Florida, apply for,
seek issuance of, and maintain during the term of this Agreement the
Patent Rights in the United States and in foreign countries. The
prosecution, filing and maintenance of all Patent Rights patents and
applications shall be the primary responsibility of LICENSEE. LICENSEE
shall seek patent extension for patents licensed under the Patent
Rights in the United States and in such foreign countries as may be
designated by LICENSEE, under such applicable laws and regulations
throughout such countries, where such patent extension rights are
available currently or are available in the future. LICENSEE shall
keep University advised as to all developments with respect to the
Patent Rights and shall supply to University copies of all
correspondence and papers received in connection therewith within ten
(10) business days of receipt or filing thereof. As required by law,
LICENSEE must provide all correspondence to and advise UFRFI in a
timely manner in order to permit UFRFI to comment on all actions
before they are taken by LICENSEE's patent counsel. All final
decisions with respect to prosecution of the Patent Rights are
reserved to UFRFI, as required by law.
6.2 Payment of all fees and costs relating to the filing, prosecution, and
maintenance of the Patent Rights shall be the responsibility of
LICENSEE.
6.3 If LICENSEE directs that a patent application be filed on University
Inventions, LICENSEE shall promptly prepare, file and prosecute a
patent application or applications in the University's name, and/or
any pertinent continuation, continuation-in-part and/or reissue
application(s) thereof in the United States directed to such
University Inventions. University shall thereafter assign all such
University Inventions to UFRFI. LICENSEE shall bear all expenses
incurred in connection with such preparation, filing and prosecution
of U.S. and foreign patent application(s) and patents directed to
University Inventions. UFRFI shall cooperate with LICENSEE to assure
that such application or applications, and any such continuation,
continuation-in-part and/or reissue application(s) thereof will cover,
to the best of UFRFI's knowledge, all items of commercial interest and
importance. LICENSEE shall keep UFRFI advised as to all developments
with respect to such application or applications, and/or continuation,
continuation-in-part and reissue application(s) and shall supply to
UFRFI copies of all papers received within ten (10) business days of
receipt and in sufficient time for UFRFI to comment thereon. UFRFI
shall have the right to advise and
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cooperate with LICENSEE in such prosecution, and such advice shall not
be rejected unreasonably. All final decisions with respect to
prosecution of said application(s), and said continuation,
continuation-in-part and reissue applications, and selection of patent
counsel are reserved to UFRFI.
6.4 If LICENSEE elects not to exercise its option(s) pursuant to this
Agreement, or decides to discontinue the financial support of the
prosecution or maintenance of the protection of the Patent Rights in
the United States and in foreign countries, or is grossly negligent in
its prosecution or maintenance of the protection thereof, UFRFI shall
be free to file or continue prosecution or maintain any such
application(s), and to maintain any protection issuing thereon in the
U.S. and in any foreign country at UFRFI's sole expense.
ARTICLE VII - INFRINGEMENT
7.1 LICENSEE shall inform UFRFI 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, UFRFI shall have the right, but
shall not be obligated, to prosecute at its own expense any such
infringements of Patent Rights. If UFRFI prosecutes any such
infringement, LICENSEE agrees that UFRFI may include LICENSEE as a
co-plaintiff in any such suit, without expense to LICENSEE. The total
cost of any such infringement action commenced or defended solely by
UFRFI shall be borne by UFRFI and UFRFI shall keep any recovery or
damages for past infringement derived therefrom.
7.3 If within three (3) months after having been notified of any alleged
infringement or such shorter time proscribed by law, UFRFI 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 UFRFI 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 UFRFI as party plaintiff; provided, however,
that such right to bring 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 UFRFI, which
consent shall not unreasonably be withheld; provided, however, that
LICENSEE shall indemnify UFRFI against any order for costs that may be
made against UFRFI in such proceedings, in accordance with this
Paragraph.
