Confidential
CERTAIN PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED PURSUANT TO RULE 24B-2 AND
ARE SUBJECT TO A CONFIDENTIAL TREATMENT REQUEST. COPIES OF THIS EXHIBIT
CONTAINING THE OMITTED INFORMATION HAVE BEEN FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. THE OMITTED PORTIONS OF THIS DOCUMENT ARE
MARKED WITH A [***].
Exhibit 10.1
RESEARCH AND OPTION AGREEMENT
This Research and Option Agreement ("Agreement") is effective as of May
16, 2008 (the "Effective Date") by and between Accelr8 Technology Corporation,
having a place of business at 0000 Xxxxx Xxxxxxxx, Xxxxxxxx 0-000, Xxxxxx,
Xxxxxxxx 00000 ("Accelr8"), and Becton, Xxxxxxxxx and Company, a corporation
organized under the laws of the State of New Jersey, having a place of business
at 0 Xxxxxx Xxxxx, Xxxxxxxx Xxxxx, Xxx Xxxxxx 00000, for itself ("BD"). BD and
Accelr8 are together hereinafter collectively referred to as the "Parties" and
individually referred to as a "Party".
WHEREAS, Accelr8 has a technology platform directed to, among other
things, infectious disease identification and antimicrobial susceptibility or
resistance testing;
WHEREAS, BD makes and sells products for diagnostic purposes,
including, among other things, infectious disease identification and
antimicrobial susceptibility or resistance testing; and
WHEREAS, BD is interested in funding research work by Accelr8 in order
to assess the capabilities of Accelr8's technology platform, and assess BD's
interest in licensing Accelr8's technology (such assessments collectively the
"Stated Purpose").
NOW, THEREFORE, in consideration of the mutual promises and other good
and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the Parties agree as follows:
1 DEFINITIONS
A. "Accelr8 Background IP" shall mean, collectively, the Accelr8 Background
Know-How and the Accelr8 Background Patent Rights
B. "Accelr8 Background Know-How" shall mean any and all technical and other
information, in existence as of October 31, 2009 which is not in the public
domain and which is not embodied in a patent, (i) relating to the BACcel
Platform or (ii) which is reasonably necessary to enable BD and its
Affiliates to commercially exploit the rights granted to BD and its
Affiliates by Accelr8. Accelr8 Background Know-How does not include Program
IP.
C. "Accelr8 Background Patent Rights" shall mean and collectively include
(a) the patents and patent applications in Appendix D; (b) any other
patents or patent applications now or in the future owned or Controlled by
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Accelr8 directed to the BACcel Platform and applicable in the Field, other
than Program IP; (c) all U.S., foreign, and international patent
applications that claim priority to, are entitled to claim priority to,
rely for priority on, or to which priority is claimed by, the foregoing
patents or patent applications; (d) any reissues, reexaminations,
extensions, substitutions, divisions, continuations and
continuations-in-part of the foregoing; and (e) all patents that issue from
any of the foregoing, and any reissues, reexaminations and extensions
thereof.
D. "Affiliates" shall mean any corporation or other business entity which
controls, is controlled by, or is under common control with, a Party. For
purposes of this Article 1D, "control" means direct or indirect ownership
of (i) at least fifty percent (50%) of the outstanding stock or of the
other voting rights entitled to elect directors, or (ii) in any country
where the local law shall not permit foreign equity participation of at
least fifty percent 50%, then the maximum percentage of such outstanding
stock or voting rights permitted by local law.
E. "BACcel Platform" shall mean the technology embodied in Accelr8's
BACcel(TM) system as of the Effective Date, or technology for processes or
systems (or components thereof) directed to one or more of the following:
i) concentration of live bacteria onto a surface,
ii) immobilization of such bacteria on such surface,
iii) mapping individual bacterium locations on the surface,
iv) identifying such immobilized bacteria,
v) testing antimicrobial susceptibility or antimicrobial resistance
testing of such immobilized bacteria,
vi) testing other characteristics or properties of such immobilized
bacteria, and
vii) use of microscopy and/or image analysis to perform the mapping,
identifying and/or testing steps.
F. "BD Background IP" shall mean any intellectual property, including
patents, patent applications, inventions, innovations, techniques, trade
secrets, discoveries, technologies, software or know-how made, developed,
owned, licensed or acquired by BD and its Affiliates before the Effective
Date of this Agreement or during the term of the Agreement.
G. "Confidential Information" shall mean and include all proprietary
information, including, without limitation, Accelr8 Background IP, BD
Background IP and the results of the Research Program, that is disclosed by
one Party or its Affiliate to the other Party or its Affiliate in
connection with this Agreement and the Research Program, the Exclusive
License Agreement or the Non-Exclusive License Agreement, which is
designated in writing whether by letter or by the use of an appropriate
stamp or legend such as "confidential," "proprietary," or "sensitive" by
the disclosing Party prior to or at the time of disclosure, which is orally
or visually disclosed and indicated to be proprietary at the time of
disclosure, or which is of a nature such that the receiving party would
reasonably treat such information as proprietary. The terms of this
Agreement and any related agreements between the Parties shall also be
considered Confidential Information.
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H. "Control" or "Controlled" shall mean with respect to a particular item
of intellectual property, the ability to grant access to or a license or
sublicense under such item as set forth for herein, without violating the
terms of any agreement or other arrangement with, or the right of, any
third party.
I. "Exclusive License Agreement" shall mean the license agreement attached
hereto as Appendix X.
X. "Field" shall mean products or processes for Infectious Disease
Diagnostics.
K. "Infectious Disease Diagnostics" shall mean activities directed to the
presence or absence of diseases in humans that are caused by one or more
infectious agents, non-infectious carriers or bioproducts of agents or
carriers, such activities including but not limited to, screening,
monitoring, detecting, identifying, diagnosing and/or prognosing such
diseases, as well as performing epidemiological analyses of such diseases.
By way of example, Infectious Disease Diagnostics shall include but not be
limited to: (a) measuring or monitoring one or more markers associated with
an infectious agent, (b) measuring or monitoring one or more surrogate
markers (including host response markers) indicative of the presence of an
infectious agent or of a disease caused by an infectious agent, (c)
identification of an infectious agent, (d) identification of antimicrobial
resistance mechanisms or antimicrobial resistance markers of an infectious
agent, and (e) identification of antimicrobial susceptibility of an
infectious agent.
L. "Non-Exclusive License Agreement" shall mean the license agreement
attached hereto as Appendix C. M. "Option Date" shall mean the later of
October 31, 2009 or thirty (30) days after completion of the Research
Program.. N. "Program IP" shall mean any intellectual property, including
patents, patent applications, inventions, innovations, techniques, trade
secrets, discoveries, technologies, software or know-how conceived or
reduced to practice solely by employees of Accelr8 or jointly by employees
of BD or a BD Affiliate and Accelr8 in the course of performing the
Research Program, including improvements or modifications to Accelr8
Background IP. O. "Research Program" shall mean the research and
development program set forth in Appendix A attached hereto and hereby
incorporated by reference.
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2 RESEARCH PROGRAM
A. The Parties shall perform their respective obligations under the
Research Program. In case of any dispute over whether the Research Program
has been completed, the Party's disagreement shall be submitted to binding
arbitration in New York City. The arbitration shall be conducted in
accordance with the Commercial Arbitration Rules of the American
Arbitration Association ("AAA"), except as set forth in this Section. Each
Party shall bear its own costs. The arbitration shall be governed by the
substantive laws of the State of New Jersey, without regard to
conflicts-of-law rules, and by the arbitration law of the Federal
Arbitration Act (Title 9, U.S. Code). Judgment upon the award rendered may
be entered in any court having jurisdiction. Should arbitration result in a
judgment that the Research Program had been completed, the Option Date
shall be thirty (30) days after the date of such judgment.
B. The Research Program shall be under the joint supervision of an
individual to be named by BD and an individual to be named by Accelr8
("Principal Collaborators").
C. The Research Program described in Appendix A can only be changed or
extended by written agreement between the Parties.
D. BD shall make payments to Accelr8 under this Agreement, upon receipt of
an invoice from Accelr8, as follows:
o $[***] upon execution of this Agreement
o $[***] on July 1, 2008
o $[***] on October 1, 2008
o $[***] on January 1, 2009
o $[***] on April 2, 2009
o $[***] on July 1, 2009
E. The Parties shall keep each other fully informed of the progress of the
Research Program through regular meetings, telephone conferences and/or
electronic mail, or as otherwise set forth in the Research Program or as
otherwise requested by either Party.
F. Subject to the exclusivity provisions of Article 3 and subject to
Article 4B, each Party acknowledges that the other Party may at its sole
discretion conduct research outside of the Research Program, and that such
research is not subject to this Agreement.
G. Provided Accelr8 has made good faith efforts to complete the Research
Program, BD's and BD Affiliate's sole remedy and Accelr8's exclusive
liability for any breach of Accelr8's failure to complete the Research
Program shall be re-performance of the relevant tasks. THE RESEARCH PROGRAM
IS PERFORMED ON AN AS-IS BASIS, AND ACCELR8 DISCLAIMS ALL WARRANTIES,
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INCLUDING THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE. IN NO EVENT WILL ACCELR8 BE LIABLE FOR ANY INCIDENTAL,
SPECIAL OR CONSEQUENTIAL DAMAGES RESULTING FROM PERFORMANCE UNDER THIS
AGREEMENT.
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3 EXCLUSIVITY
A. From the Effective Date of the Agreement until the earlier of the Option
Date or the date of early termination if any, Accelr8 shall not, directly
or indirectly, solicit, initiate, facilitate, encourage or participate in
any discussions or negotiations with parties other than BD or BD
Affiliates, directed to (i) joint development or other collaborative
activity with such third party relating to the BACcel Platform in the
Field, with the exception of contracted research with non-commercial
laboratories or submission for grants from non-commercial institutions or
agencies, provided such work does not in any way interfere with the rights
granted in the Agreement, the ELA or the NELA, as applicable; or (ii)
licensing of Accelr8 Background IP, or other intellectual property relating
to the BACcel Platform, in the Field, or (iii) any other activity that
might affect BD's rights as set forth in this Agreement, and Accelr8
further represents that it is not currently involved in any of the
activities set forth in (i) through (iii) as of the Effective Date of the
Agreement.
