EXHIBIT 10.25
EXCLUSIVE LICENSE AGREEMENT
Between
Washington University
Licensor
And
AspenBio, Inc.
Licensee
Introduction: This Agreement is made and entered into this 1st day of May, 2004
by and between The Washington University, a corporation established by special
act of the Missouri General Assembly approved February 22, 1853 and acts
amendatory thereto, having its principal office at Xxx Xxxxxxxxx Xxxxx, Xx.
Xxxxx, Xxxxxxxx 00000, [through its School of Medicine] (hereinafter "WU") and
AspenBio, Inc. with its principal offices at 0000 Xxxxx Xxxxx Xx., Xxxxxx Xxxx,
XX 00000, hereinafter "Aspen". WU and Aspen may be referred to individually as a
"Party" or collectively as the "Parties".
1. Background. WU is the owner of certain Patent Rights, Tangible Research
Property and Technical Information (collectively, Intellectual Property as
defined below, which relates to and includes the items described on Exhibit
A ) developed in the laboratory of Xx Xxxxxx Xxxxx relating to animal
fertility hormones and DNA constructs thereof and WU has the right to grant
licenses thereto. WU wishes to allow the Intellectual Property to be used
to further scientific research and for new product development and other
applications in the public interest and is willing to grant a license for
such uses. Aspen represents to WU that it has the necessary product
development, manufacturing and marketing capabilities to commercialize
products based on such Intellectual Property. Aspen desires to obtain a
license to use these properties and information for its own commercial
research and development endeavors upon the terms and conditions set forth
in this Agreement. In consideration of these premises and the mutual
promises contained herein, the Parties further agree as follows.
2. Definitions. For the purposes of this Agreement, the following words and
phrases will have the meanings assigned to them below.
2.1 Agreement: This Exclusive License Agreement.
2.2 Calendar Half: Each six-month period, or portion thereof, beginning on
January 1 or July 1.
2.3 Combination Product: Any product that is comprised in part of a Licensed
Product and in part of one or more other components which are not
themselves Licensed Products (the "Other Components"). Other Components do
not include surfactants, diluents and carriers and are not licensed
products subject to fees under a license from a third party.
2.4 Development Plan: Aspen's documentary plan for the development,
manufacture, promotion, importation, sale and/or marketing of Licensed
Products, as more fully described in Article 4.1.
2.5 Effective Date: May 1, 2004
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2.6 Field: Production for Veterinary Use of Washington University Intellectual
and Tangible Property.
2.7 First Commercial Sale: The date of first transfer by Aspen and/or its
Sublicensees to an unrelated third party of a Licensed Product for
compensation (including equivalent cash value for trades or other non-cash
payments). The transfer of Licensed Products by Aspen or its Sublicensees
strictly for their own laboratory research and development purposes,
beta-testing and/or clinical testing does not constitute a First Commercial
Sale for the purposes of this Agreement, provided that Aspen or its
Sublicensees receive no payment for such Licensed Product in excess of the
fully burdened (i.e., direct and indirect) costs of producing and
transporting such materials.
2.8 Intellectual Property: Patent Rights patents and patent applications,
trademarks, service marks, copyrights, mask works, trade secrets, Tangible
Research Property and Technical Information, including but not limited to
the items listed on Exhibit A.
2.9 Licensed Product: Any product which is made, made for, used, sold or
imported by Aspen and any Sublicensees which: (a) in the absence of this
License Agreement would infringe at least one Valid Claim, or (b) uses a
process covered by a Valid Claim. Licensed Product includes any product
made, and method or process used, in whole or in part using Tangible
Research Property or Technical Information.
2.10 Aspen and its affiliates. Affiliate means any person or entity which,
directly or indirectly, owns or controls Aspen, or which is controlled by
or under common control with Aspen. For purposes of this definition,
control means a person or entity's direct or indirect ownership of more
than 50% of the outstanding voting securities of a corporation, the direct
or indirect ownership by a person or entity of more than 50% of the
outstanding voting shares of another entity, the right to receive more than
50% of the earnings of a person, corporation or other entity, or the right
to control the business decisions of a person, corporation or other entity.
2.11 Gross Sales: Amounts received by Aspen for Sales of Licensed Products prior
to reduction for qualifying costs or taxes but after deductions for returns
and discounts and after deductions for non-collectible amounts.
2.12 Patent Rights: The patents and patent applications listed in Exhibit A,
attached hereto and incorporated by reference herein, and all foreign
counterparts, continuations, continuations-in-part, divisions, extensions,
reexaminations and reissues thereof, which trace their earliest priority
filing date by unbroken lineage to a patent or patent application listed in
Exhibit A.
