PATENT LICENSE AGREEMENT
WITH RESEARCH COMPONENT
TABLE OF CONTENTS
PREAMBLE
ARTICLES:
I DEFINITIONS
II GRANT
III DUE DILIGENCE
IV ROYALTIES
V REPORTS AND RECORDS
VI PATENT PROSECUTION
VII INFRINGEMENT
VIII PRODUCT LIABILITY
IX EXPORT CONTROLS
X NON-USE OF NAMES
XI ASSIGNMENT
XII TERM AND TERMINATION
XIII PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
XIV ARBITRATION
XV MISCELLANEOUS PROVISIONS
This Agreement is made and entered into this 15th day of December 1993
(the Effective Date), and revised and restated on 15th day of October 1996, by
and between THE UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC., a
not-for-profit corporation duly organized and existing under the laws of the
State of Florida and having its principal office at 000 Xxxxxxx Xxxx,
Xxxxxxxxxxx, Xxxxxxx, 00000-0000, X.X.X. (hereinafter referred to UFRFI), and
APOLLO GENETICS, INC., a corporation duly organized under the laws of the State
of Delaware and having its principal office at 000 Xxxxx Xxxxxx, Xxxxx 0000,
Xxxxxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter referred to as LICENSEE).
WITNESSETH
WHEREAS, UFRFI is the owner of certain "Patent Rights" (as later
defined herein) by assignment from the University of Florida (hereinafter
referred to as University) relating to UFRFI Case No. [ * ], and has the
right to grant licenses under said Patent Rights;
* Confidential treatment has been requested for marked portion
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WHEREAS, UFRFI desires to have the Patent Rights utilized in the public
interest and is willing to grant a license thereunder, subject only to a
royalty-free, non-exclusive license to be granted to the United States
government, as required by law;
WHEREAS, LICENSEE has represented to UFRFI to induce UFRFI to enter into
this Agreement, that LICENSEE is familiar with the development, production,
manufacture, marketing and sale of products similar to the "Licensed Product(s)"
(as later defined herein) and/or the use of the "Licensed Process(es)" (as later
defined herein) and that it shall commit itself to a thorough, vigorous and
diligent program of exploiting the Patent Rights commercially so that public
utilization and royalty income to UFRFI shall result therefrom;
WHEREAS, LICENSEE desires to obtain a license from UFRFI under the
Patent Rights upon the terms and conditions hereinafter set forth; and
WHEREAS, LICENSEE has certain additional research it desires which the
parties agree should be conducted by the University of Florida;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein the parties hereto agree as follows:
ARTICLE I - DEFINITIONS
For the purposes of this Agreement, the following words and phrases
shall have the following meaning:
1.1. "LICENSEE" shall mean all of the following:
(a) a related company of LICENSEE, the voting stock of which is
directly or indirectly at least fifty percent (50%) owned or
controlled by LICENSEE;
(b) an organization which directly or indirectly controls more
than fifty percent (50%) of the voting stock of LICENSEE;
(c) an organization, the majority ownership of which is directly
or indirectly common to the ownership of LICENSEE.
1.2. "Patent Rights" shall mean all of the following UFRFI intellectual
property:
(a) the United States and foreign patents and/or patent
applications listed in Exhibit A;
(b) United States and foreign patents issued from the
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applications listed in Exhibit A and from divisionals and
continuations of these applications;
(c) claims of U.S. continuation-in-part applications and foreign
continuation-in-part applications, and of the resulting
patents, which are directed to subject matter specifically
described in the U.S. and foreign applications listed in
Exhibit A;
(d) claims of all foreign patent applications, and of the
resulting patents, which are directed to subject matter
specifically described in the United States patents and/or
patent applications described in (a), (b), or (c) above;
(e) any reissues of United States patents described in (a), (b),
(c), or (d) above.
1.3. A "Licensed Product" shall mean any product or part thereof which:
(a) is covered or its use is covered in whole or in part by an
issued, unexpired claim or a pending claim contained in the
Patent Rights in the country in which any Licensed Product is
made, used or sold;
(b) is derived from Patent Rights, Know-How (as later defined
herein), and/or trade secrets related to or described in
Patent Rights;
(c) is sold, manufactured or used in any country under this
Agreement.
1.4. A "Licensed Process" shall mean any process or part thereof which:
(a) is covered in whole or in part by an issued, unexpired claim
or a pending claim contained in the Patent Rights in the
country in which any Licensed-Process is made, used or sold,
(b) is derived from Patent Rights, Know-How, and/or trade secrets
related to or described in Patent Rights;
(c) is sold, manufactured or used in any country under this
Agreement.
1.5. "Net Sales" shall mean LICENSEE's xxxxxxxx, for Licensed Products and
Licensed Processes produced hereunder invoiced to independent third
parties less the sum of the following:
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[ * ]
[ * ]
1.6. "Know-How" shall mean any and all technical data, information, or
knowledge which is developed by Xx. Xxxxxxxx and.coworkers as a result
of Project Work.
