EXHIBIT 10.5
PATENT AND TECHNOLOGY LICENSE AGREEMENT
EXHIBIT 10.5
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This twenty-six (26) page AGREEMENT ("AGREEMENT") is made on this 17th
day of February, 2005, by and between THE BOARD OF REGENTS ("BOARD") of THE
UNIVERSITY OF TEXAS SYSTEM ("SYSTEM"), an agency of the State of Texas, whose
address is 000 Xxxx 0xx Xxxxxx, Xxxxxx, Xxxxx 00000, on behalf of THE UNIVERSITY
OF TEXAS M. D. XXXXXXXX CANCER CENTER ("UTMDACC"), a component institution of
SYSTEM, and XPENTION, a Colorado corporation having a principal place of
business located at 00000 Xxxxxxxxx Xxxxx, Xxxxxxx, Xxxxxxxx 00000 ("LICENSEE").
TABLE OF CONTENTS
RECITALS Page 2
I. EFFECTIVE DATE Page 2
II. DEFINITIONS Page 2
III. LICENSE Page 5
IV. CONSIDERATION, PAYMENTS AND REPORTS Page 6
V. SPONSORED RESEARCH Page 10
VI. PATENTS AND INVENTIONS Page 11
VII. INFRINGEMENT BY THIRD PARTIES Page 11
VIII. PATENT MARKING Page 12
IX. INDEMNIFICATION AND INSURANCE Page 13
X. USE OF BOARD AND UTMDACC'S NAME Page 15
XI. CONFIDENTIAL INFORMATION AND PUBLICATION Page 15
XII. ASSIGNMENT Page 17
XIII. TERM AND TERMINATION Page 17
XIV. WARRANTY: SUPERIOR-RIGHTS Page 21
XV. GENERAL Page 22
SIGNATURES Page 25
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RECITALS
A. BOARD owns certain PATENT RIGHTS and TECHNOLOGY RIGHTS related to
LICENSED SUBJECT MATTER developed at UTMDACC.
B. BOARD, through UTMDACC, desires to have the LICENSED SUBJECT CT MATTER
developed in the LICENSED FIELD and used for the benefit of LICENSEE,
BOARD, SYSTEM, UTMDACC, the inventor(s), and the public as outlined in
BOARD's Intellectual Property Policy.
C. LICENSEE wishes to obtain a license from BOARD to practice LICENSED
SUBJECT MATTER.
NOW, THEREFORE, in consideration of the mutual covenants and promises
herein contained, the parties agree as follows:
I. EFFECTIVE DATE
1.1 This AGREEMENT is effective as of the date written above ("EFFECTIVE
DATE").
II. DEFINITIONS
As used in this AGREEMENT, the following terms have the meanings indi-
cated:
2.1 AFFILIATE means any business entity more than fifty percent (50%) owned
by LICENSEE, any business entity which owns more than fifty percent
(50%) of LICENSEE, or any business entity that is more than fifty per-
cent (50%) owned by a business entity that owns more than fifty percent
(50%) of LICENSEE.
2.2 LICENSED FIELD means all fields of use.
2.3 LICENSED PRODUCTS means any product or service sold by LICENSED
comprising LICENSED SUBJECT MATTER pursuant to this AGREEMENT LICENSED
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PRODUCTS shall include, byway of clarification, and not byway of
limitation, services such as the diagnostic testing of biological
samples (which testing uses or incorporates any LICENSED SUBJECT
MATTER) and interpretation of such tests.
2.4 LICENSED SUBJECT MATTER means inventions and discoveries covered by
PATENT RIGHTS or TECHNOLOGY RIGHTS within LICENSED FIELD.
2.5 LICENSED TERRITORY means worldwide.
2.6 NET SALES means the gross revenues received by LICENSEE or a STRATEGIC
PARTNER from or as a result of a SALE, less sales discounts actually
granted, sales and/or use taxes actually paid, import and/or export
duties actually paid, outbound transportation actually prepaid or
allowed, and amounts actually allowed or credited due to returns (not
exceeding the original billing or invoice amount), all is recorded by
LICENSEE in LICENSEE's official books and records in accordance with
generally accepted accounting practices and consistent with LICENSEE's
published financial statements and/or regulatory filings with the
United States Securities and Exchange Commission. NET SALES shall not
include revenues received by LICENSEE from a STRATEGIC PARTNER for
LICENSED PRODUCTS provided by LICENSEE to the STRATEGIC PARTNER for
resale by the STRATEGIC PARTNER.
2.7 PATENT RIGHTS means BOARD's rights in the information or discoveries
claimed in the patents listed on Exhibit I and any reissues,
reexaminations or extensions as thereof.
2.8 SALE or SOLD means the transfer or disposition of a LICENSED PRODUCT
for value to a party other than LICENSEE or AFFILIATE.