2.13 Sale: Any transaction in which a Licensed Product is exchanged for value. A
Sale of a Licensed Product will be deemed to have been made at the time
Aspen or its Sublicensee invoices, ships, or receives value for, whichever
occurs first, a Licensed Product.
2.14 Sublicensee: A person or entity to which Aspen has granted a sublicense
under the license rights granted to Aspen in Article 3 of this Agreement.
2.15 Sublicensing Revenue: All value received by Aspen from its Sublicensees for
the importation, manufacture, sale, or use of Licensed Products anywhere in
the world during the Term of this Agreement. This will include, by way of
non-limiting examples: all fees, milestones, and cash equivalent for
securities, equipment and other property or rights received by Aspen as
sublicensing value from any Sublicensee.
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2.16 Tangible Research Property: The physical embodiments of Patent Rights and
Technical Information, including those listed in Exhibit B attached hereto
and incorporated by reference herein, including all progeny and derivatives
thereof. Delivery will be made in accordance with the terms set forth in
the Exhibit.
2.17 Technical Information: All ideas, data, know-how, trade secrets, research
information, methods, procedures or processes, owned by WU, resulting from
research performed by or under the direction of Xx Xxxxxx Xxxxx, and not in
the public domain, which contribute to the practice of the inventions in
the Patent Rights and the commercialization of Licensed Products, including
those identified in Exhibit C attached hereto and incorporated by reference
herein. Delivery will be made in accordance with the terms set forth in the
Exhibit.
2.18 Term: Commences on the Effective Date and continues until the expiration of
the last of the patents included in the Patent Rights to expire, unless
earlier terminated in accordance with this Agreement. A patent will be
understood to expire at midnight on the day of its expiration.
2.19 Territory: Anywhere in the world except for countries to which export of
technology or goods is prohibited by applicable U.S. export control laws or
regulations.
2.20 Valid Claim: A claim (a) of a pending Patent Rights patent application
which claim has not been pending for longer than fifteen years, or (b) of
an issued and unexpired Patent Rights patent which has not been held
invalid or unenforceable by a court or other governmental agency of
competent jurisdiction in a decision or order that is not subject to an
appeal.
3. License Grant. Subject to the terms and conditions set forth in this
Agreement, WU hereby grants to Aspen and Aspen hereby accepts, the
following license during the Term in the Territory:
3.1 An exclusive, fee- and royalty-bearing license, including the right to
grant sublicenses, under the Patent Rights, to make, have made, sell, offer
for sale, use, and import or export Licensed Products in the Field.
3.2 A nonexclusive, fee- and royalty-bearing license, including the right to
grant sublicenses, to Tangible Research Property and Technical Information,
to make, have made, sell, offer for sale, use and import or export Licensed
Products in the Field. This license includes the right, revocable by WU, to
bring actions in Aspen's name against third parties for unfair trade
practices concerning Tangible Research Property or Technical Information
(alone or in conjunction with actions to enforce the Patent Rights) or to
defend in Aspen's name against unfair trade practice claims by third
parties premised on Aspen's use of Tangible Research Property or Technical
Information in Licensed Products (alone or in conjunction with subject
matter described and claimed in the Patent Rights) subject to the terms and
conditions set forth below in this Agreement.
3.3 The right to grant sublicenses granted to Aspen under this Agreement is
subject to the following conditions:
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3.3.1 In each sublicense, Aspen must prohibit the Sublicensee from further
sublicensing and require that the Sublicensee is subject to the terms
and conditions of the license granted to Aspen under this Agreement.
3.3.2 Within thirty days of the effective date of any sublicense, Aspen
must send to WU a complete copy of the sublicense. If the original
sublicense is written in a language other than English, then Aspen
must also send to WU within the allotted time a translation of the
sublicense written in English.
3.3.3 If Aspen enters bankruptcy or receivership, voluntarily or
involuntarily, Sublicensing Revenue then or thereafter due to Aspen
will, upon notice from WU to any Sublicensee, become owed directly to
WU for the account of Aspen. WU will remit to Aspen any amounts
received which exceed the sum actually owed by Aspen to WU.
3.3.4 Any sublicense granted by Aspen under this Agreement will remain in
effect in the event that this Agreement is terminated prior to
expiration. Any Sublicensee will automatically become a direct
licensee of WU under the rights originally sublicensed to it by Aspen
provided the Sublicensee did not cause the termination of this
Agreement and the Sublicensee agrees to comply with all the terms of
this Agreement and to fulfill all the responsibilities of Aspen
hereunder. Any Sublicensee income amounts so received by WU will have
the effect of offsetting any amounts due from Aspen to WU.
3.3.5 Aspen will be primarily liable to WU for all of Aspen's obligations
contained in this Agreement. Any act or omission by a Sublicensee that
would be a material breach of this Agreement if imputed to Aspen will
be deemed to be a breach by Aspen of this Agreement if not cured
within 45 days.
