Exhibit 10.1
QUICK-MED TECHNOLOGIES, INC.
LICENSE AGREEMENT
License Agreement dated September 13 , 2000 by and among Quick Med
Technologies, Inc., a Delaware corporation ("QMT") and ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ and
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ (the "INVENTORS").
WHEREAS, the INVENTORS have developed and patented certain compounds
known as MMP Inhibitors and the uses thereof; and
WHEREAS, QMT is engaged in the development of pharmaceutical compounds
and desires to license certain rights to the MMP Inhibitors.
Now, THEREFORE, QMT and INVENTORS agree as follows:
1. DEFINITIONS.
As used herein:
1.1 "Affiliate" means any entity which controls, is controlled by, or
is under common control with another entity. An entity is deemed to be in
control of another entity (controlled entity) if such company directly or
indirectly owns more than 50% in nominal value of the issued equity share
capital of such other company, or more than 50% of the shares entitled to vote
upon the election of:
(i) the directors,
(ii) persons performing functions similar to those performed by
directors or
(iii) persons otherwise having the right to elect or appoint (a)
directors having the majority vote of the Board of Directors,
or (b) other persons having the majority vote of the highest
and most authoritative directive body of such other company.
1.2 "Chemicals" shall mean any chemicals claimed in LICENSED PATENTS.
1.3 "Inventors" shall mean ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Ph.D, and ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇, Ph.D., having permanent residences of ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇,
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and ▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇, respectively.
1.4 "Know-How Rights" shall mean any and all KNOW-HOW relating to the
LICENSED PATENTS in the LICENSED FIELD and developed by or in possession
(without restriction) of INVENTORS. KNOW-HOW shall in general have its usual and
accepted meaning, that is, inter alia, all factual knowledge and proprietary
information held as trade secrets, including without limitation all preclinical,
clinical, chemical, biochemical, toxicological, manufacturing, formulation and
scientific-research information, whether or not capable of precise separate
description but which alone or when accumulated gives to the one acquiring it an
ability to study, test, produce, formulate or market something which one
otherwise would not have known how to study, test, produce, formulate or market
in the same way. This definition of KNOW-HOW excludes intellectual property that
if conveyed would breach the Glycomed agreement ("Separate License Agreement"
with Glycomed Inc., dated January 20, 1995) or any other identified
confidentiality or other agreements that legally bind on the INVENTORS.
1.5 "Licensed Field" shall mean all applications of the LICENSED
PATENTS relating to TOPICAL medical and cosmetic uses.
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1.6 "Licensed Patents" shall mean the patents and any patents issuing
on U.S. Patent Application(s) described in Appendix A, and any corresponding
patent applications and any patents that may issue thereon throughout the world,
including any extensions, renewals, divisionals, continuations,
continuations-in-part, reexaminations and reissues thereof, excluding any QMT
PATENTS.
1.7 "Licensed Product" shall mean any substance, product, process use,
or procedure in the LICENSED FIELD which, if made, used or sold in the absence
of the license granted herein, would infringe a valid unexpired claim or claims
of LICENSED PATENTS.
1.8 "Categories" shall refer to areas of business in which QMT shall
use the LICENSED PATENTS to develop LICENSED PRODUCTS in the LICENSED FIELD. For
the purpose of this agreement four CATEGORIES of business are defined:
1. Military: The use of MMP Inhibitors for treatment of
chemical or similar injuries that result from military or terrorist
actions.
2. Cosmetic: The use of MMP Inhibitors for treatment of skin
deterioration.
3. Civilian Chemical Burn: The use of MMP Inhibitors for
treatment of chemical ▇▇▇▇▇ or similar injuries in civilian populations
that result from other than military or terrorist actions.
4. Other Topical Medical Uses : The use of MMP Inhibitors for
other medical or dermatalogical wounds, diseases or conditions not
covered by CATEGORIES 1 - 3, such as chronic wounds or psoriasis.
1.9 "Milestones" shall mean scientific or business achievements met by
QMT pursuant to this Agreement. MILESTONES are defined in the four business
CATEGORIES:
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1. Military : (i) Proof-of-concept applications of MMP
Inhibitors for chemical ▇▇▇▇▇ or similar injuries that result from
military or terrorist actions; and (ii) development of a prototype
product for associated chemical ▇▇▇▇▇.
2. Cosmetic : (i) Proof-of-concept applications of MMP
Inhibitors for reducing skin deterioration ; and (ii) development of a
prototype product for associated skin conditions that may be either an
over-the-counter or prescription application.