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2.9 STRATEGIC ALLIANCE means a written agreement between LICENSEE a third
party ("STRATEGIC PARTNER") in which the STRATEGIC PARTNER agrees to
manufacture, market and/or sell LICENSED PRODUCTS for LICENSEE. To
qualify as a STRATEGIC ALLIANCE for veterinary diagnostic use, the
agreement must guarantee annual NET SALES of LICENSED PRODUCTS for
veterinary diagnostic use by LICENSEE or the STRATEGIC PARTNER in
excess of US$1 00,000 per year. To qualify as a STRATEGIC ALLIANCE for
human diagnostic use, the agreement must guarantee annual NET SALES of
LICENSED PRODUCTS for human diagnostic tic use by LICENSEE or the
STRATEGIC PARTNER in excess of US$250,000 per year. Any STRATEGIC
PARTNER must agree in writing to be bound by all the terms and
provisions of this AGREEMENT to the same extent as if it were the
LICENSEE. Other than a sublicense agreement as described in Sections
3.3 and 3.4. LICENSEE may not enter into a STRATEGIC ALLIANCE with a
third party without the prior written approval of the terms of the
STRATEGIC ALLIANCE by UTMDACC, which approval
will not be unreasonably withhold, LICENSEE shall furnish UTMDACC a
copy of any STRATEGIC ALLIANCE within thirty (30.) days after execution
by all parties.
2.10 TECHNOLOGY RIGHTS means BOARD's rights in any technical information,
know-how processes, procedures, compositions, devices, methods,
formulae, protocols, techniques, software, designs, drawings or data
created by the inventor(s) listed in Exhibit I at UTMDACC before the
EFFECTIVE DATE, which are not claimed aimed in PATENT RIGHTS but that
are necessary for practicing PATENT RIGHTS.
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III. LICENSE
3.1 BOARD, through UTMDACC, hereby grants to LICENSEE a royalty-bearing,
exclusive license under LICENSED SUBJECT MATTER to manufacture, have
manufactured, use, import, offer to sell and/or sell LICENSED PRODUCTS
within LICENSED TERRITORY for use within LICENSED FIELD, This grant is
subject to Sections 14.2 and 14.3 hereinbelow, the payment by LICENSEE
to UTMDACC of all consideration as provided herein, the timely payment
of all amounts due under any related sponsored research agreement
between UTMDACC and LICENSEE in effect during this AGREEMENT, and is
further subject to the following rights retained by BOARD and UTMDACC
to:
(a) Publish the general scientific findings from research related
LICENSED SUBJECT MATTER, subject to the terms of Article XI-
Confidential formation and Publication; and
(b) Use LICENSED SUBJECT MATTER for research, teaching, patient
care, and other educationally-related purposes.
3.2 LICENSEE may extend the license granted herein to any AFFILIATE
provided that the AFFILIATE consents in writing to be bound by this
AGREEMENT to the same extent as LICENSEE. LICENSEE agrees to deliver
such contract to UTMDACC within thirty (30) calendar days following
execution thereof.
3.3 LICENSEE may grant sublicenses under LICENSED SUBJECT MAT ER consistent
with the terms of this AGREEMENT provided that LICENSEE is responsible
for its sublicensees relevant to this AGREEMENT, and for diligently
collecting all amounts due
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LICENSEE from sublicensees. If a sublicensee pursuant hereto becomes
bankrupt, insolvent or is placed in the hands of a receiver or trustee.
LICENSE to the extent allowed under applicable law and in a timely
manner, agrees to use its best reasonable efforts to collect all
consideration owed to LICENSEE and to have the sublicense agreement
confirmed or rejected by a court of proper jurisdiction.
3.4 LICENSEE must deliver to UTMDACC a true and correct copy of each
sublicense granted by LICENSEE, and any modification or termination
thereof, within thirty (30) calendar days after execution,
modification, or termination.
3.5 If this AGREEMENT is terminated pursuant to Article XIII-Term and
Termination, BOARD and UTMDACC agree to accept as successors to LICENSE
existing sublicensees in good standing at the date of termination
provided at each such, sublicensee consents in writing to be bound by
all of the terms and conditions of this AGREEMENT.
IV. CONSIDERATION, PAYMENTS AND REPORTS
4.1 In consideration of rights granted by BOARD to LICENSEE under this
AGREEMENT, LICENSEE agrees to pay UTMDACC the following:
(a) All out-of-pocket expenses incurred by UTMDACC after the
EFFECTIVE DATE in filing, prosecuting, enforcing and maintain-
ing PATENT RIGHTS and all such future expenses incurred by
UTMDACC, for so long as, and in such countries as this AGREE-
MENT remains in effect. In the event any expenses are due,
UTMDACC will invoice LICENSEE within thirty (30) calendar days
after the EFFECTIVE DATE for any expenses incurred as of that
time. UTMDACC will invoice LICENSEE an a quarterly basis there
-after.
