Exhibit 10.5
AGREEMENT
THIS AGREEMENT (the "Agreement") is made and/or entered into by and between
Indiana University's Advanced Research & Technology Institute ("IU-ARTI"), a
nonprofit corporation organized under the laws of the state of Indiana, having
offices at 000 Xxxxx Xxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxxxxx, Xxxxxxx 00000, and
Bruker Daltonics, Inc. ("Bruker"), a Massachusetts corporation with its
principal place of business at Xxxxxxx Xxxxx, Xxxxxxx Xxxx, Xxxxxxxxx,
Xxxxxxxxxxxxx 00000.
NOW THEREFORE in view of the promises set forth below, the parties hereto agree
as follows:
1. Definitions.
For all purposes of this Agreement the following terms, as used herein,
will have the meanings specified below:
1.1 "Effective Date" means the date last written below.
1.2 The "Invention" means all inventions, proprietary developments, data
and/or information owned as of the Effective Date by IU-ARTI relating to
Method and Apparatus Providing Improved Time-of-Flight Mass Spectrometer
Resolution, Invention Number 9404, created by Xxxxx X. Xxxxxx, Xxxxxx X.
Xxxxx, and Xxxxxxx X. Xxxx (hereinafter the "Inventors"), as described in
the patent application(s) and/or patent(s) listed in Schedule A, as well
as any continuations, divisions, reexaminations, reissues, substitutes,
renewals or extensions of any of the foregoing patent applications or
patents.
1.3 "Affiliate" of a specified entity means an entity that directly or
indirectly controls, is controlled by, or is under common control with,
the specified entity. For purposes of this Agreement, the direct or
indirect ownership of more than 50% of the outstanding voting shares of an
entity, the right to receive 50% or more of the profits or earnings of an
entity, or the right to control policy decisions of an entity, will be
deemed to constitute control.
1.4 "Patent Rights" means those patents and/or patent applications listed
on Schedule A and any patents issuing from such patent applications, or
any related U.S. or foreign applications or patents based upon any of such
patent applications or patents, as well as any continuations, divisions,
reexaminations, reissues, substitutes, renewals or extensions of any of
the foregoing patent applications or patents.
1.5 "Licensed Products" means any apparatus, device, system, product,
article, appliance, method or process covered in whole or in part by a
pending claim in a pending application within the Patient Rights or an
unexpired claim in a patent within the Patent Rights.
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1.6 "Net Sales" means the gross sales amount of all sales or leases of
Licensed Products by Bruker, Affiliates or sublicensees to any customer
minus any customary quantity, trade or cash discounts actually given,
allowed returns or allowances given in lieu of allowed returns, freight
and insurance, if separately itemized on the invoice and paid by the
customer, and any value added, sales, use or excise taxes actually
included in the invoice amount, provided, however, that no deductions will
be taken for any other costs incurred in the manufacture, offering for
sale, sale, distribution, shipment, promotion, advertisement, exploitation
or commercialization of the Licensed Products, for any costs of
collections or any uncollectible accounts, or for any other costs,
expenditures, fees or expenses. For all Licensed Products used by Bruker
as premiums to promote, market, sell and/or lease products or processes
other than Licensed Products, such premiums will be deemed to have been
sold at Bruker's customary sales price. Such premiums do not include
systems used solely for demonstration or for in-house research and
development purposes by Bruker. Licensed Products will be considered
"sold" when delivered, billed out, or invoiced, whichever comes first.
1.7 "Due Diligence" means the process whereby Bruker has the opportunity
to inspect and review all IU-ARTI and Inventors' files pertaining to the
Invention and Patent Rights.
2. Grant of License
2.1 IU-ARTI grants to Bruker a royalty-bearing exclusive license to make,
have made, use, lease, and sell the Licensed Products, and practice,
sublicense or otherwise enforce the Patent Rights, subject only, however,
to a reservation of rights by IU-ARTI for itself and Indiana University to
make, have made and use the Licensed Products or otherwise exploit the
Patent Rights for research and educational purposes.
2.2 Bruker acknowledges that the United States Government retains certain
rights in the inventions funded in whole or in part under any contract,
grant or similar agreement with a Federal agency. The License granted
under this Section 2 is expressly subject to any such rights.
2.3 Bruker grants to IU-ARTI and Indiana University a non-exclusive,
non-transferable royalty-free license, for research and educational
purposes only, to any improvements to the Invention developed by Bruker.