1.7. "Research Agreement" shall mean that agreement attached hereto as
Exhibit B with its associated terms and conditions.
1.8. "University Inventions" shall mean individually and collectively all
inventions, improvements and/or discoveries patentable or unpatentable,
which are conceived and/or made solely by one or more employees of
University in performance of the Project Work (as defined in the
Research Agreement). For the purposes of this Paragraph, the "making" of
inventions shall be governed by U.S. laws of inventorship.
1.9. "Joint Inventions" shall mean individually and collectively all
inventions, improvements and/or discoveries patentable or unpatentable,
which are conceived and/or made jointly by personnel of University
(including faculty and employees) and of LICENSEE in performance of the
Project Work (as defined in the Research Agreement). For the purposes of
this Paragraph, the "making" of inventions shall be governed by U.S.
laws of inventorship.
1.10. "University Patents" shall mean collectively and individually any and
all United States and foreign patent applications and any and all issued
United States Letters Patent and foreign patents owned by University
which pertain to University Inventions derived during Project Work (as
defined in the Research Agreement) under this Agreement.
1.11. "Joint Patents" shall mean collectively and individually any and all
United States and foreign patent applications and any and all issued
United States Letter Patents and
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foreign patents jointly owned by LICENSEE and University which pertain
to Joint Inventions derived during Project Work (as defined in the
Research Agreement) under this Agreement.
1.12. "Participating Sublicense" shall mean any sublicense whereby LICENSEE
and its sublicensee cooperate, through a strategic alliance, in the
development, manufacturing and/or commercialization of Licensed Product
or Licensed Process; and wherein there is a division or sharing of
responsibilities and/or expenses.
1.13. "Non-Participating Sublicense' shall mean any sublicense whereby
LICENSEE does not participate in development, manufacturing and/or
commercialization of Licensed Product or Licensed Process; and wherein
all expenses and responsibilities attendant thereto are borne
exclusively by sublicensee.
1.14. "Participating Sublicense Income" shall mean the net proceeds (including
advanced royalties or "lump-sum" payments) actually received by LICENSEE
for the grant of rights under Participating Sublicenses under the
license herein granted.
1.15. "Non-Participating Sublicense Income" shall mean the net proceeds
(including advanced royalties or "lump-sum" payments) actually received
by LICENSEE for the grant of rights under Non-Participating Sublicenses
under the license herein granted, after the deduction of all reasonable
legal costs, documented by credible written evidence provided to UFRFI,
actually incurred by LICENSEE in connection with the negotiation and
procurement of the pertinent sublicenses.
ARTICLE II - GRANT
2.1. UFRFI hereby grants to LICENSEE the right and license to make, have
made, use, lease and sell the Licensed Products and Licensed Processes
and Know-How throughout the world in any and all fields of use to the
end of the term for which the Patent Rights are granted unless sooner
terminated according to the terms hereof, subject to the non-exclusive
licensed granted to the United States Government.
2.2. In order to establish exclusivity for LICENSEE, UFRFI hereby agrees that
it shall not grant any other license to make, have made, use, lease and
sell Licensed Products or to utilize Licensed Processes throughout the
world in any and all fields of use during the period of time commencing
with the Effective Date of this Agreement and terminating with the
expiration of this Agreement.
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2.3. UFRFI reserves the right to practice under the Patent Rights for its own
noncommercial research purposes.
2.4. LICENSEE shall have the right to enter into sublicensing agreements for
the rights, privileges and licenses granted hereunder. However, Licensee
shall notify UFRFI in writing of the initiation of license negotiations
with all potential sublicenSees.
2.5. LICENSEE hereby agrees that every Non-Participating Sublicense
agreement to which it shall be a party and which shall relate to the
rights, privileges and license granted hereunder shall contain a
statement setting forth the date upon which LICENSEE's exclusive rights,
privileges and license hereunder shall terminate. LICENSEE agrees that
any sublicense granted hereunder shall provide that the obligations to
UFRFI under Article I (Definitions), II (Grants), V (Reports and
Records), VII (Infringement), VIII (Product Liability), IX (Export
Controls), X (Non-Use of Names), XII (Term and Termination), XIV
(Arbitration), and XV (Miscellaneous Provisions) of this Agreement shall
be binding on upon the sublicensee as if it were a party to this
Agreement. LICENSEE further agrees to attach copies of such Articles to
each sublicense agreement.
2.6. LICENSEE hereby agrees that every Participating Sublicense agreement to
which it shall be a party and which shall relate to the rights,
privileges and license granted hereunder shall not breach any terms of
this Agreement.