3. Civilian Chemical Burn : (i) Proof-of-concept applications of
MMP Inhibitors for treatment of chemical ▇▇▇▇▇ or similar injuries in
civilian populations that result from other that military of terrorist
actions; and (ii) development of a prototype product for associated
wounds.
4. Other Topical Medical Uses : (i) Proof-of-concept
applications of MMP Inhibitors for other medical dermatological wounds,
diseases or conditions not covered by CATEGORIES 1-3 such as chronic
wounds or psoriasis (ii) Development of a prototype product for
associated skin conditions; and (iii) identification of joint venture
partner or other financial means to perform clinical trials and
commercialize at least one such product.
1.10 "Payments" shall mean monies and/or securities paid jointly or
separately to INVENTORS.
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1.11 "QMT" shall mean QMT Incorporated, a corporation organized under
the laws of the State of Delaware and having a principal place of business at
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇.
1.12 "Net Sales" shall mean amounts received by QMT and its
sublicensees with respect to sales of LICENSED PRODUCTS to independent third
parties, less (i) excise taxes, sales, use value-added, and other consumption
taxes and other compulsory payments to governmental authorities, actually paid ,
(ii) the cost of shipping packages and packing, if billed separately, (iii)
import and/or export duties and tariffs actually paid, (iv) amounts allowd or
credited due to returns.
QMT shall provide audited reports of NET SALES to INVENTORS.
1.13 "Topical" shall mean applied externally to the body and not
administered through ingestion, inhalation, or injection.
2. GRANT TO QMT.
2.1 QMT acknowledges that as to the patents listed in Appendix
A, one or more such patents may have lapsed, expired, or no longer be
in force. QMT also acknowledges as to one or more licensed patents,
INVENTORS are not the only inventors and third parties may have
coextensive rights to grant or assign rights in, under,or to said other
patents. QMT further acknowledges that the U.S. Government may have
rights to practice or have practiced on its behalf or may have other
rights in, to or under one or more to the LICENSED PATENTS and/or
KNOW-HOW.
2.2 INVENTORS hereby grant to QMT a worldwide, exclusive
license under their rights in the LICENSED PATENTS and related KNOW-HOW
RIGHTS
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in the LICENSED FIELD to make, have made, use and sell LICENSED
PRODUCTS solely for use in the LICENSED FIELD. QMT shall also have the
right to sublicense subject to all the restrictions and obligations
contained in this License Agreement, and shall provide INVENTORS with
the names of all sublicensees and a copy of all sublicense agreements
hereunder. The INVENTORS retain the rights to practice KNOW-HOW RIGHTS
in fields outside of the LICENSED FIELD
2.3 QMT shall diligently undertake the development and
commercialization of LICENSED PRODUCTS in the LICENSED FIELD by
pursuing the attainment of the above-stated MILESTONES.
3. PAYMENTS TO INVENTORS.
3.1 Milestone Payments to Inventors
3.1.1 Each INVENTOR shall be paid $50,000 in cash (in
US$) within 10 days of execution of this Agreement by all
parties.
3.1.2 Within 12 months of the execution of this
Agreement, each Inventor shall be paid an additional $50,000
in either cash (in US$) or securities. In the event of payment
in securities, QMT will guarantee to the INVENTORS $50,000 in
immediately realizable cash value (in US$).
3.1.3 Each INVENTOR shall be issued 80,000 shares of
QMT Common Stock upon execution of this Agreement. Such shares
shall be restricted pursuant to the Securities Act of 1933 and
may be resold pursuant to Rule 144 commencing one year after
issuance.
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3.1.4 If on the first anniversary of this Agreement,
the closing sale price of the QMT Common Stock is less than
60% of the average of the closing sale price for the 20
trading days commencing on the date of this Agreement, then
each INVENTOR shall be issued an additional 20,000 shares.
3.1.5 Each INVENTOR shall be issued 80,000 options to
purchase QMT Common Stock for $3.00 per share that vests as
follows:
(a) 40,000 options shall vest 12 months from the date of
this Agreement and
(b) 40,000 options shall vest 24 months from the date of
this Agreement. Such options shall contain customary
anti-dilution protection.
3.1.5.a Each INVENTOR shall be paid cash on
completion of MILESTONES in the "Civilian Chemical Burn" and
"Other Topical Medical Uses" CATEGORIES according to the
following schedule:
(a) $20,000 on completion of "Civilian Chemical Burn" (i)
(b) $20,000 on completion of "Civilian Chemical Burn"
(ii)
(c) $20,000 on completion of "Other Topical Medical Use"
(i)
(d) $20,000 on completion of "Other Topical Medical Use"
(ii) and (iii)
3.1.6 If any MILESTONE is not met prior to the third
anniversary of this Agreement then QMT shall pay each INVENTOR
$25,000 per year until all such MILESTONES are completed. If
such payments are not made, then the licenses granted
hereunder shall become nonexclusive within the CATAGORY(s) of
the associated unfulfilled MILESTONE(s).
