Exclusive Patent License Agreement Between The Arizona Board Of Regents On Behalf Of The University Of Arizona And Solterra Renewable Technologies, Inc.
EXHIBIT 10.7
Between
And
Solterra
Renewable Technologies, Inc.
This
license agreement (the “Agreement”) is made effective as of the Effective Date
and is between The Arizona
Board of Regents on behalf of The University of Arizona, an Arizona body
corporate with its principal campus in Xxxxxx, Xxxxxxx 00000 (the “UNIVERSITY”),
and Solterra
Renewable Technologies, Inc., an Arizona Company with its principal place
of business at 0000 Xxxxx Xxxxx Xxxxxxx, Xxxxx, XX 00000
(“LICENSEE”).
AGREEMENT
The
parties agree as follows:
BACKGROUND
Work at
the UNIVERSITY has led to the creation of Technical Information and inventions
claimed in Patent Rights as further defined below.
LICENSEE
is interested in obtaining license to UNIVERSITY’s interest in valuable
intangible property rights for creation, manufacture, use, production,
distribution, and marketing of products and services from innovations
represented by the Technical Information and Patent Rights and can provide a
useful business environment for creating Licensed Products and practicing
Licensed Method. UNIVERSITY is willing to grant such rights so that
Licensed Products are created and Licensed Method practiced so that the benefits
of their availability are enjoyed by the public and a beneficial return to the
UNIVERSITY is provided.
1.
DEFINITIONS
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1.1
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"Change
of Control" shall mean the assignment, or other transfer that effects the
same however titled by LICENSEE, to a third party of this License between
UA and LICENSEE.
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1.2
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"Effective
Date" shall be the last date of signature by authorized representatives of
the two parties affirming acceptance of the terms and conditions of this
Agreement.
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1.3
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“Field
of Use” shall mean Organic Light-Emitting Diodes in printed electronic
displays and all other printed electronic
components.
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1.4
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“Licensed
Method” shall mean any method that:
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1.4.a
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Is
covered by Patent Rights, the use of which would constitute but for the
license granted to LICENSEE under this Agreement, an infringement of any
issued claim of Patent Rights (including, but not limited to, inducement
or contributory infringement); or
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1.4.b
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Incorporates
or is created from access to Technical Information which has provided
LICENSEE the time advantage of information and hence a springboard to the
business activities of LICENSEE.
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1.5
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“Licensed
Product” shall mean any product
that:
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1.5.a
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Is
covered by Patent Right or is produced by the Licensed Method, to the
extent that the production, use, or sale of such product would infringe an
issued claim of Patent Rights (including, but not limited to, inducement
or contributory infringement), but for the license granted to LICENSEE
under this Agreement or that is produced by the Licensed Method;
or
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1.5.b
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Incorporates
or is created from access to Technical Information which has provided
LICENSEE the time advantage of information and hence a springboard to the
business activities of LICENSEE.
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1.6
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"Net
Sales" shall mean the total of the gross invoice prices from the sale of
Licensed Product or the performance of Licensed Method or Licensed Service
by COMPANY, or a sublicensee, to any third parties for cash or other forms
of consideration. COMPANY may make the following deductions, at
rates customary within the industry (if not already deducted from the
gross invoice price), when calculating the total gross invoice
prices:
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1.6.a
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allowances
actually paid and limited to rejections, returns, and prompt payment and
volume discounts granted to customers of LICENSEE, or a
sublicensee;
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1.6.b
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freight,
transportation, packing, and/or insurance charges actually paid associated
with transportation;
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1.6.c
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taxes
based on sales when included in gross sales, but not taxes assessed on
income derived from such sales; and
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Where LICENSEE distributes Licensed Products for end use to
itself or a sublicensee, for purposes other than research and development,
then such distribution will be considered a sale at the list price
normally charged to independent third parties, and UNIVERSITY will be
entitled to collect royalty on such a sale in accordance with Article
3. Subsequent distribution or sale of these Licensed Products
from LICENSEE or sublicensee shall not be subject to additional
royalties.
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1.7
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“Patent
Rights” shall mean U.S. Patent No. 7,015,052, issued on March 21, 2006,
entitled "Screen-Printing Techniques for the Fabrication of Organic
Light-Emitting Diodes."
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1.8
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“Prior
Patent Costs” shall mean direct out of pocket costs incurred by UNIVERSITY
for the perfection of Patent Rights prior to the Effective Date which
currently total $9280.76.
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1.9
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“Sublicensing
Consideration” shall mean all consideration received by LICENSEE for the
grant of a sublicense of any of the rights granted to LICENSEE under this
Agreement, including but not limited to upfront license fees, minimum
annual payments, license maintenance payments, milestone payments, royalty
and equity interest in the acquirer above the fair market value of the
interest transferred. Sublicensing Consideration excludes
Running Royalties and direct payments to LICENSEE for research projects
advancing Licensed Product or Licensed Methods and detailed in advance by
a research plan and commensurate
budget.
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1.10
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“Technical
Information” shall mean UNIVERSITY's information and know-how represented
by:
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1.10.a
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the
information content of items made available to LICENSEE under this
Agreement in tangible form, including without limitation prototypes,
documented processes or techniques, written procedures or methods,
protocols, patent applications, software, data compilations or UNIVERSITY
invention disclosure files as inventoried in Exhibit A or otherwise
identified in this Agreement, whether provided prior to or after the
Effective Date of this Agreement;
or
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1.10.b
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services
by UNIVERSITY or UNIVERSITY employees acting as consultants with
UNIVERSITY’s approval that teach or transfer to LICENSEE UNIVERSITY
information associated with Article 1.10.a;
or
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1.10.c
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transfers
of UNIVERSITY personnel to LICENSEE that teach or transfer to LICENSEE
UNIVERSITY information associated with Article
1.10.a.