2.7. LICENSEE agrees to forward to UFRFI a copy of any and all
Non-Participating Sublicense agreements within thirty (30) days of the
execution of such sublicense agreements and further agrees to forward to
UFRFI annually a copy of such reports received by LICENSEE from its
sublicensees during the preceding twelve (12) month period under the
sublicenses as shall be pertinent to a royalty accounting under said
sublicense agreements.
2.8. Should LICENSEE receive from sublicensees anything of value in lieu of
cash payments in consideration for any sublicense under this Agreement,
LICENSEE and UFRFI shall negotiate in good faith to determine the
corresponding monetary value of the non-cash payments, and to arrive at
an equitable disposition.
2.9. The license granted hereunder shall not be construed to confer any
rights upon LICENSEE by implication, estopped or otherwise as to any
technology not specifically set forth herein.
2.10. UFRFI hereby grants to LICENSEE an exclusive option to negotiate for an
exclusive license to sublicense, manufacture, use and sell products and
processes based on
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or a under University Inventions, University Patents and the
University's component of Joint Inventions arising under Project Work as
described and defined in Exhibit B. and UFRFI shall use its best efforts
to obtain assignment of any inventions or portions thereof conceived
and/or made by students of the University in their performance of the
Project Work. This option shall extend for a period of six (6) months
after the date of conception and disclosure to LICENSEE of any
University Inventions in the area of [ * ] During such option period,
University shall not offer these rights to any third party. LICENSEE
shall exercise its option to negotiate for an exclusive license by
providing to UFRFI written notice of such exercise and the parties
hereto shall commence the negotiation, in good faith, of the said terms
including, but not limited to royalty, license fee, and due diligence to
commercialize products within thirty (30) days of LICENSEE's notice to
UFRFI. The parties hereto shall use all reasonable effort to reach
agreement relative to said terms within six (6) months of commencement
of said negotiation. The following factors shall be considered by the
parties: Should LICENSEE request a license to any University Invention
or University Patent which is subject to this Agreement after the
expiration or the option period granted herein, University, if it has
not exclusively licensed such University Invention or University Patent
and is not in active negotiations therefore prior to LICENSEE's request,
shall negotiate with LICENSEE for a license as provided hereunder. If
University has non-exclusively licensed those University Inventions or
University Patents prior to LICENSEE's request, University shall grant
to LICENSEE, as above, a non-exclusive license under terms and
conditions at least as favorable as the previous non-exclusive license.
2.11. Any patent applications made or patents issued from Joint Inventions
shall be filed in University's and LICENSEE's names, and the portion
and/or claims thereof not made by University personnel shall belong to
LICENSEE and shall not be subject to the provisions of this Agreement.
In determining royalty rates in licenses to such patent applications or
patents resulting from the joint effort of LICENSEE and University,
there shall be taken into consideration the relative contributions of
the respective joint inventors of the invention.
2.12. Any controversy, dispute or claim arising out of, or relating to, any
provisions of this Paragraph 2 which cannot otherwise be resolved by
good faith negotiations between the parties shall be resolved by
arbitration in accordance with the provisions of Article XIV of this
Agreement.
2.13. LICENSEE agrees that for Licensed Products covered by
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Patent Rights that are subject to the non-exclusive royalty-free a
license-to the United States government, such Licensed Products will be
manufactured substantially in the United States, in accordance with
applicable federal law.
2.14. LICENSEE further agrees that it shall abide by all rights and
limitations of U.S. Code Title 35, Chapter 38, and implementing
regulations thereof, for all patent applications and patents invented in
whole or in part with federal money.
ARTICLE III - DUE DILIGENCE
3.1. LICENSEE shall use diligent efforts to bring one or more Licensed
Products or Licensed Processes to market through a thorough, vigorous
and diligent program for exploitation of the Patent Rights to attain
maximum commercialization of Licensed Products and Licensed Processes,
including sponsoring of research at UFRFI pursuant to the Research
Agreement, providing UFRFI with a minimum total of [ * ] Dollars
($[ * ]) over [ * ].
3.2. LICENSEE's failure to perform in accordance with Paragraph 3.1 above
shall be grounds for UFRFI to terminate this Agreement pursuant to
Paragraph 12.4 hereof.
ARTICLE IV - ROYALTIES
4.1. For the rights, privileges and license granted hereunder, LICENSEE shall
pay royalties to UFRFI in the manner hereinafter provided to the end of
the term of the Patent Rights or until this Agreement shall be
terminated as hereinafter provided:
(a) An annual license maintenance fee payable commencing on
January 1, 1999 and on January 1 of each year thereafter;
provided, however, that such fee shall be waived: (i) for each
year that the Research Agreement continues in effect beyond
its initial term of three (3) years; or (ii) for each year in
which LICENSEE milestones for such year have been achieved.