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The invoiced amounts will be due and payable by LICENSEE
within thirty (30) calendar days of invoice; and
(b) A nonrefundable license documentation fee in the amount of US$
50,000.00. This fee will not reduce the amount of any other
payment provided for in this ARTICLE IV, and is due and
payable within thirty (30) calendar days after the AGREEMENT
has been fully executed by all parties and LICENSEE has
received an invoice for the amount from UTMDACC; and
(c) A running royalty equal to five and one-half percent (5.5%) of
NET SALES; and
(d) The following one time milestone payments due within thirty
(30) days after occurrence of the following events:
(i) US$50,000.00 upon the first SALE of a LICENSED
PRODUCT for veterinary diagnostic use; and
(ii) US$50,000,00 upon the earlier to occur of the follow-
ing events: (1) the filing of a Biological License
Application for a human diagnostic use in the U.S. or
an equivalent foreign filing in any other national
political jurisdiction for a LICENSED PRODUCT; or (2)
the first SALE of a LICENSED PRODUCT for human diagno
-stic use; and
(e) Fifty percent (50%) of all consideration, other than research
development money, received by LICENSEE from either (i) any
sublicensee pursuant to Sections 3.3 and 3.4 hereinabove that
is not also a STRATEGIC PARTNER, or (ii) any assignee pursuant
to Section 12.1 hereinbelow (in consideration for UTMDACC
allowing the assignment), including but not limited to,
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royalties, up-front payments, marketing, distribution,
franchise, option, license, or documentation fees, bonus and
milestone payments and equity securities.
4.2 Unless otherwise provided, all such payments are payable within thirty
(30) calendar days after March 31, June 30, September 30, and December
31 of each year during the term of this AGREEMENT, at which time
LICENSEE will also deliver to UTMDACC a true and accurate report,
giving such particulars of the business conducted by LICENSEE and its
sublicensees and STRATEGIC PARTNERS, if any exist, during the preceding
three calendar months under this AGREEMENT as necessary for UTMDACC to
account for LICENSEE's payments hereunder. This report will include
pertinent data, including, but not limited to:
(a) the accounting methodologies used to account for and calculate
the items included in the report and any differences in such
accounting methodologies used by LICENSEE since the previous
report; and
(b) a list of LICENSED PRODUCTS produced for the three (3) preced-
ing calendar months categorized by the technology it relates
to under PATENT RIGHTS; and
(c) the total quantities of LICENSED PRODUCTS produced by the cate
-gory listed in Section 4.2(b); and
(d) the total SALES by the category listed in. Section 4.2(b); and
(e) the calculation of NET SALES by the category listed in Section
4.2(b); and
(f) the royalties so computed and due LJTMDACC by the category
listed in Section 4.2(b) and/or minimum royalties; and
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(g) all consideration received from each STRATEGIC PARTNER, sub-
licensee or assignee and payments due UTMDACC; and
(h) all other amounts due UTMDACC herein.
Simultaneously with the delivery of each such report, LICENSEE agrees
to pay UTMDACC the amount due, if any, for the period or such report.
These reports are required even if no payments are due.
4.3 During the term of this AGREEMENT and for one (1) year thereafter,
LICENSEE agrees to keep complete and accurate records of its STRATEGIC
PARTNER's and its sublicensees' SALES in sufficient detail to enable
the royalties and other payments due hereunder to be determined.
LICENSEE agrees to permit UTMDACC or its representatives, at UTMDACC's
expense, to periodically examine LICENSEE's books, ledgers, and records
during regular business hours for the purpose of and the extent
necessary to verify any report required under this AGREEMENT. If any
amounts due UTMDACC are determined to have been underpaid in an amount
equal or greater than five percent (5%) of the total amount due during
the period so examined, then LICENSEE will pay the cost of the
examination plus accrued interest at the highest allowable rate.
4.4 Within thirty (30) calendar days following each anniversary of the
EFFECTIVE DATE, LICENSEE will deliver to UTMDACC a written progress
report as to LICENSEE's (and, any sublicensee's or STRATEGIC PARTNER's)
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efforts and accomplishments during the preceding year in diligently
commercializing LICENSED SUBJECT in the LICENSED TERRITORY and
LICENSEE's (and sublicensees' or STRATEGIC PARTNER's) commercialization
plans for the upcoming year.