3.1.7 QMT shall provide to each inventor concurrently
with the quarterly royalty payments required under paragraph
3.3 a summary statement showing gross and net sales of
licensed products on a country by country basis, and,
annually, an annual audited statement. Royalties and
milestones to be paid in US dollars.
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3.1.8 Audits. QMT shall make and maintain materially
complete and accurate records of its sales of LICENSED
PRODUCTS and its revenues derived from licensing or
sublicensing in accordance with accepted accounting practices
in the industry. QMT shall maintain such records for at least
three (3) years after they are created. Not more than once per
calendar year, INVENTORS shall have the right to inspect and
examine the relevant books, accounts and records of QMT for
the purpose of verifying the completeness and correctness of
said books, accounts and records and any payments due/owing to
INVENTORS. Any such inspections and examinations shall be
conducted at the locations of the documents to be audited,
during reasonable business hours, following reasonable prior
notice/request for such audit. The cost of any such inspection
and examination shall be borne by INVENTORS, except that in
the event of an underpayment of monies due in an amount
greater than 5% of the monies actually paid for the relevant
period determined from any such inspection, QMT shall promptly
reimburse INVENTORS for all such costs.
3.2 Each INVENTOR will be paid a royalty on QMT's NET SALES of LICENSED
PRODUCTS with labeled usages within the CATEGORIES "Civilian Chemical Burn" and
"Other Topical Medical Use". Such royalties shall be paid quarterly. The royalty
rate shall be 2% on the first $1,500,000 of applicable quarterly revenue and
1.5% thereafter.
3.3 Sublicense Fees. For each sublicense that QMT or its affiliates
grants, QMT shall pay each INVENTOR three percent (3%) of any up-front licensing
fee or equivalent, excluding any and all monies described in the sublicense as
being reimbursement for the conduct of bona fide research performed or to be
performed by QMT, provided that such research payments are reasonable in light
of the research performed or to be performed and
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further provided that such research is actually performed by QMT or performed
under QMT's supervision. Such payments are limited to a maximum of $50,000 per
inventor in respect to up-front licenses fees or equivalent paid to QMT in the
CATEGORIES of "Military" and "Cosmetic". However, for payments in the "Military"
or "Cosmetic" CATEGORIES, if the average closing price of the QMT Common Stock
for the five trading days ending on the day prior to the public announcement of
such sublicense is less than the average closing price realized in the first
twenty trading days after the date of this Agreement, then each INVENTOR will
have the option to exchange his QMT Common Stock for the remainder of such 3%
fee, provided that if the INVENTOR has sold or disposed of a portion of such
shares then the payment will be reduced pro rata for the number of shares
actually transferred. Such payments shall not apply if QMT sells its rights
under this Agreement for any or all indications.
3.4 For any sublicensee or purchaser QMT shall impose the obligations
to the inventors under this agreement on the sublicensee or purchaser without
limitation including royalty payments, milestone payments, financial and other
reports and audit rights
3.5 Sale or Assigment of Rights Under This Agreement If, in accordance
with INVENTORS rights to approve such transactions as set forth in paragraph
11.7, QMT sells ,or equivalently sells through an assignment for payment , its
rights under this Agreement for any or all indications in the "Military" or
"Cosmetic" CATEGORIES , the INVENTORS shall benefit solely by virtue of their
equity ownership in QMT and shall have no further claim to royalties with
respect to those indications under the LICENSED PATENTS. If QMT sells, or
equivilently sells through assignment for payment, its rights under this
agreement for any or all indications in the "Civilian Chemical Burn" or "Other
Topical Medical Use"
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CATEGORIES, each INVENTOR shall be entitled to 2% of the proceeds to QMT , net
of any closing or other applicable costs, up to a maximum of $100,000 per
INVENTOR, and shall be entitled to royalties from any purchaser, or assignee, of
QMT's rights on the same terms and conditions as defined in this agreement.