The LICENSEE milestones shall be the subject of mutual
agreement and are attached hereto and incorporated herein by
reference as Exhibit C. The first License Maintenance Fee
shall be the sum of [ * ] Dollars ($[ * ]), and
each successive License Maintenance Fee payable hereunder
shall be increased by [ * ] Dollars ($[ * ]) until
the license maintenance fee is [ * ] Dollars
($[ * ]). Thereafter, the License Maintenance Fee shall be
[ * ] Dollars ($[ * ]) per year during the
remainder
* Confidential treatment has been requested for marked portion
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of the term of this Agreement. The License Maintenance Fee for
a given year shall be creditable against any running royalties
subsequently due during said year-under subparagraph 4.1(b)
below.
(b) Running royalty in an amount equal to [ * ] Percent
([ * ]%) of the Net Sales actually received by LICENSEE
of the Licensed Products and Licensed Processes sold by or for
LICENSEE [ * ].
4.2. In the event LICENSEE grants any Non-Participating Sublicenses during
the term of this Agreement, then for each such Sublicense, LICENSEE
shall pay UFRFI a royalty at the rate of [ * ] percent ([ * ]%) of
the Non-Participating Sublicense Income collected by LICENSEE under such
sublicense.
4.3. No multiple royalties shall be payable in the event that any Licensed
Product or Licensed Process is covered by more than one patent or claim
under Patent Rights as herein defined.
4.4. Royalty payments shall be paid in United States dollars in Gainesville,
Florida or at such other place as UFRFI may reasonably designate
consistent with the laws and regulations of any foreign country. If any
currency conversion shall be required in connection with the payment of
royalties hereunder, such conversion shall be made by using the exchange
rate prevailing at the Chase Manhattan Bank (N.A.) on the last business
day of the calendar quarterly reporting period to which such royalty
payments relate.
4.5. In the event that any taxes, withholding or otherwise, are levied by any
taxing authority in connection with accrual or payment of any royalties
payable by LICENSEE under this Agreement, and LICENSEE determines in
good faith that it must pay such taxes, LICENSEE shall have the right to
pay such taxes to the local tax authorities on behalf of UFRFI and
payment of the net amount due after reduction by the amount of such
taxes, shall fully satisfy LICENSEE's royalty obligations under this
Agreement. LICENSEE shall provide UFRFI with appropriate receipts or
other documentation supporting such payment. LICENSEE shall inform UFRFI
in writing, within thirty (30) days of notification that taxes will or
have been levied by a taxing authority.
ARTICLE V - REPORTS AND RECORDS
5.1. LICENSEE shall keep full, true and accurate books of account containing
all particulars that may be necessary for the purpose of showing the
amounts payable to UFRFI
* Confidential treatment has been requested for marked portion
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hereunder. Said books of account shall be kept at LICENSEE's principal
place of business or the principal place of business of the appropriate
division of LICENSEE to which this Agreement relates. Said books and the
supporting data shall be open to inspection on behalf of UFRFI, after
sales of Licensed Product commence, upon reasonable notice during
reasonable business hours to the extent necessary for the purpose of 5
verifying LICENSEE's royalty statement. Such inspection shall be made
not more than often than once each calendar year at the expense of UFRFI
by a Certified Public Accountant appointed by UFRFI and to whom LICENSEE
has no reasonable objection. LICENSEE shall not be required to retain
such records for more than five (5) years after the close of any
calendar half-year.
5.2. Licensee, within forty-five (45) days after June 30 and December 31, of
each year, shall deliver to UFRFI true and accurate reports, giving such
particulars of the business conducted by LICENSEE and its sublicensees
during the preceding six-month period under this Agreement as shall be
pertinent to a royalty accounting hereunder. These shall include at
least the following;
(a) number of Licensed Products manufactured and sold.
(b) total xxxxxxxx for Licensed Products sold.
(c) accounting for all Licensed Processes used or sold.
(d) deductions applicable as provided in Paragraphs 1.5 and 1.15.
(e) total royalty due.
(f) names and addresses of all sublicensees of LICENSEE and copies
of reports submitted by sublicensees.
(g) A progress report on patent filings in each country, including
the serial number, name of patent application, name of
inventors and status of each patent application covering
Licensed Products or Licensed Processes.
5.3. With each such report submitted, LICENSEE shall pay to UFRFI the
royalties due and payable under this Agreement. If no royalties shall be
due, LICENSEE shall so report.
5.4. The royalty payments and license maintenance fees set forth in this
Agreement shall, if overdue, bear interest until payment at the monthly
rate of one percent (1%). The payment of such interest shall not
preclude UFRFI from exercising any other rights it may have as a
consequence of the lateness of any payment.
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5.5. On or before the sixtieth (60th) day following the close of LICENSEE's
fiscal year, LICENSEE shall provide UFRFI with a financial statement for
the preceding fiscal year. Such financial statements shall be unaudited
until and unless LICENSEE'S stock becomes publicly traded.