2.4 The scope of this Agreement will cover the Invention, Patent Rights
and Licensed Products and any patent that will issue claiming the benefit
of priority from the Patent Rights, or a priority date before the
effective date of the Agreement, in so far as the priority date pertains
to technology related to the subject matter of the Patent Rights, and any
invention in the field of laser time-of-flight mass spectrometry relating
to both instrumentation development and application development that may
have been conceived by the Inventors before the Effective Date of this
Agreement. This Agreement specifically excludes the work embodied in
IU-ARTI Invention Number 9737, "Hybrid
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Ion Mobility and Mass Spectrometer," and other such investigations outside
Xxxxx X. Xxxxxx'x research group ("Xxxxxx Group").
3. Payments/License Fees and Royalties.
3.1 Bruker agrees to provide IU-ARTI with a state of the art linear and
reflectron REFLEX II Matrix Assisted Laser Desorption Ionization
Time-of-Flight ("MALDI-TOF) Mass Spectrometer (valued at $280,000) in
support of the research support/collaboration effort as set forth in
Section 10.
3.2 Bruker agrees to pay to IU-ARTI a one-time payment of [*](1) as a
non-refundable license fee that will be deemed to forgive any past
royalties that may be due, if there are any, to be paid in the following
installments:
3.2.1 a one-time payment of [*] due upon execution of this
Agreement, and
3.2.2 a one-time payment of [*], due upon the expiration of ninety
(90) days after the Effective Date of this Agreement, whichever is
shorter;
[*] of the non-refundable license fee will be considered an advance
creditable toward future royalties due under 3.3.1, provided, that the
credit may be applied to only fifty percent (50%) of the total due in any
one period; and that no other credits or reductions may be applied.
3.3 Bruker agrees to pay to IU-ARTI within sixty (60) days after the end
of each semi-annual calendar year of this Agreement (i.e., period ending
June 30 and December 31) the following:
3.3.1 for Licensed Products made, and or sold within the United
States, an earned royalty of [*] of Bruker's or its Affiliates' Net Sales
(Bruker's royalty rate is discounted in consideration for its many
obligations under this Agreement); and
3.3.2 for Licensed Products manufactured here in the United States
and sold abroad for use in a foreign country, an earned royalty of [*]
less than the amount specified in Section 3.3.1 above, as an incentive to
make products in the United States.
3.4 After Bruker has secured the first two (2) sublicensees for IU-ARTI in
accordance with the terms of Section 4 below, the earned royalty of [*] in
Section 3.3.1 will be adjusted, either up or down, [*] the average ongoing
royalty rate of the sublicensees. The adjustment of this section will be
recalculated once every calendar year, at the beginning of the calendar
year, incorporating all sublicensees then in effect.
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(1) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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4. Sublicenses.
4.1 Bruker will use reasonably diligent efforts, in accordance with
Section 5, to sublicense the Patent Rights, and if they are unable to
sublicense the Patent Rights, to otherwise enforce the Patent Rights, in
accordance with Section 9. As long as Bruker continues to sublicense or
otherwise enforce the Patent Rights in such reasonably diligent manner,
then the exclusive license of this Agreement will remain exclusive. If,
however, at any time, Bruker provides IU-ARTI with written notice of its
decision to discontinue sublicensing, and or otherwise enforcing the
Patent Rights in accordance with this Agreement, then the exclusive
license of this Agreement will revert to a non-exclusive license ninety
(90) days after receipt of such notice by IU-ARTI.
4.2 Bruker will have the exclusive right to grant sublicenses to others
for the Patent Rights. Bruker will provide IU-ARTI with a complete copy of
each sublicense granted hereunder within sixty (60) days of execution of
each sublicense.
4.3 For any sublicenses granted by Bruker hereunder, Bruker will attempt
to collect up-front licensing fees from all sublicensees and will pay to
IU-ARTI, for any third-party up-front licensing fee ("third-party fees")
received without governmental intervention, [*] of such third-party fees
received, but after an aggregate of [*] in third-party fees has been
received, IU-ARTI and Bruker will split all additional third-party fees in
[*] shares each to IU-ARTI and Bruker. Third-party fees include up-front
payments, payments for past damages and license access fees, milestones,
and other financial consideration but not advances of future royalties.
4.4 For any sublicenses granted by Bruker hereunder, Bruker will pay to
IU-ARTI, with respect to third-party earned royalties based on sublicensee
Net Sales, or royalties paid in advance that are received without
governmental intervention, [*] of such third-party earned royalties
received, but whereupon an aggregate of [*] in third-party earned
royalties has been received from third-party royalties, IU-ARTI and Bruker
will split all additional third-party earned royalties in [*] shares each
to IU-ARTI and Bruker.
4.5 Bruker will not conclude a sublicense under which the earned royalties
payable by a sublicensee are less than [*](2) of such sublicensee's Net
Sales without the written consent of IU-ARTI. Bruker will not conclude a
sublicense under which the Patent Rights are cross-licensed to a
sublicensee or otherwise sublicensed or exchanged for non-financial
consideration without the written consent of IU-ARTI.
