NOTE: Certain portions of this document have been omitted based on a request
for confidential treatment. The non-public information has been filed
with the Securities and Exchange Commission. Omitted portions are
designated with asterisks ("*").
Patent License Agreement
With Research Component
University of Florida Research Foundation
and
Ixion Biotechnology, Inc.
February 1995
UF Case No. UF# -1256 "In vitro-grown Islets of Langerhan for curing diabetes"
Patent Application "In Vitro Growth of Functional Islets of Langerhan," USSN
08/234,071, filed April 28, 1994
PATENT LICENSE AGREEMENT
WITH RESEARCH COMPONENT
TABLE OF CONTENTS
ARTICLE I - DEFINITIONS 1
ARTICLE II - GRANT 4
ARTICLE III - DUE DILIGENCE 5
ARTICLE IV - ROYALTIES 5
ARTICLE V - REPORTS AND RECORDS 7
ARTICLE VI - PATENT PROSECUTION 8
ARTICLE VII - INFRINGEMENT 8
ARTICLE VIII - PRODUCT LIABILITY 10
ARTICLE IX - DISCLAIMER OF WARRANTIES 11
ARTICLE X - EXPORT CONTROLS 11
ARTICLE XI - NON-USE OF NAMES 11
ARTICLE XII - ASSIGNMENT 12
ARTICLE XIII - TERMINATION 12
ARTICLE XIV - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS 15
ARTICLE XV - MISCELLANEOUS PROVISIONS 16
PREAMBLE
This Agreement is made this 17th day of February, 1995, (the "Effective
Date") between the University of Florida Research Foundation, Inc., a not-for-
profit corporation duly organized and existing under the laws of the State of
Florida and having its principal office at 000 Xxxxxxx Xxxx, Xxxxxxxxxxx,
Xxxxxxx, 00000-0000 ("UFRFI"), and Ixion Biotechnology, Inc., a corporation
duly organized under the laws of Delaware, and having its principal office at
Xxx Xxxxxxxx Xxxx., Xxx 00, Xxxxxxx, Xxxxxxx 00000 ("Ixion").
WITNESSETH
WHEREAS, UFRFI is the owner of certain Patent Rights by assignment from
the University of Florida (the "University") relating to UF Case No. UF# -1256
"In vitro-grown Islets of Langerhan for curing diabetes," and has the right to
grant licenses under said Patent Rights, subject only to a royalty-free,
nonexclusive license heretofore granted to the United States Government;
WHEREAS, XXXXX desires to have the Patent Rights utilized in the public
interest and is willing to grant a license thereunder;
WHEREAS, Xxxxx has represented to UFRFI to induce UFRFI to enter into
this Agreement, that Ixion is prepared to undertake the development,
production, manufacture, marketing, and sale of products similar to the
Licensed Products and/or the use of the Licensed Processes and that it shall
commit itself to a thorough, vigorous, and diligent program of exploiting the
Patent Rights commercially so that public utilization and royalty income to
UFRFI shall result;
WHEREAS, Xxxxx desires to obtain a license under the Patent Rights upon
the terms and conditions of this Agreement; and
WHEREAS, Xxxxx has certain additional research it desires which the
parties agree should be conducted by the University;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein the parties agree as follows:
ARTICLE I - DEFINITIONS
The following words and phrases have the following meanings:
1.1 "Inventor" means Xxxxx X. Xxxx, Ph.D.
1.2 "Ixion" means any of the following:
(a) a related company of Ixion, the voting stock of
which is directly or indirectly at least 50% owned or
controlled by Ixion;
(b) an organization which directly or indirectly
controls more than 50% of the voting stock of Ixion; and
(c) an organization, the majority ownership of which
is directly or indirectly common to the ownership of Ixion.
1.3 "Licensed Know-How" means any technical data, information, or
knowledge within the knowledge and possession of the Inventor on the Effective
Date which is incorporated in or becomes part of the Patent Rights.
1.4 "Licensed Product" means any product or part thereof which:
(a) is covered in whole or in part by an issued,
unexpired claim or a pending claim contained in the Patent
Rights in the country in which any Licensed Product is made,
used, or sold;
(b) is manufactured by using a process which is
covered in whole or in part by an issued, unexpired claim or
a pending claim contained in the Patent Rights in the
country in which any Licensed Process is used or in which
such product or part thereof is used or sold;
(c) is derived from Patent Rights, Licensed Know-
How, or trade secrets related to or described in Patent
Rights; or
(d) is sold, manufactured, or used in any country
under this Agreement.