3.4 The license "to have made" granted in Sections 3.1 and 3.2 means that Aspen
may contract with a third party or parties to manufacture Licensed Products
for Aspen for sale or offer for sale by Aspen or Sublicensees within the
scope of its (or their) sales operations. Aspen will require any
contractors to assume confidentiality obligations consonant with Article 7
of this Agreement.
3.5 WU may use and practice the inventions and subject matter described and
claimed in the Patent Rights for its own research and collaborations, and
may permit others to do the same as required for such sponsored research
and collaborations. Appropriate confidentiality obligations will be
required.
3.6 WU may use, and grant nonexclusive licenses to others to use, subject
matter embodied or contained in Tangible Research Property and Technical
Information, so long as it shall not conflict with the rights under this
Agreement. Appropriate confidentiality obligations will be required.
3.7 Aspen and Sublicensees have no ownership rights of any kind in the
Intellectual Property licensed under this Agreement. All ownership rights
remain the property of WU. WU will retain all original versions of Tangible
Research Property and Technical Information licensed and will retain
control over the same at all times. The delivery of Tangible Research
Property and Technical Information and grant of license rights thereto
under this Agreement do not constitute a sale of the same.
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3.8 In accordance with Public Laws 96-517, 97-256 and 98-620, codified at 35
U.S.C. xx.xx. 200-212, the United States government retains certain rights
to inventions arising from federally supported research or development.
Under these laws and implementing regulations, the government may impose
requirements on such inventions. Licensed Products embodying inventions
subject to these laws and regulations sold in the United States must be
substantially manufactured in the United States. The license rights granted
in this Agreement are expressly made subject to these laws and regulations
as they may be amended from time to time. WU shall hold Aspen harmless from
any claims by the United States government under this Article 3.8.
3.9 The Parties agree that new Intellectual Property developed or acquired by
WU during the term of this Agreement, which has applicability in the Field,
shall be optioned first to Aspen for a license under the same terms and
conditions as provided by the Agreement.
4. Diligence. Aspen agrees to use its best efforts, consistent with its
prudent business judgment, to develop, manufacture, promote and sell
Licensed Products as soon as practical in accordance with the Development
Plan. Aspen also agrees that it will require its Sublicensees to be
diligent uniformly to the standards and obligations of Aspen set forth
herein.
4.1 Within sixty days of the Effective Date of this Agreement, Aspen will
provide to WU a Development Plan describing Aspen's plans for
commercializing Licensed Products. Each Development Plan will contain the
following minimum information:
4.1.1 A definition and/or specification of each Licensed Product planned
for development.
4.1.2 Tasks to be performed by Aspen, its contractors and/or Sublicensees
to develop each Licensed Product to the point of commercialization,
including estimated time schedules for specific tasks such as
prototype development, beta testing, trials, product development, and
market surveys and testing.
4.1.3 Tasks to be performed to achieve regulatory approval or other
certification of each Licensed Product including estimated time
schedules.
4.1.4 Good faith estimate of time of First Commercial Sale of each Licensed
Product by country in North America, Europe, and Asia/Pacific Basin.
4.1.5 Good faith estimates of Sales and income by Calendar Half for the
next five calendar years including the first calendar year or partial
calendar year following the Effective Date.
4.2 Aspen will update the Development Plan and report progress against the Plan
in writing to WU no later than January 31 and July 31 of the first two
calendar years following the calendar year in which the Effective Date
falls, and no later than January 31 of each subsequent calendar year. The
updates and reports will summarize in reasonable detail the progress
achieved and any problems encountered in the development, prototyping,
evaluation, testing, manufacture, sale, and/or marketing of each Licensed
Product. Upon reasonable request by WU, Aspen will consult with WU about
tasks, schedules and progress.
4.3 Prior to the First Commercial Sale of each Licensed Product, Aspen will be
considered to be diligent regarding the development of such respective
Licensed Product as long as Aspen provides the required Development Plan
and updates and reports progress against the Plan and as long as Aspen:
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4.3.1 Continues to provide financial and other resources required to
maintain progress in accomplishing the Plan as it relates to each
Licensed Product.
4.3.2 Conducts and/or enables others to conduct all activities required to
maintain scheduled progress for accomplishing the Plan as it relates
to each Licensed Product.
4.4 Within three years after the First Commercial Sale of a Licensed Product
Aspen will be considered diligent if Aspen sells sufficient quantities of
Licensed Products or earned sufficient revenues from Sublicensee
Agreements, that earned royalties equal or exceed the minimum royalty
payments required under Article 5. Should Aspen fail to meet this
requirement, WU may declare that Aspen is not diligent.