4.6 Termination of the license granted to Bruker by IU-ARTI under this
Agreement will terminate all sublicenses that may have been granted by
Bruker. Any sublicense granted by Bruker must contain corresponding
provisions relative to termination and the conditions of continuance of
any sublicenses.
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(2) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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5. Best Efforts and Due Diligence.
5.1 Bruker will use reasonably diligent efforts to bring the Licensed
Products to market through a program of developing, marketing,
sublicensing, commercializing, or otherwise enforcing the Patent Rights.
5.2 Bruker will prepare and submit to IU-ARTI within sixty (60) days of
the completion of Due Diligence or upon the expiration of one hundred
fifty (150) days after the Effective Date of this Agreement, whichever is
shorter, a commercially reasonable development plan for the development,
marketing, sublicensing, and enforcement of the Patent Rights
("sublicensing and commercialization plan"), which will become a part of
this Agreement.
5.3 Bruker will provide IU-ARTI with semi-annual reports of its activities
under the sublicensing and commercialization plan occurring during each
semi-annual period, due in accordance with Section 7.1, and its projected
activities under the sublicensing and commercialization plan for the next
semi-annual period. If the activities reported are substantially
inadequate compared to plans submitted earlier under Section 5.2, given
reasonable industry and commercialization standards, IU-ARTI will so
notify Bruker. If, within six (6) months of said notification, Bruker has
not rectified the deficiencies so identified, such deficiencies will
constitute a material breach of this Agreement.
6. Warranty.
6.1 IU-ARTI warrants that, to the best of its knowledge and belief, it is
the owner of all rights, title, and interest in the Patent Rights, free of
any liens, encumbrances, restrictions and other legal or equitable claims,
subject, however, to any rights of governmental authorities.
6.2 All property, whether tangible or intangible, which may be delivered
hereunder, will be delivered on an "as is, where is" basis without any
express or implied warranty. Other than the obligations of IU-ARTI set
forth in this Agreement, IU-ARTI MAKES NO OTHER WARRANTIES WHATSOEVER.
IU-ARTI HEREBY DISCLAIMS ALL WARRANTIES, WHETHER EXPRESS OR IMPLIED,
INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE, OR ANY IMPLIED WARRANTIES ARISING
FROM ANY COURSE OF DEALING, USAGE, OR TRADE PRACTICE. IU-ARTI ASSUMES NO
RESPONSIBILITY WITH RESPECT TO THE EXPLOITATION OR COMMERCIALIZATION OF
THE LICENSED PRODUCTS, INVENTION, OR PATENT RIGHTS OR THE MANUFACTURE,
USE, SALE, LEASE OR DISTRIBUTION OF ANY METHODS, PROCESSES, APPARATUS,
DEVICES, SYSTEMS, PRODUCTS, ARTICLES, AND/OR APPLIANCES DERIVED FROM OR
USING THE LICENSED PRODUCTS, INVENTION, OR PATENT RIGHTS BY BRUKER, ITS
AFFILIATES, OR SUBLICENSEES. IU-ARTI WILL
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NOT BE LIABLE FOR LOSS OF PROFITS, LOSS OF USE, OR ANY OTHER DIRECT,
INCIDENTAL, CONSEQUENTIAL, OR EXEMPLARY DAMAGES.
7. Records, Reports, and Payments.
7.1 Bruker will render to IU-ARTI semi-annual written reports for each
semi-annual calendar year period, due within sixty (60) days following
each semi-annual period, during the term of the license under this
Agreement, setting forth an accounting for all Licensed Products sold,
distributed, or leased, and a calculation of total Net Sales for such
semi-annual period including a reporting of any applicable deductions,
allowances, and charges as provided in Section 1.6 of this Agreement.
Concurrent with the making of the report under this Section 7.1, Bruker
will include payment due and will submit the sublicensing and
commercialization plan report require in accordance with Section 5.3.
Bruker will require its sublicensees to render these same written reports
to Bruker and will provide IU-ARTI with such reports within 15 days of
receipt by Bruker and such reports will be accompanied by applicable
payment to IU-ARTI by Bruker for each sublicensee.
7.2 Bruker will keep and maintain and will require any of its sublicensees
to keep and maintain, complete, accurate, and correct records and books
relating to the sale or lease of the Licensed Products for three (3) years
following the end of the calendar year to which such records and books
pertain.