1.5 "Licensed Process" means any process which:
(a) is covered in whole or in part by an issued,
unexpired claim or a pending claim contained in the Patent
Rights;
(b) is derived from Patent Rights, Licensed Know-
How, or trade secrets related to or described in Patent
Rights; or
(c) is used in any country under this Agreement.
1.6 "Net Sales" means Ixion's, and its sublicensees' gross sales from
the sale or lease of Licensed Products and Licensed Processes produced
hereunder less the sum of the following:
(a) discounts allowed in amounts customary in the
trade and brokers' or agents' commissions, if any, allowed
and paid to independent parties in arms-length transactions;
(b) excise, value-added, or sales taxes, tariff
duties or use taxes directly imposed and with reference to
particular sales;
(c) outbound transportation prepaid or allowed;
(d) amounts allowed or credited on returns; and
(e) packing costs and insurance costs if itemized
separately.
No deductions shall be made for commissions paid to individuals regularly
employed by Ixion and on its payroll, or for cost of collections. Licensed
Products shall be considered "sold" when invoiced.
1.7 "Patent Rights" means all of the following UFRFI intellectual
property:
(a) the United States and foreign patents or patent
applications listed in Appendices A and B;
(b) United States and foreign patents issued from
the applications listed in Appendices A and B and from
divisionals and continuations of these applications;
(c) claims of U.S. and foreign continuation-in-part
applications, and of the resulting patents, which are
directed to subject matter specifically described in the
U.S. and foreign applications listed in Appendices A and B;
(d) claims of all foreign patent applications, and
of the resulting patents, which are directed to subject
matter specifically described in the United States patents
and/or patent applications described in (a), (b), or (c)
above; and
(e) any reissues of United States patents described
in (a), (b), (c), or (d) above.
1.8 "Project Work" means the research work described in the Research
Support Agreement.
1.9 "Research Support Agreement" means that agreement attached hereto
as Exhibit C, with its associated terms and conditions.
1.10 "Territory" means all the countries of the world.
1.11 "University Inventions" means individually and collectively all
inventions, improvements, or discoveries patentable or unpatentable, which are
conceived or made solely by one or more employees of the University, in
performance of the Project Work. All rights and title to University
Inventions developed under the Research Support Agreement belong to the
University and are subject to the terms of such Research Support Agreement.
For the purposes of this section, the "making" of inventions shall be governed
by U.S. laws of inventorship.
1.12 "University Patents" means collectively and individually any and
all United States and foreign patent applications and any and all issued
United States Letters Patents and foreign patents owned by the University for
University Inventions derived during Project Work under the Research Support
Agreement.
ARTICLE II - GRANT
2.1 UFRFI grants to Ixion the exclusive right and license to make,
have made, use, lease, and sell the Licensed Products, and to practice the
Licensed Processes and the Licensed Know-How, in the Territory to the end of
the term for which the Patent Rights are granted unless sooner terminated
according to the terms hereof.
2.2 UFRFI shall not grant any other license to make, have made, use,
lease, or sell Licensed Products or to utilize Licensed Processes during the
period of time commencing with the Effective Date of this Agreement and
terminating with the expiration or termination of this Agreement.
2.3 UFRFI reserves the right to practice under the Patent Rights for
its own noncommercial research purposes.
2.4 Ixion may sublicense others under this Agreement. Each
sublicense
shall be consistent with the terms of this Agreement.
2.5 Any sublicenses granted by Ixion shall provide that the
obligations to UFRFI of this Agreement shall be binding upon the sublicensee
as if it were a party to this Agreement. Ixion shall attach copies of this
Agreement to sublicense agreements.
2.6 Ixion shall forward to UFRFI a copy of any sublicense agreement
within 30 days of its execution and further shall forward to UFRFI annually a
copy of such reports received by Ixion from its sublicensees during the
preceding twelve-month period under the sublicenses as shall be pertinent to a
royalty accounting under said sublicenses.
2.7 The license granted hereunder shall not be construed to confer
any
rights upon Ixion by implication, estoppel, or otherwise as to any technology
not specifically set forth herein.
2.8 Ixion shall not receive from sublicensees anything of value in
lieu of cash payments in consideration for any sublicense under this
Agreement, without the express prior written permission of UFRFI.
2.9 Licensed Products leased or sold in the United States and covered
by Patent Rights or other intellectual property rights that are subject to the
non-exclusive royalty-free license to the United States government will be
manufactured substantially in the United States.