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1.11
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“Territory”
for Technical Information shall mean worldwide; and for Patent Rights
shall mean those countries for which Patent Rights have been perfected and
are being maintained in accordance with Article
5.
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2.
GRANT/RETAINED
RIGHTS
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2.1
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License Grant – Patent Rights.
UNIVERSITY grants to LICENSEE upon receipt of Prior Patent Costs
and the License Issue Fee as set forth in Article 3, and LICENSEE accepts,
an exclusive license to UNIVERSITY’s interest in valuable intangible
property rights in Patent Rights to make, have made, import, have
imported, use, market, sell, and distribute Licensed Product, and practice
Licensed Method within the Field of Use and in the
Territory. These rights are specifically subject to Paragraphs
2.4, 2.5 and 2.6 as well as the general terms and conditions set forth in
this Agreement. This grant does not relinquish UNIVERSITY
ownership in or rights to Technical Information or Patent Rights and does
not grant, by implication or otherwise, any other rights to LICENSEE of
any other technologies owned, invented, or discovered by UNIVERSITY,
whether past, present, or future.
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2.2
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License Grant – Technical
Information. UNIVERSITY grants to LICENSEE upon receipt of Prior
Patent Costs and the License Issue Fee as set forth in Article 3, and
LICENSEE accepts, a nonexclusive license to Technical Information to make,
have made, import, have imported, use, market, sell, and distribute
Licensed Product, and practice Licensed Method within the Field of Use and
in the Territory consistent with the purpose of this Agreement subject to
the confidentiality provisions of Article 9. These rights are
specifically subordinate to any Patent Right and the need for a grant of
rights thereto as well as subject to Paragraphs 2.4, 2.5 and 2.6 and the
general terms and conditions set forth in this
Agreement.
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2.3
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Sublicensing Grant.
UNIVERSITY grants to LICENSEE as long as LICENSEE possesses an exclusive
right to UNIVERSITY’s interest in Patent Rights under Paragraph 2.1 of
this Agreement, and LICENSEE accepts, the nontransferrable right to issue
to third parties sublicenses with respect to Licensed Product and Licensed
Method within the scope of the grant of rights provided by UNIVERSITY to
LICENSEE in Paragraphs 2.1 and 2.2. Any and all sublicense
agreements within the Field of Use granted by LICENSEE shall include all
of the rights and obligations contained in this Agreement due UNIVERSITY,
and, if applicable, due the United States
Government.
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2.4
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General Retained Rights.
UNIVERSITY retains all other rights in Patent Rights and Technical
Information not expressly granted
LICENSEE.
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2.5
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Specific Retained
Rights. UNIVERSITY retains:
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2.5.a
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For
its research and educational purposes, the right to practice the
inventions claimed in Patent Rights within the Field of Use and in the
Territory including without limitation UNIVERSITY's right to make, use,
have made, have used, import or have imported the inventions and to
practice Licensed Methods; and
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2.5.b
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The
right to maintain and sublicense these same rights in Paragraph 2.5.a
solely for research and educational purposes to other institutions of
higher education or non-profit research
institutions.
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2.5.c
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Nothing
in this Agreement limits the right of UNIVERSITY to publish any and all
results and technical data resulting from research performed by
UNIVERSITY, including, but not limited to, research relating to the
Licensed Products, Licensed Method, or Technical
Information.
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2.6
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Government License. The
development of Technical Information and Patent Rights was sponsored in
part by the U.S. Government, and as a consequence, this Agreement is
subject to overriding obligations to the Federal Government under rights
and limitations of Public Laws (PL) 96-517 and 98-620 and implementing
regulations including 35 USC §§200-211 and 37 CFR Part 401 (“U.S.
Government Rights”), as well as the royalty-free provisions of Paragraph
3.5 and the manufacturing statement of Paragraph
13.5.
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3.
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FEES, ROYALTIES AND
PATENT COSTS
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3.1
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Royalties. In
partial consideration for the rights granted herein, LICENSEE shall pay
UNIVERSITY on the schedule described in Article 4 the following
royalties:
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3.1.a
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Running Royalties:
Royalties based on Net Sales (the “Running Royalties”)
of:
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3.1.a.i
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Two
Percent (2.0 %) of Net Sales of Licensed Products for Non-Display
Electronic Component applications;
and
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3.1.a.ii
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Two
and one-half Percent (2.5%) of Net Sales of Licensed Products for Printed
Electronic Displays
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3.1.b
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Minimum Annual
Royalty: A minimum royalty according to the following
schedule.
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3.1.b.i
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The
Minimum Annual Royalty payment will be creditable against Royalties due in
each respective royalty year, July 1 to June 30th following the due
date.
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Due
Date
Minimum Royalty Due
January
1,
2011 $25,000
June 30,
2011 $50,000
June 30,
2012 $125,000
Each June
30 of every year
thereafter $200,000
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3.1.b.ii
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The
Annual Minimum Royalties will be adjusted by the cumulative percentage
change in the CPI-W Consumer Price Index between July and the
June preceding the date on which the payment in question is
payable.