4. PATENT RIGHTS.
4.1 Using competent counsel of its own choosing, QMT shall diligently
file, prosecute and maintain on behalf of and in the name of INVENTORS, and pay
the cost thereof, U.S. and foreign patent application(s)/patents under LICENSED
PATENTS that QMT and INVENTORS mutually agree after conferring in good faith (or
that QMT decides, after making good faith efforts to confer with INVENTORS and
INVENTORS not responding to such efforts by QMT) that QMT should file, prosecute
and/or maintain. The costs of all interference and opposition proceedings shall
be considered prosecution expenses. At the request of the INVENTORS, or in any
case annually, QMT shall report to INVENTORS as to the status of all such patent
applications and provide copies of all notices, tax and maintenance payments,
and correspondence and documentation relating to patent applications from the
patent authorities before which the patent applications are pending. INVENTORS
may comment upon such correspondence and documentation. QMT shall use reasonable
efforts to prepare or amend any patent application to include claims timely
requested by INVENTORS and reasonably required to protect the LICENSED PRODUCTS.
4.2 If, after QMT and INVENTORS confer in good faith (or after QMT's
attempts to confer in good faith without any timely response from INVENTORS),
QMT does not file, prosecute or
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maintain a LICENSED PATENT(S), U.S. or foreign, INVENTORS shall have the rights
to such patent application/patent, not filed, prosecuted or maintained by QMT,
and at their own expense file, prosecute or maintain the same, except in the
circumstance where an application is abandoned in favor of a continuation
application or a continuation-in-part application. Such patent
application/patent shall not be included in the license granted by INVENTORS to
QMT unless QMT pays to INVENTORS an amount equal to the costs QMT would
otherwise have been obligated to pay and provided that INVENTORS have not
granted exclusive license rights to such patent application/patent to a third
party subsequent to QMT's decision not to file, prosecute or maintain such
patent application/patent.
4.3 In the event INVENTORS shall at any time while this License
Agreement is in effect be compelled by applicable law to issue compulsory
licenses to other licensees under the LICENSED PATENTS, INVENTORS shall inform
QMT of the order compelling any such licenses, and, if requested by QMT, the
parties shall negotiate in good faith a reduction in any royalties pertaining
solely to the country or countries ,and associated with the products for which
royalties may apply, wherein such compulsory licenses have been ordered.
4.4 INVENTORS shall reasonably cooperate with QMT in seeking any
extension that is available or that becomes available in respect of the term of
any LICENSED PATENT; QMT shall diligently advise INVENTORS in a timely manner of
approval by the Food and Drug Administration of the United States of America to
use or market LICENSED PRODUCTS or any other governmental approval obtained by
or on behalf of QMT or an AFFILIATE or a sublicensee that is pertinent to any
such extension; and INVENTORS shall supply QMT in a timely manner with any
application, information and data and any supporting affidavits or documents
required to
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comply with 35 U.S.C. Section 156 Extension of Patent Term, and any successor
legislation, and any administrative rules or regulations thereunder and any
corresponding laws and regulations that are or shall be in effect in any country
where LICENSED PATENTS are filed or issued, all without further consideration.
QMT shall require its AFFILIATES and sublicensees to comply with the provisions
of this Section 4.4.
4.5 If requested by INVENTORS, insofar as practical, QMT shall place,
or shall cause the manufacturer to place, appropriate patent and/or patent
pending markings on an exposed surface of each Licensed Product made or sold
hereunder or on the packaging for such Licensed Product. The content, form,
size, location and language used in such markings shall be in accordance with
the laws and practices of the country where such markings are required.
4.6 To the extent permitted by law, QMT shall include, in any
submission to the U.S. Food and Drug Administration for a QMT Product that
includes a listing of QMT patents that cover such product, a listing of the
appropriate INVENTORS Patents that also cover such product.
5. EXPIRATION AND TERMINATION.
5.1 Unless terminated earlier as provided herein, this License
Agreement shall commence on the effective date set forth on the first page of
this License Agreement and shall remain in force on a country by country basis
for the life of the last-to-expire patent licensed to QMT under this License
Agreement.
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5.2 This License Agreement shall, immediately terminate upon the
occurrence of any of the following events: (a) if QMT ceases to do business or
otherwise terminates its business operations (other than as contemplated in
Section 11. 12), or (b) if QMT shall become bankrupt or insolvent or if the
business of QMT shall be placed in the hands of a receiver, assignee or trustee,
whether by the voluntary act of QMT or otherwise, subject to the rules of the U
S. Bankrupcy Court in the event of the filing of a bankrupcy.
5.3 INVENTORS may terminate this License Agreement in whole or in part
by ninety (90) days written notice to QMT (a) upon any material breach of or
material default under this License Agreement by QMT or (b) if QMT does not
introduce a LICENSED PRODUCT for commercial application prior to the fifth
anniversary of this Agreement. Said termination shall become effective at the
end of said notice period, unless during said notice period QMT shall cure such
breach or default.