7.3 The books and records of account kept by Bruker and any of its
sublicensees, must be made available upon reasonable notice during normal
business hours for examination by one or more auditors of IU-ARTI's
choosing and at IU-ARTI's expense, who will be permitted to enter upon the
premises of Bruker or its sublicensees and make and retain copies of any
and all parts of said books and records of account, including invoices
that are relevant to any report required to be rendered under this
Agreement. Any amount found to have been owed but not paid, will be paid
promptly to IU-ARTI with interest at the maximum rate allowable by Indiana
Usury Law. If, in the event any such audit shows that Bruker has underpaid
its royalty obligation hereunder by fifteen percent (15%) or more during
any calendar year, Bruker will pay IU-ARTI the amount of such underpayment
and Bruker will reimburse IU-ARTI for the out-of-pocket expense for such
audit. If, in the event any such audit shows that any sublicensee has
underpaid its royalty obligation hereunder by fifteen percent (15%) or
more during any calendar year, Bruker will require its sublicensee to pay
IU-ARTI the amount of such underpayment and will reimburse IU-ARTI for the
out-of-pocket expense for such audit.
7.4 Royalty or other payments to be paid in cash will be paid in United
States dollars in accordance with Section 16, or at such other place as
IU-ARTI may reasonably designate and will be made within sixty (60) days
following each semi-annual reporting period listed in Section 7.1. Any
withholding taxes which Bruker is required by law to withhold on
remittance of the royalty payments will be deducted from the royalty paid
and Bruker will furnish IU-ARTI with copies of all official receipts for
such taxes. If any royalties hereunder are based on Net Sales converted
from foreign currency, such
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conversion will be made by using the exchange rate prevailing at a
first-class foreign exchange bank on the last business day of the
semi-annual reporting period listed in Section 7.1 to which such royalty
payments relate. Late payment will bear interest at the maximum rate
allowable by Indiana Usury Law.
8. Patent Prosecution
8.1 The filing, prosecution, and maintenance of all patents within the
Patent Rights will be the primary responsibility of IU-ARTI provided,
however, that Bruker will have reasonable opportunities to advise and
cooperate with IU-ARTI in such filing, prosecution and/or maintenance.
8.2 Within ninety (90) days of presentation of itemized statements to
Bruker, Bruker will reimburse IU-ARTI for all reasonable fees and costs
incurred by IU-ARTI during the term of this Agreement relating to the
preparation, filing, prosecution, and maintenance of the Patent Rights.
8.3 In the event Bruker determines that the continued filing, prosecution
or maintenance of any particular patent application or patent within the
Patent Rights is not justified, it will advise IU-ARTI in writing and
IU-ARTI will then have the option to file, prosecute or maintain any such
Patent Rights at its own expense, and IU-ARTI will have the option to
delete the particular patent application or patent within the Patent
Rights from the license granted under this Agreement. In that event,
Bruker will have no rights under this license for any such deleted patent
application or patent and IU-ARTI will be free to exploit and to assign or
license any such deleted patent applications or patents to third parties
without effect on the amount of royalties due to IU-ARTI under Section
3.1.
8.4 In the event that any claim of any application within the Patent
Rights is canceled, abandoned, or otherwise disallowed by a final
non-appealable or non-appealed action of a Patent Office having
jurisdiction, or in the event that any claim of any patent within the
Patent Rights is held invalid or unenforceable by a non-appealable or
non-appealed decision by any court of competent jurisdiction, such claim
will be deemed to have expired, as of the date of final disallowance or
final decision of invalidity or non-enforceability.
9. Infringement
9.1 Each party will promptly inform the other in writing of any alleged
infringement of any of the patents within the Patent Rights, and provide
the other party with any available evidence of infringement.
9.2 During the term of this Agreement, Bruker will have the first option
to prosecute, at its own expense, any such infringements of the Patent
Rights and, in furtherance of such prosecution, Bruker may, for such
purposes, join IU-ARTI as a party plaintiff or use the name of IU-ARTI as
a party plaintiff, without expense to IU-ARTI. In the event that
litigation or other governmental proceedings are required in the conduct
of the patent
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enforcement or defense, Bruker shall be entitled to recover its reasonable
enforcement or defense costs, including reasonable attorneys' fees, on a
matter-by-matter basis, from any judgment, settlement, or the like, the
payment of which is dispositive of the governmental proceeding. Such costs
incurred by Bruker shall be recovered from the first one-half (1/2) of the
total recoveries from the litigation or other governmental proceeding,
with the remainder of this first one-half of recoveries being divided in
fifty percent (50%) shares between IU-ARTI and Bruker. The second one-half
(1/2) of the total recoveries from the litigation or other governmental
proceeding will be divided in fifty percent (50%) shares between IU-ARTI
and Bruker.
9.3 If, within six (6) months after having been notified of any alleged
infringement, Bruker will have been unsuccessful in persuading the alleged
infringer to desist, and will not have brought or be diligently
prosecuting an infringement action, or if Bruker will notify IU-ARTI at
any time prior thereto of its intention not to bring suit against any
alleged infringer, then, and in those events only, IU-ARTI will have the
right to prosecute at its own expense any infringement of the Patent
Rights, and IU-ARTI may, for such purposes, join Bruker as a party
plaintiff or use the name of Bruker as a party plaintiff, without expense
to Bruker. The total cost of any such infringement action commenced or
defended solely by IU-ARTI will be borne by IU-ARTI, and IU-ARTI will keep
any recovery or damages for past infringement derived therefrom.