4 CONFIDENTIALITY
A. In the performance of the Research Program, it may be necessary for the
Parties to disclose Confidential Information to each other.
B. Confidential Information shall be maintained by the receiving Party as
confidential, using the same care and discretion that the receiving Party
uses with its own Confidential Information, but, in any event, no less than
a reasonable degree of care. Subject to Article 6, Confidential
Information: (a) shall remain the exclusive property of the disclosing
Party, (b) will be used by the receiving Party solely for the Stated
Purpose; and (c) will not be disclosed by the receiving Party to any other
persons or entities, except its employees on a need-to-know basis, unless
written permission is obtained in advance from the disclosing Party.
C. Notwithstanding the foregoing, or any other provision contained herein
to the contrary, the receiving Party's obligations under Article 4B shall
not apply to the extent that the receiving Party can prove by written
evidence that the respective Confidential Information:
(i) was known by a Party at or prior to the Effective Date of this
Agreement, except to the extent unlawfully appropriated by a Party; or
(ii) is or becomes generally known in the trade or business pertaining
to such information or otherwise becomes publicly known at or after
the time of disclosure by the disclosing Party, through no wrongful
act of the receiving Party; or
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(iii) is rightfully received by a Party from a third party without
restriction and without breach of this Agreement; or (iv) is developed
by a Party independent of any Confidential Information of the other
Party, such independent development being performed solely by persons
not having access whatsoever to the other Party's Confidential
Information; or
(v) is required to be disclosed by a court or judicial or governmental
authority of competent jurisdiction, and in such event, only after the
Party required to disclose the other Party's Confidential Information
provides prompt written notice to that Party so as to enable that
Party to resist any such required disclosure and/or to obtain suitable
protection regarding such required disclosure.
D. The foregoing provisions and obligations of this Article 4 shall remain
in effect and survive for five (5) years after termination or expiration of
this Agreement, except that trade secrets designating in writing as such by
the disclosing party shall remain secret subject to Article 4C and
applicable laws.
5 PUBLICATION
A. Accelr8, BD, and BD Affiliates shall not have the right to publish or
publicly present any of the research and development activities in
connection with and/or results of the Research Program without the written
approval of the other Party ("the second Party") with the exception of
collaborations with non-commercial laboratories that have agreements in
place as of the Effective Date, where such agreements contain provisions
allowing publications, provided such publication does not in any way
interfere with the rights and obligations set forth in the Agreement, the
Exclusive License Agreement or the Non-Exclusive License Agreement, as
applicable.
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6 OPTION AND INTELLECTUAL PROPERTY
A. From the Effective Date through the date that is the earlier of: the
Option Date or the date at which BD exercises the Option pursuant to
Article 6D, intellectual property rights and ownership shall be as follows:
i) Program IP shall be jointly owned by the Parties, but neither party
may use such Program IP other than for purposes of this Agreement in
the Field. Program IP conceived or reduced to practice solely by
employees of Accelr8 shall be assigned to Accelr8, which shall then
assign an undivided half-interest in such Program IP to BD, subject to
the terms of this Agreement. Program IP conceived or reduced to
practice by employees of Accelr8 and employees of BD or BD Affiliates
shall be jointly assigned.
ii) Accelr8 Background IP shall remain the property of Accelr8, and BD
or BD Affiliates shall have no rights thereunder.
iii) BD Background IP shall remain the property of BD and/or BD
Affiliates, and Accelr8 shall have no rights thereunder.
iv) The Parties agree to cooperate in identifying Program IP. The
Parties shall share the costs and expenses 50/50 in preparing, filing,
prosecuting, maintaining and extending patents and patent applications
directed to Program IP using counsel reasonably agreeable to both
parties.
v) The Parties agree to cooperate fully in providing information and
executing all documents needed to prepare, file and prosecute any
patent application hereunder.
B. Accelr8 hereby grants BD an option ("Option") to take an exclusive
license to Accelr8 Background IP in the Field. i) The Option shall exist
from the Effective Date up to and including the Option Date. BD shall have
the right to exercise the Option upon written notice to Accelr8.
ii) If BD exercises the Option:
(a) BD shall make a single, lump sum payment of [***] dollars
($[***]) to Accelr8 within thirty (30) days of the written
notice, which shall not be creditable against running royalties
due under the Exclusive License Agreement; and
(b) The Exclusive License Agreement attached hereto as Appendix B
shall immediately come into effect upon (i) Accelr8's receipt of
the payment under Article 6B(ii)(a), and (ii) Accelr8's receipt
of cumulative payments of [***] Dollars ($[***]) under Article
2D.
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iii) If BD does not exercise the Option:
(a) No additional payment to Accelr8 is required, beyond those
set forth in Article 2 of this Agreement; and
(b) The Non-Exclusive License Agreement attached hereto as
Appendix C shall immediately come into effect the day after the
Option Date, and the Exclusive License Agreement attached hereto
as Appendix B shall become null and void.
iv) If Accelr8 has not completed the Research Program, by October 31,
2009, then at any time after October 31, 2009, BD shall have the right
to decline the Option upon written notice to Accelr8. Should BD
decline the Option:
(a) No additional payment to Accelr8 is required, beyond those
set forth in Article 2 of this Agreement; and
(b) The Non-Exclusive License Agreement attached hereto as
Appendix C shall immediately come into effect upon receipt of the
written notice by Accelr8, and the Exclusive License Agreement
attached hereto at Appendix B shall become null and void.
7 TERM and TERMINATION
A. This Agreement shall become effective as of the Effective Date and shall
terminate upon the Exclusive License Agreement or the Non-Exclusive License
Agreement coming into effect pursuant to Article 6, unless terminated
earlier under this Article 7.
B. This Agreement shall be terminable upon the material breach or default
of either Party. In the event of a material breach or default by a Party
("Defaulting Party"), the other Party ("non-Defaulting Party") shall give
the Defaulting Party written notice of the default and its election to
terminate this Agreement effective at the expiration of a period of sixty
(60) days from the date of the notice. If the Defaulting Party fails to
resolve the default in the probation period by (i) curing the default, (ii)
providing a written explanation satisfactory to the Non-Defaulting Party
that a default has not occurred, or (iii) entering into a written agreement
with the Non-Defaulting Party for the cure or other resolution of the
default, then this Agreement shall terminate upon the expiration of such
sixty (60) day period. All termination rights shall be in addition to and
not in substitution for any other remedies that may be available to the
Non-Defaulting Party. Termination pursuant to this Article shall not
relieve the Defaulting Party from liability and damages to the
Non-Defaulting Party for default.
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i) Upon termination by BD for Accelr8's material breach, the Option
shall remain in effect for thirty (30) days after termination of the
Agreement, and either the Exclusive License Agreement or Non-Exclusive
License Agreement shall then come into force and effect, as
applicable.
ii) Upon termination by Accelr8 for BD's material breach, the Option
shall terminate upon termination of the Agreement, and the
Non-Exclusive License Agreement shall then come into force and effect.
C. Any termination of this Agreement for any reason does not relieve either
Party of any obligation or liability accrued prior to the termination or
rescind anything done by either Party and the termination does not affect
in any manner any rights of either Party arising under this Agreement prior
to the termination.
D. The terms and conditions of the following provisions shall survive
termination or expiration of this Agreement for as long as necessary to
permit their full discharge: Articles 4 (CONFIDENTIALITY), 5 (PUBLICATION),
6 (OPTION AND INTELLECTUAL PROPERTY), 8 (USE OF NAMES), 9 (NOTICES), 11
(RIGHTS NOT GRANTED), 13 (GOVERNING LAW) and 15 (MISCELLANEOUS).
8 USE OF NAMES
A. Neither Party shall use the name of the other Party or any adaptation
thereof in any publication, advertising, promotion, sales literature or
packaging without the prior written consent of the other Party. Any press
release, public announcement or similar publicity by the Parties with
respect to this Agreement shall be subject to the prior consent of the
other Party, which consent shall not be unreasonably withheld, unless such
communication is required to be made by law or pursuant to the rules and
regulations of the Securities and Exchange Commission or the New York Stock
Exchange listing requirements or an equivalent agency and after
consultation and coordination between the Parties. Such press release,
public announcement or similar publicity shall be limited to the existence
of the Agreement and shall not disclose the terms thereof. In the case of
required communication to agencies such as listed above, the terms of the
Agreement shall be redacted unless prohibited by applicable laws or rules.
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9 NOTICES
A. Any notices required to be given or which shall be given under this
Agreement shall be in writing delivered by certified return-receipt
requested first-class mail or overnight courier with tracking or facsimile
addressed to the Parties as follows:
For BD:
Becton, Xxxxxxxxx and Company
0 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxx 00000
Fax: 000-000-0000
Attention: Director / Strategic Planning and Business Development
with a copy to :
Becton, Xxxxxxxxx and Company
0 Xxxxxx Xxxxx XX000
Xxxxxxxx Xxxxx, XX 00000
Fax: (000) 000-0000
Attention: Vice President, Chief Intellectual Property Counsel
For Accelr8:
Accelr8 Technology Corporation
0000 Xxxxx Xxxxxxxx
Xxxx. 0-000 Xxxxxx, Xxxxxxxx 00000 Fax: 000-000-0000
Attention: Xxxxxx X. Xxxxxx, Chairman and CEO
10 INDEPENDENT PARTIES
A. For purposes of this Agreement the Parties hereto shall be independent
contractors and neither shall at any time be considered an agent or an
employee of the other. No joint venture, partnership or like relationship
is created between the Parties by this Agreement.
11 RIGHTS NOT GRANTED
A. Except as explicitly set forth herein, no other rights or licenses in or
to the BD Background IP, Accelr8 Background IP or Program IP are granted by
this Agreement.
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12 ASSIGNMENT
A. Any assignment by either Party without prior written consent of the
other Party shall be void.