5.4 QMT may terminate this License Agreement at any time either in its
entirety, or:
(a) as to any pending patent application of the LICENSED
PATENTS in any country on ninety (90) days prior written notice to
INVENTORS; a patent application shall be considered pending in the
United States if it has not issued, or if issued it becomes involved in
an interference, and in the European Patent Office and in Japan until
the end of the opposition period if no opposition is filed, or if an
opposition is filed, until the close of opposition proceedings; or
(b) as to any issued or finally granted LICENSED PATENT in any
country on sixty (60) days prior written notice to INVENTORS.
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In the event QMT terminates this License Agreement with respect to a
pending patent application of the LICENSED PATENTS and/or an issued or finally
granted LICENSED PATENT pursuant to subsections (a) and/or (b) above,
respectively, INVENTORS shall thereafter be free to license such patent
application(s) issued or finally granted LICENSED PATENT(S) in the LICENSED
FIELD to a third party. If QMT terminates this agreement, at the request of
INVENTORS, the parties will negotiate in good faith the terms pursuant to which
INVENTORS would receive access to research data developed by QMT in relation to
the LICENSED PATENTS.
5.5 Articles 3 (Payments), 8 (Confidentiality), 9 (Limited Liability),
10 (Warranty Disclaimer) and 11 (Miscellaneous) and Section 8.1 shall survive
termination or expiration of this License Agreement.
6. PATENT INFRINGEMENT.
6.1 Each party shall promptly inform the other of any suspected or
known infringement of any LICENSED PATENT by a third party which reasonably
comes to it , or is brought to its attention. QMT shall have the right, but
shall not be obligated to take appropriate legal action including the
commencement and maintenance of any action, suit or proceeding, in connection
therewith. In the event that QMT shall elect to take such action, the conduct of
the action shall be entirely under the direction and control of QMT and all
costs, disbursements and expenses of such action shall be borne solely by QMT.
In the event that QMT exercises the rights conferred herein, it may name
INVENTORS as a party plaintiff in such action, suit or proceeding, if reasonably
necessary under the circumstances. Any and all damages and other sums recovered
by QMT in any such action, suit or proceeding, or in
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settlement thereof, shall be allocated in the following order: (i) to each party
as reimbursement of costs, reasonable outside attorneys' fees and other related
expenses to the extent each party paid for such costs, fees and expenses, and
(ii) any amounts remaining after allocating the amounts set forth in (i) above
to be retained solely by QMT, except for amounts reasonably due INVENTORS if
compensation under this Agreement was reduced due to such infringement.
6.2 Should QMT not take steps to stop suspected or known infringement
of any LICENSED PATENT, including commencing suit under the provisions of the
preceding paragraph within six (6) months after being informed of the
infringement, or should QMT commence said suit and thereafter elect to abandon
the same, QMT shall give timely notice to INVENTORS, who may initiate or
continue prosecution of such suit; provided however, that all further expenses
of the suit after such notice shall be borne by INVENTORS, and any recovery
after such notice shall be retained in full by INVENTORS. In the event INVENTORS
shall elect to initiate or continue prosecution of such suit, the conduct of the
action shall be entirely under the direction and control of INVENTORS and QMT
shall reasonably cooperate with INVENTORS in connection with such action
(including, without limitation, being named or maintained as a nominal party
plaintiff if reasonably necessary under the circumstances).
7. OTHER AGREEMENTS
7.1 If the INVENTORS license the CHEMICALS to third parties, QMT shall
use commercially reasonable efforts to limit the adverse impact of "off-label"
use of
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LICENSED PRODUCTS, provided that such third parties grant QMT reciprocal terms.
For the avoidance of doubt, such commercially reasonable efforts shall not
obligate QMT to modify LICENSED PRODUCTS or LICENSED PRODUCTS packaging that
would reduce their attractiveness for their licensed use.
8. CONFIDENTIALITY
8.1 Each party agrees that all inventions (whether patentable or not),
formulas, chemicals, processes, reagents, algorithms, know-how and ideas it
obtains from the other and all other business, technical and financial
information it previously, presently or subsequently obtains from the other are
the confidential property of the disclosing party ("Proprietary Information").