2.10 Ixion shall abide by all rights and limitations of U.S. Code,
Title 35, Chapter 38, and implementing regulations thereof, for all patent
applications and patents invented in whole or in part with federal funding.
ARTICLE III - DUE DILIGENCE
3.1 Ixion shall use its best efforts to bring one or more Licensed
Products or Licensed Processes to market through a thorough, vigorous, and
diligent program for exploitation of the Patent Rights to attain
commercialization of Licensed Products and Licensed Processes.
3.2 In addition, Ixion shall adhere to the following milestones:
(a) Ixion shall deliver to UFRFI on or before a date
90 days from the Effective Date a business plan for further
research into the development of a product relating to in
vitro grown islets of Langerhan. The business plan (or
extract from the business plan) shall show for the
forthcoming fiscal year the amount of money, number and
kind of personnel, and time budgeted for such product
development. Ixion shall provide similar plans or extracts
to UFRFI on an annual basis on or before the ninetieth
(90th) day following the close of each fiscal year.
(b) Ixion shall comply with the Research Support
Agreement attached as Exhibit C.
ARTICLE IV - ROYALTIES
4.1 For the rights, privileges and, license granted hereunder, Ixion
shall pay royalties to UFRFI to the end of the term of the Patent Rights or
until this Agreement is terminated as follows:
(a) A License Issue Fee of an amount equal to the
out-of-pocket costs of patenting incurred prior to the
Effective Date, such fee to be paid within 30 days of the
receipt of an invoice therefor by Xxxxx;
(b) An Additional License Issue Fees of ********, due
immediately upon the execution of this Agreement. The
Additional License Issue Fee shall be creditable against
any Running Royalties subsequently due under section 4.1 (c)
below;
(c) A Running Royalty in an amount equal to **********
of the Net Sales of the Licensed Products or
Licensed Processes used, leased, or sold by or for Ixion or
its sublicensees; and
(d) A further ******** upon the filing with the FDA
of an application for a Product License Approval relating to
a Licensed Product or Process, or the expiration of 24
months from the Effective Date, whichever is later. Such
milestone payment is in addition to any Running Royalties
due under section 4.1(c) above.
4.2 No multiple royalties shall be payable because any Licensed
Product, its manufacture, use, lease, or sale are or shall be covered by more
than one Patent Rights patent application or Patent Rights patent licensed
under this Agreement.
4.3 Royalty payments shall be paid in United States dollars in
Gainesville, Florida or at such other place as UFRFI may reasonably designate
in writing consistent with the laws and regulations controlling in any foreign
country. If any currency conversion shall be required in connection with the
payment of royalties hereunder, such conversion shall be made by using the
exchange rate prevailing at the Chase Manhattan Bank (N.A.) on the last
business day of the calendar quarterly reporting period to which such royalty
payments relate.
4.4 In the event the royalties set forth herein are higher than the
maximum royalties permitted by the law or regulations of a particular country,
the royalty payable for sales in such country shall be equal to the maximum
permitted royalty under such law or regulations. Notice of said event shall
be provided to UFRFI. An authorized representative of Ixion shall notify
UFRFI, in writing, within 30 days of discovering that such royalties are
approaching or have reached the maximum amount, and shall provide UFRFI with
written documentation regarding the laws or regulations establishing such
maximum.
4.5 In the event that any taxes, withholding or otherwise, are levied
by any taxing authority in connection with accrual or payment of any royalties
payable by Ixion under this Agreement, and Ixion determines in good faith that
it must pay such taxes, Ixion shall have the right to pay such taxes to the
local tax authorities on behalf of UFRFI and payment of the net amount due
after reduction by the amount of such taxes, shall fully satisfy Ixion's
royalty obligations under this Agreement. Ixion shall provide UFRFI with
appropriate receipts or other documentation supporting such payment. Xxxxx
shall inform XXXXX in writing, within 30 days of notification that taxes will
or have been levied by a taxing authority.