B. The provisions of the Agreement shall be binding upon and inure to the
benefit of the Parties and the respective successors and assigns of each of
the Parties. To the extent permitted by law, if any Party hereto ("Bankrupt
Party") shall become insolvent, or shall suspend business or shall file a
voluntary petition or answer admitting the jurisdiction of the Court or the
material allegations of a petition, or shall consent to an involuntary
petition pursuant to or purporting to be pursuant to any reorganization or
insolvency law of any jurisdiction, or shall make an assignment for the
benefit of creditors, or shall apply for or consent to the appointment of a
receiver or trustee of a substantial part of its property ("Bankruptcy
Event"), then it is the Parties' intent that this Agreement and the rights
granted to BD hereunder by the Bankrupt Party must be adopted by any
bankruptcy trustee or relevant third Party charged with the disposition of
same, and cannot be rejected. The Parties acknowledge that this Agreement
contemplates the manner in which the Parties may retain the rights granted
to them hereunder by the Bankrupt Party, if they choose to do so in
accordance with Section 365(n) of the Bankruptcy Code. It is the Parties'
intent that, upon the occurrence of any Bankruptcy Event, BD shall be
entitled to retain the rights granted to them hereunder by the Bankrupt
Party in all items delivered or required to be delivered under this
Agreement.
13 GOVERNING LAW
A. This Agreement shall be interpreted and construed in accordance with the
laws of the State of New Jersey, without reference to choice of law
doctrine.
14 FORCE MAJEURE
A. Except as provided below, no failure or omission by a Party (the
"Affected Party") in the performance of any obligation of this Agreement
shall be deemed a breach of this Agreement nor create any liability to the
other Party (the "Unaffected Party") if such failure or omission shall
arise from any cause or causes beyond the reasonable control of the
Affected Party; including, without limitation, the following: acts of God;
fire; storm; flood; earthquake; war; sabotage; quarantine restrictions;
government action; labor strike or freight embargo (hereinafter "Force
Majeure"). In the event of any delay or inability to perform arising
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pursuant to Force Majeure, the Affected Party's performance shall be
postponed by such length of time (the "Suspension Period") as may be
reasonably necessary to compensate for said delay or inability to perform,
and the Unaffected Party's performance shall likewise be postponed by a
length of time equal to the Suspension Period. In the event a Force Majeure
shall suspend the Affected Party's obligations hereunder for more than
ninety (90) days, the Unaffected Party shall have the right to terminate
this Agreement, with no further payments due under Articles 2D. Upon such
termination, the Non-Exclusive License Agreement shall come into force and
effect.
15 MISCELLANEOUS
A. The Parties agree that the terms of this Agreement are binding upon them
as well as any of their respective employees who may assist in the Research
Program.
B. The Parties represent and warrant that they are not under obligation to
any third party that would interfere with the rendering of services to the
other Party or which would be inconsistent with any responsibilities or
obligations (including rights granted) under this Agreement.
C. The provisions of this Agreement shall not be extended, varied, changed,
modified or supplemented other than by agreement in writing signed by the
Parties hereto.
D. The headings used herein are for ease of reference only and are not to
be used in the interpretation or construction of this Agreement.
E. If and to the extent any court of competent jurisdiction shall hold any
provision (or any part thereof) of this Agreement to be invalid or
unenforceable, such holding shall in no way affect the validity of the
remainder of this Agreement.
F. Except as otherwise provided herein, the failure of a Party hereto to
enforce any of the provisions of this Agreement or any rights with respect
thereto or to exercise any election provided for herein, shall in no way be
considered a waiver of such provisions, rights or elections or in any way
affect the validity of this Agreement. No term or provision hereof shall be
deemed waived and no breach excused, unless such waiver or consent shall be
in writing and signed by the Party claimed to have so waived or consented.
G. In case of a conflict between the terms of this Agreement and either the
Exclusive License Agreement or the Non-Exclusive License Agreement, the
applicable License Agreement shall govern.
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IN WITNESS WHEREOF, the persons executing this Agreement in duplicate
originals, on behalf of the Parties hereto, represent and warrant, that they are
duly authorized officers and representatives and have authority to execute such
Agreement on behalf on their respective Party.
ACCELR8 TECHNOLOGY CORPORATION BECTON, XXXXXXXXX AND COMPANY
By: _________________________ By: _________________________________
Xxxxxx X. Xxxxxx Xxxxxxxx Xxxxx
Chairman and CEO President - Microbiology Systems
BD Diagnostics
Date:
Date:
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Appendix A - Research Program
[***][1 page total]
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CERTAIN PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED PURSUANT TO RULE 24B-2 AND
ARE SUBJECT TO A CONFIDENTIAL TREATMENT REQUEST. COPIES OF THIS EXHIBIT
CONTAINING THE OMITTED INFORMATION HAVE BEEN FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. THE OMITTED PORTIONS OF THIS DOCUMENT ARE
MARKED WITH A [***].
Appendix B
----------
EXCLUSIVE LICENSE AGREEMENT
This Exclusive License Agreement ("ELA") is made and entered into
effective pursuant to Article 6 of the Agreement ("ELA Effective Date"), by and
between Accelr8 Technology Corporation, having a place of business at 0000 Xxxxx
Xxxxxxxx, Xxxxxxxx 0-000, Xxxxxx, Xxxxxxxx 00000, ("Accelr8") and Becton,
Xxxxxxxxx and Company, a corporation duly organized under the laws of the State
of New Jersey and having its principal office in 0 Xxxxxx Xxxxx Xxxxxxxx Xxxxx,
XX 00000 for itself and its Affiliates ("BD"), (each a "Party" and collectively
the "Parties").
WITNESSETH
----------
WHEREAS, the Parties entered into a Research and Option Agreement
("Agreement") effective May 16, 2008 to which this ELA is attached;
WHEREAS, Article 6 of the Agreement provided BD with the Option for an
exclusive license to certain Accelr8 intellectual property; and
WHEREAS, the Parties agreed that upon exercise of the Option, this ELA
would immediately come into force and effect;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein, the Parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS
-----------------------
Capitalized terms not defined herein shall have the meaning set forth
in the Agreement. For the purposes of this ELA, the following words and phrases
shall have the following meanings:
1.1 "Commercial Sales" shall mean any sale of a Licensed Product in any
country in the world, excluding sales for purposes of testing, validation
studies, marketing evaluations or clinical trials, or provided as marketing
samples.
1.2 "Development Costs" shall mean direct research and product
development expenditure incurred by BD in the research and product development
of a BACcel Platform product. Development Costs shall not include any overhead
expenses, and shall be pro-rated with respect to expenditures applicable both to
the BACcel Platform and to other BD activities. In addition, Development Costs
does not include any amounts paid under the Agreement or any royalties due under
this ELA.
1.3 "Kit" shall mean a combination product offered or sold by BD that
includes a Licensed Product in combination with identifiable products having a
separate use or purpose not licensed hereunder.
1.4 "Licensed Product" shall mean collectively any process or product,
the making, using, offering for sale, selling, importing or practice of which
would, but for this ELA, infringe or contribute to infringement of a Valid Claim
of an issued patent within Accelr8 Background Patent Rights, in the country
where such activity takes place.
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1.5 "Net Sales" shall mean the sum of all amounts invoiced by BD for
the sale, lease, rental or other mode of transfer, whether permanent or
temporary, of a Licensed Product to third parties, less, to the extent not
already reflected in the invoiced amount:
1.5.1 reasonable cash discounts to purchasers allowed and taken;
1.5.2 amounts for transportation or shipping charges from the
place of manufacture to the customer's location actually paid by BD;
1.5.3 taxes and duties imposed on the sale of Licensed Product,
levied and actually paid;
1.5.4 refunds, rebates, or allowances;
1.5.5 transfers for non-commercial testing, validation studies,
marketing evaluations and clinical trials; and/or
1.5.6 free distribution (not in exchange for services or
payments) of Licensed Product used solely as marketing samples to develop or
promote the Licensed Product.
In the case of sale or other transfer of the Licensed Product as part
of a Kit, the Net Sales shall be determined as follows: If the Licensed
Product is also sold separately from the Kit, the Net Sales on which
the royalty rate is applied shall be an amount equal to the Net Sales
of the Licensed Product if sold separately in a similar transaction
involving similar volumes of Licensed Product at about the same time as
the transaction involving such Kit.
If the Licensed Product or the identifiable products are not sold
separately from the Kit, the applicable Net Sales for royalty purposes
shall be determined by multiplying the Net Sales of the Kit by the
fraction A/(A+B) where A equals the standard fully absorbed cost to BD
of the Licensed Product and B equals the fully absorbed cost to BD of
the remaining products in the Kit, such costs determined by using BD
standard accounting principles in accordance with generally accepted
accounting practice.
In the case where an instrument is placed pursuant to a reagent rental
agreement or an analogous agreement in which a purchaser is provided an
instrument for use in conjunction with Licensed Products, including but
not limited to a service contract in conjunction with the instrument,
and the costs associated with the placement and use of the instrument
are not separately billed but instead represent some portion of the
purchase price of the Licensed Products, then BD shall be entitled to
reduce the Net Sales of such Licensed Products to allow for deduction
of instrument-related charges such as interest for the financing of the
instrument supplied, training, warranty and post-warranty cost of
instrument service, using BD standard accounting principles in
accordance with generally accepted accounting practice.
The term Net Sales in the case of non-cash sales, shall mean the fair
market value of all equivalent or other consideration received by BD.
If such fair market value of the non-cash consideration is not readily
and undisputably ascertainable, the Parties shall discuss in good faith
the cash value of such non-cash consideration, and payment to Accelr8
shall be based on such cash value.
Where the Licensed Product is part of a Research Use Only system that
incorporates a BD instrument capable of use in other systems, such as a
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multi-purpose imaging instrument, the applicable Net Sales for such
system shall be only the Net Sales of any consumables sold with or for
such system.
1.6 "Research Purposes" shall mean any and all activities directed to
technology or product research but excluding actual commercial manufacture or
commercial sale of a product.
1.7 "Valid Claim" shall mean an issued claim of an unexpired patent
which shall not have been withdrawn, canceled or disclaimed or held invalid or
unenforceable in an unappealed or unappealable decision.
ARTICLE 2 - GRANT
-----------------
2.1 Accelr8 hereby grants to BD and BD Affiliates a world-wide,
paid-up, exclusive license, including the right to grant sublicenses, under
Accelr8's rights and interest in Program IP, to make, have made, use, practice,
offer for sale, sell, import and otherwise dispose of Licensed Products, and to
otherwise practice Program IP in the Field.
2.2 Accelr8 hereby grants to BD and BD Affiliates a world-wide,
exclusive license, including the right to grant sublicenses, under Accelr8
Background IP, to make, have made, use, practice, offer for sale, sell, import
and otherwise dispose of Licensed Products, and to otherwise practice Accelr8
Background IP, in the Field. The license shall be royalty-bearing with respect
to Accelr8 Background Patent Rights pursuant to Article 3.1, and shall be
royalty-free with respect to Accelr8 Background Know-How.
