Option Agreement
EXHIBIT
10.6
This
Option Agreement (the “AGREEMENT’) is made between the BOARD OF REGENTS
(“BOARD”), of the UNIVERSITY OF TEXAS SYSTEM (“SYSTEM”), an agency of the State
of Texas, whose address is 000 Xxxx 0xx Xxxxxx, Xxxxxx, Xxxxx 00000, Centro
de
Investigacion en Materiales Avanzados, S.C. (“CIMAV”), whose address is Xxxxxx
xx Xxxxxxxxx 000, 00000 Xxxxxxxxx, Xxxx. Mexico and Refinery Science Corp.,
previously known as Hydroconversion Inc (“OPTIONEE”), a Texas corporation, with
its principal place of business at 000 X. Xxxxxxxxxx, Xx Xxxx, Xxxxx
00000
RECITALS
A. BOARD
and
CIMAV (collectively referred to herein as “LICENSOR”) owns certain PATENT RIGHTS
and TECHNOLOGY RIGHTS which were developed at the University of Texas at El
Paso
(“UNIVERSITY”), a component institution of SYSTEM and at CIMAV.
B. LICENSOR
desires to have PATENT RIGHTS and TECHNOLOGY RIGHTS developed and used for
the
benefit of OPTIONEE, the BOARD, CIMAV, INVENTORS, and the public as outlined
in
BOARD’S Intellectual Property Policy.
C. OPTIONEE
wishes to obtain an option to negotiate and acquire a license from LICENSOR
to
practice PATENT RIGHTS and TECHNOLOGY RIGHTS and sell and distribute products
derived therefrom.
D. LICENSOR
on March 1, 2002 executed a Royalty Sharing Agreement whereby CIMAV agreed
to
have UNIVERSITY negotiate and manage a License Agreement for the PATENT RIGHTS
defined below. For clarification this means all payments, amendments to or
notifications required under this Agreement will be directed to and managed
by
UNIVERSITY.
NOW
THEREFORE, in consideration of the mutual covenants and premises herein
contained, the parties agree as follows:
1. EFFECTIVE
DATE AND OPTION PERIOD
This
AGREEMENT is effective as of September 15, 2004 (“EFFECTIVE DATE’) for a period
of 24 months (the “OPTION PERIOD”).
2. DEFINITIONS
2.1 PATENT
RIGHTS mean LICENSOR ‘S rights in information or discoveries covered by U.S.
Patent# 10/819,893, filed April 7, 2004 (U.T. Component file reference number
UTSE:092US), all corresponding foreign patent applications; and all
re-examinations or extensions thereof.
2.2 TECHNOLOGY
RIGHTS mean LICENSOR ‘S rights in any technical information, know-how, process,
procedure, composition, method, formula, protocol, technique or data developed
by Xx. Xxxxxxx Xxxxxxxxx, Xx. Xxxxxxx Xxxxxx, and Xx. Xxxxxx Xxxxxxx
(“INVENTORS”) at UNIVERSITY and CIMAV prior to the EFFECTIVE DATE relating to
“Molybdenum Sulfide/Carbide Catalysts” which are not covered by PATENT RIGHTS,
but which are necessary for practicing the invention covered by PATENT
RIGHTS.
2.3 LICENSED
PRODUCT means any product which cannot be developed, manufactured, used or
sold
without utilizing PATENT RIGHTS or TECHNOLOGY RIGHTS.
3. WARRANTIES
3.1 Except
for the rights, if any of the Government of the United States, as set forth
below, BOARD hereby represents that it has the full right and power to enter
into this AGREEMENT and to grant the exclusive option set forth in this
AGREEMENT. LICENSOR makes no other warranties concerning its rights covered
by
this AGREEMENT. LICENSOR makes no expressed or implied warranty of
merchantability or fitness for a particular purpose as to any LICENSED PRODUCT.
LICENSOR makes no warranty or representation as to the validity or scope of
the
PATENT RIGHTS or that any LICENSED PRODUCT will be free from an infringement
of
patents of third parties, or that no third parties are in any way infringing
PATENT RIGHTS
3.2 OPTIONEE
understands that the PATENT RIGHTS and TECHNOLOGY RIGHTS may have been developed
under a funding agreement with the Government of the United States of America
and, if so, that the Government may have certain rights relative thereto. This
AGREEMENT is explicitly made subject to the Government’s rights under any such
agreement and any applicable law or regulation. To the extent that there is
a
conflict between any such agreement, applicable law or regulation and this
AGREEMENT, the terms of such Government agreement, applicable law or regulation
will prevail.