9.4 In the event that a declaratory judgment action alleging invalidity or
non-infringement of any of the Patent Rights will be brought, Bruker will
defend such action, but IU-ARTI, at its option, will have the right to
intervene and take over the sole defense of the action at its own expense
and whereupon IU-ARTI will keep any recovery or damages derived therefrom
or from any counterclaims asserted therein. Unless and until IU-ARTI
elects to intervene and take over the sole defense of the action, Bruker
will be responsible, at its sole expense, for the defense of the action
and whereupon Bruker will keep any recovery or damages derived therefrom,
or from any counterclaims asserted therein. If IU-ARTI and Bruker share in
the responsibility of the expense for the defense of the action, Bruker
and IU-ARTI will share in any recovery or damages derived therefrom or
from any counterclaims asserted therein in proportion to the total costs
contributed by each party.
9.5 In the event an infringement action is brought against Bruker arising
from the use of the Patent Rights, Bruker will defend such action and will
be solely responsible for all attorneys fees, costs of defense, and
liability arising out of that action.
9.6 In any infringement suit brought or declaratory judgment action
defended by either Bruker or IU-ARTI to protect any of the Patent Rights
pursuant to this Agreement, the other party will, at the request and
expense of the party initiating such suit, cooperate in all respects and,
to the extent possible, have its employees testify when requested and make
available relevant records, papers, information, samples, specimens, and
the like.
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9.7 Bruker will not settle or compromise any claim or action in a manner
that imposes any restrictions or obligations on IU-ARTI without IU-ARTI's
written consent, which consent will not be unreasonably withheld.
10. Research Support
10.1. Scope of Work. IU-ARTI will use reasonable efforts to perform
experiments and studies of mutual interest to Bruker and Dr. Xxxxx Xxxxxx,
Professor of Chemistry, Indiana University, related to Time-of-Flight mass
spectrometry fundamentals, instrumentation and applications (hereinafter,
"Collaboration").
10.2. Key Personnel. The Collaboration will be performed under the
direction of Dr. Xxxxx Xxxxxx. In the event he is unable or unwilling to
continue with the Collaboration, the parties will attempt to find a
mutually acceptable substitute. In the event a mutually acceptable
substitute is not found, the Collaboration may be terminated.
10.3 Term. The Collaboration will commence on the date of completion of
the Due Diligence or will commence on the expiration of ninety (90) days
after the Effective Date of this Agreement, whichever is shorter; and
continue for a period of four (4) years.
10.4 Meetings. Xx. Xxxxxx will from time-to-time and at mutually agreeable
times give presentations at Bruker sponsored symposia or mass spectrometer
conferences and contribute application notes for Bruker's marketing
efforts. Bruker will be responsible for Xx. Xxxxxx'x travel expenses
related to the giving of presentations and marketing assistance but no
additional consulting fee will be paid for such presentations provided
that they do not exceed three (3) presentations per year.
10.5 Bruker Facilities. During the Collaboration, Bruker will make its
Massachusetts MALDI-TOF research and development and applications
laboratories accessible to Xx. Xxxxxx and his research group from
time-to-time for special experiments and collaborative projects that
cannot readily be performed in Xx. Xxxxxx'x laboratory.
10.6 Payments. Bruker will provide funding for the Collaboration as
follows:
10.6.1 [*](3) per year;
10.6.2 [*] of the Net Sales per year during the period of
Collaboration.
Payment will be made quarterly in advance with the first such
payment due 90 days after the Effective Date of this Agreement.
Checks will be payable to IU-ARTI and sent in accordance with
Section 16.
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(3) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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10.7 Equipment. Bruker will deliver and install a demo REFLEX II system with
the following configuration and/or capabilities:
10.7.1 Manual target introduction and computer-controlled sample
selection;
10.7.2 "Scout" ion source;
10.7.3 Ability to record positive and negative ion spectra;
10.7.4 One hundred megabyte (100Mb) storage capability for large
time-of-flight data files;
10.7.5 Bruker's latest data manipulation software, and most recent
applicable data acquisition software;
10.7.6 The Multichannel Plate (MCP) detectors provided will be
sufficiently speed-optimized to meet Bruker's resolution
specification in mode of 12,000;
10.7.7 Ion gate with a preselection resolution on the order of 100;
10.7.8 Digital scope capable of sampling at 1 GHz; and
10.7.9 Heating mantle to facilitate flight tube pump-out.
Bruker will provide for the replacement of Bruker-built parts (excluding
OEM-built parts) and documentation as needed to effect repairs on the
system, but will not be responsible for providing any other service or
repair of the system during the period of Collaboration. If either the
Agreement or the Collaboration is terminated prior to the fourth
anniversary of commencement of the Collaboration, the REFLEX II system
will be returned to Bruker. Subsequent to the fourth anniversary of
commencement of the Collaboration, title to the REFLEX 11 system will
remain with IU-ARTI and will be free of all claims, liens, or encumbrances
of Bruker.