4.5 All amounts payable hereunder by LICENSEE will be paid in United States
funds without deductions for taxes, assessments, fees, or charges of
any kind. Checks are to be made payable to The University of Texas
M. D. Xxxxxxxx Cancer Center, and sent by United States mail to Box
297402, Xxxxxxx, Xxxxx 00000, Attention: Manager, Sponsored Programs or
by wire transfer to:
BANK ONE TEXAS
000 XXXXXX
XXXXXXX, XXXXX 00000
SWIFT: BONEUS44HOU
ABA ROUTING NO: 000000000
ACCOUNT NAME: UNIV. OF TEXAS M.D. XXXXXXXX CANCER CENTER
ACCOUNT NO: 1586838979
REFERENCE: include title and EFFECTIVE DATE of AGREEMENT and type
of payment (e.g,, license documentation fee, milestone payment, royalty
[including applicable patent/application identified by MDA reference
number and patent number or application serial number], or maintenance
fee, etc.).
4.6 No payments due or royalty rates owed under this AGREEMENT will be
reduced as the result of co-ownership of LICENSED SUBJECT MATTER by
BOARD and another party, including, but not limited to, LICENSEE.
V. SPONSORED RESEARCH
5.1 If LICENSEE desires to sponsor research for or related to the LICENSED
SUBJECT MATTER, and particularly where LICENSEE receives payments for
sponsor research pursuant to a sublicense under this AGREEMENT,
LICENSEE (a) will notify UTMDACC in writing of all opportunities to
conduct this sponsored research (including clinical trials, if
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applicable), (b) solicit research and/or clinical proposals from
UTMDACC for this purpose, and (c) will give good faith consideration to
funding the proposals at UTMDACC.
VI. PATENTS AND INVENTIONS
6.1 If after consultation with LICENSEE both parties agree that a new
patent application should be filed for LICENSED SUBJECT MATTER, UTMDACC
will prepare and file appropriate patent applications, and LICENSEE
will pay the cost of searching, preparing, filing, prosecuting and
maintaining same. If LICENSEE notifies UTMDACC that at it does not
intend to pay the cost of an application, or if LICENSEE does not
respond make an effort to agree with UTMDACC on the disposition of
rights of the subject invention, then UTMDACC may file such application
at its own expense and LICENSEE's rights to such invention under this
AGREEMENT shall terminate in their entirety, UTMDACC will provide
LICENSEE with a copy of the application for which LICENSE has paid the
cost of filing, as well as copies of any documents received or filed
during prosecution thereof. The parties agree that they share a common
legal interest to get valid enforceable patents and that LICENSEE will
keep all privileged info it received pursuant to this Section confiden-
tial.
VII. INFRINGEMENT BY THIRD PARTIES
7.1 LICENSEE, at its expense, must enforce any patent exclusively licenced
hereunder against infringement by third parties and is entitled to
retain recovery from such enforcement, After reimbursement of
LICENSEE's reasonable legal cost an expenses related to such recovery,
LICENSEE agrees to pay UTMDACC either: (a) the royalty detailed in
Section 4.1 (d) for any monetary recovery that is for sales of LICENSED
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PRODUCTS lost due to the infringement and related punitive damages; or
(b) fifty percent (50%) of reasonable royalties awarded and related
punitive damages in any recovery in which the award is for reasonable
royalties. LICENSE mmust notify UTMDACC in writing of any potential
infringement within thirty (30) calendar days of knowledge thereof If
LICENSEE does not file suit against a substantial infringer within six
(6) months of knowledge thereof, then BOARD or LJTMDACC may, its sole
discretion, enforce any patent licensed hereunder on behalf of itself
rand LICENSEE, with UTMDACC retaining all recoveries from such
enforcement, and/or reduced the license granted hereunder to
non-exclusive.
7.2 In any suit or dispute involving an infringer, the parties agree to
cooperate fully with each other. At the request and expense of the
party bringing suit, the other party will permit access during regular
business hours, to all relevant personnel, records, papers,
information, samples, specimens, and the like in its possession.
VIII. PATENT MARKING
8.1 LICENSEE agrees that all packaging containing individual LICENSED
PRODUCT(S), documentation therefor, and when possible for actual
LICENSED PRODUCT(S) sold by LICENSEE, AFFILIATES, STRATEGIC PARTNERS
and/or a sublicensees of LICENSEE will be permanently and legibly
marked with the number of an applicable patent(s) licensed hereunder in
accordance with each country's patent law, including Xxxxx 00, Xxxxxx
Xxxxxx Code.
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IX. INDEMNIFICATION AND INSURANCE
9.1 LICENSEE agrees to hold harmless and indemnify BOARD, SYSTEM, UTMDACC,
its Regents, officers, employees, students and agents from and against
any claims, demands, or causes of action whatsoever, costs of suit and
reasonable attorney's fees, including without limitation, those costs
arising on account of any injury or death of persons or damage to
property caused by, or arising out of, or resulting from, the exercise
or practice of the rights granted hereunder by LICENSEE, its officers,
its AFFILIATES or their officers, employees, agents or representatives.