2
4. OPTION
FOR EXCLUSIVE LICENSE
4.1 LICENSOR
hereby grants OPTIONEE an exclusive option to acquire an exclusive,
worldwide license to practice PATENT RIGHTS and TECHNOLOGY RIGHTS
under terms set forth in the License Agreement attached as Attachment
A.
4.2 OPTIONEE
may exercise its option at any time during the OPTION PERIOD by delivering
to
UNIVERSITY three executed copies of the License Agreement in Attachment
A.
5. TERMINATION
5.1 OPTIONEE
may terminate this AGREEMENT by giving 30 days written notice to
UNIVERSITY.
5.2 UNIVERSITY
may terminate this AGREEMENT upon 30 days written notice to OPTIONEE if OPTIONEE
breaches or defaults on its payments obligations under Article 6 herein or
on
its payment obligations (including, but not limited to, payment of patent
expenses) as set forth in any related agreement between OPTIONEE and UNIVERSITY
covering PATENT RIGHTS and/or TECHNOLOGY RIGHTS, unless, before the end of
the
30 day period, OPTIONEE has cured the breach or default to the satisfaction
of
UNIVERSITY and so notifies UNIVERSITY in writing, stating the manner of the
cure.
6. PAYMENT
6.1 In
consideration for the option granted herein, OPTIONEE agrees to pay BOARD
$2,500 within 30 days after the EFFECTIVE DATE.
6.2 All
payments under this AGREEMENT are to be paid in U.S. dollars, checks payable
to
the order of UNIVERSITY and mailed to the address in Section 8.6.
7.
CONFIDENTIAL
INFORMATION
7.1 As
soon
as possible following the execution of this AGREEMENT, UNIVERSITY, through
INVENTOR, will disclose all relevant Confidential Information as defined in
Section 7.2 below, other information, and data relating to PATENT RIGHTS and
TECHNOLOGY RIGHTS, to enable OPTIONEE to evaluate the potential commercial
significance of the PATENT RIGHTS and TECHNOLOGY RIGHTS
7.2 In
addition to the initial disclosure described in Section 7.1, the parties may
disclose other Confidential Information to each other, from time to time, in
connection with work contemplated under this AGREEMENT. All such information
whether disclosed initially or during the OPTION PERIOD will be referred to
as
“Confidential Information.” Each party will use reasonable efforts to prevent
the disclosure of any of the other party’s Confidential Information to third
parties for a period of three (3) years from receipt thereof, provided that
the
recipient party’s obligation will not apply to information that:
3
a. is
not
disclosed in writing or reduced to writing and so marked with an appropriate
confidentiality legend within thirty (30) days of disclosure;
b. is
already in the recipient party’s possession at the time of disclosure thereof
and not obtained directly or indirectly from the other, as proven by the
receiving party’s written records;
c. is
or
later becomes published through no fault of the recipient party;
d. is
lawfully acquired from a third party having no obligations of confidentiality
to
the disclosing party;
e. is
independently developed by the recipient party; or
f.
is
required by law or regulation to be disclosed.
7.3 In
the
event that information is required to be disclosed under Section 7.2(f) above,
the party required to make disclosure will notify the other to allow that party
to assert whatever exclusions or exemptions may be available to it under such
law or regulation.
8. GENERAL
PROVISIONS
8.1 This
AGREEMENT may not be assigned by OPTIONEE without the prior written consent
of
LICENSOR, which consent may not unreasonably be withheld. However, OPTIONEE
may
assign any and all of the rights granted to it pursuant to this AGREEMENT to
a
successor of all or substantially all of its business to which this AGREEMENT
relates without the approval from or prior notice to LICENSOR through
UNIVERSITY.
8.2 This
AGREEMENT constitutes the entire and only agreement between the parties relating
to an option to acquire a license, and all prior negotiations, representations,
agreements and understandings are superseded hereby. No agreements altering
or
supplementing the terms hereof may be made except by written mutual agreement
by
the parties.
8.3 The
relationship between LICENSOR and OPTIONEE is that of independent contractors
LICENSOR and OPTIONEE are not joint ventures, partners, principal and agent,
master and servant, employer or employee, and have no other relationship other
than independent contracting parties. UNIVERSITY will have no power to bind
or
obligate OPTIONEE in any manner, other than as is expressly set forth in this
AGREEMENT. Likewise OPTIONEE will have no power to bind or obligate LICENSOR
in
any manner, other than as is expressly set forth in this AGREEMENT,
4
8.4
If
any prevision of this AGREEMENT is ultimately held to be invalid, illegal or
unenforceable, the validity, legality and enforceability of the remaining
provisions will not in any way be affected or impaired thereby.