10.8. Reports and Publications. It is intended that there be full
cooperation and a free flow of information between IU-ARTI and Bruker with
respect to the conduct of the Collaboration. Bruker will have unrestricted
timely access to the results of the Collaboration and the data generated
will be communicated fully and openly to Bruker. Subject to patent rights
of IU-ARTI, Bruker may use these data in any manner it deems appropriate.
IU-ARTI is free to publish, present, or use any results arising out of the
Collaboration for its own instructional, research, or publication
objectives provided that the publication, presentation or use does not
disclose any Information furnished by Bruker under Section 10.9. IU-ARTI
agrees that any proposed publication or presentation relating to the
Collaboration will be submitted to Bruker for review 30 days prior to
submission for publication or presentation. In the event that the proposed
publication or presentation contains patentable subject matter which
requires protection, IU-ARTI will, upon written request from Bruker within
the 30-day review period, delay the publication or presentation for a
maximum of an additional 60 days to allow filing of a patent application.
10.9. Intellectual Property.
10.9.1 IU-ARTI will promptly disclose to Bruker, and Bruker will
hold with the same level of confidentiality that it obligates IU-ARTI to
use under Section 10.9, all creative ideas, developments and inventions,
whether or not patentable, conceived or first
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reduced to practice as a result of the Collaboration (hereinafter
"Collaboration Inventions"). Collaboration Inventions developed solely by
IU-ARTI will remain the property of IU-ARTI. Collaboration Inventions
developed solely by Bruker will remain the property of Bruker.
Collaboration Inventions developed jointly by the parties will be jointly
owned by IU-ARTI and Bruker.
10.9.2 IU-ARTI hereby grants to Bruker and its Affiliates the
unrestricted, irrevocable, royalty-free, worldwide, perpetual,
non-exclusive right and license to make and/or use solely for Bruker's own
internal research and educational purposes the Collaboration Inventions,
and the unrestricted, irrevocable, royalty-free, worldwide, perpetual,
non-exclusive right and license to make, have made, use, and sell the
jointly-owned Collaboration Inventions.
10.9.3 IU-ARTI hereby grants to Bruker the first option for a
worldwide, exclusive, royalty-bearing license, subject to the rights of
the U.S. government, to make, have made, use, sell, with a right to
sublicense or other-wise enforce, Collaboration Inventions owned solely by
IU-ARTI, or IU-ARTI's interest in any jointly-owned Collaboration
Inventions. The terms of such license will be reasonable in the
circumstances and will be negotiated in good faith between Bruker and
IU-ARTI. The option will extend for a time period of six (6) months from
the date of first disclosure to Bruker. If Bruker exercises its option,
but Bruker and IU-ARTI are unable to reach agreement on the terms of the
license, Bruker will at its own option, have either "right of first
refusal" with respect to any agreement granting rights in Collaboration
Inventions to any third party, or a perpetual, worldwide, non-exclusive,
royalty-bearing license, subject to the rights of the U.S. government, to
make, have made, use, or sell Collaboration Inventions solely owned by
IU-ARTI. IU-ARTI will not enter into any agreement granting any third
party rights in Collaboration Inventions without first offering Bruker the
same terms and conditions offered to the third party. Bruker will have
thirty (30) days from IU-ARTI's first offering to Bruker in which to
notify IU-ARTI that it desires to exercise its right of first refusal. If
Bruker does not notify IU-ARTI that it desires to exercise its right of
first refusal, then IU-ARTI may conclude the agreement with a third party
on the terms and conditions proposed to Bruker. If IU-ARTI desires to
enter into an agreement on terms and conditions other than those proposed
to Bruker, it must again propose such agreement to Bruker as described in
this Section 10.9.3.
10.10. Confidentiality.
10.10.1 IU-ARTI agrees to hold in confidence, in accordance with
this paragraph, any information disclosed to IU-ARTI by Bruker in
connection with the Collaboration and identified in writing as
confidential (hereinafter "Information"). For the purpose of this
Agreement, "hold in confidence" means that IU-ARTI will protect the
Information in the same manner in which it protects its own confidential
information. The Information will remain the property of Bruker, and will
be disclosed only to those persons necessary for the performance of the
Collaboration or is required by law.