9.2 In no event shall BOARD, SYSTEM or UTMDACC be liable for any in
indirect, special, consequential or punitive damages (including, with-
out limitation, damages or loss of profits or expected savings or other
economic losses, or for injury to persons property) arising out of, or
in connection with, this AGREEMENT or its subject matter, regardless
of whether BOARD, SYSTEM or UTMDACC knows or should know of the possi-
bility of such damages. The total aggregate liability of BOARD, SYSTEM
an UTMDACC for all damages of any kind relating to this AGREEMENT or
its subject att shall not exceed the amounts paid by LICENSEE to BOARD
or UTMDACC under this AGREEMENT during the one (1) year period preced-
ing the date of the event that gave rise to the liability. The fore-
going exclusions and limitations shall apply to all claims and actions
of any kind, whether based on contract, tort (including, but not limit-
ed to, negligence), or any other grounds.
9.3 Beginning at the time when any LICENSED SUBJECT MATTER is being distrib
-uted or sold (including for the purpose of obtaining regulatory
approvals) by LICENSEE or by a
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sublicensee or STRATEGIC PARTNER, LICENSEE shall, at its sole cost and
expense, procure and maintain commercial general liability insurance in
amounts not less than US$2,000,000 per incident and US$2,000,000 annual
aggregate, and LICENSEE shall use reasonable efforts to have the BOARD,
SYSTEM, UTMDACC, its Regents, officers, employees, students and agents
named as additional insureds. Such commercial general liability
insurance shall provide: (i) product liability coverage; (ii) broad
form contractual liability coverage for LICENSEE's indemnification
under this AGREEMENT; and. (iii) coverage for litigation costs. The
minimum amounts of insurance coverage age required herein shall not be
construed to create a limit of LICENSEE's liability with respect to its
indemnification under this AGREEMENT.
9.4 LICENSEE shall provide UTMDACC with written evidence of such insurance
within thirty (30) days of its procurement, Additionally, LICENSEE
shall provide UTMDACC with written notice of at least fifteen (15) days
prior to the cancellation, non-renewable or material change in such
insurance.
9.5 LICENSEE shall maintain such commercial general, liability insurance
beyond the expiration or termination of this AGREEMENT during: (i) the
period that any LICENSED SUBJECT MATTER developed pursuant to this
AGREEMENT is being commercially distributed or sold by LICENSEE or by a
sublicensee, STRATEGIC PARTNER or agent of LICENSEE; and (ii) the five
(5) year period immediately after such period.
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X. USE OF BOARD AND UTMDACC'S NAME
10.1 LICENSEE will not use the name of (or the name of any employee of
UTMDACC, SYSTEM or BOARD in any advertising, promotional or sales
literature, on its Web site, or for the purpose of raising capital
without the advance express written consent of BOARD secured through:
M. D. Xxxxxxxx Services Corporation
0000 X. Xxxx, Xxxxx 000, Xxxx 0000
Xxxxxxx, XX 00000
ATTENTION: Xxxxxxx Xxxxxx
Email: xxxxxxx@xxxxxxxxxx.xxx
Notwithstanding the above, LICENSEE may use the name of (or name of
employee of) UTMDACC, SYSTEM or BOARD in routine business
correspondence, or a needed in appropriate regulatory submissions
without express written consent.
XI. CONFIDENTIAL INFORMATION AND PUBLICATION
11.1 UTMDACC and LICENSEE each agree that all information contained in
documents marked "confidential" and forwarded to one by the other (i)
are to received in strict confidence, (ii) are to be used only for the
purposes of this AGREEMENT, and (iii) will not be disclosed by the
recipient party (except as required by law or court order), its agents
or employees without the prior written consent of the other party,
except to the extent that the recipient party can establish by
competent written proof that such information:
(a) was in the public domain at the time of disclosure; or
(b) later became part of the public domain through no act or
omission of the recipient party, its employees, agents,
successors or assigns; or
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(c) was lawfully disclosed to the recipient party by a third party
having the right to disclose it, or
(d) was already known by the recipient party at the time of dis-
closure; or
(e) was independently developed by the recipient without use of
the other party's confidential information; or
(f) is required by law or regulation to he disclosed.
11.2 Each party's obligation of confidence hereunder will be fulfilled by
using least the same degree of care with the other party's confidential
information as it uses to protect its own confidential information, bat
always at least a reasonable degree of are. This obligation will exist
while this AGREEMENT is in force and for a period of three (3) years
thereafter.