ARTICLE VI - PATENT PROSECUTION
6.1. LICENSEE shall, in the name of the University of Florida, apply for,
seek issuance of, and maintain during the term of this Agreement the
Patent Rights in the United States and in foreign countries. The
prosecution, filing and maintenance of all Patent Rights patents and
applications shall be the primary responsibility of LICENSEE. LICENSEE
shall seek patent extension for patents licensed under the Patent Rights
in the United States and in such foreign countries as may be designated
by LICENSEE, under such applicable laws and regulations throughout such
countries, where such patent extension rights are available currently or
are available in the future. LICENSEE shall keep University advised as
to all developments with respect to the Patent Rights and shall supply
to University copies of all correspondence and papers received in
connection therewith within ten (10) business days of receipt or filing
thereof. As required by law, LICENSEE must provide all correspondence to
and advise UFRFI in a timely manner in order to permit UFRFI to comment
on all actions before they are taken by LICENSEE's patent counsel. All
final decisions with respect to prosecution of the Patent Rights are
reserved to UFRFI, as required by law.
6.2. Payment of all fees and costs relating to the filing, prosecution, and
maintenance of the Patent Rights shall be the responsibility of
LICENSEE.
6.3. If LICENSEE desires that a patent application be filed on University
Inventions, LICENSEE shall promptly prepare, file and prosecute a patent
application or applications in the University's name, and/or any
pertinent continuation, continuation-in-part and/or reissue
application(s) thereof in the United States directed to such University
Inventions. University shall thereafter assign all such University
Inventions to UFRFI. LICENSEE shall bear all expenses incurred in
connection with such preparation, filing and prosecution of U.S. and
foreign patent application(s) and patents directed to University
Inventions. UFRFI shall cooperate with LICENSEE to assure that such
application or applications, and any such continuation, continuation-in
part and/or reissue application(s) thereof will cover, to the best of
LICENSEE's knowledge, all items of commercial interest and importance.
UFRFI shall have the right to advise and cooperate with LICENSEE in such
prosecution, and such advice shall not be rejected unreasonably.
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6.4. If LICENSEE elects not to exercise its option(s) pursuant to this
Agreement, or decides to discontinue the financial support of the
prosecution or maintenance of the protection of the Patent Rights in the
United States and in foreign countries, or is grossly negligent in its
prosecution or maintenance of the protection thereof, UFRFI shall be
free a to file or continue prosecution or maintain any such
application(s), and to maintain any protection issuing thereon in the
U.S. and in any foreign country at UFRFI's sole expense.
ARTICLE VII - INFRINGEMENT
7.1. LICENSEE shall inform UFRFI promptly in writing of any alleged
infringement of the Patent Rights by a third party and of any available
evidence thereof.
7.2. During the term of this Agreement, LICENSEE and/or sublicensees shall
have the primary responsibility to prosecute any alleged infringement of
Patent Rights. UFRFI shall have the right, but not the obligation, to
share up to [ * ]% of the costs, or [ * ]% if LICENSEE and/or
sublicensees choose not to prosecute. Either party may claim the other
as co-plaintiff. The total cost of any such infringement action shall be
shared appropriately with respect to expenses incurred. No settlement,
consent judgment or other voluntary final disposition of the suit may be
entered into without the consent of UFRFI, which consent shall not
unreasonably be withheld; provided, however, that LICENSEE shall
indemnify UFRFI against any order for costs that may be made against
UFRFI in such proceedings, in accordance with this Paragraph.
7.3. In the event that LICENSEE shall undertake the enforcement and/or
defense of the Patent Rights by litigation, LICENSEE may withhold up to
[ * ] percent ([ * ]%) of the royalties otherwise thereafter due UFRFI
hereunder and apply the same toward reimbursement of its expenses,
including reasonable attorneys' fees, in connection therewith. Said
withholding of royalties shall begin no earlier than the date LICENSEE
first receives a xxxx for professional services or expenses associated
with the enforcement and/or defense of the Patent Rights. Any recovery
of damages by LICENSEE for any such suit shall be applied first in
satisfaction of any unreimbursed expenses and legal fees of LICENSEE
relating to the suit, and next toward reimbursement of UFRFI for any
royalties past due or withheld with interest and applied pursuant to
this Article VII. Any additional monies recovered from the settlement of
any such suit shall be shared on a pro rata basis between LICENSEE
and/or sublicensees and UFRFI according to the respective percentages of
costs borne by each in such suit.
7.4. In any infringement suit as either party may institute to
* Confidential treatment has been requested for marked portion
12
enforce the Patent Rights pursuant to this Agreement, the other party
hereto shall, at the request and expense of the party initiating such
suit, cooperate in all respects and, to the extent possible, have its
employees testify when requested and make available relevant records,
papers, information, samples, specimens, and the like.