8.5
Any
delay in enforcing a party’s right under this AGREEMENT or any waiver as to a
particular default or other matter will not constitute a waiver of such party’s
rights to the future enforcement of its rights under this AGREEMENT, except
only
as to an express written and signed waiver to a specific matter for a specific
period of time.
8.6
Any
notice required by this AGREEMENT will be given by personal delivery (including
delivery by reputable messenger services such as Federal Express) or by prepaid,
first class, certified mail, return receipt requested, addressed
to:
The
University of Texas at El Paso
Office
of
Technology Transfer
Attention:
Technology Transfer Manager
Xxxxxx
Xxxx, Room 404
500W.
University
Xx
Xxxx,
Xxxxx 00000
Ph: 915/000-0000
Fax:
915/000-0000
or
in the
case of OPTIONEE to:
Attention:
Xxxxx Xxxxxxx
Xxxxxx
Xxxx, Room 410
500W.
University
Xx
Xxxx,
Xxxxx 00000
Ph:
000-000-0000
or
at
such other addresses as may be given from time to time in accordance with the
terms of this notice provision.
8.7
This
AGREEMENT will be governed by, construed, and enforced in accordance with the
internal laws of the State of Texas.
8.8
This
Agreement may be signed in one or more counterparts (including faxed copies),
each of which shall be deemed one and the same original.
5
IN
WITNESS WHEREOF,
the
parties have caused this AGREEMENT
to be
executed by their duly authorized representatives.
|
BOARD
OF REGENTS OF THE
UNIVERSITY
OF TEXAS SYSTEM
|
REFINERY SCIENCE CORP. | |||
| By | By | |||
|
Xxxxxxx Xxxxxxxx Villa, Vice President for Finance and Administration |
David, Rendina, CEO |
|||
| Date: ___________________________ | ||||
Date:
____________________________
|
CENTRO
DE INVESTIGATCION
EN
MATERIALES AVANZADOS
|
||||
| By | ||||
|
Xx.
Xxxxx Xxxxxxxx-Xxxxxxxxx
General
Director
|
||||
Date:
____________________________
|
Approved
as to Content:
|
||||
| By | ||||
|
Xx.
Xxxxxxx Xxxxxxxx
Vice
Xxxxxxx for Research
|
||||
Date:
____________________________
6
ATTACHMENT
PATENT
LICENSE AGREEMENT
This
Agreement is between the Board of Regents (“Board”) of The University of Texas
System (“System”), an agency of the State of Texas, whose address is 000 Xxxx
0xx Xxxxxx, Xxxxxx, Xxxxx 00000, Centro de Investigacion en Materiales
Avanzados, St. (“CIMAV”), whose address is Xxxxxx xx Xxxxxxxxx 000, 00000
Xxxxxxxxx, Xxxx. Mexico and Refinery Science Corp., a corporation having a
principal place of business located at 000 X. Xxxxxxxxxx, Xx Xxxx Xxxxx
(“Licensee”).
TABLE
OF CONTENTS
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RECITALS
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1.
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EFFECTIVE
DATE
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8 | |||||
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2.
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DEFINITIONS
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8 | |||||
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3.
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WARRANTY,
SUPERIOR RIGHTS AND REPRESENTATIONS
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9 | |||||
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4.
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LICENSE
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10 | |||||
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5.
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PAYMENTS
AND REPORTS
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11 | |||||
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6.
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TERM
AND TERMINATION
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12 | |||||
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7.
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INFRINGEMENT
BY THIRD PARTIES
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14 | |||||
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8.
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ASSIGNMENT
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14 | |||||
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9.
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PATENT
MARKING
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14 | |||||
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10.
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INDEMNIFICATION
AND INSURANCE
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14 | |||||
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11.
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USE
OF BOARD AND COMPONENT’S NAME
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15 | |||||
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12.
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CONFIDENTIAL
INFORMATION AND PUBLICATION
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15 | |||||
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13.
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PATENTS
AND INVENTIONS
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16 | |||||
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14.
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ALTERNATE
DISPUTE RESOLUTION
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16 | |||||
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15.
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GENERAL
|
17 | |||||
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SIGNATURES
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18 |
7
RECITALS
A. Board
and
CIMAV (Collectively referred to herein as “Licensor”) own certain Patent Rights
and Technology Rights related to Licensed Subject Matter, which were developed
at The University of Texas at El Paso (“University”), a component institution of
System and CIMAV.
B. Licensor
desires to have the Licensed Subject Matter developed and used for the benefit
of Licensee, Inventor, Board, CIMAV and the public as outlined in Board’s
Intellectual Property Policy.