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3.1.c
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Royalties Due From
Sublicenses: For each sublicense granted by LICENSEE,
LICENSEE shall pay UNIVERSITY on the schedule described in Article 4 the
following royalties :
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3.1.c.i
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Net Sales by
Sublicensees: Running Royalties as set forth in Article
3.1.a.
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3.1.c.ii
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Sublicensee Minimum Annual
Royalty: Minimum royalties as set forth in
3.1.b.
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3.1.c.iii
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Sublicensing
Consideration: Fifteen Percent (15%) of Sublicensing Consideration
earned in any period.
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3.2
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Prior Patent
Costs: In partial consideration for the rights granted
herein, LICENSEE shall pay any outstanding Prior Patent Costs upon
execution of this Agreement.
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3.3
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Patent
Costs: In partial consideration for the rights granted
herein, LICENSEE shall pay within sixty (60) days of receipt of the
UNIVERSTY invoice all costs present and future, incurred in maintaining
Patent Rights.
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3.4
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License
Fee: A License Fee of Fifteen Thousand Dollars ($15,000)
shall be paid within 90 days of execution of the
Agreement.
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3.5
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Early Termination
Fee: For termination prior to June 30, 2012, Licensee
will pay UA an early termination fee of
$75,000.
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3.6
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Change of
Control: The lesser of $350,000 or 3.0% of the monetary
value of all consideration from a transaction involving the sale or
assignment or effective transfer of the license agreement to any third
party is due upon execution of the Change of
Control.
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3.7
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U.S.
Government. If a Government License exists
according to Paragraph 2.6 and if LICENSEE maintains evidence of sales to
the U.S. government under U.S. Government Rights, then no royalties may be
collected nor need be paid on Licensed Products sold to or Licensed Method
performed for the U.S. Government or any agency thereof, as provided for
in that license to the government.
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4.
PAYMENTS, REPORTS, RECORD
KEEPING AND INSPECTIONS
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4.1
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Timing of Royalty
Payments. LICENSEE shall pay all royalties under Paragraph 3.1
quarterly and within thirty (30) days of the end of each calendar
quarter. Each such payment shall be for the most recently
completed calendar quarter.
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4.2
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Sublicense
Reporting. LICENSEE shall notify the UNIVERSITY of each
sublicense granted hereunder. LICENSEE shall collect and pay
all fees and royalties due UNIVERSITY and guarantee all such payments due
from sublicensees. LICENSEE shall monitor sublicensees and
assure license terms are met, appropriate records are kept and product
quality is equal to or greater than that required by this
Agreement.
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4.3
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Quarterly Royalty
Reports. After the first commercial sale of Licensed Product or
performance of Licensed Method, LICENSEE shall provide UNIVERSITY with an
annual written report within thirty (30) days of December 31 of each
calendar year indicating:
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4.3.a
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Quantity
of Licensed Product produced or Licensed Method performed in each
location, relevant information on maintaining Licensed Products quality,
and supplies of Licensed Products held by LICENSEE and sublicensee(s);
and
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4.3.b
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Summary
of Licensed Product and Licensed Method gross sales and Net Sales for both
LICENSEE and sublicensee(s); and
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4.3.c
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The
royalties due, including the method used to calculate royalties, the
exchange rates used, if applicable, as well as any reductions due to sales
to the U.S. Government; and
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4.3.d
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An
accounting of the quantity of Licensed Product sold and Licensed Method
performed by LICENSEE and each sublicensee(s), including a summary of
domestic and international distribution on which royalties are
payable.
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4.4
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Semi-Annual Pre-commercial
effort reporting. Beginning December 2009 and continuing annually
thereafter, LICENSEE shall submit to UNIVERSITY a progress report within
thirty (30) days of December 31 covering LICENSEE’s activities related to
the development and testing of all Licensed Products and Licensed Methods
and the obtaining of the governmental approvals necessary for production,
marketing, distribution and sale. Progress reports are required
for each Licensed Product and Licensed Method until the first commercial
sale of that Licensed Product occurs in the United States. Such reports
shall again be required if commercial sales of such Licensed Product or
performance of Licensed Method are suspended or
discontinued. Progress reports submitted hereunder shall
include, but are not limited to, the following
information:
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4.4.a
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Summary
of work completed
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4.4.b
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Key
scientific discoveries
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4.4.c
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Summary
of work in progress
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4.4.d
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Current
schedule of anticipated events or
milestones
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4.4.e
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Market
plans for introduction of Licensed Products and Licensed
Methods
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4.4.f
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A
summary of resources (dollar value) spent in the reporting
period.
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4.5
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Payment in U.S. Dollars.
Payments hereunder shall be made in U.S. dollars in the United
States. If Licensed Products are sold or Licensed Method is
performed for monies other than United States dollars, LICENSEE shall
first determine the earned royalty in the currency of the country in which
Licensed Products were sold or Licensed Method was practiced and then
convert the amount into equivalent United States funds, using the exchange
rate quoted in the Wall
Street Journal on the last business day of the reporting
period.
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4.6
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No Reduction by Taxes or Other
Charges. Royalties earned on sales occurring in any country outside
the United States may not be reduced by any taxes, fees, or other charges
imposed by the government of such country on the payment of royalty
income. LICENSEE is responsible for all bank transfer
charges. Notwithstanding this, all payments made by LICENSEE in
fulfillment of UNIVERSITY’s own tax liability in any particular country
will be credited against earned royalties or fees due UNIVERSITY for that
country.