7.5. In the event that LICENSEE or any of its sublicensees are sued (or such
suit is threatened in writing) for infringement of a third party's
patent because of the use of a Licensed Product or Licensed Process,
LICENSEE shall promptly notify UFRFI and LICENSEE and/or its
sublicensees shall have the sole right, in its discretion, to control
the defense of such suit at its own expense. UFRFI shall have the right
to be represented by its own counsel at its own expense. If LICENSEE
and/or its sublicensees do not elect within sixty (60) days of receiving
notice to control the defense of such suit, UFRFI may undertake such
control at its own expense and LICENSEE and/or its sublicensees shall
have the right to be represented by its own counsel at its own expense.
The parties shall cooperate fully in the defense of such suit. The party
financing the suit shall consult with and consider the interests of the
other, and may not settle any part of the suit or otherwise consent to
an adverse judgment in such suit that diminishes the rights or interests
of the non-financing party, including any interpretation of Patent
Rights, without the express written consent of the non-financing party.
ARTICLE VIII - PRODUCT LIABILITY
8.1. LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold UFRFI and the University, their
trustees, officers, employees and affiliates, harmless against all
claims and expenses, including legal expenses and reasonable attorneys'
fees whether arising from a third party claim or resulting from UFRFI's
enforcing this indemnification clause against LICENSEE, or arising out
of the death of or injury to any person or persons or out of any damage
to property and against any other claim, proceeding, demand, expense and
liability of any kind whatsoever resulting from the production,
manufacture, sale, use, lease, consumption or advertisement of the
Licensed Product(s) or Licensed Process(es) or arising from any
obligation of LICENSEE hereunder. LICENSEE's indemnification under this
Paragraph 8.1 shall not apply to any liability, damage, loss or expense
to the extent that it is attributable to the intentional wrongdoing or
intentional misconduct of UFRFI and the University, their trustees,
officers, employees and affiliates.
8.2. In the event any such action is commenced or claim made or threatened
against UFRFI or other indemnitees whom
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LICENSEE is obligated to indemnify or hold harmless, UFRFI or the other
indemnitees shall promptly notify LICENSEE of such event. LICENSEE shall
have the right to participate in the defense of that part of any such
claim or action commenced or made against UFRFI (or other indemnitees)
which relates to LICENSEE's indemnification, and LICENSEE shall not be
liable to UFRFI or other indemnitees in account of any settlement of any
such claim or litigation affected without a LICENSEE's consent, which
consent shall not be unreasonably withheld or delayed.
8.3. As of the first commercial sale of a Licensed Product or first
commercial use of a Licensed Product, LICENSEE and/or sublicensees shall
obtain, and carry in full force and effect, liability insurance which
shall protect LICENSEE and UFRFI in regard to events covered by
Paragraph 8.1 above.
8.4. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, UFRFI MAKES
NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, AND VALIDITY OF PATENT RIGHTS CLAIMS,
ISSUED OR PENDING.
ARTICLE IX - EXPORT CONTROLS
LICENSEE hereby agrees that it shall not sell, transfer, export or
re-export any Licensed Products or Licensed Processes 13 or related information
in any form, or any direct products of such information, except in compliance
with all applicable laws, including the export laws of any U.S. government
agency and any regulations thereunder, and will not sell, transfer, export or
re-export any such Licensed Products or Licensed Processes or information to any
persons or any entities with regard to which there exist grounds to suspect or
believe that they are violating such laws. LICENSEE shall be solely responsible
for obtaining all licenses, permits or authorizations required from the U.S. and
any other government for any such export or re-export. To the extent not
inconsistent with this Agreement, UFRFI agrees to provide LICENSEE with such
assistance as it may reasonably request in obtaining such licenses, permits or
authorization.
ARTICLE X - NON-USE OF NAMES
LICENSEE and UFRFI shall not use each others names nor the names of any
of either institution's employees, nor any adaptation thereof, in any
advertising, promotional or sales literature without prior written consent
obtained from the other party in each case, except that LICENSEE and UFRFI may
state that such license is in effect.
ARTICLE XI - ASSIGNMENT
This Agreement is not assignable and any attempt to do so
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shall be void except in the case of a transfer of substantially all of the
assets of one of the parties hereto. This Agreement shall bind the parties,
their successors resulting from merger, and their permitted assigns.
ARTICLE XII - TERM AND TERMINATION
12.1. Unless earlier terminated as hereinafter provided, this Agreement shales
remain-in full force and effect until the last to expire of any patent
claim included in the Licensed Products.
12.2. If LICENSEE shall cease to carry on its business, this Agreement shall
terminate upon notice by UFRFI.