7.4 In the event that LICENSEE shall undertake the enforcement and/or
defense of the Patent Rights by litigation, LICENSEE may withhold up
to fifty percent (50%) of the royalties otherwise thereafter due UFRFI
hereunder and apply the same toward reimbursement of its expenses,
including reasonable attorneys' fees, in connection therewith. Said
withholding of royalties shall begin no earlier than
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the date LICENSEE first receives a xxxx for professional services or
expenses associated with the enforcement and/or defense of the Patent
Rights. Any recovery of damages by LICENSEE for any such suit shall be
applied first in satisfaction of any unreimbursed expenses and legal
fees of LICENSEE relating to the suit, and next toward reimbursement
of UFRFI for any royalties past due or withheld with interest and
applied pursuant to this Article VII.
7.5 In the event that a declaratory judgment action alleging invalidity or
noninfringement of any of the Patent Rights shall be brought against
LICENSEE, UFRFI, 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.
7.6 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.
ARTICLE VIII - PRODUCT LIABILITY
8.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold UFRFI and the University, their
trustees, officers, employees and affiliates, harmless against all
claims and expenses, including legal expenses and reasonable
attorneys' fees whether arising from a third party claim or resulting
from UFRFI's enforcing this indemnification clause against LICENSEE,
or arising out of the death of or injury to any person or persons or
out of any damage to property and against any other claim, proceeding,
demand, expense and liability of any kind whatsoever 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. LICENSEE's
indemnification under this Paragraph 8.2 shall not apply to any
liability, damage, loss or expense to the extent that it is
attributable to the intentional wrongdoing or intentional misconduct
of UFRFI and the University, their trustees, officers, employees and
affiliates.
8.2 In the event any such action is commenced or claim made or threatened
against UFRFI or other indemnitees whom LICENSEE is obligated to
indemnify or hold harmless, UFRFI or the other indemnitees shall
promptly notify LICENSEE of such event. LICENSEE shall have the right
to participate in the defense of that part of any such claim or action
commenced or made against UFRFI (or other indemnitees) which relates
to LICENSEE's indemnification, and LICENSEE shall not be liable to
UFRFI or other indemnitees in account of any settlement of any such
claim or litigation affected without LICENSEE's consent, which consent
shall not be unreasonably withheld or delayed.
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8.3 LICENSEE shall obtain and carry in full force and effect liability
insurance which shall protect LICENSEE and UFRFI in regard to events
covered by Paragraph 8.1 above.
8.4 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, UFRFI MAKES
NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND VALIDITY OF
PATENT RIGHTS CLAIMS, ISSUED OR PENDING.
ARTICLE IX - EXPORT CONTROLS
LICENSEE hereby agrees that it shall not sell, transfer, export or reexport
any Licensed Products or Licensed Processes or related information in any form,
or any direct products of such information, except in compliance with all
applicable laws, including the export laws of any U.S. government agency and any
regulations thereunder, and will not sell, transfer, export or reexport any such
Licensed Products or Licensed Processes or information to any persons or any
entities with regard to which there exist grounds to suspect or believe that
they are violating such laws. LICENSEE shall be solely responsible for obtaining
all licenses, permits or authorizations required from the U.S. and any other
government for any such export or reexport. To the extent not inconsistent with
this Agreement, UFRFI agrees to provide LICENSEE with such assistance as it may
reasonably request in obtaining such licenses, permits or authorization.
ARTICLE X - NON-USE OF NAMES
LICENSEE shall not use the names of the University of Florida or University
of Florida Research Foundation, Inc. nor of any of either institution's
employees, nor any q M adaptation thereof, in any advertising, promotional or
sales literature without prior written consent obtained from UFRFI in each case,
except that LICENSEE may state that it is licensed by UFRFI under one or more of
the patents and/or applications comprising the Patent Rights.
ARTICLE XI- ASSIGNMENT
This Agreement is not assignable and any attempt to do so shall be void
except in the case of a transfer of substantially all of the assets of one of
the parties hereto. This Agreement shall bind the parties, their successors
resulting from merger, and their permitted assigns.
ARTICLE XII - TERM AND TERMINATION
12.1 Unless earlier terminated as hereinafter provided, this Agreement
shall remain in full force and effect until the last to expire of any
patent claim included in the Licensed Products.
12.2 If LICENSEE shall cease to carry on its business, this Agreement shall
terminate upon notice by UFRFI.