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4.7
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Prompt Remittance on Foreign
Sales. If at any time, legal restrictions prevent the prompt
remittance of royalties by LICENSEE from any country where Licensed
Products are sold or Licensed Method is practiced, LICENSEE shall convert
the amount owed to UNIVERSITY into United States funds and shall pay
UNIVERSITY directly from its U.S. source of funds for as long as the legal
restrictions apply.
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4.8
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Timing of Royalty
Accrual. Royalties accruing to UNIVERSITY shall be owed by LICENSEE
to UNIVERSITY when Licensed Product or Licensed Method are invoiced, or if
not invoiced, when delivered, provided or performed to or for a third
party.
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4.9
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Interest on Late
Payments. In the event that any payments are not received when due,
LICENSEE shall pay additional interest charges on overdue balances in a
period at a daily compounded annual rate of the prime rate quoted in the
Wall Street
Journal on the last business day of the reporting period plus
10%. Interest shall be calculated from the date payment was due
and until actually received by
UNIVERSITY.
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4.10
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Record Keeping, Inspection and
Audit. LICENSEE shall maintain accurate books and records
concerning this Agreement , and, upon reasonable advance notice by
UNIVERSITY, LICENSEE’s records, inventory, and Licensed Product production
or Licensed Method practice facilities shall be open for inspection by
UNIVERSITY or University’s duly authorized agents for the purpose of
verifying the accuracy of reports, including but not limited to
calculations, deductions and payments due. LICENSEE shall keep,
and cause any sublicensee(s) to keep, accurate records and books showing
the maintenance, production, inventory, sale, distribution or sublicensing
of Licensed Product and the performance of Licensed
Method. LICENSEE shall permit UNIVERSITY or duly authorized
agents of UNIVERSITY, during regular business hours, to inspect LICENSEE
facilities and records for the purpose of verifying the accuracy of
reports, quality control and auditing royalty payments due
UNIVERSITY. In the event payment is in error by Ten Thousand
U.S. Dollars ($10,000.00) or more, LICENSEE shall pay all reasonable
documented audit expenses.
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4.11
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Invalidity. If any
patent or patent claim within Patent Rights is held invalid in a final
decision by a court of competent jurisdiction and last resort from which
no appeal has or can be taken, all obligation to pay royalties based on
that patent or claim or any claim patentably indistinct therefrom will
cease as of the date of final decision. LICENSEE shall not,
however, be relieved from paying any royalties that accrued before the
final decision, that are based on another patent or claim not involved in
the final decision, or that are based on UNIVERSITY’s property
rights.
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5.
PATENT PROSECUTION AND
ENFORCEMENT
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5.1
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Patent Prosecution.
UNIVERSITY maintain the Patent Rights at LICENSEE’s
expense. UNIVERSITY shall provide all patent correspondence to
LICENSEE and LICENSEE shall have opportunity to review and make timely
comment.
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5.2
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Patent Marking. LICENSEE
and sublicensee(s) shall xxxx Licensed Product with the patent numbers of
the patents within Patent Rights in accordance to 35 U.S.C. Section 287
(or its foreign equivalents) to reflect that unauthorized production, use,
sale, and distribution are
prohibited.
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5.3
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Infringement
Notification. LICENSEE shall notify UNIVERSITY promptly of any
known production, sale, marketing, distribution, or use of Licensed
Product or the performance of Licensed Method by persons that are not
authorized to produce, use, market, distribute, or sell Licensed Product
or Licensed Method. Notification of such infringement shall
include reasonable details that would enable UNIVERSITY to investigate and
terminate such infringement, and UNIVERSITY retains the right to terminate
such infringement subject to this Article
5.
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5.4
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Empowerment of LICENSEE
Concerning Infringements. Pursuant to this Agreement and to the
provisions of 35 U.S.C. Chapter 29 or other statutes, LICENSEE is
empowered:
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5.4.a
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to
bring suit in its own name, at its own expense, and on its own behalf for
infringement of presumably valid claims in Patent Rights,
and
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5.4.b
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in
any such suit, to enjoin infringement and to collect for its use, damages,
profits, and awards of whatever nature recoverable for such infringement,
and
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5.4.c
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in
any such suit, to settle any claim or suit for infringement of Patent
Rights with the prior written permission of UNIVERSITY, such permission
not to be unreasonably withheld,
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for which
LICENSEE has exclusive rights under this Agreement, provided that LICENSEE shall
notify UNIVERSITY of LICENSEE’s intention to file suit at least fourteen (14)
days prior to filing thereof. In the event that LICENSEE exercises
its rights under this Paragraph, unless UNIVERSITY then notifies LICENSEE in
writing, within seven (7) days after UNIVERSITY’s receipt of LICENSEE’s notice,
that UNIVERSITY agrees to bear one-half of the expense of prosecuting such suit,
all recoveries had or obtained in such suit shall belong solely to LICENSEE,
with the exception of any royalties or their equivalent payable to UNIVERSITY as
set forth in this Agreement. In any suit brought by LICENSEE under
this Paragraph in which UNIVERSITY has not agreed to bear one-half of the
expenses of such suit, UNIVERSITY shall have the right to be represented by
counsel of UNIVERSITY’s choice at UNIVERSITY’s expense if such suit involves, or
causes to become involved, actual or potential rights, obligations, and/or
properties of UNIVERSITY. LICENSEE agrees to keep UNIVERSITY
reasonably apprised of the status and progress of any litigation.