12.3. Should LICENSEE fail to pay UFRFI royalties due and payable hereunder,
UFRFI shall have the right to terminate this Agreement on thirty (30)
days' notice, unless LICENSEE shall pay UFRFI within the thirty (30) day
period, all such royalties and interest due and payable. Upon the
expiration of the thirty (30) day period, if LICENSEE shall not have
paid all such royalties and interest due and payable, the rights,
privileges and license granted hereunder shall terminate.
12.4. Upon any material breach or default of this Agreement by LICENSEE, other
than those occurrences set out in Paragraphs 12.2 and 12.3 above, which
shall always take precedence in that order over any material breach or
default referred to 14 in this Paragraph 12.4, UFRFI shall have the
right to terminate this Agreement and the rights, privileges and license
granted hereunder by ninety (90) days notice to LICENSEE. Such
termination shall become effective unless LICENSEE shall have cured or
commenced good faith remedial action acceptable to UFRFI any such breach
or default prior to the expiration of the ninety (90) day period. If
UFRFI terminates this Agreement pursuant to the terms hereof, the
Research Agreement shall concurrently terminate on the effective date of
termination of this Agreement, and the Research Agreement shall be
terminated in accordance with Paragraph 4.2 and Article X of the
Research Agreement.
12.5. LICENSEE shall have the right to terminate this Agreement at any time on
six (6) months' written notice to UFRFI, and upon payment of all amounts
due UFRFI through the effective date of the termination.
12.6. UFRFI may terminate this Agreement upon the occurrence of the third
separate default by LICENSEE within any consecutive three (3) year
period for failure to pay royalties when due.
12.7. Upon termination of this Agreement for any reason, nothing herein shall
be construed to release either party from any
15
obligation that matured prior to the effective date of such termination.
LICENSEE and any sublicensee thereof may, however, after the effective
date of such termination, sell all Licensed Products, and complete
Licensed Products in the process of manufacture at the time of such
termination and sell the same, provided that LICENSEE shall pay to UFRFI
the royalties thereon as required by Article IV of this Agreement and
shall submit the reports required by Article V hereof on the sales of
Licensed Products.
12.8. Upon termination of this Agreement, any sublicensee not then in default
or in threat of default as documented by reports as per Section 5.2
shall have the right to seek a license from UFRFI.
12.9. BANKRUPTCY.
(a) Notice of Assumption of Rejection.
(i) In the event that either party files or has filed against
it a petition under the Federal Bankruptcy Code (11 U.S.C. Sections 1,
ET SEQ.) (the "Bankruptcy Code"), is adjudged bankrupt, or files or has
filed against it a petition for reorganization or arrangement under any
law relating to bankruptcy or similar laws for the protection of
debtors, whether under the laws of the United States and its political
subdivisions or otherwise, such party shall (1) notify the other party
thereof within ten (10) days after the filing of such petition or such
adjudication, and (2), within thirty (30) days after the filing of such
petition, shall notify the other party of the party's assumption or
rejection of this Agreement, and shall file a petition with the
appropriate court for approval of all other action as may be necessary
to obtain the approval of such petition and of such assumption of
rejection.
(ii) If such party does not: (1) within thirty (30) days
after the occurrence of any of the foregoing events, notify the other
party of its assumption or rejection of this Agreement or file the
petition, or (2) thereafter diligently take all other action necessary
for the approval of the foregoing petition or of such assumption or
rejection, such party shall be deemed to have rejected this Agreement.
Each party acknowledges that, for purposes of Section 365 of the
Bankruptcy Code and similar provisions of any other or future similar
laws relating to any party's assumption or rejection of any executory
contract, a period of thirty (30) days after the date of any filing or
adjudication described above shall constitute a reasonable time in which
such party shall assume or reject this Agreement and a party shall be
deemed to have not diligently taken all action necessary for the
approval of the foregoing petition or of such
16
assumption or rejection if such petition, assumption or rejection is not
approved by the-appropriate court within sixty (60) days after the
filing of the petition for such assumption or rejection.
(b) Conditions to Assumption.
No election by any party, or any successor-in-interest to such
party, to assume this Agreement as contemplated by paragraph
(a) above shall be effective unless each of the following
conditions, each of which each party acknowledges is
commercially reasonable in the context of a bankruptcy or
similar proceeding, has been satisfied by such party and each
of the other parties has acknowledged such satisfaction in
writing:
(1) CURE. Such party has cured, or has provided the other
party adequate assurances that:
(A) Monetary Defaults. Within ten (10) days from
the date of such assumption such party will
cure all monetary defaults under this
Agreement; and
(B) Non-Monetary Defaults. Within thirty (30)
days from the date of such assumption such
party will cure all non-monetary defaults
under this Agreement.
(2) PECUNIARY LOSS. Such party has compensated or has
provided to the other party adequate assurances that
within ten (10) days from the date of assumption the
other party will be compensated for any pecuniary loss
incurred by the party arising from any default of such
party under this Agreement prior to the assumption.