C. Board
and
CIMAV have executed a Royalty Sharing Agreement whereby CIMAV agrees to have
University negotiate and manage the License Agreement for the Patent Rights
defined below. For clarification this means all royalty payments and license
tees, amendments to the Agreement, or notifications required under this
Agreement will be directed to and managed by University.
D. Licensee
wishes to obtain a license from Licensor to practice Licensed Subject
Matter.
NOW,
THEREFORE,
in
consideration of the mutual covenants and premises herein contained, the parties
agree as follows:
1. EFFECTIVE
DATE
This
Agreement is effective _______________ (“Effective Date”).
2. DEFINITIONS
As
used
in this Agreement, the following terms have the meanings indicated:
2.1 “Affiliate”
means
any business entity more than 50% owned by Licensee, any
business entity which owns more than 50% of Licensee, or any business
entity
that is more than 50% owned by a business entity that owns more than
50%
of
Licensee.
8
2.2
“Licensed
Field”
means
all fields of use.
2.3 “Licensed
Product”
means
any product Sold by Licensee comprising Licensed Subject Matter pursuant to
this
Agreement.
2.4 “Licensed
Subject Matter” means
inventions and discoveries covered by Patent Rights or Technology Rights within
Licensed Field.
2.5 “Licensed
Territory”
means
worldwide.
2.6
“Net
Sales”
means
the gross revenues received by Licensee from the Sale of Licensed Products
less
sales and/or use taxes actually paid, import and/or export duties actually
paid,
outbound transportation prepaid or allowed, and amounts allowed or credited
due
to returns (not to exceed the original billing or invoice amount).
2.7 “Patent
Rights”
means
Licensor’s rights in information or discoveries covered by patents, whether
domestic or foreign, and all divisions, continuations, continuations-in-part,
reissues, reexaminations or extensions thereof, and any letters patent that
issue thereon, which name Xx. Xxxxxxx Xxxxxxxxx, Xx. Xxxxxxx Xxxxxx, and Xx.
Xxxxxx Xxxxxxx as either sole or joint inventors (“Inventor) and which relate to
the manufacture, use or sale of Patent No.10/819,893 entitled: “Molybdenum
Sulfide/Carbide Catalysts”.
2.8 “Sale,
Sell or Sold”
means
the transfer or disposition of a Licensed Product for value to a party other
than Licensee.
2.9 “Technology
Rights”
means
Licensor’s rights in technical information, knowfl how, processes, procedures,
compositions, devices, methods, formulas, protocols, techniques, software,
designs, drawings or data created by Xx. Xxxxxxx Xxxxxxxxx, Xx. Xxxxxxx Xxxxxx,
and Xx. Xxxxxx Xxxxxxx (Inventor) at University and CIMAV before the Effective
Date relating to Patent No.10/819,893 entitled:
“Molybdenum
Sulfide/Carbide CataIysts’~ which are not covered by Patent Rights but which are
necessary for practicing the invention covered by Patent Rights.
3.
WARRANTY: SUPERIOR-RIGHTS
3.1 Except
for the rights, if any, of the Government of the United States, as set forth
below, Licensor represents and warrants its belief that (i) it is the owner
of
the entire right, tale, and interest in and to Licensed Subject Matter, (ii) it
has the sole right to grant licenses thereunder, and (iii) it has not knowingly
granted licenses thereunder to any other entity that would restrict rights
granted to Licensee except as stated herein.
3.2
Licensee understands that the Licensed Subject Matter may have been developed
under a funding agreement with the Government of the United States of America
and, if so, that the Government may have certain rights relative thereto. This
Agreement is explicitly made subject to the Government’s rights under any
agreement and any applicable law or regulation. If there is a conflict between
an agreement, applicable law or regulation and this Agreement, the terms of
the
Government agreement, applicable law or regulation shall prevail.
9
3.3 Licensee
understands and acknowledges that Licensor, by this Agreement, makes no
representation as to the operability or fitness for any use, safety, efficacy,
ability to obtain regulatory approval, patentability, and/or breadth of the
Licensed Subject Matter. Licenser, by this Agreement, also makes no
representation as to whether there are any patents now held, or which will
be
held, by others or by Licensor in the Licensed Field, nor does Licensor make
any
representation that the inventions contained in Patent Rights do not infringe
any other patents now held or that will be held by others or by
Licensor,
3.4 Licensee,
by execution hereof, acknowledges, covenants and agrees that it has not been
induced in any way by CIMAV, Board, System, University or its employees to
enter
into this Agreement, and further warrants and represents that (i) it has
conducted sufficient due diligence with respect to all items and issues
pertaining to this Article 3 and all other matters pertaining to this Agreement;
and (ii) Licensee has adequate knowledge and expertise, or has utilized
knowledgeable and expert consultants, to adequately conduct the due diligence,
and agrees to accept all risks inherent herein.