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5.5
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Recoveries when University
Shares Costs. If UNIVERSITY notifies LICENSEE that UNIVERSITY
agrees to bear one-half of expenses as specified in Paragraph 5.4, and if
UNIVERSITY pays LICENSEE from time to time as expenses are incurred, then
all recoveries obtained in such suit shall be divided equally between
LICENSEE and UNIVERSITY.
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5.6
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Suits Brought By
University. In the event that suit is brought by UNIVERSITY under
this Article, UNIVERSITY agrees that LICENSEE may join UNIVERSITY as a
party plaintiff in any such suit.
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5.7
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Bearing of Expenses. In
any infringement action commenced under this Article, provided that
UNIVERSITY fails to notify LICENSEE, as provided in Paragraph 5.4, that
UNIVERSITY agrees to bear one-half of the expense of prosecuting such
suit, the expenses in such action, including, but not limited to, costs,
fees, attorney fees, and disbursements, shall be paid solely by
LICENSEE.
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5.8
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UNIVERSITY Cooperation.
UNIVERSITY shall cooperate fully with LICENSEE in connection with any
infringement action initiated by LICENSEE under this Article, and
UNIVERSITY agrees promptly to provide reasonable access to all necessary
documents and to render reasonable assistance in response to a written
request by LICENSEE.
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5.9
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In The Event Of A Declaratory
Judgment. In the event that a declaratory judgment action alleging
invalidity or non-infringement of any of the patents included in Patent
Rights shall be brought against LICENSEE or raised by way of counterclaim
or affirmative defense in an infringement suit brought by LICENSEE under
this Article, LICENSEE, pursuant to this Agreement and to 35 U.S.C.
Chapter 29 or other statutes, is
empowered:
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5.9.a
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to
defend the suit in its own name, at its own expense, and on its own
behalf, for presumably valid claims in such patents;
and
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5.9.b
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in
any such suit to enjoin infringement and to collect for its use, damages,
profits, and awards of whatever nature recoverable for such infringement;
and
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5.9.c
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in
any such suit to settle any claim or suit for declaratory judgment
involving Patent Rights with the prior written permission of UNIVERSITY,
such permission not to be unreasonably
withheld.
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Nothing
in this Paragraph shall be construed as limiting any rights granted to or
retained by either UNIVERSITY or LICENSEE under this Article.
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5.10
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Damage Recovery. In the
event that UNIVERSITY does not participate according to Paragraph 5.4 in
any action brought under this Article and LICENSEE recovers damages,
LICENSEE shall pay to UNIVERSITY an earned royalty on such recovery, the
amount of such royalty to be equal to that specified in Article 3 and to
be payable as specified under Article
4.
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5.11
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No Obligation to Bring
Suit. Nothing contained within this Article or this Agreement shall
be construed to obligate UNIVERSITY to bring any suit or to enforce any
rights under this Agreement. Additionally, nothing contained
within this Article or this Agreement shall be construed to limit the
ability of UNIVERSITY to bring any suit or to enforce any rights under
this Agreement.
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6.
DILIGENCE
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6.1
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Obligation to
Commercialize. LICENSEE shall, using best business practice,
diligently fill the market demands for Licensed Products and Licensed
Method within the Field of Use and in the
Territory.
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6.2
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Approvals or
Certifications. LICENSEE shall diligently endeavor to obtain all
necessary governmental approvals for the manufacture, use, marketing,
sale, and distribution of Licensed Products and/or performance of Licensed
Method.
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6.3
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Diligence Timelines.
LICENSEE shall:
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6.3.a
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market
Licensed Products for sale, or Licensed Method for performance, in the
Territory and the within the Field of Use by December 31, 2010;
and
|
|
6.3.b
|
market
Licensed Products for sale and Licensed Method for performance within the
Field of Use within sixty (60) days of regulatory approval by the
appropriate governmental agency in each country in the
Territory.
|
7.
TERM AND
TERMINATION
|
7.1
|
Term. This Agreement
shall be in effect as of the Effective Date, and shall continue until the
last-to-expire Patent Rights.
|
|
7.2
|
Termination by LICENSEE.
LICENSEE may terminate this Agreement, at any time, upon ninety (90) days
prior written notice to UNIVERSITY and including in the notice a
declaration that LICENSEE is no longer, and henceforth will not be, making
commercial gain from the Patent Rights or Technical Information for
Licensed Product.
|
|
7.3
|
Termination by UNIVERSITY.
If LICENSEE breaches any term of this Agreement, then UNIVERSITY
may give written notice of the breach; and, if LICENSEE fails to correct
the breach within sixty (60) days, then UNIVERSITY shall have the right to
cancel or terminate this Agreement. This right, if exercised by
UNIVERSITY, supersedes the rights granted in Article
2.
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7.4
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Automatic Termination.
This Agreement will terminate automatically if, during the term of this
Agreement, LICENSEE:
|
|
7.4.a
|
commits
any act of bankruptcy; or
|
|
7.4.b
|
becomes
insolvent; or
|
|
7.4.c
|
is
unable to pay its debts as they become due;
or
|
|
7.4.d
|
files
a petition under any bankruptcy or insolvency act;
or
|
|
7.4.e
|
has
a petition under any bankruptcy or insolvency act filed against it which
is not dismissed within sixty (60) days;
or
|
|
7.4.f
|
offers
any component of Patent Rights for the benefit of its
creditors; or
|
|
7.4.g
|
terminates
its incorporation.
|
|
7.5
|
Termination by UNIVERSITY.