11.3 UTMDACC reserves the right to publish the general scientific findings
from research related to LICENSED SUBJECT MATTER, with due regard to
the protection of LICENSEE's confidential information. UTMDACC will
submit the manuscript of any proposed publication to LICENSEE at least
thirty (30) calendar days before publication, and LICENSEE shall have
the right to review and comment upon the publication in order to
protect LICENSEE's confidential information. Upon LICENSEE's request,
publication may be delayed up to sixty (60) additional calendar days to
enable LICENSEE to secure adequate intellectual property protection of
LICENSEE's confidential information that would otherwise be affected by
the publication.
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XII. ASSIGNMENT
12.1 Except in connection with the sale of all or LICENSEE's assets to a
third party, this AGREEMENT may not be assigned by LICENSEE without the
prior written consent of UTMDACC, which will not be unreasonably
withheld.
XIII. TERM AND TERMINATION
13.1. Subject to Sections 13.5 and 13.6 hereinbelow, the term of this AGREE-
MENT is from the EFFECTIVE DATE to the full end of the term or terms
for which PATENT RIGHTS have not expired, or if only TECHNOLOGY RIGHTS
are licensed and no PATENT RIGHTS are applicable, for a term of fifteen
(15) years.
13.2 Any time after one (1) year from the EFFECTIVE DATE, BOARD or UTMDACC
have the right to terminate this license in any national political
jurisdiction within the LICENSED TERRITORY if LICENSEE, within ninety
(90) calendar days after receiving written notice from UTMDACC of the
intended termination, fails to provide written evidence satisfactory to
UTMDACC that LICENSEE or its sublicensee(s) or STRATEGIC PARTNERS has
commercialized or is actively and effectively attempting to
commercialize a licensed invention in such jurisdiction(s). The
following definitions apply to Section 13.2: (a) "commercialize" means
having SALES in such jurisdiction; (b) "active attempts to
commercialize" means having an effective, ongoing and active research,
development, manufacturing, marketing or sales program as appropriate,
directed toward obtaining regulatory approval, and/or production and/or
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SALES in any jurisdiction, and has provided plans acceptable to
UTMDACC, in its sole discretion, to commercialize licensed inventions
in the jurisdiction(s) that UTMDACC intends to terminate.
13.3 Any time after one (1) year from the EFFECTIVE DATE, BOARD or UTMCACC
have the Right to terminate the AGREEMENT in any national political
jurisdiction within the LICENSED TERRITORY if LICENSEE fails to either:
(1) make a SALE of a LICENSED PRODUCT for veterinary diagnostic use; or
(2) enter into a STRATEGIC ALLIANCE for veterinary diagnostic use. Not-
withstanding the foregoing, LICENSEE may extend the one (1) year period
provided in this Section 13.3 for an additional six (6) months if
LICENSEE notifies UTMDACC of its desire to extend before expiration of
the one (1) year period and pays a US$25,000.00 extension fee to
UTMDACC within thirty (30) days thereafter.
13.4 Any time after two (2) years from the EFFECTIVE DATE, BOARD or UTMCACC
shall have the right to terminate the AGREEMENT in any national
political jurisdiction within the LICENSED TERRITORY if LICENSEE fails
to either: (1) obtain regulatory approval of a Biological License
Application for human diagnostic use in the U.S. or an equivalent
foreign filing in any other national political jurisdiction for a
LICENSED PRODUCT; (2) make a SALE of a LICENSED PRODUCT for human
diagnostic use; or (3) enter into a STRATEGIC ALLIANCE for human
diagnostic use. Notwithstanding the foregoing, LICENSEE may extend the
two (2) year period provided in this Section 13.4 for an additional six
(6) months if LICENSEE notifies UTMDACC of it desire to extend before
expiration of the two (2) year period and pays a US$25,000.00 extension
fee to UTMDACC within thirty (30) days thereafter.
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13.5 Subject to any rights herein which survive termination, this AGREEMENT
earlier terminate in its entirety:
(a) automatically, if LICENSEE becomes bankrupt or insolvent
and/or if the business of LICENSEE shall be placed in the
hands of a receiver, assignee, or trustee, whether by volun-
tary act of LICENSEE or otherwise; or
(b) upon thirty (30) calendar days written notice from UTMDACC, if
LICENSEE breaches or defaults on the payment or report
obligations of ARTICLE IV, or use of name obligations of
ARTICLE X, unless, before the end of the such thirty (30)-
calendar day notice period, LICENSEE has cured the default or
breach to UTMDACC's satisfaction, and so notifies UTMDACC,
stating the manner of the cure, or
(c) upon ninety (90) calendar days written notice from UTMDACC if
LICENSEE breaches or defaults on any other obligation under
this AGREEMENT, unless, before the end of the such ninety (90)
calendar-day notice period, LICENSEE has cured the default or
breach to UTMDACC's satisfaction and so notifies UTMDACC,
stating the manner of the cure; or
(d) at any time by mutual written agreement between LICENSEE and
UTMDACC upon one hundred eighty (180) calendar days written
notice to all parties and subject to any terms herein which
survive termination; or
(e) if Section 13.2 is invoked; or
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(f) if LICENSEE has defaulted or been late on its payment
obligations pursuant to the terms of this AGREEMENT on any two
(2) occasions in a twelve (12) month period.