Without limiting the foregoing, all KNOW-HOW RIGHTS, LICENSED PATENTS and
CHEMICALS are hereby identified as INVENTORS' Proprietary Information. Except as
expressly and unambiguously allowed herein, the receiving party will hold in
confidence and not use or disclose any Proprietary Information and shall
similarly bind its employees and contractors in writing. The receiving party
shall not be obligated under this Article 8 with respect to information the
receiving party can document : (a) is or has become readily publicly available
without restriction through no fault of the receiving party or its employees or
agents; or (b) is received without restriction from a third party lawfully in
possession of such information and lawfully empowered to disclose such
information; or (c)was rightfully in the possession of the receiving party
without restriction prior to its disclosure by the disclosing party; or (d) is
independently developed by the receiving party by employees entirely without
access to the other party's similar Proprietary information; or (e) is required
to be disclosed to a governmental entity or agency in connection with seeking
any
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governmental or regulatory approval, or pursuant to the lawful requirement or
request of a governmental entity or agency, provided, however, in such an
instance the receiving party shall take all reasonable steps to inform the
disclosing party in sufficient time for the disclosing party to oppose such
disclosure before it takes place.
8.2 Upon any termination of this License Agreement, each party, on
behalf of itself and its AFFILIATES, licensees and sublicensees, will promptly
return or destroy any Proprietary Information of the other and any copies,
extracts and derivatives thereof, except as otherwise set forth in this License
Agreement. Each party is allowed to retain one record copy of the other party's
Proprietary Information solely for archival purposes. Each party shall maintain
any such copies in a secure location with restricted access.
8.3 Each party acknowledges that its breach of this Article 8 would
cause irreparable injury to the other for which monetary damages are not an
adequate remedy. Accordingly, a party will be entitled to injunctions and other
equitable remedies in the event of such a breach by the other.
8.4 In the event that this agreement terminates, obligation under this
Article 8 will cease within two years of the termination date of this License
Agreement.
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9. LIMITED LIABILITY
NOTWITHSTANDING ANYTHING ELSE IN THIS LICENSE AGREEMENT OR OTHERWISE,
NEITHER PARTY WILL BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS LICENSE
AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR
EQUITABLE THEORY FOR (A) ANY INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES OR
LOST PROFITS OR LOST REVENUES, OR (B) COST OF PROCUREMENT OF SUBSTITUTE GOODS,
TECHNOLOGY OR SERVICES.
10. WARRANTIES AND DISCLAIMERS.
10.1 INVENTOR ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ represents and warrants that, to the best
of his knowledge: (i) subject to his understanding that, with respect to the
patents listed in Appendix A, rights previously assigned to a third party may
not have been returned to him, he owns sufficeint right, title and interest in
and to LICENSED PATENTS to grant the licenses granted herein; (ii) subject to
his understanding that, with respect to the patents listed in Appendix A, rights
previously assigned to a third party may not have been returned to him, he has
not granted and will not grant during the term of this Agreement, any right,
license or interest in or to the LICENSED PATENTS, or any portion thereof,
inconsistent with the license granted herein; (iii) the Licensed Technology is
free and clear of any lien, encumbrance, security, interest or restriction on
license; and, (iv) there are no threatened or pending actions, suits,
investigations, claims or proceedings in any way relating to the LICENSED
PATENTS. The acknowledgements of paragraph 2.1 are incorporated herein by
reference and QMT thus further acknowledges that the INVENTORS may not have
exclusive rights in one or more of the LICENSED PATENTS.
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10.2 INVENTOR ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ represents and warrants that, to the best
of his knowledge: (i) he owns sufficient right, title and interest in and to the
LICENSED PATENTS to enable him to grant the licenses granted herein; (ii) he has
not granted and will not grant during the term of this Agreement, any right,
license or interest in or to the LICENSED PATENTS, or any portion thereof,
inconsistent with the license granted herein; (iii) the Licensed Technology is
free and clear of any lien, encumbrance, security, interest or restriction on
license; and, (iv) there are not threatened or pending actions, suits,
investigations, claims or proceedings in any way related to the LICENSED
PATENTS. The acknowledgements of paragraph 2.1 are incorporated herein by
reference and QMT thus further acknowledges that the INVENTORS may not have
exclusive rights in one or more of the LICENSED PATENTS.
10.3 INVENTORS DISCLAIM ALL WARRANTIES, EXPRESS OR IMPLIED, RELATING TO
THE LICENSED PATENTS, KNOW-HOW RIGHTS, CHEMICALS, LICENSED PRODUCTS, AND DATA
AND INFORMATION RELATING TO ALL OF THE FOREGOING, INCLUDING WITHOUT LIMITATION,
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND
NON-INFRINGEMENT. THE INVENTORS DO NOT WARRANT THE VALIDITY OR ENFORCEABILITY OF
THE LICENSED PATENTS.
10.4 QMT DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, RELATING TO THE
QMT PATENTS AND THE DATA, KNOW-HOW AND INFORMATION PROVIDED TO INVENTORS
HEREUNDER, INCLUDING, WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT.