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12.3 Should LICENSEE fail to pay UFRFI royalties due and payable hereunder,
UFRFI shall have the right to terminate this Agreement on thirty (30)
days' notice, unless LICENSEE shall pay UFRFI within the thirty (30)
day period, all such royalties and interest due and payable. Upon the
expiration of the thirty (30) days period, if LICENSEE shall not have
paid all such royalties and interest due and payable, the rights,
privileges and license granted hereunder shall terminate.
12.4 Upon any material breach or default of this Agreement by LICENSEE,
other than those occurrences set out in Paragraphs 12.2 and 12.3
hereinabove, which shall always take precedence in that order over any
material breach or default referred to in this Paragraph 12.4, UFRFI
shall have the right to terminate this Agreement and the rights,
privileges and license granted hereunder by ninety (90) days' notice
to LICENSEE. Such termination shall become effective unless LICENSEE
shall have cured any such breach or default prior to the expiration of
the ninety (90) day period. If UFRFI terminates this Agreement
pursuant to the terms hereof, the Research Agreement shall
concurrently terminate on the effective date of termination of this
Agreement, and the Research Agreement shall be terminated in
accordance with Paragraph 4.2 and Article X of the Research-Agreement.
12.5 LICENSEE shall have the right to terminate this Agreement at any time
on six (6) months' written notice to UFRFI, and upon payment of all
amounts due UFRFI through the effective date of the termination.
12.6 UFRFI may terminate this Agreement upon the occurrence of the third
separate default by LICENSEE within any consecutive three (3) year
period for failure to pay royalties when due.
12.7 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. 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 pay to UFRFI the
royalties thereon as required by Article IV of this Agreement and
shall submit the reports required by Article V hereof on the sales of
Licensed Products.
12.8 Upon termination of this Agreement for any reason, any sublicensee not
then in default shall have the right to seek a license from UFRFI.
12.9 BANKRUPTCY.
(a) Notice of Assumption of Rejection.
(i) In the event that either party files or has filed against it
a petition under the Federal Bankruptcy Code (11 U.S.C.
Sections 1, et seq.) (the "Bankruptcy Code"), is adjudged
bankrupt, or files or has filed
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against it a petition for reorganization or arrangement
under any law relating to bankruptcy or similar laws for the
protection of debtors, whether under the laws of the United
States and its political subdivisions or otherwise, such
party shall (1) notify the other party thereof within ten
(10) days after the filing of such petition or such
adjudication, and (2), within thirty (30) days after the
filing of such petition, shall notify the other party of the
party's assumption or rejection of this Agreement, and shall
file a petition with the appropriate court for approval of
all other action as may be necessary to obtain the approval
of such petition and of such assumption of rejection.
(ii) If such party does not: (1) within thirty (30) days after
the occurrence of any of the foregoing events, notify the
other party of its assumption or rejection of this Agreement
or file the petition, or (2) thereafter diligently take all
other action necessary for the approval of the foregoing
petition or of such assumption or rejection, such party
shall be deemed to have rejected this Agreement. Each party
acknowledges that, for purposes of Section 365 of the
Bankruptcy Code and similar provisions of any other or
future similar laws relating to any party's assumption or
rejection of any executory contract, a period of thirty (30)
days after the date of any filing or adjudication described
above shall constitute a reasonable time in which such party
shall assume or reject this Agreement and a party shall be
deemed to have not diligently taken all action necessary for
the approval of the foregoing petition or of such assumption
or rejection if such petition, assumption or rejection is
not approved by the appropriate court within sixty (60) days
after the filing of the petition for such assumption or
rejection.
(b) Conditions to Assumption.
No election by any party, or any successor-in-interest to such
party, to assume this Agreement as contemplated by paragraph (a)
above shall be effective unless each of the following conditions,
each of which each party acknowledges is commercially reasonable
in the context of a bankruptcy or similar proceeding, has been
satisfied by such party and each of the other parties has
acknowledged such satisfaction in writing:
(1) CURE. Such party has cured, or has provided the other party
adequate assurances that:
(A) Monetary Defaults. Within ten (10) days from the date
of such assumption such party will cure all monetary
defaults under this Agreement; and
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(B) Non-Monetary Defaults. Within thirty (30) days from the
date of such assumption such party will cure all
non-monetary defaults under this Agreement.