4. LICENSE
4.1 Licensor
hereby grants to Licensee a royalty-bearing, exclusive license under
Licensed
Subject Matter to manufacture, have manufactured, and/or sell Licensed
Products within the Licensed Territory for use within Licensed Field.
This
grant is subject to the payment by Licensee to Licensor through University
of
all
consideration as provided herein, and is further subject to rights retained
by
Licensor
to:
a. Publish
the general scientific findings from research related to Licensed Subject Matter
subject to the terms of Section 13, Confidential Information; and
b. Use
Licensed Subject Mailer for research, teaching and other educationally-related
purposes.
4.2 Licensee
may extend the license granted herein to any Affiliate if the Affiliate consents
to be bound by this Agreement to the same extent as Licensee.
4.3
Licensee may grant sublicenses consistent with this Agreement if Licensee is
responsible for the operations of its sublicensees relevant to this Agreement
as
if the operations were carried out by Licensee, including the payment of
royalties whether or not paid to Licensee by a sublicensee. Licensee must
deliver to Licensor a true and correct copy of each sublicense granted by
Licensee, and any modification or termination thereof, within 30 days after
execution, modification, or termination. When this Agreement is terminated,
all
existing sublicenses granted by Licensee must be assigned to
Licensor.
10
5.
PAYMENTS AND REPORTS
5.1
In
consideration of rights granted by Licensor to Licensee under this Agreement,
Licensee will pay Licensor the following:
a. A
nonrefundable license documentation fee in the amount of patent expenses
incurred by Licensor for Patent No.10/819,893, and payable when this Agreement
is executed by Licensee;
b. To
clarify under 51 -a. any fees paid by Licensee under the Option to License
Agreement will be subtracted from the license documentation fee.
c. A
running
royalty equal to 2.5% of Net Sales for Licensed Products sold by Licensee and
protected by a valid claim included within Patent Rights.
5.2
In
consideration of rights granted by Licensor to Licensee under this Agreement,
Licensee further agrees to pay Licensor the following after the execution of
a
sublicense hereunder:
a. Within
30
days after the execution of the sublicense, a sublicense fee of 50% of any
up-front cash payment made to Licensee in consideration of the sublicense,
excluding funds paid to Licensee for research and development
purposes;
b. Within
30
days after the execution of the sublicense, a sublicense fee constituting a
cash
payment equal to 50% of any non-cash consideration received by Licensee from
a
sublicensee, such consideration to include, without limitation, equity in other
companies or equity investments in Licensee. The value of an equity investment
will be calculated as the average market value of the class of stock involved
for 5 consecutive days preceding the execution of the sublicense agreement.
In
cases where the sublicense agreement calls for payment to Licensee of a premium
over the market value, Licensor will also share 10% of the premium paid to
Licensee; and
c. One
half
of the gross revenue royalty payments received on Net Sales of Licensed Products
received by Licensee from any sublicensee.
5.3
During the Term of this Agreement and for 1 year thereafter, Licensee agrees
to
keep complete and accurate records of its and its sublicensees’ Sales and Net
Sales of Licensed Products under the license granted in this Agreement in
sufficient detail to enable the royalties payable hereunder to be determined.
Licensee agrees to permit Licensor or its representatives, at Licensor’s
expense, to periodically examine its books, ledgers, and records during regular
business hours for the purpose of and to the extent necessary to verify any
report required under this Agreement. If the amounts due to Licensor are
determined to have been underpaid by a percentage factor such as ten percent,
Licensee will pay the cost of the examination and accrued interest at the
highest allowable rate.
11
5.4
Within 60 days after March 31, June 30, September 30, and December 31, beginning
immediately after the Effective Date, Licensee must deliver to Licensor a true
and accurate written report, even if no payments are due Licensor, giving the
particulars of the business conducted by Licensee and its sublicensee(s), if
any
exist, during the preceding 3 calendar months under this Agreement as are
pertinent to calculating payments hereunder. This report will include at
least:
a.
the
quantities of Licensed Subject Matter that it has produced;
b. the
total
Sales;
c. the
calculation of royalties thereon; and
d. the
total
royalties computed and due Board,
Simultaneously
with the delivery of each report, Licensee must pay to Licensor the amount,
if
any, due for the period of each report.