4.6 In the event that a Licensed Product is sold in a combination
package or kit containing other active products, then Net Sales for purposes
of determining royalty payments on the combination package, shall be
calculated using one of the following methods, but in no event shall the
royalties payable to UFRFI be reduced to less than 50% of that provided for in
Section 4.1 above:
(a) by multiplying the net selling price of that combination
package by the fraction A/A+B, where A is the gross selling price,
during the royalty-paying period in question, of the Licensed
Product sold separately, and B is the gross selling price during
the royalty period in question, of the other active products sold
separately; or
(b) in the event that no such separate sales are made of the
Licensed Product or any of the active products in such combination
package during the royalty-paying period in question, Net Sales
for the purposes of determining royalty payments, shall be
calculated by dividing the net selling price of the combination
package by the number of functions performed by the combination
package sold where such package contains active agents other than
those licensed under this Agreement. The parties recognize that
this provision will require consultation and that in the event a
combination package or kit circumstance arises, the parties will
negotiate in good faith to determine the calculation of Net Sales
pursuant to this section.
4.7 If it is necessary for Ixion to take any license(s) in a given
country, under valid third-party patents which would be necessarily infringed
by the practice of Licensed Processes or production of Licensed Products in
that country, then Ixion can deduct up to 25% of the royalties otherwise due
under this Agreement for Net Sales in that country, until such time as Ixion
has recovered an amount equal to the royalties payable to such third parties.
ARTICLE V - REPORTS AND RECORDS
5.1 Ixion shall keep full, true, and accurate books of account
containing all particulars that may be necessary for the purpose of showing
the amounts payable to UFRFI hereunder. Said books of account shall be kept
at Ixion's principal place of business or the principal place of business of
the appropriate division of Ixion to which this Agreement relates. Said books
and the supporting data shall be open at all reasonable times for three years
following the end of the calendar year to which they pertain, to the
inspection of UFRFI or its agents at UFRFI's expense for the purpose of
verifying Xxxxx's royalty statements.
5.2 Ixion, within 45 days after March 31, June 30, September 30, and
December 31, of each year, shall deliver to UFRFI true and accurate reports,
giving such particulars of the business conducted by Ixion and its
sublicensees during the preceding three-month period under this Agreement as
shall be pertinent to a royalty accounting hereunder. These shall include at
least the following:
(a) number of Licensed Products manufactured and
sold;
(b) total xxxxxxxx for Licensed Products sold;
(c) an accounting for all Licensed Processes used or
sold;
(d) deductions applicable to a determination of Net
Sales;
(e) total royalties due;
(f) names and addresses of all sublicensees of
Ixion; and
(g) a report on any patent extensions sought
pursuant to section 6.1 hereof.
5.3 With each such report submitted, Ixion shall pay to UFRFI the
royalties due and payable under this Agreement. If no royalties shall be due,
Ixion shall so report.
5.4 On or before the 90th day following the close of Ixion's fiscal
year, Ixion shall provide UFRFI with Ixion's year-end balance sheet and an
operating statement for the preceding fiscal year then ended.
5.5 The royalty payments, license fees, and reimbursement for patent-
related expenses set forth in this Agreement shall, if overdue, bear interest
until payment at the monthly rate of 1.0%. The payment of such interest shall
not foreclose UFRFI from exercising any other rights it may have as a
consequence of the lateness of any payment.
ARTICLE VI - PATENT PROSECUTION
6.1 UFRFI shall apply for, seek issuance of, and maintain during the
term of this Agreement the Patent Rights in the United States and in the
foreign countries listed in Appendix B hereto. The prosecution, filing, and
maintenance of all Patent Rights patents and applications shall be the primary
responsibility of UFRFI; provided, however, Ixion shall have reasonable
opportunities to advise UFRFI and shall cooperate with UFRFI in such
prosecution, filing, and maintenance. Ixion shall seek patent extension for
patents licensed under the Patent Rights in the United States and the foreign
countries listed in Appendix B, under such applicable laws and regulations
throughout such countries, where such patent extension rights are available
currently or are available in the future.
6.2 Payment of all fees and costs relating to the filing,
prosecution,
and maintenance of the Patent Rights shall be the responsibility of Ixion
after the Effective Date. UFRFI shall bill Ixion for these costs and fees.
ARTICLE VII - INFRINGEMENT
7.1 Ixion shall inform XXXXX promptly in writing of any alleged
infringement of the Patent Rights by a third party and of any available
evidence thereof.
7.2 During the term of this Agreement, UFRFI shall have the right,
but
shall not be obligated, to prosecute at its own expense any such infringements
of the Patent Rights. If UFRFI prosecutes any such infringement, Xxxxx agrees
that UFRFI may include Ixion as a co-plaintiff in any such suit, without
expense to Ixion. The total cost of any such infringement action commenced or
defended solely by UFRFI shall be borne by UFRFI and UFRFI shall keep any
recovery or damages for past infringement derived therefrom.