4.5 Should WU conclude in its reasonable judgment that Aspen is not diligent in
development or sales of a Licensed Product based on the standards set forth
in Sections 4.1, 4.3 and 4.4 above as applicable, for reasons other than:
4.5.1 Withholding of regulatory approval by a government agency
notwithstanding Aspen's diligent efforts to obtain such approval;
4.5.2 Encountering unanticipated technical or scientific problems which
have been promptly reported in writing to WU; or
4.5.3 Other causes beyond the reasonable control of Aspen notwithstanding
its diligent efforts to overcome them, and which have been promptly
reported in writing to WU; then WU may notify Aspen of its conclusions
and the bases therefor and, upon request of WU, Aspen must show cause
why the license granted for such Licensed Product should not be
terminated.
5. Fees, Payments and Royalties.
5.1 Within forty-five days of the Effective Date of the Agreement, Aspen will
pay to WU a non-refundable, non-creditable license issue fee of $ 190,000
(one hundred ninety thousand USD). This will be paid as $ 60,000 in cash
and $130,000 in Aspen common stock at current value (with current value
defined as the closing price of Aspen's common stock on the day of signing
this Agreement).
5.2 Aspen must pay to WU a non-refundable minimum royalty for Licensed Products
sold by Aspen or its Sublicensees. The first calendar period for which the
minimum royalty will be paid will begin on the first day of the Calendar
Half following the effective date of this agreement. Payments under this
Section 5.2 will be due in the following amounts for the corresponding
calendar periods:
5.2.1 Period Minimum Xxxxxxx
0xx & 0xx Xxxxxxxx Xxxxxx $ 10,000
0xx & 0xx Xxxxxxxx Xxxxxx $ 10,000
Fifth and Each $ 10,000
Subsequent Half
5.2.2 Minimum royalties will be paid on January 31 and July 31 of each
respective Calendar Half.
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5.4 Aspen must pay to WU an earned royalty of 5 % (five percent) of the Gross
Sales of Licensed Product(s) made, made for, used, imported or sold by
Aspen and any Sublicensee for any Calendar Half following Aspen's First
Commercial Sale.
5.4.1 Earned royalties are fully creditable against minimum royalties
called for in Section 5.2, above, or vice versa.
5.4.2 Earned royalties will be accumulated and reported on a Calendar Half
basis. Aspen will pay to WU earned royalties accumulated during the
preceeding Calendar Half on the February 28 or August 31 immediately
following the end of that Calendar Half.
5.5 Licensee will pay WU 25 % (twenty five percent) of Sublicense Revenue
(sublicense fees) in addition to the royalties set forth in Section 5.4.
5.5.1 Sublicense fees to WU are fully creditable against minimum royalties
called for in Section 5.2, and vice versa.
5.5.2 Sublicense fees will be accumulated and reported on a Calendar Half
basis. Aspen will pay to WU sublicense fees accumulated during the
preceding Calendar Half on the February 28 or August 31 immediately
following the end of that Calendar Half.
5.5.3 Licensed Products may be made, used, imported or sold in combination
with or as part of other products which are covered by a claim of a
third party's patent or by other intellectual property rights of a
third party, requiring a license to enable Aspen or Sublicensees to
make, use, sell or offer for sale, or import Combination Products. To
calculate the value of Net Sales of Combination Products, the gross
sales of such Products will be multiplied by the fraction A/(A + B)
where A is the fair market value of the Licensed Product when sold
separately, and B is the fair market value of the Other Agent
[Component] when sold separately. Allowed deductions may then be
subtracted from the proportion of gross sales attributable to the
Licensed Product to compute Gross Sales.
5.6 No multiple royalty will be required to be paid because a Licensed Product
or its manufacture, use, sale or importation is covered by more than one
Valid Claim or patent or patent application within the Patent Rights.
5.7 Should Aspen enter into a license agreement with a third party to avoid or
settle a claim of infringement or unfair trade practice due to Aspen's use
of Intellectual Property in commercializing any Licensed Product, Aspen may
offset 50% of any royalty payments made in accordance with such third party
licenses against the royalties and fees owed to WU under Sections 5.4 and
5.5, provided, however, that in no event will the royalty and fee payments
due to WU under those sections be reduced by more than 50% for any Calendar
Half. Unused credits may be carried over by Aspen from one Calendar Half to
the next until exhausted.
6. Place and Method of Payment; Reports and Records; Audit; Interest.
6.1 All dollar ($) amounts referred to in this Agreement are expressed in
United States dollars. All payments to WU under this Agreement must be made
in United States dollars by check or electronic transfer payable to
"Washington University". Any Sales revenues for Licensed Products received
by Aspen in currency other than United States dollars will be converted to
United States dollars at the conversion rate for the foreign currency as
published in the Eastern edition of The Wall Street Journal as of the last
business day in the United States of the applicable Calendar Half.