5.5
On or
before each anniversary of the Effective Date, irrespective of having a first
Sale or offer for Sale, Licensee must deliver to Licensor a written progress
report as to Licensee’s (and any sublicensee’s)
efforts and accomplishments during the preceding year in diligently
commercializing Licensed Subject Matter in the Licensed Territory and Licensee’s
(and, if applicable, sublicensee’s) commercialization plans for the upcoming
year.
5.6
All
amounts payable here by Licensee must be paid in United States funds
without
deductions for taxes, assessments, fees, or charges of any kind. Checks
must
be
payable to the University of Texas at El Paso, and sent to the Office of
Technology
Transfer, Xxxxxx Xxxx, Room 404, 000 X. Xxxxxxxxxx, Xx Xxxx, Xxxxx 00000.
5.7
Licensee must reimburse Licensor for all its out-of-pocket expenses thus far
incurred in filing, prosecuting, enforcing and maintaining exclusively licensed
Patent Rights and must pay all future expenses so long as and in the countries
its license remains exclusive.
6.
TERM AND TERMINATION
6.1
The
term of this Agreement is from the Effective Date to the full end of the term
or
terms for which Patent Rights have not expired or, if only Technology Rights
are
licensed and no Patent Rights are applicable, for a term of 15
years.
12
6.2
Any
time after 2 years from the Effective Date, Licensor and University have the
right to terminate the exclusivity of this license in any national political
jurisdiction in the Licensed Territory if Licensee, within 90 days after
receiving written notice from University of intended termination of exclusivity,
fails to provide written evidence satisfactory to University that Licensee
or
its sublicensees has commercialized or is actively attempting to commercialize
a
licensed invention in such jurisdiction(s).
6.3
Any
time after 3 years from the Effective Date, Board and University have the right
to terminate this license in any national political jurisdiction in the Licensed
Territory if Licensee, within 90 days after receiving written notice from
University of intended termination, fails to provide written evidence
satisfactory to University that Licensee or its sublicensees has commercialized
or is actively attempting to commercialize a licensed invention in such
jurisdiction(s).
6.4
The
following definitions apply to Article 6: (i) “Commercialize” means having Sales
of Licensed Products in such jurisdiction; and (ii) “Active attempts to
commercialize” means having Sales of Licensed Products or an effective, ongoing
and active research, development, manufacturing, marketing or sales program
as
appropriate, directed toward obtaining regulatory approval, production or Sales
of Licensed Products in any jurisdiction.
6.5
This
Agreement will earlier terminate:
a. automatically
if Licensee becomes bankrupt or insolvent and/or if the business of Licensee is
placed in the hands of a receiver, assignee, or trustee, whether by voluntary
act of Licensee or otherwise; or
13
b. upon
60
days written notice from University if Licensee breaches or defaults on its
obligation to make payments (if any are due) or reports, in accordance with
the
terms of Article 5, unless, before the end of the 60 day period, Licensee has
cured the default or breach and so notifies University, stating the manner
of
the cure; or
c. upon
90
days written notice if Licensee breaches or defaults on any other obligation
under this Agreement, unless, before the end of the 90 day period, Licensee
has
cured the default or breach and so notifies University, stating the manner
of
the cure; or
d. at
any
time by mutual written agreement between Licensee, and Licensor, upon 180 days
written notice to all parties and subject to any terms herein which survive
termination; or
e. under
the
provisions of Paragraphs 6.2 if invoked.
6.6
If
this Agreement is terminated for any cause:
a. nothing
herein will be construed to release either party of any obligation matured
prior
to the effective date of the termination;
b. after
the
effective date of the termination, Licensee may sell all Licensed Products
and
parts therefore it has on hand at the date of termination, if it pays earned
royalties thereon according to the terms of Article 5; and
c. Licensee
will be bound by the provisions of Articles 10 (Indemnification), 11 (Use of
Licensor and University’s Name), and 12 (Confidential Information) of this
Agreement.
7.
INFRINGEMENT BY THIRD PARTIES
7.1
Licensee, at its expense, will take all reasonable actions to enforce any patent
exclusively licensed hereunder against infringement by third parties and it
is
entitled to retain recovery from such enforcement. Licensee must pay Licensor
a
royalty on any monetary recovery if the monetary recovery is for damages or
a
reasonable royalty in lieu thereof. If Licensee does not file suit against
a
substantial infringer of a patent within 8 months of knowledge thereof, then
Licensor may enforce any patent licensed hereunder on behalf of itself and
Licensee, Licensor retaining all recoveries from such enforcement.
7.2
In
any infringement suit or dispute, the parties agree to cooperate fully with
each
other. At the request and expense of the party bringing suit, the other party
will permit access to all relevant personnel, records, papers, information,
samples, specimens, etc., during regular business hours.