UNIVERSITY shall have the right, at its sole discretion, to
terminate this Agreement if, during the term of this Agreement,
LICENSEE:
|
|
7.5.a
|
ceases
the commercial sale of Licensed Product or performance of Licensed Method;
or
|
|
7.5.b
|
liquidates
or takes steps to liquidate its assets reasonably required for the sale of
Licensed Product or the performance of Licensed
Method.
|
|
7.6
|
Effect of Termination.
Upon termination of this Agreement for any reason, LICENSEE shall
immediately cease use of the rights granted herein, including but not
limited to ceasing to transfer Licensed Products and practice Licensed
Method; all Licensed Product under the control of LICENSEE and/or
sublicensee(s) shall be fully and completely destroyed by LICENSEE using
appropriate chemical and/or mechanical methods, excepting Licensed Product
stock held by sublicensee(s) that remains in compliance with the terms and
conditions of this Agreement.
|
|
7.7
|
Effect of Termination Upon
Sublicenses. Upon termination of this Agreement for any reason,
UNIVERSITY, at its sole discretion, shall determine whether sublicenses
shall be canceled or assigned to UNIVERSITY. LICENSEE agrees to
assign to UNIVERSITY if requested by
UNIVERSITY.
|
|
7.8
|
No Relief of Obligations
Incurred Prior to Termination. Termination of the Agreement granted
hereunder for any reason by either party shall not relieve the parties of
any obligation accruing prior to such
termination.
|
|
7.9
|
Surviving
Terms. Notwithstanding any termination or expiration of
this Agreement, the provisions of Articles 9, 10 and 11 shall survive and
shall be enforceable according to the terms
thereof.
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8.
ASSIGNMENT
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8.1
|
UNIVERSITY Assignments.
UNIVERSITY may assign this
Agreement.
|
|
8.2
|
Other Assignments. This
Agreement shall not be assigned by LICENSEE
except:
|
|
8.2.a
|
With
the prior written consent of UNIVERSITY, which consent shall not be
unreasonably withheld; or as part of a sale or transfer of substantially
the entire business of LICENSEE relating to operations which concern this
Agreement, and that a condition of such sale is purchaser’s agreement to
comply with the terms and conditions of this
Agreement.
|
|
8.2.b
|
Assignment
of this Agreement under this Article shall only become effective after
UNIVERSITY receives written notice by the Party making the assignment to
the other Party that:
|
|
8.2.b.i
|
The
assignment has been made;
|
|
8.2.b.ii
|
The
name of the new assignee;
|
|
8.2.b.iii
|
Any
breaches have been cured and payments due paid;
and
|
|
8.2.b.iv
|
The
new recipient of notices and other necessary information required under
Article 12.
|
9.
CONFIDENTIALITY
|
9.1
|
Information Handling.
LICENSEE shall safeguard confidential Technical Information (“Confidential
Information”) supplied by UNIVERSITY against disclosure to others with the
same degree of care as it exercises with its own data or information of a
similar nature. LICENSEE shall not use such Confidential
Information except to perform its obligations under this Agreement, and
shall not disclose such Confidential Information to others (except to its
employees, agents, or consultants who are bound to LICENSEE by a like
obligation of confidentiality) without the express written permission of
UNIVERSITY, except that LICENSEE is not prevented from using or disclosing
any of the Confidential Information
that:
|
|
9.1.a
|
LICENSEE
can demonstrate by written records was previously known to it;
or
|
|
9.1.b
|
is
now or becomes in the future public knowledge other than through acts or
omissions of LICENSEE; or
|
|
9.1.c
|
is
lawfully obtained by LICENSEE from sources independent of UNIVERSITY
without obligation of confidentiality;
or
|
|
9.1.d
|
is
required to be disclosed to a third party by applicable laws or out of
court proceedings.
|
|
9.2
|
Term of secrecy. The
secrecy obligations of LICENSEE under these terms shall remain in effect
for five (5) years from the termination date of this
Agreement.
|
|
9.3
|
No Reduction of Obligations Due
to Timing of Receipt of Technical Information. The obligations of
confidentiality and limited use hereunder apply to any Confidential
Information of UNIVERSITY provided to LICENSEE relating to the subject
matter of this Agreement, whether supplied under this Agreement or prior
to the Effective Date.
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9.4
|
Arizona Public Records Law.
This Agreement itself cannot be Proprietary Information per the
Arizona Public Records Law A.R.S. 39-121 and A.R.S.
41-1350.
|
10.
NO
WARRANTIES
|
10.1
|
EXCEPT AS OTHERWISE EXPRESSLY
SET FORTH IN THIS AGREEMENT, UNIVERSITY MAKES NO REPRESENTATIONS AND
EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING,
BUT NOT LIMITED TO, WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, AND VALIDITY OF PATENTED RIGHTS CLAIMS, ISSUED OR
PENDING. IT IS AGREED THAT LICENSEE ACCEPTS LICENSED PRODUCTS
AND LICENSED METHODS ON AN “AS IS”
BASIS.
|
|
10.2
|
NOTHING
IN THIS AGREEMENT, EITHER EXPRESS OR IMPLIED, OBLIGATES UNIVERSITY EITHER
TO BRING OR TO PROSECUTE ACTIONS OR SUITS AGAINST THIRD PARTIES FOR PATENT
INFRINGEMENT OR TO FURNISH ANY KNOW-HOW OR TRADE SECRETS NOT PROVIDED IN
UNIVERSITY’S PATENT RIGHTS.