2.3 Accelr8 further grants to BD and BD Affiliates a world-wide,
paid-up, non-exclusive license under Accelr8 Background IP, for Research
Purposes. For purposes of this Article 2.3 only, "commercially exploit" as used
in the definition of Accelr8 Background Know-How shall include research and
development activities directed toward commercial exploitation. For avoidance of
doubt, this Article 2.3 does not provide BD with any rights to commercialize
Licensed Products outside the Field.
2.4 If BD has not spent at least [***] dollars ($[***]) in Development
Costs ("Minimum Development Cost Commitment") by the date that is three (3)
years from the ELA Effective Date, Accelr8 shall be entitled, upon ninety (90)
days written notice, to convert BD's license grant under Article 2.2 to a
non-exclusive license, unless BD meets the Minimum Development Cost Commitment
during such ninety (90) day period. Upon such conversion: (i) the royalty rate
set forth in Article 3.1 shall be reduced to [***] percent ([***]%), (ii) the
stacking provisions of Article 3.5 shall continue to apply, with the minimum
royalty thereunder reduced to [***] percent ([***]%), and (iii) BD's rights
under Articles 5.6 and 5.7 with respect to Accelr8 Background IP shall cease
(BD's rights under Articles 5.6 and 5.7 with respect to Program IP shall
continue). For avoidance of doubt, monies paid under Article 2D of the Agreement
shall not be credited toward the Minimum Development Cost Commitment. As of the
date of a commercial launch by BD of a BACcel Platform product, Accelr8 shall no
longer have a right to convert the license grant to a non-exclusive license
under this Article 2.4.
2.5 If BD (i) has not spent at least the Minimum Development Cost
Commitment by the date that is five (5) years from the ELA Effective Date, or
(ii) does not spend at least [***] dollars ($[***]) in annual Development Costs
thereafter until such time as BD enters clinical trials and regulatory review
for a BACcel Platform product (to be pro-rated in the year in which BD enters
such clinical trials and regulatory review), Accelr8 shall be entitled, in its
sole discretion, to terminate this ELA upon ninety (90) days written notice,
unless BD meets the Minimum Development Cost Commitment during such ninety (90)
day period. For avoidance of doubt, monies paid under Article 2D of the
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Agreement shall not be credited toward the Minimum Development Cost Commitment.
As of the date of a commercial launch by BD of a BACcel Platform product,
Accelr8 shall no longer have a right to terminate this license under this
Article 2.5.
2.6 BD shall inform Accelr8 upon creation of an active material item
number for a BACcel Platform product, which enables commercial sales to
customers other than internal BD businesses or Affiliates. Should BD not create
an active material item number for a BACcel Platform product or no longer
maintain an active material item number for a BACcel Platform product, then
Accelr8 shall be entitled to terminate the ELA upon ninety (90) days written
notice unless BD cures within that ninety (90) day period.
2.7 Within thirty (30) days of the ELA Effective Date, Accelr8 shall
initiate a transfer to BD of copies of all Accelr8 Background Know-How requested
by BD. BD may thereafter request additional items within Accelr8 Background
Know-How from time-to-time, and Accelr8 shall provide the requested items in a
reasonable manner. In addition, Accelr8 shall provide reasonable technical
assistance to BD in product development activities utilizing the Accelr8
Background Know-How. BD shall reimburse Accelr8 for reasonable documented
out-of-pocket expenses for providing such Accelr8 Background Know-How and
reasonable technical assistance. Use of the Accelr8 Background Know-How shall be
subject to the provisions of this ELA.
2.8 No rights to Accelr8 under any BD Background IP or BD's interest in
Program IP are granted hereunder.
ARTICLE 3 - PAYMENTS
--------------------
3.1 In consideration for the rights and licenses granted herein, BD or
its Affiliate shall make payments to Accelr8 as follows: On Commercial Sales, BD
or its Affiliate shall pay Accelr8 a running royalty in an amount equal to [***]
percent ([***]%) of Net Sales of Licensed Products.
3.2 With respect to sublicenses, BD or its Affiliate shall pay an
amount equal to thirty percent (30%) of all payments, royalties and the fair
market value of all goods, services and other remuneration received by BD from
sublicensees in consideration for a sublicense under Accelr8 Background Patent
Rights. BD shall not, however, be required to pass on any monies received by BD
from a sublicensee as payment for research or trials. Where BD receives from a
sublicensee anything of value in lieu of cash payments in consideration for the
sublicense, the cash value of such consideration shall be determined by
negotiation in good faith between the Parties.
3.3 BD or its Affiliate shall make the payments to Accelr8 after
deducting withholding taxes, levies and other governmental charges only if
required by applicable law. BD agrees that it shall use reasonable efforts to
minimize any such required withholding taxes, levies or other governmental
charges. Accelr8 shall cooperate with BD and take all reasonable steps necessary
to allow BD to lawfully reduce or avoid such withholding taxes, levies or other
governmental charges, such cooperation to include the timely completion and
filing of any relevant forms and/or other documents. BD agrees that it shall
take all reasonable steps necessary to assist Accelr8 in obtaining a refund for
any amounts withheld.
3.4 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 or more than one claim of a patent in the Accelr8 Background
Patent Rights.
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3.5 In the event that BD or its Affiliate is obligated to pay a royalty
to one or more third parties for a Licensed Product and the aggregate total
royalty rate on such Licensed Product exceeds [***] percent ([***]%)in the
absence of any applicable royalty stacking adjustments, then the running royalty
under this ELA shall be reduced by an amount equal to: fifty percent (50%) of
the difference between the aggregate royalty rate and [***] percent ([***]%).
However, in no event shall the running royalty drop below [***] percent
([***]%). (For example, [***].)
3.6 The payments by BD to Accelr8 hereunder, the provisions of Articles
2.4, 2.5 and 2.6 are considered to be complete satisfaction of any duty imposed
upon BD to commercially exploit the Accelr8 Background IP.
ARTICLE 4 - REPORTS AND RECORDS
-------------------------------
4.1 After the first Commercial Sale of a Licensed Product, within sixty
(60) days after the last business day of each calendar quarter of each license
year of this ELA, BD shall submit to Accelr8 a written report with respect to
the preceding calendar quarter (the "Payment Report") stating: (a) the
quantities of Licensed Products sold by BD, and the monetary amount of all sales
and all deductions therefrom used to calculate Net Sales with respect to sales
of Licensed Products during the reporting period and the royalties due
therefrom, and (b) royalty-bearing sublicensing revenue and the sources thereof.
4.6 Simultaneously with the submission of each Payment Report, BD shall
make payments to Accelr8 of the amounts due for the calendar quarter covered by
the Payment Report. Payment shall be by check payable to Accler8 and sent to the
address for Accelr8 set forth in Article 10, or to such other address as Accelr8
may specify by notice hereunder, or, if requested by Accelr8, by wire transfer
of immediately available funds to a bank and account identified by notice to BD
by Accelr8.
4.7 Within sixty (60) days after the date of termination or expiration
of this ELA, BD shall pay Accelr8 any and all amounts that are due pursuant to
this ELA as of the date of such termination or expiration, together with a
Payment Report for such payment, except that such Payment Report shall cover the
period from the end of the last calendar quarter prior to termination or
expiration to the date of termination or expiration.
4.8 With respect to revenues obtained by BD in foreign countries, BD
shall make royalty payments to Accelr8 in United States Dollars. Royalty
payments for transactions outside the United States shall first be determined in
the currency of the country in which they are earned, and then converted to
United States dollars using the buying rates of exchange quoted by Citibank,
N.A. (or its successor) in New York, New York for the last business day of the
calendar quarter in which the royalties were earned.
4.9 BD shall maintain usual books of account and records showing Net
Sales of Licensed Products in sufficient detail to allow the royalties payable
by BD to be accurately determined. Upon reasonable notice, no more than once per
year, such books and records shall be open to inspection, during usual business
hours, by an independent certified public accountant (bound by an obligation of
confidentiality to BD) to whom BD has no reasonable objection, for two (2) years
after the calendar quarter to which they pertain, solely for purposes of
verifying the accuracy of the amounts paid by BD under this ELA. The cost of any
such inspection shall be borne by Accelr8. In the event that such review
reasonably shows that BD has underpaid royalties by more than five percent (5%),
with respect to any calendar quarter, BD shall pay, within thirty (30) days
after demand by Accelr8, the costs and expenses of such review, as well as all
unpaid royalties. If the inspection shows an overpayment, Accelr8 shall provide
BD with a credit against future royalties in an amount equal to such
overpayment. All information learned by Accelr8 in connection with any such
audit shall be treated by Accelr8 as BD's Confidential Information hereunder.
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ARTICLE 5 - PATENT MATTERS AND LITIGATION
-----------------------------------------
5.1 Accelr8 shall diligently prepare, apply for, prosecute, obtain and
maintain ("Prosecute" or "Prosecution") Accelr8 Background Patent Rights using
counsel to which BD has no reasonable objection. BD shall be provided with
copies of all documents relating to the Prosecution of Accelr8 Background Patent
Rights that are within or relevant to the Field, in sufficient time to review
such documents and comment thereon, if desired by BD, prior to filing, provided
that, if BD has not commented on such documents prior to the deadline for filing
a response to the relevant government patent office, Accelr8 will be free to
respond without consideration of BD's comments. Accelr8 agrees to pay due
consideration to BD's comments and use reasonable efforts to implement BD's
reasonable requests consistent with its commercial goals and interests.
Prosecution costs shall be borne equally between the Parties, unless BD's
license grant is converted to a non-exclusive license under Article 2.4, in
which case Prosecution costs shall then be borne fully by Accelr8.
5.2 If Accelr8 elects not to Prosecute any patents or patent
applications within Accelr8 Background Patent Rights relevant in the Field in
any country(ies) or region(s) in the world, Accelr8 shall promptly notify BD in
writing in sufficient time, but not less than sixty (60) days, for BD to take
action, and BD shall thereafter have the right, but not any obligation, to
Prosecute such patent rights in such country(ies) or region(s) at its own cost,
and in its own name ("Surrendered Patent"). If BD elects to take over the
Prosecution of any such Surrendered Patent, Accelr8 agrees to assign, and does
hereby assign, to BD all right, title and interest in and to such Surrendered
Patent.