13.6 Upon termination of this AGREEMENT:
(a) nothing herein will be construed to release either party of
any obligation maturing prior to the effective date of the
termination; and
(b) LICENSEE covenants and agrees to be bound by the provisions of
Articles IX (Indemnification and Insurance), X (Use of Board
and UTMDACC's Name) and XI (Confidential Information and
Publication) of this AGREEMENT; and
(c) LICENSEE may, after the effective date of the termination,
sell all LICENSED PRODUCTS and parts therefor that it has on
hand at the date of termination, if LICENSEE pays the earned
royalty thereon and any other amounts due pursuant to Article
IV of this AGREEMENT: and
(d) Subject to Section 13.6(c), LICENSEE agrees to cease and
desist any use and all SALE of the LICENSED SUBJECT MATTER and
LICENSE PRODUCTS upon termination of this AGREEMENT; and
(e) LICENSEE grants to BOARD and UTMDACC a nonexclusive royalty
bearing license with the right to sublicense others with
respect to improvement made by LICENSEE (including improve-
ments licensed by LICENSEE from third parties) in the LICENSED
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SUBJECT MATTER. LICENSEE and UTMDACC agree to negotiate in
good faith the royalty rate for the nonexclusive license.
BOARD's and UTMDACC's right to sublicense others hereunder is
solely for the purpose of permitting others to develop and
commercialize the entire technology package.
XIV. WARRANTY: SUPERIOR-RIGHTS
14.1 Except for the rights, if any, of the Government of the United States
of America as set forth below, BOARD represents and warrants its belief
that (a) it is the owner of the entire right, title, and interest in
and to LICENSED SUBJECT MATTER, (b) it has the sole right to grant
licenses thereunder, and (c) it has not knowingly granted to licenses
thereunder to any other entity that would restrict rights granted
hereunder except as stated herein.
14.2 LICENSEE understands that the LICENSED SUBJECT MATTER may have been
developed under a funding agreement with the Government of the United
States of America and, if so, that the Government may have certain
rights relative thereto. This AGREEMENT is explicitly made subject to
the Government's rights under any such agreement and any applicable law
or regulation, including P.L. 96-517 as amended ended by P.L. 98-620.
To the extent that there is a conflict between any such agreement,
applicable law or regulation and this AGREEMENT, the terms of such
Government agreement, applicable law or regulation shall prevail.
14.3 LICENSEE understands and agrees that BOARD and UTMDACC, by this
AGREEMENT, make no representation as to the operability or fitness for
any use, safety, efficacy, approvability by regulatory authorities,
time and cost of development, patentability, and/or breadth of the
21
LICENSED SUBJECT MATTER. BOARD and UTMDACC, by this AGREEMENT, also
make no representation as to whether any patent covered by PATENT
RIGHTS is valid or as to whether there are any p -tents now held, or
which will be held, by others or by BOARD or UTMDACC in the LICENSED
FIELD, nor does BOARD and UTMDACC make any representation that the
inventions contained in PATENT RIGHTS do not infringe any other patents
now held or that will be held by others or by BOARD.
14.4 LICENSEE, by execution hereof, acknowledges. covenants and agrees that
LICENSEE has not been induced in any way by BOARD, SYSTEM, UTMDACC or
employees thereof to enter into this AGREEMENT, and further warrants
and represents that (a) LICENSEE has conducted sufficient due diligence
with respect to all it a and issues pertaining to this AGREEMENT; and
(b) LICENSEE has adequate knowledge and expertise, or has used
knowledgeable and expert consultants, to adequately conduct such due
diligence, and agrees to accept all risks inherent herein.
XV. GENERAL
15.1 This AGREEMENT constitutes the entire and, only agreement between the
parties for LICENSED SUBJECT MATTER and all other prior negotiations,
representations, agreements and understandings are superseded hereby.
No agreements altering or representation supplementing the terms hereof
will be made except by a written document signed by both parties.