(2) PECUNIARY LOSS. Such party has compensated or has provided
to the other party adequate assurances that within ten (10)
days from the date of assumption the other party will be
compensated for any pecuniary loss incurred by the party
arising from any default of such party under this Agreement
prior to the assumption.
(3) FUTURE PERFORMANCE. Such party has provided the other party
with adequate assurances of the future performance of such
party's obligations under this Agreement.
(c) Termination.
This Agreement shall terminate upon the rejection of this
Agreement as contemplated by this Paragraph by any party or
successor-in-interest thereto.
(d) No Transfer.
Neither any party's interest in this Agreement nor any portion
thereof shall pass to any trustee, receiver, or assignee for the
benefit of creditors, or any other person or entity or otherwise
by operation of law under the Bankruptcy Code or the insolvency
laws of any state having jurisdiction of the person or property
of such party unless the other party shall consent to such
transfer in writing.
ARTICLE XIII - 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 UFRFI:
President
University of Florida Research Foundation, Inc.
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
With copy to:
15
Director
Office of Patent, Copyright and Technology
Licensing
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
16
All payments to:
Director
Office of Patent, Copyright and Technology
Licensing
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
PLEASE MAKE ALL CHECKS PAYABLE TO:
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
In the case of LICENSEE:
President
Apollo Genetics, Inc.
000 Xxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
With copy to:
Xxxxxxxx & Sunstein
00 Xxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
ARTICLE XIV - ARBITRATION
14.1 Any controversy or claim arising out of, or relating to, any
provisions of this Agreement or the breach thereof which cannot
otherwise be resolved by good faith negotiations between the parties
shall be resolved by final and binding arbitration under the rules of
the American Arbitration Association, or the Patent Arbitration Rules
if applicable, then obtaining.
14.2 Notwithstanding the foregoing, nothing in this Article XIV shall be
construed to waive any rights or timely performance of any obligations
existing under this Agreement.
ARTICLE XV - MISCELLANEOUS PROVISIONS
15.1 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 of
modification except by the execution of a written instrument
subscribed to by the parties hereto.
15.2 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
17
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.
15.3 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.
15.4 The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of 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.
15.5 The parties adopt and incorporate Article VII, the confidentiality
section of the attached Research Agreement, as though incorporated
herein.
15.6 For the purpose of this Agreement and all services to be provided
hereunder, both parties shall be, and shall be deemed to be,
independent contractors and not agents or employees of the other.
Neither party shall have authority to make any statements,
representations or commitments of any kind, or to take any action,
that will be binding on the other party.
15.7 This Agreement may be signed in counterparts which collectively shall
constitute a single agreement.
15.8 Neither party shall be in breach hereof by reason of its delay in the
performance of or failure to perform any of its obligations hereunder,
if that delay or failure is caused by strikes, acts of God or the
public enemy, riots, incendiaries, interference by civil or military
authorities, compliance with governmental priorities for materials, or
any fault beyond its control or without its fault or negligence.
15.9 The parties each, at any time or from time to time, shall execute and
deliver or cause to be delivered such further assurances, instruments
or documents as may be reasonably necessary to fulfill the terms and
conditions of this Agreement.
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IN WITNESS WHEREOF, the parties have hereunto set their hands and seals and
duly executed this Agreement the day and year set forth below.
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
By /s/ Xxxxx X. Xxxxxxxx
---------------------------
Name Xxxxx X. Xxxxxxxx, Ph.D
-------------------------
Title President
------------------------
Date 9/14/94
------------------------
APOLLO GENETICS, INC.
By /s/ Xxxxxxxxx Xxxxxx
---------------------------
Name Xxxxxxxxx Xxxxxx. PhD
-------------------------
Title President
------------------------
Date 9/8/94
-------------------------
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Exhibit A
UNITED STATES AND FOREIGN PATENTS AND/OR APPLICATIONS
[ * ]
* Confidential treatment has been requested for marked portion
20
Exhibit B
LICENSEE MILESTONES
Year
[ * ]
* Confidential treatment has been requested for marked portion
21