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10.10.2 No indirect or consequential damages or damages based on
loss of profits or market share are contemplated or recoverable for breach
of confidentiality.
10.10.3 The obligations of IU-ARTI to maintain confidentiality will
survive the expiration or termination of this Agreement and will endure
for 5 years from the date of disclosure.
10.10.4. The obligation of non-disclosure will not apply to the
following:
10.10.4.1. Information that is publicly available
through no fault of IU-ARTI;
10.10.4.2. Information that is disclosed to IU-ARTI by
a third party entitled to disclose the
Information;
10.10.4.3. Information that is already known to
IU-ARTI; or
10.10.4.4. Information that is required to be disclosed
by law, provided IU-ARTI promptly notifies
Bruker in writing of such lawful disclosure.
10.11 IU-ARTI agrees that it will not enter into any other agreements that
will conflict with its obligations hereunder.
11. Termination
11.1 Unless sooner canceled or terminated as herein provided, the license
granted under this Agreement will continue for ten (10) years or for the
full term of the last expiring patent or patent application within the
Patent Rights, whichever is longer.
11.2 If Bruker becomes bankrupt or insolvent, or files a petition in
bankruptcy, or if the business of Bruker is placed in the hands of a
receiver, assignee or trustee for the benefit of creditors, whether by the
voluntary act of Bruker or otherwise, this Agreement may be terminated by
IU-ARTI by giving written notice to Bruker.
11.3 If Bruker at any time defaults in the payment of any license fee,
royalty or other payment, or in providing any report due under this
Agreement or make any false report. or commits a material breach of any
covenant or undertaking set forth herein, IU-ARTI will have the right, in
addition to all other remedies available, to terminate this Agreement and
revoke any and all licenses herein granted, by giving Bruker ninety (90)
days prior written notice of such termination, provided, however, that if
Bruker will have rectified such default or breach within such ninety (90)
day period, then this Agreement will remain in effect and the rights and
licenses herein granted will be in force as if no default or breach had
occurred on the part of Bruker. In the event of termination under this
Section, Bruker will continue to be obligated to pay to IU-ARTI all
license fees, royalties, or other payments payable at the time of
termination pursuant to this Section or otherwise accruing under this
Agreement.
11.4 Bruker will have the right to terminate this Agreement with or
without cause at any time upon six (6) months written notice to IU-ARTI.
12
11.5 Any termination of the license granted under this Agreement will not
relieve Bruker of any obligations to make payments for any license fees,
royalties or other payments that may have accrued prior to the date of
such termination. Bruker may, for and only for a twelve (12) month period
following termination of this Agreement, sell all Licensed Products in the
inventory of Bruker at the usual sales price of Bruker for such Licensed
Products, provided that Bruker will pay to IU-ARTI the royalties thereon
as required by Section 3 of this Agreement and will submit the reports
required by Section 7 of this Agreement. Any Licensed Products remaining
in inventory of Bruker following such twelve (12) month period will be
either destroyed or, at Bruker's discretion, transferred, without charge
or cost, to IU-ARTI.
11.6 Upon termination of this Agreement for any reason the rights granted
herein will immediately revert to IU-ARTI.
11.7 If, at any time during this Agreement, Bruker directly or indirectly
opposes or assists any third party to oppose the grant of any Letters
Patent on any patent application within the Patent Rights or disputes or
directly or indirectly assists any third party to dispute the validity of
any patent within the Patent Rights, or any of the claims thereof, IU-ARTI
will be entitled thereafter to terminate immediately all or any portion of
the license granted under this Agreement by notice thereof to Bruker.
11.8 Provisions of this Agreement which by their nature contemplate rights
and obligations of the parties to be enjoyed or performed after the
expiration or termination of this Agreement will survive until their
purposes are fulfilled. Termination of this Agreement for any reason will
not relieve either party of its obligations under this Agreement previous
to the effective date of such termination.
12. Indemnification and Insurance
12.1 Bruker will, and require all of its sublicensees to, at all times
during the term of this Agreement and thereafter, indemnify, hold
harmless, and defend IU-ARTI, Indiana University, their trustees,
officers, directors, employees, agents, and affiliates from and against
all claims, losses, damages, and/or liability of whatsoever kind or
nature, as well as all costs and expenses, including legal expenses and
reasonable attorneys fees, which arise or may arise at any time out of or
in connection with any activity of Bruker involving the Licensed Products,
Invention, or the Patent Rights, including without limitation, the
manufacture, use, sale, lease, commercialization, licensing or
distribution of any system, method, process, apparatus, device, product,
article or appliance derived from or using the Licensed Products,
Invention, or the Patent Rights.
12.2 Bruker and each of its sublicensees will carry liability insurance at
its expense, adequate to assure its obligations to the IU-ARTI under
Section 11. 1 of this Agreement. Bruker will include satisfactory evidence
of adequate insurance coverage upon request.