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6.2 Checks will be dispatched to WU's correspondence address given in Section
16 below. Electronic transfers will be made to a bank account designated by
WU.
6.3 Aspen must deliver to WU within forty-five days of the end of each Calendar
Half in which earned royalties and/or sublicense fees are owed and payable
a written report setting forth the calculation of the payments made to WU
for that Calendar Half, including at least the following:
6.3.1 The number of Licensed Products and volume of Sales by country.
6.3.2 Gross receipts for Sales of Licensed Products including total amounts
invoiced, billed or received.
6.3.3 Allowed deductions as defined in Section 2.11, giving totals by each
type.
6.3.4 Royalties, fees and payments due to WU giving totals for each
category.
6.3.6 Earned royalty amounts credited against minimum royalty payments or
vice versa.
6.4 Aspen must maintain, and require its Sublicensees to maintain complete and
accurate books of accounts and records which would enable an independent
auditor to verify the amounts paid as royalties, fees and payments under
this Agreement. Aspen must also require its Sublicensees to file reports to
Aspen to enable Aspen to comply with all record keeping and reporting
obligations in this Agreement. The books and records must be maintained for
three years following the Calendar Half after submission of the reports
required by this Article. Upon reasonable notice by WU, Aspen must give WU
(or auditors or inspectors appointed by and representing WU) access to all
books and records relating to Sales of Licensed Products by Aspen and its
Sublicensees to conduct an audit or review of those books and records. This
access must be available at least once during each calendar year, for a
reasonable time, during regular business hours, during the Term of the
Agreement and for the three calendar years following the year in which
termination or expiration occurs. If WU determines that Aspen has underpaid
royalties by 5% or more for any Calendar Half, then Aspen must pay WU the
actual outside costs and expenses of its accountants and auditors in
connection with the review and audit.
6.5 Any amounts that are not paid by Aspen to WU when due will accrue interest
from the due date until payment is made at an annual rate equal to two
percent above prime or the maximum allowed by law, if less.
7. Confidentiality.
7.1 All Patent Rights patent applications, Tangible Research Property and
Technical Information designated by WU as confidential at the time it is
delivered to Aspen and Articles [Sections THIS NEEDS TO BE DEFINED BY WU]
of this Agreement are Confidential Information.
7.2 Aspen will maintain in secrecy and not disclose to any third party any of
WU's Confidential Information. Aspen will ensure that its employees have
access to WU's Confidential Information only on a need-to-know basis and
are obligated by written agreement to keep Aspen's confidentiality
obligations under this Agreement.
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7.3 The obligations of confidentiality specified in this Article will not
extend to Confidential Information which:
7.3.1 Becomes part of the public domain through no fault of Aspen.
7.3.2 Was known to Aspen before disclosure to Aspen by WU as established by
clear and convincing documentary evidence;
7.3.3 Comprises identical subject matter to that which had been originally
and independently developed by Aspen personnel without knowledge or
use of any WU Confidential Information; or
7.3.4 Was disclosed to Aspen by a third party having a right to make the
disclosure.
7.4 Notwithstanding the other terms of this Article 6, Aspen may, to the extent
necessary, use Confidential Information to secure governmental approval to
clinically test or market a Licensed Product, to secure patent protection
for an invention within the Patent Rights, to comply with a court order or
governmental rule or regulation (including regulations under the Securities
and Exchange Commission), or to show to a potential sublicensee or
contractor subject to an appropriate confidentiality agreement. Aspen will,
in any such use, take all reasonably available steps to maintain
confidentiality of the disclosed Information and to guard against any
further disclosure.
8 Representations and Warranties.
8.1 WU represents and warrants that:
8.1.1 WU is a corporation organized, existing and in good standing under
the laws of Missouri.
8.1.2 It has the authority to enter into this Agreement and that the person
signing on its behalf has the authority to do so.
8.1.3 To the best of its knowledge, it is the owner (subject to any rights
retained by the U.S. government by operation of law) of the
Intellectual Property licensed in this Agreement and that it has the
authority to grant the licenses set forth herein.
8.1.4 To the best of its knowledge, as of the Effective Date of the
Agreement, there are no actions, suits or claims pending against WU
challenging WU's ownership or control of the Intellectual Property
licensed in this Agreement.
8.1.5 To the best of its knowledge, all inventors named in patent
applications within the Patent Rights have, unless indicated otherwise
to the contrary, entered into agreements with WU promising to assign
to WU their right, title and interest in and to the patent
application(s) describing and claiming their invention(s) or have
already made such an assignment.
8.2 Aspen represents and warrants that:
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8.2.1 It is a corporation duly organized, existing, and in good standing
under the laws of Colorado. .