|
|
10.3
|
IN
NO EVENT SHALL UNIVERSITY BE LIABLE FOR DAMAGES OF ANY KIND INCLUDING
INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES RESULTING FROM THE EXERCISE
OF THIS LICENSE OR THE USE OF THE TECHNICAL INFORMATION OR LICENSED
PRODUCTS.
|
|
10.4
|
NO
WARRANTY OR REPRESENTATION IS MADE THAT ANYTHING MADE, USED, OR SOLD UNDER
THE TERMS OF THIS AGREEMENT WILL BE FREE FROM INFRINGEMENT OF ANY THIRD
PARTY PATENTS.
|
|
10.5
|
THIS
AGREEMENT DOES NOT CONFER BY IMPLICATION, ESTOPPEL, OR OTHERWISE ANY
LICENSE OR RIGHTS TO ANY OTHER PATENT OF UNIVERSITY OTHER THAN PATENT
RIGHTS AS EXPRESSLY STATED HEREIN, REGARDLESS OF WHETHER SUCH PATENTS ARE
DOMINANT OR SUBORDINATE TO PATENT
RIGHTS.
|
11.
LICENSEE REPRESENTATIONS,
INDEMNIFICATION AND INSURANCE
|
11.1
|
LICENSEE Warranties and
Representations. LICENSEE warrants and represents
that:
|
|
11.1.a
|
The
production, use, marketing, sale, and distribution of Licensed Products
and the practice of Licensed Method shall be in conformance to applicable
county, state, federal or foreign laws, rules, and regulations governing
the production, use, marketing, sale, and distribution of Licensed
Products or the practice of Licensed Method in or between any county,
state, federal, or foreign jurisdiction;
and
|
|
11.1.b
|
Licensed
Products will not be produced, used, marketed, sold, distributed, and/or
sublicensed outside the Field of Use or Territory and that Licensed Method
will not be practiced outside the Field of Use or
Territory.
|
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11.2
|
LICENSEE Representations,
Warranties and Indemnification. LICENSEE shall indemnify, hold
harmless and defend UNIVERSITY, its officers, employees, agents, and the
inventors of the Technical Information leading to patents and patent
applications in Patent Rights and their employers, against any and all
claims, suits, losses, damage, costs, fees, and expenses resulting from or
arising out of the exercise of this Agreement or any sublicense, and those
arising from the breach or non-performance by LICENSEE, of the foregoing
obligations, representations and warranties. This
indemnification includes, but is not limited to, any product
liability.
|
|
11.3
|
Insurance Requirements.
LICENSEE, at its sole cost and expense, shall insure its activities in
connection with the work under this Agreement and obtain, keep in force,
and maintain insurance as follows, or an equivalent program of self
insurance:
|
|
11.3.a
|
Comprehensive
or commercial general liability insurance (contractual liability included)
with its minimum limits as follows:
|
|
11.3.a.i
|
Each
Occurrence One Million U.S. Dollars
($1,000,000)
|
|
11.3.a.ii
|
Products/Completed
Operations Aggregate Two Million U.S. Dollars
($2,000,000)
|
|
11.3.a.iii
|
Personal
and Advertising Injury One Million U.S. Dollars
($1,000,000)
|
|
11.3.a.iv
|
General
Aggregate (commercial form only) Two Million U.S. Dollars
($2,000,000)
|
|
11.3.b
|
The
coverage and limits specified above do not in any way limit the liability
of LICENSEE under this Agreement. Such insurance coverage is
required prior to the first sale of Licensed Products or performance of
Licensed Method. LICENSEE shall furnish UNIVERSITY with
certificates of insurance showing compliance with all
requirements. Such certificates
must:
|
|
11.3.b.i
|
Provide
for thirty (30) day advance written notice to UNIVERSITY of any
modification.
|
|
11.3.b.ii
|
Indicate
that UNIVERSITY has been endorsed as an additional Insured under the
coverage specified above.
|
|
11.3.b.iii
|
Include
a provision that the coverage will be primary and will not relate to nor
will be excess over any valid and collectable insurance or program of
self-insurance carried or maintained by
UNIVERSITY.
|
|
11.4
|
Notification Concerning Suits
Under This Article. UNIVERSITY shall notify LICENSEE in writing of
any claim or suit brought against UNIVERSITY in respect of which
UNIVERSITY intends to invoke the provisions of this
Article. LICENSEE shall promptly keep UNIVERSITY informed on a
current basis of its defense of any claims under this
Article.
|
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12.
|
NOTICES
|
|
12.1
|
Delivery. Any royalty or
fee payment, notice, or other communication required or permitted to be
made or to be given to either party under this Agreement shall be
sufficiently made or given on the date of mailing if sent to such party by
either certified first class U.S. mail, postage prepaid, or by traceable
delivery services such as Federal Express, United Postal Service or DHL,
addressed to that party at its address set forth
below:
|
If to
UNIVERSITY:
Attention XXX Reference:
UA00-032
Office of Technology
Transfer
The University of Arizona
University Services Building, Room
204
000 Xxxxx Xxxxxx Xxxxxx
Xxxxxx,
XX 00000
Phone:
000-000-0000 Facsimile:
000-000-0000
If to
LICENSEE:
Xx.
Xxxxxx Xxxxxxx
Solterra
Renewable Technologies, Inc.