13. Assignment
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Bruker may assign or otherwise transfer this Agreement and the license
granted hereby and the rights acquired by it to and only to the assignee
or transferee of Bruker's entire business or of that part of Bruker's
business to which the License granted under this Agreement relates,
provided, however, that such assignee or transferee agrees in writing to
be bound by the terms and conditions of this Agreement within thirty (30)
days of such sale or transfer.
14. Non-Use of Names
Bruker will not use the names or trademarks of Indiana University, IU-ART1
or of the Inventors, nor any adaptation thereof in any advertising,
promotional or sales activities without prior written consent obtained
from IU-ARTI in each separate case, except that Bruker may state that it
is licensed under one or more of the patents and/or applications within
the Patent Rights.
15. Export Controls
It is understood that IU-ARTI is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes, and other commodities that may require a license
from the applicable agency of the United States Government and/or may
require written assurances by Bruker that Bruker will not export data or
commodities to certain foreign countries without prior approval of such
agency. IU-ARTI neither represents that a license will not be required nor
that, if required, it will be issued.
16. Payments, Notices and Other Communications
Any payment, notice, or other communication pursuant to this Agreement
Nvill be sufficiently made or given on the date of mailing, if sent to
such party by express mail or certified first class mail, postage prepaid,
made out to IU-ARTI and addressed to it at its address below or made out
to Bruker and addressed to it at its address below or a replacement
address as either party will designate by written notice given to the
other party:
IU-ARTI: Xxxxx X. Xxxxxx, Vice President
Advanced Research and Technology Institute
Office of Technology Transfer
Indiana University Research Park
000 X. Xxxxxx Xxxxxx, Xxxxx 000
Xxxxxxxxxxx, XX 00000-0000
Tax ID Number: 00-0000000
Bruker: Xx. Xxxxx Xxxxxxx, President
Bruker Daltonics, Inc.
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00 Xxxxxxx Xxxxx, Xxxxxxx Xxxx
Xxxxxxxxx, XX 00000
17. Miscellaneous Provisions
17.1 This Agreement will be construed, governed, interpreted, and applied
in accordance with the laws of the State of Indiana, U.S.A., except that
questions affecting the construction and effect of any patent will be
determined by the law of the country in which the patent was granted.
17.2 This Agreement sets forth the entire agreement and understanding of
the parties related to the subject matter and may not be modified, except
that this Agreement may be modified by a duly executed amendment signed by
an authorized representative of both parties.
17.3 The provisions of this Agreement are severable, and in the event that
any provision of this Agreement will be determined to be invalid or
unenforceable under any controlling body of law, such invalidity or
non-enforceability will not in any way affect the validity or
enforceability of the remaining provisions hereof.
17.4 Bruker agrees to xxxx the Licensed Products made, used or sold in the
United States with all applicable United States patent numbers. All
Licensed Products used, shipped to or sold in other countries will be
marked in such a manner as to conform with the patent laws and practice of
the country of use, shipment, and/or sale.
17.5 The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of this Agreement will not
constitute a waiver of that right or excuse a similar subsequent failure
to perform any such term or condition by the other party.
17.6 Nothing contained in this Agreement will be deemed to place the
parties in a partnership, joint venture or agency relationship, and
neither party will have the right or authority to obligate or bind the
other party in any manner.
17.7 This Agreement will be executed in duplicate counterparts, each of
which will be deemed an original, but all of which taken together will
constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have hereunto set their hands and
seals and duly executed this Agreement as of the day and year last set
forth below.
Indiana University Advanced Research Bruker Daltonics, Inc.
and Technology Institute
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By: /s/ Xxxxxxx X. Xxxxxx By: /s/ Xxxxx Xxxxxxx
--------------------------------- ----------------------------
Xxxxxxx Xxxxxx Xx. Xxxxx Xxxxxxx
President President
DATE: 8/10/98 DATE: 8/10/98
------------------------- --------------------------
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SCHEDULE A
Patent No. Inventors Title
---------- --------- -----
5,504,326 Xxxxx X. Xxxxxx Spatial-Velocity Correlation Focusing in
Xxxxxx X. Xxxxx Time-of-Flight Mass Spectrometry
Xxxxxxx X. Xxxx
5,510,613 Xxxxx X. Xxxxxx Spatial-Velocity Correlation Focusing in
Xxxxxx X. Xxxxx Time-of-Flight Mass Spectrometry
Xxxxxxx X. Xxxx
5,712,479 Xxxxx X. Xxxxxx Spatial-Velocity Correlation Focusing in
Xxxxxx X. Xxxxx Time-of-Flight Mass Spectrometry
Xxxxxxx X. Xxxx
17