8.2.2 The execution, delivery and performance of this Agreement have been
authorized by all necessary corporate action on the part of Aspen and
that the person signing the Agreement on behalf of Aspen has the
authority to do so.
8.2.3 The making or performance of this Agreement would not violate any
separate agreement it has with any other person or entity.
8.2.4 It is not a party to any agreement or arrangement that would prevent
it from performing its duties and fulfilling its obligations to WU
under this Agreement.
8.3 Nothing in this Agreement is or will be construed as:
8.3.1 A warranty or representation by WU as to the validity or scope of its
Patent Rights, Tangible Research Property or Technical Information.
8.3.2 Granting by implication, estoppel or otherwise any licenses or rights
under patents or other intellectual property rights of WU or other
persons, other than the rights expressly granted above to Intellectual
Property identified on the attached Exhibits.
8.3.3 An obligation to furnish any technology or technological information
other than that identified in the attached Exhibits.
8.3.4 A grant of rights to either Party to use the name of the other in
advertising, publicity, or otherwise, except as expressly authorized
herein, without the permission of the other Party.
8.4 THE INTELLECTUAL PROPERTY IS PROVIDED "AS IS" AND WU MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS OF ANY LICENSED PRODUCT FOR A PARTICULAR PURPOSE, OR THAT THE USE
OF ANY LICENSED PRODUCT WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK
OR OTHER RIGHTS, OR ANY OTHER EXPRESS OR IMPLIED WARRANTES. WU WILL NOT BE
LIABLE TO ASPEN ITS SUCCESSORS, ASSIGNS, CONTRACTORS OR SUBLICENSEES OR ANY
THIRD PARTY REGARDING ANY CLAIM ARISING FROM ASPEN'S USE OF LICENSED
INTELLECTUAL PROPERTY OR ANY LICENSED PRODUCT OR FROM THE MANUFACTURE, USE,
IMPORTATION OR SALE OF LICENSED PRODUCTS, OR ANY CLAIM FOR LOSS OF PROFITS,
LOSS OR INTERRUPTION OF BUSINESS, OR FOR INDIRECT, SPECIAL OR CONSEQUENTIAL
DAMAGES OF ANY KIND.
9 Application, Prosecution and Maintenance of Patent Rights.
9.1 WU has the sole right to control the preparation, filing, prosecution,
issue and maintenance of Patent Rights patents and applications. WU will
select qualified outside patent counsel reasonably acceptable to Aspen and
corresponding foreign associates to prepare, file, prosecute and maintain
U.S. patents/applications and foreign counterparts within the Patent
Rights. WU will consult with Aspen regarding the prosecution of Patent
Rights patent applications including, without limitation, by providing
Aspen a reasonable opportunity to review and comment on proposed
submissions to any patent office before the papers are filed. WU will keep
Aspen reasonably informed of the status of Patent Rights patents and
applications by timely giving Aspen copies of communications relating to
such Patent Rights that are received from any patent office or outside
patent counsel of record or foreign associate.
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9.2 During the Term of the Agreement, Aspen will reimburse WU for all
reasonable and documented costs and expenses incurred by WU in the
preparation, filing, prosecution, issue and maintenance of patents and
applications within the Patent Rights within thirty days of receipt from WU
of copies of billing invoices for such costs and expenses. Such costs and
related reimbursement shall be limited to that portion associated with the
limited Field under this License Agreement.
9.3 As long as Aspen satisfies its reimbursement obligations hereunder in a
timely manner, WU agrees that it will diligently prosecute and maintain the
applications and patents within the Patent Rights. WU will prepare, file
and prosecute additional applications within the Patent Rights as Aspen may
request, in WU's name at Aspen's sole expense.
9.4 If Aspen at any time informs WU in writing that it no longer wishes to
reimburse WU for expenses relating to any Patent Rights applications or
patents in any country, WU will be free upon receipt of such notice, and
without further obligation to Aspen whatsoever, to abandon the applications
or patents subject to the notice or to continue prosecution or maintenance,
at its option. Any application or patent for which WU assumes
responsibility for the expenses of preparation, filing, prosecution, issue
or maintenance will be removed from the Patent Rights and the license
granted to Aspen under Sections 3.1 and 3.2 for the same will terminate
immediately.
10 Infringement, Enforcement, and Defense.
10.1 The license granted herein includes the revocable right to bring actions in
WU's name to enforce the Patent Rights against third parties or to defend
the Patent Rights in WU"s name against claims by third parties, subject to
the terms and conditions set forth in this Agreement
10.2 WU and Aspen will promptly give to the other written notice of any known or
suspected infringement of the Patent Rights or unauthorized use of the
Tangible Research Property or Technical Information by third parties.