8.
ASSIGNMENT
Except
in
connection with the sale of substantially all of Licensee’s assets to a third
party, this Agreement may not be assigned by Licensee without the prior written
consent of Licensor, which will not be unreasonably withheld.
9.
PATENT MARKING
Licensee
must permanently and legibly xxxx all products and documentation manufactured
or
sold by it under this Agreement with a patent notice as may be permitted or
required under Xxxxx 00, Xxxxxx Xxxxxx Code.
10. INDEMNIFICATION
AND INSURANCE
10.1
Licensee agrees to hold harmless and indemnify CIMAV Board, System, University,
its Regents, officers, employees and agents from and against any claims,
demands, or causes of action whatsoever, including without limitation those
arising on account of any injury or death of persons or damage to property
caused by, or arising out of, or resulting from, the exercise or practice of
the
license granted hereunder by Licensee, its Affiliates or their officers,
employees, agents or representatives.
10.2
In
no event shall Licensor be liable for any indirect, special, consequential
or
punitive damages (including, without limitation, damages for loss of profits
or
expected savings or other economic losses, or for injury to persons or property)
arising out of or in connection with this Agreement or its subject matter,
regardless of whether Licensor knows or should know of the possibility of such
damages. Licenser’s aggregate liability for all damages of any kind relating to
this Agreement or its subject matter shall not exceed the amounts paid by
Licensee to Licensor under this Agreement during the one year period preceding
the date of the event which gave rise to the liability. The foregoing exclusions
and limitations shall apply to all claims and actions of any kind, whether
based
on contract, tort (including, but not limited to, negligence), or any other
grounds.
14
10.3
Insurance
a.
Beginning at the time when any Licensed Subject Matter is being distributed
or
sold (including for the purpose of obtaining regulatory approvals) by Licensee
or by a sublicensee, Licensee shall, at its sole cost and expense, procure
and
maintain commercial general liability insurance in amounts not less than
$2~000,0O0 per incident and $2,000,000 annual aggregate, and Licensee shall
use
reasonable efforts to have the Board, System, University, its Regents, officers,
employees and agents named as additional insureds. Such commercial general
liability insurance shall provide (i) product liability coverage; (ii) broad
form contractual liability coverage for Licensee’s indemnification under this
Agreement; and (iii) coverage for litigation costs. The minimum amounts of
insurance coverage required shall not be construed to create a limit of
Licensee’s liability with respect to its indemnification under this
Agreement,
b.
Licensee shall provide Licensor with written evidence of such insurance upon
Licensor’s request. Licensee shall provide Licensor with written notice of at
least fifteen (15) days prior to the cancellation, non-renewal or material
change in such insurance.
c.
Licensee shall maintain such commercial general liability insurance beyond
the
expiration or termination of this Agreement during (i) the period that any
Licensed Subject Matter developed pursuant to this Agreement is being
commercial
distributed
or sold by Licensee or by a sublicensee or agent of Licensee; and (ii) the
five
(5) year period immediately after such period.
11.
USE OF LICENSOR’S AND UNIVERSITY’S NAME
Licensee
may not use the name of CIMAV, University, System or Board without express
written consent.
12.
CONFIDENTIAL INFORMATION AND PUBLICATION
12.1
Licensor and Licensee each agree that all information contained in documents
marked “confidential’ and forwarded to one by the other (I) be received in
strict confidence, (ii) be used only for the purposes of this Agreement, and
(iii) not be disclosed by the recipient party, its agents or employees without
the prior written consent of the other party, except to the extent that the
recipient party can establish competent written proof that such
information:
a. was
in
the public domain at the time of disclosure;
15
b. later
became part of the public domain through no act or omission of the recipient
party, it’s employees, agents, successors or assigns;
c. was
lawfully disclosed to the recipient party by a third party having the right
to
disclose it:
d.
was
already known by the recipient party at the time of disclosure;
e. was
independently developed by the recipient; or
f. is
required by law or regulation to be disclosed.
12.2
Each
party’s obligation of confidence hereunder shall be fulfilled by using at least
the same degree of care with the other party’s confidential information as it
uses to protect its own confidential information. This obligation shall exist
while this Agreement is in force and for a period of 3 years
thereafter.
12.3
University and CIMAV will submit its manuscript for any proposed publication
of
research related to Licensed Subject Matter to Licensee at least 30 days before
publication, and Licensee shall have the right to review and comment upon the
publication in order to protect Licensee’s confidential information. Upon
Licensee’s request, publication will be delayed up to 60 additional days to
enable Licensee to secure adequate intellectual property protection of
Licensee’s property that would be affected by the publication.