5.3 BD shall have responsibility for Prosecuting patents or
applications within Program IP, at its sole expense, using BD internal counsel
or using external counsel to which Accelr8 has no reasonable objection. Accelr8
shall be provided with copies of all documents relating to the Prosecution of
Program IP that are relevant outside the Field, in sufficient time to review
such documents and comment thereon. .BD agrees to pay due consideration to
Accelr8's comments and use reasonable efforts to implement Accelr8's reasonable
requests consistent with BD's commercial goals and interests. If Accelr8 has not
commented on such documents prior to the deadline for filing a response to the
relevant government patent office, BD will be free to respond without
consideration of Accelr8's comments.
5.4 If a dispute arises with respect to Prosecution, Accelr8 and BD
shall first attempt to resolve the dispute through good faith discussions. If no
resolution is reached, to accommodate a relevant patent office deadline, either
Party may, at its sole expense, refer the dispute to an independent patent
attorney, to which the other Party has no reasonable objection, whose decision
shall be final and binding.
5.5 In the event that either BD or Accelr8 become aware of any
potential infringement or misuse of Accelr8 Background IP or Program IP in the
Field by a third party ("Infringing Party"), such Party shall notify the other
Party in writing and provide a summary of the relevant facts and circumstances.
5.6 Accelr8 shall not notify a third party of the potential
infringement of Accelr8 Background IP, (i) in the Field, without first obtaining
the consent of BD, or (ii) outside the Field, without providing advance written
notice to BD including a summary of the relevant non-confidential facts
supporting such potential infringement. Accelr8 hereby grants to BD all rights
to xxx and recover damages or obtain injunctive relief for past and future
infringement, misappropriation, violation or breach of Accelr8 Background IP or
Program IP, in the Field. During the term of this Agreement, BD shall have the
first right, but no obligation, to assert, enforce and defend Accelr8 Background
IP or Program IP in the Field ("Litigate" or "Litigation") and its rights
pursuant to this Agreement, at its own expense, and to recover any damages,
awards or settlements resulting therefrom. Accelr8 hereby agrees that BD may
join it as a necessary party plaintiff in any such suit, without expense to
Accelr8. BD shall hold harmless and indemnify Accelr8 from and against any order
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for costs arising without fault or negligence of Accelr8 that may be made
against them by reason of being named a party plaintiff in such proceedings. BD
shall have sole control of any Litigation and all negotiations for its
settlement or compromise, and shall have the sole right, in accordance with the
terms and conditions herein, to sublicense solely in the Field any alleged
infringer under Accelr8 Background IP or Program IP. The total cost of any
Litigation commenced or defended solely by BD shall be borne by BD. All
recoveries from any such action shall be first applied to reimburse BD its cost
and expenses including, without limitation, attorney's fees and court costs. Any
excess amounts shall be deemed to be Net Sales. Notwithstanding the foregoing,
BD shall have no right to litigate or compromise issues with respect to the
rights retained by Accelr8 under this Agreement or which may adversely affect
Accelr8 Background IP without the prior written consent of Accelr8, not to be
unreasonably withheld, conditioned or delayed.
5.7 If BD decides that it shall not bring suit against, or enter into
negotiations with, an Infringing Party as provided in Article 5.6, then BD shall
so notify Accelr8 and, in that event only, Accelr8 shall have the right, but
shall not be obligated, to Litigate the relevant action and to recover, for its
own account, any damages, awards or settlements resulting therefrom. BD hereby
agrees that Accelr8 may join BD as a necessary party plaintiff in any such suit,
without expense to BD. Accelr8 shall hold harmless and indemnify BD from and
against any order for costs arising without fault or negligence of BD that may
be made against BD by reason of being named a party plaintiff in such
proceedings. Accelr8 shall have sole control of any such suit and all
negotiations for its settlement or compromise, provided that Accelr8 shall not
settle or compromise any such suit or enter into any consent order for the
settlement or compromise thereof that adversely affects the licenses or rights
of BD hereunder without the prior written consent of BD, and provided further
that BD shall have the sole right in accordance with the terms and conditions
hereof to sublicense any alleged infringer under Accelr8 Background IP or
Program IP in the Field. The total cost of any such Litigation commenced or
defended solely by Accelr8 shall be borne by Accelr8.
5.8 In the event that any action, suit or proceeding is brought
against, or written notice or threat thereof is provided to, BD alleging
infringement of any third party patent or unauthorized use or misappropriation
of any third party technology or know-how arising out of or in connection with
BD's manufacture, use, offer for sale, sale or importation of the Licensed
Products, BD shall have the right to defend at its own expense such action, suit
or proceeding and, in furtherance of such rights, Accelr8 hereby agrees that BD
may join it as a party in such suit, without expense to Accelr8. BD shall hold
harmless and indemnify Accelr8 from and against any order for costs and all
damages and settlements arising without fault of Accelr8 that may be made
against Accelr8 in such proceedings, unless such order arises out of or relates
to facts and circumstances involving a breach of any representation, warranty or
covenant by Accelr8.
5.9 If a party undertakes Litigation and/or Prosecution of the Accelr8
Background IP or Program IP by legal or patent office proceedings pursuant to
this Agreement, the other party shall, at the request and expense of the party
undertaking such Litigation and/or Prosecution, cooperate in all reasonable
respects, and to the extent possible, have its employees testify when requested
and make available relevant records, papers, information, samples and the like.
ARTICLE 6 - REPRESENTATIONS
---------------------------
6.1 Accelr8 represents and warrants to BD that, to the best of
Accelr8's knowledge as of the Effective Date, (a) Accelr8 owns all right, title
and interest in and to Accelr8 Background IP; (b) Accelr8 Background Patent
Rights have been duly prepared, filed, prosecuted, obtained and maintained in
accordance with all applicable laws, rules and regulations; (c) Accelr8 is not
aware of any third party whose intellectual property rights would be infringed
or misappropriated by the practice of Accelr8 Background IP nor of any third
party who is infringing or misappropriating Accelr8 Background IP; (d) Accelr8
does not own or control any patents or patent applications other than Accelr8
Background Patent Rights that currently, or when issued, would be infringed by
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the making, using, offering for sale, selling or importing of any Licensed
Product; (e) no open source or public library software, including any version of
any software licensed pursuant to any GNU public license, is, in whole or in
part, embodied or incorporated into any software within Accelr8 Background IP,
and (f) Accelr8 has the lawful right to enter into the ELA and to grant the
licenses hereunder without the consent or approval of another person or entity.
6.2 BD represents and warrants to Accelr8 that it has the lawful right
and authority to enter into this ELA without the consent or approval of another
person or entity. Accelr8 represents and warrants to BD that it has the lawful
right and authority to enter into this ELA without the consent or approval of
another person or entity.
ARTICLE 7 - INDEMNIFICATION
---------------------------
7.1 During the term of this ELA, BD shall indemnify, hold harmless and
defend Accelr8, and its officers, employees and agents (the "Indemnitees")
against any and all claims (including but not limited to claims of products
liability), suits, losses, damage, costs, fees, and expenses (including but not
limited to reasonable attorneys' fees and other legal costs) resulting from or
arising out of BD's exercise of the license granted to it hereunder. However, BD
need not indemnify Indemnitees to the extent that a claim, suit, loss, damage,
cost, fee or expense arises out of the gross negligence or intentional
misconduct of an Indemnitee.
7.1.1 BD shall have the exclusive right to control the defense of
any such action, including the right to select counsel to defend any Indemnitee,
and to settle any claim.
7.1.2 The obligations of BD stated in Article 7 shall apply only
if the relevant Indemnitee notifies BD in writing within fifteen (15) days
following receipt of written notice of any claim or suit brought against
Indemnitee in respect of which Indemnitee intends to invoke the provisions of
this Article 7. BD shall keep the Indemnitee informed on a current basis of its
defense of any claims pursuant to this Article 7.
7.2 IN NO EVENT WILL EITHER PARTY BE LIABLE FOR ANY INCIDENTAL, SPECIAL
OR CONSEQUENTIAL DAMAGES (INCLUDING BUT NOT LIMITED TO LOST PROFITS OR BUSINESS
OPPORTUNITIES) IN CONNECTION WITH THE ELA OR RESULTING FROM EXERCISE OF THIS
LICENSE OR THE USE OF LICENSED PRODUCTS, EVEN IF A PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGE AND NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE
OF ANY REMEDY SET FORTH IN THIS AGREEMENT.
7.3 ACCELR8'S TOTAL LIABILITY ARISING UNDER OR IN CONNECTION WITH THIS
AGREEMENT, REGARDLESS OF THE FORM OF ACTION, SHALL BE LIMITED TO THE TOTAL
PAYMENTS RECEIVED FROM BD UNDER THIS ELA AND UNDER THE AGREEMENT.
ARTICLE 8 - ASSIGNMENT
-----------------------
8.1 This ELA is not assignable and any attempt to do so shall be void,
without the express written approval of the other Party, which shall not be
unreasonably withheld. The provisions of the ELA shall be binding upon and inure
to the benefit of the Parties and the respective successors and assigns of each
of the Parties.
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ARTICLE 9 - TERMINATION
-----------------------
9.1 Unless otherwise terminated by operation of law or by acts of the
Parties in accordance with the terms of this ELA, this ELA shall terminate upon
expiration of the last to expire patent within Accelr8 Background Patent Rights.
9.2 This ELA, in whole or in part, shall be terminable by BD at any
time, and for any or no reason, upon sixty (60) days written notice to Accelr8.
Upon such termination by BD, the Non-Exclusive License Agreement shall come into
force and effect.
9.3 This ELA shall be terminable upon the material breach or default of
either Party. In the event of a material breach or default by a Party
("Defaulting Party"), the other Party ("non-Defaulting Party") shall give the
Defaulting Party written notice of the default and its election to terminate
this ELA effective at the expiration of a period of sixty (60) days from the
date of the notice. If the Defaulting Party fails to resolve the default in the
probation period by (i) curing the default, (ii) providing a written explanation
satisfactory to the Non-Defaulting Party that a default has not occurred, or
(iii) entering into a written agreement with the Non-Defaulting Party for the
cure or other resolution of the default, then this ELA shall terminate upon the
expiration of such sixty (60) day period. All termination rights shall be in
addition to and not in substitution for any other remedies that may be available
to the Non-Defaulting Party. Termination pursuant to this Article shall not
relieve the Defaulting Party from liability and damages to the Non-Defaulting
Party for default. Failure to meet the expenditure milestones under Article 2.4
shall not be considered a material breach hereunder.