10.3 Aspen at its sole expense will attempt to xxxxx any infringement of the
Patent Rights or unauthorized use of Tangible Research Property or
Technical Information by third parties as it relates to the rights provided
under this Agreement. Aspen will have the right to institute and conduct
actions against third parties for infringement and unfair trade practices
through outside counsel of its choice who are reasonably acceptable to WU.
Aspen will keep WU informed of all proceedings and provide copies of all
pleadings and other papers related to such actions. WU will provide
reasonable assistance to Aspen in prosecuting any such actions.
10.4 Aspen at its sole expense will defend third party claims of patent or
intellectual property infringement and injury, death or product liability
brought against Aspen and/or WU. Aspen will have the right to conduct the
defense of such actions through outside counsel of its choice who are
reasonably acceptable to WU. WU will provide all reasonable assistance for
the defense of such claims and Aspen will keep WU informed of all
proceedings and provide copies of all pleadings and other papers related to
such actions.
11
10.5 Notwithstanding anything stated herein to contrary, Aspen will not be
permitted to settle or compromise any claim or action in a manner that may
impose restrictions or obligations on WU or grant rights or concessions to
Intellectual Property or Licensed Products without WU's prior written
consent.
10.6 Aspen will be entitled to offset 50% of its attorney's fees and expenses
incurred in abating third party infringement or unfair trade practices or
bringing or defending any action against third parties under this Article,
against the royalties due under Section 5.4 and the fees due under Section
5.5, subject to the restriction of Section 5.7.
10.7 If Aspen fails or declines to take any action under Section 10.3 within a
reasonable time after receiving notice of third party infringement or
unfair trade practices, then WU will have the right, but not the
obligation, to take appropriate actions against such third parties. If
Aspen fails to defend a claim or action under Section 10.3 within thirty
days of receiving notice of the same, WU may assume the defense for the
account of and at the risk of Aspen and any resulting liability will be
deemed conclusively to be a liability of Aspen. In either case, the failure
or declination of Aspen to act will result in the immediate loss of Aspen's
license rights under this Agreement in the country or territory in which
the unabated infringement or undefended third party claim or action
pertains.
11 Indemnification. Aspen will indemnify, defend and hold harmless Xx Xxxxxx
Xxxxx and WU, its trustees, faculty, staff, students and agents from and
against any and all liability, loss, damage, action, claim or expense
(including attorney's fees and costs at trial and appellate levels) in
connection with any claim, suit, action, demand or judgment arising out of
(a) the use of any Intellectual Property in the design, development,
production, manufacture, sale or offer for sale, use, importation, lease,
marketing or promotion by Aspen or its contractors, Sublicensees or agents
of any Licensed Product or (b) injury or death to person or damage to
property, or (c) any third party claim that any use or licensing of the
Intellectual Property under this Agreement violates or infringes that
party's intellectual property rights.
12 Insurance.
12.1 Aspen or any Sublicensee as appropriate, will provide WU with a certificate
of insurance and will provide a complete copy of the insurance policy to WU
as soon as one becomes available and notices of subsequent renewals. The
certificates must provide that Aspen's carrier will notify WU in writing at
least thirty days prior to cancellation or material change in coverage.
12.2 WU may periodically evaluate the adequacy of the minimum coverages of
insurance specified in this Article. WU reserves the right to require Aspen
to adjust the insurance coverages. The specified minimum coverages do not
constitute a limitation on Aspen's obligation to indemnify WU under this
Agreement.
13 Termination.
13.1 Aspen may terminate this Agreement with or without cause on ninety days
written notice to WU. The license rights granted hereunder terminate at the
end of the ninety day period.
13.2 WU may terminate on sixty days written notice to Aspen upon material breach
by Aspen of the Agreement, subject only to the provisions of Article 4.5.3.
The termination becomes effective at the end of the sixty day period unless
Aspen has fully cured the breach within the sixty days. Material breaches
include the following:
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13.2.1 Failure to use best efforts to commercialize Licensed Products under
Section 4.
13.2.2 Failure to provide a Development Plan within the time allowed as
required in Section 4.1 or the updates required in Section 4.2.
13.2.3 Non-compliance with Section 4.3.
13.2.4 Failure to pay any fee, payment or royalty required by Article 5
when due in the place and manner set forth in Article 6.
13.2.5 Failure to keep accurate and complete books and records and to cause
Sublicensees to do the same, as required by Article 6. Also, failure
to allow reasonable inspection and audit as required by Article 6.
13.2.6 Breach of confidentiality requirements of Article 7.
13.2.7 Failure to obtain, maintain and report levels of insurance required
in Article 12.
13.3 If Aspen enters bankruptcy or receivership, voluntarily or involuntarily,
all obligations of WU and all rights (but not obligations) of Aspen
terminate immediately without the need for either WU or Aspen to take any
action.