15.2 Any notice required by this AGREEMENT must be given by prepaid, docu-
ment certified mail, return receipt requested, and addressed in the
case of UTMDACC to:
The University of Texas M. D. Xxxxxxxx Cancer Center
Office of Technology Commercialization
0000 X. Xxxx, Xxxxx 000, Xxxx 0000
Xxxxxxx, Xxxxx 00000
ATTENTION: Xxxxxxx X. Xxxx
22
with copy to BOARD:
BOARD OF REGENTS
The University of Texas System
000 Xxxx Xxxxxxx Xxxxxx
Xxxxxx, Xxxxx 00000
ATTENTION: Office of General Counsel
or in the case of LICENSEE to:
XPENTION
00000 Xxxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
ATTENTION: Xxxxx Xxxxxxxx, President and CEO
or other addresses as may be given from time to time under the terms of
is notice provision.
15.3 LICENSEE must comply with all applicable federal, state and local laws
and regulations in connection with its activities pursuant to this
AGREEMENT.
15.4 This AGREEMENT will be construed and enforced in accordance with the
laws of the United States of America and of the State of Texas, without
regard to its conflict of law provisions. Xxx Xxxxx Xxxxx Xxxxxx xx
Xxxxxx Xxxxxx, Xxxxx (or, if there is exclusive federal jurisdiction,
the United States District Court for the Southern District of Texas)
shall have exclusive jurisdiction and venue over any dispute arising
out of this AGREEMENT, and LICENSEE consents to the jurisdiction of
such courts; however, nothing herein shall be deemed as a waiver by
BOARD, SYSTEM or UTMDACC or its sovereign immunity.
23
15.5 Any dispute or controversy arising out of or relating to this
AGREEMENT, its construction or its actual or alleged breach will he
decided by mediation. It the mediation does not result in a resolution
of such dispute or Controversy, it will be finally decide by an
appropriate method of alternate dispute resolution, including without
limitation, arbitration, conducted in the city of Houston, Xxxxxx
County, Texas, in accordance with the applicable, then-current
procedures of the American. Arbitration Association. The arbitration
panel will include members knowledgeable in the evaluation of the
LICENSED SUBJECT MATTER. Judgment upon the award rendered may be
entered in the highest court or forum having jurisdiction, state or
federal. The provisions of this Section 15.5 will not apply to
decisions on the validity of patent claims or to any dispute or
controversy as to which any treaty or law prohibits such arbitration.
The decision of the arbitration must be sanctioned by a court of law
having jurisdiction to be binding upon and enforceable by the parties.
15.6 Failure of BOARD or UTMDACC to enforce a right under this AGREEMENT
will not act as a waiver of right or the ability to later assert that
right relative to the particular situation involved.
15.7 Headings included herein are for convenience only and will not be used
to construe this AGREEMENT.
15.8 If any part of this AGREEMENT is for any reason found to be
unenforceable, all other parts nevertheless will remain enforceable.
24
IN WITNESS WHEREOF, the parties hereto have caused their duly
authorized representatives to execute this AGREEMENT.
BOARD OF REGENTS OF THE
UNIVERSITY OF TEXAS
By: /s/ Xxxx Xxxxxxxxxx XPENTION
---------------------------------
Xxxx Xxxxxxxxxx
President By: /s/ Xxxxx X. Xxxxxxxx
The University of Texas -----------------------------
M. D. Xxxxxxxx Cancer Center Xxxxx X. Xxxxxxxx
President
Date: 2/17/05
Date: 0/0/00
XXX XXXXXXXXXX XX XXXXX
M. D. XXXXXXXX CANCER CENTER
By: /s/ Xxxx Xxxxx
---------------------------------------------------
Xxxx Xxxxx
Executive Vice President
The University of Texas
M. D. Xxxxxxxx Cancer Center
Date: 2/15/05
Approved as to Content:
By: /s/ Xxxxxxx X. Xxxx
-------------------------------------------
Xxxxxxx X. Xxxx
Managing Director, Technology
Commercialization
M. D. Xxxxxxxx Cancer Center
Date: 2/8/05
25
EXHIBIT I
MDA89-015, which consists of the following three patents:
"Tumor Marker Protein and Antibodies Thereto for Cancer Risk Assessment or Diag-
nosis," U.S. Patent No. 5,310,653, Issued May 10, 1994, Inventors: Xxxxxxxx
Xxxxxxxx-Xxxxxxxx; Xxxxxx X. Xxxxx; Xxxxxxxx Xxxxxxxx.
"Diagnostic and Premonitoring Uses of a 65 kDa Tumor-Associated Protein in Com-
panion and Domestic Animal Malignancy," U.S. Patent No. 5,411,868, Issued May 2,
1995; Inventors: Xxxxxxxx Xxxxxxxx-Waluszek; Xxxxxx Xxxxxxx.
"Tumor Marker Protein for Cancer Risk Assessment,: U.S, Patent No. 5,773,215,
Issued June 30, 1998, Inventors: Xxxxxxxx Xxxxxxxx-Xxxxxxxx; Xxxxxx X. Slap; and
Xxxxxxxx Xxxxxxxx.
26