9.4 If this ELA is terminated by Accelr8 due to BD's material breach,
or pursuant to Article 2.5 or 2.6, the Non-Exclusive License Agreement shall
come into force and effect.
9.5 Any termination of this ELA for any reason does not relieve either
Party of any obligation or liability accrued prior to the termination or rescind
anything done by either Party and the termination does not affect in any manner
any rights of either Party arising under this ELA prior to the termination,
including, but not limited to, the right of Accelr8 to receive royalties under
Article 4.2.
9.6 To the extent permitted by law, if any Party hereto ("Bankrupt
Party") shall become insolvent, or shall suspend business or shall file a
voluntary petition or answer admitting the jurisdiction of the Court or the
material allegations of a petition, or shall consent to an involuntary petition
pursuant to or purporting to be pursuant to any reorganization or insolvency law
of any jurisdiction, or shall make an assignment for the benefit of creditors,
or shall apply for or consent to the appointment of a receiver or trustee of a
substantial part of its property ("Bankruptcy Event"), then it is the Parties'
intent that this ELA and the rights and licenses granted to BD hereunder by the
Bankrupt Party must be adopted by any bankruptcy trustee or relevant third Party
charged with the disposition of same, and cannot be rejected. The Parties
acknowledge that this ELA contemplates the manner in which the Parties may
retain the rights granted to them hereunder by the Bankrupt Party, if they
choose to do so in accordance with Section 365(n) of the Bankruptcy Code. It is
the Parties' intent that, upon the occurrence of any Bankruptcy Event, BD shall
be entitled to retain the rights granted to them hereunder by the Bankrupt Party
in all items delivered or required to be delivered under this ELA.
9.7 The terms and conditions of the following provisions shall survive
termination or expiration of this ELA for as long as necessary to permit their
full discharge: Articles 4.5 (REPORTS AND RECORDS), 5.5 and 5.6 (PATENT MATTERS
AND LITIGATION), 6 (REPRESENTATIONS), 7 (INDEMNIFICATION), 11 (CONFIDENTIALITY)
and 12 (MISCELLANEOUS). Upon a lawful termination by Accelr8 under Article 9.3
or by BD under Article 9.2 hereof, BD shall have no further rights to the
Licensed Products, except that BD may sell or otherwise dispose of all Licensed
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Products that have been manufactured prior to the effective date of such
termination, or are in the process of being manufactured on such date, and shall
make payments to Accelr8 required under Article 3.2, and Accelr8 shall have no
further right to payment of any other license fees.
9.8 Notwithstanding Article 9.3 herein, if BD terminates this ELA for
material breach or default of Accelr8, BD's rights and licenses hereunder shall
continue, but any and all obligations of BD shall terminate.
ARTICLE 10 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
-------------------------------------------------------
Any payment, notice or other communication pursuant to this ELA shall
be sufficiently made or given on the date of mailing if sent to such Party by
certified first class mail, postage prepaid or in the case of a notice or
communication faxed with return receipt confirmation of complete delivery and
followed up by a written copy delivered by first class mail, addressed to it at
its address below or as it shall designate by written notice given to the other
Party:
In the case of Accelr8:
0000 Xxxxx Xxxxxxxx
Xxxx. 0-000
Xxxxxx, Xxxxxxxx 00000
Fax: 000-000-0000
Attention: Xxxxxx X. Xxxxxx, Chairman and CEO
In the case of BD:
For BD:
Becton, Xxxxxxxxx and Company
0 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxx 00000
Fax: 000-000-0000
Attention: Director / Strategic Planning and Business Development
with a copy to :
Becton, Xxxxxxxxx and Company
0 Xxxxxx Xxxxx XX000
Xxxxxxxx Xxxxx, XX 00000
Fax: (000) 000-0000
Attention: Vice President, Chief Intellectual Property Counsel
ARTICLE 11 - CONFIDENTIALITY
-----------------------------
11.1 With regard to Confidential Information, the receiving Party
agrees:
11.1.1 not to use the Confidential Information except for the
purposes of this ELA ;
11.1.2 to safeguard Confidential Information against disclosure
to others with the same degree of care as it exercises with its own Confidential
Information of a similar nature, but in no event less than a reasonable degree
of care;
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11.1.3 not to disclose Confidential Information to others (except
to its employees, agents or consultants who are bound by a like obligation of
confidentiality) without the express prior written permission of the disclosing
Party,
11.1.4 except that the receiving Party shall not be prevented
from using or disclosing any of the Confidential Information:
(a) which the receiving Party can demonstrate by
pre-existing, competent written records was previously known to it; or
(b) which is now, or becomes in the future, public knowledge
other than through acts or omissions of the receiving Party; or
(c) which is lawfully obtained by the receiving Party from
sources independent of the disclosing Party; and
(d) which are required by law to be disclosed, only to the
extent so required.
11.2 The secrecy obligations of the Parties with respect to
Confidential Information shall continue for a period ending five (5) years from
the termination date of this ELA.
11.3 Notwithstanding Article 11.1, the Parties shall have the right to
disclose Confidential Information (i) as necessary in the course of seeking or
enforcing patent rights, or obtaining regulatory approval to manufacture or
market Licensed Products, and (ii) as reasonably required in the course of any
actual or potential financing, business or sublicensing arrangement; provided,
however, that any disclosure under (ii) shall be pursuant to a confidentiality
agreement between the respective Party and such third party which preserves the
rights of the Parties hereunder.
ARTICLE 12 - MISCELLANEOUS PROVISIONS
--------------------------------------
12.1 Upon request, BD will consider in good faith its ability to
manufacture BACcel Platform products for Accelr8's sale or distribution, for
applications outside the Field.
12.2 This ELA shall be construed, governed, interpreted and applied in
accordance with the laws of the State of New Jersey, without reference to choice
or law doctrine, 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. Any controversy arising hereunder, except as otherwise explicitly
stated, shall be subject to the exclusive jurisdiction of the courts located in
New Jersey and each Party hereby submits itself for the sole purpose of this ELA
and any controversy arising hereunder to the jurisdiction of the courts located
in the District of New Jersey and any courts of appeal therefrom, and waives any
objection on the grounds of lack of jurisdiction (forum non conveniens or
otherwise) to the exercise of such jurisdiction over it by any such courts.
12.3 The Parties acknowledge that this ELA sets forth the entire
agreement and understanding of the Parties 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.
12.4 The provisions of this ELA are severable, and in the event that
any provisions of this ELA 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.
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12.5 The failure of either Party to assert a right hereunder or to
insist upon compliance with any term or condition of this ELA 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. No waiver of any term or
condition of this ELA shall be effective unless in writing and signed by the
Party granting such waiver.
12.6 Neither BD nor Accelr8 shall be responsible for and the terms of
this ELA shall be inapplicable to any default or delays which are due to cause
beyond such Party's control, including but without limitation acts of God or of
the public enemy, acts or any order of a government, fires, floods, or other
natural disasters, embargoes, accidents, explosions, strikes, or other labor
disturbances (regardless of the reasonableness of the demands of labor),
shortages of fuel, power or raw materials, inability to obtain or delays of
transportation facilities, incidents of war, or other events causing the
inability of a Party acting in good faith with due diligence, to perform its
obligations under this ELA.
12.7 Neither Party shall use the name of the other Party or any
adaptation thereof in any publication, advertising, promotion, sales literature
or packaging without the prior written consent of the other Party. Any press
release, public announcement or Any press release, public announcement or
similar publicity by the Parties with respect to this ELA shall be subject to
the prior consent of the other Party, which consent shall not be unreasonably
withheld, unless such communication is required to be made by law or pursuant to
the rules and regulations of the Securities and Exchange Commission or the New
York Stock Exchange listing requirements or an equivalent agency and after
consultation and coordination between the Parties. Such press release, public
announcement or similar publicity shall be limited to the existence of the ELA
and shall not disclose the terms thereof. In the case of required communication
to agencies such as listed above, the terms of the ELA shall be redacted unless
prohibited by applicable laws or rules.
12.8 Nothing herein contained shall be construed to place the Parties
in the relationship of partners or joint venturers or principal and agent or
create any entity or association, and neither Party shall have the power to
obligate or bind the other in any manner whatsoever.
IN WITNESS WHEREOF, the persons executing this Agreement in duplicate
originals, on behalf of the Parties hereto, represent and warrant, that they are
duly authorized officers and representatives and have authority to execute such
Agreement on behalf on their respective Party.
ACCELR8 TECHNOLOGY CORPORATION BECTON, XXXXXXXXX AND COMPANY
By: ________________________ By: __________________________________
Xxxxxx X. Xxxxxx Xxxxxxxx Xxxxx
Chairman and CEO President - Microbiology Systems
BD Diagnostics
Date: Date:
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CERTAIN PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED PURSUANT TO RULE 24B-2 AND
ARE SUBJECT TO A CONFIDENTIAL TREATMENT REQUEST. COPIES OF THIS EXHIBIT
CONTAINING THE OMITTED INFORMATION HAVE BEEN FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. THE OMITTED PORTIONS OF THIS DOCUMENT ARE
MARKED WITH A [***].
Appendix C
----------
NON-EXCLUSIVE LICENSE AGREEMENT
-------------------------------
This Non-Exclusive License Agreement ("NELA") is made and entered into
effective pursuant to Article 6 of the Agreement or Article 9 of the Exclusive
License Agreement ("NELA Effective Date"), by and between Accelr8 Technology
Corporation, having a place of business at 0000 Xxxxx Xxxxxxxx, Xxxxxxxx 0-000,
Xxxxxx, Xxxxxxxx 00000, ("Accelr8") and Becton, Xxxxxxxxx and Company, a
corporation duly organized under the laws of the State of New Jersey and having
its principal office in 0 Xxxxxx Xxxxx Xxxxxxxx Xxxxx, XX 00000 for itself and
its Affiliates ("BD"), (each a "Party" and collectively the "Parties").