13.4 Upon termination of this Agreement for any reason, Aspen must return to WU
all Confidential Information (as defined in Article 7) received from WU
during the Term of this Agreement.
13.5 On termination by either Party for any reason, the license rights granted
to Aspen under Article 3 terminate when termination of the Agreement is
effective. Aspen's obligations to pay fees, royalties or other payments and
patent expenses (Article 10) accruing prior to termination survive
termination
14 Use of Names. Neither Party may use the name of the other for any
commercial, advertisement, or promotional purpose without the written
consent of the other. WU acknowledges and understands that Aspen is
required to make disclosure of the terms of this Agreement with the
Securities and Exchange Commission and to issue a press release upon
execution of this Agreement. WU agrees, after an opportunity to review the
press release and the ability to comment thereon, to permit Aspen to
release any information required under federal and state securities laws in
a press release or filings with the Securities and Exchange Commission.
15 Assignment or Pledge of Agreement. Neither this Agreement nor any portion
of it may be assigned by either Party to anyone else without the written
consent of the other Party. Notwithstanding this, Aspen may assign the
entire Agreement, without WU's consent, to an entity that succeeds to
substantially all of its business or assets by way of merger, sale,
acquisition or otherwise, provided that the successor agrees in writing to
assume all the obligations and liabilities of Aspen to WU. The rights
granted in this Agreement may not be pledged in any way by Aspen or any
Sublicensee to secure any purchase, lease or loan.
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16 Notice. Any required or permissive notice under this Agreement will be
sufficient if in writing and delivered personally, by recognized national
overnight courier, or by registered or certified mail, postage prepaid and
return receipt requested, to the address below and will be deemed to have
been given as of the date shown on the receipt if by certified or
registered mail, or the day following dispatch if by overnight courier.
If to WU:
---------
Washington University
Office of Technology Management
Campus Box 8013
000 Xxxxx Xxxxxx Xxxxxx
Xx. Xxxxx XX 00000 Fax (314/ 000-0000)
If to Aspen:
------------
AspenBio, Inc.
0000 Xxxxx Xxxxx Xx.
Xxxxxx Xxxx, XX 00000
Fax: (303/000-0000)
17 Arbitration [Reserved].
18 General Provisions.
18.1 This Agreement will be governed and interpreted according to the laws of
Missouri.
18.2 None of the terms of this Agreement can be waived except by mutual written
consent of the Parties.
18.3 This instrument comprises the entire agreement and understanding of the
Parties relating to the subject matter of the Agreement.
18.4 This Agreement cannot be changed, modified or amended except by a written
instrument subscribed by authorized representatives of the respective
Parties.
18.5 Neither Party is an agent or contractor of the other as a result of any
transaction under or related to this Agreement. Neither Party may in any
way pledge the other Party's credit or incur any obligation on behalf of
the other Party.
18.6 Each Party is liable to the other only for actual damages for breach of
this Agreement or any warranty contained herein, and not for any special,
consequential, incidental, or indirect damages arising out of this
Agreement, however caused, under any theory of liability.
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18.7 The provisions of this Agreement are severable in that if any provision in
the Agreement is determined to be invalid or unenforceable under any
controlling body of law, that will not affect the validity or
enforceability of the remaining provisions of the Agreement.
18.8 If the performance of any obligation under this Agreement is prevented or
impaired by acts of war, riot, acts or defaults of common carriers, or
governmental laws or regulations, a Party will be excused from performance
so long as such cause continues to prevent or impair that Party's
performance. The Party claiming force majeure excuse must promptly notify
the other Party of the existence of the cause and must at all times use
diligent efforts to resume and complete performance. This Section 18.8 will
not excuse Aspen's obligation to pay fees, payments and royalties under
Article 5 of the Agreement.
18.9 WU has no responsibility for product design and development, servicing,
distribution, or marketing, or any decisions made or strategies devised in
areas related to Licensed Products.
18.10 Articles 5, 6, 7 above, 11, and 14 above will survive expiration or
termination of this Agreement for a period of three years.
18.11 This Agreement will be executed in two original versions, one belonging to
each Party. The originals are valid counterparts of each other.
Witness: The parties have caused this Agreement to be executed in duplicate by
their duly qualified representatives.
------------------------------ ---------------------------------------------
Accepted by (Aspen): Provided by (WU):
ASPENBIO, INC WASHINGTON UNIVERSITY
AUTHORIZED OFFICIAL AUTHORIZED OFFICIAL
AspenBio, Inc. Washington University
Signature:By:_______________ Signature:_____________________
Printed Name: Xxxxx Xxxxx Printed Name: Xxxxxxx X. Xxxxxxx
Title: President Title: Associate Vice Chancellor, Technology
Management
Date:_______________ Date:_________________
------------------------------ ---------------------------------------------
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