7.3 If within six months after having been notified of any alleged
infringement or such shorter time proscribed by law, UFRFI shall have been
unsuccessful in persuading the alleged infringer to desist or shall not have
brought and shall not be diligently prosecuting an infringement action, or if
UFRFI shall notify Ixion at any time prior thereto of its intention not to
bring suit against any alleged infringer, then, and in those events only,
(a) Ixion shall have the right, but shall not be obligated, to
prosecute at its own expense any infringement of the Patent Rights
(keeping any recovery or damages for past infringements derived
therefrom), and Ixion may, for such purposes, use the name of
UFRFI as co-plaintiff; provided, however, that such right to bring
an infringement action shall remain in effect only for so long as
the license granted herein remains exclusive. No settlement,
consent judgment, or other voluntary final disposition of the suit
may be entered into without the consent of UFRFI, which consent
shall not unreasonably be withheld. Xxxxx shall indemnify UFRFI
against any order for costs that may be made against UFRFI in such
proceedings.
(b) Payments which are earned under Article IV hereof shall be
waived so long as any such infringement which the parties agree in
good faith is material continues, such waiver not to exceed 50% of
the royalties payable hereunder; provided, however, that such
payments shall not be so waived so long as at least one suit or
action is being prosecuted by UFRFI for infringement of a patent
covering the Patent Rights.
7.4 If Ixion has brought a suit pursuant to section 7.3 above, it
shall have the right for such purpose to join UFRFI as a co-plaintiff at
Ixion's expense. UFRFI independently shall have the right to join any such
suit or action brought by Xxxxx, and, in such event, shall pay one-half of the
cost of such suit or action from the date of joining. Any damages recovered
by a suit or action in which UFRFI has paid its share of costs shall be first
used to reimburse each party hereto for the cost of such suit or action
(including attorney's fees) actually paid by each party hereto as the case may
be, then to reimburse UFRFI for any payments waived under this Section 7.4,
and the residue, if any, shall be divided equally between the parties hereto.
7.5 In the event that a declaratory judgment action alleging
invalidity or noninfringement of any of the Patent Rights shall be brought
against Ixion, UFRFI, at its option, shall have the right, within 30 days
after commencement of such action, to intervene and take over the sole defense
of the action at its own expense.
7.6 In any infringement suit as either party may institute to enforce
the Patent Rights pursuant to this Agreement, the other party hereto shall, 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.
ARTICLE VIII - PRODUCT LIABILITY
8.1 Ixion shall at all times during the term of this Agreement and
thereafter, indemnify, defend, and hold UFRFI and the University, their
trustees, officers, employees, and affiliates (the "Indemnitees"), harmless
against all claims and expenses, including legal expenses and reasonable
attorneys' fees, whether arising from a third party claim or resulting from
XXXXX's enforcing this indemnification clause against Ixion, or arising out of
the death of or injury to any person or persons or out of any damage to
property and against any other claim, proceeding, demand, expense, or
liability of any kind whatsoever resulting from the production, manufacture,
sale, use, lease, consumption, or advertisement of the Licensed Products
and/or Licensed Processes or arising from any right or obligation of Ixion
hereunder. This indemnification shall not apply to any liability, damage,
loss, or expense to the extent that it is attributable to the negligence or
intentional wrongdoing of the Indemnitees.
8.2 Ixion shall, at its own expense, provide attorneys reasonably
acceptable to UFRFI to defend against any actions brought or filed against any
party indemnified hereunder with respect to the subject of indemnity contained
herein, whether such actions are rightfully brought.
8.3 At such time as any product, process, or service relating to, or
developed pursuant to, this Agreement is being commercially distributed or
sold (other than for the purpose of obtaining regulatory approvals) by Ixion
or by a licensee, affiliate, or agent of Ixion, Ixion shall, at its sole cost
and expense, procure and maintain policies of comprehensive general liability
insurance naming the Indemnitees as additional insureds. Such comprehensive
general liability insurance shall provide (a) product liability coverage, and
(b) broad form contractual liability coverage for Ixion's indemnification
under sections 8.1 and 8.2 above. If Ixion elects to self-insure, such self-
insurance program must be acceptable to UFRFI.
8.4 Ixion shall provide UFRFI with written evidence of such insurance
upon request, and shall provide UFRFI with written notice at least 45 days
prior to the cancellation, non-renewal, or material change in such
comprehensive general liability insurance; if Ixion does not obtain
replacement insurance providing comparable coverage within such 45 day period,
UFRFI shall have the right to terminate this Agreement.