19
10.5 QMT AND THE INVENTORS ACKNOWLEDGE THAT THE INVENTORS MAY NOT HAVE
THE RIGHT TO LICENSE TWO OF THE PATENTS LISTED IN APPENDIX A (US PATENTS #
5,268,384 AND 5,696,147) TO QMT. IF THE INVENTORS DO NOT HAVE SUCH RIGHTS,
INVENTORS AGREE TO COOPERATE WITH QMT IN EFFORTS TO OBTAIN THEM IN A TIMELY
FASHION. IF THE INVENTORS OBTAIN SUCH RIGHTS AT ANY TIME WHILE THIS AGREEMENT IS
IN EFFECT, INVENTORS AGREE TO LICENSE THEM TO QMT UNDER THE SAME TERMS AND
CONDITIONS AS IN THIS AGREEMENT, AS IF LAWFULLY INCLUDED IN APPENDIX A OF THIS
AGREEMENT.
11. MISCELLANEOUS.
11.1 QMT shall not use the name of INVENTORS, or any Inventor of the
LICENSED PATENTS or KNOW-HOW RIGHTS in connection with INVENTORS, in any
advertising, promotional or sales literature or otherwise for commercial
purposes, without prior written consent obtained from INVENTORS in each case,
which consent shall not be unreasonably withheld. QMT shall require its
AFFILIATES and its sublicensees to comply with this provision to the same extent
that it applies to QMT.
11.2 QMT agrees to use diligent efforts, at its sole expense, to obtain
and maintain any applicable approvals, registrations, notifications or the like
with regard to manufacturing, testing, marketing, using, selling, labelling or
otherwise promoting or making claims regarding the LICENSED PRODUCTS or their
uses. This includes, without limitation, conducting any necessary pre-clinical
and clinical studies and preparing and filing any necessary applications or
documents with the relevant governmental agencies,
11.3 Each party hereto agrees to comply with all export laws and
restrictions and regulations of the U.S. Department of Commerce or other United
States or foreign agency or authority, and not to export, or allow the export or
reexport of any LICENSED PRODUCTS,
20
CHEMICALS or KNOW-HOW RIGHTS, or any direct product of any of the foregoing, in
violation of any such restrictions, laws or regulations. Each party shall
obtain, at its expense, any necessary licenses and/or exemptions with respect to
its export from the United States of all LICENSED PRODUCT, CHEMICALS and
KNOW-HOW RIGHTS.
11.4 It shall be the full and sole responsibility of QMT and its
AFFILIATES and sublicensees to use appropriate care in the practice of any
process and the manufacture, use and sale of any product pursuant to any license
or immunity granted hereunder and INVENTORS shall have no right to control the
manner in which or the material with which or upon which any process for using
or making LICENSED PRODUCT hereunder is practiced. INVENTORS make no
representation or warranty whatsoever with respect to any such process for using
or making LICENSED PRODUCT.
11.5 (a) Up to the insured amounts defined in the following subsection,
QMT agrees to indemnify, defend and hold harmless INVENTORS from and against any
and all claims, damages, settlements, liabilities, losses, costs, fees and
expenses asserted by third parties (whether governmental or private) arising
from QMT's and its AFFILIATES' and sublicensees' practice of any process for
manufacture, testing, use or sate of any LICENSED PRODUCT, or the manufacture,
testing, use, sale, advertisement or promotion of any LICENSED PRODUCT, or the
use of any LICENSED PRODUCT by any test subject or the use thereof by any
consumer or by any customer of QMT or an AFFILIATE or its AFFILIATES or
sublicensees; provided that QMT has the sole right to control the defense and
settlement of any such claim and that INVENTORS (i) give QMT prompt written
notice
21
of any such claim and (ii) cooperate with QMT in the defense of such claim.
INVENTORS shall have no right to settle any such claim under the LICENSED
PATENTS.
(b) QMT further agrees to obtain and maintain in force an
insurance policy in an amount determined by prudent industry practice
that is adequate to support its obligations under the above subsection
. This insurance policy will name INVENTORS as co-insureds, will
provide primary coverage, and will provide for at least thirty (30)
days' prior written notice to INVENTORS before cancellation. The policy
shall be maintained prior to the first clinical use of a LICENSED
PRODUCT in humans. The policy may be terminated or modified by QMT with
respect to any LICENSED PRODUCT when QMT has assigned, sold or
sublicensed the applicable rights under this agreement, has otherwise
discontinued human clinical use of the applicable LICENSED PRODUCT, or
has received regulatory approvals certifying LICENSED PRODUCT safety.