WITNESSETH
WHEREAS, the Parties entered into a Research and Option Agreement
("Agreement") effective May 16, 2008 to which this NELA is attached;
WHEREAS, Article 6 of the Agreement provided BD with the Option for an
exclusive license to certain Accelr8 intellectual property; and
WHEREAS, the Parties agreed that if BD chose not to exercise the
Option, or if BD exercised the Option but such exclusive license was
subsequently terminated, this NELA would come into force and effect;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein, the Parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS
-----------------------
Capitalized terms not defined herein shall have the meaning set forth
in the Agreement. For the purposes of this NELA, the following words and phrases
shall have the following meanings:
1.1 "BD Background Licensed Product" shall mean collectively any
process or product used in or directed to use in Field, (i) that uses BD
Background IP or (ii) that is covered by a Valid Claim of an issued patent
within BD Background IP.
1.2 "Commercial Sales" shall mean any sale of a Licensed Product in any
country in the world, excluding sales for purposes of testing, validation
studies, marketing evaluations or clinical trials, or provided as marketing
samples.
1.3 "Kit" shall mean a combination product offered or sold by Accelr8
that includes a Licensed Product in combination with identifiable products
having a separate use or purpose not licensed hereunder.
1.4 "Licensed Product" shall mean BD Background Licensed Product and/or
Program IP Licensed Product, as the context indicates.
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1.5 "Net Sales" shall mean the sum of all amounts invoiced by Accelr8
for the sale, lease, rental or other mode of transfer, whether permanent or
temporary, of Licensed Product to third parties, less, to the extent not already
reflected in the invoiced amount:
1.5.1 reasonable cash discounts to purchasers allowed and taken;
15.2 amounts for transportation or shipping charges from the
place of manufacture to the customer's location actually paid by Accelr8;
1.5.3 taxes and duties imposed on the sale of Licensed Product,
levied and actually paid;
1.5.4 refunds, rebates, or allowances;
1.5.5 transfers for non-commercial testing, validation studies,
marketing evaluations and clinical trials; and/or
1.5.6 free distribution (not in exchange for services or
payments) of Licensed Product used solely as marketing samples to develop or
promote the Licensed Product.
In the case of sale or other transfer of the Licensed Product as part
of a Kit, the Net Sales shall be determined as follows: If the Licensed
Product is also sold separately from the Kit, the Net Sales on which
the royalty rate is applied shall be an amount equal to the Net Sales
of the Licensed Product if sold separately in a similar transaction
involving similar volumes of Licensed Product at about the same time as
the transaction involving such Kit.
If the Licensed Product or the identifiable products are not sold
separately from the Kit, the applicable Net Sales for royalty purposes
shall be determined by multiplying the Net Sales of the Kit by the
fraction A/(A+B) where A equals the standard fully absorbed cost to BD
of the Licensed Product and B equals the fully absorbed cost to BD of
the remaining products in the Kit, such costs determined by using BD
standard accounting principles in accordance with generally accepted
accounting practice.
In the case where an instrument is placed pursuant to a reagent rental
agreement or an analogous agreement in which a purchaser is provided an
instrument for use in conjunction with Licensed Products, including but
not limited to or a service contract in conjunction with the
instrument, and the costs associated with the placement and use of the
instrument are not separately billed but instead represent some portion
of the purchase price of the Licensed Products, then BD shall be
entitled to reduce the Net Sales of such Licensed Products to allow for
deduction of instrument-related charges such as interest for the
financing of the instrument supplied, training, warranty and
post-warranty cost of instrument service, using BD standard accounting
principles in accordance with generally accepted accounting practice.
The term Net Sales in the case of non-cash sales, shall mean the fair
market value of all equivalent or other consideration received by
Accelr8. If such fair market value of the non-cash consideration is not
readily and undisputably ascertainable, the Parties shall discuss in
good faith the cash value of such non-cash consideration, and payment
to BD shall be based on such cash value.
1.6 "Program IP Licensed Product" shall mean collectively any process
or product used in or directed to use in Field, (i) that uses Program IP or (ii)
that is covered by a Valid Claim of an issued patent within Program IP.
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1.7 "Valid Claim" shall mean an issued claim of an unexpired patent
which shall not have been withdrawn, canceled or disclaimed or held invalid or
unenforceable in an unappealed or unappealable decision.
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ARTICLE 2 - INTELLECTUAL PROPERTY RIGHTS
----------------------------------------
2.1 Program IP shall be jointly owned by BD and Accelr8, and either
Party may use the Program IP for any purpose, subject to any obligations set
forth in this NELA.
2.2 BD shall grant Accelr8 a limited, non-exclusive, royalty-bearing
license, with no right to sublicense, to BD Background IP which (i) was
developed during the term of the Agreement, (ii) was developed as part of BD's
assessment of the BACcel Platform technology, and (iii) is necessary for Accelr8
to make, sell, use or have made a BACcel Platform product.
2.3 Except as explicitly set forth herein, no rights under any other
intellectual property of the Parties are granted hereunder.
ARTICLE 3 - PAYMENTS
--------------------
3.1 In consideration for the rights granted herein, and the rights and
payments provided in the Agreement, Accelr8 shall make payments to BD as
follows:
3.1.1 On Commercial Sales, Accelr8 shall pay BD a running royalty
in an amount equal to [***] percent ([***]%)of Net Sales of Program IP Licensed
Products, up to the total amount paid by BD to Accelr8 under Article 2D of the
Research and Option Agreement, not to exceed a maximum of [***] dollars
($[***]).
3.2.2 On Commercial Sales, Accelr8 shall pay BD a running royalty
in an amount equal to [***] percent ([***]%) of Net Sales of BD Background
Licensed Products, with no maximum.
3.2 With respect to sublicenses of Program IP, Accelr8 shall pay an
amount equal to thirty percent (30%) of all payments, royalties and the fair
market value of all goods, services and other remuneration received by Accelr8
from sublicensees in consideration for a sublicense directed to Program IP
Licensed Products in whole or in part. Accelr8 shall not, however, be required
to pass on any monies received by Accelr8 from a sublicencee as payment for
research or trials. Where Accelr8 receives from a sublicensee anything of value
in lieu of cash payments in consideration for the sublicense, the cash value of
such consideration shall be determined by negotiation in good faith between the
Parties.
3.3 Accelr8 shall make the payments to BD after deducting withholding
taxes, levies and other governmental charges only if required by applicable law.
Accelr8 agrees that it shall use reasonable efforts to minimize any such
required withholding taxes, levies or other governmental charges. BD shall
cooperate with Accelr8 and take all reasonable steps necessary to allow Accelr8
to lawfully reduce or avoid such withholding taxes, levies or other governmental
charges, such cooperation to include the timely completion and filing of any
relevant forms and/or other documents. Accelr8 agrees that it shall take all
reasonable steps necessary to assist BD in obtaining a refund for any amounts
withheld.
3.4 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 or more than one claim of a patent.
ARTICLE 4 - REPORTS AND RECORDS
-------------------------------
4.1 After the first Commercial Sale of a Licensed Product, within sixty
(60) days after the last business day of each calendar quarter of each license
year of this NELA, Accelr8 shall submit to BD a written report with respect to
the preceding calendar quarter (the "Payment Report") stating: a) the quantities
of Licensed Products sold by Accelr8, and the monetary amount of all sales and
all deductions therefrom used to calculate Net Sales with respect to sales of
Licensed Products during the reporting period and the royalties due therefrom,
and (b) royalty-bearing sublicensing revenue and the sources thereof.
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4.2 Simultaneously with the submission of each Payment Report, Accelr8
shall make payments to BD of the amounts due for the calendar quarter covered by
the Payment Report. Payment shall be by check payable to BD and sent to the
address for BD set forth in Article 10, or to such other address as BD may
specify by notice hereunder, or, if requested by BD, by wire transfer of
immediately available funds to a bank and account identified by notice to
Accelr8 by BD.
4.3 Within sixty (60) days after the date of termination or expiration
of this NELA, Accelr8 shall pay BD any and all amounts that are due pursuant to
this NELA as of the date of such termination or expiration, together with a
Payment Report for such payment, except that such Payment Report shall cover the
period from the end of the last calendar quarter prior to termination or
expiration to the date of termination or expiration.
4.4 With respect to revenues obtained by Accelr8 in foreign countries,
Accelr8 shall make royalty payments to BD in United States Dollars. Royalty
payments for transactions outside the United States shall first be determined in
the currency of the country in which they are earned, and then converted to
United States dollars using the buying rates of exchange quoted by Citibank,
N.A. (or its successor) in New York, New York for the last business day of the
calendar quarter in which the royalties were earned.
4.5 Accelr8 shall maintain usual books of account and records showing
Net Sales of Licensed Products in sufficient detail to allow the royalties
payable by Accelr8 to be accurately determined. Upon reasonable notice, no more
than once per year, such books and records shall be open to inspection, during
usual business hours, by an independent certified public accountant (bound by an
obligation of confidentiality to Accelr8) to whom Accelr8 has no reasonable
objection, for two (2) years after the calendar quarter to which they pertain,
solely for purposes of verifying the accuracy of the amounts paid by Accelr8
under this NELA. The cost of any such inspection shall be borne by BD. In the
event that such review reasonably shows that Accelr8 has underpaid royalties by
more than five percent (5%), with respect to any calendar quarter, Accelr8 shall
pay, within thirty (30) days after demand by BD, the costs and expenses of such
review. If the inspection shows an overpayment, BD shall provide Accelr8 with a
credit against future royalties in an amount equal to such overpayment. All
information learned by BD in connection with any such audit shall be treated by
BD as Accelr8's Confidential Information hereunder.
ARTICLE 5 - PATENT MAINTENANCE
------------------------------
5.1 During the term of this Agreement, BD and Accelr8 shall jointly
prepare, apply for, prosecute, obtain and maintain ("Prosecute") patents and
applications for Program IP, using counsel to be chosen by mutual agreement.
Either party may, upon good cause, dismiss such counsel, whereupon the parties
shall mutually agree upon the selection of other counsel. Costs for Prosecution
of Program IP shall be shared equally by the Parties.
5.2 If one Party ("First Party") no longer wishes to support
Prosecution of a particular patent or application, it shall notify the other
Party ("Second Party") in writing. The Second Party shall have the right to take
over Prosecution thereof, in which case the First Party agrees to assign, and
does hereby assign, all right, title and interest in and to such patent or
application to the Second Party.