8.5 Ixion shall maintain such comprehensive general liability
insurance beyond the expiration or termination of this Agreement during (a)
the period that any product, process, or service, relating to, or developed
pursuant to, this Agreement is being commercially distributed or sold (other
than for the purpose of obtaining regulatory approvals) by Ixion or by a
licensee, affiliate, or agent of Ixion, and (b) a reasonable period after the
period referred to in section 8.5 (a) above, which in no event shall be less
than 15 years.
8.6 In the event any such action is commenced or claim made or
threatened against UFRFI or other Indemnitees as to which Ixion is obligated
to indemnify it or them or hold it or them harmless, UFRFI or the other
Indemnitees shall promptly notify Ixion of such event. Xxxxx shall assume the
defense of, and may settle, that part of any such claim or action or made
against UFRFI (or other Indemnitee) which relates to Ixion's indemnification
and Ixion may take such other steps as may be necessary to protect itself.
Ixion shall not be liable to UFRFI or other Indemnitees on account of any
settlement of any such claim or litigation affected without Ixion's consent.
The right of Ixion to assume the defense of any action shall be limited to
that part of the action commenced against UFRFI or other Indemnitees which
relates to Ixion's obligation of indemnification.
ARTICLE IX - DISCLAIMER OF WARRANTIES
9.1 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, UFRFI MAKES
NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, AND VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR
PENDING.
9.2 UFRFI DOES NOT WARRANT THE VALIDITY OF THE PATENT RIGHTS LICENSED
HEREUNDER AND MAKES NO REPRESENTATION WHATSOEVER WITH REGARD TO THE SCOPE OF
THE LICENSED PATENT RIGHTS OR THAT SUCH PATENT RIGHTS MAY BE EXPLOITED BY
IXION OR ANY AFFILIATE OR SUBLICENSEE WITHOUT INFRINGING OTHER PATENTS.
ARTICLE X - EXPORT CONTROLS
Ixion hereby agrees that it shall not sell, transfer, export or reexport
any Licensed Products, Licensed Processes, Licensed Know-How, or related
information in any form, or any direct products of such information, except in
compliance with all applicable laws, including the export laws of any U.S.
government agency and any regulations thereunder, and will not sell, transfer,
export or reexport any such Licensed Products, Licensed Processes, Licensed
Know-How, or information to any persons or any entities with regard to which
there exist grounds to suspect or believe that they are violating such laws.
Ixion shall be solely responsible for obtaining all licenses, permits, or
authorizations required from the United States and any other government for
any such export or reexport. To the extent not inconsistent with this
Agreement, XXXXX agrees to provide Ixion with such assistance as it may
reasonably request in obtaining such licenses, permits, or authorization.
ARTICLE XI - NON-USE OF NAMES
11.1 Ixion shall not use the names of the University or UFRFI nor of
any of either institution's employees, nor any adaptation thereof, in any
advertising, promotional, or sales literature without prior written consent
obtained from UFRFI in each case (such consent not to be unreasonably
withheld), except that Ixion may state that it is licensed by UFRFI under one
or more of the patents and/or applications comprising the Patent Rights.
Requests for consent from UFRFI or the University shall be sent to the
President of UFRFI with a copy to the Director of the Office of Patent,
Copyright and Technology Licensing. UFRFI and the University shall not use the
name of Ixion or its employees, directors, or agents, in any press or
publicity release without prior written consent from the Chairman or President
of Ixion (such consent not to be unreasonably withheld), except that the
University or UFRFI may state that Ixion has been licensed under one or more
of the patents or applications comprising the Patent Rights. Notwithstanding
the foregoing, the University and UFRFI consent to references to them pursuant
to any requirements of applicable law or governmental regulations, provided
that, in the event of any such disclosure, Ixion shall afford UFRFI or the
University the prior opportunity to review the text of such disclosure. Ixion
shall use its best efforts to comply with any reasonable requests by the
University or UFRFI regarding changes.
11.2 Where consent of a party is required under this Article XI, such
consent shall be deemed granted if no written objection (or oral objection,
confirmed immediately in writing) is received by the requesting party on or
before the tenth calendar day following the date a written request for consent
was received by the requested party. For the purposes of this Article XI
only, a item shall be deemed received as follows: (a) if hand delivered, upon
delivery; (b) if sent by electronic mail, upon confirmation by the sending
carrier that the message was deposited to the addressee's mailbox; (c) if sent
by registered mail, return receipt requested, upon signing by the receiving
party; or (d) if sent by ordinary mail in the United States, postage prepaid,
and addressed as set forth in Article XIV, on the fifth calendar day after
deposit in the mail.