0000
Xxxxx Xxxxx Xxxxxxx
Xxxxx,
XX 00000
Phone:
000-000-0000 Facsimile: 000-000-0000
|
13.
|
MISCELLANEOUS
|
|
13.1
|
Use of Names and Trademarks. Nothing
contained in this Agreement confers any right to use in advertising,
publicity, or other promotional activities any name, trade name,
trademark, or other designation of any party hereto (including
contraction, abbreviation, or simulation of any of the
foregoing). Unless required by law, the use by LICENSEE of the
name “Arizona Board of Regents”, “The University of Arizona”, or the name
of any campus associated with UNIVERSITY in advertising, publicity, or
other promotional activities is
prohibited.
|
|
13.2
|
Governing Law and Venue.
This Agreement is subject to and shall be construed and enforced in
accordance with the laws of the State of Arizona, but the scope and
validity of any patent or patent application shall be governed by the
applicable laws of the country where the patent or patent application is
filed.
|
|
13.3
|
Entire Understanding.
This Agreement embodies the entire understanding of the parties, and there
are no other agreements or understandings, either express or implied,
between the parties relating to the subject matter hereof. No
amendment or modification of this Agreement shall be valid or binding upon
the parties unless made in writing and signed on behalf of each of the
parties by their respective duly authorized officers or
agents.
|
|
13.4
|
Headings Provided For
Convenience. The headings of the Articles and certain paragraphs
are inserted for convenience of reference only and are not intended to be
a part of or affect the meaning or interpretation of this
Agreement.
|
|
13.5
|
U.S. Manufacture.
LICENSEE shall ensure compliance with Title 35 U.S.C.
§204.
|
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13.6
|
Government Reporting
Requirements or Approvals. LICENSEE shall notify UNIVERSITY if
LICENSEE becomes aware that this Agreement is subject to any U.S. or
foreign government reporting or approval requirement. LICENSEE
shall make all necessary filings and pay all costs including, but not
limited to, fees, penalties, and all other out-of-pocket costs associated
with such reporting or approval
process.
|
|
13.7
|
Export Control. LICENSEE
shall observe all applicable United States and foreign laws with respect
to the transfer of Licensed Products or Licensed Method and related
technical data to foreign countries, including, without limitation, the
Export Administration Regulations.
|
|
13.8
|
Enforceability of Terms.
In case any of the provisions contained in this Agreement is held to be
invalid, illegal, or unenforceable in any respect, that invalidity,
illegality, or unenforceability will not affect any other provisions of
this Agreement, and this Agreement will be construed as if the invalid,
illegal, or unenforceable provisions had never been contained in
it.
|
|
13.9
|
State
of Arizona Required Clauses.
|
|
13.9.a
|
The
parties agree to be bound by applicable state and federal rules governing
equal employment opportunity, immigration and
nondiscrimination.
|
|
13.9.b
|
The
parties agree that should a dispute arise between them, in any manner,
concerning this Agreement, and said dispute involves the sum of Fifty
Thousand U.S. Dollars ($50,000) or less in money damages only, exclusive
of interest or cost of attorney’s fees, the parties will submit the matter
to binding arbitration pursuant to the Arizona Supreme Court Rules for
Compulsory Arbitration and the decision of the arbitrator(s) shall be
final and binding upon the parties.
|
|
13.9.c
|
The
parties recognize that the performance by the UNIVERSITY may be dependent
upon the appropriation of funds by the State Legislature of
Arizona. Should the State Legislature of Arizona fail to
appropriate the necessary funds, the UNIVERSITY may cancel this Agreement
without further duty or obligation.
|
|
13.9.d
|
This
Agreement is subject to the provisions of A.R.S. § 38-511. The
UNIVERSITY may cancel this Agreement by written notice to the parties if
any person substantially involved in obtaining, drafting, or procuring
this Agreement for or on behalf of the UNIVERSITY becomes an employee or
consultant in any capacity of
LICENSEE.
|
|
13.10
|
Performance. The failure
of any party hereto at any time or times to require performance of any
provisions of this Agreement shall in no manner affect its right to
enforce such provision at a later
time.
|
|
13.11
|
No Waiver. No
waiver by any party of this Agreement of any breach or default of any of
the covenants or agreements herein set forth may be deemed a waiver as to
any subsequent and/or similar breach or
default.
|
|
13.12
|
Parties. The
parties are not partners or joint venturers, and nothing herein shall be
construed as causing them to be. Neither of the parties has the
authority to act in the other’s name, nor act for the other’s benefit,
except as is expressly provided in this
Agreement.
|
|
13.13
|
Complete
Agreement. This Agreement constitutes the entire
agreement, both written and oral, between the parties. All
prior agreements relating to the subject matter of this Agreement, whether
written or oral, express or implied, are
cancelled.
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Renewable Technologies /The University of Arizona
IN
WITNESS WHEREOF, each party hereto has executed this Agreement in duplicate
originals by their respective and duly authorized officers on the day and year
below written.
ARIZONA
BOARD OF
REGENTS
SOLTERRA RENEWABLE
TECHNOLOGIES
on
behalf of
THE
UNIVERSITY OF ARIZONA
By:____________________________ By:____________________________
(Signature)
(Signature)
Name: Xxxxxxx
X.
Xxxxx
Name: Xxxxxx Xxxxxxx
Title: Director
Title: President and CEO
Office
of Technology Transfer
Date:___________________________ Date:____________________________
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Exhibit
A
Technical
Information Transferred as of the Effective Date
|
A.1.
|
U.S.
Patent No. 7,015,052, issued on March 21, 2006, entitled "Screen-Printing
Techniques for the Fabrication of Organic Light-Emitting Diodes" and any
and all U.S. issued patents or patent applications that may be derived
therefrom "
|
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