(3) FUTURE PERFORMANCE. Such party has provided the other
party with adequate assurances of the future
performance of such party's obligations under this
Agreement.
(c) Termination.
This Agreement shall terminate upon the rejection of this
Agreement as contemplated by this Paragraph by any party or
successor-in-interest thereto.
17
(d) No Transfer.
Neither any party's interest in this Agreement nor any portion
thereof shall pass to any trustee, receiver, or assignee for
the benefit of creditors, or any other person or entity or
otherwise by operation of law under the Bankruptcy Code or the
insolvency laws of any state having jurisdiction of the person
or property of such party unless the other party shall consent
to such transfer in writing.
ARTICLE XIII - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such party
by certified first class mail, postage prepaid, or facsimile with confirmation,
addressed to it at its address below or as it shall designate by written notice
given to the other party:
In the case of UFRFI:
President
University of Florida Research Foundation, Inc.
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
Facsimile: (000) 000-0000
With a copy to:
Director
Office of Technology Licensing
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
Facsimile: (000) 000-0000
All payments to:
Business Office
University of Florida Research Foundation, Inc.
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
PLEASE MAKE ALL CHECKS PAYABLE TO:
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
18
In the case of LICENSEE:
President
Apollo Genetics, Inc.
000 Xxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Facsimile: (000) 000-0000
With a copy to:
Xxxxxxxx & Sunstein
000 Xxxxxx Xxxxxx
Xxxxxx, XX 00000-0000
Facsimile: (000) 000-0000
ARTICLE XIV - ARBITRATION
14.1. Any controversy or claim arising out of, or relating to, any provisions
of this Agreement or the breach thereof which cannot otherwise be
resolved by good faith negotiations between the parties shall be
resolved by final and binding arbitration under the rules of the
American Arbitration Association, or the Patent Arbitration Rules if
applicable, then obtaining.
14.2. Notwithstanding the foregoing, nothing in this Article XIV shall be
construed to waive any rights or timely performance of any obligations
existing under this Agreement.
ARTICLE XV - MISCELLANEOUS PROVISIONS
15.1. The parties hereto acknowledge that this Agreement sets forth the entire
Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change of modification
except by the execution of a written instrument subscribed to by the
parties hereto.
15.2. The provisions of this Agreement are severable, and in the event that
any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or
enforceability of the remaining provisions hereof.
15.3. LICENSEE agrees to xxxx the Licensed Products sold in the United States
with all applicable United States patent numbers. All Licensed Products
shipped to or sold in other countries shall be marked in such a manner
as to conform with the patent laws and practice of the country of
manufacture or sale.
15.4. The failure of either party to assert a right hereunder or
19
to insist upon compliance with any term or condition of this Agreement
shall not constitute a waiver of that right or excuse a similar
subsequent failure to perform any such term or condition by the other
party.
15.5. The parties adopt and incorporate Article VII, the confidentiality
section of the attached Research Agreement, as though incorporated
herein.
15.6. For the purpose of this Agreement and all services to be provided
hereunder, both parties shall be, and shall be deemed to be, independent
contractors and not agents or employees of the other. Neither party
shall have authority to make any statements, representations or
commitments of any kind, or to take any action, that will be binding on
the other party.
15.7. This Agreement may be signed in counterparts which collectively shall
constitute a single agreement.
15.8. Neither party shall be in breach hereof by reason of its delay in the
performance of or failure to perform any of its obligations hereunder,
if that delay or failure is caused by strikes, acts of God or the public
enemy, riots, incendiaries, interference by civil or military
authorities, compliance with governmental priorities for materials, or
any fault beyond its control or without its fault or negligence.
15.9. The parties each, at any time or from time to time, shall execute and
deliver or cause to be delivered such further assurances, instruments or
documents as may be reasonably necessary to fulfill the terms and
conditions of this Agreement.
20
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
and duly executed this Agreement the day and year set forth below.
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INC.
By /s/ Xxxxxx X. Xxxxx
--------------------------------
Name: Xxxxxx X. Xxxxx
Title: Director of Licensing
Date: 10/15/96
APOLLO GENETICS, INC.
By /s/ Xxxxxxxxx Xxxxxx
--------------------------------
Name Xxxxxxxxx Xxxxxx, PhD
Title President
Date 10/15/96
00
Xxxxxxx X
XXXXXX XXXXXX AND FOREIGN PATENTS AND/OR APPLICATIONS
Application/
Country/region Serial Number Filing Date Title Status
-------------- ------------- ----------- ----- ------
[ * ]
[ * ]
* Confidential treatment has been requested for marked portion
EXHIBIT B
CORPORATE
RESEARCH AGREEMENT
TO ACCOMPANY LICENSE AGREEMENT
See Exhibit 10.10 to the Registration Statement