13. PATENTS
AND INVENTIONS
13.1
If
after consultation with Licensee, all parties agree that a patent application
should be filed for Licensed Subject Matter, Licensor will prepare and file
the
appropriate patent applications, and Licensee will pay the cost of searching,
preparing, filing, prosecuting and maintaining same. If Licensee notifies
Licensor that it does not intend to pay the cost of an application, or if
Licensee does not respond or make an effort to agree with Licensor
on the disposition of rights in the subject invention, then Licensor may file
an
application at its own expense and Licensee will have no rights to the
invention. Licensor will provide Licensee a copy of any patent application
for
which Licensee has paid the cost of filing, as well as copies of any documents
received or filed with the respective patent office during the prosecution
thereof.
14.
ALTERNATE D1SPUTE RESOLUTION
14.1
Any
dispute or controversy arising out of or relating to this Agreement, its
construction or its actual or alleged breach will be decided by mediation.
If
the mediation does not result in a resolution of such dispute or controversy,
it
will be finally decided by an appropriate method of alternate dispute
resolution, including without limitation, arbitration, conducted in the city
of
El Paso, Texas in accordance with the Commercial Dispute Resolution Procedures
[xxxx://xxx. xxxx.xxx/xxxxx/xxxxxxxxxxxxxxx.xxxx] of the American Arbitration
Association. The arbitration panel will include members knowledgeable in the
evaluation of catalyst technology. Judgment upon the award rendered may be
entered in the highest court or forum having jurisdiction, state or federal.
The
provisions of this Article 15 will not apply to decisions on the validity of
patent claims or to any dispute or controversy as to which any treaty
or law
prohibits such arbitration. The decision of the arbitration must be sanctioned
by a court of law having jurisdiction to be binding upon and enforceable by
the
parties.
16
15.
GENERAL
15.1
This
Agreement constitutes the entire and only agreement between the parties
for Licensed Subject Matter and all other prior negotiations, representations,
agreements, and understandings are superseded hereby. No agreements
altering or supplementing the terms hereof may be made except by a
written
document signed by both parties.
15.2
Any
notice required by this Agreement
must be given by prepaid, first class, certified mail, return receipt requested
and addressed to:
The
University of Texas at El Paso
Office
of
Technology Transfer
Attention:
Technology Transfer Manager
Xxxxxx
Xxxx, Room 404
11
000
X.
Xxxxxxxxxx
Xx
Xxxx,
Xxxxx 00000
Ph:
915/000-0000
Fax:
915/000-0000
or
in the
case of Licensee to:
Refinery
Science Corporation
Attn:
Xxxxx Xxxxxxx
Xxxxxx
Xxxx, Room 410
000
X.
Xxxxxxxxxx
Xx
Xxxx,
Xxxxx 00000
Phone
604/000-0000
or
other
addresses as may be given from time to time under the terms of this notice
provision.
15.3
Licensee must comply with all applicable federal, state and local laws and
regulations in connection with its activities pursuant to this
Agreement
15.4
This
Agreement will be construed and enforced in accordance with the laws of the
United States of America and of the State of Texas.
17
15.5
Failure of Board to enforce a right under this Agreement will not act as a
waiver of that right or the ability to later assert that right relative to
the
particular situation involved.
15.6
Headings are included herein for convenience only and shall not be used to
construe this Agreement.
15.7
If
any part of this Agreement is for any reason found to be unenforceable, all
other parts nevertheless remain enforceable.
15.8
This
Agreement may be signed in one or more counterparts (including faxed copies),
each of which shall be deemed one and the same original.
IN
WITNESS WHEREOF,
parties
hereto have caused their duly authorized representatives to execute this
Agreement:
|
BOARD
OF REGENTS OF THE
UNIVERSITY
OF TEXAS SYSTEM
|
REFINERY SCIENCE CORP. | |||
| By | By | |||
|
Xxxxxxx
Xxxxxxxx Villa, Vice President
for
Finance and Administration
|
David, Rendina, CEO |
|||
| Date: ___________________________ | ||||
Date:
____________________________
|
CENTRO
DE INVESTIGATCION
EN
MATERIALES AVANZADOS
|
||||
| By | ||||
|
|
||||
| Name: | ||||
|
|
||||
| Date: ___________________________ | ||||
|
Approved
as to Content:
|
||||
| By | ||||
| Name: |
Xx.
Xxxxxxx Xxxxxxxx
Vice
Xxxxxxx for Research
|
|||
Date:
___________________________
18