ARTICLE XII - ASSIGNMENT
This Agreement is not assignable and any attempt to do so shall be void.
ARTICLE XIII - TERMINATION
13.1 If Ixion shall cease to carry on its business, this Agreement
shall terminate upon notice by UFRFI.
13.2 Should Ixion fail to pay UFRFI royalties due and payable
hereunder, UFRFI shall have the right to terminate this Agreement on 60 days'
notice, unless Ixion shall pay UFRFI within the 60-day period, all such
royalties and interest due and payable. Upon the expiration of the 60-day
period, if Ixion shall not have paid all such royalties and interest due and
payable, the rights, privileges, and license granted hereunder shall
terminate.
13.3 Upon any material breach or default of this Agreement by Xxxxx,
other than those occurrences set out in sections 13.1 and 13.2 above, which
shall always take precedence in that order over any material breach or default
referred to in this section 13.3, UFRFI shall have the right to terminate this
Agreement and the rights, privileges, and license granted hereunder by 90
days' notice to Ixion. Such termination shall become effective unless Ixion
shall have cured any such breach or default prior to the expiration of the 90-
day period.
13.4 Ixion shall have the right to terminate this Agreement at any
time
on 90 days' written notice to UFRFI, and upon payment of all amounts due UFRFI
through the effective date of the termination.
13.5 Upon termination of this Agreement for any reason, nothing
herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination. Ixion and any sublicensee
thereof may, however, after the effective date of such termination, sell all
Licensed Products, and complete Licensed Products in the process of
manufacture at the time of such termination and sell the same, provided that
Ixion shall pay to UFRFI the royalties thereon as required by Article IV of
this Agreement and shall submit the reports required by Article V hereof on
the sales of Licensed Products.
13.6 Upon termination of this Agreement for any reason, any
sublicense
not then in default shall continue in full force and effect except that UFRFI
shall be substituted in place of the sublicensor; provided, however, that the
extent of UFRFI's obligations under such sublicense shall be consistent with
(and not exceeding) its obligations under this Agreement.
13.7 Bankruptcy.
(a) Notice of Assumption or Rejection.
(i) In the event that either party files or has filed
against it a petition under the Federal Bankruptcy Code (11 U.S.C. ss 1, et
seq.) (the "Bankruptcy Code"), is adjudged bankrupt, or files or has filed
against it a petition for reorganization or arrangement under any law relating
to bankruptcy or similar laws for the protection of debtors, whether under the
laws of the United States and its political subdivisions or otherwise, such
party shall (1) notify the other party thereof within ten days
after the filing of such petition or such adjudication, and (2), within 30
days after the filing of such petition, shall notify the other party of the
party's assumption or rejection of this Agreement, and shall file a petition
with the appropriate court for approval of all other action as may be
necessary to obtain the approval of such petition and of such assumption or
rejection.
(ii) If such party does not: (1) within
thirty (30) days after the occurrence of any of the
foregoing events, notify the other party of its
assumption or rejection of this Agreement or file the
petition, or (2) thereafter diligently take all other
action necessary for the approval of the foregoing
petition or of such assumption or rejection, such
party shall be deemed to have rejected this Agreement.
Each party acknowledges that, for purposes of Section
365 of the Bankruptcy Code and similar provisions of
any other or future similar laws relating to any
party's assumption or rejection of any executory
contract, a period of 30 days after the date of any
filing or adjudication described above shall
constitute a reasonable time in which such party shall
assume or reject this Agreement and a party shall be
deemed to have not diligently taken all action
necessary for the approval of the foregoing petition
or of such assumption or rejection if such petition,
assumption or rejection is not approved by the
appropriate court within 60 days after the filing of
the petition for such assumption or rejection.
(b) Conditions to Assumption.
No election by any party, or any successor-in-
interest to such party, to assume this Agreement as
contemplated by Section (a) above shall be effective unless
each of the following conditions, each of which each party
acknowledges is commercially reasonable in the context of a
bankruptcy or similar proceeding, has been satisfied by such
party and each of the other parties has acknowledged such
satisfaction in writing:
(1) Cure. Such party has cured, or has
provided the other party adequate assurances that:
(A) Monetary Defaults.