11.6 Neither party to this License Agreement shall be liable for delay
in the performance of any of its obligations hereunder if such delay is due to
causes beyond its reasonable control, including, without limitation, acts of
God, fires, earthquakes, strikes and labor disputes, acts of war, or
intervention of any governmental authority, but any such delay or failure shall
be remedied by such party as soon as is reasonably possible.
11.7 This License Agreement shall not be assigned, or rights under this
agreement sold, by QMT, without INVENTORS' prior written consent, such consent
not to be unreasonably withheld, except (i) as part of a sale, merger or other
transfer which includes all, or substantially all, of entire QMT's business and,
in such event the term "QMT" where used
22
in this License Agreement shall thereafter mean such assignee of QMT; or (ii) as
part of a sale, merger or other transfer which includes all, or substantially
all, of QMT's business in a CATEGORY or CATEGORIES and, in such event that part
of the License Agreement covering the CATEGORY or CATEGORIES may be assigned and
the term "QMT" where used in this License Agreement shall thereafter mean such
assignee of QMT with respect to the transferred CATEGORY or CATEGORIES.
11.8 Headings and captions in this License Agreement are for
convenience only and are not to be used in the interpretation of this License
Agreement.
11.9 This License Agreement shall not be amended or modified except by
a written agreement dated subsequent to the date of this License Agreement and
signed by INVENTORS and QMT.
11.10 No waiver of any breach of any provision of this License
Agreement shall constitute a waiver of any prior, concurrent or subsequent
breach of the same or any other provision hereof, and no waiver shall be
effective unless made in writing and signed by INVENTORS and QMT.
11.11 This Agreement and any amendments may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which when
executed, together shall constitute one and the same instrument.
23
11.12 The parties hereto agree to execute and deliver such further
instruments and do such further acts and things as may be reasonably necessary
or required to carry out the intent and purposes of this Agreement.
11.13 This Agreement supersedes any prior agreements or understandings
between the parties, whether express or implied or written or oral, and
constitutes the entire understanding of the parties as to the matters set forth
herein. Neither party shall be bound by any representations, warranties,
promises, statements or information as to the matters which are the subject of
this Agreement, unless such are specifically set forth herein.
11.14 All notices permitted or required under this Agreement shall be
effective only if in writing, and shall be deemed to have been given (and
received) when personally delivered, or on the next business day after the date
on which deposited with a regulated public carrier (e.g., Federal Express), with
a return receipt requested or equivalent thereof administered by such regulated
public carrier, addressed to the President of the party for whom intended at the
address set forth above.
11.15 At the request of the INVENTORS, or in any case annually, QMT
will report to the INVENTORS on the scientific and commerical status of the
Company's Research and Development with respect to the MILESTONES defined within
this agreement.
11.16 This Agreement shall be construed and interpreted in accordance
with the laws of the State of New York without reference to its choice of law
principles. The state and federal courts located in New York shall have
exclusive jurisdiction of any dispute
24
between the parties related to or arising out of this Agreement, the parties'
relationship created hereby, and/or the negotiations for and entry into this
Agreement including any dispute concerning its conclusion, binding effect,
amendment, coverage, or termination. The parties agree to submit to the personal
jurisdiction of such courts for any action described in this paragraph 8.3 and
agree that such courts provide a convenient forum for any such action, and waive
any objections or challenges to venue.
IN WITNESS WHEREOF, the parties hereto have hereunto set their hands
and duly executed this License Agreement on the date(s) indicated below, to be
effective the day and year first above written.
QUICK MED TECHNOLOGIES, INC.
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇ Date: September 13, 2000
-----------------
▇▇▇▇▇ ▇▇▇▇▇▇, President
INVENTORS
/s/ ▇▇▇▇▇▇▇ Galardny Date: September 13, 2000
--------------------
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ Date: September 13, 2000
-------------------
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
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APPENDIX A
Patents and Patent Applications Contained in INVENTORS Grant to QMT
U.S. Patents Numbered : 5,270,326
5,892,112
5,114,953
5,183,900
5,773,438
5,696,147
5,268,384
5,189,178
Foreign Patents: All Applicable Patents and Patent Applications
that in QMT's judgement shall contribute to
its ability to utilize the LICENSED PRODUCTS
or CHEMICALS in foreign scientific, medical
or commercial uses in the LICENSED FIELD.
Such determination is to be made within six
months of execution of this agreement by all
parties. During this period, QMT agrees to
maintain all such Patents or Patent
Applications except for those excluded in
timely written communication to the
INVENTORS.