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5.3 If a dispute arises with respect to Prosecution, BD and Accelr8
shall first attempt to resolve the dispute through good faith discussions. If no
resolution is reached, to accommodate a relevant patent office deadline, either
party may, at its sole expense, refer the dispute to a patent attorney, to which
the other party has no reasonable objection, whose decision they shall agree to
and adopt.
5.4 In the event that either Accelr8 or BD become aware of any
potential infringement or misuse of Program IP, such Party shall notify the
other Party of the potential infringement or misuse in writing and provide a
summary of the relevant facts and circumstances. The Parties shall discuss
appropriate action with respect to such potential infringement or misuse.
ARTICLE 6 - REPRESENTATIONS
----------------------------
6.1 Accelr8 represents and warrants to BD that it has the lawful right
and authority to enter into this NELA without the consent or approval of another
person or entity. BD represents and warrants to Accelr8 that it has the lawful
right and authority to enter into this NELA without the consent or approval of
another person or entity.
ARTICLE 7 - INDEMNIFICATION
---------------------------
7,1 During the term of this NELA, each Party (the "Indemnitor") shall
indemnify, hold harmless and defend the other Party, and its officers, employees
and agents (the "Indemnitees") against any and all claims, suits, losses,
damage, costs, fees, and expenses resulting from or arising out of the
Indemnitor's exercise of the license granted to it hereunder. However, the
Indemnitor need not indemnify Indemnitees to the extent that a claim, suit,
loss, damage, cost, fee or expense arises out of the gross negligence or
intentional misconduct of an Indemnitee
7.1.1 The Indemnitor shall have the exclusive right to control
the defense of any such action, including the right to select counsel to defend
any Indemnitee, and to settle any claim.
7.1.2 The obligations of the Indemnitor stated in Article 7 shall
apply only if the relevant Indemnitee notifies the Indemnitor in writing within
fifteen (15) days following receipt of written notice of any claim or suit
brought against Indemnitee in respect of which Indemnitee intends to invoke the
provisions of this Article 7. The Indemnitor shall keep the Indemnitee informed
on a current basis of its defense of any claims pursuant to this Article 7.
7.2 IN NO EVENT WILL EITHER PARTY BE LIABLE FOR ANY INCIDENTAL, SPECIAL
OR CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE OF
LICENSED PRODUCTS.
ARTICLE 8 - ASSIGNMENT
----------------------
8.1 This NELA is not assignable and any attempt to do so shall be void,
without the express written approval of the other Party, which shall not be
unreasonably withheld, except in the case of the sale or transfer by a Party of
substantially the entire business to which the NELA pertains, in which case no
approval is needed. The rights and obligations of this NELA shall be binding
upon and inure to the benefit of the Parties and the respective successors and
assigns.
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ARTICLE 9 - TERMINATION
-----------------------
9.1 Unless otherwise terminated by operation of law or by acts of the
Parties in accordance with the terms of this NELA, this NELA shall terminate
upon the later of: twenty (20) years from the NELA Effective Date or expiration
of the last to expire patent within Program IP.
9.2 This NELA shall be terminable upon the material breach or default
of either Party. In the event of a material breach or default by a Party
("Defaulting Party"), the other Party ("non-Defaulting Party") shall give the
Defaulting Party written notice of the default and its election to terminate
this NELA effective at the expiration of a period of sixty (60) days from the
date of the notice. If the Defaulting Party fails to resolve the default in the
probation period by (i) curing the default, (ii) providing a written explanation
satisfactory to the Non-Defaulting Party that a default has not occurred, or
(iii) entering into a written agreement with the Non-Defaulting Party for the
cure or other resolution of the default, then this NELA shall terminate upon the
expiration of such sixty (60) day period. All termination rights shall be in
addition to and not in substitution for any other remedies that may be available
to the Non-Defaulting Party. Termination pursuant to this Article shall not
relieve the Defaulting Party from liability and damages to the Non-Defaulting
Party for default.
9.3 Any termination of this NELA for any reason does not relieve either
Party of any obligation or liability accrued prior to the termination or rescind
anything done by either Party and the termination does not affect in any manner
any rights of either Party arising under this NELA prior to the termination,
including, but not limited to, the right of BD to receive royalties under
Article 4.2.
9.4 The terms and conditions of the following provisions shall survive
termination or expiration of this NELA for as long as necessary to permit their
full discharge: Articles 4.5 (REPORTS AND RECORDS), 6 (REPRESENTATIONS), 7
(INDEMNIFICATION), 11 (CONFIDENTIALITY) and 12 (MISCELLANEOUS).
ARTICLE 10 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
-------------------------------------------------------
Any payment, notice or other communication pursuant to this NELA shall
be sufficiently made or given on the date of mailing if sent to such Party by
certified first class mail, postage prepaid or in the case of a notice or
communication faxed with return receipt confirmation of complete delivery and
followed up by a written copy delivered by first class mail, addressed to it at
its address below or as it shall designate by written notice given to the other
Party:
In the case of Accelr8:
0000 Xxxxx Xxxxxxxx
Xxxx. 0-000
Xxxxxx, Xxxxxxxx 00000
Fax: 000-000-0000
Attention: Xxxxxx X. Xxxxxx, Chairman and CEO
In the case of BD:
Becton, Xxxxxxxxx and Company
0 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxx 00000
Fax: 000-000-0000
Attention: Director / Strategic Planning and Business Development
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with a copy to :
Becton, Xxxxxxxxx and Company
0 Xxxxxx Xxxxx XX000
Xxxxxxxx Xxxxx, XX 00000
Fax: (000) 000-0000
Attention: Vice President, Chief Intellectual Property Counsel
ARTICLE 11 - CONFIDENTIALITY
----------------------------
11.1 With regard to Confidential Information, the receiving Party
agrees:
11.1.1 not to use the Confidential Information except for
purposes of this NELA ;
11.1.2 to safeguard Confidential Information against disclosure
to others with the same degree of care as it exercises with its own Confidential
Information of a similar nature, but in no event less than a reasonable degree
of care;
11.1.3 not to disclose Confidential Information to others (except
to its employees, agents or consultants who are bound by a like obligation of
confidentiality) without the express prior written permission of the disclosing
Party,
11..4 except that the receiving Party shall not be prevented from
using or disclosing any of the Confidential Information:
(a) which the receiving Party can demonstrate by
pre-existing, competent written records was previously known to it; or
(b) which is now, or becomes in the future, public knowledge
other than through acts or omissions of the receiving Party; or
(c) which is lawfully obtained by the receiving Party from
sources independent of the disclosing Party; and
(d) which are required by law to be disclosed, only to the
extent so required.
11.2 The secrecy obligations of the Parties with respect to
Confidential Information shall continue for a period ending five (5) years from
the termination date of this NELA.
11.3 Notwithstanding Article 11.1, the Parties shall have the right to
disclose Confidential Information (i) as necessary in the course of seeking or
enforcing patent rights, or obtaining regulatory approval to manufacture or
market Licensed Products, and (ii) as reasonably required in the course of any
actual or potential financing, business or sublicensing arrangement; provided,
however, that any disclosure under (ii) shall be pursuant to a confidentiality
agreement between the respective Party and such Third Party which preserves the
rights of the Parties hereunder.
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ARTICLE 12 - MISCELLANEOUS PROVISIONS
-------------------------------------
12.1 This NELA shall be construed, governed, interpreted and applied in
accordance with the laws of the State of New Jersey, without reference to choice
or law doctrine, 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. Any controversy arising hereunder, except as otherwise explicitly
stated, shall be subject to the exclusive jurisdiction of the courts located in
New Jersey and each Party hereby submits itself for the sole purpose of this
NELA and any controversy arising hereunder to the jurisdiction of the courts
located in the District of New Jersey and any courts of appeal therefrom, and
waives any objection on the grounds of lack of jurisdiction (forum non
conveniens or otherwise) to the exercise of such jurisdiction over it by any
such courts.
12.2 The Parties acknowledge that this NELA sets forth the entire
agreement and understanding of the Parties 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.
12.3 The provisions of this NELA are severable, and in the event that
any provisions of this NELA 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.
12.4 The failure of either Party to assert a right hereunder or to
insist upon compliance with any term or condition of this NELA 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. No waiver of any term or
condition of this NELA shall be effective unless in writing and signed by the
Party granting such waiver.
12.5 Neither Accelr8 nor BD shall be responsible for and the terms of
this NELA shall be inapplicable to any default or delays which are due to cause
beyond such Party's control, including but without limitation acts of God or of
the public enemy, acts or any order of a government, fires, floods, or other
natural disasters, embargoes, accidents, explosions, strikes, or other labor
disturbances (regardless of the reasonableness of the demands of labor),
shortages of fuel, power or raw materials, inability to obtain or delays of
transportation facilities, incidents of war, or other events causing the
inability of a Party acting in good faith with due diligence, to perform its
obligations under this NELA. 12.6 Neither Party shall use the name of the other
Party or any adaptation thereof in any publication, advertising, promotion,
sales literature or packaging without the prior written consent of the other
Party. Any press release, public announcement or Any press release, public
announcement or similar publicity by the Parties with respect to this NELA shall
be subject to the prior consent of the other Party, which consent shall not be
unreasonably withheld, unless such communication is required to be made by law
or pursuant to the rules and regulations of the Securities and Exchange
Commission or the New York Stock Exchange listing requirements or an equivalent
agency and after consultation and coordination between the Parties. Such press
release, public announcement or similar publicity shall be limited to the
existence of the NELA and shall not disclose the terms thereof. In the case of
required communication to agencies such as listed above, the terms of the NELA
shall be redacted unless prohibited by applicable laws or rules.
12.7 Nothing herein contained shall be construed to place the Parties
in the relationship of partners or joint venturers or principal and agent or
create any entity or association, and neither Party shall have the power to
obligate or bind the other in any manner whatsoever.
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IN WITNESS WHEREOF, the persons executing this Agreement in duplicate
originals, on behalf of the Parties hereto, represent and warrant, that they are
duly authorized officers and representatives and have authority to execute such
Agreement on behalf on their respective Party.
ACCELR8 TECHNOLOGY CORPORATION BECTON, XXXXXXXXX AND COMPANY
By: ________________________ By: __________________________________
Xxxxxx X. Xxxxxx Xxxxxxxx Xxxxx
Chairman and CEO President - Microbiology Systems
BD Diagnostics
Date: Date:
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Appendix D
[***][4 pages in total]
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