Within ten days from the date of such assumption
such party will cure all monetary defaults under
this Agreement; and
(B) Non-Monetary Defaults.
Within 30 days from the date of such assumption
such party will cure all non-monetary defaults
under this Agreement.
(2) Pecuniary Loss. Such party has
compensated or has provided to the other party
adequate assurances that within ten days from the date
of assumption the other party will be compensated for
any pecuniary loss incurred by the party arising from
any default of such party under this Agreement prior
to the assumption.
(3) Future Performance. Such party has
provided the other party with adequate assurances of
the future performance of such party's obligations
under this Agreement.
(c) Termination.
This Agreement shall terminate upon the
rejection of this Agreement as contemplated by this Section
by any party or successor-in-interest thereto.
(d) No Transfer.
Neither any party's interest in this Agreement
nor any portion thereof shall pass to any trustee, receiver,
or assignee for the benefit of creditors, or any other
person or entity or otherwise by operation of law under the
Bankruptcy Code or the insolvency laws of any state having
jurisdiction of the person or property of such party unless
the other party shall consent to such transfer in writing.
ARTICLE XIV - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such
party by certified first class mail, postage prepaid, addressed to it at its
address below or as it shall designate by written notice given to the other
party:
In the case of UFRFI:
President
University of Florida Research Foundation, Inc.
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
With a copy to:
Director
Office of Patent, Copyright and Technology Licensing
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
All payments to:
Director
Office of Patent, Copyright and Technology Licensing
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
PLEASE MAKE ALL CHECKS PAYABLE TO:
University of Florida Research Foundation, Inc.
000 Xxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx 00000
In the case of Ixion:
President
Ixion Biotechnology, Inc.
Xxx Xxxxxxxx Xxxx., Xxx 00
Xxxxxxx, XX 00000
ARTICLE XV - MISCELLANEOUS PROVISIONS
15.1 This Agreement shall be construed, governed, interpreted, and
applied in accordance with the laws of the State of Florida, except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
15.2 The parties hereto acknowledge that this Agreement sets forth
the
entire agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except
by the execution of a written instrument subscribed to by the parties hereto.
15.3 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
15.4 Ixion agrees to mark the Licensed Products sold in the United
States with all applicable United States patent numbers. All Licensed
Products shipped to or sold in other countries shall be marked in such a
manner as to conform with the patent laws and practice of the country of
manufacture or sale.
15.5 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
15.6 (a) Anything in this Agreement to the contrary notwithstanding,
any and all knowledge, know-how, practices, process or other information of
any kind and in any form (hereinafter referred to as "Confidential
Information") disclosed or submitted, either orally, in writing or in other
tangible or intangible form which is designated as Confidential Information,
to either party by the other shall be received and maintained by the receiving
party in strict confidence and shall not be disclosed to any third party,
except that Ixion may disclose Confidential Information (pursuant to written
confidentiality agreements) to its lawyers, accountants, advisors, investors,
and potential investors. Furthermore, neither party shall use the said
Confidential Information for any purpose other than those purposes specified
in this Agreement. The parties may disclose Confidential Information to the
minimum number of its employees reasonably requiring access thereto for the
purposes of this Agreement provided, however, that prior to making any such
disclosures each such employee shall be apprised of the duty and obligation to
maintain Confidential Information in confidence and not to use such
information for any purpose other than in accordance with the terms and
conditions of this Agreement.
(b) Nothing contained herein will in any way restrict or impair
either parties right to use, disclose, or otherwise deal with any Confidential
Information which at the time of its receipt:
(i) Is generally available in the public domain, or thereafter
becomes available to the public through no act of the receiving party; or
(ii) Was independently known prior to receipt thereof, or made
available to such receiving party as a matter of lawful right by a third
party.
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
and duly executed this Agreement as of the day and year first set forth above.
University of Florida Research Foundation, Inc. Ixion Biotechnology, Inc.
By By
Xxxxxx X. Xxxxxx
Chairman and Chief Executive Officer
Acknowledged and Understood:
Xxxxx X. Xxxx, Ph. D.
APPENDIX A
UF Case No. UF# -1256
"In vitro-grown Islets of Langerhan for curing diabetes"
Patent Application "In Vitro Growth of Functional Islets of Langerhan," USSN
08/234,071,
By Xxxxx X. Xxxx, Ph. D., filed April 28, 1994
APPENDIX B
Foreign countries in which Patent Rights shall be filed, prosecuted and
maintained in accordance with Article VI:
For UF Case No. UF# - 1256
